• Precision Planting LLC / Agco Corporation v. Deere & CompanyNo claims unpatentable
  PTAB · Dec 2, 2020 · IPR2019-01048 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–20 were not proven unpatentable over Hedderwick and Koning because Petitioner did not establish a persuasive motivation to combine the references as proposed.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Based on the prior art, Dr. Glancey’s opinion testimony and analysis, and providing some, but minimal, weight to Dr. Taylor’s opinion testimony, we determine that the evidence favors Patent Owner’s proposed level of skill, primarily based on Dr. Glancey’s analysis and reasons summarized above. Accordingly, we determine that a person of ordinary skill in a technology pertinent to the challenged claims would have had an undergraduate degree in mechanical engineering, agricultural engineering, or similar field, and two years of experience designing agricultural products or related machinery, or five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree. A recipient of other academic degrees may qualify as a person of ordinary skill if they have taken coursework or have experience in the pertinent technology. Additional education could offset less work experience; additional work experience could offset less education or coursework.” slip op. at 18

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

    “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that an explicit construction of the claims is not necessary for the purposes of determining whether the challenged claims are not patentable. slip op. at 20

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

    “sufficiently persuasive evidence, even in combination, to establish why a person of ordinary skill would have modified Hedderwick by (1) selectively gleaning only a portion of Koning’s conveying system, i.e., belt 44 with bristles 45, (2) selectively excluding Koning’s belt 23, and then (3) modifying Koning’s brush belt by reversing its orientation so that it carries seeds deposited into the bristles, as in the ’906 patent, rather than covering and guiding seeds carried by a separate and distinct conveyor belt, as in Koning. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (finding an absence of a motivation to reverse parts to an orientation that was “totally backwards” from what one of skill in the art would even attempt). Petitioner’s arguments do not acknowledge the different function of Koning’s brush belt, or explain why a person of ordinary skill would have been motivated to adapt Koning’s brush belt to such a use and reasonably expect success in doing so. We determine Petitioner fails to meet its burden of providing a sufficiently persuasive explanation or reason for concluding that one of skill in the art would have combined these particular references to produce the claimed invention. “Without any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias.” Metalcraft v. Toro, 848 F.3d at 1367. “[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” Id.” slip op. at 30

  • ExcludeOther

    “II. MOTION TO EXCLUDE Petitioner and Patent Owner each move to exclude a substantial number of exhibits on a number of different evidentiary grounds. See Pet. Mot. Excl.; PO Mot. Exclude. As our analysis does not refer to any of those exhibits, we dismiss each motion as moot.” slip op. at 12

  Patent outcomesUS 9,686,906 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,686,906
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Nov 30, 2020 · IPR2019-01044 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–8 were not shown unpatentable under § 103 over Hedderwick, Koning, and Benac because Petitioner did not establish motivation to combine or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedPetitioner expert discountedDecided for patent owner

    “have had either (1) a bachelor’s degree plus four years of experience in mechanical engineering, agricultural engineering, or a related field or (2) a master’s degree plus two years of experience in mechanical engineering, agricultural engineering, or a related field.” Pet. 42 (citing Ex. 1002 ¶¶ 19– 20). In the testimony the Petition cites in support of that proposal, Mr. Prairie lists factors that are typically considered in assessing the level of ordinary skill in the art, and then states “[b]ased on these factors together with my experience and expertise,” his opinion of the level of ordinary skill in the art is the same as Petitioner proposes. Ex. 1002 ¶¶ 19–20. This conclusory testimony is entitled to little weight. See 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 12

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

    “construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).6 That standard “includ[es] 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.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). V. OBVIOUSNESS OVER HEDDERWICK, KONING, AND BENAC” slip op. at 14

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Patent Owner’s expert, Dr. Glancey, explains that [i]f a wheel is used to load and place seeds within a moving belt with brush hairs, the wheel must be able to disengage from seeds while the seeds remain in between brush hairs. If the wheel maintains contact with the seed after the seed has moved into the brush hairs, the wheel will continue to apply force to the seed and eject or remove the seed from the profile of the brush hairs . . . . Ex. 2200 ¶ 223. Dr. Glancey testifies, credibly, that in Petitioner’s combination, seeds would have been rejected from the belt because, as the paddle wheel rotates, seeds “would be scooped through the belt.” Id. ¶ 225.” slip op. at 31

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

    “way the references use endless members in the form of brush belts and paddle wheels, versus the way Petitioner uses those components in the proposed combination. Contrary to Petitioner’s and Mr. Prairie’s assertions, the proposed combination does not merely apply known techniques to a known device, because none of the cited references use brush belts and paddle wheels in the manner Petitioner proposes. As discussed in greater detail below, Benac teaches that a paddle wheel can be used to ensure that seeds jammed in vacuum holes are released reliably, and then dropped to the ground. Benac does not address brush belts as an endless member and, therefore, does not teach that paddle wheels can be used to guide seeds into the bristles of a brush belt, as Petitioner proposes. See Pet. 64. And Koning does not teach a brush belt that captures seeds released from above, as Petitioner and Mr. Prairie propose. See Pet. 61–62; Ex. 1002 ¶ 104; Ex. 2193, 190:10–191:3; Ex. 2263, 167:21–170:9. Rather, Koning’s brush belt maintains the relative position of potatoes lying on a conveying surface by holding them from above while the conveyor moves them to the furrow. Ex. 1004, 3:16–24, 5:3–14, Fig. 4. Petitioner’s arguments do not adequately account for these differences between the references’ use of a brush belt as an endless member and paddle wheels versus the proposed combination. Moreover, Patent Owner points out problems ordinarily skilled artisans would have encountered in attempting to combine the references as Petitioner proposes. Petitioner does not persuasively explain how those issues could have been overcome, and instead simply asserts, essentially, that ordinarily skilled artisans could have figured it out. See, e.g., Ex. 1135 ¶ 80. It is Petitioner’s burden to establish that ordinarily skilled artisans would have been motivated to combine the success in doing so. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Petitioner’s arguments and evidence do not carry that burden.” slip op. at 28

  Patent outcomesUS 8,813,663 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,813,663
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Nov 30, 2020 · IPR2019-01046 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1 and 3 were not shown unpatentable over Hedderwick, Koning, and Yamahata under § 103 because Petitioner did not establish motivation to combine or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Based on the evidence and arguments of record, we determine that the evidence favors Patent Owner’s proposed level of skill. Our determination is primarily based on Dr. Glancey’s analysis and reasons summarized above, as well as the prior art of record and the sophistication of the technology of the ’199 patent. We have considered Mr. Prairie’s opinion, but we give that testimony minimal weight due to the lack of supporting explanation. Accordingly, we adopt Patent Owner’s proposed level of ordinary skill in the art. Specifically, we determine that a person of ordinary skill in agricultural engineering, or a similar field, and two years of experience designing agricultural products or related machinery. Alternatively, a person of ordinary skill in the art would have had five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree.” slip op. at 13

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

    “IV. CLAIM CONSTRUCTION “In an inter partes review proceeding, a claim of a patent . . . shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).7 That standard “includ[es] 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.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent” slip op. at 14

  • BurdenNot shown unpatentable

    “Ex. 1135 ¶ 51. Yet it is Petitioner’s burden to show motivation and reasonable expectation of success for the proposed combination, not Patent Owner’s burden to show that the prior art demonstrates the futility of the proposed combination. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Here, Petitioner’s affirmative showing on motivation and reasonable expectation of success for using Koning’s brush belt in the proposed combination is unpersuasive for the reasons discussed above. And Patent Owner’s evidence of difficulties an ordinarily skilled artisan would have expected to encounter in that proposal serves to highlight the issues that Petitioner’s showing ignores. Petitioner additionally contends that Patent Owner’s arguments are based on the erroneous premise that an ordinarily skilled artisan must be able to physically combine the references. See Pet. Reply 7 (citing In re Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012)). We disagree. Patent Owner’s arguments, summarized above, simply point out that an ordinarily skilled artisan would not have expected success in combining the references’ teachings in the way Petitioner proposes. Motivation to combine and reasonable expectation of success are properly assessed with reference to the combination as Petitioner has framed it. The Federal Circuit has explained that doing so is not inconsistent with Mouttet. See Samsung, 925 F.3d at 1382–83 (“We will not fault the Board for analyzing Petitioners’ obviousness grounds in the way presented in the Petition.”).” slip op. at 34

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner’s and Mr. Prairie’s analysis does not acknowledge, much less bridge, the gap between Koning’s use of a brush belt to hold potatoes from above as they lie on a conveying surface, versus the brush belt’s use in above.10 During his deposition, Mr. Prairie resisted agreeing that the potatoes are lying on the conveyor in Koning, testifying that he takes from Koning’s description that “they are captured within the belt with brush hairs. And that there is some weight that’s along the conveying member 23.” Ex. 2193, 96:24–99:25. Mr. Prairie testified that he “do[es]n’t believe the brush hairs support the full weight of the potatoes,” but that Koning did not provide him sufficient information to answer whether the conveying member supports the majority of the weight of the potatoes. Id. at 106:22–107:21. In our view, it is clear from Koning’s description that the potatoes lie on the conveyor and the purpose of the brush belt is to maintain their position relative to each other while they are moved by the conveyor. Ex. 1004, 3:16–24, 5:3–14, Fig. 4; see also Ex. 2205 ¶¶ 140–141 (Patent Owner’s expert, Dr. Glancey, testifying that a simple mechanical analysis shows that in Koning, about 87% of the potatoes’ weight is supported by the conveying member). Mr. Prairie’s refusal to acknowledge the differences between the brush belt’s function in Koning versus the proposed combination undermines the credibility of his testimony that the proposed combination would have been a simple application of a known technique to a known device. 10 See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (noting expert testimony that supported the absence of a motivation to combine: “[I]f I can equate this one to kind of a simple analogy, if you’re trying to build a piece of furniture. What’s a typical thing? You put on a piece of wood. You take a nail, and you hit the nail with a hammer. In control terms, what Mr. Phipps is suggesting is that you put the hammer on the workbench, pick up the piece of furniture and bash the piece of furniture onto the hammer. It’s totally backwards from what I believe one of skill in the art would even attempt . . . .”). have been simple for an ordinarily skilled artisan to adapt Koning’s brush belt for use in the proposed combination, where seeds are deposited onto the brush belt from above—is further undermined by his testimony that he “can’t recall a time where I’ve seen a seed being dropped into a brush belt.” Ex. 2193, 113:5–9; see also Ex. 2263, 81:2–12 (“Q. And you never attempted to drop a seed onto a moving brush belt to see whether that would be inserted into the brush belt, correct? A. As I stated, for the purposes of this case, I did not do any physical experimentation with a moving brush belt as I didn’t feel it was necessary. The prior art discloses sufficient information.”) (objection omitted). Mr. Prairie has “had some industrial design projects where we’ve had to utilize brushes for various applications,” but he “ha[s] not used a brush belt to convey seed.” Ex. 2194, 297:6–16. Mr. Prairie testified that “prior to writing this declaration, brush belt technology was not a specific area that I study, that I was researching.” Ex. 2263, 79:6–9. Indeed, during his initial deposition in this case, the only specific example of a moving brush belt Mr. Prairie could recall seeing was Patent Owner’s ExactEmerge product. Ex. 2193, 108:6–110:10. The basis for Mr. Prairie’s opinion, that a seed would be expected to enter a moving brush belt in the proposed combination, appears to only be Koning itself. Ex. 1002 ¶¶ 79–81; Ex. 2193, 116:12–19, 118:7–23; Ex. 2263, 159:5–160:2. When asked at his deposition, Mr. Prairie did not explain any other engineering analysis he performed to make that determination. Ex. 2193, 114:23–117:12. Mr. Prairie testified that he “did not operate a brush belt for this declaration because [he] didn’t feel it was necessary to make my assessments” and he “did not do study or experimentation on a brush belt as I did not feel it was necessary.” unpersuasive because, as discussed above, Koning does not teach using a brush belt to receive and convey seeds that have been dropped onto it from above. Mr. Prairie does not account for that difference by explaining why an ordinarily skilled artisan would expect Koning’s brush belt to effectively capture and carry seeds dropped from above, as in the proposed combination.” slip op. at 26

  Patent outcomesUS 9,480,199 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,480,199
• Supercell OY v. Gree, Inc.Rehearing denied
  PTAB · Nov 18, 2020 · PGR2020-00041 · APJ Lynne H Browne · PGR · Rehearing

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

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

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

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

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

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

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

  • BurdenDecided for patent owner

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

  § 102 anticipationDiscretionary denial
  Patents in suitUS 10,307,677
• Motorola Mobility LLC v. Intellectual Ventures II LLCRehearing denied
  PTAB · Jul 22, 2020 · IPR2014-00504 · APJ Patrick R Scanlon · IPR · Rehearing

  The Board denied Motorola’s rehearing request, leaving intact the remand decision that claims 1–4, 7, and 18 were not shown unpatentable on the instituted grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 3

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “that Dr. Tewfik’s testimony is not credible because he has “no personal knowledge” and “merely parrots the inventor’s claim chart.” Req. 6. We disagree, because we considered and analyzed expressly Petitioner’s argument and the basis for Dr. Tewfik’s testimony. Remand Dec. 27, 30. We determined that Dr. Tewfik’s testimony was credible, in that it was testimony concerning his opinion with respect to the claim chart, and also that his testimony was based, at least in part, on his personal experience with Windows 98 and its functionalities. Id. at 30. Indeed, the Federal Circuit noted that the rule of reason requires us to consider all pertinent evidence, and then noted explicitly that Dr. Tewfik’s testimony was one example of such pertinent evidence that needed to be considered. See Intellectual Ventures II, 692 F. App’x at 627–628. For these reasons, we are not persuaded that we misapprehended or overlooked the credibility of Dr. Tewfik’s testimony.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “not have changed the outcome of our Decision. In Figure 4, Kellerer shows a block with a central control unit, address management, routing, an application server, and network managers. Exhibit 1007, 45. This block diagram, however, does not specifically address whether or not Internet access requires an external service controller. Moreover, Petitioner provides no citations to any passages that describe the functions of the central control unit, address management, routing, the application server, and the network managers. See generally Req. 9–13. We are not persuaded that Kellerer teaches all of the components that are necessary to enable Internet access based on Figure 4 alone. That these components are located inside the car, as shown in Figure 3, also does not specifically address whether or not Internet access requires an external service controller. Accordingly, we are not persuaded that Figures 3 and 4 render the stand-alone system limitation obvious.” slip op. at 12

  § 103 obviousness
  Patents in suitUS 7,382,771
• Supercell OY v. Gree, Inc.All claims unpatentable
  PTAB · Aug 14, 2019 · PGR2018-00029 · APJ Michael W Kim · PGR · Final written decision

  Claims 1–15 are unpatentable: the Board found them ineligible under § 101 and also found claims 1–15 unpatentable under § 112(a).

  RulingsFinal written decision

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

    “division” to “way of managing a game and playing a game” does not alter our analysis, because “displaying a panel selection in a division” is no more than identifying high level details of a game that are substantively analogous to how “wagering game,” “dice game,” and “bingo game” are identified in the aforementioned cases. Accordingly, we find that independent claim 1 recites “managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions),” which, under the Guidance, is one of certain methods of organizing human activity and, thus, an abstract idea.” slip op. at 26

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

    “way of managing a game and playing a game involving displaying a panel selection in a division.” Accordingly, Petitioner is not required to account for any limitations within this characterization, at least for the purposes of determining whether a claim limitation is “well-understood, routine, conventional.” And when this framework is applied properly, we see how most of Patent Owner’s assertions fall away. First, Patent Owner argues that Petitioner has provided no evidence that the claimed use of panels is well-understood, routine, or conventional. PO Resp. 32–39 (citing Ex. 1001, 6:36–38, 6:42–46, 7:27, 7:36, 7:44–53. 7:55–56; Ex. 2002, ¶¶ 22–30). More specifically, Patent Owner asserts that the panels disclosed in the ’583 patent may “display a still image,” “display a movie when the panels are emphasized and displayed,” “zoom in,” and may have portions of frames, in which the panels are disposed, that “display the texts showing the sound effect and/or an effect display portion.” PO Resp. 32–33 (citing Ex. 1001, 7:27, 7:36, 7:44–53, 7:55–56). Patent Owner asserts that these elements provide an interactive and dynamic format using panels that was unique and unconventional. PO Resp. 34. However, Petitioner is not required to show that those properties of the panels described in the ’583 patent, whether in an interactive and dynamic format or otherwise, are well-understood, routine, and conventional, because these elements are not recited in any of the independent claims.11 Relatedly, Petitioner is not slip op. at 45

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

    “2. Analysis Petitioner asserts that the Specification of the ’583 patent fails to provide adequate written description support for the following limitations of representative claim 1:” slip op. at 58

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “Pet. Reply 25; see also Tr. 37:3–11 (continuing line of argument). Here, once again, Petitioner mistakes breadth, which is permitted, for indefiniteness. See In re Miller, 441 F.2d at 693. As admitted by Patent Owner, the limitation and, in particular the term “allowed,” is certainly broad. See Tr. 73:15–74:2. But as stated by Mr. Crane, a person of ordinary skill would have understood that “one character would not be allowed to dispose a panel . . . into a division that is occupied by a panel belonging to another character,” or if “an attempt is being made to dispose a panel into a space where the panel will not fit, it will also not be allowed to be disposed.” PO Sur-Reply 22–23 (citing Ex. 2002 ¶ 44; Ex. 1009, 107:24–108:4). Petitioner has not provided sufficient evidence or analysis to show that such an example from the ’583 patent is insufficient guidance to one of ordinary skill and compels a determination of indefiniteness.17 For these reasons, we are not persuaded that Petitioner has met its burden of showing that claims 1–15 are indefinite under 35 U.S.C. § 112(b).” slip op. at 69

  Patent outcomesUS 9,636,583 unpatentable
  § 101 eligibility§ 112 disclosurecites Alice · Enfish · Electric Power · Nautilus
  Patents in suitUS 9,636,583
• Toyota Motor Corporation v. General Electric CompanyRehearing denied
  PTAB · Jun 14, 2019 · IPR2019-00018 · APJ Joni Y Chang · IPR · Rehearing

  The Board denied Toyota’s rehearing request, leaving the denial of institution on claims 16–19 in place because the Petition did not explain how the proposed combination supplied the claimed second DC/DC conversion device.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Mitsutani’s inverter also should be included in its proposed combination of Robinson and Mitsutani. Req. Reh’g 4. Petitioner admits that “the Petition did not call it out separately.” Id. However, a request for rehearing is not an opportunity to supplement the Petition, or submit new arguments that were not made in the Petition, after the Decision has noted the deficiencies in the Petitioner’s original analysis. See 37 C.F.R. § 42.71(d).” slip op. at 4

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

    “proposed prior art combination teaches or suggests “a second DC/DC conversion device coupleable to an internal charging device,” as recited in independent claim 16. Dec. 11−15. In its Petition, Petitioner asserts that Robinson discloses the claimed “second DC/DC conversion device.” Pet. 31−32 (citing Ex. 1006 ¶ 145, Fig. 4). Petitioner modifies Robinson’s Figure 4 to “include an additional 4−34 V scavenger power converter for device port 4.” Id. Petitioner’s modified Figure 4 of Robinson is reproduced below with annotations added by Petitioner (id.).” slip op. at 3

  • BurdenDecided for patent owner

    “The burden to prove unpatentability is on the petitioner, not on the patent owner or the Board. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015) (noting that the petitioner in an inter partes proceeding has the initial burden of production and the burden” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “internal charging device” to device port 4 (light pink). Pet. 31. Petitioner asserts that “[t]his second 4−34V scavenger power converter is ‘coupleable to an internal charging device,’ as claimed, because the combined Robinson/Mitsutani system teaches a motor generator that is internal to the vehicle and would be connected to Robinson’s device port 4.” Id. at 32 (citing Ex. 1002 ¶ 76) (emphases added). slip op. at 4

  § 103 obviousness
  Patents in suitUS 9,821,668
• Toyota Motor Corp. v. GE Hybrid Technologies, LLCRehearing denied
  PTAB · May 9, 2019 · IPR2019-00015 · APJ Lynne H Browne · IPR · Rehearing

  The Board denied rehearing, leaving institution denied for claims 1–16 because the petition did not adequately explain why the prior art would be modified to meet the vehicle-control limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. PRINCIPLES OF LAW A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “pertaining to a vehicle control unit. Pet. 20, 24; Ex. 1002 ¶ 55. The Petition and the Miller Declaration provide evidence that Sugimoto discloses control device 60, and that one skilled in the art would have considered Sugimoto’s control device 60 to be a vehicle control unit, as required by each of claims 1 and 5. Id. The Petition and the Miller Declaration also provide evidence that Sugimoto’s control device 60 controls a switch. Pet. 17–19; Ex. 1002 ¶ 50. Such evidence alone, however, does not provide sufficient reasoning, with adequate rational underpinnings, for modifying Fassnacht’s process to include a vehicle control unit that is allowed to turn on a first switch when the vehicle is below a first threshold temperature. Rather, as we explained in our Decision, “[t]he allegations in the Petition rely on an assumption that mere inclusion of a vehicle control unit as part of Fassnacht’s method would result in the claimed method.” Dec. 13 (citing Pet. 20, 22–24). Further, even though we did not specifically cite paragraphs 52–53, 61–62, and 103–109 of the Miller Declaration in our Decision, we did not overlook or misapprehend them. These paragraphs provide detailed explanations of how Sugimoto’s control device 60 could have been incorporated in to Fassnacht’s vehicle, but these descriptions also start from the assumption that merely including Sugimoto’s control unit 16 in Fassnacht’s process would have resulted in the claimed method. Neither the Petition nor the Miller Declaration explain why one skilled in the art would modify Fassnacht’s process to include the step of allowing the vehicle control unit to turn on a switch when such a step is unnecessary to Fassnact’s process. In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014) (“[T]he mere capability of pulling the handles is not the inquiry that the Board should have made; it should have determined whether it would have been obvious to modify the prior art apparatus to arrive at the claimed rowing machine.”).” slip op. at 3

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

    “pertaining to a vehicle control unit. Pet. 20, 24; Ex. 1002 ¶ 55. The Petition and the Miller Declaration provide evidence that Sugimoto discloses control device 60, and that one skilled in the art would have considered Sugimoto’s control device 60 to be a vehicle control unit, as required by each of claims 1 and 5. Id. The Petition and the Miller Declaration also provide evidence that Sugimoto’s control device 60 controls a switch. Pet. 17–19; Ex. 1002 ¶ 50. Such evidence alone, however, does not provide sufficient reasoning, with adequate rational underpinnings, for modifying Fassnacht’s process to include a vehicle control unit that is allowed to turn on a first switch when the vehicle is below a first threshold temperature. Rather, as we explained in our Decision, “[t]he allegations in the Petition rely on an assumption that mere inclusion of a vehicle control unit as part of Fassnacht’s method would result in the claimed method.” Dec. 13 (citing Pet. 20, 22–24). Further, even though we did not specifically cite paragraphs 52–53, 61–62, and 103–109 of the Miller Declaration in our Decision, we did not overlook or misapprehend them. These paragraphs provide detailed explanations of how Sugimoto’s control device 60 could have been incorporated in to Fassnacht’s vehicle, but these descriptions also start from the assumption that merely including Sugimoto’s control unit 16 in Fassnacht’s process would have resulted in the claimed method. Neither the Petition nor the Miller Declaration explain why one skilled in the art would modify Fassnacht’s process to include the step of allowing the vehicle control unit to turn on a switch when such a step is unnecessary to Fassnact’s process. In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014) (“[T]he mere capability of pulling the handles is not the inquiry that the Board should have made; it should have determined whether it would have been obvious to modify the prior art apparatus to arrive at the claimed rowing machine.”).” slip op. at 3

  § 103 obviousness
  Patents in suitUS 8,409,052
• Supercell OY v. Gree, Inc.Rehearing denied
  PTAB · Oct 26, 2018 · PGR2018-00039 · APJ Lynne H Browne · PGR · Rehearing

  The Board denied GREE’s rehearing request, finding no abuse of discretion in instituting PGR of claims 1–8 based on the § 101 challenge.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “limitations. For example, as noted by Patent Owner, the full quotation is “[i]n a conventional battle game, however, during one battle, the user needs to select a command to determine the action of the player character many times . . . .” Ex. 1001, 1:41–43 (emphasis added). And by modeling that behavior in the future, the number of user operations are reduced. Accordingly, while we acknowledge that it is plausible, during trial, that Patent Owner will be able to show that such a disclosure is insufficient evidentiary support for “a second mode for executing the battle with fewer user operations received from the communication terminal than in the first mode,” we disagree that it has no factual bearing on the above limitation.” slip op. at 4

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

    “not rest solely on our determination that the claim elements or combinations of elements analyzed on pages 32–39 of the Petition were well-understood, routine, and conventional to a skilled artisan in the field. Rather, our Decision was also based on the sufficiency of Petitioner’s arguments in totality with respect to the second step of Alice, for example, that for some limitations, “the claimed improvements identified by Patent Owner do not improve the technological field. Rather, they improve game play for the user.” Dec. 17. Further, as we explained, “the claims recite the use of conventional computer activity to determine the outcome of the procedure. Such claims ‘defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101’” and that “claim 1 merely indicates that these steps are performed by a server without further details.” Dec. 12–13 (citing Elec. Power Group 830 F.3d 1351; Ex. 1001, 19:52–20:11. While that analysis does concern the first step of Alice, it, nevertheless, does have some bearing on the second step as well.” slip op. at 4

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached

    “not rest solely on our determination that the claim elements or combinations of elements analyzed on pages 32–39 of the Petition were well-understood, routine, and conventional to a skilled artisan in the field. Rather, our Decision was also based on the sufficiency of Petitioner’s arguments in totality with respect to the second step of Alice, for example, that for some limitations, “the claimed improvements identified by Patent Owner do not improve the technological field. Rather, they improve game play for the user.” Dec. 17. Further, as we explained, “the claims recite the use of conventional computer activity to determine the outcome of the procedure. Such claims ‘defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101’” and that “claim 1 merely indicates that these steps are performed by a server without further details.” Dec. 12–13 (citing Elec. Power Group 830 F.3d 1351; Ex. 1001, 19:52–20:11. While that analysis does concern the first step of Alice, it, nevertheless, does have some bearing on the second step as well.” slip op. at 4

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “address Patent Owner’s countervailing evidence with respect to the above limitations, in particular, paragraphs 24 and 28–34 of Mr. Zyda’s Declaration. Req. 8–9. While we acknowledge that it was not expressly referenced in our Decision, it was taken into account and determined that, while it is worthy of some weight, Petitioner’s evidence and analysis presented a sufficient factual dispute for which trial is warranted. Given the Petition’s adequate analysis, at this stage of the proceeding, about the generic nature of the components recited in the ’308 patent and the lack of inventive means for achieving the results claimed (Pet. 32–39), we are unpersuaded that our Decision granting institution was an abuse of discretion.” slip op. at 5

  § 101 eligibilitycites Berkheimer
  Patents in suitUS 9,669,308
• Marker Volkl USA, Inc. v. Kneebinding, Inc.All claims unpatentable
  PTAB · Oct 15, 2018 · IPR2017-01265 · APJ Matthew S Meyers · IPR · Final written decision

  Claims 1 and 4–9 are unpatentable as anticipated by DE ’298 and obvious over Boussemart and DE ’298.

  RulingsFinal written decision

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

    “Id. at 14.3 Petitioner disagrees with Patent Owner’s assertions, arguing that the ’867 patent’s claim language and Specification establish that the two elements “are inextricably linked.” Pet. Reply 1–9. Although we are not in complete agreement with either parties’ construction, we, nevertheless, agree generally with Petitioner, for the reasons set forth below, that the “lateral release assembly” and “upper heel housing” recited by claim 1 should not be construed as being separate functional parts of the upper heel assembly that separate and isolate lateral and vertical release forces, respectively. We begin our analysis with the express claim language. Specifically, claim 1 recites in part “a lower heel assembly attached to the ski” and “an upper heel assembly coupled to the lower heel assembly and having a lateral release assembly for applying lateral securing pressure to the ski boot, the upper heel assembly comprising an upper heel housing that is configured to compress the heel portion of the ski boot downward.” Ex. 1001, 11:36– 12:2. Thus, from the claim itself, we know that (1) the “upper heel assembly” is coupled to the “lower heel assembly” and, thus, attached to the ski; (2) this associated upper/lower heel assembly has a “lateral release assembly”; (3) the lateral release assembly is for “applying lateral securing pressure to the ski boot”; and (4) the upper heel assembly “is configured to compress the heel portion of the ski boot downward.” However, none of this claim language requires that the “lateral release assembly” and “upper heel housing” must be treated as separate functional parts of the upper heel assembly that separate and isolate lateral and vertical release forces,” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Regarding the level of skill in the art, Petitioner asserts: a POSA in the February 18, 2003 timeframe would be an individual with a Bachelor’s degree in mechanical engineering or related technology and three to five years of experience in either the design, fabrication, or manufacture of ski bindings and related equipment, research concerning ski bindings and related equipment, or the development of standards concerning ski bindings or related equipment, in addition to ten years or more of personal experience using ski bindings. Pet. 14–15 (citing Ex. 1006 ¶ 32). In response, “Patent Owner agrees with Petitioner’s definition of a person of ordinary skill in the art (‘POSITA’) for purposes of the ’867 patent.” PO Resp. 3 (citing Pet. 14–15). Having considered the evidence, we find that Petitioner’s articulation of the level of ordinary skill is correct. We also note that the cited references often reflect the appropriate level of skill at the time of the claimed invention, and that the references cited here appear to reflect the level agreed to by the parties. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [can] reflect the appropriate level of skill in the art”).” slip op. at 11

  • BurdenUnpatentable

    “Patent Owner responds that DE ’298 does not disclose an “upper heel assembly” that compresses the heel portion of the ski boot downward. PO Resp. 25–30. Patent Owner argues that “the disclosure of DE ’298 makes clear that the hold-down member 13 and heel holder 25 only resist upward motion by the ski boot heel – they do not ‘compress the heel portion of the ski boot downward’ by providing downward force on the heel.” PO Resp. 26. To support its position, Patent Owner provides an annotated copy of the annotated copy of Figure 2, provided by Petitioner and designated “Fig. Q” in the Petition. See Pet. 41. More particularly, Patent Owner annotated Petitioner’s “Fig. Q,” to show “a gap (circled in purple) between the top edge of the ski boot sole (which Petitioner added; the original figure in DE ’298 does not show the boot) and the bottom edge of arms 26 of heel holder 25.” PO Resp. 27–30 (citing Ex. 2001 ¶ 62). Figure 2, annotated, depicts the DE ’298 releasing/retaining device of a releasing ski binding. And, because there is a “gap” between the ski boot, superimposed by Petitioner in Fig. Q (see, e.g., Pet. 41), and arms 26 of heel holder 25, Patent Owner argues that DE ’298 “cannot provide downward force as the arms 26 do not touch the ski boot heel.” PO Resp. 28 (citing Ex. 2001 ¶ 63).4 Therefore, although Patent Owner acknowledges that DE ’298 discloses that its hold-down member “hold[s] the shoe down ‘against upwardly pivoting’” (PO Resp. 26–27 (citing Ex. 1004, 4), Patent Owner argues that merely “[o]pposing upward motion does not compress the ski boot downward as required by the challenged claims.” 5 PO Resp. 28. 4 The cited portions of Dr. Dodge’s Declaration largely mirror the language set forth in the corresponding portion of the Patent Owner Response. 5 Patent Owner submits that “[t]he plain and ordinary meaning of the term ‘compress’ means ‘to squeeze or press together’, or ‘to make smaller as if by squeezing.’” PO Resp. 28 (citing Ex. 2003). Petitioner responds that Patent Owner’s reading of DE ’298 is strained, that other portions of the reference make clear that DE ’298 discloses an “upper heel assembly” that does in fact compress the heel downward, and that any purported “gap” in the drawing is a red herring that does not comport with basic physics. Pet. Reply 15–18.” slip op. at 16

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

    “Patent Owner responds that DE ’298 does not disclose an “upper heel assembly” that compresses the heel portion of the ski boot downward. PO Resp. 25–30. Patent Owner argues that “the disclosure of DE ’298 makes clear that the hold-down member 13 and heel holder 25 only resist upward motion by the ski boot heel – they do not ‘compress the heel portion of the ski boot downward’ by providing downward force on the heel.” PO Resp. 26. To support its position, Patent Owner provides an annotated copy of the annotated copy of Figure 2, provided by Petitioner and designated “Fig. Q” in the Petition. See Pet. 41. More particularly, Patent Owner annotated Petitioner’s “Fig. Q,” to show “a gap (circled in purple) between the top edge of the ski boot sole (which Petitioner added; the original figure in DE ’298 does not show the boot) and the bottom edge of arms 26 of heel holder 25.” PO Resp. 27–30 (citing Ex. 2001 ¶ 62). Figure 2, annotated, depicts the DE ’298 releasing/retaining device of a releasing ski binding. And, because there is a “gap” between the ski boot, superimposed by Petitioner in Fig. Q (see, e.g., Pet. 41), and arms 26 of heel holder 25, Patent Owner argues that DE ’298 “cannot provide downward force as the arms 26 do not touch the ski boot heel.” PO Resp. 28 (citing Ex. 2001 ¶ 63).4 Therefore, although Patent Owner acknowledges that DE ’298 discloses that its hold-down member “hold[s] the shoe down ‘against upwardly pivoting’” (PO Resp. 26–27 (citing Ex. 1004, 4), Patent Owner argues that merely “[o]pposing upward motion does not compress the ski boot downward as required by the challenged claims.” 5 PO Resp. 28. 4 The cited portions of Dr. Dodge’s Declaration largely mirror the language set forth in the corresponding portion of the Patent Owner Response. 5 Patent Owner submits that “[t]he plain and ordinary meaning of the term ‘compress’ means ‘to squeeze or press together’, or ‘to make smaller as if by squeezing.’” PO Resp. 28 (citing Ex. 2003). Petitioner responds that Patent Owner’s reading of DE ’298 is strained, that other portions of the reference make clear that DE ’298 discloses an “upper heel assembly” that does in fact compress the heel downward, and that any purported “gap” in the drawing is a red herring that does not comport with basic physics. Pet. Reply 15–18.” slip op. at 16

  Patent outcomesUS 8,955,867 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,955,867

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.