- Cxloyalty, Inc. v. Maritz Holdings Inc.All claims unpatentablePTAB · Dec 19, 2019 · CBM2018-00037 · APJ Justin T Arbes · CBM · Final written decision
Claims 1–15 are unpatentable under § 101; the motion to amend is granted for proposed substitute claims 16–23, which were not shown unpatentable.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“does not remove the claim from the realm of abstract ideas. See Pet. 52–53; Reply 12; SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (holding that it “does not matter to [the conclusion that the claim is directed to an abstract idea] whether the information here is information about real investments,” as “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract” (citation omitted)). Further, the last two clauses of claim 1 that recite how the transaction is viewed from the perspectives of the participant and vendor system, respectively, merely express the “non-physical result” of the information transfers and confirm the abstract nature of the claimed subject matter. See Pet. 57. In fact, as to the vendor system clause, the Specification indicates that the vendor system transfers information no differently than it would for any other transaction. See Ex. 1001, col. 7, ll. 15–18 (disclosing that vendor system 208 responds to purchase request 216 “in the same way that it would respond to any other purchase request from a consumer that presents a credit card”).” slip op. at 35
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“Our conclusion also is supported by the ’087 patent’s description of” slip op. at 41
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75
- 101 substituteMixed
“transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75
Patent outcomesUS 7,134,087 unpatentable§ 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · EnfishPatents in suitUS 7,134,087 - PTAB · Nov 20, 2019 · CBM2018-00006 · APJ Frances L Ippolito · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its final written decision that claims 1–12 are unpatentable under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply.”” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“on this particular issue is timely. Patent Owner has argued that “the institution should never have occurred” and that institution should have been denied outright. Id. However, our Decision on Institution (Paper 19, “Dec.”) was entered on June 22, 2018. Any request for rehearing of our determinations regarding the forum selection clause in that Decision should have been filed 14 days from the entry of that decision. 37 C.F.R. § 42.71(d)(1). As we noted in the FWD, after institution of the covered business method patent review (“CBM review”), the parties did not present any additional evidence or arguments regarding the forum selection clause issue. FWD 8 (“In the post-institution briefing, neither party has added arguments or evidence to the record regarding this issue.”). Indeed, the Patent Owner’s Response (Paper 28, “PO Resp.”) and Sur-Reply (Paper 39, “Sur.”) and Petitioner’s Reply (Paper 31, “Reply”) did not discuss forum selection. For completeness and clarity of the record, we reiterated our” slip op. at 3
- BurdenDecided for petitioner
“be instructive, contrary to Patent Owner’s assertion, that decision has not been designated precedential. Moreover, taking into consideration the discussion by the panel in Global Tel*Link, we are not persuaded that our determination misapprehended or overlooked any arguments or evidence in” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“the abstract idea. Nonetheless, we are not persuaded that this is clear error or deprived Patent Owner of the opportunity to defend its position. Indeed, Patent Owner does not explain why the “rules for playing a bonus wagering game” is substantively different from “allowing bonus wagers in a wagering game,” or, more importantly, the basis for Patent Owner’s contention that this is a “fundamental change.” See Reh’g Req. 11.” slip op. at 11
§ 101 eligibilityPatents in suitUS 7,451,987 - Lectrosonics, Inc. v. Zaxcom, Inc.All claims unpatentablePTAB · Nov 7, 2019 · IPR2018-00972 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1–14 are unpatentable over Strub-based grounds; the Board grants the motion to amend, allowing substitute claims 15–28.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“We agree with Petitioner that the “combined” limitation encompasses the multitrack embodiment of the ’307 patent. Both independent claims 1 and 12 recite that the “local audio data” is “combined with said remotely recorded audio data.” In view of Mr. DeFilippis’s testimony that the “combined” limitation allows “multiple individually recorded audio tracks to be combined into one or more multi-track audio files” (Ex. 2086 ¶ 18), we determine that claims 1 and 12 do not require the claimed “local audio data” and “remotely recorded audio data” to be derived from the same source. Furthermore, every occurrence of the term “combined” in the ’307 patent specification outside of the claims refers to the combination of audio into a multi-track file. See,e.g., Ex. 1001, 4:12–14 (“This accuracy allows multiple individually recorded audio tracks to be combined into one or more multi-track audio files electronically post-recording.”), 5:6–7 (“the multiple audio recordings are combined to create one single recording”), 16:40–44 (“[T]he local audio device of each performer . . . may be combined to create one or more multitrack audio files that are stored with master timestamps generated by the receiver/recorder's internal master timecode generator.”), 19:2–4 (“[A]ll of the individual audio files may be combined to provide one or more comprehensive audio files.”). Although we agree with Patent Owner that the ’307 patent specification describes an embodiment of a through the replacement of data, we are not persuaded that the recited “combined” limitation is limited to that embodiment, but rather also encompasses the multi-track embodiment of the ’307 patent. Id. at 4:15–18. Thus, we determine that the limitation “said local audio data is retrieved during or subsequent to said audio event and is combined with said remotely recorded audio data” does not require that the local and remote audio data originate from the same source because the ’307 patent specification contemplates a broader definition—one that includes the combination of local audio data and remotely recorded audio data to create a multi-track audio file. See Ex. 1001, 4:12–14, 5:6–7, 16:40–44, 19:2–4; Ex. 2086 ¶ 18. Based on the foregoing, we construe the “combining” limitation as broad enough to encompass combining local audio data and remotely recorded audio data, without a requirement that the local audio data and remotely recorded audio data are the same. In other words, we construe the “combining” limitation to encompass the disclosed multitrack embodiment in the ’307 patent specification, where separate audio tracks are combined to form a multitrack audio file. See Ex. 1001, 4:12–14, 5:6–7, 16:40–44, 19:2– 4.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“and in a condition to be worn.” Pet. Reply 1–2 (quoting Ex. 2110, 1628). This definition is consistent with the plain meaning of “wearable,” and we find no credible evidence on the record that requires a narrower definition. Furthermore, we are not persuaded that Petitioner’s expert, Mr. Tinsman, provides a definition consistent with Patent Owner’s narrow definition. Rather than defining “wearable,” Mr. Tinsman explains that the term “bodypack” is “[s]omething relatively small and lightweight.” Pet. Reply 2 (citing Ex. 2109, 41:18–22). Further, when describing “wearable” as “unobtrusive, easily hidden,” Mr. Tinsman clarifies this description as “[y]ou know, reasonable to carry around.” Ex. 2109, 47:20–22. We determine that no other express claim construction analysis of any” slip op. at 12
- Skill levelSkill level petitioner adoptedOther
“of the ’307 patent, would have “a Bachelor’s degree in electrical engineering or a related subject and two to five years working with audio and wireless communications systems.” Pet. 8 (citing Ex. 1011 ¶ 24). Patent Owner’s expert, Mr. DeFilippis, similarly opines that a person of ordinary skill in the art would have a “Bachelor’s degree in electrical engineering and two years of experience working with audio and wireless communications systems either in industry or in graduate school.” Ex. 2086 ¶ 13. We adopt Petitioner’s and Patent Owner’s proffered level of ordinary skill in the art as it is agreed upon and consistent with the prior art of record. 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.”). Specifically, we adopt that a person of ordinary skill in the art, at the time of the ’307 patent, would have had a Bachelor’s degree in electrical engineering and two or more years of experience working with audio and wireless communications systems. Pet. 8 (citing Ex. 1011 ¶ 24); Ex. 2086 ¶ 13. 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 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“We are not persuaded by Patent Owner’s argument. Petitioner identifies a first local audio device disclosed by Strub as “a small, lightweight, wearable recording unit.” Pet. 19 (quoting Ex. 1003, 4:29–31; citing Ex. 1003, 4:29–31, 14:59–15:11, 16:66–17:24, 38:65–39:11, 66:33– 51, 67:54–68:10, 72:10–19, Figs. 1, 8A–8C, 9A, 9B; Ex. 1011 ¶ 46). Petitioner further identifies the first local audio device as including position position data or biometric data, and time data. Pet. 20 (citing Ex. 1003, 12:39–52, 35:53–61, 37:55–62, 63:41–60; Ex. 1011 ¶ 47). Finally, Petitioner identifies Strub’s disclosure of other recording devices to which local audio data is transmitted via transmitter 309 or wired connections. Pet. 27 (citing Ex. 1003, 12:4–39, 66:7–25, Fig. 3). In summary, Strub discloses a local audio device that records local audio and transmits the local audio to other remote devices. Ex. 1001, Fig. 1, 105–108, 8:50–53, 12:4–39, 66:7–25). Therefore, Petitioner has identified two devices in Strub—a local audio device and a remote audio device that receives the transmitted audio. Ex. 1003, 12:4–39, 66:7–25, Fig. 3. Petitioner has also identified the claimed local audio as the audio that is stored by a local audio device and transmitted to a remote audio device. Id. Furthermore, Patent Owner’s argument that Strub fails to disclose “that the same local audio is stored at both the wearable local audio device as local audio data and the remote receiver/recorder as remotely recorded audio data and that the local audio data is combined with the remotely recorded audio data” is not persuasive because it is inconsistent with our claim construction discussed above. See Section II.B.1; PO Resp. 32. We do not construe the limitation “said local audio data may be retrieved after said locally recording and combined with said remotely recorded audio data” to require that the local audio data and remotely recorded audio data be the same data. Id. Accordingly, we agree with Petitioner that Strub discloses the disputed element because Strub discloses local audio devices transmitting recordings to other recording units and the recording units timestamping the recorded audio and synchronizing, i.e., combining, processing. Ex. 1003, 13:50–67. Patent Owner further argues that Strub does not disclose a local audio device “wearable by a creator of said locally generated audio.” PO Resp. 34–35. Patent Owner argues that Strub’s device is not “small, lightweight, unobtrusive, easily hidden, not visible, and designed to be worn on the body of a creator of audio (i.e., performer)” based on its claim construction. Id. at 34; see Section II.B.2. Mr. DeFilippis, Patent Owner’s expert, opines that Strub’s system “would require a computer that could compare content from multiple mpeg sources in real time and multiplex the results to a recording,” and the “hardware and software to do this could not be incorporated into a back pack, let alone a bodypack.” Id. at 34–35 (citing Ex. 2086 ¶ 43).” slip op. at 20
Patent outcomesUS 9,336,307 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,336,307 - American Express Company / American Express Travel Related Services Company, Inc. v. Signature Systems, LLCAll claims unpatentablePTAB · Oct 30, 2019 · CBM2018-00035 · APJ Frances L Ippolito · CBM · Final written decision
Claims 1, 2, 5, 6, 9, 10, 13, and 14 are unpatentable under § 101; proposed substitute claims 17–20 are unpatentable under § 101, and the contingent motion to amend is denied.
RulingsFinal written decision- Skill levelOther
“F. Level of Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”)” slip op. at 32
- Expert testimonyOther
“For the above reasons, we are persuaded that Petitioner has met its” slip op. at 62
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“1. Principles of Law Use of the word “means” in a claim gives rise to a rebuttable” slip op. at 12
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Further, based on the entirety of the record, we determine that proposed substitute claims 17–20 are unpatentable by a preponderance of the evidence based on 35 U.S.C. § 101. Motion to Amend Outcome Claims Substitute Claims: Proposed in the Amendment 17–20 Substitute Claims: Motion to Amend Denied 17–20” slip op. at 101
Patent outcomesUS 8,423,402 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · EnfishPatents in suitUS 8,423,402 - Agilent Technologies, Inc. v. Bio-Rad Laboratories, Inc.Rehearing deniedPTAB · Oct 23, 2019 · IPR2019-00266 · APJ Michelle N Ankenbrand · IPR · Rehearing
The Board denied rehearing, finding no abuse of discretion in denying institution because Petitioner failed to show a reasonable likelihood of prevailing on its anticipation and obviousness challenges to claims 1–22.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A rehearing request “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“CONCLUSION In sum, we determine that, in its Petition, Petitioner did not establish a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claims. On rehearing, Petitioner does not persuade us that our decision was based on an erroneous conclusion of law or clearly erroneous factual findings. Accordingly, we conclude that Petitioner has not demonstrated that we abused our discretion in denying institution of the challenged claims.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“In our Decision, we agreed with Patent Owner that “a patent applicant need not describe information that is ‘well-known in the art’ in order to satisfy the written description requirement.” Dec. 14 (citing Prelim. Resp. 31 (quoting Boston Sci., 647 F.3d at 1366)). We further explained that the Federal Circuit had set forth a number of factors for evaluating the adequacy of the disclosure for generic claims, including “the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue.” Id. at 14 (quoting Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). And we noted that Petitioner did not address the factors, whereas Patent Owner directed us to evidence in the record “indicating that the broader category of heaters was well-known before 2003, given the existing knowledge in the field, the extent and content of the prior art, and the maturity of the technology.” Id. at 15. Based on that evidence, we concluded, “the disclosure in the priority applications of a lid heater reasonably conveys to those of ordinary skill in the art that the inventor was in possession of the broader genus of a ‘heating element’/‘heater.’” Id. at 16.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“to improve similar and related devices.” Id. at 4 (quoting Pet. 57). But a generalized desire to improve existing devices is different from a specific reasoning to combine the prior art asserted in this proceeding. See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 381 F.3d 1371, 1377 (Fed. Cir. 2004) (“Recognition of a need does not render obvious the achievement that meets that need.”).” slip op. at 7
§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 8,236,504 - Supercell OY v. Gree, Inc.No claims unpatentablePTAB · Oct 15, 2019 · PGR2018-00061 · APJ Hyun J Jung · PGR · Final written decision
The Board found claims 1–7 and 9–20 not shown unpatentable under §§ 101, 112(a), or 112(b), because Petitioner did not meet its burden on any ground.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“would possess at least an associate degree in the field of computer science (or a related academic field) and at least two additional years of practical (e.g., work) experience in the field of video game programming and development.” PO Resp. 15 (citing Ex. 2004 ¶ 27). Patent Owner alternatively contends that, if the person of ordinary skill in the art did not have a formal degree, then such a person “would have at least four years of practical (e.g., work) experience in the field of video game programming and development, or an equivalent field of study” and “would have training or familiarity with computer processing technology, namely systems for processing the progress of a video game, including the generation of game screens, and the tracking and displaying of in-game player status information.” Id. at 15–16 (citing Ex. 2004 ¶ 27). Petitioner does not present any arguments regarding level of ordinary skill. See generally Pet.; Pet. Reply. We find Patent Owner’s proposed level of ordinary skill credible based on the Specification and apply that level of skill to our analysis of the parties’ disputes. We, thus, adopt Patent Owner’s unchallenged, asserted level of ordinary skill quoted above. slip op. at 8
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Patent Owner, on the other hand, describes how the Specification of the ’793 patent, with supporting declarant testimony, provides adequate written description for the disputed limitations. PO Resp. 69–71 (citing Pet. 53–54; Ex. 1001, 4:32–34; Ex. 2004 ¶¶ 89–105). The Specification states that “a screen information generator that generates information relating to a game screen based on an instruction received by the instruction receiving device.” Ex. 1001, 4:32–34. Patent Owner also presents declarant testimony that explains the quoted portion of the Specification and that the ordinarily skilled artisan would have understood from the Specification that it provides adequate written description support for the disputed recitations. Ex. 2004 ¶¶ 89–105 (citing Ex. 1001, 2:1–7, 3:9–12, 3:46–53, 4:32–34, 4:37–41, 4:47–49, 7:24–58, 8:9–11, 8:18–35, 8:42–45, 8:65–67, 11:5–6, Figs. 2A, 2B). We credit Patent Owner’s declarant testimony because the relied upon portions of the Specification support it.” slip op. at 28
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“claims 1, 11, and 17 are limiting. Turning to the language of the claims, claim 1 recites “generating information relating to a game screen based on a received instruction [(‘the generating step’)]; and outputting information relating to the generated game screen to a user terminal at a predetermined time [(‘the outputting step’)].” Ex. 1001, 13:57–60. Claim 1’s wherein clause recites, inter alia, that “the second game screen includes latest state information at a time when receiving a first instruction which is an instruction to update the state information.” Because of the logical link between the “received instruction” in the generating step and the “when receiving a first instruction” in the wherein clause, we determine that the wherein clause must relate to the generating step, not the outputting step, as asserted by Petitioner. Claim 11 also recites “a screen information generation step in which a screen information generator . . . generates information relating to a game screen based on the instruction received” and its wherein clause expressly states “in the screen information generation step.” Ex. 1001, 14:66–15:2, 15:9. Similarly, claim 17 recites “a screen information generator that generates information relating to a game screen based on an instruction received” and expressly states “wherein the screen information generator generates information.” Id. at 16:13–15, 16:19. We, thus, determine that the claims support Patent Owner’s contention that the wherein clauses refer to recitations regarding generating information relating to a game screen based on received instruction. Turning to the Specification, we find that it describes the claimed invention as “capable of reducing the influence of a communication state or performance of hardware by generating a game screen with information to be displayed on the game screen as the latest information at the timing when an instruction to update is received.” Ex. 1001, 1:51–55 (emphasis added); see also Ex. 2004 ¶ 49 (testifying as to why the Specification describes a technological improvement). The wherein clauses of the independent claims reiterate this part of the Specification. See Ex. 1001, 13:61–67, 15:9–17, 16:19–27. We, thus, find that the Specification supports our determination that the wherein clauses refer to recitations regarding generating information relating to a game screen based on received instruction and are limiting.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“To resolve the parties’ dispute, we determine that an express interpretation for any of these terms or any other claim term is not necessary. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing explicitly only those claim terms in controversy and only to the extent necessary to resolve the controversy).” slip op. at 17
Patent outcomesUS 9,700,793 not shown unpatentableClaim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Electric Power · NautilusPatents in suitUS 9,700,793 - Supercell OY v. Gree, Inc.No claims unpatentablePTAB · Sep 26, 2019 · PGR2018-00050 · APJ Carl M Defranco · PGR · Final written decision
The Board held claims 1–10 not unpatentable under § 101, § 112(a), or § 112(b), finding the claims patent eligible and rejecting the written-description and indefiniteness challenges.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“Neither Supercell nor GREE proposes a construction for any particular claim term. See Pet. 20–26; PO Resp. 6. We determine that no express construction of the claim terms is necessary for purposes of this decision, with one exception. We note that the Specification of the ’886 patent describes the claimed “terminal attribute” as follows: “Examples of the attribute information may include the OS version, the browser type, the terminal type, the communication circumstance, and the like.” Ex. 1001, 11:33–35. In that regard, the Specification also explains a communication circumstance as follows: “For example, in a case where an information processing speed or a communication speed in the user terminal . . . is high, the number of rounds is set to be large.” Id. at 11:20–23. As such, we determine that the plain and ordinary meaning of “terminal attribute” encompasses at least the examples listed in the Specification and should be read accordingly.3” slip op. at 5
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable
“We agree with GREE that the claims are drawn to a specific technological improvement in the transmission of online game content by using a terminal attribute to improve the efficiency and functionality of transmitting multiple rounds of an online game to a user terminal, and that this improvement is not an abstract idea.7 Although, as Supercell argues, the recited function of “transmitting game view data” may be result-oriented (see Pet. 33–37; Reply 4–6), the claims nonetheless recite a specific technique for achieving that result-oriented function—identifying a terminal attribute of the user terminal and determining the predetermined number based on the terminal attribute. That particular technique, as made clear by the ’886 patent, solves a specific technological problem with conventional online game systems—long wait times and interruptions in the transmission of multiple rounds of the game. See Ex. 1001, 1:46–54 (describing the problem with conventional online game systems). So, rather than reciting just result-oriented functions, the clear focus” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“As explained by GREE’s expert, a skilled artisan would have known from that description how to determine the predetermined number of rounds using a terminal attribute table. See Ex. 1007, 57:20–62:10, 82:14–23, 87:7– 90:22. That expert testimony, which we find persuasive, is unrebutted and stands in direct contrast to unsupported attorney argument from Supercell. See Pet. 58–61; Reply 19–21. Thus, we determine that Supercell has not established by a preponderance of the evidence that claims 1–10 are unpatentable under 35 U.S.C. § 112(a) as lacking written description support.” slip op. at 14
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable
“Pet. 64–65; Reply 22–23. But aside from that conclusory assertion, Supercell’s Petition simply poses a series of rhetorical questions without further analysis or evidentiary support. See Pet. 65–66. GREE, on the other hand, offers expert testimony as to why the meaning of the claimed “determining” limitation is clear not only from the claim language itself but also in light of the Specification. Ex. 2001 ¶¶ 40– 42 (citing Ex. 1001, 11:20–41). We find that testimony persuasive. We also find persuasive GREE’s reasoning in response to each of the rhetorical questions raised by Supercell, even though it was under no obligation to do so. PO Resp. 47–49; Sur-Reply 17–19. And given the lack of argument, not to mention evidentiary support, in the Petition as to the purported indefiniteness of the challenged claims, we are not persuaded that Supercell has carried its burden of showing that the claims are unpatentable under 35 U.S.C. § 112(b).” slip op. at 15
Patent outcomesUS 9,675,886 not shown unpatentableClaim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Electric PowerPatents in suitUS 9,675,886 - Lippert Components, Inc. v. Days CorporationAll claims unpatentablePTAB · Sep 24, 2019 · IPR2018-00777 · APJ George R Hoskins · IPR · Final written decision
Claims 12 and 13 are unpatentable as anticipated by Uriarte and obvious over Uriarte and Fukumoto; the motion to amend claims 15 and 16 is denied.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“nothing in the claim language itself that requires the sensor to be aligned directly along the vehicle’s longitudinal and lateral axes. Rather, the Sensor Limitations more broadly require that the sensor “sense[s] pitch and roll of the vehicle relative to a reference level plane” to produce a signal “representing the vehicle pitch and roll.” Ex. 1001, 12:61–64 (claim 12), 13:16–19 (claim 13). Any sensor that determines the relative positioning of the vehicle’s longitudinal-lateral plane with respect to the reference level plane will thereby “sense” the pitch and roll of the vehicle, to produce a signal “representing” the pitch and roll.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. Remaining Claim Terms No further explicit construction of any claim term is needed to resolve the issues presented here. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’693 patent “would have either a bachelor’s degree in engineering, preferably mechanical or electrical, or at least five years of work experience in the field of vehicle leveling systems and related equipment.” Pet. 10; Ex. 1006 ¶ 18. “Patent Owner accepts this level,” despite the slightly different formulation offered by Dr. Sturges. PO Resp. 11; Ex. 2004, 5. We determine that the level of ordinary skill proposed by Petitioner, and accepted by Patent Owner, is consistent with the ’693 patent and the prior art of record. We, therefore, adopt that level in the present Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579–80 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We determine it would not require undue experimentation to find the proper leveling condition to use in Uriarte for stopping an automatic leveling operation, because Uriarte itself provides the answer: it is when Clr = Crf and Crr = Clf. Ex. 1004, 7:67–8:16; Ex. 1006 ¶¶ 41–43; Ex. 1015 ¶ 21. Given that disclosure, a person of ordinary skill in the art would resolve the later nonsensical disclosure as intending to state the vehicle is level when Clr/Crf = 1 and Crr/Clf = 1, without any experimentation at all, much less undue experimentation. Ex. 1015 ¶ 21. Dr. Sturges’s failure to address the first disclosure in Uriarte in his Declaration, when reaching his conclusion that “[t]here are no other disclosures in Uriarte indicating a level condition, except by manual ‘feel’ and control,” renders that conclusion unreliable. Ex. 2004, 8 (emphasis added). Moreover, when pressed during deposition, Dr. Sturges testified a person of ordinary skill in the art would understand Uriarte’s vehicle 10 is “at least near level” “when the capacitors show equal value.” Ex. 1013, 71:9–72:3. Thus, we determine Petitioner has met its burden to establish, by a preponderance of the evidence, that a person of ordinary skill in the art would be able to carry out an automatic leveling operation based on the Uriarte disclosure. In particular, the stopping condition indicating the vehicle is level occurs when Clr = Crf and Crr = Clf, or equivalently when Clr/Crf = 1 and Crr/Clf = 1.” slip op. at 23
Patent outcomesUS 6,619,693 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 6,619,693 - Supercell OY v. Gree, Inc.All claims unpatentablePTAB · Sep 23, 2019 · PGR2018-00055 · APJ Lynne H Browne · PGR · Final written decision
Claims 1–12 are unpatentable under § 101; the Board denied the motion to amend because substitute claims 13–24 are also patent ineligible.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“claims provide more detail than the original claims, we do not agree that in this instance such detail renders the proposed substitute claims patent eligible. As explained above in Part II.B.2.a, the original claims are directed to a judicial exception (namely a certain method of organizing human activity), which is patent ineligible. The proposed substitute claims do not remedy this deficiency in the original claims. Rather, the proposed substitute claims merely add more detail to the ineligible subject matter. For example, substitute claim 13 recites “controlling . . . an effect of an attack . . . according to . . . a plurality of attack values, each of the plurality of attack values assigned to each attack of the number of attacks within the predetermined time by any characters in the group.” PO MTA 27. This recitation clearly provides more detail than was provided in original claim 1; however, the additional detail specifies how the video game is conducted (i.e., the rules to be followed) as opposed to a technological improvement. In other words the proposed substitute claims, like the original claims, recite following rules (specifically, rules for a battle game), which is a certain method of organizing human activity that has been found to be patent ineligible. Guidance at 52. For this reason, and the reasons discussed above in Part II.B.2.b regarding the original claims, we determine that the proposed substitute claims are directed to a judicial exception (abstract idea). We also determine that the proposed substitute claims do not integrate the recited abstract idea into a practical application for the reasons discussed above in Part II.B.2.c and that the additional elements beyond the recited abstract idea do not recite an inventive concept for the reasons discussed above in Part II.B.2.d. Accordingly, we find that substitute claims 13–24 are not patent eligible.” slip op. at 52
- BurdenFwd mixedMixed
“We are persuaded that Petitioner is correct because once again Patent Owner relies on the limitations that are encompassed by the judicial exception for the inventive concept. Our analysis under step 2B, like our analysis above under step 2A prong 2, looks to the additional elements beyond the judicial exception. Guidance, 84 Fed. Reg. at 56 (“For example the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element.”). Patent Owner identifies no additional elements beyond the judicial exception as providing an inventive concept and does not argue that the additional elements beyond that judicial exception are not well-known, routine, and conventional. For these reasons, we determine that claims 1–12 do not provide an inventive concept.” slip op. at 27
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Even if Patent Owner’s assertions that the limitations of claim 1 are analogous to the identified limitations in Examples 37 and 38 of the Guidance and do not recite mathematical concepts, this is not dispositive on the issue of whether claim 1 is directed to patent-ineligible subject matter. The Guidance identifies “following rules” such as “rules for conducting a wagering game” as one method of organizing human activity that is patent ineligible. Guidance, 84 Fed. Reg. at 52 (citing In re Smith, 815 F.3d at 818). The preamble to claim 1 recites “[a] method for providing a battle game to each of a plurality of client devices via a network.” Ex. 1001, 7:54– 55. The preamble of Example 37 recites “[a] method of rearranging icons on a graphical user interface (GUI) of a computer system” and the preamble of Example 38 recites “[a] method for providing a digital computer simulation of an analog audio mixer.” USPTO, Subject Matter Eligibility Examples: Abstract Ideas 1 (Jan. 7, 2019), https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_ 20190107.pdf. Neither of the example claims has anything to do with a method of providing a battle game or following rules, and thus, cannot demonstrate by analogy that claim 1 is patent eligible.” slip op. at 22
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“We are persuaded that Petitioner is correct because once again Patent Owner relies on the limitations that are encompassed by the judicial exception for the inventive concept. Our analysis under step 2B, like our analysis above under step 2A prong 2, looks to the additional elements beyond the judicial exception. Guidance, 84 Fed. Reg. at 56 (“For example the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element.”). Patent Owner identifies no additional elements beyond the judicial exception as providing an inventive concept and does not argue that the additional elements beyond that judicial exception are not well-known, routine, and conventional. For these reasons, we determine that claims 1–12 do not provide an inventive concept. e. Conclusion re Subject Matter Eligibility For the reasons set forth in Parts II.B.2.a–d, we are persuaded that Petitioner has met its burden of showing that claims 1–12 are not subject matter eligible.” slip op. at 27
Patent outcomesUS 9,687,744 unpatentableClaim construction§ 101 eligibility§ 112 disclosureDiscretionary denialcites Alice · Mayo · Bilski · NautilusPatents in suitUS 9,687,744 - SPTS Technologies Ltd. v. Plasma-Therm LLCNo claims unpatentablePTAB · Aug 26, 2019 · IPR2018-00618 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 1 and 2 were not shown unpatentable because Singh was not shown to be prior art; the Board did not reach the obviousness ground.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for six claim terms. Pet. 32–38. Patent Owner contends that no claim term requires construction. PO Resp. 6–7. We determine that no claim term requires express construction for purposes of resolving the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). B.” slip op. at 11
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Level of Ordinary Skill in the Art In the Institution Decision, we adopted Patent Owner’s definition of a person of ordinary skill in the art (“POSITA”). Dec. 13. According to Patent Owner, a POSITA would have at least a Bachelor’s or Master’s degree in electrical engineering, chemical engineering, materials science, physics or chemistry, or a similar field, and at least three to four years of experience in process development or process engineering related to plasma etching. Alternatively, this person would have a Ph.D. in physics, chemistry, electrical engineering, materials science or a similar field. Prelim. Resp. 9. In the Institution Decision, we rejected Petitioner’s description of the field in which a POSITA would have had work experience as inconsistent with scope of technology described in the ’332 patent. Pet. 31; Dec. 12–13. Neither party challenges our determinations regarding the level of ordinary skill in the art, as set forth in the Institution Decision. Accordingly, in this final written decision, we continue to apply Patent Owner’s definition of a POSITA quoted above.” slip op. at 12
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“to a POSITA that the invention possessed by the inventors includes “the frame of the work piece having an exposed lower surface,” as recited in claim 1. Ex. 1001, 16:8–9. Our finding is supported by the following disclosures of the ’450 application and the corresponding disclosures of the ’119 parent application. Ex. 1008, 14 (“As is shown in Figure 3, the thinned substrate is then adhered to a thin tape (5) which in turn is mounted to a rigid frame (6).”); id. at 17 (“The transfer arm may support both the tape and frame or the frame alone.”); id. at 18 (“The lift mechanism touches the frame area and provides no point contact to the substrate.”); id. (“Figure 13 shows the lift mechanism contacting the frame from the underside.”); Ex. 1009, 18, 22, 24. Our finding is supported by the testimony of both parties’ experts concerning how a POSITA would have understood the disclosures of the priority applications. Ex. 2002 ¶¶ 53, 54; Ex. 2010, 41:24–42:20, 49:18– 50:4, 51:8–15, 59:21–61:2. Our finding is supported by Petitioner’s contentions and the testimony of both parties’ experts concerning conventional techniques for joining a tape to a frame known to a POSITA at the time the ’450 provisional application was filed. Pet. 65–66; Ex. 1013 ¶¶ 32, 125–127; Ex. 2002 ¶¶ 54, 55; Ex. 2009 ¶¶ 11–15; Ex. 2010, 13:13– 20, 16:1–6, 17:9–17, 23:8–24:16. Our finding is also supported by Dr. Spencer’s declaration testimony concerning the meaning of “a portion of the work piece overlapped by the frame” (Ex. 1013 ¶¶ 82, 83) and his admission that “the frame area” in the ’450 provisional application has the same meaning (Ex. 1028 ¶ 10). It is true that the drawings of the priority applications do not show the frame of the work piece as having an exposed lower surface. Nor do they show the frame as having flat edges or notches such that conventional methods for cutting the tape would leave portions exposed, i.e., not covered by tape. Nevertheless, in view of the record as a whole, including the parties’ and experts’ agreement that the frame of the work piece having an exposed lower surface is conventional, we are persuaded that the priority applications reasonably convey to a POSITA that this feature is part of the invention possessed by the inventors. Tr. 19:1–4; Pet. Reply 6; PO Resp. 14–17; Pet. 65–66; Ex. 1013 ¶¶ 125–127; Ex. 2002 ¶¶ 54, 55; Ex. 2009 ¶¶ 11–15; Ex. 2010, 23:8–24:16. See Hologic, 884 F.3d at 1362 (“The written description does not require that every claimed element be illustrated in the figures, particularly in predictable arts and where the element not depicted is conventional and not ‘necessary for the understanding of the subject matter sought to be patented.’” (quoting 35 U.S.C. § 113)).” slip op. at 38
Patent outcomesUS 8,785,332 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,785,332
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.