• Gain Capital Holdings, Inc. v. Oanda CorporationAll claims unpatentable
  PTAB · Mar 16, 2022 · CBM2020-00023 · APJ Justin T Arbes · CBM · Final written decision

  Claims 1–12 are unpatentable under § 101; proposed substitute claim 13 is unpatentable under §§ 101 and 103 over Pictet, and the revised motion to amend is denied.

  RulingsFinal written decision

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

    “all directed to “time-based trade analysis” “improperly describes the claims at too high a level of abstraction, as warned against in” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335, 1337 (Fed. Cir. 2016). PO Resp. 5–6. We disagree. Petitioner’s articulation of the abstract idea to which claim 1 is allegedly directed is appropriately focused and tied to the specific language of the limitations of the claim. Petitioner explains how the recited “price data” and “current system position information” are the key inputs for time-based trade analysis and how calculating a trade recommendation using sub-models based on different times of day constitutes such analysis. See Pet. 31–34. Further, “time-based trade analysis” is not a general field, but rather a particular practice, namely the analysis of potential trades based on time. That type of analysis is reflected expressly in claim 1 via the use of a plurality of sub-models where each is based on “a different time of day.” Petitioner’s analysis is persuasive, as it is consistent with the language of claim 1 and supported by the testimony of Mr. Donefer, which we credit.6 Based on the full record developed during trial, we are persuaded that claim 1 recites time-based trade analysis. Doing so is a fundamental economic practice, which is one of the certain methods of organizing human activity identified in the Guidance, and, thus, an abstract idea.” slip op. at 21

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

    “We disagree. Claim 1 does not recite a distributed system architecture, sub-model calculations executed concurrently in parallel, or real-time operation for a large number of users, all of which Patent Owner relies on to show a patent-eligible application of the alleged abstract idea. See Reply 6, 8; Ex. 1038 ¶¶ 22, 25–26. Claim 1 broadly recites “calculating trade recommendation information from each of a plurality of trading sub-models,” each “based on a different time of day,” and “calculating a trade recommendation . . . based on said trade recommendation information from each of said trading sub-models.” The claim does not specify how, when, or by what component the calculations are performed. Thus, Patent Owner’s contention that steps (d) and (e) do not represent well-understood, routine, and conventional activity is not commensurate with the language of the claim. With respect to what is actually recited in the claim, we are persuaded based on the full trial record that the calculations are the abstract idea itself (i.e., the fundamental economic practice of “time-based trade analysis”), rather than additional elements that could transform the claim into a patent-eligible application of an abstract idea. See supra Section II.F.1.b; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“[A] claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). Regardless, though, Petitioner also has provided persuasive evidence regarding the conventionality of steps (d) and (e), particularly given the broad manner in which they are recited in the claim. See, e.g., Ex. 1004 ¶¶ 69–84; Ex. 1021, 115 (“It is widely documented that return volatility varies systematically over the trading day and that this pattern is highly correlated with the intraday variation of trading volume and bid-ask spreads.”); Ex. 1019, 13 (“Trading models offer a real-time analysis of foreign exchange movements and generate explicit trading recommendations. These models are based on the continuous collection and treatment of foreign exchange quotes by market makers around the clock at the tick-by-tick frequency level.”); Ex. 1031, 728–732 (describing modeling that accounts for time periods of different levels of activity, such as when particular FX markets are open, and using time intervals of “hours, days, weeks or years”). Petitioner also has provided a detailed explanation citing persuasive evidence that, even if claim 1 did require distributed parallel processing and real-time trading model calculations, both were well-understood, routine, and conventional at the time of the ’534 patent. See Reply 9–11, 15–17; Ex. 1038 ¶¶ 23 (citing, for example, Ex. 1031, 228–232), 29–35 (citing, for example, Ex. 1031, 718). We credit Mr. Donefer’s testimony, which is supported by evidence in the record and unrebutted—Patent Owner did not address the evidence discussed in the Petition and Mr. Donefer’s initial declaration in its Response, did not file a Sur-Reply addressing Mr. Donefer’s reply declaration and cited evidence, and did not provide any contrary evidence in the record. See Reply 1, 3.” slip op. at 30

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “testimony of Mr. Donefer, for why a person of ordinary skill in the art would have had reason to combine Pictet’s teachings and arrive at the method of proposed substitute claim 13. Id. at 24–25 (citing Ex. 1031, 716–723; Ex. 1038 ¶¶ 52–58, 75–77). Petitioner argues that a person of ordinary skill in the art “would have recognized that Pictet’s data collection and storage steps (i.e., steps (a)-(c)) provide inputs for the subsequent calculations (i.e., steps (d)-[(e)]),” “would have understood Pictet as teaching that the distributed parallel processing . . . applies to the implementation of the trading models performing those calculations,” and would have had “reason to use at least five of the parameters discussed [in Pictet] when configuring the rules governing the ‘grand’ model.” Id. at 24. Petitioner further contends that numerous types of parameters were routinely used when designing and evaluating trade models, and Pictet’s moving average . . . is no different. Moreover, Pictet describes two categories of threshold values (i.e., trend and overbought/oversold) and expressly teaches using “several threshold values of both types,” which at a minimum suggests four such parameters. The voting scheme is also an integral part of the weighted moving average Pictet describes. A [person of ordinary skill in the art] also had reason to incorporate a time parameter setting the amount of time in the past that is considered, since a [person of ordinary skill in the art] would have understood that price data from the distant past is less 984, 990 (Fed. Cir. 2020) (non-precedential) (recognizing that “the Board need not address issues that are not necessary to the resolution of the proceeding”). relevant to a moving average. Pictet also teaches using stop-loss and stop-profit parameters as part of its model implementation. Id. at 24–25 (citations omitted). We have reviewed Petitioner’s analysis and find it persuasive. Petitioner’s reasoning is consistent with the disclosure of Pictet and supported by the testimony of Mr. Donefer, which we credit. For the reasons stated by Petitioner and Mr. Donefer, we find that a person of ordinary skill in the art would have had reason to combine the cited teachings of Pictet in the manner asserted with a reasonable expectation of success.” slip op. at 53

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “3. Patentability Pursuant to 37 C.F.R. § 42.221(d)(2), Petitioner “bears the burden of persuasion to show, by a preponderance of the evidence,” that proposed substitute claim 13 is unpatentable. Petitioner argues that proposed substitute claim 13 fails to recite patent-eligible subject matter under 35 U.S.C. § 101, is indefinite under 35 U.S.C. § 112, second paragraph, and would have been obvious under 35 U.S.C. § 103(a). Opp. 3–25. For the reasons explained below, we determine that Petitioner has met its burden to show, by a preponderance of the evidence, that claim 13 is unpatentable as claiming patent-ineligible subject matter under 35 U.S.C. § 101 and obvious under 35 U.S.C. § 103(a), and need not reach Petitioner’s arguments regarding definiteness under 35 U.S.C. § 112, second paragraph.” slip op. at 39

  Patent outcomesUS 7,496,534 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Enfish · KSR · Graham
  Patents in suitUS 7,496,534
• Bayerische Motoren Werke Aktiengesellschaft / BMW Of North America, LLC v. Paice LLC & The Abell Foundation, Inc.All claims unpatentable
  PTAB · Jan 31, 2022 · IPR2020-01386 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 33–44, 46, 49, 50, 52–55, 68, 105, 188, 189, 199–206, 208, and 211–214 are unpatentable, principally as obvious over combinations including Severinsky and Nii.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have “a graduate degree in mechanical, electrical or automotive engineering with at least some experience in the design and control of combustion engines, electric or hybrid electric vehicle propulsion systems, or design and control of automotive transmissions” or alternatively “a bachelor’s degree in mechanical, electrical or automotive engineering and at least five years of experience in the design of combustion engines, electric vehicle propulsion systems, or automotive transmissions.” Pet. 7 (citing Ex. 1008 ¶¶ 44–47). Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp.” slip op. at 11

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Patent Owner agrees to the claim constructions adopted previously by the . . . Board, which BMW applies in its Petition.” PO Resp. 27. Therefore, we utilize these claim constructions in this Decision as necessary. slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “controller to alter the vehicle’s operating points.” Pet. 23 (citing Ex. 1008 ¶¶ 278, 283). According to Petitioner, this “would only require modifying Severinsky’s logic to use the information reflecting the driver’s repeated driving operations over time, rather than simply using general-purpose parameters.” Id. Dr. Davis testifies he relies on Nii’s recognition of a pattern such as a daily commute and further testifies why a skilled artisan would be motivated to use the pattern information to modify Severinsky’s controller. Ex. 1008 ¶¶ 274–276. We credit Dr. Davis’s testimony. Petitioner’s proposed combination as articulated by Dr. Davis satisfies the reasonable expectation of success test because it requires no more than what the ’634 patent describes is within the level of skill in the art. Ex. 1001 40:61–63. Based on our review of the evidence cited by Petitioner and after considering Patent Owner’s contentions, we find Petitioner states reasons why a skilled artisan would have been motivated to combine the teachings of Severinsky and Nii and would have had a reasonable expectation of success in doing so.” slip op. at 35

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “witness must be qualified as an expert by knowledge, skill, experience, training, or education to testify in the form of an opinion.” Consol. TPG, 34 (citing Fed. R. Evid. 702). Further, the Trial Practice Guide also provides that “[a] person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be ‘qualified in the pertinent art.’” Id. (citing Sundance, 550 F.3d at 1363–64). In this case, Dr. Shahbakhti is qualified in the pertinent art. He earned a Ph.D in Mechanical Engineering and engaged in “research activities in the past 20 years . . . centered on design, modeling and control of automotive propulsion systems, including conventional, hybrid electric, and electric vehicles.” Ex. 2016 ¶ 8. He also “spent two years as a post-doctoral scholar at the Mechanical Engineering Department at the University of California, Berkeley.” Id. ¶ 7. He is currently “an Associate Professor of Mechanical Engineering at the University of Alberta and an Adjunct Professor of Mechanical Engineering at Michigan Technological University.” Id. ¶ 6. Dr. Shahbakhti also engaged extensively in various relevant research and development activities including building “a hybrid electric powertrain test platform including a 100-kW AC electric motor and a 201-kW GM Ecotec engine . . . for testing various aspects of powertrain performance including real-time torque control during transient and steady state operations.” Id. ¶ 10. Petitioner doesn’t specifically quarrel with Dr. Shahbakhti’s qualifications in the pertinent art per se but rather focuses on whether he is sufficiently versed in the pertinent art as of September 1998 to offer testimony from the perspective of one of ordinary skill in the art. See Mot. 2. Whether or not Dr. Shahbakhti was a skilled artisan in September 1998 is irrelevant because an expert does not have to be one of ordinary skill in the art during the relevant time frame to be qualified as an expert. T. Rowe Price Inv. Servs., Inc. v. Secure Axcess, LLC, CBM2015-00027, Paper 31, 22 (PTAB June 13, 2016) (“[T]he Federal Circuit has not placed temporal restrictions, such as requiring an expert be qualified in the pertinent art at the time of the invention.”).” slip op. at 72

  Patent outcomesUS 7,237,634 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,237,634
• Lenovo Holding Company, Inc. / Lenovo (United States) Inc. et al. v. Interdigital Technology CorporationAll claims unpatentable
  PTAB · Jan 26, 2022 · IPR2020-01413 · APJ Sally C Medley · IPR · Final written decision

  Claims 1–10 and 14–18 are unpatentable as obvious over Tiedemann and Gesbert; the Board did not reach the other asserted obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “We adopt Petitioner’s definition of the level of skill for purposes of this Decision, except that we delete the phrase “at least” to avoid including 7 Patent Owner does not present any objective evidence of nonobviousness as to the challenged claims. ambiguity in the definition of the level of skill. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific findings as to the level of ordinary skill in the art “where the prior art itself reflects an appropriate level and a need for testimony is not shown”).” slip op. at 6

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

    “We agree with Petitioner that “associated with” is an adjective phrase where the word “associated” is itself an adjective, not a verb as Patent Owner argues. Pet. Reply 5–6 (citing Ex. 1021). Tellingly, Patent Owner’s arguments and supporting evidence are premised on the mischaracterization of the disputed limitation to require “that the subsequent downlink transmission be ‘associated with at least one [MCS] in response to the transmitted first [CQI] and . . . difference indications.” PO Resp. 15. The claim, however, does not recite that the subsequent downlink transmission be associated with at least one modulation and coding set. Insertion of the word “be” or “to be” changes the meaning of the disputed limitation. Accordingly, we decline to rewrite the claim as Patent Owner suggests. As such, we find that “in response to” modifies “receive,” not “associated with.” Thus, the plain meaning of the claim language includes a modulation and coding set associated with the subsequent downlink transmission. The plain language of the claim does not require that the modulation and coding set be selected based on the first channel quality indication and plurality of difference indications as Patent Owner asserts.” slip op. at 8

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “and Gesbert are directed to the transmission of downlink quality reports on the uplink to overcome the problem of non-optimal allocation of downlink resources. Ex. 1003 ¶ 366 (citing Ex. 1001, 1:12–23; Ex. 1005, 1:7–11, 2:54–57, 3:5–19; Ex. 1012 code (570), 1:21–50, 3:46–51). It also is not disputed, and we find, that Gesbert teaches deriving a mean SINR (“channel quality indication”) indicating a channel quality of a plurality of training tones/pilot signals (“downlink resources”). Id. ¶ 363 (citing Ex. 1012, 2:56– 3:3, 8:13–41; Ex. 1017 ¶ 32). We give substantial weight to Dr. Acampora’s testimony that implementing a mean value in place of Tiedemann’s three bit field to report link quality information was within the level of ordinary skill in the art at the time of the claimed invention and would have been predictable. Id. ¶¶ 367–368. In particular, we give substantial weight to Dr. Acampora’s testimony that using the mean channel quality value in place of the best channel value would have resulted in the mean channel quality value being used in the same way as the best value in a predictable way to report link quality information. See Ex. 1003 ¶ 367.” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “We determine that Petitioner’s reasons for combining Tiedemann and Gesbert are sufficiently specific and persuasive, given the relatively high level of ordinary skill in the art. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”); see also id. at 416 (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”). It is not disputed, and we find, that like the ’726 patent, Tiedemann and Gesbert are directed to the transmission of downlink quality reports on the uplink to overcome the problem of non-optimal allocation of downlink resources. Ex. 1003 ¶ 366 (citing Ex. 1001, 1:12–23; Ex. 1005, 1:7–11, 2:54–57, 3:5–19; Ex. 1012 code (570), 1:21–50, 3:46–51). It also is not disputed, and we find, that Gesbert teaches deriving a mean SINR (“channel quality indication”) indicating a channel quality of a plurality of training tones/pilot signals (“downlink resources”). Id. ¶ 363 (citing Ex. 1012, 2:56– 3:3, 8:13–41; Ex. 1017 ¶ 32). We give substantial weight to Dr. Acampora’s testimony that implementing a mean value in place of Tiedemann’s three bit field to report link quality information was within the level of ordinary skill in the art at the time of the claimed invention and would have been predictable. Id. ¶¶ 367–368. In particular, we give substantial weight to Dr. Acampora’s testimony that using the mean channel quality value in place of the best channel value would have resulted in the mean channel quality value being used in the same way as the best value in a predictable way to report link quality information. See Ex. 1003 ¶ 367.” slip op. at 31

  Patent outcomesUS 8,199,726 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,199,726
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Solas Oled Ltd.Institution denied
  PTAB · Jan 13, 2022 · IPR2021-01254 · APJ Sally C Medley · IPR · Institution

  The Board denied institution for claims 1–14 because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “Petitioner fails to explain, with supporting evidence, how Baltierra’s monitoring state machine 122 is operable to “recognize, based on at least the first and second outputs, at least one multi-touch gesture.” Baltierra describes that in some embodiments, each tactile contact has its own instance of a contact state machine, for example, a first finger may have a first contact state machine and a second finger a second contact state machine. Ex. 1005 ¶ 31. Monitoring state machine 122 “monitors the change in the number of tactile contacts by monitoring the state of the contact state machines 120.” Id. ¶ 32. Petitioner has not shown that monitoring the change of state or monitoring the change in the number of tactile contacts meets the claim limitation of a multi-touch state-machine module operable to “recognize, based on at least the first and second outputs, at least one multi-touch gesture.” As Patent Owner points out, Baltierra’s identifier module 104 is described as recognizing multi-touch gestures, not monitoring state machine 122. Id. ¶¶ 16, 22–25.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Relying on the testimony of Dr. Benjamin B. Bederson, Petitioner offers an assessment as to the level of ordinary skill in the art and the general knowledge of a person of ordinary skill at the time of the ’767 patent. Pet. 8 Katou (Ex. 1006, 21–46). Any reference to Katou hereinafter will be to the English-language translation. 5 U.S. Pat. Appl. Pub. No. US 2007/0176906 A1, published Aug. 2, 2007 (Ex. 1007, “Warren”). 6 U.S. Pat. Appl. Pub. No. US 2008/0036743 A1, published Feb. 14, 2008 (Ex. 1008, “Westerman”). (citing Ex. 1002 ¶¶ 24, 30–32). For example, Dr. Bederson states that a person having ordinary skill in the art “would have been someone with at least a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, plus at least two years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Ex. 1002 ¶ 30. Patent Owner does not propose an alternative assessment. See generally Prelim. Resp. We adopt Petitioner’s definition of the level of skill for purposes of this Decision, except that we delete the phrase “at least” to avoid including ambiguity in the definition of the level of skill.” slip op. at 7

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

    “For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D. Asserted Obviousness of Claims 1 and 9–14 over Baltierra alone or over” slip op. at 8

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

    “sufficiently why a person having ordinary skill in the art would have been motivated to make the combination as proposed by Petitioner. The Petition does not make clear whether Petitioner proposes to integrate Baltierra’s identifier module 104 into monitoring state machine 122, or else to maintain Baltierra’s identifier module 104, but also to include the function of identifier module 104 in monitoring state machine 122. If the former, then Petitioner fails to explain how identifier module 104 can still be the claimed “gesture-processing logic” also recited in the claim. In other words, if the identifier module 104 is eliminated and integrated into monitoring state machine 122, then the Petition is inconsistent insofar as it maps the “gestureprocessing logic” to identifier logic module 104 separate from the claimed “plurality of state-machine modules.” See Pet. 23–24, 31–32. If, on the other hand, Petitioner proposes to maintain Baltierra’s identifier logic module 104 in the proposed combination, but also to add the functionality of recognizing multi-touch gestures to monitoring state machine 122, then we agree with Patent Owner that Petitioner and Dr. Bederson fail to explain why a person having ordinary skill in the art would have wanted to include the function of recognizing gestures into the monitoring state machine when the identification module already provides that function. Pet. 31; Ex. 1002 ¶ 105. Moreover, to the extent that Petitioner proposes to integrate whatever is in Baltierra’s identifier module 104 into monitoring state machine 122, we determine that Petitioner fails to explain why a person having ordinary skill in the art would have done so. In particular, Petitioner argues that “[b]ecause Baltierra’s monitoring state machine has access to the gesture information provided by the separate contact state machines, it can be programmed similar to the identification module to provide the function of recognizing gestures (e.g., a pinch) and mapping it to a corresponding function (e.g., Zoom Out).” Pet. 31. Dr. Bederson testifies the same. Ex. 1002 ¶ 105. Petitioner then explains that Katou teaches “integrat[ing] these functions” and that it would have been obvious to make the combination “because of the ‘separation of concerns’ software engineering principle.” Pet. 31–32 (citing Ex. 1002 ¶¶ 48–49, 105; Ex. 1036; Ex. 1006 ¶¶ 11–12, 40–43, Fig. 1). Petitioner fails to explain how the quoted passage from Katou teaches “integrating these functions.” Id. at 31. And, even if Katou somehow teaches “integrating these functions,” such a teaching would be undermined by Petitioner’s suggestion that integration would have been desirable based on the “separation of concerns” principle. See id. at 32. According to Dr. Bederson, the “separation of concerns” principle “refers to the idea that by separating the components of a technical system and minimizing the coordination between them, each can be developed, tested, and updated separately from each other.” Ex. 1002 ¶ 48 (emphasis added). As Dr. Bederson further testifies, a common application of the “separation of concerns” principle is in the design of software systems, where designers “design software modules to operate independently of each with well-defined Application Programming Interfaces (APIs). This approach makes it possible to change the implementation of one module (without changing its API) without the other modules being aware of those changes.” Id. ¶ 49. Thus, the “separation of concerns” principle, which advocates separating software modules, is in direct conflict with Petitioner’s proposal to “integrate these functions” into one module.” slip op. at 18

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,526,767
• Bayerische Motoren Werke Aktiengesellschaft / BMW Of North America, LLC v. Paice LLC & The Abell Foundation, Inc.All claims unpatentable
  PTAB · Jan 3, 2022 · IPR2020-01299 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–12 are unpatentable: claims 1–12 as obvious over Severinsky and Quigley, and claims 1–3, 5–9, 11, and 12 as obvious over Severinsky and Nii.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art would have “a graduate degree in mechanical, electrical or automotive engineering with at least some experience in the design and control of combustion engines, electric or hybrid electric vehicle propulsion systems, or design and control of automotive transmissions” or alternatively “a bachelor’s degree in mechanical, electrical or automotive engineering and at least five years of experience in the design of combustion engines, electric vehicle propulsion systems, or automotive transmissions.” Pet. 10 (citing Ex. 1008 ¶¶ 43–46). Patent Owner does not address the level of ordinary skill in the art in the Patent Owner Response. See generally PO Resp. We agree with Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’761 patent and the prior art of record.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “The District Court noted Petitioner “seeks to limit how the controller derives this pattern, basing it solely on the driver’s repeated driving operations,” while Patent Owner “suggests that the question of how the pattern is derived was left open-ended by the claim language and covers vehicle operation in general.” Ex. 2007, 9. The District Court rejected Petitioner’s arguments for a more limited construction that incorporates “monitoring the driver’s repeated driving operations over time” because the construction was not supported by the Specification or prosecution history. Id. at 11. In adopting the broader construction proposed by Patent Owner, the District Court provided the following pertinent observations: It is also worth noting that [Patent Owner], whether in the specification or at oral argument, has provided few examples of other factors that might play into the expected pattern of operation. It seems apparent that driving operations will be the most central factor in ascertaining the pattern of operation. Nevertheless, the plain language does not rule out other inputs. Thus, because [Patent Owner]’s construction hews most closely to the broad language of the claim, the Court will adopt it: “an expected pattern of operation.” Id. We agree with the District Court’s reasoning and adopt its construction of “predicted near-term pattern of operation” as “an expected pattern of operation.” We, thus, maintain our preliminary construction for purposes of this Decision.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Third, Patent Owner’s argument that Petitioner fails to show a reasonable expectation of success ignores the explicit teaching of the ’761 patent. The ’761 patent states “It is within the skill of the art to program a microprocessor to record and analyze such daily patterns, and to adapt the control strategy accordingly.” Ex. 1001, 39:58–61. Dr. Davis testifies “[a] skilled artisan would have understood how to implement Quigley’s pattern monitoring functionality into the controller of the Severinsky hybrid vehicle to alter the vehicle’s operating points” and “would only need to modify Severinsky’s logic to use the information reflecting the predicted journey parameters as taught by Quigley, rather than simply using ‘vehicle designer’s’ choices which are independent of predicted usage.” Ex. 1008 ¶ 200. Petitioner’s proposed combination as articulated by Dr. Davis establishes a reasonable expectation of success because it requires no more than what the ’761 patent describes is within the level of skill in the art. In this case, both Severinsky and Quigley address control strategies for hybrid vehicles. Quigley discloses monitoring vehicle operations and predicting an expected pattern of operation. The applicant distinguished Severinsky during prosecution of the ’761 patent for the precise reason that Severinsky lacks Quigley’s monitoring of vehicle operation to derive a pattern of operation. Petitioner shows Severinsky’s controller monitors 16 We disagree with Patent Owner’s contention that Petitioner’s argument that Quigley teaches monitoring engine speed and other matters is untimely. Petitioner’s argument is responsive to Patent Owner’s contentions that Quigley monitors only journey time and journey distance. many of the same parameters as Quigley17 and a skilled artisan would have been motivated to combine the teachings for the reasons disclosed in Quigley. Pet. 30–34; Ex. 1008 ¶¶ 197–200. The interrelated teachings of Severinsky and Quigley, thus, provide sufficient motivation to combine. KSR, 550 U.S. at 418 (explaining motivation to combine can be found in the “interrelated teachings of multiple patents”); Zup, LLC v. Nash Manufacturing, Inc., 896 F. 3d 1365, 1369 (Fed. Cir. 2018).” slip op. at 31

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

    “We agree with Patent Owner that the evidence cited in the Petition does not support Petitioner’s inherency assertion concerning Nii. Dr. Davis testifies that “Nii also recognized patterns in the variation of road load by determining and storing the frequency of vehicle power consumption in different zones.” Ex. 1008 ¶ 308. Dr. Davis does not testify that Nii “is necessarily determining patterns based on variation in road load.” Pet. 57. Because Petitioner does not support this contention with evidence, it also fails to support its conclusion that the control strategy of Severinsky modified with the teachings of Nii would necessarily be based on information concerning the variation in road load. For these reasons, we determine Petitioner has not established by a preponderance of the evidence that claim 4 would have been unpatentable over the combined teachings of Severinsky and Nii.” slip op. at 57

  Patent outcomesUS 8,630,761 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,630,761
• Configit A/S v. Versata Development Group, Inc.Instituted
  PTAB · Dec 22, 2021 · IPR2021-01055 · APJ Kevin F Turner · IPR · Institution

  The Board instituted IPR of claims 1–5 and 9–19 on five § 103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

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

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’766 Patent. Accordingly, we institute an inter partes review of claims 1–5 and 9–19 of the ’766 Patent on the grounds of unpatentability raised in the Petition.” slip op. at 2

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

    “For a reference to qualify as a printed publication, “before the critical date the reference must have been sufficiently accessible to the public interested in the art.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988). “When there is an established publisher there is a presumption of public accessibility as of the publication date.” VidStream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020); see also Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential) (determining that, based on the totality of the evidence, a reference bearing a copyright date, a printing date, and an ISBN date all earlier than the critical date of the challenged patent, and the reference was a “textbook from an established publisher” provided sufficient indicia at the institution state).” slip op. at 15

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

    “configuration error” With respect to the limitation “configuration error,” Patent Owner asserts that configuration error means “either (1) the condition that occurs when ‘a rule or series of rules is not properly defined and produces an undesired effect’ or (2) ‘a series of improperly defined rules causes a part to be in more than one state at the same time.’” Prelim. Resp. 10 (citing Ex. 1001, 1:54–61; Ex. 2001 ¶ 40). At this stage of the proceeding, we find that Patent Owner’s proposed construction is supported by the ’766 Patent specification, and adopt Patent Owner’s proposed meaning of “configuration error,” with the following remarks with respect to Patent Owner’s additional arguments regarding the claim construction. Patent Owner, however, also argues that “the specification concerns errors internal to the configuration engine and not ‘errors’ that prevent product configurator users from making their desired but impermissible selections.” Prelim. Resp. 10. We do not agree with Patent Owner’s argument because the first part of the construction, namely rules not being properly defined and “produc[ing] an undesired effect,” does not specify anything about an error being “internal” to the configuration engine. The specification provides that such a configuration error “may occur when a rule or series of rules is not properly defined and produces an undesired effect, such as the exclusion of a part that should be selectable” (Ex. 1001, 1:54–61, emphasis added), but the latter clause provides only one example of the undesired effect. We are not persuaded, based on our review of the Specification of the ’766 Patent that “an undesired effect” should be limited to the exclusion of a part. Thus, although Patent Owner argues that “a configuration error is not a condition that occurs when a user attempts to make a choice that is prohibited by a rule” (Prelim. Resp. 11 (citing Ex. 2001 ¶ 43)), at this juncture, we are not persuaded that such a condition would not be an undesired effect, according to the adopted construction. Therefore, we do not further limit the construction of “configuration error.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS Level of Ordinary Skill in the Art Petitioner, supported by Dr. Wood’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “a Bachelor’s degree in Computer Science, Computer or Electrical Engineering, Engineering Science, an engineering major with a significant computational component, or a similar discipline, or with at least two years of research or experience in configurable systems including testing.” Pet. 8 (citing Ex. 1003 ¶¶ 53–55). Patent Owner argues that “[t]here may be some differences between this and the correct level of skill in the art but those differences will not affect this case at this stage,” such that Patent Owner applies the proposed level of skill in the art without agreeing to it. Prelim. Resp. 10 (citing Ex. 2001 ¶¶ 35–37). At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 6

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,836,766
• Momentum Dynamics Corporation v. Witricity CorporationInstitution denied
  PTAB · Dec 10, 2021 · IPR2021-01165 · APJ Jameson Lee · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that Stark, alone or with Mecke, rendered them obvious.

  RulingsInstitution decision

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

    “But limitations 1[c] and 1[d] have to be met together, not separately in disparate disclosures of Stark. To meet limitation 1[c], Petitioner relies on the parameters of the working prototype that was constructed by the author of Stark and described in Chapter 7 of Stark. Pet. 33–37. The Q1 = Q2 = 1000 notion is in a separate section for developing an intuition where ω1 ≠ a common resonant frequency among all coils. Id. at 174. Regarding its constructed prototype, Stark specifically states: “At this point, it remains to tune the four coils such that they are all resonating at the same frequency.”4 Id. at 190. Further, in Chapter 8, where Stark specifically discusses measurements from the prototype, Stark reveals that the Qs designed into the prototype are: Q1 = 32, Q2 = 34; Q1 = 23, Q2 = 22; Q1 = 29, Q2 = 26. Id. at 206, 212, 215. The prototype was not designed or implemented with Q1 = Q2 = 1000. Thus, Petitioner has not shown satisfaction of limitations 1[c] and 1[d], by relying on the disclosure of Q1 = Q2 = 1000.” slip op. at 15

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

    “On this record, and for reasons discussed below, the disclosures cited by Petitioner are not consistent with numerous other express disclosures of Stark. Petitioner has over-simplified Stark’s disclosure as well as engaged in selective picking and choosing of Stark’s teachings. “It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one skilled in the art.” Bausch & Lomb, Inc. v. Barnes- Hind/Hydrocurve, Inc., 796 F.2d 443, 448 (Fed. Cir. 1986) (quoting In re Wesslau, 353 F.2d 238, 241 (CCPA 1965)). “The relevant portions of a reference include not only those teachings which would suggest particular teachings which would lead such a person away from the claimed invention.” In re Mercer, 515 F.2d 1161, 1166 (CCPA 1975). Petitioner’s selectively picking and choosing without an adequate explanation amounts to a critical deficiency of the Petition. Petitioner does not identify testimony of Dr. Young which would explain the various contrary disclosures of Stark.” slip op. at 17

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,741,734
• Niantic, Inc. v. Nant Holdings IP, LLCInstitution denied
  PTAB · Dec 9, 2021 · IPR2021-01119 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim, chiefly because the cited art did not disclose tessellated tiles.

  RulingsInstitution decision

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

    “partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any challenged claim. We therefore do not institute inter partes review as to any of the challenged claims of the ’518 patent.” slip op. at 2

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

    “interest, the area tile map represented by a set of tile subareas that includes one or more tessellated tiles from a tessellated tile map” or “identify[ing] a tile subarea . . . wherein one or more tessellated tiles within the identified tile subarea are associated with one or more AR content objects.” As Patent Owner points out, there is no discussion in Altman of tessellated tiles. Prelim. Resp. 16. While it is true that Altman discusses map tiles, there is no disclosure in Altman of how those tiles are arranged, much less whether they are “tiles fitted together to cover an area without gaps.” Id. at 18–19. The portions of Altman relied on by Petitioner do not support its argument that Altman discloses tessellated tiles. Thus, for example, paragraph 37 of Altman, cited by Petitioner, mentions “map tiles” but provides no description of what they are or how they are arranged. Ex. 1003 ¶ 37. Similarly, paragraph 43 of Altman, also cited by Petitioner, describes the map tiles as “image files of maps with varying degrees of granularity,” but does not provide any description of how the tiles are arranged. Id. ¶ 43. Nor does Figure 2A of Altman or its description in the text demonstrate that Altman’s map is made up of tessellated tiles. Prelim. Resp. 17. Petitioner does not support its argument that because Altman’s Figure 2A shows “a large geographic area covering multiple towns with no gaps in map coverage” that “a person of ordinary skill would have understood that each layer or the area map as a whole . . . constitutes a tessellated tile map.” Pet. 24. As Patent Owner points out, individual map tiles can be used to display certain areas of a map without being sets of tessellated tiles. Prelim. Resp. 18. And even if individual tiles were used in Altman’s maps, nothing in Altman discloses or suggests that there are no gaps between the tiles. Id. at 18–19.” slip op. at 22

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

    “Altman with CaveLie.” Pet. 46 (citing Zyda Decl. ¶¶ 305–311). Petitioner explains that “[a person of ordinary skill] would have naturally looked to CaveLie for further implementation details on the tessellated tiles already disclosed in Altman.” Id. at 46–47 (emphasis added). Patent Owner responds that “there is no citation to anything in these references themselves to support this argument, which is apparently based on hindsight.” Prelim. Resp. 36. We agree with Patent Owner that Petitioner has failed to demonstrate a sufficient motivation to combine Altman with CaveLie, other than hindsight. As indicated in the argument from the Petition just quoted, Petitioner’s rationale for combining Altman and CaveLie proceeds on the assumption that Altman discloses tessellated tiles, for which CaveLie allegedly provides “further implementation details.” Pet. 46–47. However, in our analysis of Altman, we conclude that Petitioner has not demonstrated sufficiently that Altman teaches or suggests tessellated tiles. See supra, Section III.B.1.c.” slip op. at 25

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “the “tessellated tiles” limitations. Dr. Zyda’s testimony tracks the arguments in the Petition closely. See Zyda Decl. ¶¶ 160–162. As support for his conclusion (id. ¶ 160) that “Altman discloses that the map tiles can be tessellated tiles,” Dr. Zyda cites the same disclosures from Altman (Ex. 1003 ¶¶ 37, 43, and Fig. 2A) as does the Petition. See Pet. 23 (citing Ex. 1003 ¶¶ 37, 43). As just discussed, those disclosures do not describe how the tiles in Altman are arranged and do not support the contention that they are tessellated tiles. Dr. Zyda’s conclusion that “[a] person of ordinary skill in the art would have understood that these map tiles are tessellated tiles” cites paragraph 43 of Altman for support. See Zyda Decl. ¶ 161. For the reasons given supra, that paragraph in Altman does not support this conclusion. Moreover, Dr. Zyda’s conclusion that “[a] person of ordinary skill in the art would have understood that each layer or [sic] the area tile map [in Altman] as a whole (considering all layers collectively) constitutes a tessellated tile map” (Zyda Decl. ¶ 161) cites no supporting evidence. Our Trial Practice Guide cautions that “[e]xpert testimony . . . cannot take the place of a disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 36 (November 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated. We are not persuaded by Dr. Zyda’s speculations on what persons of ordinary skill would have known (including those discussed supra) because either they are not properly supported by the cited evidence, or they do not cite any evidentiary support at all.” slip op. at 23

  § 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,664,518
• Niantic, Inc. v. Nant Holdings IP, LLCInstitution denied
  PTAB · Dec 6, 2021 · IPR2021-01133 · APJ Stephen E Belisle · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 5–11, 15, 18, 22–29, 34–36, 38, or 43 obvious over any asserted combination.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 1, 5–11, 15, 18, 22–29, 34–36, 38, and 43 of the ’051 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, constrained by the record before us, we deny institution of an inter partes review of the ’051 patent.” slip op. at 2

  • BurdenDenied

    “While the ’051 Patent does not expressly define [“virtual element attribute”], it describes “[e]lement attributes, AR object attributes, or other attributes” as “includ[ing] myriad types of attributes” such as “location information (e.g., relative location to elements 390 of a scene, triangulation, GPS coordinates, etc.)[.]” (’051, 16:4-19.) As explained above, Yu discloses that the AR platform system obtains digital data including ambient-light information in a three-step process at steps 901-903. (Yu, ¶¶0060-0062.) A POSA would have understood that this ambient light information is a “virtual element attribute” as described in the ’051 Patent, because the indoor/outdoor data, position data for the sun, and local weather data all relate to the location of the mobile device on which the virtual element will be placed. (Zyda, ¶¶140-141.) Pet. 29–30. Petitioner’s declarant makes these same statements. See Ex. 1002 ¶¶ 140–141.” slip op. at 13

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

    “proceeding. On the one hand, Petitioner acknowledges “[t]he parties dispute the construction of several claim terms,” and submits that it identifies such disputes in the Petition “so that the Board can be aware of them.” Pet. 10– 11. Petitioner also “respectfully submits that [such disputes] need not be expressly resolved by the Board for purposes of evaluating Petitioner’s proposed Grounds” because “the prior art would satisfy the constructions proposed by either party.” Pet. 11. But, notwithstanding 37 C.F.R. § 42.104(b)(3), Petitioner does not provide and support an express construction in the Petition for any limitation at issue in this proceeding. On the other hand, Patent Owner submits the limitation “alter[ed] presence” should be construed to mean “the degree of at least a relevant AR object’s visual presentation based on a spectrum.” Prelim. Resp. 9. Patent Owner otherwise submits, “[f]or all other terms, the plain and ordinary meaning of those terms is sufficient for the Board to analyze Petitioner’s grounds at this preliminary stage.” Id. at 10. Patent Owner also argues the Petition fails to provide required claim constructions or support therefor in violation of 37 C.F.R. § 42.104(b)(3). Id. at 13–16 (arguing Petitioner “leaves the Board and Patent Owner to guess at how the Petition has construed the claims in and what support allegedly exists for such constructions”). Regardless, as discussed below, we do not find that the express construction of any term is necessary for this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 10

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

    “with particularity, how or why a real-world attribute, namely, Yu’s ambient light information, allegedly teaches a virtual element attribute as recited in claim 1. Prelim. Resp. 21 (“[T]he Petition points only to digital data concerning real-world ‘ambient-light information’ as corresponding to the claimed ‘virtual element attribute.’”; “Yu gives no hint that virtual element attributes would play any role in an image’s rendering.”; “[Petitioner] assumes that real-world ambient light corresponds to the virtual element attribute used to ‘determine whether to alter presence of a relevant AR object.’”). Patent Owner argues “at no point does the Petition construe the term ‘virtual element attribute’ or explain how the real-world attributes of ambient light could be a ‘virtual element attribute,’” despite “the ’051 Patent specification repeatedly distinguish[ing] real-world elements and virtual elements as separate factors.” Id. at 21–22; see id. at 22 (“[The skilled artisan] would conclude that virtual elements are different from real-world elements and that virtual element attributes are the information about the virtual elements, not real-world elements.”). Patent Owner also argues Petitioner bases its premise that real-world “location” of a mobile device may be a “virtual element attribute” on a “misleading[] combin[ation]” of two partial statements in the ’051 patent. Prelim. Resp. 22–23 (referring to Petitioner’s citation to Ex. 1001, 16:4–19). Patent Owner argues, “[i]n context, these two sentences do not define ‘virtual element attribute’ to mean location information as the Petition argues,” and “would [not] lead [the skilled artisan] to conclude that real-world ambient light is a virtual element attribute merely because it ‘relate[s] to the location of the mobile device.’” Id. at 23. As noted by Patent Owner (Prelim Resp. 23), contrary to Petitioner’s above argument, the ’051 patent explicitly discloses that “the location information can pertain to or reflect the physical location of real-world elements.” Ex. 1001, 16:15–16. Patent Owner concludes, and we agree for the reasons discussed above, Petitioner “simply has not shown that it is proper to rely on the real-world quality of ambient light to fulfill the requirement for a ‘virtual element attribute’ in claims 1 and 43 of the ’051 Patent.” Prelim. Resp. 23. Indeed, neither Petitioner nor its declarant expressly construes, with citation to supporting evidence, the limitation “virtual element attribute” to include real-world attributes, or provides evidentiary support and explanation of sufficient particularity for how or why obtaining a real-world attribute like ambient light information teaches obtaining a virtual element attribute. See 35 U.S.C. § 312(a)(3); 37 C.F.R § 42.104(b)(4). For the foregoing reasons, and constrained by the Petition, we are not persuaded that the cited evidence adequately supports Petitioner’s contention that Yu discloses the “virtual element attribute” limitation, as recited in independent claims 1 and 43.” slip op. at 14

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,403,051
• Bayerische Motoren Werke Aktiengesellschaft / BMW Of North America, LLC v. Paice LLC & The Abell Foundation, Inc.All claims unpatentable
  PTAB · Nov 10, 2021 · IPR2020-00994 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 2, 11, 17, 24, 33, and 38 are unpatentable under § 103 based on the grounds addressed; the Board did not reach the alternate challenges.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a skilled artisan would have “a graduate degree in mechanical, electrical or automotive engineering with at least some experience in the design and control of combustion engines, electric or hybrid electric propulsion systems, or design and control of automotive 8 The parties have not offered evidence concerning objective indicia of nonobviousness. transmissions.” Pet. 5. Petitioner alternately contends that a skilled artisan would have “a bachelor’s degree in mechanical, electrical or automotive engineering and at least five years of experience in the design of combustion engines, electric vehicle propulsion systems, or automotive transmissions.” Id. (citing Ex. 1008 ¶¶ 43–46). Patent Owner does not address the level of ordinary skill in the art in the Patent Owner Response. See generally PO Resp. We apply Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’347 patent and the prior art of record.” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for petitioner

    “in prior inter partes reviews of the ’347 patent and that those constructions were affirmed by the Federal Circuit on appeal. Pet. 6–7 (citing Ex. 1003, 8, 11; Ex. 1004, 8, 11; Ex. 1005; Ex. 1011, 13). The terms and the previous constructions are as follows: 1) “road load” or “RL” as “amount of instantaneous torque required for propulsion of the vehicle”; 2) “setpoint” or “SP” as “a predefined torque value that may or may not be reset”; and 3) “monitoring patterns of vehicle operation over time” as “monitoring a driver’s repeated driving operations over time.” Patent Owner does not dispute these constructions or request that we construe any other terms. PO Resp. 27. Therefore, we apply these claim constructions in this Decision.” slip op. at 9

  • Strike new argumentNew argument consideredDecided for petitioner

    “the proper scope of a reply. Petitioner “may not submit new evidence or argument in reply that it could have presented earlier” but “may submit rebuttal evidence in support of its reply.” Consolidated Trial Practice Guide (“Consol. TPG”), 73 (Nov. 2019). In this case, Patent Owner specifically argues that Severinsky’s hysteresis mode is speed-based not torque-based. See PO Resp. 20 (“there is no record evidence that the speed-based timed delay . . . would result in Severinsky ‘varying said setpoint,’ which is a torque value.”). Thus, we agree with Petitioner that its Reply at pages 9–10 and paragraphs 9–26 of Dr. Davis’s Reply Declaration directly respond to the issue raised by Patent Owner concerning whether Severinsky’s hysteresis mode results in varying a torque-based setpoint.10 In addition, in our Decision on Institution, we referenced the Board’s extensive discussion in IPR2014–0571 of the relationship between torque and speed in Severinsky’s control system. Dec. 31–32. Our Trial Practice Guide also allows Petitioner’s Reply to address “issues discussed in the institution decision.” Consol. TPG at 79. Therefore, to the extent necessary, we consider the arguments in Petitioner’s Reply as well as paragraphs 9 to 26 of Dr. Davis’s Reply Declaration and the exhibits referenced therein.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “been used to improve one device and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. In this case, we must determine whether one of ordinary skill in the art would recognize that Nii’s teaching of monitoring a driver’s repeated driving patterns over time in a series hybrid vehicle would improve the operation of Severinsky’s parallel hybrid vehicle in the same way. In order for us to resolve this question in Petitioner’s favor, Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). However, bodily incorporation, i.e., “an actual physical substitution of” the data resulting from Nii’s pattern monitoring into Severinsky’s control scheme, is not required. See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”).” slip op. at 26

  Patent outcomesUS 7,104,347 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,104,347

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.