• Draftkings Inc., A Delaware Corporation v. AG 18, LLCSome claims unpatentable
  PTAB · Mar 12, 2024 · IPR2022-01446 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–17 and 19–30 are unpatentable based on the listed anticipation and obviousness grounds; claim 18 was not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner

    “Module Terms each recite a “module” that is configured to perform or to oversee certain recited functionality, without reciting sufficient structure for performing that functionality. See Pet. 32. Further, as in Williamson, the word “module” in the context of the ’205 patent claims and specification is a “nonce” word, used “in a manner that is tantamount to using the word ‘means.’” Williamson, 792 F.3d at 1350–51. We therefore agree with Petitioner’s position that the rebuttable presumption against application of § 112 ¶ 6 is overcome in this case, because the Module Terms are not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. See Williamson, 792 F.2d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”). Patent Owner’s and Dr. Lane’s apparent disagreement with this conclusion in the context of the ’205 patent is unaccompanied by any argument seeking to establish that the Module Terms might be understood to recite a sufficiently definite meaning as the name for structure. See PO Resp. 6; Ex. 2005 ¶ 28.” slip op. at 55

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner filed a Motion to Exclude Evidence proffered by Patent Owner (Paper 31). Patent Owner filed an Opposition (Paper 32), and Petitioner filed a Reply (Paper 33). We deny Petitioner’s Motion to Exclude Evidence, for reasons provided below.” slip op. at 2

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

    “k) Conclusion Regarding Claim 12 Thus, based on the record presented, we conclude Petitioner has” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “Petitioner relies on Bryson as disclosing the subject matter recited in claim 1, except for limitations 1[g] and 1[h], in substantially similar fashion as discussed above in Ground One in relation to other claims. See Pet. 68–73. Patent Owner’s sole opposition in this regard is whether Bryson discloses the betting range limitation 1[j]. See PO Resp. 49–53 (Patent Owner’s opposition to Ground Four as to claim 1). We conclude a preponderance of the evidence establishes Bryson supports Petitioner’s unopposed contentions in this regard, for the reasons set forth in the Petition which we adopt as our own in this Decision. We accordingly find Bryson discloses the preamble 1[pre] and limitations 1[a]–1[f], 1[i], and 1[k]–1[m].” slip op. at 74

  Patent outcomesUS 9,978,205 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,978,205
• Draftkings Inc. v. AG 18, LLCSome claims unpatentable
  PTAB · Mar 12, 2024 · IPR2022-01448 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1–10 and 12–29 are unpatentable over the asserted anticipation and obviousness grounds; claim 11 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “C. Claim Construction In an inter partes review, we construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).” slip op. at 11

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner

    “generally takes issue with whether Petitioner has sufficiently explained its construction of means-plus-function limitations. See PO Resp. 24–35. Nonetheless, based on the complete record, we find that the Petition “identif[ies] the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function” of this means-plus-function limitation in claim 26. 37 C.F.R. § 42.104(b)(3); see Pet. 22 (citing Ex. 1001, 3:60–66). Moreover, we apply Petitioner’s construction for our prior-art analysis because it is consistent with and supported by the complete record.” slip op. at 38

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

    “9–11, 20 102(e) Bryson 9, 10 11” slip op. at 110

  Patent outcomesUS 10,614,657 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,614,657
• Wirtgen America, Inc. v. Caterpillar Inc.Some claims unpatentable
  PTAB · Mar 12, 2024 · IPR2022-01397 · APJ Matthew S Meyers · IPR · Final written decision

  Claims 1–12 are unpatentable under § 103 over Willis and Xing, with claim 8 also unpatentable over Willis, Xing, and Laux; claim 13 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the arguments presented and the cited references, we find Petitioner’s unopposed definition of the level of ordinary skill reasonable, supported by the prior art evidence, the Specification, and Dr. Stein’s Declaration testimony (Ex. 1003 ¶¶ 21–24), and, for purposes of this Decision, adopt it as our own.” slip op. at 21

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

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). slip op. at 22

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

    “Petitioner asserts that “it was known that implementing a variable transmission in a milling machine could improve fuel efficiency” (id. at 33–34), and relying on the declaration testimony of Dr. Stein, reasons that one of ordinary skill in the art “would have recognized that using a hydromechanical CVT permitted controlling an engine to a speed that minimizes fuel consumption for a given load while controlling transmission gear ratios to achieve desired transmission output speeds that maximize machine performance.” Id. at 34 (citing Ex. 1003 ¶ 66). Petitioner further asserts that Xing taught a method of controllably adjusting a CVT to further improve fuel efficiency without impacting machine performance. Supra [Pet. 18–24]. Thus, implementing a CVT and control method like that taught by Xing in Willis’s milling machine would have been a matter of combining prior art elements according to known methods to yield predictable results. Id. (citing Ex. 1003 ¶ 66). Relying on the declaration testimony of Dr. Stein, Petitioner takes the position that one of ordinary skill in the art “would have expected to successfully incorporate Xing’s teachings, including those related to CVTs, engines, transmission control algorithms, and associated sensors, into Willis’s milling machine” because it would have been no more that the combination of “prior art elements according to known methods to yield predictable results.” Pet. 34 (citing Ex. 1003 ¶¶ 65–66); see also id. at 34–35 (“This combination would further apply a known technique and hardware to a known device that was ready for improvement, predictably yielding the result of the expected improvement.”). Petitioner concludes that one of ordinary skill in the art “would have expected that such a combination would improve the fuel consumption and energy efficiency of Willis’s milling machine, while maintaining desired rotor speed during operation.” Id. at 35. We find, on the complete trial record, that a person having ordinary” slip op. at 28

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

    “Owner’s counterarguments and find, on the complete trial record, that Petitioner demonstrates, by a preponderance of the evidence, that the combination of Willis and Xing teaches or suggests “determining an engine load of the engine” and “adjusting an engine speed of the engine based on the engine load” as recited by limitation 1[b], and recited in part by limitation 1[c]. Petitioner explains that Xing’s controller 116 “receive[s] signals from sensors communicatively coupled to the controller, such as torque sensor 122 and engine speed sensor 124” (Pet. 45 (citing Ex. 1006, 8:16–40)), and [b]ased on those signals, the controller in Xing evaluated power losses from the transmission and other power consuming components at different candidate operating speeds, measured engine load to determine the work output demanded of the machine, and independently set engine speeds and transmission ratios to minimize fuel consumption while achieving desired performance. Id. at 46 (citing Ex. 1006, 8:67–9:3, 9:9–17). We find Petitioner’s explanation to be consistent with Xing’s disclosure that the current load power requirement for the work vehicle may be determined indirectly by calculating the current engine power (Pengine) and the current power loss (Ploss) for the work vehicle 10. For example, as indicated above, the controller 116 may be configured to continuously monitor the engine speed and the engine torque (via sensors 122, 124), thereby allowing for the current engine power to be calculated by the controller 116. Ex. 1006, 9:37–44; see also id at 9:27–31 (“The relationship between the load power requirement and the power produced by the engine 22 of the work vehicle 10 is provided” by Equation 1: “Pengine = Pload + Ploss.”).” slip op. at 34

  Patent outcomesUS 9,975,538 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,975,538
• Wirtgen America, Inc. v. Caterpillar Inc.Some claims unpatentable
  PTAB · Mar 5, 2024 · IPR2022-01394 · APJ James J Mayberry · IPR · Final written decision

  Claims 18, 21–29, and 31–35 are unpatentable over the stated § 103 grounds; claims 30, 45, and 49–63 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having ordinary skill in the art “in the technical field of the ’995 patent (mobile construction machines) would have had knowledge of the technical literature concerning machine design, including hydraulic and mechanical systems and their use to steer and position wheels or tracks, before July 2004.” Pet. 15 (referencing Ex. 1003 ¶¶ 35–36). Petitioner further contends that a person having ordinary skill in the art would typically have had: (i) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on mobile construction machine design (or in a similar field); or (ii) seven years of experience working on mobile construction machine design (or in a similar field). Id. (referencing Ex. 1003 ¶¶ 35–36). Patent Owner does not address the level of ordinary skill in the art in its Response. Dr. Klopp states that “[w]hile I do not opine on the correctness of [Petitioner’s] description [of the level of ordinary skill], I apply [Petitioner’s] description of a person of ordinary skill in the art for the purposes of my declaration.” Ex. 2004 ¶ 26. Based on the prior art, the sophistication of the technology at issue, and Mr. Orr’s Declaration testimony, we adopt Petitioner’s undisputed definition of the level of ordinary skill. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’995 patent. Ex. 1003 ¶¶ 35–36; Ex. 1001 (describing a mobile construction machine); Exs. 1005–1015 (disclosing aspects of mobile construction machine design).” slip op. at 24

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Independent claim 45 uses “means-plus-function” language, reciting several such clauses. Ex. 1001, 14:31–50; see 35 U.S.C. § 112 ¶ 6.10 10 We cite to the pre-AIA version of the statute applicable to the Challenged Claims. Means-plus-function claiming occurs when a claim term is drafted in a manner that invokes 35 U.S.C. § 112 ¶ 6, which states: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. See 35 U.S.C. § 112 ¶ 6; Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc). The parties do not dispute that § 112 ¶ 6 applies to the recited means-plus-function clauses in the Challenged Claims. See Pet. 16–20; PO Resp. 5–6 (implying that § 112 ¶ 6 applies in arguing that Petitioner did not satisfy the requirements for construing certain means-plus-function terms).” slip op. at 25

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for petitioner

    “Turning to the corresponding structure, the Specification of the ’995 patent identifies only one structure that performs the recited function— actuator 44. The Specification states that “second actuator 44 is associated with the support device 40 and is adapted to maintain the same rotational direction of the one ground engaging unit 20 in each of the projecting and retracted positions.” Ex. 1001, 4:44–47; see id. at 4:56–60 (“[S]econd actuator 44 is connected to the lifting column 46 and is adapted to cause at least a portion of the lifting column 46 to rotate about a lifting column axis 48 that is oriented generally vertically relative to the work machine.”). The Specification at least suggests that actuator 44 does not need to be a rotary actuator, or, at least, that a linear actuator is an equivalent structure to a rotary actuator. For example, in describing “one of the preferred embodiments,” the Specification describes that “at least one of the first and second actuators 42, 44 is a rotary actuator,” suggesting that actuator 44 is not necessarily a rotary actuator. Ex. 1001, 4:61–62; see also id. at 5:17–21 (“These embodiments may be advantageously combined by employing a rotary actuator as described above as either or both of the first and second actuators 42, 44, and by positioning these actuators at the specified longitudinally spaced apart locations.”), 5:21–24 (“[I]t may also be preferable that at least the second actuator 44 be implemented using the rotary actuator construction and placed at the upper portion of the lifting column 46.” (emphasis added)); but see id. at Fig. 3 (depicting actuator 42 as a linear actuator). Accordingly, we find that the corresponding structure identified in the Specification for the recited function is a rotary or linear actuator. As such, we do not agree with Petitioner’s construction limiting the actuator to a rotary actuator. We also do not agree with Petitioner that the second actuator must be at the top portion of the lifting column. The Specification clearly identifies that the second actuator may be located “on the lifting column” “spaced apart from the first actuator 42,” and that locating the second actuator at the upper portion of the lifting column is merely a preferred location. See Ex. 1001, 5:8–24.” slip op. at 29

  • Strike new argumentNew argument disregardedDecided for patent owner

    “evidence, that a person having ordinary skill in the art would have modified Piccoli’s teachings to connect the second end of the first actuator to the swing arm as required by claim 30. In the Petition, the only evidence to support its modification is conclusory testimony from Mr. Orr. This testimony is accorded no weight. See Xerox Corp., IPR2022-00624, Paper 9. With respect to Petitioner’s reliance on Dubay as state-of-the-art evidence (for the first time in the Reply), we agree with Patent Owner that this argument is an improper new argument. In determining whether an argument is a proper argument in reply, we look to see if the Reply argument is responsive to an argument from Patent Owner and expands on a position in the Petition. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1384 (Fed. Cir. 2023) (“[W]e have held that a reply may be proper if it is responsive and simply expands on previously raised arguments.”). Or, if Petitioner relies on previously unidentified disclosure “to make a meaningfully distinct contention.” Id. at 1383 (“[W]e held that a petitioner who asserted in its reply previously unidentified prior-art disclosures ‘to make a meaningfully distinct contention’ was impermissibly raising a new theory of unpatentability.”). We find that Petitioner’s argument in reply is closer to the later situation. Here Petitioner does not expand on a position from the Petition that Patent Owner criticizes based on the merits of the contentions. Instead, Petitioner supplements it contentions by arguing that the linear actuator does not have to be attached to the lifting column to retract and extend Volpe’s leg assembly, and by citing to Dubay when Patent Owner argues that Petitioner provides no supporting evidence for its contentions. These responses are the type of “meaningfully distinct contention[s]” that signal that Petitioner is augmenting deficient contentions in the Petition with new arguments.” slip op. at 61

  Patent outcomesUS 7,523,995 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,523,995
• Permian Global Inc. / Manticore Fuels, LLC v. Fuel Automation Station, LLCInstituted
  PTAB · Feb 28, 2024 · IPR2023-01238 · APJ Brent M Dougal · IPR · Institution

  The Board instituted IPR of claims 1–20, finding a reasonable likelihood that claims 1 and 11 are obvious over Van Vliet and Cable.

  RulingsInstitution decision

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

    “Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.1” slip op. at 2

  • BurdenMixed

    “Petitioner does not fully address this limitation. In particular, the Petition does not include a discussion of how the reels are connected to be fed from a manifold. See generally Pet. 26–27. Rather, the Petition argues that the hoses are stored on reels and that the hoses “are connected via fluid outlets 22 to receive fuel from [the] manifold.” Id. at 27. The Petition does say that the hoses are connected to the reels (id.), but does not attempt to establish any type of relationship between the reels and the manifolds. We further note that although indisputably Van Vliet’s schematic diagram shows flow passages through manifolds 36, 38 and hoses 24, nowhere do we discern where or how Van Vliet definitively discloses the reels 30 are connected to be fed from a manifold, as required by claim 1. Indeed, according to Petitioner’s own expert, one skilled in the art would understand that Van Vliet’s schematic diagram “is a high-level representation and is not intended to depict the physical appearance or form” of the system’s components. Ex. 1003 ¶ 132 n.138. At most, the diagram indicates the hose’s flow passage as wrapping around the reel. And, while Van Vliet describes that “hoses 24 are preferably stored on reels 30,” nowhere does it mention or otherwise suggest that the hoses are fluidly connected to the reels. Ex. 1004 ¶ 15. To the contrary, Van Vliet explains that “each hose 24 is connected to a fuel outlet 22 by a dry connection 60 and to a cap 26 by a dry connection 62.” Id. ¶ 22. In other words, Van Vliet’s hose 24 cannot be connected to reel 30 if the ends of the hose are connected to dry connections 60 and 62, which are not part of the reel. In that case, the hose’s flow passage does not run through the reel, and thus the reels 30 are not connected to be fed from a manifold, as required by claim 1. c) Conclusion For the above reasons, the Petition does not sufficiently identify how Van Vliet teaches or suggests the limitations of independent claim 1. 3. Claims 11 and 12 Similar to claim 1, claim 11 requires “a plurality of reels in the container, each said reel individually connected with the at least one manifold.” Ex. 1001, 10:64–65. The Petition relies on the analysis of claim 1 to address this limitation. Pet. 31–32. As noted above, the Petition does not attempt to establish a relationship between the reels and the manifolds, such as arguing that a reel and manifold in Van Vliet are connected. Thus, the Petition fails to show how claim 11 and its dependent, claim 12, would be anticipated by or rendered obvious over Van Vliet.” slip op. at 11

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

    “In this regard, we preliminarily agree with Petitioner that Patent Owner’s “proposed construction ignores the[] express differences in the claim language chosen by the patentee.” Prelim. Reply 2 (citing Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1370 (Fed. Cir. 2018) (“[W]hen an applicant uses different terms in a claim it is permissible to infer that he intended his choice of different terms to reflect a differentiation in the meaning of those terms”) (citing Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1119 (Fed. Cir. 2004))). Had the patentee desired to limit the claims to fluid connections, the patentee could have used the explicit language throughout, instead of only in choice locations. An example of this is claim 1 where the claim requires the “reels are connected to be fed from the [] manifold.” Ex. 1001, 10:21–23. “To be fed” limits the type of connection to a fluid connection between the manifold and reel, while the word “connected” alone does not infer any particular type of connection.” slip op. at 7

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

    “the motivation to combine “does not provide any reason in particular that is directed to motivating a POSITA to modify Van Vliet to have a fluid connection to its reels as in Cable.” Id. at 35. Patent Owner is mostly correct, as the majority of the section titled “Rationale and Motivation for Combining Van Vliet and Cable” is directed to aspects of Cable relied on for the dependent claims. However, this section also includes the following: “Incorporating Cable’s . . . reel configuration into Van Vliet’s mobile fuel delivery system would merely involve combining prior art elements according to known methods to yield predictable results.” Pet. 37 (citing Ex. 1003 ¶ 1752). Petitioner’s declarant testifies that Van Vliet and Cable describe similar systems for delivering fluid from a mobile trailer via hoses to multiple destinations. Further, the elements incorporated into Van Vliet from Cable are either already present in Van Vliet (e.g., reels) or were simple elements well-known in the art at the time of the ‘955 Patent. Incorporating Cable’s . . . reel configuration into Van Vliet’s mobile fuel delivery system would merely involve combining prior art elements according to known methods to yield predictable results. Ex. 1003 ¶ 175. Patent Owner does not contest Petitioner’s argument that using Cable’s reel configuration in Van Vliet’s system is a simple substitution that “merely involve[s] combining prior art elements according to known methods to yield predictable results.” Ex. 1003 ¶ 175; Pet. 37.” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,974,955
• Netflix, Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Feb 22, 2024 · IPR2020-00558 · APJ Iftikhar Ahmed · IPR · Remand

  The majority determined claims 1–24 were not shown unpatentable over Chen, Lindahl, and Hurst; the dissent would have found them obvious.

  RulingsRemand decision

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

    “We determine Patent Owner’s reading of the claim limitation is the better one. The limitation begins with the verb “locating,” and it therefore makes sense that the clause would recite what is located (i.e., encryption information) and where it is located (i.e., within the requested portions of the selected stream of protected video). In other words, it is reasonable that the second and third clauses of the limitation both modify the first clause (for example, as could perhaps be expressed through the use of commas as “locating encryption information, that identifies encrypted portions of frames of video, within the requested portions of the selected stream of protected video”).10 On the other hand, Petitioner’s reading of the limitation, 10 In general, we recognize that the use of commas to set off phrases in claim drafting is not consistent. We included commas above to illustrate Patent Owner’s understanding of the claim limitation. allowing only the second clause to modify the first, while not unreasonable, makes less sense. That is, the encrypted information identifies the encrypted portions of frames, which in turn are within the requested portions of the selected stream of protected video. Reading the claim in its entirety, the encrypted portions of frames would be understood to be located within the requested portions of the stream; it does not seem necessary for the claim to expressly recite that aspect. For example, the very next limitation— limitation [m] of claim 1—refers to “each encrypted portion of the frames of video” but does not expressly recite “within the requested portions of the selected stream.” Ex. 1001, 27:58–60. Thus, when limitation [l] recites “within the requested portions of the selected stream,” it seems more likely that the clause refers to where that encrypted information is located rather than simply to indicate the obvious location of the encrypted portion of the frames of video. We therefore view Patent Owner’s reading of the claim language as the better one.” slip op. at 13

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

    “I am persuaded that the Petition demonstrates that one of ordinary skill in the art would have had a motivation to combine Chen, Lindahl, and Hurst, as asserted by Petitioner. As the Federal Circuit found, the Petition pointed to and relied upon the portions in Chen describing pre-Chen art, without scalability or FEC features that were part of what Chen describes as aspects of its own inventive system. Netflix, slip op. at 9–10 (citing Pet. 17– 19, 69–70). I agree with Petitioner that “Chen-924 teaches several embodiments that adaptively stream alternative representations of a video using partially encrypted container files.” Pet. 20 (citing Ex. 1010, 14:41– 15:60). I determine that Chen-924 provides support for the rationale provided in the Petition, and that one of ordinary skill in the art would have been motivated to combine Chen and Lindahl in view of the disclosure of Chen-924. As discussed above, the Petition does not rely solely on privacy concerns and improvements to efficiency as its motivation to combine the references. See Pet. 18–19 (specifying piracy concerns, improvements to the efficiency of adaptive streaming, optimization of the balance between bitrate and bandwidth, and improvements to the end-user experience with fast startup and seek). With respect to whether one of ordinary skill in the art would have” slip op. at 52

  • Strike new argumentNew argument disregardedDecided for petitioner

    “I agree with Petitioner that Patent Owner’s Remand Brief, specifically pages 1–7, attempt to address aspects of claim 1 for the first time on remand. I also agree that Patent Owner’s arguments attempt to recharacterize limitations [j] and [k] to raise issues that Patent Owner did not raise previously, in contravention of our Order that issues raised needed support from “where those issues were raised in previous briefings by the parties.” Paper 56, 2. I have addressed whether scalability and FEC are integral to how Chen operates above, as well as whether the Petition relies on those aspects, supra. The questions about how Chen operates and what portions of Chen are asserted in the ground of unpatentability were previously raised, but now are being considered or reconsidered, based on the Federal Circuit’s decision. In Patent Owner’s Remand Brief, pages 1–7, the citations to argument previously raised do not support the arguments now presented by Patent Owner on remand. As such, I determine Patent Owner’s new arguments fall outside the scope of remand, and I dismiss these arguments seeking to distinguish limitations [j] and [k] from the cited prior art combination.24” slip op. at 62

  • ExcludeMotion to exclude, grantedMixed

    “7 Patent Owner’s Brief on Remand recognizes that there are two arguments Patent Owner raised in its Patent Owner Response that were not addressed in the Final Written Decision. See PO Remand Br. 1 (citing PO Resp. 24–37 (the construction of “locating encrypted information . . . within requested portions”), 38–58 (referring to Patent Owner’s “common keys” argument)). 8 The Final Decision also addressed Petitioner’s Motion to Exclude (Paper 42). See Final Dec. 28–37 (granting-in-part, denying-in-part, and dismissing-in-part Petitioner’s Motion). Our determinations on that Motion were part of Petitioner’s appeal to the Federal Circuit. See Paper 52. Because the Federal Circuit did not address this aspect of the Final Written Decision and the Federal Circuit’s decision does not impact our previous rulings on the Motion, we maintain those rulings here. Additionally, on remand, Petitioner requested authorization to file a motion for sanctions, which we held in abeyance until the parties’ briefing on remand was complete. See Ex. 3003, 1. Petitioner requests sanctions because of the impropriety of Patent Owner’s remand brief, including new claim construction arguments for limitations [1j] and [1k], and prejudice to Petitioner. Id. at 3, 5. Although we reserved further consideration of Petitioner’s request, we expanded both the time and pages allowed for Petitioner’s responsive brief, and also allowed Petitioner to address any related issues in its responsive brief. Id. at 1. Having considered the parties’ briefing on remand, and given that we do not reach the claim construction arguments that Petitioner objected to in its request for authorization to file a motion for sanctions, we deny Petitioner’s request.” slip op. at 5

  Patent outcomesUS 10,225,588 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,225,588
• Zebra Technologies Corporation v. Lone Star SCM Systems, Ltd.All claims unpatentable
  PTAB · Feb 22, 2024 · IPR2022-01374 · APJ Aaron W Moore · IPR · Final written decision

  Claims 1, 3–10, 15, 16, and 18 are unpatentable as obvious under § 103 over Garber and Werb, with Andersen added for claims 6, 7, and 18.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, relying on the testimony of Dr. Sharony, contends that a person having ordinary skill in the art at the time of the alleged invention “would have had at least a bachelor’s degree in electrical engineering, computer science, or a related field” and “significant experience with detection devices, like RFID and metal detectors.” Pet. 5 (citing Ex. 1002 ¶ 22). Patent Owner does not address Petitioner’s proposal or offer a different definition, and we determine that Petitioner’s formulation is consistent with the qualifications a person would have needed to understand and implement the teachings of the ’711 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may reflect an appropriate level of skill in the art). We thus apply Petitioner’s description of the person of ordinary skill in the art. B.” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner

    “The lack of the word “means” in a claim element creates a rebuttable presumption that § 112 ¶ 6 does not apply. See Williamson v. Citrix Online, LLC, 2 The District Court similarly concluded that “sensing subsystem” “is not a means- plus-function term subject to § 112 ¶ 6.” See Ex. 1015, 4. 792 F.3d 1339, 1348 (Fed. Cir. 2015). “When a claim term lacks the word ‘means,’ the presumption can be overcome . . . if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. at 1349 (citation omitted). “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.” Id. at 1350 (citation omitted). We conclude that Petitioner has not overcome the presumption against applying § 112, ¶ 6. Petitioner’s critical propositions—that “the ‘sensing subsystem’ term is a nonce word” and that “the purely functional prefix ‘sensing’ does nothing to impart structure to the term ‘subsystem’” (Pet. 6)—are conclusory attorney-argument for which Petitioner points to no adequate evidentiary support. See Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”). Accordingly, we maintain our determination that § 112 ¶ 6 does not apply to “a sensing subsystem configured to provide a signal having a signature representing a presence of a radio frequency identification (RFID) object.”” slip op. at 10

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

    “We do not adopt either of the proposed constructions because we conclude they add features from embodiments but fail to identify the required “clear indication in the intrinsic record that the patentee intended” to limit the claims in the manner proposed. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004). Instead, we conclude that “sensing subsystem” is “a component configured to detect a signal representing an object,” as proposed by Petitioner, but without “self-contained.” This is functionally the same as Patent Owner’s proposed construction with the conversion concept omitted, and also consistent with the District Court’s construction, which was “components configured to detect and convert a signal representing an object.” See Ex. 1015, 4.” slip op. at 12

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

    “We do not agree with Petitioner’s argument that “multiscan, coherent signal processing” does not require multiple scans. As noted above, Petitioner and Dr. Sharony acknowledge that “multiscan, coherent signal processing” is not a term of art and should be given its plain and ordinary meaning, and we find that the plain and ordinary meaning of “multiscan” requires multiple scans because the term is a combination of the prefix “multi,” which means more than one, with “scan.” Interpreting “multiscan” to cover only a single scan would read the prefix “multi” out of the claim term. Similarly, construing “multiscan” to require multiple signals, but not multiple scans, would read “scan” out of the term. Our understanding is consistent with the ’711 patent, which states as follows: The integrated mode of operation may employ multiscan, coherent signal processing of diverse multiple inputs to achieve significantly higher detection sensitivities thereby allowing more precise object location and identification. Ex. 1001, 18:18–22 (emphasis added). This sentence indicates that “multiscan, coherent signal processing” processes “diverse multiple inputs” to achieve higher 4 Here and elsewhere we substitute italics for bold emphasis used by the parties. detection sensitivities. However, it does not redefine the ordinary meaning of the term “multiscan” so that it would cover scanning only once rather than scanning multiple times, or cover receiving multiple inputs but not multiple scans.” slip op. at 14

  Patent outcomesUS 7,557,711 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,557,711
• International Business Machines Corporation v. Ebates Performance Marketing, Inc. Dba Rakuten RewardsSome claims unpatentable
  PTAB · Feb 2, 2024 · IPR2022-01250 · APJ Kevin C Trock · IPR · Final written decision

  Claims 1–5 and 7–22 are unpatentable as obvious; claim 23 was not shown unpatentable because the petition did not identify corresponding structure for limitation 23A.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the art “would have been someone knowledgeable in information technology and networking” and “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately 2 years of experience working in information technology and networking.” Pet. 17–18 (citing Ex. 1002 ¶ 111). Without agreeing that it is proper, Patent Owner and its expert apply Petitioner’s proposal. See PO Resp. 8 (citing Ex. 2002 ¶¶ 33–34.). For the purposes of this Decision, we continue to use the same assessment offered by Petitioner that we adopted in our preliminary assessment of a person of ordinary skill in the art in the Institution Decision, as it is consistent with the ’960 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “exception to a security rule” and/or “exceptions to security rules.” See e.g., Ex. 1001, 15:18, 15:29. In its Response, Patent Owner asserts that the plain meaning of the phrase “exception to a security rule” is “an instance in which a security rule does not apply.” Id. at 9. Patent Owner asserts that “[t]he ’960 patent does not set out any special definition of ‘exception,’ ‘exception to a security rule,’ or ‘exceptions to security rules.’” Id. (citing Ex. 2005 ¶¶ 41–43). Patent Owner also indicates that “the ’960 patent describes that exceptions to security rules may represent an ‘anomaly’ from general circumstances, or a situation in which a security rule may be permissibly violated such as once an administrator or manager grants approval for a violation.” PO Resp. 9 (citing Ex. 1001, 5:58–6:15, 7:22–39, 9:51–10:18). Patent Owner asserts that “[a]n exception to a security rule can be associated with adjusting risk indicated by the security rule,” and that “exceptions may indicate instances in which risk should be scored differently than what is specified by the general security rule and to which the security rule does not apply.” PO Resp. 10. In its Reply, Petitioner agrees with Patent Owner that the plain and ordinary meaning of the term “exception to a security rule” is “an instance in which a security rule does not apply,” and that this agreed upon meaning is consistent with the ’960 patent in that that “minimum security baseline rules may include minimum security policies.” Pet. Reply 2–3. Given the absence of a special definition of these phrases in the ’960 patent, the ’960 patent’s indication that minimum security baseline rules may include minimum security policies, the lack of any testimony by the parties’ experts contesting a general understanding of the term in the art, and the agreement by the parties as to the plain meaning of the term, we adopt for purposes of this Decision that the plain and ordinary meaning of the phrases “exception to a security rule” or “exceptions to security rules” mean “an instance in which a security rule does not apply.” See PO Resp. 8–16; Pet. Reply 2–5; Ex. 2005 ¶¶ 41–57; Ex. 1002 ¶¶ 66, 114–115, 134, 185; Ex. 2006, 62:2–24. slip op. at 11

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “means plus function limitations. Ex. 1001, 18:22–37. 35 U.S.C. § 112 “allows a patentee to express a claim limitation by reciting a function to be performed rather than by reciting structure or materials for performing that function.” Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1350 (Fed. Cir. 2003). A term written in means-plus-function form is construed to cover “the corresponding structure, material, or acts described in the specification and equivalents thereof” for performing the recited functions. 35 U.S.C. § 112, para. 6. Use of the term “means” creates a rebuttable presumption that a claim term is a means-plus-function limitation. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). This presumption may be rebutted if the claim recites structure sufficient to perform the described functions in their entirety. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008). “Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.” Id. at 1259–1260; see Inventio AG v. ThyssenKrupp Elevator Ams. Corp., 649 F.3d 1350, 1357 (Fed. Cir. 2011) (noting that one may still consider the written description to “inform the analysis of whether the claim recites sufficiently definite structure to overcome the presumption that § 112 ¶ 6 governs the construction of the claim”) (overruled on other grounds by Williamson, 792 F.3d at 1339). In our Institution Decision, we preliminarily adopted Petitioner’s construction of the means-plus-function limitations in the challenged claims. Dec. 15. Each of claim 23’s limitations is presumptively written in means-plus-function form, and prior to institution, Patent Owner did not attempt to rebut this presumption and did not point to anything in claim 23’s limitations that articulated structure sufficient to perform the described functions in their entirety. Id. (citing TriMed v. Stryker, 514 F.3d at 1259–1260). Post institution, Patent Owner agrees the terms should be interpreted under 35 U.S.C. §112 ¶ 6 as means-plus-function terms, that the specification describes appropriate corresponding structure for each of these terms, and that each of these terms is not indefinite. PO Resp. 17 (citing Pet. 18–20; Ex. 1002 ¶¶ 116–133). For some of the claim terms, Patent Owner identifies “a more complete listing of corresponding structure.” Id. In its Reply, Petitioner does not object to Patent Owner’s identification of corresponding structure. See generally Pet. Reply.” slip op. at 12

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

    “Petitioner argues that a person of ordinary skill in the art “would have been motivated to modify Andres’s system in view of Dodd’s teachings to provide the option to consider the difficulty in fixing a particular vulnerability.” Pet. 22. Petitioner points out that “Andres teaches a vulnerability remediation module 127 which ‘provides automated ticketing and workflow that manages remediation activities’ (Ex. 1003, 19:39–41) and that risk scores should inform the remediation process, such that administrators can ‘first take the remediation steps that will most significantly improve the overall security of the network.’” Pet. 22–23 (citing Ex. 1003, 18:21–23). Petitioner asserts that “Dodd similarly teaches ‘when multiple vulnerabilities have the same computed risk, a user of the security audit system can address those that are easier to fix first.’” Pet. 23 (citing Ex. 1004 ¶ 37). “Such remediation prioritization,” Petitioner argues, “allows an administrator to be more effective in his or her responsibilities even with the limited time and resources of many administrators.” Pet. 23 (citing Ex. 1003, 18:23–25; Ex. 1002 ¶¶ 138–140). Petitioner asserts that “Dodd provides the option to use a ‘fix difficulty value’ for the vulnerability to adjust a risk value associated with that particular vulnerability.” Pet. 23 (citing Ex. 1004 ¶ 36). Petitioner asserts that a person of ordinary skill in the art “would have understood Dodd’s optional adjustment of risk values based on the vulnerability fix difficulty to be an obvious addition to Andres.” Pet. 23. “Indeed,” Petitioner argues, “the same problem of effectively prioritizing remediation actions described in Andres underlies the adjustment process of Dodd.” Id. (citing Ex. 1004 ¶¶ 10, 23; Ex. 1002 ¶¶ 141–142). Petitioner also argues that a person of ordinary skill in the art “would have been motivated by the common goals of Andres and Dodd (utilizing risk scoring to inform/prioritize vulnerability remediation) to incorporate Dodd’s adjustment process into Andres’s system.” Pet. 24. “By adding Dodd’s option to adjust the risk score by a fix difficulty value to Andres’s system,” Petitioner argues, “a user of the combined system could more effectively prioritize the easiest to fix vulnerabilities, and therefore decrease the number of vulnerabilities threatening the network.” Id. (citing Ex. 1004 ¶ 37). “This would facilitate the early resolution of easier vulnerabilities,” Petitioner argues, “before they can be exploited in an attack and allow the ‘limited time and resources’ of administrators to be focused on the more difficult vulnerabilities.” Id. (citing Ex. 1003, 18:23–25). Petitioner argues that the enhanced prioritization “would also allow administrators to incorporate business factors such as cost into decisions about remediation.” Id. (citing Ex. 1002 ¶¶ 143–144).” slip op. at 30

  Patent outcomesUS 7,962,960 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,962,960
• Caterpillar Inc. v. Wirtgen America, Inc.All claims unpatentable
  PTAB · Jan 29, 2024 · IPR2022-01277 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over OMM and Samuelson because the combination was supported by motivation to combine and a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Singhose repeats Petitioner’s conclusions without any additional facts, data, or analysis to support his “opinion.” See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). “Patent Owner does not dispute the Petition’s definition.” PO Resp. 25. For purposes of this Decision, based on the prior art, the sophistication of the technology disclosed in the ’391 patent, and giving little weight to Dr. Singhose’s opinion, we adopt Petitioner’s definition of the level of ordinary skill.” slip op. at 14

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

    “We do not perceive the need to construe any claim limitation. Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe the claim preambles here where the construction is not ‘material to the [obviousness] dispute.’” (citations omitted)).” slip op. at 14

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “’391 patent because they are from the same field of endeavor and are reasonably pertinent to the problem the ’391 patent was trying to solve.” Pet. 16. The ’391 patent relates to “a road milling machine.” Ex. 1001, Abstract. The PM-465 machine described in OMM is a road-milling machine. Ex. 1002, 2. Samuelson discloses a sensor-integrated cylinder for use “in mobile equipment,” including construction equipment. Ex. 1004, 1:35–63, 2:28–31; Ex. 1006 ¶ 63. Additionally, the designs in the ’391 patent, OMM, and Samuelson address a similar problem—measuring the precise location of various components on construction equipment. OMM describes a sensor-driven control system intended to increase the accuracy of milling cuts. E.g., see, Ex. 1002, 50 (“Sensors at either side of the machine can be positioned in various ways for a variety of conditions to control both the grade and slope[10] of the cut surface.”). The sensors “detect and follow a string line, curb, etc., and the electronic control system makes adjustments to the heights of the legs to control the grade and slope of the cut surface.” Id. The sensor-integrated cylinders in Samuelson accurately measure the linear position of the piston as it extends/retracts inside the cylinder, and this information is sent to the controller for processing. Ex. 1004, 4:17-47. According to Petitioner, a person of ordinary skill “would have been motivated to implement sensor-integrated cylinders like Samuelson’s on the PM-465 machine and use them to monitor and change the positions of components attached to those cylinders.” Pet. 17 (citing Ex. 1006 ¶¶ 64–65).” slip op. at 29

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

    “In summary, we determine, on the complete trial record, that Petitioner has provided sufficient reasoning, supported by a preponderance of the evidence, that a person having ordinary skill in the art would have been motivated to modify OMM’s hydraulic cylinders with Samuelson’s smart cylinders, and use OMM’s side plates as grade slope sensors. We also find, based on the analysis above, that Petitioner has proven, by a preponderance of the evidence, that a person having ordinary skill in the art would have had a reasonable expectation of success.” slip op. at 45

  Patent outcomesUS 9,879,391 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,879,391
• Mercedes-Benz USA, LLC v. Yechezkal Evan SperoInstituted
  PTAB · Jan 17, 2024 · IPR2023-01027 · APJ Aaron W Moore · IPR · Institution

  The Board instituted review of all challenged claims on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable over the cited prior art.

  RulingsInstitution decision

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

    “We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons provided below, and based on the record as it now stands, we determine that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute inter partes review. B.” slip op. at 2

  • BurdenMixed

    “Regarding the claimed “predefined threshold value” or “predefined illuminance,” Petitioner asserts that “Alden’s system can ‘provide illumination to independently controlled segments [e.g., ‘subsections’] each operable within a range of intensities between the high and the low beam state” and that Alden’s “intensities in between high beam and low beam (e.g., medium) are the claimed ‘predefined threshold value’ which the low beam would be below and the high beam would be above.” Pet. 25. We tend to disagree with this analysis, as it does not appear that a “range of intensities” is a “predefined threshold value” or “predefined illuminance,” if those terms are given their ordinary meaning. We thus conclude that, on this record at least, Petitioner has not shown a reasonable likelihood that Alden anticipates these claims. Regarding obviousness in view of Alden alone, Patent Owner argues that Petitioner has “failed to establish or demonstrate multiple elements that are required to support an obviousness conclusion, including explaining how Alden must be modified (i.e., identifying the differences between the claimed invention and Alden) and explaining why a POSA would be motivated to so modify Alden (i.e., providing some articulated reasoning with some rational underpinning to support an obviousness conclusion).” Prelim. Resp. 37. We agree. It does not appear that Petitioner has provided any basis on which to account for differences between Alden and the challenged claims based on Alden’s disclosures alone.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the alleged invention “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems” and that more education could compensate for less experience and vice versa. See Pet. 8–9 (citing Ex. 1003 ¶ 33). Patent Owner “does not dispute Petitioner’s proposed skill level for a person of ordinary skill in the art” (Prelim. Resp. 7), and, as we generally agree that it is consistent with the subject matter disclosed in the ’503 patent and the prior art, we adopt it for purposes of this decision. B.” slip op. at 8

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

    “Petitioner does not seek construction of any claim terms and asserts that “all claim terms [discussed in the Petition] are given [their] ordinary and customary meaning.” Petition 8. Patent Owner asserts that “[n]o claim construction is necessary” at this time because its “arguments for denial do not hinge on the outcome of an actual controversy about claim interpretation.” Prelim. Resp. 7. There being no present dispute about the meaning of any claim term, we find that no express claim construction is necessary to resolve the issues addressed in this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 10,894,503

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.