• Apple Inc. / Google LLC v. Spacetime3d, Inc.All claims unpatentable
  PTAB · Jul 2, 2024 · IPR2023-00344 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over the listed combinations of Anthony, Hanggie, Matthews, and Robertson.

  RulingsFinal written decision

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

    “The Board instituted an inter partes review of the challenged claims pursuant to 35 U.S.C. § 314. Paper 11 (“Dec.”). We joined Google LLC as a party to the proceeding (collectively, with Apple Inc., “Petitioner”) based on a petition and motion for joinder filed in IPR2023-00578. Paper 14.” slip op. at 2

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “1 Google LLC, which filed a petition in IPR2023-00578, has been joined as a petitioner in this proceeding. See Paper 14, 8.” slip op. at 1

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

    “1. “3D space” and “two-dimensional (2D) space” The parties agree that the claim terms “3D space” and “two-” slip op. at 12

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

    “use of items in 2D space and difficulties in finding files, this argument is based on Anthony’s prior art discussion offered to identify the need for improvements that are solved by its 3D invention. See Ex. 1007 ¶¶ 6, 8. But the issue identified as the problem with 2D items, that is, difficulties in finding 2D files, is not at issue in the combination of the prior art that Petitioner proposes. As discussed, in the combination that Petitioner asserts, with the selection of a maximize button on a 3D window, the window would be displayed in 2D and would occupy all or most parts of the screen—so in that combination, difficulties in finding the 2D files would not be an issue. Pet. 57 (citing Ex. 1003 ¶ 111). Further, Petitioner offers the advantages that this presentation in 2D space would conserve power and allow certain users to interact with an application in a 2D environment. Ex. 1003 ¶¶ 66, 69. Accordingly, we credit Dr. Fuchs’s testimony that Petitioner’s proposed “specific experience [of the combination] would not deter a user from replacing images in 3D space with an object in 2D space.” Ex. 1033 ¶ 48. We also do not find persuasive Patent Owner’s argument that Anthony’s approach is different from the claimed invention because its method for” slip op. at 65

  Patent outcomesUS 9,696,868 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,696,868
• Unified Patents, LLC v. Intellectual Ventures II, LLCAll claims unpatentable
  PTAB · Aug 9, 2023 · IPR2022-00429 · APJ Matthew S Meyers · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1–5, 7–12, and 14–20 over Chowdhary under §§ 102 and 103, and claims 1–20 over Chowdhary and Tobey under § 103.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityDecided for petitioner

    “On this record, we determine that we need not address whether Toyota was improperly excluded as an RPI because, “even if it were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” See SharkNinja, Paper 11 at 18. Other than asserting that “estoppel provisions are implicated by this case” (PO Sur-reply 2311), there is no allegation or evidence that Toyota or any other RPI is barred or estopped from this proceeding, or that 11 Patent Owner asserts without explaining that the ’475 patent “is currently being asserted by Patent Owner against Toyota, as well as GM (another paying Member of Unified similarly situated to Toyota.). PO Sur-reply 23. However, the record indicates that the Toyota case has been dismissed and the GM case stayed. See Paper 32, 1 (Intellectual Ventures I LLC et al. v. Toyota Motor Corp. et al., 2:21-cv00389 (E.D. Tex. October 19, 2021) stipulated dismissal without prejudice on March 20, 2023); see also id. at 2 (Intellectual Ventures I LLC et al. v. General Motors Company, 6:21- cv01088 (W.D. Tex. October 19, 2021) (stayed pending settlement on April 6, 2023)). And, upon further inquiry, PACER Case Locator indicates that the GM case was dismissed in an order granting joint motion to dismiss entered on June 20, 2023. See GM case, Document 116. Petitioner purposefully omitted any other RPI to gain some advantage in our forum. See Unified Patent, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 76 at 5 (PTAB May 22, 2023) (Director Review Decision) (“The Board can and should make a determination of the real parties in interest or privity in any proceeding in which that determination may impact the underlying proceeding, for example, but not limited to, a time bar under 35 U.S.C. § 315(b) or an estoppel under 35 U.S.C. § 315(e) that might apply. That is not the situation here.”). Because we determine that neither the time bar nor estoppel provisions of 35 U.S.C. § 315 are implicated in this case, “we need not address whether [Toyota] is an unnamed RPI.” See Unified Patent, Paper 76 at 5 (“The Board should not have determined whether [there were additional] RPIs in this proceeding given that determination was not necessary to resolve the proceeding.”).” slip op. at 8

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner asserts that at the time of the invention, one of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, physics, or a related subject, and two to three years of work experience in vehicle telematics.” Pet. 6–7 (citing Ex. 1002 ¶¶ 37–40). Petitioner asserts that “[a] lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 5–6 years).” Id. Patent Owner essentially agrees with Petitioner’s assertion, but contends that the work experience should more broadly be in “mobile communications.” PO Resp. 16 (citing Ex. 2017 ¶ 27). In our Institution Decision, we determined that there was “not much difference between Petitioner’s and Patent Owner’s assertions, but noted that “we find that Patent Owner’s broader definition of a person of ordinary skill in the art is more consistent with the scope and content of the ’475 [p]atent.” Inst. Dec. 16–17 (citing Ex. 1001, 8:53–54; Ex. 1003, 3:15–18, Fig. 1). In its Reply, “Petitioner accepts the level of skill definition adopted in the Institution Decision,” and notes that “[n]either party contends that the differences in the proposed definitions affect the patentability of the challenged claims.” Pet. Reply 7. Based on this record, we apply Patent Owner’s definition of the level of skill, which also was applied in our Institution Decision, because it is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art of record. See Okajima, 261 F.3d at 1355.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We begin our analysis by considering the language of the claims. At the outset, we note that none of independent claims 1, 8, and 15 require “actively notify[ing] the recipient soon after the violation,” as Patent Owner proposes. Independent claim 1 requires that if the computing device located within the vehicle determines that the vehicle committed a violation, the computing device located in the vehicle sends an indication of the violation to a remote computing system. Ex. 1001, 10:55–55. Independent claim 1 further recites “wherein the remote computing device is configured to notify a recipient about the violation committed by the vehicle.” Id. at 10:56–58. Independent claims 8 and 15 includes substantially similar limitations. Id. at 11:14–28, 12:11–25. Thus, the independent claims broadly recite “notify[ing] a recipient about the violation” without reference to any type, i.e., “active” or “passive,” or timing of the notification. Turning to dependent claims 4 and 5, claims 4 and 5 both begin by reciting “[t]he method of claim 1, wherein the remote computing device is configured to notify the recipient about the violation committed by the vehicle by.” Ex. 1001, 10:66–67:1, 11:3–5. Claim 4 further limits independent claim 1 “by permitting the recipient to view the indication of the violation via a browser” (id. at 10:67–11:2) and claim 5 further limits claim 1 “by sending a communication to the recipient in response to receiving the indication of the violation from the computing device” (id. at 11:4–6). Thus, we understand the recitation of “configured to notify a recipient” in claim 1 as being broad enough to cover both the notification recited in claim 4 that “permit[s] the recipient to view . . . via a browser” and the notification recited in claim 5 that “send[s] a communication to the recipient in response to receiving the indication of the violation from the computing device.” Id. at 10:66–11:7.” slip op. at 18

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

    “At the outset, we agree with Petitioner that Patent Owner’s arguments are all premised upon its proposed construction of the phrase “configured to notify a recipient,” which, we do not adopt. See § III.C.1. As discussed above, we are not persuaded that the phrase “configured to notify a recipient,” as it appears in the context of claim 1, requires any type of active notification, as Patent Owner proposes. Consequently, Patent Owner’s argument that Chowdhary fails to teach the limitation at issue because Chowdhary “is wholly silent with regard to anything that is configured to actively notify someone about a violation” is unavailing. PO Resp. 24 (citing Ex. 2017 ¶ 57); see also id. at 27 (“[N]either the shortcuts to the reports shown in Figure 10 . . . or any other disclosure in Chowd[h]ary, actively notifies the fleet manager that a violation has been committed by the driver of the vehicle.”). Notwithstanding, to address this limitation, Petitioner directs us to Chowdhary’s disclosure that its “VSM application server automatically generates reports when new event data is received based on previously set criteria.” Id. (citing Ex. 1005 ¶¶ 7, 47–51, 96–97, 102–103, 114, Figs. 10–30; Ex. 1002 ¶¶ 84–87). Petitioner provides the following copy of Figure 10 of Chowdhary, annotated to identify, among several items, icon 1102 and icon 1104. Figure 10 illustrates “an example screen display for one embodiment of the VSM user interface” that includes “an ‘Alert/Notifications’ and ‘Messages’ screen.” Ex. 1005 ¶¶ 19, 97. Petitioner explains that Chowdhary discloses VSM application server receives speeding event data and prepares speeding reports based on the received event data. [Ex. 1005 ¶¶ 7, 47–51, 96–97, 114, Figs. 10–30]. An administrator sets alerts and/or notifications for reports that are of particular interest to the administrator so that an Alert/Notification is posted providing the title of the report (orange), the date/time the report was created (green), a link (via icon 1102, blue) to access the report each time a new speed limit violation report is created, and an icon 1104 (red) to remove reports so only new Alerts/Notifications are shown. [Ex. 1005 ¶¶ 97–98, 120, Fig. 10]. Pet. Reply 12–13. Relying on the deposition testimony of Mr. Wilson, Petitioner asserts that “Mr. Wilson testified that a clear notification would occur when a user logs in to a website, and there is an indication that a new message is available for the user to view.” Pet. Reply 13 (citing Ex. 2015,” slip op. at 32

  Patent outcomesUS 9,291,475 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,291,475
• Platform Science, Inc. v. Omnitracs, LLCRehearing granted
  PTAB · Sep 3, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Rehearing

  The Board granted rehearing and instituted IPR on all petition grounds for claims 1–4, 6–9, 11, 12, and 15, finding a reasonable likelihood of prevailing.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id. When rehearing a decision on a petition, we 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)InstitutedInstituted

    “preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to claim 1.” slip op. at 44

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

    “The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6.6 Petitioner 6 As noted above, Petitioner raises a second claim construction issue in its Rehearing Request. See Req. Reh’g 12–15 (asserting that the claims require only one instance of copying information from a formatted message to a response message based on which formatted message was received). Petitioner did not raise this issue in the Petition, Patent Owner has not had an contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 17

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

    “VI. ANALYSIS Legal Standards – Anticipation “[A] claim is anticipated ‘if each and every limitation is found expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference” (alteration in original) (quotation omitted)).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,925,308
• Captioncall, L.L.C. v. Ultratec, Inc.All claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01355 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–13, 15, and 18 are unpatentable under § 103 over the stated combinations of Liebermann, Aronow, O’Toole, and McLaughlin.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not challenge directly Mr. Occhiogrosso’s testimony. See generally PO Resp. 5. Mr. Ivan Zatkovich, Patent Owner’s declarant, does not propose a level of ordinary skill in the art to be adopted, but he does testify that the opinions set forth in his declaration would not change if he “assumed that [one of ordinary skill in the art] had the qualifications set forth in Mr. Occhiogrosso’s declaration.” Ex. 2098 ¶ 24 (citing Ex. 1008 ¶ 27). Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1002–1005), we determine that the level of ordinary skill proposed by Petitioner’s declarant and employed by both declarants is consistent with the challenged patent and the referenced prior art, and we adopt Mr. Occhiogrosso’s definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “Turning to the merits of the Motion to Exclude, we find Patent Owner’s assertion that a person of ordinary skill in the art “must know the relevant prior art of telephone technology for the deaf and HOH” (Mot. Exc. 4) lacks sufficient factual corroboration or explanation. For example, Patent 10 Mr. Zatkovich is referring to the level of ordinary skill discussed previously and which we adopted for this proceeding. 14 Owner does not address the sentence that immediately precedes the single citation in the challenged patent on which Patent Owner relies: “[t]he present invention relates to the general field of telephone communications.” Ex. 1001, 1:13–14. Nor does Patent Owner discuss the level of ordinary skill reflected in the prior art of record or other factors that may be considered, including the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Okajima, 261 F.3d at 1355. Even if we were to adopt Patent Owner’s definition of a person of ordinary skill in the art, we find Mr. Occhiogrosso meets Patent Owner’s proffered level of ordinary skill: “must know the relevant prior art of telephone technology for the deaf and HOH” (Mot. Exc. 4). Mr. Occhiogrosso’s experience providing expert testimony in proceedings regarding assistive technologies for the deal or hard of hearing is uncontroverted. See Mot. Exc. 4–5 (identifying three inter partes reviews); Ex. 2105, 5:23–6:10 (deposition on August 9, 2016 indicating Mr. Occhiogrosso has been deposed between twelve and twenty times concerning Patent Owner’s patents). Furthermore, the five prior art references Mr. Occhiogrosso considered for this case (Ex. 1008 ¶ 28) all involve telephone technology for the deaf and HOH and support his qualification under the definition of a person of ordinary skill in the art now offers for the first time in its Motion to Exclude (and after it relied on the testimony of its declarant as to a different level). 15” slip op. at 14

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Mr. Occhiogrosso testifies that one of ordinary skill in the art “would consider the screen in Figure 6 [shown on a cellular phone] as analogous to the screen depicted in Figure 8.” Ex. 1043 ¶ 6; see Pet. Reply 9–10 (citing Ex. 1043 ¶ 4–7). Mr. Occhiogrosso’s testimony relies on, and better comports with, Liebermann’s description of Figure 8 as illustrating “a layout for the visual display to present multiple information to the deaf person.” Ex. 1002, 6:29–36; Ex. 1043 ¶ 6. Mr. Occhiogrosso opines that the layout in Figure 8 “can be applied to different devices with displays of varying dimensions,” including the cellular embodiment of Figure 6, the personal computer embodiment in Figure 5a, and the kiosk embodiment in Figure 5c. Ex. 1043 ¶ 6. Mr. Occhiogrosso explains that Figure 8 depicts a “three-part, logical screen layout [that would be] identical and would be scaled appropriately, depending on display size.” Id. We credit Mr. Occhiogrosso’s testimony over that of Mr. Zatkovich because Mr. Occhiogrosso’s testimony better comports with the express disclosure of Liebermann—Figure 8 is not described as being limited to the embodiments in Figures 5a–5c or otherwise not being applicable to the cellular phone embodiment shown in Figure 6. Rather, Figure 8 is described more generally as being “a layout for the visual display.” Ex. 1002, 6:31– 34 36. In addition, Mr. Zatkovich opines that one of ordinary skill in the art purportedly would not incorporate the display shown in Figure 8—that is, the three-part display. At issue here, however, is only a small portion of that display—the incoming text screen—showing the text communication representing a transcription of the voice of the person speaking to a user of the personal interpreter device.” slip op. at 34

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “skill in the art would combine Aronow’s initiation switch into Liebermann’s device to save power. PO Resp. 35–36. We agree with Patent Owner that, because the initiation switch is not an “on/off switch” that would enable a user to turn off the device and save power, Mr. Occhiogrosso’s power saving rationale (Ex. 1008 ¶¶ 58–59) is an insufficient motivation to combine the initiation switch. PO Resp. 35–36 (citing Ex. 2098 ¶ 62; Ex. 2097, 141:21– 142:12). Similarly, we also agree with Patent Owner’s challenge regarding Mr. Occhiogrosso’s testimony that Aronow’s switch improves Liebermann’s communicator by making it a “low cost, self contained telephonic interface device requiring no programming for operation.” Id. at 36. Relying on Mr. Zatkovich’s testimony, Patent Owner indicates “the communicator/cellular phone embodiment of Fig. 6 of Liebermann[] already appears to be a self-contained device.” Id. (citing Ex. 2098 ¶ 61). Nevertheless, we note that there is no dispute that Liebermann’s communicator and cellular telephone implementations provide for a user initiating a call to the center by dialing the center. See, e.g., PO Resp. 36 (“As a special case of a telephone, Liebermann can initiate a call simply by dialing a stored number to the Center.”). We disagree with Patent Owner that the addition of Aronow’s switch would not simplify the communicator 48 of Liebermann. Id. Common sense suggests that a single initiation switch is a simpler way to initiate a call than by dialing the multiple digits of a telephone number. Furthermore, we credit Mr. Occhiogrosso’s testimony of the simplifying benefits of a user-operated initiation switch, which is based on Aronow’s discussion about the benefits of the initiation switch to simplify operations of the telephonic device, especially for elderly people who are hard of hearing. Ex. 1008 ¶ 58. For these reasons, we determine that Petitioner has provided sufficient” slip op. at 48

  Patent outcomesUS 5,974,116 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,974,116
• Captioncall, L.L.C. / Sorenson Communications, Inc. v. Ultratec, Inc.All claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-00637 · APJ William V Saindon · IPR · Final written decision

  Claims 1–30 are unpatentable as obvious; Patent Owner’s contingent motion to amend is denied for lack of written-description support and indefiniteness.

  RulingsFinal written decision

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “admitted that the patented features of voice and revoiced text are responsible for ‘giv[ing] the phone back to folks with hearing loss.’” PO Resp. 48 (emphasis added). Thus, Patent Owner is offering the statement for the truth that voice and re-voiced text gives the phone back to folks with hearing loss. Patent Owner’s argument that Mr. Puzey was discussing the existence of features in his company’s product rather than features in Patent Owner’s product does not change that his statement is offered as proof regarding an alleged long-felt need for the features. Accordingly, his testimony is hearsay. slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “art is telecommunication systems. Thus, a [POSA] is a person familiar with at least that technology by way of background and/or experience.” CaptionCall, LLC v. Ultratec, Inc., Case IPR2013-00549, Paper 71, 13 (Final Written Decision) (PTAB 2015); see also CaptionCall, LLC v. Ultratec, Inc., Case IPR2013-00780, Paper 35, 9 (Final Written Decision) (PTAB 2015) (reaffirming our finding in IPR2013- 00549). Patent Owner states that it “does not agree” with that definition of a person of ordinary skill in the art, and that, “without waiving the foregoing objection and reserving all rights,” states that it will “appl[y]” our prior definition of a person of ordinary skill in the art “for purposes of this Response.” PO Resp. 3. By not setting forth arguments advocating a particular definition of the level of ordinary skill in the art, and by applying our prior definition, Patent Owner has waived arguments for any other definition. Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art, as expressed by its declarant, Mr. Occhiogrosso. Ex. 1009 ¶¶ 26–27. This person typically has “a bachelor’s degree” slip op. at 35

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

    “understand a “communication link,” as claimed, to refer to the “communication line” described in the specification. In particular, the link is “intended not only to apply to a traditional land-line . . . but also to all equivalents that offer similar functionality.” Id. at 8:60–63. A link could be “a portion of the bandwidth” of a particular connection, such that a single mode of connection (e.g., IP) could carry out two types of communication (voice and text), with each type corresponding to a different “communication link.” See id. at 8:44–47, 8:63–65. For example, as explained in the ’838 patent, “[e]ach of the telephone lines could be . . . a portion of the bandwidth of an ISDN or DSL service.” Id. at 8:53–65. Accordingly, we adopt Petitioner’s construction of “communication link” as “any communication session, protocol, link, connection, or path distinguishable from [another] communication link[].”” slip op. at 22

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

    “3. Combination of References As we discussed above, Petitioner’s combination takes the two-line” slip op. at 43

  Patent outcomesUS 8,908,838 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 8,908,838
• Groupon, Inc. v. Blue Calypso, LLCNo claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00044 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 4-9 were not shown unpatentable because Ratsimor was not established as prior art; cancellation of claims 1-3 and 10-13 was granted.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We construe the terms “incentive program,” “incentive,” and “incentivizing” in accordance with these principles.” slip op. at 9

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

    “C. Patent Owner’s Motion to Amend Patent Owner’s Motion to Amend (Paper 18) is before us for consideration. In the motion, Patent Owner requests cancellation of claims 1-3 and 10-13 of the ’646 patent. The cancellation of these claims is not based on any contingency. There is no indication, for example, that claims 1-3 and 10-13 should be cancelled only if the claims are determined unpatentable. Rather, the Motion to Amend leaves no doubt that Patent Owner unequivocally requests cancellation of claims 1-3 and 10-13. For these reasons, we grant Patent Owner’s request to cancel claims 1-3 and 10-13 of the ’646 patent. Because Patent Owner requested cancellation of claims 1-3 and 10-13, not based on any contingency, Patent Owner has waived any issues with respect to claims 1-3 and 10-13, and, therefore, we need not address the patentability of those claims.” slip op. at 13

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

    “prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009).” slip op. at 16

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

    “3. The Ratsimor Paper Is Not Prior Art For the foregoing reasons, we determine that Petitioner has not demonstrated, by a preponderance of the evidence, that the Ratsimor paper is a printed publication within the meaning of 35 U.S.C. § 102(b) and, therefore, the Ratsimor paper is not prior art to the claims of the ’646 patent. Therefore, Petitioner may not rely upon the Ratsimor paper for its asserted grounds of patentability under 35 U.S.C. § 103(a). Accordingly, we conclude that Petitioner has not demonstrated that (i) claims 4 and 5 would have been obvious over the Ratsimor paper and Paul, (ii) claims 6-8 would have been obvious over the Ratsimor paper, Paul, and Kitaura, or (iii) claim 9 would have been obvious over the Ratsimor paper, Paul, Hall, and MacEachren.” slip op. at 23

  Patent outcomesUS 8,452,646 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,452,646

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.