- PTAB · May 10, 2024 · IPR2024-00259 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted inter partes review of claims 1, 7, 9, 32, 38, and 40 on the asserted obviousness ground over Bhattacharya and Yost.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“that because judgements have been entered in the district court actions, this suggests finality. In a similar instance in Volvo, where a district court’s § 101 determination was appealed to the Federal Circuit, the Director determined that the Board had the authority to institute an inter partes review and a Fintiv analysis should be performed. See Volvo Penta of the Americas, LLC v. Brunswick Corp., IPR2022-01366, Paper 15 at 1–8 (PTAB May 2, 2023). The Director has additionally distinguished the Fintiv analysis in AviaGames under similar circumstances to those here, where “the district court’s judgment of invalidity under 35 U.S.C. § 101, i.e., a statutory ground that could not have been raised before the Board, does not raise concerns of inefficient duplication of efforts or potentially inconsistent results between the Board and the district court.” AviaGames, IPR2022- 00530, Paper 14 at 3 (PTAB Mar. 2, 2023) (Decision on Director Review). Further, the Director determined that “the challenged claims have not yet been cancelled and remain in force until the opportunity to appeal has been exhausted,” noting that “[b]y the time an appeal will have concluded, Petitioner will be barred under 35 U.S.C. § 315(b) from bringing a new challenge in an IPR petition.” Id. at 3–4. Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal duplicate the obviousness issues addressed here. The timing of the progress of the appeal and any potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“viii. Conclusion Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is rendered obvious by Bhattacharya and Yost.” slip op. at 32
- Skill levelSkill level petitioner adoptedOther
“IV. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have had at least a Bachelor’s degree in electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with working with navigation and/or geolocation systems. Pet. 6–7 (citing Ex. 1003 ¶ 8). Petitioner also contends that additional education could compensate for less work experience and vice versa. Id. at 7. For the purposes of the Preliminary Response, Patent Owner adopts Petitioner’s asserted level of ordinary skill in the art. Prelim. Resp. 26. For the purposes of this Decision, we adopt the assessment offered by Petitioner, except for the inclusion of “at least,” as it is consistent with the ’753 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16
- Prior constructionPrior construction adoptedOther
“patent and district court issued claim constructions for some terms that were disputed. Ex. 1020; Ex. 1025. Petitioner uses the district court’s construction or the agreed-upon construction for the terms “calibration data,” “calibration points,” “grid point,” “network measurement report,” and the order of the “providing,” “generating,” “evaluating,” and “selecting” steps of claim 1. Pet. 7–9 (citing Ex. 1020; Ex. 1025). Petitioner proposes that all terms should be interpreted consistent with the Phillips standard. Id. at 7. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of this Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.” Prelim. Resp. 26. For the purposes of this Decision, we will use the district court’s claim constructions and those agreed-upon by the parties in the litigations, where the adoption of those constructions have been agreed to by the parties at this juncture in this proceeding. We determine that we need not expressly construe any other claim terms at this juncture. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,406,753 - PTAB · May 10, 2024 · IPR2024-00032 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–5, 9, 11, 12, 14–16, 18–22, 25, 27, 29, 31, 32, and 35 on all asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–5, 9, 11, 12, 14–16, 18–22, 25, 27, 29, 31, 32, and 35 of the ’494 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“an IDS in the ’494 patent, we agree with Patent Owner that the record shows that Bhattacharya and Spain10 were listed on an IDS during prosecution of the parent ’358 patent, which the ’494 patent Examiner was required to consider. Prelim. Resp. 5 (citing MPEP 609.02). As such, we determine that Bhattacharya and Spain were presented previously to the Office. See Prelim. Resp. 9; Advanced Bionics at 7–8. We also agree with Patent Owner that the addition of Meunier does not substantially impact our § 325(d) analysis because of the Petition’s limited reliance on this reference. For these reasons, we determine that the first prong of Advanced Bionics is met and turn to the second prong.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“would have at least a Bachelor’s degree in electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with working with navigation and/or geolocation systems. 1003 ¶ 8; Pet. 6, n.2. According to Petitioner, “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Ex. 1003 ¶ 8. Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 43. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’494 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,786,494 - PTAB · May 10, 2024 · IPR2024-00031 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 15–20, 24, 26, and 27 on all asserted grounds, finding a reasonable likelihood of success on anticipation and obviousness.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id.” slip op. at 6
- Prior constructionPrior construction adoptedDecided for petitioner
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.7” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,400,358 - PTAB · May 9, 2024 · IPR2024-00158 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–4, 7–14, 16, 17, 21, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Pham and Wu, and granted joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion for Claim 1 Having reviewed the Petition and Preliminary Response, we determine that Petitioner has a reasonable likelihood of success in showing that the subject matter of claim 1 would have been obvious in view of Pham and Wu. E. Conclusion on the Merits of the Petition We have found that the Petition warrants institution based on Petitioner’s showings for claim 1. We have reviewed Patent Owner’s arguments about the other grounds, but they largely rely on the earlier unpersuasive arguments for claim 1. On whole, we determine that Petitioner has shown that the Petition warrants institution.” slip op. at 18
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“FURTHER ORDERED that the Motion for Joinder with IPR2023- 00703 is granted, and Palo Alto Networks, Inc. and Fortinet, Inc. are joined as a party in IPR2023-00703;” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the related district court matters identified above. Opp. Mot. Join 4–12. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the copending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Reply Mot. Join 4–5), we do not discretionarily deny institution under Fintiv.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“factor one necessarily outweighs the other General Plastic factors.”) (Director Review). Patent Owner focuses its analysis on factor 5 and proposed factor 8. Id. at 13–15. As to factor 5, which looks for an explanation of the time between petition filing, we determine that Petitioner sufficiently explained the time between Cisco’s petition and its own when it noted that it merely filed its petition and request for joinder when the statute permitted it. Reply Mot. Join 6 (citing 37 C.F.R. § 42.122(b)). In particular, the statute requires the earlier petition to be instituted before joining a party. 35 U.S.C. § 315(c) (requiring joinder to be to instituted proceedings). Thus, the time elapsed between filings is motivated by the statutory and regulatory procedures. See also 37 C.F.R. § 42.122(b) (requiring the joinder motion to be filed “no later than one month after the institution date of any inter partes review for which joinder is requested”). As to proposed factor 8, we agree with Petitioner that the present situation does not apply. Reply Mot. Join. 6–7; see also Shenzhen, IPR2018-00761, Paper 15, 18–19 (Saindon, concurring) (“There are legitimate reasons why a petition may be filed after [a decision on institution)].”). Proposed factor 8 analyzes situations where a second petitioner strategically waits to file its petition to see what happens to an earlier filed petition. Shenzhen, IPR2018-00898, Paper 9 at 7. If both of the petitioners were sued at or around the same time, but one waits until the other goes first, it can lead to an inference that the delay in filing a different petition was to gain an unfair advantage. Id. at 14 (looking with disfavor on a wait-and-see strategy to use the first petition as a “test case”). That is not the case here, where the second petition is a copycat petition. The Petition here cannot be said to have been filed second in order to glean knowledge from the first petition because it is the same petition. Thus, we do not see this Petition as being a strategic attempt to use Cisco’s petition as a “test case,” and do not consider factor 8 to weigh toward denial. Finally, reviewing factor 6, we do not find that granting Petitioner’s motion to join would cause an undue burden on the Board. Petitioner is serving as an “understudy” and thus, from our perspective, Petitioner’s presence does not change the existing Cisco IPR. Patent Owner argues that if Cisco were to settle then Petitioner would continue the proceeding. Opp. Mot. Join. 15. We do not see this as an undue burden in this situation. Petitioner’s Motion for Joinder serves to lessen our burden (as well as Patent Owner’s) compared to the scenario of it filing its own unique petition. We do not see the present case as similar to the Apple case, in which a copycat joinder petition was denied. See Apple, IPR2020-00854, Paper 9. That case, in our view, turned on the fact that the petitioner had already filed a petition that was denied on the merits. See id. at 4 (“In effect, it would be as if [the petitioner] had brought the second challenge to the patent in the first instance,” and labeling this a “serial attack.”). The situation here is not analogous to the Apple case because this is Petitioner’s only petition against the ’436 patent. The Petition is not a “serial attack” on the ’436 patent, it is merely Petitioner’s statutorily required vehicle to join as a party to an existing petition. Accordingly, we do not find factor 6 to weigh towards denial. Reviewing the General Plastic factors as a whole, including proposed factor 8, we find no factors to weigh toward denial and decline to exercise our discretion to deny institution.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,566,612 - PTAB · May 9, 2024 · IPR2024-00099 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–4, 7–14, 16, 17, 21, and 22 on all asserted grounds and granted joinder to IPR2023-00673.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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.” For the reasons provided below, we determine that Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’436 patent is unpatentable, we institute an inter partes review. 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“compressed, or use security protocols, then the packets transit the packet engine. Pet. 41–42 (citing Ex. 1004 ¶¶ 49, 51, 53). Patent Owner argues that only the SA parameter association task in Pham may be offloaded. Prelim. Resp. 26–27 (citing Ex. 1004 ¶¶ 38, 51). Patent Owner’s argument here implies that the filtering function remains at the ingress processor and that some packets will be filtered and never reach the packet engine. See id. (citing, e.g., Ex. 1004 ¶ 38); Ex. 1004 ¶ 38 (“In the preferred embodiments of the present invention, the ingress processors 30, 34 are tasked with filtering and routing functions . . . .”). The statement Patent Owner relies on is not in the same section as the one Petitioner relies on. In other words, it does not appear on this record that we can limit the disclosure of paragraph 51 based on the statements in paragraph 38. On this record, we are not persuaded that only the SA parameter association task can be offloaded. As Pham notes, tasks can be moved between processors to perform load balancing. Ex. 1004 ¶ 54. We see no disclosure that prevents certain tasks from being load balanced or otherwise tasked to the security processor.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“find them persuasive on this record. Id. at 32–33. At a high level, Patent Owner’s arguments are that Petitioner’s modification to Pham would “increase[] complexity and resources.” Id. at 33. On this record, this argument is unpersuasive because even if the addition of Wu’s intrusion detection system was somehow more complex, the reason to combine it is to gain certain beneficial features. See, e.g., Pet. 30–31. Patent Owner’s arguments do not show that the alleged increase in complexity would somehow dissuade a person of ordinary skill in the art from including these beneficial features. See, e.g., Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (alteration in original); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the related district court matters identified above. Opp. Mot. Join 4–12. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the copending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Reply Mot. Join 4–5), we do not discretionarily deny institution under Fintiv.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,685,436 - Bj’S Wholesale Club Holdings, Inc. v. Walmart Apollo, LLCAll claims unpatentablePTAB · Apr 11, 2024 · IPR2022-01563 · APJ Neil T Powell · IPR · Final written decision
Claims 1–14 are unpatentable as obvious over Yong and Xavier because the Board found the proposed server-function combination and replication of the virtual terminal sales application obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field or equivalent coursework or experience, and one to two years of experience with mobile device applications and retail POS systems,” also noting that “[m]ore education can supplement practical experience and vice versa.” Pet. 10 (citing Ex. 1002 ¶ 33). “For purposes of the IPR proceedings related to the ’435 Patent only, [Patent Owner] does not dispute this definition.” PO Resp. 8. For the purposes of this Decision, we apply Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’435 patent and the prior art.” slip op. at 12
- Expert testimonyDecided for patent owner
“Patent Owner counters that we should afford full weight to Dr. Williams’s testimony. PO Sur-reply 2. Patent Owner contends that Dr. Williams meets Petitioner’s definition of a person of ordinary skill in the art. Id. According to Patent Owner, “Dr. Williams surpasses the education requirement” and meets the experience requirements. Id. Addressing Petitioner’s concerns about retail technology experience, Patent Owner asserts that “Dr. Williams testified that his MBA curriculum contained coursework that included study of POS systems, particularly though case studies.” Id. at 3 (citing Ex. 2009 ¶ 3; Ex. 1022 16:3–7). “This is precisely the ‘more education in the [person of ordinary skill in the art] definition that can ‘supplement practical experience,’” Patent Owner argues. Id. (citing Pet. 12). Patent Owner persuades us that Petitioner’s concerns regarding Dr. Williams’s retail technology and knowledge and experience are not a basis for affording less weight to Dr. Williams’s testimony.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with the parties’ claim construction. Grammatically, within each of claims 1, 3, 5, and 7, each recitation of “the server” refers to the same “server.” Thus, according to these claims’ plain meaning, each and every recitation of “the server” refers to the same server. See Salazar v. AT&T Mobility LLC, 64 F.4th 1311, 1315–16 (Fed. Cir. 2023) (explaining claim language reciting element with definite article refers to same element previously recited) (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed. Cir. 2008); Harari v. Lee, 655 F.3d 1331, 1341 (Fed. Cir. 2011)). Likewise, according to the plain meaning of claims 10, 12, and 14, each and every recitation of “the server” in these claims refers to the same server. We construe every recitation of “the server” in claims 1, 3, 5, and 7 as referring to the same server. And we construe every recitation of “the server” in claims 10, 12, and 14 as referring to the same server.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“parties’ arguments and evidence, we determine that a preponderance of the evidence supports Petitioner’s position that it would have been “obvious to combine functions of any [of] its servers 200, 400, 500 into the same server.” E.g. Pet. 8–9, 18–19, 22–23, 25–26; PO Resp. 2–6, 22–25, 28–40; Pet. Reply 1–2, 7–12; PO Sur-reply 1–2, 5–15. It is undisputed that “[i]t was well-understood in the art at the time of the Critical Date that functionality of different servers can be combined in the same server.” Pet. 18–19 (citing Ex. 1002 ¶ 413); see generally PO Resp.; PO Sur-reply. The Petition persuades us that it would have been obvious to implement this known approach in Yong’s system, notwithstanding Patent Owner’s arguments about intentionally keeping servers separate. Pet. 8–9, 18–19, 22–23, 25–26; PO Resp. 2–6, 22–25, 28–40; Pet. Reply 1–2, 7–12; PO Sur-reply 1–2, 5–15. The Petition and its evidence demonstrate that a person of ordinary skill in the art would have recognized that modifying Yong’s disclosure by combining the functionalities of the servers would have produced one logical variation on Yong’s system. Pet. 8–9, 18–19, 22–23, 25–26; Ex. 1002 ¶¶ 112–132, 412–414, 436, 442, 452, 460. As the Petition and Dr. Shamos note, Yong’s servers cooperatively perform functions of Yong’s system by communicating with one another and other system components, such that consolidating the functionality into the same server would result in that server performing all of the same functions that Yong’s servers do separately. Pet. 8–9, 18–19, 22–23, 25–26; Ex. 1002 ¶¶ 112–132, 412–414, 436, 442, 452, 460; See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (combination of known devices according to established functions normally obvious); id. at 417 (“[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious”). The Petition and its evidence also persuade us that such a modification would have been well within the ability of a person of ordinary skill in the art and there would have been a reasonable expectation of success. E.g., Pet. 10, 18–19, 22–23, 25–26; Ex. 1002 ¶¶ 30–34, 38–42, 412, 414. As Dr. Shamos notes, Yong itself indicates that the system could use different components on its server side, disclosing that “[a] commercial transaction system (e.g., a commerce system) according to the present invention is configured to include a mobile communication terminal 100, a store POS system 200, and a mobile telecommunication system 300. More preferably, a commercial transaction server 400 and a payment server 500 may be further included.” Ex. 1010, 12:9–13; Ex. 1002 ¶ 412. On the whole, the Petition persuades us that combining the functions of Yong’s servers would have involved no more than an obvious application of a known approach with predictable results. See KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).” slip op. at 29
Patent outcomesUS 10,803,435 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,803,435 - Bj’S Wholesale Club Holdings, Inc. v. Walmart Apollo, LLCAll claims unpatentablePTAB · Apr 11, 2024 · IPR2022-01528 · APJ Neil T Powell · IPR · Final written decision
Claims 15–19 are unpatentable: the Board found claims 15–16 anticipated or obvious and claims 17–19 obvious; it did not reach the Yong-Xavier-Cason ground for claim 17.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find that the ’435 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected by those sources is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s asserted level of ordinary skill in the art.” slip op. at 12
- Expert testimonyDecided for patent owner
“technologies, [and he admits] that his only retail technology experience is limited to MBA case studies from the early 1990s.” Pet. Reply 3 (citing Ex. 1022, 15:20–22, 16:3–7, 17:22–23; Ex. 2010). Based on this, Petitioner advances that we “should afford little weight to Dr. Williams’ testimony.” Id. Patent Owner counters that we should afford full weight to Dr. Williams’s testimony. PO Sur-reply 2. Patent Owner contends that Dr. Williams meets Petitioner’s definition of a person of ordinary skill in the art. Id. According to Patent Owner, “Dr. Williams surpasses the education requirement” and meets the experience requirements. Id. at 3. Addressing Petitioner’s concerns about retail technology experience, Patent Owner asserts that “Dr. Williams testified that his MBA curriculum contained coursework that included study of POS systems, particularly though case studies.” Id. (citing Ex. 2009 ¶ 3; Ex. 1022 16:3–7). “This is precisely the ‘more education’ in the [person of ordinary skill in the art] definition that can ‘supplement practical experience,’” Patent Owner argues. Id. (citing Pet. 12). Patent Owner persuades us that Petitioner’s concerns regarding Dr. Williams’s retail technology and knowledge and experience are not a basis for affording less weight to Dr. Williams’s testimony.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Contrary to Patent Owner’s argument, the ’435 patent’s Specification supports Petitioner’s position. As Petitioner argues, the Specification’s disclosure that “[u]ser identification information may include a username, a password, [or] both a username and password” conveys that “a username, a password, [or] both a username and password” is a short, non-exhaustive list of user identification information according to the ’435 patent. Ex. 1001, 6:2–4 (emphasis added). This comports with the plain meaning of “user identification information,” which seemingly would refer to information that identifies a user. Consistent with this, the claim language does not convey any meaning of “user identification information” other than its plain meaning. See, e.g., id. at 24:7–9. Accordingly, we do not adopt Patent Owner’s suggestion that limitation 16a’s “user identification information” requires a username, a password, or both. PO Resp. 72; PO Sur-reply 30. Instead, we conclude that “user identification information” encompasses information that identifies a user.” slip op. at 16
- BurdenPetitioner expert creditedUnpatentable
“Weighing all of the parties’ arguments and evidence, we find Petitioner has shown that Fletchall discloses performing all of limitations 15h–15j’s actions by the same server, specifically payment server 130. For example, Petitioner persuades us that Fletchall discloses payment server 130 performing the actions of limitations 15h and 15i: “retrieving . . . payment information to complete the transaction” and “completing . . . the transaction based on the payment information.” Ex. 1001, 23:43–24:2; Pet. 24–26 (citing Ex. 1008, 4:35–49, 11:3–12, 12:42–45, 13:9–14, 13:45–47; Ex. 1002 ¶¶ 199–204, 206–208, 210; Ex. 1001, 10:59–11:3, Fig. 2B). Petitioner’s evidence also shows that Fletchall discloses limitation 15j’s “transmitting . . . a confirmation receipt to the mobile phone in response to completion of payment for the transaction” by payment server 130 on its own. Ex. 1001, 24:3–5; Pet. 26–27 (citing Ex. 1008, 9:26–32, 11:57–61; Ex. 1002 ¶¶ 213–214). For example, Petitioner cites Fletchall’s disclosure of at least one embodiment in which “the electronic receipt is generated by the payment server (130) and provided to the transaction module (106b) of the mobile POS application (106).” Ex. 1008, 9:26–29; Pet. 27. Thus, Petitioner demonstrates that Fletchall discloses performing all of limitations 15h–15j by payment server 130. This showing is not diminished by Patent Owner’s observation that the Petition mentions Fletchall’s product database 121 when discussing limitation 15j. PO Sur-reply 27 n.12 (citing Pet. 26–27). In the passages Petitioner cites, Fletchall contains multiple, alternative disclosures about creating and sending a receipt. Ex. 1008, 9:26–32, 11:57–61; Pet. 27. For example, Fletchall contains (1) a disclosure that a receipt can be generated and transmitted by payment server 130 on its own (Ex. 1008, 9:26–29) and (2) an alternate disclosure that “[t]he electronic receipt may be generated by the product database (121) in cooperation with the payment server (130) and provided to the transaction module 106(b) of the mobile POS application (106)” (id. at 9:29–32). As Dr. Shamos notes, Fletchall also discloses that “[t]he electronic receipt may be generated by the payment server.” Ex. 1008, 11:19–20; Ex. 1002 ¶ 213. Immediately following this disclosure, Fletchall describes handling the electronic receipt by payment server 130 and product database 121 working in cooperation as an alternative to handling the electronic receipt by payment server 130 on its own: The electronic receipt may be generated by the payment server, by the product database in cooperation with the payment server and/or by a mobile application installed on the mobile device directly. Once generated, the electronic receipt may be sent to the mobile device to be stored in a memory or in a storage device of the mobile device. Ex. 1008, 11:19–25 (emphasis added). Petitioner’s reliance on Fletchall’s disclosure of handling the electronic receipt by payment server 130 on its own supports Petitioner’s case, regardless of Fletchall’s alternate disclosure of handling the electronic receipt by payment server 130 in cooperation with product database 121.” slip op. at 28
Patent outcomesUS 10,803,435 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,803,435 - Bj’S Wholesale Club Holdings, Inc. v. Walmart Apollo, LLCAll claims unpatentablePTAB · Apr 10, 2024 · IPR2022-01564 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–14 are unpatentable as anticipated by Keith; the Board did not reach the alternative obviousness ground over Hanson and Keith.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“claims of the later-filed application must be supported by the written description in the parent ‘in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.’” Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). “[T]he hallmark of written description is disclosure,” and the test “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date” of that application. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)). “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. But, “[i]t is not sufficient for purposes of the written description requirement of [35 U.S.C.] § 112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Lockwood, 107 F.3d at 1572.” slip op. at 33
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. Inc., v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Whether a reference anticipates is assessed from the perspective of an ordinarily skilled artisan. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.”). slip op. at 13
- BurdenFwd all claims unpatentableDecided for petitioner
“preponderance of the evidence that the claims are unpatentable. 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2022). “In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 12
Patent outcomesUS 10,803,435 unpatentable§ 102 anticipation§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,803,435 - ABB Inc. v. Roboticvisiontech, Inc.Institution deniedPTAB · Apr 1, 2024 · IPR2023-01426 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood that Corke, alone or with Wei-I, rendered any challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We find Patent Owner’s arguments persuasive. As discussed above, we agree with Petitioner that the claim term “object space” should be construed in accordance with the definition provided in the specification of the ’237 patent. See supra § III.B; Pet. 8. The ’237 patent defines “object space” as “a reference frame defined with respect to, and therefore rigid to, the object 18.” Ex. 1001, 3:25–26. Petitioner, however, does not adequately explain how or why Corke’s camera calibration matrix, C, which “represents the relationship between 3-D world coordinates and their corresponding 2-D image coordinates” (Ex. 1004, 138 (emphasis added)), would relate in any way to an “object space” (i.e., a reference frame defined with respect to, and therefore rigid to, an object). Petitioner does not identify sufficiently any object in Corke with respect to which the world coordinate system of Corke is defined. Furthermore, we are not persuaded by Petitioner’s conclusory assertion that “the camera pose obtained by Corke’s algorithm is defined with respect to the object space” “if the 3D coordinates are specified with respect to the object space.” See Pet. 20 (emphasis added). Petitioner does not provide adequate reasoning to support why one of ordinary skill in the art would have considered, or even envisioned, Corke’s 3D coordinates to be specified with respect to an object or an object space. Instead, we agree with Patent Owner that Petitioner’s unsupported conditional statement (“if the 3D coordinates are specified with respect to the object space”) is insufficient to establish obviousness in this instance. See Prelim. Resp. 15. Dr. Hutchinson’s testimony offers little support. See Ex. 1003 ¶ 112. Dr. Hutchinson’s declaration largely mirrors the Petition and lacks sufficient additional explanation. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, 15 (PTAB Aug. 24, 2022) (precedential) (determining that declaration testimony is entitled to little weight when the testimony merely repeats conclusory statements from the petition); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We find Patent Owner’s arguments persuasive. As discussed above, we agree with Petitioner that the claim term “object space” should be construed in accordance with the definition provided in the specification of the ’237 patent. See supra § III.B; Pet. 8. The ’237 patent defines “object space” as “a reference frame defined with respect to, and therefore rigid to, the object 18.” Ex. 1001, 3:25–26. Petitioner, however, does not adequately explain how or why Corke’s camera calibration matrix, C, which “represents the relationship between 3-D world coordinates and their corresponding 2-D image coordinates” (Ex. 1004, 138 (emphasis added)), would relate in any way to an “object space” (i.e., a reference frame defined with respect to, and therefore rigid to, an object). Petitioner does not identify sufficiently any object in Corke with respect to which the world coordinate system of Corke is defined. Furthermore, we are not persuaded by Petitioner’s conclusory assertion that “the camera pose obtained by Corke’s algorithm is defined with respect to the object space” “if the 3D coordinates are specified with respect to the object space.” See Pet. 20 (emphasis added). Petitioner does not provide adequate reasoning to support why one of ordinary skill in the art would have considered, or even envisioned, Corke’s 3D coordinates to be specified with respect to an object or an object space. Instead, we agree with Patent Owner that Petitioner’s unsupported conditional statement (“if the 3D coordinates are specified with respect to the object space”) is insufficient to establish obviousness in this instance. See Prelim. Resp. 15.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Dr. Hutchinson’s testimony offers little support. See Ex. 1003 ¶ 112. Dr. Hutchinson’s declaration largely mirrors the Petition and lacks sufficient additional explanation. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, 15 (PTAB Aug. 24, 2022) (precedential) (determining that declaration testimony is entitled to little weight when the testimony merely repeats conclusory statements from the petition); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“E. Discretion Under 35 U.S.C. §§ 314(a) Patent Owner argues that we should exercise our discretion to deny institution in view of the parallel district court proceeding. Prelim. Resp. 30–36. Petitioner argues that discretionary denial is not appropriate in this case. Pet. 79–81. Because we are not persuaded the Petition demonstrates sufficiently a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim (see supra §§ III.C., III.D.), we need not reach Patent Owner’s arguments regarding discretionary denial under § 314(a).” slip op. at 20
§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,095,237 - PTAB · Feb 20, 2024 · IPR2023-01210 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1, 15, 18, 41, and 52 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far. This is not a final decision as to patentability of the challenged claims. Any final decision will be based on the full trial record, including any response to the Petition timely filed by Patent Owner.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“7. Conclusion We have considered the circumstances and facts before us in view of the Fintiv factors. Because our analysis is fact-driven, no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a). We take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11, 6. Evaluating all of the factors on this record, we determine that weight of factors 1, 2, and 4 outweigh the remaining factors. Thus, based on our assessment of the Fintiv factors, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny inter partes review.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems, having at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 13 (citing Ex. 1012 ¶ 30). Patent Owner does not dispute Petitioner’s definition for the level of ordinary skill in the art. Prelim. Resp. 30. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“The first four of Petitioner’s proposed constructions are consistent with the clam constructions issued by the district court in the Google Action—the only difference being that although the district court found the corresponding structure for “positioning determining equipment” indefinite, Petitioner applies the corresponding structure proposed by Patent Owner in the Google Action. Ex. 1028, 8, 10–16, 20; Pet. 16. Petitioner cites Exhibit 1024 as supporting its contention that the parties have stipulated as to the order of the “collecting,” “modifying,” and “comparing” steps in claim 1, but this Exhibit does not appear to support the stipulation. See Ex. 1024. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [the] Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.”7 Prelim. Resp. 31. For purposes of this Decision, we adopt the undisputed claim constructions that Petitioner proposes. These constructions are consistent 7 In other sections of the Preliminary Response, Patent Owner appears to argue in favor of a modified construction of “grid point.” Prelim. Resp. 18– 25; see also id. at 32 (“As further explained above in Section III, the district court concluded that ‘grid point,’ as used in the ’358 Patent, specifically refers to ‘a point associated with representative calibration data for an area’ that is generated based on analysis of calibration data.”). We disagree with these arguments for the reasons discussed below. with the claim language and the specification of the ’358 patent and are further supported by the reasoning provided by the district court’s claim construction order. See Ex. 1028. We do not discern a need to construe explicitly any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,400,358
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.