• Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentable
  PTAB · Feb 17, 2017 · CBM2015-00179 · APJ Sally C Medley · CBM · Final written decision

  Claims 1–15 are unpatentable under § 101 and § 103 over TSE, Togher, Schott, and Cooper, and over Silverman, Togher, Cooper, and Hogan.

  RulingsFinal written decision

  • BurdenUnpatentable

    “The individual elements of the claims do not transform the nature of the claims into a patent-eligible application. They do not add significantly more to the abstract idea or fundamental economic practice. Contrary to Patent Owner’s argument, the claims simply recite the use of a generic computer with routine and conventional functions. Further, considering all of the elements as an ordered combination, we determine that the combined elements also do not transform the nature of the claims into a patent-eligible application. For all of the above reasons, Petitioner has shown sufficiently that claims 1–15 of the ’056 patent are not directed to patent eligible subject matter under 35 U.S.C. § 101.” slip op. at 29

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “We do not agree with Patent Owner that the term “price axis” requires reading into the claim the additional “clarification” that a list of prices that do not contain gaps in between prices is not a price axis. There is nothing in the claim language itself that describes gaps or how data is arranged along the price axis or what contains a price axis. The passages and figures of the ’056 patent that Patent Owner (and Mr. Thomas) directs attention to are examples or embodiments of what is claimed, and do not indicate that Patent Owner disclaimed or limited price axis to consist of a list of prices that contains gaps in between prices. Moreover, Mr. Thomas’ illustration of what constitutes a price axis is conclusory and not supported by record evidence. Ex. 2169 ¶¶ 41–42. He has not directed attention to any evidence in support of his testimony as to what does and does not constitute a price axis as illustrated in 14 paragraph 41 of his declaration. As pointed out by Petitioner, an axis may be represented by scale breaks or logarithmic scales, and thus, need not retain an order of gaps as Patent Owner and Mr. Thomas contend. Pet. Reply 11–12; Ex. 1058, 103–109. We also have considered Patent Owner’s arguments and evidence that remarks made by the then applicant during prosecution of the application that matured into the ’056 patent amount to an express and clear disclaimer of the meaning for price axis. PO Resp. 6–7 (citing Ex. 1002, 178–179; Ex. 2169 ¶ 39). We are not persuaded by such arguments because the comments made during prosecution have not been shown to amount to a disclaimer of having a price axis without gaps in between prices. For example, Patent Owner directs attention to page 178 of Exhibit 1002 from the prosecution file in support of its disclaimer argument. On that page, however, is quoted language from several lines of the claim with an argument just prior stating that Silverman does not describe an axis of prices and all that is contained in the quoted language. Patent Owner has not explained sufficiently why we should construe such general remarks as a disclaimer. We also have reviewed the remarks made by the then applicant that the applied prior art displayed prices for which orders exist, but do not agree that Patent Owner has shown why such comments amount to a clear disclaimer or disavowal of the scope of the term “price axis.” To disavow claim scope, “the specification or prosecution history [must] make clear that the invention does not include a particular feature.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (internal citation, quotation, and alterations omitted).” slip op. at 14

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

    “icon at a location that corresponds to the desired price level along the price axis, the order icon indicating the user’s order at the electronic exchange.” (Emphasis added). Patent Owner argues that an “order icon indicating the user’s order at the electronic exchange” should be interpreted to mean “an icon indicating to the user that the user has an order at a particular level along the price axis, distinct from other orders at the same level.” PO Resp. 9. Petitioner argues that no construction of the phrase is necessary and that Patent Owner’s construction is inconsistent with Figure 3A, which shows the user’s order aggregated with other users. Pet. Reply 12. Petitioner further argues that any icon that indicates a user’s order, whether aggregated with other orders or separate, meets the claim term. Id. We agree with Petitioner. There is nothing in the language of claim 5 that requires indicating the specific user order (separating it out from all other orders) or indicating to the user that it is his order. If an order is placed by a user, resulting in the total quantity of orders placed at that same price to increase, the total number would indicate an increase, and thus, indicate the user’s order. Patent Owner argues that because claim 1 recites bid indicators and offer indicators, an order icon must represent something distinct from the 16 bid/offer indicators. PO Resp. 7–8. But even Patent Owner does not explain why an order icon cannot be one of the offer or bid indicators. Indeed, for the embodiment that Patent Owner directs attention to there is no distinction between offer and bid indicators with order icons (an order icon is one of the indicators). Id. We agree with Petitioner that a person of ordinary skill in the art would have understood the ’056 patent to use “icons” and “indicators” interchangeably. See, e.g., Pet. 18–20. Thus, we disagree with Patent Owner that the “order icon” of claim 5 cannot be one of the offer or bid indicators. For all of the above reasons, we decline to interpret an “order icon indicating the user’s order at the electronic exchange” to mean “an icon indicating to the user that the user has an order at a particular level along the price axis, distinct from other orders at the same level.”” slip op. at 16

  • Skill levelSkill level board ownOther

    “B. The Level of Ordinary Skill in the Art Notwithstanding the parties’ submissions of the level of ordinary skill in the art10, we find that the level of ordinary skill in the art is 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). 10 The parties’ submissions focus primarily on the degrees, occupations, and experience, as opposed to what the hypothetical person of ordinary skill in the art would have known at the time of the invention. As such, and as the triers of fact, based on the record before us, we do not find such information particularly helpful.” slip op. at 17

  Patent outcomesUS 7,533,056 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Enfish · Electric Power
  Patents in suitUS 7,533,056
• Epicor Software Corporation v. Protegrity CorporationSome claims unpatentable
  PTAB · Apr 20, 2016 · CBM2015-00002 · APJ Kevin F Turner · CBM · Final written decision

  Claims 1, 5, 19, and 20 are unpatentable under § 101; claims 27–31 were not shown unpatentable under that ground.

  RulingsFinal written decision

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

    “e. Broadest Reasonable Construction of “Database” We determine that the broadest reasonable construction, in light of the specification of the ’201 Patent, and the proffered evidence, of “database” is “an organized collection of structured data.” As discussed above, this construction is consistent with the words of the claims, the disclosure of the ’201 Patent, the testimony of Mr. Schneier and Dr. Shamos and the position taken by Patent Owner in the related district court proceeding. We are not persuaded by Patent Owner’s arguments, Patent Owner’s declarants’ testimony, database manual, or technical encyclopedia that this construction is unreasonably broad.” slip op. at 13

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for patent owner

    “Mr. Mattsson’s and Dr. Direen’s testimony is unpersuasive because it is inconsistent with the ’201 Patent. As discussed above, the ’201 Patent describes the O-DB as one database in a larger database management system. Ex. 1001, 5:49–6:12. The ’201 Patent describes the O-DB database as containing data and describes the modules of the larger database management system as performing data processing. Id. at 5:53–58, 6:13–45. The ’201 Patent does not describe the O-DB database as producing the compelling calling. See Ex. 1001, 10:44–58 (“is first collected by the system”); see id. at Abstract, 2:54–61, 3:51–65, 4:16–22, 7:57–61 (disclosing a compelling calling to a data protection catalogue, but failing to describe the compelling calling being produced by the O-DB database). The assertion that the compelling calling is produced by the O-DB database is only found in Patent Owner’s arguments, Mr. Mattsson’s testimony, and Dr. Direen’s testimony, and not the ’201 Patent. See, e.g., Ex. 2045 ¶¶ 12– 16, 22, 29; Ex. 2046 ¶ 57. Extraneous features should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). In that regard, “extrinsic evidence may be used only to assist in the proper understanding of the disputed limitation; it may not be used to vary, contradict, expand, or limit the claim language from how it is defined, even by implication, in the specification or file history.” Bell Atl. Network Servs. v. Covad Commc'ns Grp., 262 F.3d 1258, 1269 (Fed. Cir. 2001); see Vitronics, 90 F.3d at 1584 (“expert testimony, which was inconsistent with the specification and file history, should have been accorded no weight”). Further, we give little weight to Mr. Mattsson’s testimony because Mr. Mattsson is not a disinterested witness. Mr. Mattsson is Patent Owner’s Chief Technology Officer (Ex. 2045 ¶ 1) and has an interest in the outcome of this proceeding.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “We are not persuaded by Patent Owner’s argument that Mr. Schneier’s declaration should be excluded under FRE Rule 702 or 403. Patent Owner’s arguments attack the sufficiency and credibility of Mr. Schneier’s testimony. As the Board has noted in numerous cases, “the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to the evidence presented in this trial, without resorting to formal exclusion that might later be held reversible error.” See, e.g., Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00002, Paper 66 at 70 (PTAB Jan. 23, 2014); Gnosis S.P.A., et al. v. S. Alabama Medical Science Foundation, IPR2013-00118, Paper 64 at 43 (PTAB June 20, 2014); S.E.C. v. Guenthner, 395 F. Supp. 2d 835, 842 n.3 (D. Neb. 2005); Opp. to Mot. Exclude 4. We, thus, are not persuaded by Patent Owner to exclude Exhibit 1002 and Patent Owner’s Motion to Exclude is denied.” slip op. at 35

  • Strike new argumentNew argument disregardedGranted

    “The scheduling order authorizes the filing of such a motion for observations regarding cross-examination of a reply witness by Due Date 4. Mr. Schneier cross-examination testimony was given on June 12, 2015, prior to Patent Owner filing its Patent Owner’s Response, on June 24, 2105. The cross-examination did not occur after Patent Owner filed its last substantive paper. Patent Owner’s Motion for Observation, thus, is improper. The Scheduling Order did not authorize Patent Owner to file a Motion for Observation of cross-examination that occurred prior to Patent Owner filing its last substantive paper on an issue, the Patent Owner’s Response and Patent Owner did not seek other authorization for such. The improper observations are akin to an unauthorized sur-reply to argument made in Petitioner’s Reply. We, thus, expunge Patent Owner’s unauthorized observations from the record. See 37 C.F.R. § 42.7(a). Additionally, we expunge Petitioner’s Opposition to that Observation (Paper 40) as being unnecessary.” slip op. at 37

  Patent outcomesUS 6,321,201 mixed
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski
  Patents in suitUS 6,321,201
• Boku, Inc. / Boku Account Services, Inc. v. Xilidev, Inc.Some claims unpatentable
  PTAB · Nov 2, 2015 · CBM2014-00148 · APJ Justin T Arbes · CBM · Final written decision

  Claims 1–18 and 20–23 are unpatentable; claim 19 was not shown unpatentable because Gerson does not disclose its product identification code and quantity limitations.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable

    “the particular function of the limitation and then identifying the corresponding structure for that function in the specification. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015). A structure is corresponding “only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001) (quotation omitted). Additionally, the corresponding structure of a means-plus-function limitation must be “more than simply a general purpose computer or microprocessor” to avoid pure functional claiming. Williamson, 792 F.3d at 1352 (citing Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)). If a special purpose computer is required to carry out the recited function, the specification must disclose an “algorithm for performing the claimed function,” id., which may be expressed “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure,” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citation omitted). “[I]f a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim, a means-plus-function clause is indefinite” under 35 U.S.C. § 112, second paragraph. Williamson, 792 F.3d at 1352.” slip op. at 8

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

    “discloses every limitation of claims 12–16 and 18. For example, with respect to claim 12, Petitioner asserts, with supporting testimony from Dr. Shamos, that Gerson discloses (1) a “payment authorization source” (i.e., bank or other financial institution) configured to authorize payment for a transaction; (2) a “payment resolution module” (i.e., central processing computer) in communication with the bank or other financial institution; (3) a “hand-held device” (i.e., user’s mobile phone) in communication with the central processing computer that transmits an authorization request (i.e., payment transaction) to the central processing computer; and (4) a “confirmation device” (i.e., POST) that receives an “authorization code” (i.e., transaction-specific authorization code) from the user and authorizes the transaction in response to validating the authorization code. -140 Pet. 69–73; see Ex. 1003, 83–90. Petitioner further argues that Gerson necessarily includes an “I/O interface” because the central processing computer transmits (i.e., outputs) the transaction-specific authorization code to the mobile phone via a “wireless telecommunications link,” and such transmission requires an I/O interface between the mobile phone and central processing computer. -140 Pet. 71–72 (citing Ex. 1005, 6 (ll. 8–14)). We also have reviewed Petitioner’s arguments and evidence for the other challenged claims, and are persuaded that Petitioner has met its burden of demonstrating anticipation by a preponderance of the evidence. Based on all of the evidence of record, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 12–16 and 18 are anticipated by Gerson under 35 U.S.C. § 102(b).” slip op. at 13

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

    “It would have been obvious to combine Gerson’s system storing the authorization code in a processor with Wronski’s database additionally storing an indication of the transaction request because in both cases the information relates to the transaction being authorized and therefore Wronski merely stores additional information about the same transaction that Gerson does. Furthermore, a user in Gerson would be motivated to combine the processor database with Wronski’s database including an indication of the transaction request because such a combination would facilitate the later retrieval of transaction specific information (such as when Gerson’s processor database is accessed by the point-of-sale system).” slip op. at 20

  • Skill levelSkill level board ownOther

    “between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007) (quoting 35 U.S.C. § 103(a)). Dr. Shamos testifies that he believes a person of ordinary skill in the art would have had “an undergraduate degree in computer science, or equivalent work experience, and, in addition, at least two years of experience with electronic payment systems, including familiarity with databases and integration with interactive voice response software.” Ex. 1003 ¶ 14; see -140 Pet. 11. Based on the record presented, including our review of the ’168 patent and the types of problems and solutions described in the ’168 patent and cited prior art, we determine that a person of ordinary skill in the art would have had an undergraduate degree in computer science (or equivalent work experience) and at least two years of experience with electronic payment systems, including familiarity with databases. We apply this level of ordinary skill in the art for purposes of this Decision. Although a person of ordinary skill in the art may have had experience with interactive voice response software, we do not see why such experience should be required, as the ’168 patent discloses that “various communication mediums and protocols [for interacting with users were] known in the art,” of which interactive voice response is merely one example. See, e.g., Ex. 1001, col. 5, ll. 4–52.” slip op. at 18

  Patent outcomesUS 7,273,168 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 7,273,168
• Boku, Inc. / Boku Account Services, Inc. v. Xilidev, Inc.Some claims unpatentable
  PTAB · Nov 2, 2015 · CBM2014-00140 · APJ Justin T Arbes · CBM · Final written decision

  Claims 1–18 and 20–23 are unpatentable: claim 17 is indefinite, claims 12–16 and 18 are anticipated by Gerson, claims 1–11 and 20–23 are obvious over Gerson and Wronski, and claims 1–5, 7–16, 18, and 20–23 …

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable

    “the particular function of the limitation and then identifying the corresponding structure for that function in the specification. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015). A structure is corresponding “only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001) (quotation omitted). Additionally, the corresponding structure of a means-plus-function limitation must be “more than simply a general purpose computer or microprocessor” to avoid pure functional claiming. Williamson, 792 F.3d at 1352 (citing Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)). If a special purpose computer is required to carry out the recited function, the specification must disclose an “algorithm for performing the claimed function,” id., which may be expressed “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure,” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citation omitted). “[I]f a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim, a means-plus-function clause is indefinite” under 35 U.S.C. § 112, second paragraph. Williamson, 792 F.3d at 1352.” slip op. at 8

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

    “Petitioner has not shown that Gerson discloses, expressly or inherently, a hand-held device providing a product identification code and product quantity (in addition to the transaction amount), and we do not find any such disclosure in the reference. The mobile phone in Gerson only provides the purchase amount. See Ex. 1005, 3 (ll. 22–23), 7 (ll. 6–13). Further, Petitioner’s assertion that it “would have been obvious” to also provide a product identification code and product quantity is insufficient to prove anticipation. See -140 Pet. 79–80; Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255–56 (Fed. Cir. 1989) (“Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.”). Based on all of the evidence of record, we determine that Petitioner has not shown, by a preponderance of the evidence, that claim 19 is anticipated by Gerson under 35 U.S.C. § 102(b).” slip op. at 15

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

    “It would have been obvious to combine Gerson’s system storing the authorization code in a processor with Wronski’s database additionally storing an indication of the transaction request because in both cases the information relates to the transaction being authorized and therefore Wronski merely stores additional information about the same transaction that Gerson does. Furthermore, a user in Gerson would be motivated to combine the processor database with Wronski’s database including an indication of the transaction request because such a combination would facilitate the later retrieval of transaction specific information (such as when Gerson’s processor database is accessed by the point-of-sale system).” slip op. at 20

  • Skill levelSkill level board ownDecided for petitioner

    “between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007) (quoting 35 U.S.C. § 103(a)). Dr. Shamos testifies that he believes a person of ordinary skill in the art would have had “an undergraduate degree in computer science, or equivalent work experience, and, in addition, at least two years of experience with electronic payment systems, including familiarity with databases and integration with interactive voice response software.” Ex. 1003 ¶ 14; see -140 Pet. 11. Based on the record presented, including our review of the ’168 patent and the types of problems and solutions described in the ’168 patent and cited prior art, we determine that a person of ordinary skill in the art would have had an undergraduate degree in computer science (or equivalent work experience) and at least two years of experience with electronic payment systems, including familiarity with databases. We apply this level of ordinary skill in the art for purposes of this Decision. Although a person of ordinary skill in the art may have had experience with interactive voice response software, we do not see why such experience should be required, as the ’168 patent discloses that “various communication mediums and protocols [for interacting with users were] known in the art,” of which interactive voice response is merely one example. See, e.g., Ex. 1001, col. 5, ll. 4–52.” slip op. at 18

  Patent outcomesUS 7,273,168 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 7,273,168
• Apple Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · Sep 25, 2015 · CBM2014-00112 · APJ Rama G Elluru · CBM · Final written decision

  Claims 1, 6–8, 12, 13, 16, and 18 are unpatentable as obvious over Stefik ’235 and Stefik ’980, and independently over Ginter.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedOther

    “Patent Owner has not articulated a persuasive reason for giving Mr. Wechselberger’s declarations, as a whole, little or no weight in our analysis. Patent Owner has not cited any authority requiring an expert to recite or apply the “preponderance of the evidence” standard in order for the expert opinion to be accorded weight. Under 37 C.F.R. 42.1(d), we apply the preponderance of the evidence standard in determining whether Petitioner has established unpatentability. In doing so, it is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Thus, we decline to make a determination about Mr. Wechselberger’s opinion, as a whole. Rather, in our analysis, we will consider, as it arises, relevant opinion from Mr. Wechselberger and give it due weight, if appropriate.” slip op. at 6

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

    “We are persuaded that the broadest reasonable interpretation of the term “payment data,” encompasses both Petitioner’s and Patent Owner’s definitions of the term. As used in the ’317 patent, “payment data” encompasses data relating to future, current, and past payments. In other words, we are persuaded that the ’317 patent does not incorporate an element of timing into the definition of payment data. First, the plain and ordinary meaning of the two words that make up the term—“payment” and “data”—do not incorporate any notion of time and nothing about their combination changes that determination.” slip op. at 9

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

    “Stefik states that the descriptor file contains “a pointer to the document in the content part.” Ex. 1013, 7:35–58, Fig. 4; see Ex. 1014, 9:21–49, Fig. 5. Specifically, as Petitioner argues (Pet. Reply 5–7), Stefik teaches that the description tree [i.e., description file] is comprised of “descriptor blocks (d-blocks),” wherein “d-block 500 includes an identifier 501” and “a starting address 502 providing the start address of the first byte of the work [i.e., data].” Ex. 1013, 6:2–17, 7:60–67, Fig. 5a; see Ex. 1014, 9:26–27, 9:52–58, Fig. 7; Tr. 37:17–38:2, 39:14–40:8. Identifier 501 is comprised of a “unique number assigned to the DocuCard [i.e., where data is stored] upon manufacture.” Ex. 1013, 8:4–8; see Ex. 1014, 9:62–65. Stefik further explains that the description file may be stored independently from the contents file. Ex. 1013, 6:2–17, 7:21–41; see Ex. 1014, 14:28–36, Fig. 12. With respect to the claimed “pointer” in claim 1 and claimed “resource locator” in claim 16, Petitioner refers to Stefik’s “d-blocks” in the descriptor file. 112 Pet. 33, 69 (claim chart for claim 16 referring to claim 1). According to Petitioner, Stefik’s “pointers” (i.e., descriptor blocks) identify the device (i.e., the data provider) where content is stored, which can be stored separately from the descriptor file, and the “‘start address of the first byte of work.’” See Pet. Reply 5– 7 (citation omitted); Tr. 29:12–30:17, 31:6–21 (Petitioner contends that the pointer points to the location of the first bits that make up the data item). We determine that Petitioner has shown by a preponderance of the evidence that Stefik teaches the claimed “pointer to a data provider” and “resource locator identifying a data provider,” as required by claims 1 and 16, respectively. Based on the disclosures in Stefik, we are persuaded by Petitioner’s contention that a skilled artisan would understand Stefik’s descriptor blocks as pointing to the DocuCard (i.e., the data provider or resource locator) where content is stored and the start address, i.e., location, of the first byte of the data time. See Pet. Reply 5– 7. As such, Stefik’s descriptor blocks, like the pointers described in the ’317 patent, identify a location(s) where a data item can be downloaded. See Ex. 1001, 14:61–65 (data store stores records comprising location data comprising one or more pointers to a location(s) where the data item can be downloaded).” slip op. at 14

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

    “In addition, we are persuaded by Petitioner’s argument that it would have been obvious to apply Ginter’s teaching of using audit information as payment data to a real-time transaction in order to reflect payment for currently–requested content. See Pet. 45 n.16 (citing Ex. 1015, 63:34–41). Assuming the challenged claims require “payment data” to be received before access to content is allowed, we are persuaded that it would have been obvious to a skilled artisan to have applied Ginter’s teaching of using audit information as payment data before access to content is allowed. See Ex. 1001, 26:1–8 (claim 1 requires “code responsive to the request [for content] and to the received payment data, to read data for the requested data item … and to transmit the read data to the requester”) (emphasis added). As Petitioner argues, Ginter teaches that audit information includes “an electronic funds transfer against the user’s bank account or some other bank account” (Ex. 1015, 179:57–60) and “collecting payments, etc.” (id. at 281:33– 39).10 Pet. Reply 14–15. Furthermore, as we discuss above, Ginter’s teaching does not restrict the timing of the “prepayments” and “real-time electronic debits” in” slip op. at 20

  Patent outcomesUS 7,942,317 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,942,317
• Apple Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · Sep 25, 2015 · CBM2014-00108 · APJ Matthew R Clements · CBM · Final written decision

  Claim 26 is unpatentable under § 103 over Stefik ’235 and Stefik ’980, and independently over Ginter, because the SIM limitation would have been an obvious substitution.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDenied

    “We have reviewed the deposition testimony of Dr. Katz and determine that excluding the testimony, in its entirety, is not warranted. We assess Petitioner’s arguments with respect to the weight to be given to relevant portions of Dr. Katz’s testimony, rather than to its admissibility. 37 C.F.R. § 42.65.” slip op. at 17

  • ExcludeMotion to exclude, deniedMotion to exclude, grantedMixed

    “We are persuaded by Petitioner that Exhibit 1002 is offered not for the truth of the matter asserted (i.e., the content of the ’598 patent), but as evidence of how the Patent Owner has characterized the ’598 patent. Patent Owner has not persuaded us that Exhibit 1002 is irrelevant, at least because its characterization of the ’598 patent in prior proceedings are relevant to the credibility of its characterization of the ’598 patent in this proceeding. Accordingly, we decline to exclude this exhibit.” slip op. at 19

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

    “We agree with Petitioner. The function of the recited “SIM portion” is “to identify a user of said portable data carrier to a network operator.” Petitioner proposes to substitute the DocuCard’s unique identifying information with the user identification means of a SIM card in order to perform the recited function of “identify[ing] a user of said portable data carrier to a network operator.” The ’598 patent acknowledges that “a mobile phone SIM (Subscriber Identity Module) card . . . already include[s] a user identification means, to allow user billing through the phone network operator.” Ex. 1001, 4:9–13; see also Tr. 103:7–8 (when discussing the description of the SIM portion in the challenged patent, Counsel for Patent Owner explained that “applicants didn’t need to put more in there because the SIM was already well understood.”). Accordingly, we are persuaded that the substitution of the DocuCard’s unique identifying information with the user identification means of a SIM card involves nothing more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).” slip op. at 10

  Patent outcomesUS 8,061,598 unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 8,061,598
• Apple Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · Sep 25, 2015 · CBM2014-00103 · APJ Jennifer S Bisk · CBM · Final written decision

  Claims 1, 2, and 11–14 are unpatentable under § 103 over the instituted combinations of Stefik ’235 and Stefik ’980, Stefik ’235, Stefik ’980, and Poggio, and Ginter.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedOther

    “Wechselberger’s declarations, as a whole, little or no weight in our analysis. Patent Owner has not cited any authority requiring an expert to recite or apply the “preponderance of the evidence” standard in order for the expert opinion to be accorded weight. Under 37 C.F.R. § 42.1(d), we apply the preponderance of the evidence standard in determining whether Petitioner has established unpatentability. In doing so, it is within our discretion to determine the appropriate weight to be accorded the evidence presented, including expert opinion, based on the disclosure of the underlying facts or data upon which that opinion is based. Thus, we decline to make a determination about Mr. Wechselberger’s opinion, as a whole. Rather, in our analysis we will consider, as it arises, relevant portions of Mr. Wechselberger’s testimony and determine the appropriate weight to accord that particular testimony.” slip op. at 6

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

    “definitions of the term—it encompasses data relating to future, current, and past payments. In other words, we are persuaded that the ’221 patent does not incorporate an element of timing into the definition of payment data. First, the plain and ordinary meaning of the two words that make up the term—“payment” and “data”—do not incorporate any notion of time and nothing about their combination changes that determination. Second, we agree with both parties that language in the ’221 patent supports “payment data” representing data existing prior to, concurrent with, and after payment of the requested content. For example, the ’221 patent states that “payment data for making a payment to the system owner is received from the smart Flash card by the content access terminal and forwarded to an e-payment system.” Ex. 1001, 20:59–62. We agree with Patent Owner that this language indicates that payment data exists prior to the payment being made for the requested content. See PO Resp. 8. Petitioner does not address this language. See Reply 3–5. In addition, we agree with Petitioner that the language in the ’221 patent, “payment data received may either be data relating to an actual payment made to the data supplier, or it may be a record of a payment made to an e-payment system,” (Ex. 1001, 6:60–63) clearly shows that “payment data” includes data for payments that have already been made. See Reply 3–5. Moreover, the plain and ordinary meaning of data does not allow for a change in the character of that data based on when it is used in a transaction. For example, a credit card number may qualify as “data relating to payment” before that credit card number is processed, while the credit card number is being processed, and after the credit card number is processed. Thus, without an express description to the contrary, we presume that “payment data” retains the same meaning before, during, and after the payment operation. Neither party points to persuasive evidence of any such contrary description. In fact, the ’221 patent broadly describes “payment data” in several places as “comprising data relating to payment for the requested data item.” Ex. 1001, 6:51–53, 10:26–30, 10:39–41, 10:44–46. This is consistent with the plain meaning of the term. Thus, we are persuaded that the broadest reasonable interpretation of “payment data” in light of the specification of the ’221 patent is “data relating to payment for the requested data item.”” slip op. at 9

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

    “evidence, including the disclosure of both Stefik references and the detailed claim chart appearing on pages 41–69 of the Petition. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, which we also have considered, for the reasons discussed below, Petitioner has shown, by a preponderance of the evidence, that each of claims 1, 11, and 12 is unpatentable under 35 U.S.C. § 103 as having been obvious over the combination of Stefik ’235 and Stefik ’980.” slip op. at 16

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

    “ultimate issue here. The relevant inquiry is whether the transfer of payment data, as claimed, would have been obvious to those of ordinary skill in the art in light of the combined teachings of Stefik ’235 and Stefik ’980. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Petitioner asserts that a person of ordinary skill in the art would have understood the Stefik references to teach the acceptance of fees and payments for digital works and, to support this assertion, points to the express disclosure that “billing transactions were well understood in the state of the art.” 102 Pet. 54–55 n.26; Ex. 1014, 29:61–64; see also Ex. 1021, (App’x D) 79–82. Indeed, Patent Owner’s expert, Dr. Katz, acknowledged that a person of ordinary skill would have understood the basics of payment validation. See, e.g., Ex. 1031, 16:15–27:9. Patent Owner does not point to anything in the claim language indicating that such basic payment processing and validation is outside the scope of the claims. Thus, we are persuaded that a person of ordinary skill would find the Stefik references sufficiently teach payment processing and validation such that the claimed subject matter relating to transferring payment data would have been obvious.” slip op. at 19

  Patent outcomesUS 8,118,221 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,118,221
• Jack Henry And Associates, Inc. v. Datatreasury Corp.Some claims unpatentable
  PTAB · Jul 8, 2015 · CBM2014-00057 · APJ William V Saindon · CBM · Final written decision

  Claims 1, 2, 16, 18, 26, 27, 42, and 46 are unpatentable: Campbell anticipates five claims, and Campbell with Blackwell renders five claims obvious.

  RulingsFinal written decision

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

    “stamp . . . , an identification number to identify the merchant originating the scan and any additional useful information.” Ex. 1001, 8:14–17 (emphasis added). The DAT_TERMINAL_ID, which is part of the unencrypted tag, “uniquely identifies the DAT 200 which is used by the customer.” Id. at 10:27–33. The DAT 200, also known as the remote data access terminal (id. at 4:62–63) is shown in Figure 2 and is a collection of components found at the merchant (e.g., bank). Id. at 5:20–38. Thus, in this particular example, the SSID (which is not encrypted) identifies the remote data access terminal, for example, the subsystem that scans and sends images at a bank. Nothing about the term “subsystem identification information,” as set forth in the claims or specification, indicates that only the remote data access subsystems can have an SSID; this is merely an example. Accordingly, we construed SSID in a manner that encompassed a preferred embodiment but, because the specification provided no indication that the term should be read more narrowly, we did not limit SSID to the particular embodiment identified by Patent Owner. See Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.”).” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “Regarding Petitioner’s improper use of sub-exhibits within an exhibit, we note that, although parties are not permitted to file combined documents as Petitioner has done in Exhibit 1026, see 37 C.F.R. § 42.6(a)(3), exclusion would be too extreme a remedy in this instance, where there is insufficient prejudice to Patent Owner. A more reasonable remedy would be to have Petitioner re-file the documents, but at this late stage of the proceeding, where briefing has closed, there is no compelling reason to have Petitioner re-file the documents.” slip op. at 13

  • BurdenMixed

    “We agree with Petitioner that Campbell discloses a plurality of sending and receiving banks. Ex. 1018, 6:9–14 (describing subscribing and non-subscribing banks using the system). Petitioner, however, relied on the node in Campbell to show the central location limitation of independent claim 26, not the remote bank. Pet. 31. Petitioner does not explain how Campbell describes a plurality of nodes (or, conversely, how the receiving bank describes each feature of the central location). Accordingly, Patent Owner’s observation that Petitioner has failed to address the claim limitations is persuasive. We determine that Petitioner has failed to show by a preponderance of the evidence that Campbell anticipates the subject matter of claim 29.” slip op. at 20

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

    “With a full record, we find that the preponderance of the evidence supports Petitioner’s position. Campbell does not state that only the image is encrypted. Instead, Campbell states that “information [is] encrypted . . . to provide security for the images transported.” Ex. 1018, 5:55–58 (emphasis added). Thus, Campbell uses the terms information and image for different things. Earlier in that column, Campbell also explains what it means by “information,” and it is clear that this information is not just images but rather includes “information that accompan[ies] those images.” Id. at 5:25– 26 (emphasis added). For example, the information identifies the “sending institution,” “receiving institution,” and “the disposition of the check.” Id. at 5:26–31. As we discussed above in our claim construction section, we are persuaded that information that identifies the sending institution is an SSID. Thus, when this information is encrypted, it is an encrypted SSID, as required by claim 1. See also Ex. 1026, 14 (Petitioner’s expert, Dr. Michalson, testifying that the encrypted information in Campbell identifies the receiving institution). Reviewing the record before us, we are persuaded that Campbell discloses transmitting an encrypted SSID.” slip op. at 17

  Patent outcomesUS 5,910,988 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 5,910,988
• Apple Inc. v. Sightsound Technologies, LLCAll claims unpatentable
  PTAB · Oct 7, 2014 · CBM2013-00020 · APJ Justin T Arbes · CBM · Final written decision

  Claims 1, 2, 4, and 5 are unpatentable as obvious over the CompuSonics publications; Apple did not prove anticipation by the CompuSonics system.

  RulingsFinal written decision

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

    “persuaded that they disclose a single, publicly known system that anticipates the challenged claims. Anticipation requires that every limitation of the claim at issue be disclosed in a prior art disclosure and “arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. 4 Section 18(a)(1)(C) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), provides that a covered business method patent review may be based on “prior art that is described by section 102(a)” as in effect before March 16, 2013. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id.; see also Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1351–52 (Fed. Cir. 2008) (concluding that a set of eleven specifications pertaining to the same telecommunication standard did not constitute a “single prior art reference”). Apple does not argue that a single prior art reference discloses all limitations of the challenged claims, instead relying on different materials as allegedly disclosing different limitations. See Pet. 43–55. The cited materials undoubtedly are similar, as they all describe technology developed by CompuSonics and pertain generally to the recording of digital audio or video. There are differences, however. For example, the materials describe different models of DSPs with slightly different features and capabilities. Certain materials discuss the recording of digital audio on DSP-1000 series devices with floppy disks, e.g., Ex. 4113, whereas others disclose storage on DSP-2000 series devices with a hard disk, e.g., Ex. 4119. Given that the prior art teachings and suggestions are found in references describing a family of device models, as opposed to a single device model, we find that one skilled in the art would not have at once envisaged the claimed arrangement of known components in a manner consistent with anticipation under 35 U.S.C. § 102(a). Apple has not demonstrated, by a preponderance of the evidence, that claims 1, 2, 4, and 5 of the ’573 patent are anticipated by the CompuSonics system.” slip op. at 23

  • Obviousness (§103) › Analogous artAnalogous artUnpatentable

    “limitations of claim 1, we turn to whether a person of ordinary skill in the art would have had reason to combine the teachings of the references to achieve the claimed method. We are guided by the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). “Section 103(a) forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” Id. at 405. “[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” Id. at 417 (citation omitted). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. . . . [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id. A determination of obviousness, though, requires identifying “‘some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Id. at 417–18 (citation omitted). The evidence of record demonstrates that the CompuSonics publications describe prior art elements operating according to their known functions and yielding predictable results. See supra II.B; Pet. 33–51; Ex. 4132 ¶¶ 17–40, App. C at 1–7; PO Resp. 31 (acknowledging that “the components needed to practice the claims were available prior to 1988”). The disclosed DSPs would store digital signals and communicate digital signals electronically over a telephone line in a known manner. A floppy disk used by a DSP would function for its known purpose of storing digital data. Allowing the user to telephone the music provider and provide a credit card number for payment would have functioned just like other known payment systems of the time. See Ex. 4132 ¶¶ 26–27; Ex. 4262 ¶¶ 14–25. A person of ordinary skill in the art, having the educational background and work experience described above, see supra Section II.D.2, would have recognized that the predictable result of using these elements was a system that allowed users to purchase and download music, as expressly contemplated by the references themselves.” slip op. at 37

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the ’573 patent, the types of problems and solutions described in the ’573 patent and cited prior art, and the testimony of the parties’ declarants, we agree with Dr. Kelly’s assessment and conclude that a person of ordinary skill in the art would have had a bachelor’s degree or equivalent in computer engineering or computer science and approximately two years of experience in developing software and hardware that transmit and receive files over a network. See, e.g., Ex. 4101, col. 1, l. 9–col. 2, l. 9 (describing alleged problems in the prior art, and stating that the ’573 patent describes “a method [by] which a user may purchase and receive digital audio or video signal[s] from any location which the user has access to a telecommunications line”); col. 4, ll. 16–22 (stating that certain components, such as hard disks 10 and 60, telephone lines 30, compact disc player 40, video display unit 70, and stereo speakers 80, were “already commercially available”); Ex. 4132 ¶¶ 2–7 (describing the background of Dr. Kelly); Ex. 2153 ¶¶ 3–13 (describing the background of Mr. Snell). In particular, Dr. Kelly’s definition is appropriate because it requires some level of specific experience with transmitting and receiving data over a network, consistent with the recitation in the claims of connecting electronically and transmitting data over a telecommunication line.” slip op. at 28

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

    “The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). To qualify, a document must have been sufficiently accessible to the public interested in the art. Kyocera, 545 F.3d at 1350–51 (a “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’”) (citation omitted). The evidence of record indicates that the diagrams were displayed, publicly and repeatedly, at trade shows, lectures, and similar events, and that those events were of the type that would have been attended by persons of ordinary skill in the art. The diagrams were displayed multiple times at multiple events, unlike the situation where a slide is displayed only one time at an oral presentation. See Klopfenstein, 380 F.3d at 1349 n.4. Further, each diagram is a relatively simple display of components on a single page, and there is no indication in the record that attendees at the various events could not have copied the diagrams. See id. at 1351 (“The more complex a display, the more difficult it will be for members of the public to effectively capture its information. The simpler a display is, the more likely members of the public could learn it by rote or take notes adequate enough for later reproduction.”). Apple has established that Exhibits 4112 and 4117 qualify as prior art printed publications under 35 U.S.C. § 102(a).” slip op. at 30

  Patent outcomesUS 5,191,573 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,191,573
• Apple Inc. v. Sightsound Technologies, LLCAll claims unpatentable
  PTAB · Oct 7, 2014 · CBM2013-00023 · APJ Justin T Arbes · CBM · Final written decision

  Claims 1, 64, and 95 were not shown anticipated by the CompuSonics system but were held unpatentable as obvious over the CompuSonics publications.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDisclaimer not foundDecided for petitioner

    “memory” to a hard disk. The Specification describes the use of a hard disk in the context of describing a preferred embodiment, not defining the “second memory” recited in the claims. See, e.g., id. at col. 3, l. 55–col. 4, l. 28 (describing hard disk 60 of the user in a section titled “Description of the Preferred Embodiment”); col. 6, ll. 10–16 (stating that the description and drawings “shall be interpreted as illustrative, and not in a limiting sense”). We do not see anything in the Specification indicating that the disclosed method requires a hard disk, as opposed to merely treating it as a preferred type of memory. Nor are we persuaded that the Specification limits “second memory” to only non-removable devices. The Specification does not use the term “removable” or state that any memory must be incapable of being removed. Indeed, hard disks, which are the preferred embodiment disclosed in the Specification, were available at the time of the ’440 patent as removable and non-removable devices, as SightSound’s declarant, Mr. Snell, acknowledges. See Ex. 4366 at 107:20–108:2. Further, the Specification’s description of disadvantages of certain types of removable storage media (i.e., records, tapes, and CDs) does not mean necessarily that the term “second memory” excludes such devices. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“Mere criticism of a particular embodiment encompassed in the plain meaning of a claim term is not sufficient to rise to the level of clear disavowal.”). The Specification does not indicate that the identified disadvantages extend to all removable media or that the disadvantages occur specifically because the devices are removable. See Ex. 4301, col. 1, l. 24–col. 2, l. 21. To the contrary, some of the identified disadvantages, like limited capacity and playback capability, have nothing to do with whether the device can be removed. See id. at col. 1, ll. 27–44. Thus, we do not see any basis in the Specification for limiting “second memory” to only non-removable devices.” slip op. at 12

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

    “persuaded that they disclose a single, publicly known system that anticipates the challenged claims. Anticipation requires that every limitation of the claim at issue be disclosed in a prior art disclosure and “arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. 4 Section 18(a)(1)(C) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), provides that a covered business method patent review may be based on “prior art that is described by section 102(a)” as in effect before March 16, 2013. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id.; see also Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1351–52 (Fed. Cir. 2008) (concluding that a set of eleven specifications pertaining to the same telecommunication standard did not constitute a “single prior art reference”). Apple does not argue that a single prior art reference discloses all limitations of the challenged claims, instead relying on different materials as allegedly disclosing different limitations. See Pet. 50–64. The cited materials undoubtedly are similar, as they all describe technology developed by CompuSonics and pertain generally to the recording of digital audio or video. There are differences, however. For example, the materials describe different models of DSPs with slightly different features and capabilities. Certain materials discuss the recording of digital audio on DSP-1000 series devices with floppy disks, e.g., Ex. 4316, whereas others disclose storage on DSP-2000 series devices with a hard disk, e.g., Ex. 4324. Given that the prior art teachings and suggestions are found in references describing a family of device models, as opposed to a single device model, we find that one skilled in the art would not have at once envisaged the claimed arrangement of known components in a manner consistent with anticipation under 35 U.S.C. § 102(a). Apple has not demonstrated, by a preponderance of the evidence, that claims 1, 64, and 95 of the ’440 patent are anticipated by the CompuSonics system.” slip op. at 22

  • BurdenDecided for patent owner

    “persuaded that they disclose a single, publicly known system that anticipates the challenged claims. Anticipation requires that every limitation of the claim at issue be disclosed in a prior art disclosure and “arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. 4 Section 18(a)(1)(C) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), provides that a covered business method patent review may be based on “prior art that is described by section 102(a)” as in effect before March 16, 2013. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id.; see also Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1351–52 (Fed. Cir. 2008) (concluding that a set of eleven specifications pertaining to the same telecommunication standard did not constitute a “single prior art reference”). Apple does not argue that a single prior art reference discloses all limitations of the challenged claims, instead relying on different materials as allegedly disclosing different limitations. See Pet. 50–64. The cited materials undoubtedly are similar, as they all describe technology developed by CompuSonics and pertain generally to the recording of digital audio or video. There are differences, however. For example, the materials describe different models of DSPs with slightly different features and capabilities. Certain materials discuss the recording of digital audio on DSP-1000 series devices with floppy disks, e.g., Ex. 4316, whereas others disclose storage on DSP-2000 series devices with a hard disk, e.g., Ex. 4324. Given that the prior art teachings and suggestions are found in references describing a family of device models, as opposed to a single device model, we find that one skilled in the art would not have at once envisaged the claimed arrangement of known components in a manner consistent with anticipation under 35 U.S.C. § 102(a). Apple has not demonstrated, by a preponderance of the evidence, that claims 1, 64, and 95 of the ’440 patent are anticipated by the CompuSonics system.” slip op. at 22

  • ExcludeMotion to exclude, deniedMixed

    “Apple argues that Mr. Snell is not qualified to offer opinions on the alleged commercial success of the iTMS, and does not provide a sufficient factual “basis” for his opinions. Pet. Mot. to Exclude 3–5. For instance, Apple contends that Mr. Snell applied an erroneous interpretation of “second memory” in the claims, and gave opinions that contradict the prosecution history of the application that issued as the parent ’573 patent. Id. at 12–15. We have reviewed the cited portions of Mr. Snell’s testimony and see no basis on which they would warrant the extreme remedy of exclusion. Apple’s arguments indicate a mere disagreement with Mr. Snell’s testimony and pertain to the weight to be given to that testimony, which we are able to assess without excluding it, as explained above. Apple’s Motion to Exclude is denied.” slip op. at 59

  Patent outcomesUS 5,966,440 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,966,440

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.