• Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentable
  PTAB · May 4, 2017 · IPR2016-00160 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–14, 16–29, 33, and 35–38 were not held unpatentable because Petitioner failed to show the Jaffray references were prior art or that the asserted combination rendered the claims obvious.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “Having considered the arguments and evidence, we agree with Patent Owner that the ’590 Application provides sufficient written description support for “said computer receives said image of said object and based on said image sends a signal to said radiation source that controls said path of said radiation source.” In particular, we credit the testimony of Dr. Hashemi that a person of ordinary skill in the art would have understood from the ’590 Application that components of the disclosed system were computer-controlled based upon, e.g., the depiction of an Elekta SL-20 in 9 Both the burden of production and the burden of persuasion. Figure 3 of the ’590 Application and from the depiction of an electronic portal imaging device. (Ex. 2080 ¶¶ 109–116, 125–132). Petitioner’s arguments are not persuasive because they are based upon a construction of the disputed limitation that excludes human intervention. We have construed that limitation, however, to encompass a person or user operating the computer to perform the recited control functions. In post-hearing briefing, both parties agree that this is the proper construction. Papers 80, 81. As a result, even if we assume, as Petitioner contends in Reply, that a person of ordinary skill in the art reading the ’590 Application would have understood that “the step of controlling the path of the beam based on image data was performed by a human operator, not a computer acting autonomously” (Pet. Reply 9) and that “[t]he computer elements connected to table control . . . are all operated in response to commands received from a human operator, and none are tied to table movements specifically based on image data” (id.), it would not show a lack of support for the disputed limitation, because the disputed limitation does not exclude human intervention. Accordingly, we determine that Petitioner has not shown sufficiently,” slip op. at 18

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable

    “Having considered the arguments and evidence, we agree with Patent Owner that the ’590 Application provides sufficient written description support for “said computer receives said image of said object and based on said image sends a signal to said radiation source that controls said path of said radiation source.” In particular, we credit the testimony of Dr. Hashemi that a person of ordinary skill in the art would have understood from the ’590 Application that components of the disclosed system were computer-controlled based upon, e.g., the depiction of an Elekta SL-20 in 9 Both the burden of production and the burden of persuasion. Figure 3 of the ’590 Application and from the depiction of an electronic portal imaging device. (Ex. 2080 ¶¶ 109–116, 125–132). Petitioner’s arguments are not persuasive because they are based upon a construction of the disputed limitation that excludes human intervention. We have construed that limitation, however, to encompass a person or user operating the computer to perform the recited control functions. In post-hearing briefing, both parties agree that this is the proper construction. Papers 80, 81. As a result, even if we assume, as Petitioner contends in Reply, that a person of ordinary skill in the art reading the ’590 Application would have understood that “the step of controlling the path of the beam based on image data was performed by a human operator, not a computer acting autonomously” (Pet. Reply 9) and that “[t]he computer elements connected to table control . . . are all operated in response to commands received from a human operator, and none are tied to table movements specifically based on image data” (id.), it would not show a lack of support for the disputed limitation, because the disputed limitation does not exclude human intervention. Accordingly, we determine that Petitioner has not shown sufficiently, on this record, that both Jaffray 1999 SPIE and Jaffray 1999 JRO are prior art to independent claim 1, and the challenged claims that depend therefrom, under 35 U.S.C. § 102(b).” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “Having considered the parties arguments and evidence regarding “[t]he content and nature of the printed publication, as well as the circumstances surrounding its publication” (Katz, 687 F.2d at 455), we are not persuaded that Petitioner has met its burden of persuasion by showing sufficiently that the portions of Jaffray 1999 SPIE and Jaffray 1999 JRO on which it relies are the work “others.” Unlike in Katz, where the question was “the sufficiency of applicant’s showing to establish that the subject disclosure was his original work, and his alone” (687 F.2d at 455), the question before us is the sufficiency of Petitioner’s showing to establish that the subject disclosure was the work of the non-inventor coauthors of Jaffray 1999 SPIE and Jaffray 1999 JRO. See Dynamic Drinkware, 800 F.3d at 1378 (“In an inter partes review, the burden of persuasion is on the 10 Both the burden of production and the burden of persuasion. 11 At oral argument, counsel for Petitioner indicated that, in his view, it does not matter who has the burden of production. Tr. 20:9, 20:16–17. petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.”); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016) (“In the context of the present case, however, the notion of burden-shifting is inapposite because the patentee’s position is that the patent challenger failed to meet its burden of proving obviousness.”); see also Duncan Parking Techs., Inc. v. IPS Group Inc., Case IPR2016-00067, slip op. at 8–13 (PTAB Mar. 27, 2017) (Paper 29). Patent Owner presents testimony of Dr. Jaffray and Mr. Drake that the subject matter relied upon by Petitioner was not the work of the non-inventor coauthors, and after considering all relevant arguments and evidence, we are unpersuaded by Petitioner’s assertions that this testimony is unreliable. Dr. Jaffray testifies, for example, that “[t]he JRO article and the SPIE article disclose work done at the direction of me and Dr. Wong in support of the joint research conducted by the two of us.” Ex. 2077 ¶ 2. Dr. Jaffray further testifies that “with the exception of Dr. Siewerdsen coming up with the pre-reconstruction image processing for the SPIE article, the [non-inventor] co-authors did not come up with the ideas for the systems described in those articles.” Id. ¶ 6. Dr. Jaffray describes the contributions of the co-authors as follows:” slip op. at 22

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

    “D. The Challenged Claims – Obviousness over Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and Depp Petitioner asserts that a combination of Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and Depp renders obvious claims 1–14, 16–29, 33, and 35–38. Pet. 18–58. Petitioner relies solely upon Jaffray 1999 SPIE and Jaffray 1999 JRO for several limitations of claim 1, including, for example, “a cone-beam computed tomography system comprising: an x-ray source that emits an x-ray beam in a cone-beam form towards said object,” and “a flat-panel imager receiving x-rays after they pass through the object, said imager providing an image of said object.” Pet. 29–31. As discussed above, however, we not persuaded that Jaffray 1999 SPIE and Jaffray 1999 JRO are prior art to claims 1–14, 16–29, 33, and 35–38. Moreover, Petitioner does not contend that Adler or Depp teach these limitations. As a result, we are not persuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that claims 1–14, 16–29, 33, and 35–38 are obvious over a combination of Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and Depp.” slip op. at 31

  Patent outcomesUS 6,842,502 not shown unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 6,842,502
• Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentable
  PTAB · May 4, 2017 · IPR2016-00163 · APJ Matthew R Clements · IPR · Final written decision

  Claims 43–46, 48–55, 57, 59–66, and 68 were not held unpatentable because Petitioner did not establish that the Jaffray references were prior art.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art, with respect to and at the time of the’502 patent, would have the following qualifications: “a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications.” Ex. 1202 ¶ 13. Dr. Hashemi, Patent Owner’s expert, essentially agrees, with the only major differences to the above being that an M.S. is acceptable in lieu of a Ph.D., and that three years of experience is preferred. Ex. 2080 ¶ 17. Nominally, we accept Petitioner’s proffered level because it is based on Dr. Balter’s more complete explanation. We note, however, that neither party has explained substantively any significance that the difference in the proffered levels of ordinary skill in the art would play in the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu- Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 12

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “Owner that the ’590 Application provides sufficient written description support for “controlling [said path of / a radiation therapy treatment plan involving] said radiation source based on said image.” In particular, we credit the testimony of Dr. Hashemi that a person of ordinary skill in the art would have understood from the ’590 Application that components of the disclosed system were computer-controlled based upon, e.g., the depiction of an Elekta SL-20 in Figure 3 of the ’590 Application and from the depiction of an electronic portal imaging device. (Ex. 2080 ¶¶ 109–116, 125–132). Petitioner’s arguments are not persuasive because, even assuming that controlling the source path and controlling a radiation therapy treatment plan are “an entirely different class of control step” from controlling patient position (Pet. Reply 8–9), Petitioner has not explained why the portions of the ’590 Application relied upon by Patent Owner do not disclose controlling the source path or controlling a radiation therapy treatment plan.” slip op. at 19

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable

    “Owner that the ’590 Application provides sufficient written description support for “controlling [said path of / a radiation therapy treatment plan involving] said radiation source based on said image.” In particular, we credit the testimony of Dr. Hashemi that a person of ordinary skill in the art would have understood from the ’590 Application that components of the disclosed system were computer-controlled based upon, e.g., the depiction of an Elekta SL-20 in Figure 3 of the ’590 Application and from the depiction of an electronic portal imaging device. (Ex. 2080 ¶¶ 109–116, 125–132). Petitioner’s arguments are not persuasive because, even assuming that controlling the source path and controlling a radiation therapy treatment plan are “an entirely different class of control step” from controlling patient position (Pet. Reply 8–9), Petitioner has not explained why the portions of the ’590 Application relied upon by Patent Owner do not disclose controlling the source path or controlling a radiation therapy treatment plan.” slip op. at 19

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artNot shown unpatentable

    “[t]he content and nature of the printed publication, as well as the circumstances surrounding its publication” (Katz, 687 F.2d at 455), we are not persuaded that Petitioner has met its burden of persuasion by showing sufficiently that the portions of Jaffray 1999 SPIE and Jaffray 1999 JRO on which it relies are the work “others.” Unlike in Katz, where the question was “the sufficiency of applicant’s showing to establish that the subject disclosure was his original work, and his alone” (687 F.2d at 455), the question before us is the sufficiency of Petitioner’s showing to establish that the subject disclosure was the work of the non-inventor coauthors of Jaffray 13 Both the burden of production and the burden of persuasion. 14 At oral argument, counsel for Petitioner indicated that, in his view, it does not matter who has the burden. Tr. 20:9, 20:16–17. 1999 SPIE and Jaffray 1999 JRO. See Dynamic Drinkware, 800 F.3d at 1378 (“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.”); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016) (“In the context of the present case, however, the notion of burden-shifting is inapposite because the patentee’s position is that the patent challenger failed to meet its burden of proving obviousness.”); see also Duncan Parking Techs., Inc. v. IPS Group Inc., Case IPR2016-00067, slip op. at 8–13 (PTAB Mar. 27, 2017) (Paper 29). slip op. at 23

  Patent outcomesUS 6,842,502 not shown unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 6,842,502
• Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentable
  PTAB · May 4, 2017 · IPR2016-00169 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1–13 and 20–31 were not held unpatentable under § 103 because the petitioner did not establish that Jaffray 1999 SPIE and Jaffray 1999 JRO were prior art.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “Having considered the arguments and evidence, we agree with Patent Owner that the ’590 Application provides sufficient written description support for “wherein said receiving said x-rays by said flat panel imager is performed substantially at a time of occurrence of said controlling said path of said beam of radiation through said object.” As an initial matter, we understand that Petitioner acknowledges that the ’590 Application supports the limitation “substantially at a time,” and arguments raised towards this limitation were originally presented as arguments towards indefiniteness.” slip op. at 19

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable

    “1. Principles of Law Petitioner has the burden of persuasion to prove unpatentability by a preponderance of the evidence. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). Petitioner also has the initial burden of production to show that a reference is prior art to certain claims under a relevant section of 35 U.S.C. § 102. Id. Once Petitioner has met that initial burden, the burden of production shifts to Patent Owner to argue or produce evidence that the asserted reference is not prior art to certain claims, for example, because those claims are entitled to the benefit of priority of an earlier-filed application. Id. at 1380. Once Patent Owner has met that burden of production, the burden is on Petitioner to show that the claims at issue are not entitled to the benefit of priority of the earlier filed application. Id.” slip op. at 14

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

    “Having considered the parties arguments and evidence regarding, we are not persuaded that Petitioner has met its burden of persuasion by showing sufficiently that the portions of Jaffray 1999 SPIE and Jaffray 1999 JRO on which it relies are the work “others.” Unlike in Katz, where the 10 Both the burden of production and the burden of persuasion. 11 At oral argument, counsel for Petitioner indicated that, in his view, it does not matter who has the burden of production. Tr. 20:9, 20:16–17. question was “the sufficiency of applicant’s showing to establish that the subject disclosure was his original work, and his alone” (687 F.2d at 455), the question before us is the sufficiency of Petitioner’s showing to establish that the subject disclosure was the work of the non-inventor coauthors of Jaffray 1999 SPIE and Jaffray 1999 JRO. See Dynamic Drinkware, 800 F.3d at 1378 (“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.”); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016) (“In the context of the present case, however, the notion of burden-shifting is inapposite because the patentee’s position is that the patent challenger failed to meet its burden of proving obviousness.”); see also Duncan Parking Techs., Inc. v. IPS Group Inc., Case IPR2016-00067, slip op. at 8–13 (PTAB Mar. 27, 2017) (Paper 29). Patent Owner presents testimony of Dr. Jaffray and Mr. Drake that the subject matter relied upon by Petitioner was not the work of the non-inventor coauthors, and after considering all relevant arguments and evidence, we are unpersuaded by Petitioner’s assertions that this testimony is unreliable. Dr. Jaffray testifies, for example, that “[t]he JRO article and the SPIE article disclose work done at the direction of me and Dr. Wong in support of the joint research conducted by the two of us.” Ex. 2077 ¶ 2. Dr. Jaffray further testifies that “with the exception of Dr. Siewerdsen coming up with the pre-reconstruction image processing for the SPIE article, the [non-inventor] co-authors did not come up with the ideas for the systems described in those articles.” Id. ¶ 6. Dr. Jaffray describes the contributions of the co-authors as follows:” slip op. at 23

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

    “1999 JRO, Adler, and Depp renders obvious claims 1–13 and 20‒31. Pet. 28–59. Petitioner relies solely upon Jaffray 1999 SPIE and Jaffray 1999 JRO for several limitations of independent claims 1, 7, 20 and 26. For example, claim 1 recites “a cone-beam computed tomography system comprising: an x-ray source that moves about said object and emits toward said object from multiple positions around said object x-ray beams in a cone-beam form” and “a flat-panel imager positioned to receive x-rays after at least a portion of said x-ray beams pass through said object, said imager providing an image that contains three-dimensional information concerning said object based on a plurality of two-dimensional projection images.” Petitioner relies solely on Jaffray 1999 SPIE and Jaffray 1999 JRO to meet these claim limitations. See Pet. 36‒38 (citing Ex. 1005, 17, 25; Ex. 1006, 9; Ex. 1002 ¶¶ 82‒84). Independent claims 7, 20, and 26 recite substantially similar limitations that Petitioner again solely relies on Jaffray 1999 SPIE and Jaffray 1999 JRO as disclosing these limitations. As discussed above, however, we not persuaded that Jaffray 1999 SPIE and Jaffray 1999 JRO are prior art to claims 1–13 and 20‒31. Moreover, Petitioner does not contend that Adler or Depp teach these limitations. As a result, we are not persuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that claims 1–13 and 20–31 are obvious over a combination of Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and Depp.” slip op. at 32

  Patent outcomesUS 7,471,765 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,471,765
• Telebrands Corp. v. Ragner Technology CorporationInstitution denied
  PTAB · Nov 23, 2016 · PGR2016-00026 · APJ Michael W Kim · PGR · Institution

  The Board denied institution because the petition did not show that claims 1–25 were more likely than not unpatentable for indefiniteness or obviousness over Berardi and Gladfelter.

  RulingsInstitution decision

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

    “may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Person of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art at the time of the effective filing date of the ’057 patent “would have been a person having general knowledge about and experience with the manufacture and/or use of hoses and with fluid mechanics and materials science as they relate to hoses and how hoses work generally. The person of ordinary skill has at least an associate’s degree in science or engineering.” Pet. 17 (citing Ex. 1005). Patent Owner does not challenge Petitioner’s assertion. On these facts, we determine that Petitioner’s articulation of a person of ordinary skill in the art is credible.” slip op. at 7

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “’057 patent defines the following relevant claim terms: “extended length” and “maximum stretched length.” Petitioner does not dispute that these claim terms are defined expressly by the ’057 patent, nor does Petitioner indicate that these claim terms are indefinite. Next, each independent claim recites expressly that the “stretched length” is longer than the “extended length,” which we construed above as “the length the hose or those components extend to when the hose is pressurized with a fluid and no extension forces are applied other than fluid pressure.” Finally, the term “maximum stretched length,” both by the use of the word “maximum” and the express definition set forth in the ’057 patent, indicates that it constitutes an upper bound for the term “stretched length.” Accordingly, through transitive analysis, we determine that the recited term “stretched length” is a relative length intermediate the explicitly defined terms “extended length” and “maximum stretched length.” Relative claim terminology is acceptable if one of ordinary skill would have understood what is claimed, in light of the Specification. Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).” slip op. at 10

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

    “those components extend to when the hose is pressurized with a fluid and no extension forces are applied other than fluid pressure,” and also determined that “stretched length” is a relative length intermediate the explicitly defined terms “extended length” and “maximum stretched length.” When considered in the aggregate, we see that “extended length” is a length of a hose attributable to only fluid pressure, while “stretched length” is a length of a hose attributable to any force other than fluid pressure. Accordingly, a discussion of the prior art must acknowledge the interplay between the length of the hose, fluid pressure, and other forces, in order to meet the aforementioned claim limitation.” slip op. at 17

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 9,182,057
• American Simmental Association v. Leachman Cattle Of Colorado, LLCAll claims unpatentable
  PTAB · Jun 13, 2016 · PGR2015-00005 · APJ Michael W Kim · PGR · Final written decision

  Claims 1–20 are held unpatentable under § 101; claims 1–4, 8–12, and 14–19 are also obvious over Wang alone. The motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Ultimately, we discern that Petitioner and Patent Owner are not very far apart. On education, we agree with Petitioner that evaluating genetic quality is sufficiently complex that it would require, at a minimum, a Master’s Degree in the field. On work experience, we agree with both parties that several years of experience in the field is necessary, with the optimum for a Master’s Degree being five years, and commensurately less for an individual possessing a PhD. We agree with Patent Owner that some understanding of economics and software is required, but agree with Petitioner that such understanding need only be a basic one that can be readily acquired through work experience in the field, with no formal education in that field being necessary. Finally, we disagree with Patent Owner that formal training or experience specific to the feeder calf market needs to be addressed separately, as, for the reasons set forth below, we are unpersuaded that evaluating feeder calves as a subgroup differs materially from evaluation of cattle overall, and that one of ordinary skill in evaluating of genetic quality of cattle generally would not have been familiar with feeder calves specifically, especially when the overwhelming goal of cattle production is to sell beef, of which the primary type sold is feeder calves. Perhaps more importantly, the significance of the level of ordinary skill in the art here is the role it plays in an obviousness analysis, and Patent Owner has not explained in a sufficiently persuasive manner how the disparate definitions impact dispositively the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). Accordingly, unless expressly indicated otherwise, we determine that a specific finding on the level of skill in the art is not required, because the prior art itself reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 6

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

    “3. “genetic merit scorecard” Each of independent claims 1, 8, and 14 recite “genetic merit scorecard.” Petitioner asserts that “genetic merit scorecard” should be construed as “visual display of genetic merit information.” Pet. 17–18 (citing Ex. 1001). Patent Owner does not dispute this construction. PO Resp. 23–26. After considering all evidence and assertions concerning this claim construction, we agree with Petitioner that “genetic merit scorecard” should be construed as “visual display of genetic merit information.”” slip op. at 11

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

    “Owner are rooted sufficiently in the express claim language, and in any case, are peripheral to the above-identified fundamental concept, in that while they may represent variations of the fundamental concept, we are unpersuaded that they alter materially the fundamental concept itself. For example, being “dynamic,” while perhaps placing some temporal aspects on “determining an animal’s relative economic value based on its genetic and physical traits,” does not alter the fact that independent claim 1 is fundamentally directed to “determining an animal’s relative economic value based on its genetic and physical traits.” A similar analysis is applicable to “sale group of feeder calves,” “disparate sources,” and “transforming.” The Specification further supports Petitioner’s argument. The “Field of the Invention” section set forth in the ’557 patent reads as follows: Embodiments of the present invention relate generally to the field of genetic quality and relative market value of livestock. More specifically, embodiments of the present invention facilitate an owner or potential buyer of one or more sale groups of livestock to evaluate the relative market value of the sale groups based on predictions derived from genetic merit estimates of the herd. Ex. 1001, 1:23–29. The “Description of Related Art” section that follows delves heavily into problems associated with determining what the actual value of the livestock is, and more specifically what premium or discount the livestock should command based on these desired genetic merits. Ex. 1001, 1:47–49. The first three sentences of the “Summary” section then read as follows: The Applicants recognize the importance of determining relative market value of a sale group or a group of animals offered for sale from a livestock operation. Various embodiments of methods and apparatus for determining relative market value of a sale group are provided herein. Exemplary embodiments of the present invention include an online genetic merit scorecard system. Ex. 1001, 2:6–12. Based on the above cited portions of the ’557 patent, we determine that the Specification supports heavily Petitioner’s proposed fundamental concept. The unambiguous disclosure in the Specification as to the nature of the invention indicates to us that Petitioner has not over-generalized here.” slip op. at 16

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

    “PO Resp. 66. However, we are unpersuaded that (a) valuing a group of animals is “significantly more” than valuing a single animal, (b) tailoring a price to a user is “significantly more,” and (c) comparison shopping is “significantly more,” whether taken in succession or as a whole. Indeed, these requirements appear to be routine parts of commerce involving the fundamental concept of “determining an animal’s relative economic value based on its genetic and physical traits.” Patent Owner asserts additionally that the claimed invention does not merely recite the alleged abstract idea and say “apply it” on computer components, because the recited computer components are an integral part of rooting the invention in computer technology. Specifically, Patent Owner asserts that the claimed invention involves novel technical software that “transforms genetic and performance information associated with the sale group into a dynamically-generated scorecard available to users on-demand.” PO Resp. 67. We disagree, as the recitation of software in the claim, if any at all, is at a highly abstract level, in that the claims recite no more than taking in and outputting data, with no detail as to how that data is manipulated between input and output.5 Absent such detail, we are unpersuaded that the claims are reciting any more than “applying to software” the fundamental concept of “determining an animal’s relative economic value based on its genetic and physical traits,” which is not “significantly more.” As for “dynamically-generated scorecard available to users on-demand,” our analysis of the same in the abstract idea prong of Alice is equally applicable here, namely, that 5 “MR. COHN: Your Honor, the little calculator that’s in Windows is a dynamic calculator. It’s been there for 25, 30 years. You pull it up. You type in five times two and you hit equals and it spits the answer back to you on demand right there.” Tr. 85:24–86:2. we are unpersuaded that “dynamic” and “on-demand” are sufficiently related to the claims. Patent Owner cites DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) in support of their position, but it is precisely because of the instructive nature of the problem-solution approach in that case that we arrive at our conclusion here. Specifically, DDR Holdings held that the “problem of retaining website visitors” involves a “claimed solution [that] is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR Holdings, LLC, 773 F.3d at 1257. Such is not the case here, where the problem, as clearly articulated above in the aforementioned portions of the Specification, is “determining an animal’s relative economic value based on its genetic and physical traits.” We are unpersuaded that this problem, or its solution, involves or requires anything computer-related. 4. Conclusion For the foregoing reasons, we conclude that Petitioner has shown, by a” slip op. at 20

  Patent outcomesUS 8,725,557 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo
  Patents in suitUS 8,725,557
• American Simmental Association v. Leachman Cattle Of Colorado, LLCAll claims unpatentable
  PTAB · Jun 13, 2016 · PGR2015-00003 · APJ Michael W Kim · PGR · Final written decision

  Claims 1–20 are unpatentable under § 101; the obviousness grounds were not proven because the Angus system was not established as prior art and Wang alone did not disclose the online scorecard.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Ultimately, we discern that Petitioner and Patent Owner are not very far apart. On education, we agree with Petitioner that evaluating genetic quality is sufficiently complex that it would require, at a minimum, a Master’s Degree in the field. On work experience, we agree with both parties that several years of experience in the field is necessary, with the optimum for a Master’s Degree being five years, and commensurately less for an individual possessing a PhD. We agree with Patent Owner that some understanding of economics and software is required, but agree with Petitioner that such understanding need only be a basic one that can be readily acquired through work experience in the field, with no formal education in that field being necessary. Finally, we disagree with Patent Owner that formal training or experience specific to the feeder calf market needs to be addressed separately, as, for the reasons set forth below, we are unpersuaded that evaluating feeder calves as a subgroup differs materially from evaluation of cattle overall, and that one of ordinary skill in evaluating of genetic quality of cattle generally would not have been familiar with feeder calves specifically, especially when the overwhelming goal of cattle production is to sell beef, of which the primary type sold is feeder calves.” slip op. at 7

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

    “implicitly asserting that “market value of any other market group” only makes sense if it is the “national market average value.” PO Resp. 55–56. We disagree. The claim limitation itself reads “relative market value,” and does not include either the “national” or “average,” and the aforementioned portion of the ’888 7 Divorced from surrounding claim language, we construe “relative market value” as “the market value of something as compared to the market value of any other market group.” patent discloses expressly that “relative market value may be expressed in various ways,” providing a non-limiting example of at least “the market value of a sale group that represents the average progeny of all registered bulls in the country or market region.” Also through their assertions concerning the prior art, Patent Owner appears to be implicitly asserting that by including the phrase “any other market group,” any values used to calculate the “relative market value” must be of a format that is standardized to allow comparisons across all other market groups, for example, across different breeds. PO Resp. 52–56. We disagree. Neither the express claim language nor the aforementioned portion of the ’888 patent requires that any values used to calculate the recited “relative market value,” or even the “relative market value” itself, be comparable across all market groups. Certainly calculating a value of one breed that is of a format that allows direct comparisons to a value of any other breed would appear to be more useful. The claim language itself, however, does not require such a result. For example, even if any values are only applicable to one specific breed, so long as there are two different market groups of that specific breed that are compared using that format, the value resulting from that comparison would still meet the recited “relative market value.” To eliminate any such confusion, we modify the aforementioned construction of “relative market value,” in the context of the aforementioned surrounding claim language, as follows: “the market value of a sale group as compared to the market value of at least one other market group.”” slip op. at 9

  • BurdenNot shown unpatentable

    “determine that its corroborative value is compromised by a variety of factors, to the point where we determine that it does not provide sufficient corroboration for Ms. Kurtz’s testimony that the document and the information it contains was available online at least as early as June 8, 2011. As an initial matter, we find that Exhibit 1014 was generated after every possible priority date. Ex. 2033, 57:7–58:6 (Ms. Kurtz testified, concerning Exhibit 1014, that “[i]t was actually printed last year is when I sent those to counsel.”) We find further that in attempting to make sense of the dates of the various documents, Ms. Kurtz had to consult the “IS department,” which also weighs against her testimony that she was personally aware that “[t]he revision date is the date on which Angus, through AngusSource, began providing electronic marketing documents to the public which have the same form, layout, and data as shown in Angus 2.” Ex. 1011 ¶ 6; Ex. 2033, 27:14– 28:2. We find additionally that changes were made at various times to the website on which Exhibit 1014 resides, and there is no definitive evidence presented in this proceeding as to which changes were made at which time. Ex. 2033, 28:8–31:6, 45:14–17, 46:1–47:7. To be sure, we find Ms. Kurtz to be credible, in that after reviewing all of the deposition testimony, we find that she was honest and sincere in trying to provide the most accurate information possible. The problem, however, is that her statement in the Declaration at paragraph 6, that she was personally aware that Exhibit 1014 existed in its exact form prior to every effective date, is in conflict with her testimony on cross-examination that she had to consult the IS department concerning the mechanics of the dates printed in Exhibit 1014, and that the format of Exhibit 1014 may have been altered between every possible priority date and the time that Exhibit 1014 was printed. Accordingly, given the weak corroborative value of Exhibit 1013, and the now-discounted corroborative value of Exhibit 1014, we conclude that Exhibits 1013 and 1014, collectively, do not constitute sufficient evidence to corroborate the Declaration of Ms. Kurtz that the Angus system is prior art.” slip op. at 20

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

    “Wang and the Angus system as corresponding to the recited “online genetic merit scorecard.” Pet. 56–58, 61–65, 68–71; see also Pet. Reply 20–21. As set forth above, we determined that Petitioner has not met its burden of showing that the Angus system is prior art. Accordingly, Petitioner must rely on Wang alone for the “online genetic merit scorecard.” Aside from the Angus system, Petitioner relies on paragraphs 11, 14, and 72 of Wang (Ex. 1004) for disclosing an “online genetic merit scorecard.” Pet. 57–58. We have considered paragraphs 11, 14, and 72 of Wang, and find that while they do provide disclosure that corresponds properly to “genetic merit scorecard,” construed above as “visual display of genetic merit information,” Petitioner has not pointed to any disclosure or provided any analysis, unrelated to the Angus system, concerning the “online” aspect of “online genetic merit scorecard.” To be sure, at a high level, the fact that the “genetic merit scorecard” may be “online” seems like a relatively minor distinction, especially given that the ’888 patent has an earliest possible priority date of April 13, 2013. Furthermore, it is unclear how much weight should be given to “online,” in that it is possible that any computer output, in a sense, can be considered capable of being placed “online.” Additionally, Wang does provide some disclosure that a computer is connected to databases, and that the computer is used to “generate the output rankings and individual animal estimated breeding values” (Ex. 1004 ¶ 11, 14), which could, perhaps, be enough to be considered “online.” Petitioner, however, has not advanced any of the above assertions, nor provided evidence in support thereof. See 35 U.S.C. § 326(e) (“In a post-grant review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”) Absent such assertions or evidence, we determine that Petitioner has not met its burden of showing, by a preponderance of the evidence, that the “online” aspect of “online genetic merit scorecard,” as recited in each of independent claims 1, 9, and 16, is obvious in view of Wang alone.10” slip op. at 22

  Patent outcomesUS 8,660,888 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Phillips
  Patents in suitUS 8,660,888
• Carecloud Corporation v. Athenahealth, Inc.All claims unpatentable
  PTAB · Nov 18, 2015 · CBM2014-00143 · APJ Richard E Rice · CBM · Final written decision

  Claims 1–20 are unpatentable under § 101 as directed to ineligible subject matter; obviousness was not shown for claims 1–3, 5, 8, 11–13, 15, 17, 18, and 20.

  RulingsFinal written decision

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

    “Neither party proposes any change to the interpretations set forth above, and our review of the evidence does not indicate that any change is necessary. Consequently, we maintain our interpretations. Patent Owner proposes constructions for two additional claim terms— “rule” and “database.” PO Resp. 10. With respect to “rule,” Patent Owner proposes the definition set forth expressly in the Specification, i.e., “a rule is coded logic that evaluates data and then performs an action.” Id. (citing Ex. 1001, 5:59–60). Petitioner does not dispute Patent Owner’s proposed construction of “rule,” and we agree that it is the broadest reasonable interpretation consistent with the Specification. For the claim term “database,” Patent Owner relies on Mr. Goodin’s statement, based on a dictionary definition, that a “database” is a “collection of data with a given structure for accepting, storing, and providing, on demand, data for multiple users.” Id. (citing Ex. 2012 ¶ 44); see Ex. 2015, 21. We note Mr. Goodin’s additional testimony that a POSA “would understand a ‘database’ is a stored collection of data” (Ex. 2012 ¶ 45), and that the Specification “contrasts a database, consisting of stored data, which can be updated on demand, with a set of rules that are hard coded into a software application” (id. ¶ 46, citing Ex. 1001, 6:27–28). Petitioner does not propose a construction for “database” or challenge Mr. Goodin’s testimony, discussed above. Based on the above, we determine that the broadest reasonable interpretation consistent with the Specification of “database” is a stored collection of data that can be updated on demand.” slip op. at 9

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner’s Declarant, Dr. Bergeron, provides the following definition of a person of ordinary skill in the art (“POSA”): [A] POSA in the 2000 time frame would have had a Bachelor’s degree in computer science or the equivalent, or commensurate industry experience of at least four to five years of experience with computer programming and general knowledge of database technologies and networking or similar fields. A POS[A] in the 2000 time frame would also have at least two years of experience in the healthcare, or healthcare-related, industry. Ex. 1013 ¶ 16. Patent Owner’s Declarant, Dr. Goodin, agrees with Dr. Bergeron’s definition (Ex. 2012 ¶ 41). We agree with and adopt this definition for the purposes of our Final Written Decision.” slip op. at 8

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

    “On this record, we are persuaded that claims 1–20 are directed to the broad concept of scrubbing medical claims before submission, i.e., pre- processing medical claims to identify and correct errors. See Pet. 16; Pet. Reply 3. In particular, the patent claims all require automatically interacting with the completed claim submission by the medical practice management server to correct an error in the completed claim submission, wherein the error is resolved by the medical practice client before processing the completed claim submission, by applying one or more rules from a class of rules associated with the payor server, wherein the one or more rules comprises a new rule, an updated rule, or both received from the payor server. Ex. 1001, 20:12–20 (claim 1), 22:24–32 (claim 18), 23:11–19 (claim 20) (emphases added). Further, the concept of scrubbing medical claims before submission is consistent with the ’116 Patent Specification, which explains: “Given the extent of wasted time and money associated with the process [for filing and processing health insurance claims], there exists a need to manage a medical practice in a more efficient manner and [to] provide insurance claims with fewer or no errors.” Id. at 1:64–67. According to the Specification, “[t]he present invention automatically and repeatedly interacts with an insurance company system and/or applies rules to efficiently manage a medical practice and provide insurance claims with a reduced number of errors.” Id. at 2:3–6. In a preferred embodiment, rules engine 60 applies rules to the claim entry form and thereby “scrubs” the claim before submission. Id. at 13:31–59; see Ex. 1001, 13:33–34, Fig. 3F (“The rules engine 60 ‘scrubs’ the claim (step 390), or examines the claim for claim errors.”); Pet. 28 n.2. Given these disclosures, we are unpersuaded that any specific claim limitations need to be added to the above articulated abstract concept, as we discern that they merely provide support to the abstract concept of scrubbing medical claims before submission. Despite Patent Owner’s arguments to the contrary, we see little difference between scrubbing medical claims before submission and the type of fundamental economic practice considered to be an abstract idea by the Supreme Court in Alice.1 As established by the record, scrubbing medical claims before submission is a practice that existed long before the ’116 Patent. See, e.g., Ex. 1001, 1:31–40; Ex. 1012, 2:27–39; Ex. 1013 ¶¶ 33–34; Ex. 1024,2 107–108; Ex. 1029 ¶¶ 10–12, 14, 27. That the claims recite using a database of updated rules, multiple computers, and a claim edit screen, for scrubbing medical claims before submission, does not render the claims any less abstract. See Intellectual Ventures I LLC v. Capital One Bank (US), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (holding that “while the claims recite budgeting using a ‘communication medium’ (broadly including 1 In Alice, the Supreme Court determined that the claims at issue were “drawn to the concept of intermediated settlement,” i.e., the use of a third party to mitigate settlement risk. 134 S. Ct. at 2356. The Supreme Court also determined that “[l]ike the risk hedging in Bilski [Bilski v. Kappos, 561 U.S. 593 (2010)], the concept of intermediated settlement is ‘a fundamental economic practice long prevalent in our system of commerce.’” 134 S. Ct. at 2356 (citations omitted). With respect to the first step of the “Mayo framework,” the Supreme Court concluded in Alice that “there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement” in Alice, and that “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.” Alice., 134 S. Ct. at 2357. 2 Bringing Health Care Online: The Role of Information Technologies, U.S. Congress, Office of Technology Assessment (Sept. 1995). the Internet and telephone networks), that limitation does not render the claims any less abstract”). We conclude, therefore, that Petitioner has demonstrated that the ʼ116 Patent claims, like the claims in Alice, are directed to an abstract idea, namely, scrubbing medical claims before submission.” slip op. at 14

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

    “For reasons that parallel those articulated by the Federal Circuit in Intellectual Ventures I, we determine, contrary to Patent Owner’s arguments, that claims 1–20 of the ’116 Patent do not incorporate an inventive concept. See Alice, 134 S. Ct. at 2355; Intellectual Ventures I, 792 F.3d at 1368–70. Rather, the steps and limitations in the claims, whether considered individually or as an ordered combination, amount to a mere instruction to implement the abstract idea on a computer. See Alice, 134 S. Ct. at 2358. Like the claims at issue in Alice and Intellectual Ventures I, the ’116 Patent claims all recite generic computer elements (servers, rules, database, interactive screen, etc.) performing generic computer tasks such as storing rules in a database, receiving data, performing automated operations, and transmitting data. See, e.g., Ex. 1001, 20:2–42 (claim 1); see Alice, 134 S. Ct. at 2359; Intellectual Ventures I, 792 F.3d at 1368, 1370; Ex. 1001, 4:27–57 (servers), 5:60–61 (rule), 5:66–6:8 (rules database), 14:62–65 (interactive screen); Ex. 1013 ¶¶ 54, 56, 57, 62; Ex. 1029 ¶¶ 22– 27; Ex. 2011, 158:23–159:5; Ex. 2024, 94:4–17. Patent Owner’s argument, on page 76 of the Response, that the claims” slip op. at 21

  Patent outcomesUS 7,617,116 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · KSR · Graham
  Patents in suitUS 7,617,116
• Google Inc. v. Unwired Planet, LLCAll claims unpatentable
  PTAB · Apr 6, 2015 · CBM2014-00004 · APJ Jennifer S Bisk · CBM · Final written decision

  Claims 21 and 22 are unpatentable under § 101 because they claim an abstract idea implemented using generic, conventional technology.

  RulingsFinal written decision

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

    “term “SRC.” The ’151 patent does, however, give some context from which to discern the meaning of the term. For example, the ’151 patent states that “[t]he term ‘SRC technology,’ as used herein, may include any short-range radio communications technology now existing or yet to be developed, including, for example, radio frequency identification (‘RFID’), IEEE 802.15 (‘Bluetooth’), and IEEE 802.11 (‘WiFi’), among others.” Id. at 2:60–65; see also id. at 2:9–18 (describing “SRC device[s]” and “SRC-enabled mobile terminals” as including RFID, Bluetooth, and WiFi related devices). Moreover, the ’151 patent describes several embodiments of the invention. The first embodiment involves an RFID system. Id. at 3:7–8. The second embodiment is described as a “hybrid system” using “Bluetooth, WiFi, WiMAX, or any other wireless protocol” to connect with an RFID reader. Id. at 4:19–34. Based on this disclosure, it is clear that “SRC,” as used in the ’151 patent, encompasses communications at a range used by the technologies named in the specification—RFID, Bluetooth, and WiFi—and other short-range radio communication technologies. The question is whether the” slip op. at 7

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “extrinsic evidence, including testimony from Dr. Georgios B. Giannakis. Ex. 2001 ¶¶ 21–25. Dr. Giannakis testifies that SRC has a well-understood meaning in the art of “a nominal range of 100 meters or less, such as used by practical systems performing typical applications of RFID, Bluetooth, and Wi-Fi communications.” Id. ¶ 22. Moreover, Dr. Giannakis testifies that all three examples of SRC technologies listed by the ’151 patent have “a practical upper range in a typical deployment that is nominally 100 meters or less.” Id. ¶ 24. An expert’s opinion, however, is only as good as the facts upon which it is based. Dr. Giannakis points to no factual support for his specific numeric conclusions on this issue. See id. ¶¶ 22–24. We, therefore, give very little weight to Dr. Giannakis’s testimony concluding that the term SRC, as used in the ’151 patent, includes a specific upper bound of 100 meters. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations . . . may render the testimony of little probative value in a validity determination.”).” slip op. at 8

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “Although a term may be relative, it is not necessarily indefinite. Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (“That some claim language may not be precise, however, does not automatically render a claim invalid.”). We are persuaded a person of ordinary skill in the art would understand that short-range communication covers a communication range “shorter” than the range covered by mobile networks. See Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1372 (Fed. Cir. 2013) (affirming the district court’s finding not indefinite the term “short-range communication protocol,” which was construed to mean “a set of procedures required to initiate and maintain short-range communication between two or more devices” where short-range communications similarly included Bluetooth and WiFi technologies, but did not include a numeric upper bound on range), cert. granted in-part on other grounds, 135 S.Ct. 752 (U.S. Dec. 5, 2014) (No. 13-896). The ’151 patent expressly describes mobile networks as including “cellular networks such as Global System for Mobile Communications (‘GSM’), Time Division Multiple Access (‘TDMA’), Code Division Multiple Access (‘CDMA’), and Personal Communications Service (‘PCS’) networks.” Ex. 1001, 2:53–58; see PO Resp. 19. It also describes interoperability between the various systems, contrasting them by size. For example, in describing the problems encountered when locating mobile terminals, the Specification describes “cell sizes [that] have grown to cover up to 20 km in diameter or even wider.” Ex. 1001, 1:67–2:4. A solution to this problem is employing “at least one SRC device.” Id. at 2:9–11. The ’151 patent also describes employing the “at least one SRC device . . . within a mobile network.” Id. at 2:11–17 (emphasis added). Thus, the specification makes reasonably clear to the person of ordinary skill the range of SRC in comparison to the range of mobile networks—and in turn the scope of SRC as used in claims 21 and 22. See Young v. Lumenis, Inc., 492 F.3d 1336, 1346 (Fed. Cir. 2007) (holding the term “near” not indefinite where the specification makes reasonably clear that the term means “very close to or at the edge of”).” slip op. at 12

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

    “We agree with Petitioner that the claimed invention is directed to an abstract idea, specifically, the abstract idea of receiving information and providing services or advertisements based on that information. The preambles and all claim limitations of both claims support this abstract idea, and the ’151 patent repeatedly discloses that the invention is directed to providing services or advertisements. See, e.g., Ex. 1001, 1:7–15, 25–27. Patent Owner has not identified any portion of the ’151 patent inconsistent with this abstract idea, and we are persuaded that the identified abstract idea is a fundamental building block of economics, similar in nature to the abstract idea of hedging claimed in Bilski and intermediated settlement claimed in Alice. Patent Owner does not direct us to any authority for its assertion that an idea is not abstract if it includes specific recitation regarding the type of information transmitted, how that information is acquired, and whether it is used for authentication. Here, the claims are generally directed to a method of (i) receiving information over a network, (ii) authenticating that information, and (iii) providing a service to a mobile terminal or receiving an advertisement over the network, all of which inform the aforementioned abstract idea. See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Assoc., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (characterizing the claimed abstract idea as “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory” despite claim’s recitation of specific limitations, like scanner). This combination of steps recites an abstraction because it has “no particular concrete or tangible form” and is “devoid of a concrete or tangible application.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). The details emphasized by Patent Owner do not remove the claimed methods from the realm of the abstract. These details are characteristic of the invention’s implementation, rather than its general idea. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354–55 (Fed. Cir. 2014) (describing the claim’s abstract idea without including the claim’s “computer network” limitation); see also Ultramercial 772 F.3d at 715 (stating that more detailed limitations may “add a degree of particularity,” but do not convert the concept embodied by the majority of the limitations into something concrete).” slip op. at 16

  Patent outcomesUS 7,463,151 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Nautilus
  Patents in suitUS 7,463,151
• Google Inc. v. Unwired Planet, LLCAll claims unpatentable
  PTAB · Apr 6, 2015 · CBM2014-00006 · APJ Jennifer S Bisk · CBM · Final written decision

  Claims 25–29 are unpatentable under § 101; claim 25 is also unpatentable as obvious over Havinis ’931 and Leonhardt, and Landgren and Leonhardt.

  RulingsFinal written decision

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

    “reasoning with rational underpinning to combine Havinis ’931 and Leonhardt. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). For instance, Petitioner states: [a] person of ordinary skill would have found it obvious to modify the system of Havinis ’931 to include Leonhardt’s location access policies, in order to further Havinis ’931’s goals of managing positioning requests sent by Location Applications such that location services can be tailored individually to meet the needs of the mobile device user. Pet. 59 (citing Ex. 1004, 3:33–40). Relying on Dr. Cox, Petitioner adds that this modification “would have been nothing more than the application of a known method of privacy management to achieve a predictable result.” Ex. 1002 ¶ 76. As explained in our Decision to Institute, we are persuaded the rationale set forth by Petitioner and Dr. Cox is reasonable. See Dec. 24–25. Subsequent to our preliminary finding, Patent Owner has provided no evidence or argument to the contrary. Thus, after once again evaluating Petitioner’s arguments and supporting evidence, we conclude that Petitioner has shown by a preponderance of the evidence that it would have been obvious to combine the relied upon teachings of Havinis ’931 and Leonhardt. We conclude that Petitioner has shown by a preponderance of the evidence that claim 25 of the ’752 Patent would have been obvious over Havinis ’931 and Leonhardt.” slip op. at 13

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “We are not persuaded that Petitioner has shown by a preponderance of the evidence that the ’752 patent fails to provide sufficient written description support for the notifying limitation. Petitioner’s only evidence that the notifying limitation is not sufficiently supported is its argument that the ’752 patent fails to explicitly describe notifying the wireless device that access to the location information was denied. Pet. 44–45. Petitioner proffers testimony from Dr. Cox parroting, almost word for word, the argument in Petitioner’s brief. Ex. 1002 ¶¶ 24–36. This argument and testimony, however, does not speak to the correct standard—whether the ’752 specification “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Moreover, “the disclosure as originally filed does not . . . have to provide in haec verba support for the claimed subject matter at issue,” nor must it describe “every conceivable and possible future embodiment of [the] invention.” Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003) (internal quotation marks omitted). We agree with Patent Owner, that the ’752 patent broadly describes notifying the wireless device at any time during the described process. See, e.g., Ex. 1001, 9:26–29 (“the system described herein is for a subscriber to receive a notification on their wireless communications device whenever a location request is made by any client application”). Moreover, as pointed out by Petitioner, the ’752 patent describes sending “denied access” messages to client applications. See Pet. 44 (citing Ex. 1001, 11:40–42). Based on these disclosures, we are persuaded that the ’752 patent provides broad support for providing notifications of various messages to different elements of the system at multiple points in the described process. Petitioner has not pointed to anything in the ’752 patent specification that clearly limits what messages can be sent to the various elements or when they can be sent. In fact, as Patent Owner points out, the Provisional Application explicitly contemplates “initiat[ing] a dialogue with the subscriber regarding permission for a location request.” Ex. 1020, 22. Although Petitioner complains that this disclosure does not describe how a dialogue would occur or how messages are relayed (Reply 5), we are not persuaded that a person of ordinary skill in the art would disbelieve, based on the entirety of the ’752 patent disclosure, that the inventor had possession of sending an access denied message to the wireless device at the appropriate time during the process. Thus, we are persuaded that the ’752 patent “provides ample support for the breadth” of the notifying limitation and does not “unambiguously limit” its meaning to a narrower embodiment (e.g., notifying the wireless device only when a request has been made). Cordis, 339 F.3d at 1365. Petitioner has not shown by a preponderance of the evidence that the ’752 patent fails to support the notifying limitation.” slip op. at 20

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

    “We agree with Petitioner that the claimed invention is directed to an abstract idea, specifically, the abstract idea of controlling access to location information using a subscriber profile. The preambles and all claim limitations of both claims support this abstract idea, and the ’752 patent repeatedly discloses that the invention is directed to controlling access to location information. See, e.g., Ex. 1001, 1:14–19, 1:60–2:7. Patent Owner has not identified any portion of the ’752 patent inconsistent with this abstract idea, and we are persuaded that the identified abstract idea is similar to the kind of “organizing human activity” at issue in Bilski and Alice. See, e.g., Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005, 1008 (Fed. Cir. 2014) (comparing “methods and systems for managing a game of Bingo” to the kind of “organizing human activity” at issue in Bilski and Alice).” slip op. at 24

  Patent outcomesUS 7,203,752 unpatentable
  § 101 eligibility§ 103 obviousness§ 112 disclosurecites Alice · KSR
  Patents in suitUS 7,203,752
• Google Inc. v. Unwired Planet, LLCAll claims unpatentable
  PTAB · Mar 30, 2015 · CBM2014-00005 · APJ Barbara A Parvis · CBM · Final written decision

  Claims 1–6 are unpatentable under § 112, first paragraph, because the patent lacks written description support for the claimed limitations.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable

    “To satisfy the written description requirement, the focus is not just on whether the claims are supported by the specification, but whether one of ordinary skill in the art reasonably would conclude from the original disclosure that the inventor had possession of the claimed invention. See, 2 Claim 4, which depends from claim 1, recites “wherein said step of accessing comprises obtaining information established by a network administrator regarding said prioritization for presenting said service provider information to said subscriber.” Claim 4 was added as claim 79 during prosecution. Ex. 1003, 233. e.g., Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Additionally, where an explicit limitation is not present in the written description, “it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation.” Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998). Furthermore, “[n]egative limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” Santarus, Inc. v. Par Pharm., Inc., 694 F. 3d 1344, 1351 (Fed. Cir. 2012).” slip op. at 13

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Dr. Kingdon, who Patent Owner relies on for support, does not provide sufficient rationale for his opinion to the contrary. Ex. 2002 ¶ 27. In particular, Dr. Kingdon provides a conclusory statement, “[t]his preference information is, by its very nature, determined by the network administrator—not by the subscriber, and not on the basis of proximity determined from location finding equipment.” Id. Dr. Kingdon does not identify persuasive support in the ’205 patent specification or describe persuasively other evidence that supports his conclusion. Id. ¶¶ 23–27; see also id. ¶¶ 11–15 (describing a background of location based services including a description of certain handsets, promotion of implementation of location services worldwide by several companies, and an exemplary commercial launch in Sweden of a mobile positioning service). Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. See 37 C.F.R. § 42.65(a).” slip op. at 17

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

    “5. “prioritization” The term “prioritization” is recited, for example, in claim 1: “a prioritization for presenting service provider information to a subscriber” and “prioritization information establishing a basis independent of proximity and independent of any subscriber preferences for prioritizing.” Neither party provides a proposed construction for the term “prioritization.” We, however, construe this term as part of our evaluation of the parties’ dispute as to whether the ’205 patent specification provides written description support for the limitations challenged by Petitioner. The specification does not provide a definition of “prioritization.” The IEEE Dictionary sets forth a plain and ordinary meaning of “priority” as follows: “A rank order of status, activities, or tasks.” Institute of Electrical and Electronics Engineers, The Authoritative Dictionary of IEEE Standard Terms 867 (7th Ed., IEEE Press 2000) (emphasis added) (Ex. 3001). This definition is consistent with the specification, which provides an example of “prioritization” as follows: “[t]he menu may be ordered based on any of various criteria such as preferences expressed in the subscriber profile, nearest to farthest, preferred service providers defined by the network administrator, etc.” Ex. 1001, 8:32–36 (emphasis added). Upon review, we determine that construing “prioritization” to have its plain and ordinary meaning of “ordering” is reasonable and consistent with the specification. Therefore, we adopt it as a broadest reasonable construction.” slip op. at 10

  Patent outcomesUS 7,024,205 unpatentable
  Claim construction§ 112 disclosure
  Patents in suitUS 7,024,205

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.