- Palo Alto Networks, Inc. v. Finjan, Inc.Institution deniedPTAB · May 9, 2016 · IPR2016-00145 · APJ Zhenyu Yang · IPR · Institution
Institution was denied for claims 1–5, 8–12, 15–19, 22–26, 29, and 30 because the asserted combinations relied on references published after the claims’ November 6, 1997 priority date.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“publication, and Ji renders the challenged claims obvious. Pet. 25–60. As explained above, the challenged claims are entitled to the benefit of the November 6, 1997 filing date. Touboul was published on May 22, 1998 (Ex. 1003 (43)), while the ’583 publication was published on July 15, 1999 (Ex. 1005 (43)). Thus, neither qualifies as prior art. We conclude, therefore, that Petitioner has not demonstrated that the combination of Touboul and the ’583 publication, or the combination of Touboul, the ’583 publication, and Ji, renders the challenged claims obvious. CONCLUSION On this record, Petitioner has not shown that Touboul and the ’583 publication are prior art to the challenged claims of the ’926 patent. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenges to the patentability of at least one of those claims on the grounds asserted in the Petition.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“The ’194 patent describes the code scanner sending the Downloadable and the DSP data to the ACL comparator for comparison with the security policy. Ex. 1007, 6:9–12. Petitioner does not argue that the Downloadable and the DSP data must be transmitted independently. In other words, the Downloadable and the DSP data may be transmitted together, that is, with the DSP data attached to the Downloadable. As stated above, we accept Petitioner’s proposed construction of “append/appending” to mean “attach/attaching.” See supra at 5. Thus, we are persuaded by Patent Owner that the ’194 patent provides written description support for both the appending and the transmitting limitations.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“publication, and Ji renders the challenged claims obvious. Pet. 25–60. As explained above, the challenged claims are entitled to the benefit of the November 6, 1997 filing date. Touboul was published on May 22, 1998 (Ex. 1003 (43)), while the ’583 publication was published on July 15, 1999 (Ex. 1005 (43)). Thus, neither qualifies as prior art. We conclude, therefore, that Petitioner has not demonstrated that the combination of Touboul and the ’583 publication, or the combination of Touboul, the ’583 publication, and Ji, renders the challenged claims obvious. CONCLUSION On this record, Petitioner has not shown that Touboul and the ’583 publication are prior art to the challenged claims of the ’926 patent. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenges to the patentability of at least one of those claims on the grounds asserted in the Petition.” slip op. at 8
§ 103 obviousness§ 112 disclosurePatents in suitUS 7,613,926 - Symantec Corp. v. Finjan, Inc.Institution deniedPTAB · Feb 26, 2016 · IPR2015-01897 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution because Symantec did not show a reasonable likelihood of prevailing: the challenged claims were entitled to the 1997 priority date, making Touboul I and II not prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“requesting inter partes review pursuant to 35 U.S.C. § 311 of claims 1, 2, 5, 6, 10, 11, 14, and 15 of U.S. Patent No. 8,677,494 B2 to Edery et al. (Ex. 1001, “the ’494 patent”). Pet. 1. Finjan, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We review the Petition under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . 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). For the reasons that follow and on this record, we are not persuaded that Petitioner demonstrates a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims on the asserted grounds. Accordingly, we deny Petitioner’s request to institute an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“necessary to provide a written description of a claimed invention as required by 35 U.S.C. § 112 may be incorporated into a patent application by reference, provided that the incorporated reference is a U.S. patent or U.S. patent application publication that does not itself incorporate such “essential material” by reference, by “[e]xpress[ing] a clear intent to incorporate by reference by using the words ‘incorporat(e)’ and ‘reference’” and “[c]learly identify[ing] the referenced patent [or] application.” 37 C.F.R. § 1.57(c), (d). Moreover, the Federal Circuit has explained that “incorporated patents are ‘effectively part of the host [patents] as if [they] were explicitly contained therein.’” X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in original) (quoting Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001)). Contrary to Petitioner’s contentions (Pet. 11–15), the “boilerplate language” used in the ’822, ’926, ’086, and ’494 patents, broadly stating without further qualification that the earlier-filed patents are “incorporated by reference,” is sufficient in view of Federal Circuit precedent to incorporate the disclosure of at least the ’780 patent2 into each later-filed patent. See, e.g., Harari v. Lee, 656 F.3d 1331, 1335 (Fed. Cir. 2011) (finding “entire . . . application disclosure was incorporated by the broad and unequivocal language: ‘The disclosures of the two applications are hereby incorporate[d] by reference’”). We agree with Patent Owner that the facts here are distinguishable from those in cases on which Petitioner relies. Prelim. Resp. 23–24. For example, in Zenon, as Patent Owner asserts, there was a lack of continuity of disclosure in a priority chain because the priority references were not incorporated in their entirety, but only with respect to specific portions. Id. On this record, and particularly in view of Petitioner’s statement that the specification of the ’780 patent, among others, describes the “claim elements and features” not otherwise included in the specifications of the ’822, ’926, ’086, and ’494 patents (Pet. 10)—and, thus, does not itself incorporate such “essential material” by reference (see 37 C.F.R. §1.57(d))—we agree with Patent Owner’s conclusion that “each application in the priority chain contains written description support for the challenged claims, and continuity of disclosure exists up to and including the ’494 [p]atent without interruption.” Prelim. Resp. 16.3” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“among others, it contains or is amended to contain a specific reference to the earlier filed application. 35 U.S.C. § 120. Contrary to Petitioner’s assertion that “neither the ’086 patent, nor the ’926 patent, include a priority claim or any reference whatsoever to a number of earlier-filed applications (i.e., the ’194 patent, ’520 patent and ’639 provisional) that are included in the priority chain of the ’494 patent” (Pet. 6), the ’086 and ’926 patents both include priority claims to the ’194 patent and incorporate the ’194 patent by reference in its entirety. Ex. 1002, [63], 1:26–30; Ex. 1003, [63], 1:23–27. Moreover, as Patent Owner points out, the ’520 patent and ’639 provisional are not within the priority chain from the ’494 patent to the ’194 patent, and the failure of the ’926 and ’086 patents to include a priority claim or reference to the ’520 patent and ’639 provisional does not affect the ’494 patent’s entitlement to the benefit of the November 6, 1997 filing date of the ’388 application that matured into the ’194 patent (i.e., Touboul I). Petitioner also argues that the failure of the ’926 and ’086 patents to include a priority claim or any reference to the ’520 patent and ’639 provisional constitutes a break in the priority chain of the ’494 patent. Pet. 17. For purposes of this Decision, however, we need not reach this issue.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“C. Anticipation by and Obviousness over Touboul I and Touboul II On this record and for the reasons stated in Section II.B. above, we are persuaded that claims 1, 2, 5, 6, 10, 11, 14, and 15 of the ’494 patent are entitled at least to the benefit of the November 6, 1997 filing date of the ’388 patent that matured into the ’194 patent, and, accordingly, that neither Touboul I (i.e., the ’194 patent) nor Touboul II, which issued on November 28, 2000, from an application filed December 22, 1997, constitutes prior art to those claims. We conclude, therefore, that Petitioner has not demonstrated a reasonable likelihood that it would prevail at trial on any of the asserted grounds. III. CONCLUSION On this record, Petitioner has not shown that Touboul I and Touboul II are prior art to the challenged claims of the ’494 patent. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenges to the patentability of those claims on the grounds asserted in the Petition.” slip op. at 15
Claim construction§ 102 anticipation§ 112 disclosurePatents in suitUS 8,677,494 - Symantec Corp. v. Finjan, Inc.Institution deniedPTAB · Feb 26, 2016 · IPR2015-01895 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution because the challenged claims were entitled to the November 6, 1997 filing date, making the asserted references unavailable as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“or the combination of Touboul I and Dan, renders the challenged claims obvious. Pet. 32–52. As explained above, the challenged claims are entitled to the benefit of the November 6, 1997 filing date. Thus, neither Touboul I (the ’194 patent) nor Touboul II (issued on November 28, 2000, from an application filed December 22, 1997) constitutes prior art to those claims. We conclude, therefore, that Petitioner has not demonstrated that the 14 combination of Touboul I and Touboul II, or the combination of Touboul I and Dan, renders the challenged claims obvious. CONCLUSION On this record, Petitioner has not shown that Touboul I and Touboul II are prior art to the challenged claims of the ’926 patent. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenges to the patentability of at least one of those claims on the grounds asserted in the Petition. ORDER Accordingly, it is ORDERED that Petitioner’s request for an inter partes review of claims 15, 18–20, 22, 25–27, and 30 of the ’926 patent is denied.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“Incorporation by reference “provides a method for integrating material from various documents into a host document . . . by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.” Zenon, 506 F.3d at 1378 (quotation marks omitted). Incorporation by reference must be set forth in the specification and must (1) express a clear intent to incorporate by reference by using the root words “incorporate” and “reference” (e.g., “incorporate by reference”); and (2) clearly identify the referenced patent, application, or publication. 37 C.F.R. § 1.57(c). “Essential material,” such as material necessary to provide a written description of a claimed invention, may be incorporated by reference by reference to a U.S. patent or U.S. patent application publication, as long as the referenced patent or patent application publication does not itself incorporate such essential material by reference. Id. § 1.57(d). In Harari v. Lee, 656 F.3d 1331 (Fed. Cir. 2011), the Federal Circuit concluded that the broad and unequivocal language “[t]he disclosures of the two applications are hereby incorporated by reference” incorporates the entire disclosures of the two applications. Id. at 1335. The incorporation statement in the ’822 patent is similar: 9 This application is also a Continuation-In-Part of and hereby incorporates by reference patent application Ser. No. 09/539,667, now U.S. Pat. No. 6,804,780 . . . . This application is also a Continuation-In-Part of and hereby incorporates by reference patent application Ser. No. 09/551,302, now U.S. Pat. No. 6,480,962 . . . . Ex. 1002, 1:11–19. Petitioner acknowledges that the ’780 patent provides written support for the limitations of the challenged claims. Pet. 10. In other words, the ’780 patent does not itself incorporate such “essential material” by reference. See 37 C.F.R. § 1.57(d). Thus, the holding of Harari informs our conclusion that the ’822 patent incorporates by reference the ’780 patent in its entirety. Because the ’194 and ’780 patents share essentially the same disclosure (compare Ex. 1004 with Ex. 1005), we agree with Patent Owner that continuity of disclosure exists between the ’194 and ’926 patents.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“ANALYSIS Claim Construction In an inter partes review, the Board interprets a claim term in an unexpired patent according to its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1278–81 (Fed. Cir. 2015), 1 Shlomo Touboul, U.S. Patent No. 6,092,194, issued July 18, 2000 (Ex. 1005, “Touboul I,” or “the ’194 patent”). 2 Shlomo Touboul and Nachshon Gal, U.S. Patent No. 6,154,844, issued Nov. 28, 2000 (Ex. 1012, “Touboul II”). 3 Asit Dan et al., U.S. Patent No. 5,825,877, issued October 20, 1998 (Ex. 1013, “Dan”). 4 cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (2016). On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 4
Claim construction§ 112 disclosurePatents in suitUS 7,613,926 - PTAB · May 12, 2015 · IPR2014-00242 · APJ Peter P Chen · IPR · Final written decision
The Board canceled claims 1–3, 5, and 6 and denied substitute claims 7–11 because the Patent Owner failed to establish written-description support for claim 10 and patentability over prior art for claims 7–9 and 11.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“Unlike examination, entry of the proposed substitute claims in an inter partes review is not automatic. As the moving party, Patent Owner must establish that it is entitled to the requested relief. See 37 C.F.R. § 42.20(c). In its Motion to Amend, Patent Owner bears the burden to show, inter alia, that a reasonable number of substitute claims is proposed, there is no broadening of scope, the proposed claims are supported adequately by the written description of the application as filed originally, and the proposed claims are patentable over the prior art. See 37 C.F.R. § 42.121; Idle Free Sys. Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 5–6 (PTAB June 11, 2013) (Paper 26) (“Idle Free”). We address each of these requirements in turn.” slip op. at 10
- 112 supportDenied
“its Motion to Amend to set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).” slip op. at 12
- ScopeDecided for patent owner
“2. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 7 as a substitute for claim 1, claim 8 as a substitute for claim 2, claim 9 as a substitute for claim 3, claim 10 as a substitute for claim 5, and claim 11 as a substitute for claim 6. Mot. 1–5. Each claim includes all of the limitations of the corresponding challenged claim for which it is a substitute, and adds additional limitations. Id. No limitations from the challenged claims were deleted in the proposed substitute claims. Patent Owner asserts that the proposed substitute claims do not enlarge the scope of the claims of the ’047 patent. See Mot. 1. Petitioner does not dispute this assertion (“patent owner’s proposed substitute claims . . . add ancillary features”). Opp. 1. We are persuaded that each of the proposed substitute claims does not enlarge the scope of each of the challenged patent claims it intends to replace.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Decision to Institute, we determined that no explicit construction was necessary for any of the claim terms beyond their ordinary and customary meanings. Dec. to Inst. 8–9. Neither party has challenged that determination, and based on the record adduced during trial, we see no reason to provide an express construction for any term. For the proposed substitute claims, Patent Owner states that: Like the terms in the original claims, all of [the newly added claim terms in the proposed substitute claims] are simple [claim terms] whose ordinary meaning applies and for which no construction is required, with the possible exception of “member” and “group.” As explained in the specification (Ex. 1) at 3:2–4, “The present invention comprises a method . . . for allowing on-line communications with members of a group of recipients for whom the invention has been implemented.” In the context of proposed independent claim [7], the claimed invention requires that “said first computer system storing information about said plurality of members in a database.” Thus, in the context of the proposed amended claims[,] a “group” is a group of a plurality of members for whom the first computer system has stored information in a database. Mot. 7. Petitioner does not propose alternative constructions for the claim terms “member” or “group.” We cannot discern how the constructions proffered by Patent Owner add any clarity to the terms “member” and “group,” which are simple and commonly understood terms. We decline to provide an express construction for either “member” or “group.”” slip op. at 8
Claim construction§ 101 eligibility§ 103 obviousnesscites AlicePatents in suitUS 8,499,047 - International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc.All claims unpatentablePTAB · Mar 2, 2015 · CBM2013-00049 · APJ Rama G Elluru · CBM · Final written decision
Claims 1–28 are unpatentable under § 101 as abstract ideas lacking meaningful limitations; the contingent motion to amend with substitute claims 29 and 30 is denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Trial and Appeal Board (“Board”) interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the challenged patent. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); 37 C.F.R. § 42.300(b); In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL 448667, at *5–8 (Fed. Cir. Feb. 4, 2015). There is a “‘heavy presumption’ that a claim term carries its 2 Leahy-Smith America Invents Act, Pub. L. No. 11229, 125 Stat. 284 (2011) (“AIA”). ordinary and customary meaning.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (internal citation omitted). In our Decision to Institute, we determined that our analysis did not require an express interpretation of any term. Dec. to Inst. 7. The parties do not contest that determination. See, e.g., Tr. 61:6–17, 102:12–103:18. We likewise determine that, for purposes of this Final Written Decision, our analysis does not require us to provide an express interpretation for any claim term. Nevertheless, to the extent any claim construction is applicable, that construction is consistent with the constructions presented in the contemporaneously issued Decisions in related inter partes reviews IPR2014-00097 and IPR2014-00098. Those constructions are as follows.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“The challenged claims do not require any specialized hardware. As Petitioner contends, the challenged independent claims do not recite any computer-related limitations, such as a computer, processing unit, etc., and the term “automated exchange trading system” only appears in the preambles as the environment where the claimed method is performed. Pet. Reply 2. “[A] preamble does not limit claim scope if it ‘merely states the purpose or intended use of an invention.’” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351(Fed. Cir. 2014) (affirming a finding that the recitation of “in a digital image reproduction system” in the preamble of the claims did not limit the claims and that the claims were directed to a patent ineligible abstract idea) (quoting Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006)). Here, the recitation “in an automated exchange trading system” in the preamble of claims 1 and 8 merely states the intended use of the claimed invention and does not provide any antecedent basis for limitations in the body of the claim. Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (preamble is not limiting “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention”) (quotation omitted). Therefore, we determine that the recitation of “automated exchange trading system” in the preambles of claims 1 and 8 does not meaningfully limit the claims.” slip op. at 13
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Patent Owner refers extensively to the declaration of its witness, Dr. Sandholm, in support of its position that the claimed methods require specialized and customized hardware and software. PO Resp. 55–64 (citing Ex. 2017 ¶¶ 25–36, 38–39, 41, 44). We do not find Dr. Sandholm’s testimony persuasive, however, because it generally relates to commercial embodiments and is not supported by the ’498 patent Specification. See, e.g., Ex. 2017 ¶ 26. For example, Dr. Sandholm states that “[a]utomated exchange trading systems include extremely large server networks with extensive processing capabilities” (Ex. 2017 ¶ 25), but the claims do not require any particular network size or extent of processing capability. Further, the ’498 patent Specification explains otherwise. According to the Specification, the preferred embodiment of the invention “includes a plurality of computers, which may be one or more work-stations, servers, mainframes, or other computer hardware platforms that provide sufficient resources to meet the desired trading volume and desired transaction-processing rate.” Ex. 1001, 3:20–28 (emphasis added), 3:28–37.” slip op. at 15
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“determine whether the claims at issue are directed to” an abstract idea. Alice Corp., 134 S.Ct. at 2355. The patents at issue in Alice claimed “a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk.” Id. at 2356. Like the method of hedging risk in Bilski, 130 S.Ct. at 3240—which the Court deemed “a method of organizing human activity”—Alice’s “concept of intermediated settlement” was held to be “‘a fundamental economic practice long prevalent in our system of commerce.’” Alice Corp., 134 S.Ct. at 2356 (citations omitted). With respect to the first step of the “Mayo framework,” the Supreme Court concluded in Alice Corp. that “there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement” in Alice Corp. and that “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.” Id. at 2357. Here, Petitioner argues that Patent Owner’s claims are directed to the abstract concept of “managing trading risk expressed in the claims as automatically modifying pending quotes so that market makers do not accumulate unacceptable amounts of risk,” similar to the “hedging risk” claims in Bilski. Pet. 26; Pet. Reply 1, 3–4. Patent Owner does not dispute that the ’498 patent claims are directed to an abstract idea. See PO Resp. 41 (“Patent Owner respectfully submits that the claims are not merely to an abstract idea, but rather provide a specific application of risk management with many specific, meaningful limitations.” (emphasis added)); Ex. 1001, 1:8–12. Similar to the concept of intermediated settlement in Alice Corp. and the concept of risk hedging in Bilski, we conclude that the concept of managing trading risk (“risk management”) is an economic practice long prevalent in our system of commerce and squarely within the realm of abstract ideas. As the ’498 patent itself explains, in the prior art “open outcry” exchanges, market-makers adjusted their trading strategies in order to manage their exposure, or risk, associated with their holdings by adjusting their quotes to favor trades that would tend to hedge away unwanted exposure. Ex. 1001, 1:42–55. Furthermore, the claims recite, for example, “receiving orders and quotes,” “generating a trade,” “determining a risk level and an aggregate risk level associated with said trade,” “comparing said aggregate risk level” with a risk threshold, and “automatically modifying” one of the remaining quotes if the threshold is exceeded (claim 1). Accordingly, we analyze the ’498 patent claims to determine whether they incorporate sufficient meaningful limitations to ensure that the claims are more than just an abstract idea. Mayo, 132 S.Ct. at 1297. slip op. at 10
Patent outcomesUS 7,356,498 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · Bilski · GrahamPatents in suitUS 7,356,498 - International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc.All claims unpatentablePTAB · Mar 2, 2015 · CBM2013-00050 · APJ Rama G Elluru · CBM · Final written decision
Claims 1–7 are unpatentable under § 101 as abstract ideas lacking meaningful limitations; the contingent motion to amend with substitute claim 8 is denied.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“corrected Petition (Paper 8, “Pet.”) requesting review under the transitional program for covered business method patents of claims 1–7 of U.S. Patent No. 7,980,457 B2 (Ex. 1001, “the ’457 patent”). Patent Owner, Chicago Board Options Exchange, Inc., filed a Preliminary Response (Paper 15, “Prelim. Resp.”). On March 4, 2014, pursuant to 35 U.S.C. § 324, we instituted this trial as to claims 1–7 on one ground of unpatentability, 35 U.S.C. § 101 (Paper 16, “Dec. to Inst.”).” slip op. at 2
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“method of hedging risk in Bilski, 130 S.Ct. at 3240—which the Court deemed “a method of organizing human activity”—Alice’s “concept of intermediated settlement” was held to be “‘a fundamental economic practice long prevalent in our system of commerce.’” Alice Corp., 134 S.Ct. at 2356 (citations omitted). With respect to the first step of the “Mayo framework,” the Supreme Court concluded in Alice Corp. that “there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement” in Alice Corp. and that “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.” Id. at 2357. Here, Petitioner argues that Patent Owner’s claims are directed to the abstract concept of “managing trading risk expressed in the claims as automatically modifying pending quotes so that market makers do not accumulate unacceptable amounts of risk,” similar to the “hedging risk” claims in Bilski. Pet. 27; Pet. Reply 1, 3–4. Patent Owner does not dispute that the ’457 patent claims are directed to an abstract idea. See PO Resp. 45 (“Patent Owner respectfully submits that the claims are not merely to an abstract idea, but rather provide a specific application of risk management with many specific, meaningful limitations.” (emphasis added)); Ex. 1001, 1:15–19. Similar to the concept of intermediated settlement in Alice Corp. and the concept of risk hedging in Bilski, we conclude that the concept of managing trading risk (“risk management”) is an economic practice long prevalent in our system of commerce and squarely within the realm of abstract ideas. As the ’457 patent itself explains, in the prior art “open outcry” exchanges, market-makers adjusted their trading strategies in order to manage their exposure, or risk, associated with their holdings by adjusting their quotes to favor trades that would tend to hedge away unwanted exposure. Ex. 1001, 1:50–62. Furthermore, the claims recite, for example, a server computer configured to perform the steps of “receiving orders and quotes,” “generating a trade,” “determining a risk level and an aggregate risk level associated with said trade,” “comparing said aggregate risk level” with a risk threshold, and “automatically modifying” one of the remaining quotes if the threshold is exceeded (claim 1). Accordingly, we analyze the ’457 patent claims to determine whether they incorporate sufficient meaningful limitations to ensure that the claims are more than just an abstract idea. Mayo, 132 S.Ct. at 1297.” slip op. at 11
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“The claims contemplate using a generic computer to perform “‘well- understood, routine, conventional activit[ies]’ previously known to the industry.” Alice Corp., 134 S.Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294); see Mayo, 132 S.Ct. at 1300 (“simply appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable”). The ’457 patent explains that, in the known open outcry method of trading, market-makers had personal control over the types and number of contracts traded, and could “adjust their trading strategies” as their positions changed. Ex. 1001, 1:50–58. Thus, they managed their exposure, or risk, associated with their holdings by “adjusting their quotes” to favor trades that would tend to hedge away unwanted exposure. Id. at 1:58–62. The ’457 patent Specification also recognizes that software analysis tools were available in the prior art to evaluate the “risk associated with stock and option portfolios.” Id. at 2:13–18. That it was well known to manage trading risk is supported by the testimony of Dr. Maureen O’Hara, Petitioner’s witness. Ex. 1004 ¶ 44 (stating that the steps which the server computer in claim 1 is configured to perform amount to “exactly the same method of managing risk that market makers have been performing manually for years prior to the December 1999 filing date of the ’457 patent . . . selectively accounting for past trades and current holdings and/or evaluating greek values”). Also, the claimed “risk threshold” of claim 1 is recited at a high level of generality, and as Petitioner argues, emulates the personal tolerance level of a market-maker with respect to a type of risk. Pet. Reply 5, 7. Lastly, there is no dispute that the prior art included “automated and computer-based trading system[s].” Ex. 1001, 1:66–67. The claimed systems integrate an automated exchange trading system, already known in the art, with methods that mitigate the risks of a market- maker, also already known in the art. See id. at 2:46–48. In sum, the claims amount to nothing more than instructions to apply previously known methods of electronic trading and trade risk management using a generic computer to perform generic computer functions—calculating a risk and determining if that risk exceeds a threshold, and, if so, automatically modifying a quote. See Alice Corp., 134 S.Ct. at 2359.” slip op. at 16
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Patent Owner refers extensively to the declaration of its witness, Dr. Sandholm, in support of its position that the claimed systems require specialized and customized hardware and software. PO Resp. 58–63 (citing Ex. 2017 ¶¶ 25–28, 34, 38–39, 41). We do not find Dr. Sandholm’s testimony persuasive, however, because it generally relates to commercial embodiments and is not supported by the ’457 patent Specification. See, e.g., Ex. 2017 ¶ 26. For example, Dr. Sandholm states that systems for processing trades of securitized instruments “include extremely large server networks with extensive processing capabilities” (Ex. 2017 ¶ 25), but the claims do not require any particular network size or extent of processing capability. Further, the ’457 patent Specification explains otherwise. According to the Specification, the preferred embodiment of the invention “includes a plurality of computers, which may be one or more work-stations, servers, mainframes, or other computer hardware platforms that provide sufficient resources to meet the desired trading volume and desired transaction-processing rate.” Ex. 1001, 3:28–35 (emphasis added), 3:35–45.” slip op. at 15
Patent outcomesUS 7,980,457 unpatentable§ 101 eligibilitycites Alice · Mayo · Bilski · GrahamPatents in suitUS 7,980,457 - International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc.All claims unpatentablePTAB · Mar 2, 2015 · CBM2013-00051 · APJ Rama G Elluru · CBM · Final written decision
Claims 1–3 are unpatentable under § 101 as abstract ideas without sufficient meaningful limitations; the contingent motion to amend is denied.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“determine whether the claims at issue are directed to” an abstract idea. Alice Corp., 134 S.Ct. at 2355. The patents at issue in Alice claimed “a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk.” Id. at 2356. Like the method of hedging risk in Bilski, 130 S.Ct. at 3240—which the Court deemed “a method of organizing human activity”—Alice’s “concept of intermediated settlement” was held to be “‘a fundamental economic practice long prevalent in our system of commerce.’” Alice Corp., 134 S.Ct. at 2356 (citations omitted). With respect to the first step of the “Mayo framework,” the Supreme Court concluded in Alice Corp. that “there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement” in Alice Corp. and that “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.” Id. at 2357. Here, Petitioner argues that Patent Owner’s claims are directed to the abstract concept of “managing trading risk expressed in the claims as automatically modifying pending quotes so that market makers do not accumulate unacceptable amounts of risk,” similar to the “hedging risk” claims in Bilski. Pet. 24; Pet. Reply 1, 3–4. Patent Owner does not dispute that the ’044 patent claims are directed to an abstract idea. See PO Resp. 46 (“Patent Owner respectfully submits that the claims are not merely to an abstract idea, but rather provide a specific application of risk management with many specific, meaningful limitations.” (emphasis added)); Ex. 1001, 1:18–22. Similar to the concept of intermediated settlement in Alice Corp. and the concept of risk hedging in Bilski, we conclude that the concept of managing trading risk (“risk management”) is an economic practice long prevalent in our system of commerce and squarely within the realm of abstract ideas. As the ’044 patent itself explains, in the prior art “open outcry” exchanges, market-makers adjusted their trading strategies in order to manage their exposure, or risk, associated with their holdings by adjusting their quotes to favor trades that would tend to hedge away unwanted exposure. Ex. 1001, 1:53–65. Furthermore, the claims recite, for example, a server computer configured to perform the steps of “receiving orders and quotes,” “generating a trade,” “determining a number of contracts that have been bought or sold within said quote group, including the generated trade,” “comparing said number of contracts that have been bought or sold within said quote group with said predefined number of bought or sold contracts relating to said quote group,” and “automatically modifying” one of the remaining quotes if the predefined number of bought or sold contracts is exceeded (claim 1). Accordingly, we analyze the ’044 patent claims to determine whether they incorporate sufficient meaningful limitations to ensure that the claims are more than just an abstract idea. Mayo, 132 S.Ct. at 1297. slip op. at 11
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“The challenged claims do not require any specialized hardware. As Petitioner contends, the challenged independent claims recite only common computer elements, e.g., “server computer” comprising a “memory” and “processor,” recognized as generic computer technology by the Supreme Court in Alice Corp. Pet. Reply 2; see Alice Corp., 134 S. Ct. at 2357; Ultramercial, 772 F.3d at 713, 722–23. The ’044 patent Specification affirms that the claimed systems can be a general purpose computer with a generic programming and processing environment. For example, the ’044 patent Specification states: “In accordance with a first aspect of the invention, an apparatus is implemented using at least one computer, having memory, a processor, and a communication port.” Ex. 1001, 2:51–54. The Specification also makes clear that “[v]arious types of general purpose or specialized computer apparatus or computing device may be used with or perform operations in accordance with the teachings described herein.” Id. at 17:18–20 (emphasis added). The ’044 patent Specification likewise explains that “system 100 . . . includes a plurality of computers, which may be one or more work-stations, servers, mainframes, or other computer hardware platforms that provides sufficient resources to meet the desired trading volume and desired transaction-processing rate.” Id. at 3:31–38 (emphasis added). Thus, the Specification indicates that the claimed systems for processing trades of securitized instruments can be built using a general purpose computer and that the complexity of the system depends only on the volume and rate of trading desired. Furthermore, the Specification explains that the claimed systems can be implemented using known off-the-shelf computer hardware. For example, the Specification states that preferable servers are off-the-shelf “SUN EnterpriseTM” or “StarfireTM” servers. Id. at 3:41–47; Tr. 37:15–17. Our review of the patent does not indicate that specialized computer hardware is necessary to implement the claimed systems, similar to the claims at issue in Alice Corp. See Alice Corp., 134 S.Ct. at 2360 (determining that the hardware recited in the claims was “purely functional and generic,” and did not “offer[] a meaningful limitation beyond generally linking the use of the [method] to a particular technological environment, that is, implementation via computers”) (citations and internal quotation marks omitted).” slip op. at 14
- 101 substituteMotion to amend, deniedDenied
“and compliance with 37 C.F.R. § 42.221. Patent Owner contends that the proposed substitute claim is supported by the disclosure in the ’534 application (Ex. 2023), a parent application of the ’289 application, that issued as the ’044 patent. Mot. 2–7. Patent Owner states that the proposed substitute claims address the sole ground upon which trial was instituted, patent subject matter eligibility under § 101. Id. In support of its argument, Patent Owner essentially makes the same arguments it made with respect to the original claims of the ’044 patent. Id. at 7–9; PO Reply 1–4. For example, Patent Owner argues that proposed system claim 4 is “directed to a specific computer system instead [of] a general purpose computer” (PO Reply 1), “limited to a specific application of performing risk management” (id. at 3), and “directed to an inventive concept of exchange side risk analysis” (id.). Patent Owner characterizes proposed independent claim 4 as reciting “a system for processing trades that includes at least one server computer comprising a memory, a processor, and executable code maintained on the memory.” Mot. 8. Thus, Patent Owner maintains that the proposed claim “does not merely use a generic computer to perform or accelerate a mental process.” Id. at 9. Petitioner opposes the Motion to Amend arguing that the claims do not recite patent eligible subject matter for essentially the same reasons raised with respect to the original claims. Opp. 1–12. We agree and determine that Patent Owner has not satisfied its burden of demonstrating that the proposed substitute claims are patentable under § 101. As explained above, the addition of a limitation regarding generic computer devices does not limit the claims sufficiently or add concrete ties to make the claims less abstract. See Alice, 134 S.Ct. at 2358–59; Accenture Global Servs., 728 F.3d at 1344–45. The limitations requiring “executable code maintained on said memory executable by said processor,” so that the server computer is configured to perform the steps of receiving orders and quotes “from one or more client servers over a communication network” are generic and conventional for the same reasons discussed above with respect to the original claims. In sum, Patent Owner’s proposed amendments are not specific and do not tie the claim to a concrete apparatus or method; rather, the added limitations are generic and insufficient to confer patent eligibility, similar to the claims at issue in Alice (which recited a “data storage unit” and “computer,” for example), CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1289 (Fed. Cir. 2013), and those at issue in Accenture Global Servs. (which recited a “database,” “client component,” “server component,” and “automated method,” for example), 728 F.3d at 1344–45. Thus, Patent Owner has not shown patentability under 35 U.S.C. § 101. Given that Patent Owner has not established patent eligibility of the claimed subject matter, we do not address whether the proposed substitute claim is patentable over the prior art. See Mot. 9–15. For the foregoing reasons, Patent Owner has not met its burden of showing the patent eligibility of proposed substitute claim 4. Accordingly, the contingent Motion to Amend is denied.” slip op. at 26
Patent outcomesUS 8,266,044 unpatentable§ 101 eligibilitycites Alice · Mayo · Bilski · GrahamPatents in suitUS 8,266,044 - Larose Industries, LLC v. Capriola Corp.All claims unpatentablePTAB · Jun 26, 2014 · IPR2013-00121 · APJ James B Arpin · IPR · Final written decision
Claims 1-27 are unpatentable over the instituted grounds; the motion to amend with substitute claims 28-31 is denied because patentability was not established and the claims would have been obvious.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“bears the burden of establishing the patentability of the proposed substitute claims over the prior art of record and also other prior art known to the patent owner. See Paper 36, 32-33. We deny the motion to amend here (1) because Patent Owner has not met this burden and (2) because Petitioner has persuaded us that the substitute claims would have been rendered obvious over the teachings of Teller, Rosen I, and Pawloski.” slip op. at 35
- ExcludeOther
“As noted above, we do not rely on Rosen II in denying Patent Owner’s motion to amend. See supra n.7. Moreover, Patent Owner points to some alleged similarity between the invention claimed in Rosen II and Patent Owner’s invention, as recited in the substitute claims, and makes allegations that Petitioner had access to a product embodying Patent Owner’s claimed invention before the filing date of the Rosen II application. Patent Owner, however, fails to provide persuasive evidence that Petitioner copied Patent Owner’s invention. See Paper 22, 15-16 (“Petitioner (now) expressly recognizes the functional advantage achieved by interconnected cylindrical non-conductive components . . . which renders the proposed substitute claims patentable over the prior art.”); Paper 32, 2-4 (“Indeed, part of the relevance of [Rosen II] teaching the same male-female non-conductive block interface that appears in the proposed substitute claims is precisely because it was not filed until well after Petitioner learned of Patent Owner’s 45 invention.”); see also Paper 36, 13-14 (Patent Owner alleges that Petitioner saw a product embodying features recited in the substitute claims at the New York Toy Fair before the priority date of Rosen II). Thus, the current situation does not require us to assess the merits of Petitioner’s motion to exclude. Accordingly, Petitioner’s motion to exclude evidence is dismissed as moot.” slip op. at 45
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“1. Preamble Terms The substitute claims recite the following preambles: “[a] building block comprising” (claim 28), “[a] building block set comprising” (claim 29), “[a]n illuminated toy building block set comprising” (claim 30), and “[a]n illuminated building block comprising” (claim 31). As we determined with respect to the challenged claims, the preambles of the substitute claims do not recite additional structure that is absent from the bodies of the claims or is necessary to give life, meaning, and vitality to the claims. Paper 14, 8- 9. Applying the broadest reasonable interpretation of the substitute claims in light of the Specification, we again conclude that the preamble terms are not limiting and, in particular, that the recitations of “building block,” “building block set,” and “toy building block set” in the preambles do not limit the scope of the claims to toy blocks or toy block sets. Id.” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“3. “Means for Conducting Electrical Current Through the LED in Each Block and Each of the Electrically Conductive Mechanical Connectors of Each Block” The parties do not dispute our interpretation of “means for conducting electrical current through the LED in each block and each of the electrically conductive mechanical connectors of each block” in original claim 18. See Paper 14, 14-15. For purposes of substitute claim 30, we adopt our previous analysis and interpret the identical means-plus-function limitation to have the function of “conducting electrical current through the LED in each block and each of the electrically conductive mechanical connectors of each block” and the corresponding structure of power source 70.” slip op. at 14
Patent outcomesUS 7,731,558 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 7,731,558 - Larose Industries, LLC v. Capriola Corp.All claims unpatentablePTAB · Jun 26, 2014 · IPR2013-00120 · APJ James B Arpin · IPR · Final written decision
Claims 1–27 are unpatentable over the instituted grounds; the motion to amend with substitute claims 28–31 is denied because Patent Owner did not establish their patentability.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“II. DISCUSSION As noted above, Patent Owner did not file a patent owner response to the petitions. We have reviewed the evidence presented by Petitioner regarding the claims upon which we instituted inter partes review and determine that Petitioner has shown that those claims are unpatentable by a preponderance of the evidence. See Paper 10, 16-32 (combination of Teller and Rosen I), id. at 32-43 (Doherty, and combination of Doherty and Rosen I); Paper 14, 17-25; IPR2013-00121, Paper 1, 23-25 (combination of Feuerborn and Rosen I); IPR2013-00121, Paper 11, 18-22. Specifically, Petitioner has shown by a preponderance of the evidence that claims 1-27 are unpatentable under 35 U.S.C. § 103(a), as obvious over Teller and Rosen I; claims 1-6, 8-22, 24, 26, and 27 are unpatentable under 35 U.S.C. § 102(e), as anticipated by Doherty; claims 7, 23, and 25 are unpatentable under 35 U.S.C. § 103(a), as obvious over Doherty and Rosen I; and claims 18-25 are unpatentable under 35 U.S.C. § 103(a), as obvious over” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“1. Preamble Terms The substitute claims recite the following preambles: “[a] building block comprising” (claim 28), “[a] building block set comprising” (claim 29), “[a]n illuminated toy building block set comprising” (claim 30), and “[a]n illuminated building block comprising” (claim 31). As we determined with respect to the challenged claims, the preambles of the substitute claims do not recite additional structure that is absent from the bodies of the claims or is necessary to give life, meaning, and vitality to the claims. Paper 14, 8- 9. Applying the broadest reasonable interpretation of the substitute claims in light of the Specification, we again conclude that the preamble terms are not limiting and, in particular, that the recitations of “building block,” “building block set,” and “toy building block set” in the preambles do not limit the scope of the claims to toy blocks or toy block sets. Id.” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“3. “Means for Conducting Electrical Current Through the LED in Each Block and Each of the Electrically Conductive Mechanical Connectors of Each Block” The parties do not dispute our interpretation of “means for conducting electrical current through the LED in each block and each of the electrically conductive mechanical connectors of each block” in original claim 18. See Paper 14, 14-15. For purposes of substitute claim 30, we adopt our previous analysis and interpret the identical means-plus-function limitation to have the function of “conducting electrical current through the LED in each block and each of the electrically conductive mechanical connectors of each block” and the corresponding structure of power source 70.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“a. Non-conductive A relevant definition of the term “conductive” is “having the property or capability of conducting.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY 277 (2d Random House ed. 1999) (Ex. 3001). However, the term “conductive” is used in the Specification to describe the property of conducting electricity. Ex. 1001, col. 4, ll. 43-56. Further, the entire Specification is directed to conducting electricity to illuminate a set of building blocks, and no other type of energy conduction is described that would allow building blocks to be so illuminated. This supports interpreting the claim term as limited, under the circumstances, to conducting electricity. Thus, we construe “non-conductive” as the opposite of conductive, i.e., lacking the property or capability of conducting electricity. b. Cylindrical A relevant definition of the term “cylindrical” is “of, pertaining to, or having the form of a cylinder,” and a relevant definition of the word “cylinder” is “a surface or solid bounded by two parallel planes and generated by a straight line moving parallel to the given planes and tracing a curve bounded by the planes and lying in a plane perpendicular or oblique to 15 them.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY at 331(Ex. 3001). Further, the term “cylindrical” is used in the Specification to describe the cylindrical embodiment of Figure 1 of the ’558 Patent. Ex. 1001, fig. 1; col. 4, l. 66-col. 5, l. 1 ((“In the embodiment illustrated in [Figure 1], the body 30 is substantially cylindrical 31 with one of the mechanical connectors at either end 32 thereof.”; emphasis added)). Thus, we construe “cylindrical” as an adjective describing a structure as “of, pertaining to, or having the form of a cylinder,” where a cylinder is a surface or solid bounded by two parallel planes and generated by a straight line moving parallel to the given planes and tracing a curve bounded by the planes and lying in a plane perpendicular or oblique to them. c. At Any Degree of Rotation A relevant definition of the word “degree” is “the 360th part of a complete angle or turn . . .” (emphasis added); a relevant definition of the word “turn” is “to cause to move around or on an axis or about a center; rotate: to turn a wheel” (emphasis added); and a relevant definition of the word “rotation” is “the act of rotating; a turning around as on an axis” or “one complete turn of such a body.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY at 349, 1145, 1406 (Ex. 3001). Further, rotational axis lr is depicted in Figure 4 of the ’558 Patent and described in the Specification with respect to the rotation of a block body in the form of wheel 38. Ex. 1001, fig. 4; col. 5, ll. 9-11. Referring to Figures 7 and 8 of the ’558 Patent, wheels 38 may be used to create a wheeled structure resembling a vehicle. Id. at figs. 7, 8; col. 5, ll. 11-13. Thus, we construe the term “at any degree 16 of rotation” as any part of one complete turn of a body as on an axis, such as, for example, any part of one complete turn of a wheel on a rotational axis.” slip op. at 15
Patent outcomesUS 7,731,558 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 7,731,558
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.