• Merck Sharp & Dohme Corp. / Merck Sharp & Dohme B.V. et al. v. Microspherix LLCSome claims unpatentable
  PTAB · Jul 8, 2019 · IPR2018-00393 · APJ James A Worth · IPR · Final written decision

  Claims 1–5, 7, 8, and 10–19 are unpatentable as obvious; claims 6 and 9 were not shown unpatentable.

  RulingsFinal written decision

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

    “B. Motivation to Combine De Nijs and Schopflin The parties dispute whether a person of ordinary skill in the art would” slip op. at 21

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “that Merck failed to add a radiopaque marker to its Implanon device and that the lack of a negative impact on release rates shows unexpected success. PO Resp. 64; see also id. at 54 (“There is no dispute De Nijs does not discuss using a marker, and that Implanon did not use a marker.”). Petitioner states that the Implanon device is the commercial embodiment of Example 5 of De Nijs. Reply 5 (citing Ex. 2002, 3:15–16; Ex. 1067, 297:7–9). Example 5 of De Nijs has no polysiloxane jacket and no sealing of implant ends. Accordingly, this argument would be more relevant to claims 6 and 9 discussed below, which recite open ends or pores. Our analysis of claim 1 focuses on the broader scope of claim 1, which includes both sealed and 14 Patent Owner cited this case in its response. See PO Resp. 32. Accordingly, we do not find Petitioner’s reliance on this case at oral argument to be waived. 15 The Court in Intelligent Bio-Systems emphasized that there is a distinction between reasonable expectation of success and reason to pursue the references’ teachings. Id. at 1366–1368. According to Intelligent Bio- Systems, reasonable expectation of success only looks to “likelihood of success in combining references to meet the limitations of the claimed invention” and that, for example, appropriate cleavage conditions would have been irrelevant to the inquiry where such conditions are not required by the claim at issue. Id. at 1367. Inquiry into motivation to combine, however, considers whether a person having skill in the art would have believed that there was a reason for reaching the claimed invention in the first place. Id. at 1368; see also KSR Int’l Co., 550 U.S. at 418 (“it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”).” slip op. at 27

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner

    “the examiner during the prosecution of the Veenstra patent. We note, however, that the claims in the prosecution of the unrelated Veenstra patent only reached allowance after incorporation of language that captured Veenstra’s unexpected results for localization of the barium sulfate as set out the specification. In other words, Merck’s other positions during the prosecution of the Veenstra patent were not successful. Because, Merck did not succeed “in persuading a court13 to accept that party’s earlier position” we do not find that estoppel applies to Petitioner in this proceeding. New Hampshire, 532 U.S. at 750–51. Accordingly, we do not agree with Patent Owner’s position that Petitioner is estopped from arguing that the addition of a marker disclosed in Schopflin to De Nijs’s implant is obvious.” slip op. at 21

  • ExcludeMotion to exclude, deniedDenied

    “First, Petitioner asserts certain exhibits and testimony should be excluded as irrelevant because they have not been discussed in any substantive paper. Paper 36, 2–4. But, as Patent Owner notes, Dr. Kiser cited the objected-to exhibits in his declarations to show his understanding of the state of the art. Paper 38, 3. Moreover, we agree with Patent Owner that the uncited portions of Dr. Kiser’s declarations include paragraphs of technical and legal background that provide context for his opinions. Id. at 5–6. We agree with Patent Owner that Dr. Kiser’s understanding of the state of the art and the exhibits supporting that understanding are relevant to the understanding of persons of ordinary skill in the art. Id. at 3–5. Accordingly, we deny Petitioner’s motion to exclude such testimony and exhibits.” slip op. at 70

  Patent outcomesUS 9,636,402 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,636,402
• Celanese International Corporation v. Daicel CorporationSome claims unpatentable
  PTAB · May 3, 2018 · IPR2017-00163 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1 and 3–14 are unpatentable under the stated § 103 grounds; claim 2 was not shown unpatentable because the cited level-control teaching did not establish its claimed flow-rate limitation.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “definition is off-base and inappropriate for this proceeding.” Id. We disagree. As an initial matter, challenged claim 1 includes multiple steps other than the “condensation step” and the “separation and recycling step.” Thus, we decline to discount Patent Owner’s proposed definition of the ordinary skill level merely because it includes experience with an anhydrous process. More importantly, it is undisputed that acetic anhydride, like acetic acid, is produced through carbonylation processes. See, e.g., Ex. 1005, 3:26–50; Ex. 1027, 116–17. In our view, an ordinary artisan having production experience for acetic anhydride falls squarely within Petitioner’s definition: one with a working knowledge of carbonylation processes.” slip op. at 10

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

    “In the Decision to Institute, we agreed with Petitioner and construed the term “buffering function” to mean “ability to temporarily retain.” Dec. 6–7. We also stated that there was no need to construe any other term expressly. Id. at 7. During trial, Patent Owner does not dispute these determinations. PO Resp. 3. Having considered the complete record developed at trial, we see no reason to change our interpretation of the claims.” slip op. at 8

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

    “Petitioner argues, and we agree, an ordinary artisan would have known that such fluctuating flow rates in a carbonylation process are economically disadvantageous. Pet. 27 (citing Ex. 1002 ¶¶ 80, 81). Indeed, Ochiai teaches “[w]hile a steady state of dry acetic acid product has been maintained from the distillation system per methanol feed rate, process inefficiency in the form of variable liquid levels and flow rates of the 26 intermediate process streams is economically disadvantageous.” Ex. 1009, 2:31–36. Patent Owner contends that an ordinary artisan would have understood the process inefficiencies referred to in Ochiai as limited to those in the reaction and flash evaporation steps, and not including inefficiencies in the decanter or in the condensation and separation steps. See id. at 35 (citing Ex. 2006 ¶¶ 120–122). We are not persuaded. As explained above, even though Ochiai focuses on the reactor and flasher, an ordinary artisan would have understood that the flow rates downstream of the flasher, including the overhead stream exiting the light ends column and into the decanter, would also fluctuate. See supra 18–19. Ochiai teaches it is important to “reduce variability of the flow rates of the intermediate streams relative to the methanol feed rate so as to improve process efficiency.” Ex. 1009, 4:5–9. Dr. Bhise testified, and we agree, that relative to the methanol feed, the overhead stream exiting the light ends column and into the decanter is an intermediate stream. See Ex. 1050, 136:10–15. As a result, an ordinary artisan would have understood that Ochiai suggests reducing the fluctuation of the overhead stream to improve process efficiency.” slip op. at 26

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “controlling the amount in the decanter, as evinced by its “repeated strong statements regarding the critical importance of concentration in an acetic acid production process.” PO Resp. 30–32. A reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken” by the inventor. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A reference may not teach away even if a particular solution is not the preferred solution or is inferior to another solution. In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). In this case, despite pointing out that level control may not detect, or at least not detect in a timely fashion, some undesirable conditions in the process, Hallinan describes level control “works reasonably well in ensuring quality control.” Ex. 1011, 6:11–16. Thus, we do not find the focus on concentration in the invention of Hallinan amounts to teaching away because it “does not criticize, discredit, or otherwise discourage” the use of level control. See In re Fulton, 391 F.3d at 1201; see also In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (explaining “just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes”). In sum, we agree with Petitioner that Hallinan teaches level controlling the decanter based on the fluctuating incoming flow rate, as recited in the wherein clause of claim 1. See Pet. 24–27.” slip op. at 24

  Patent outcomesUS 8,940,932 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,940,932
• Instradent USA, Inc. v. Nobel Biocare Services AGSome claims unpatentable
  PTAB · Feb 15, 2017 · IPR2015-01786 · APJ Christopher G Paulraj · IPR · Final written decision

  Claims 1–5 and 19 are unpatentable as anticipated by the ABT Catalog; claims 1–5, 19, and 20 were not shown unpatentable as obvious over the Anthogyr Catalog and Update Journal.

  RulingsFinal written decision

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

    “We also do not find that the plain and ordinary meaning of “having” in this claim limitation would be understood to define the coronal region as only the portion with a frustoconical shape. Contrary to Patent Owner’s arguments, the term “having” is generally considered a transitional phrase even when it is not used to separate the preamble from the body of the claim, and it may be treated as open or closed depending on its context in the claim and specification. See, e.g., Lampi Corp., 228 F.3d at 1376 (interpreting the phrase “housing having two half-shells” in the body of the claim as open-ended, thus allowing for additional components in the housing); see also Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001) (noting that “the term ‘having’ does not convey the open-ended meaning as strongly as ‘comprising,’” and “does not create a presumption that the body of the claim is open”); Manual of Patent Examining Procedure § 2111.03 (“Transitional phrases such as ‘having’ must be interpreted in light of the specification to determine whether open or closed language is intended.”). Notwithstanding, the claim drafter specifically chose not to use the conventional phrase for limiting the openness of a claim—“consisting of”; nor did the drafter use the desired shape as an adjective to the structure, e.g., “a frustoconical coronal region.” In the context of this claim, there is nothing that physically or logically prevents the coronal region from “having” a portion that is frustoconical in shape and a portion that is not. We next consider whether this broader interpretation is consistent with the rest of the specification.” slip op. at 10

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

    “2. Remaining Claim Terms We determine that no explicit construction of any other claim term is necessary for our resolution of the issues in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14

  • Strike new argumentNew argument consideredDecided for petitioner

    “We determine that Petitioner’s Reply does not present improper new arguments and evidence concerning whether the ABT Catalog qualifies as a prior art printed publication. Throughout this proceeding, Petitioner has maintained the position that the ABT Catalog was publicly accessible prior to the May 2003 critical date, and thus anticipates challenged claims 1–5 and 19 under 35 U.S.C. § 102(b). Although Petitioner identified certain evidence in its Petition (e.g., the testimony of Dr. Fromovich) that we recognized had some inconsistencies, Petitioner was not precluded from presenting further corroborating evidence consistent with its overall theory that the ABT catalog was publicly accessible before the critical date. Because Patent Owner contested the sufficiency of the evidence submitted with the Petition in its Patent Owner Response, Petitioner was properly allowed to respond to those arguments in its Reply. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response.”). Moreover, as recognized by the Federal Circuit, “the introduction of new evidence in the course of the trial is to be expected in inter partes review trial proceedings and, as long as the opposing party is given notice of the evidence and an opportunity to respond to it, the introduction of such evidence is perfectly permissible under the APA.” Genzyme Therapeutic Products Ltd. P'ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016); cf. In re NuVasive, Inc., 841 F.3d 966, 973 (Fed. Cir. 2016) (finding APA violation where “the Board refused to permit [patent owner] to file a surreply or even to address the matter during oral argument”). Here, Patent Owner was provided an opportunity to substantively respond to Petitioner’s new Reply evidence in its Sur-Reply. Paper 57, 7. Patent Owner took advantage of that opportunity. Paper 77. Patent Owner also filed a Motion for Observations of the cross-examination testimony of Petitioner’s Reply Declarants. Paper 76. Patent Owner also extensively addressed this evidence during oral argument. See, e.g., Tr. 75:14–83:6. Accordingly, we determine that the evidence submitted with Petitioner’s Reply to support its assertions regarding public accessibility of the ABT Catalog is not improper and may be considered.” slip op. at 17

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

    “When the totality of the evidence is assessed, 13 we find that the ABT Catalog was made available, without restriction, to members of the interested public at least during the March 2003 IDS Conference. This is similar to the circumstances considered in Klopfenstein and MIT, where the court found that materials distributed or presented during an industry conference constituted a printed publication. Klopfenstein, 380 F.3d at 1348–52; MIT, 774 F.2d at 1109. Here, although there is no evidence that an actual presentation was made, the evidence tends to show that any interested conference attendee could have obtained a copy of the ABT Catalog from the ABT booth during the March 2003 IDS Conference. Moreover, while only one individual (Mr. Chakir) was shown to have actually obtained a copy of the ABT Catalog, we note that “actual retrieval of a publication is not a requirement for public accessibility.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1197 (Fed. Cir. 2008); see also Constant v. Advanced Micro–Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988) (“Accessibility goes to the issue of whether interested members of the relevant public could obtain the information if they wanted to. If” slip op. at 25

  Patent outcomesUS 8,714,977 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 8,714,977
• Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd.Some claims unpatentable
  PTAB · Jul 7, 2016 · IPR2015-00529 · APJ Robert A Pollock · IPR · Final written decision

  Claims 1–8 and 10–19 are unpatentable as obvious over the INOmax label, Bernasconi, Loh, and Goyal; claims 1, 7, 12, and 14 are also anticipated and obvious over the INOmax label.

  RulingsFinal written decision

  • Expert testimonyOther

    “method of providing pharmaceutically acceptable nitric oxide gas requires providing information to the medical provider to safely administer the nitric oxide gas,” thus “confirm[ing] that the ‘providing . . . information’ step is functionally related to the steps in the claimed method.” PO Resp. 31–33. As an initial matter, whether the claims should be interpreted as requiring such a functional relationship is a legal conclusion. See PO Resp. 13. Patent Owner’s conclusion regarding functional relationship between claim terms is based, at least in part, on an overly-limited reading of “pharmaceutically acceptable nitric oxide gas,” as discussed above. See PO Resp. 27. Further, we do not read the transcript testimony relied on by Patent Owner as clearly admitting a functional relationship between the steps of “providing pharmaceutically acceptable nitric oxide gas” and the information of (ii). See PO Resp. 31–32 (citing Ex. 2022, 78:15–80:4, 81:11–22, 111:2–17)). To the contrary, Dr. Beghetti appears to have testified that the claim elements are not directly related. Ex. 2022, 86:10– 25. Although Patent Owner points to In re Distefano, 808 F.3d at 848, as evidence that a “printed matter analysis includes ‘factual findings’” (PO Sur Reply 4, n.6), which inform the ultimate legal conclusion, we do not find the evidence as a whole compelling.” slip op. at 19

  • ExcludeMotion to exclude, deniedOther

    “IV. PETITIONER’S MOTION TO EXCLUDE Petitioner moves to exclude certain portions of Ex. 2024 on the grounds that they “are declarations and supporting materials submitted during patent examination . . . in violation of 37 C.F.R. § 42.53(a)” and “lack foundation (FRE 602) and authentication (FRE 901) and constitute impermissible hearsay (FRE 901).” Paper 31, 2–3. Petitioner likewise moves to exclude Exhibit 2029 as not relied on in the Patent Owner Response or by Patent Owner’s expert. Id. at 3. As we do not rely on the objected-to materials in this opinion, we dismiss the motion as moot.” slip op. at 45

  • Strike new argumentNew argument disregardedOther

    “V. OBJECTIONS TO DEMONSTRATIVES The parties also submit competing objections to demonstrative exhibits used at trial. Papers 46, 47. Specifically, both parties object to certain slides as setting forth a new argument not previously made in any paper. Papers 46, 47. The parties are reminded that demonstrative exhibits are illustrative only and are not part of the trial record. Indeed, in accordance with our Order on requests for oral argument, neither party filed its demonstratives with the Board. See Paper 45, 2 (“Notwithstanding 37 C.F.R. § 42.70(b), the parties shall not file any demonstrative exhibits in this proceeding without prior authorization from the Board. 37 C.F.R. § 42.5(b). Demonstrative exhibits are intended to be visual aids to assist a party in making its oral presentation and will not be entered into the record of these proceedings.”). Nevertheless, in this Final Written Decision, we rely on the arguments presented properly in the parties’ briefs and the evidence of record and do not consider any new arguments not previously set forth in any paper. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). (“No new evidence or arguments may be presented at the oral argument.”).” slip op. at 45

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “The Applicant amended the preamble of the rejected independent claims to recite “[a] method of providing pharmaceutically acceptable nitric oxide gas,” as presently set forth in claims 1 and 7. Id. at 746–747. Subsequent to the amendment, the Examiner withdrew the objection. Id. at 765; see id. at 733 (“If all the priority issues are resolved then it appears that the primary reference in the 103 rejection will no longer be prior art.” (italics omitted)). On pages 19 and 20 of its Response, Patent Owner argues that the preamble is, therefore, limiting in light of Catalina Mktg. International, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002), which holds that “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates the use of the preamble to define, in part, the claimed invention.” Although the prosecution history shows that amendment of the preamble only indirectly distinguished the claims over the prior art by establishing an earlier priority date, we conclude that both the Applicant and the Examiner treated the preamble as a claim limitation. Accordingly, we agree with Patent Owner that the preamble language “pharmaceutically acceptable nitric oxide gas” is limiting.” slip op. at 11

  Patent outcomesUS 8,846,112 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,846,112
• 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

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.