- Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Bissell Inc.All claims unpatentablePTAB · Jan 11, 2024 · IPR2022-01177 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–20 are unpatentable as anticipated by Beskow; the Board did not reach the additional obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“SharkNinja submits that one skilled in the art would have had “a Bachelor’s degree in Mechanical Engineering (or an equivalent discipline) or equivalent work experience, and at least one year’s worth of experience in research, design and/or development related to vacuum cleaners (or other comparable industrial design).” Pet. 14. Bissell does not dispute SharkNinja’s proposed definition of the level of skill in the art, and we see no reason to question it. See PO Resp. 1–9. Accordingly, we adopt the level of skill in the art as defined by SharkNinja.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Despite that exchange, Bissell still presents no evidence as to the meaning of “selectively provided,” aside from asserting the term is “ambiguous” while at the same time arguing that the term requires more than simply showing that Beskow’s agitator “can” or “cannot” be mounted on the base. Notably, however, Bissell never elaborates on why Beskow must disclose “when” the agitator can be removed, as opposed to simply disclosing it can be removed. In contrast, SharkNinja presents Beskow’s Figures 1A and 7A to show that agitator 110 is removable. Thus, without more from Bissell, we fail to see why we should construe “selectively provided” any more narrowly than simply requiring that the agitator “can” or “cannot” be mounted on the base, as SharkNinja proposes. To that end, we find that Beskow’s agitator, as depicted in Figures 1A and 7A, clearly falls within the meaning of “selectively provided on the base,” as properly construed.” slip op. at 9
- Strike new argumentNew argument consideredDecided for petitioner
“We disagree that SharkNinja’s proposed construction of “selectively” in its reply is untimely or not supported by the evidence. At the outset, we note that Bissell did not provide any meaningful construction of the term in the Patent Owner Response. See PO Resp. 2–5. By opening the door in its Response to the meaning of “selectively” and by disputing that Beskow teaches this limitation, Bissell cannot reasonably fault SharkNinja for proposing its own construction of the term in its Reply. This is especially true given Bissell’s refusal to construe the term itself, despite recognizing some ambiguity in the claim’s use of that term. See Hrg. Tr. 46 (Bissell’s counsel explaining that “the word selectively is ambiguous” and that “[i]n the Patent Owner’s response we pointed out the ambiguities.”); see also id. at 49 (“[PTAB JUDGE]: Okay. So it’s your position that it’s an ambiguous term then? [BISSELL’S COUNSEL]: Yes, Your Honor.”). Thus, in the absence of any construction of “selectively” from Bissell in contending that Beskow lacks this claim limitation, SharkNinja was fully within its right to propose its own construction in its Reply to support of its assertion that Beskow teaches this limitation. As such, we reject the notion that SharkNinja’s proposed construction was untimely or otherwise not properly within the scope of its Reply.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
Patent outcomesUS 11,096,542 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,096,542 - Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Bissell Inc.All claims unpatentablePTAB · Jan 11, 2024 · IPR2022-01176 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–20 are unpatentable as anticipated by Beskow; the Board did not reach the additional obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“SharkNinja submits that one skilled in the art would have had “a Bachelor’s degree in Mechanical Engineering (or an equivalent discipline) or equivalent work experience, and at least one year’s worth of experience in research, design and/or development related to vacuum cleaners (or other comparable industrial design).” Pet. 14. Bissell does not dispute SharkNinja’s proposed definition of the level of skill in the art, and we see no reason to question it. Accordingly, we adopt the level of skill in the art as defined by SharkNinja. B. Claim Construction” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Bissell that, as claimed, the suction nozzle assembly must be a separate and distinct component from the base. Although we agree that “provided on the base” may be construed to mean that the suction nozzle assembly is a separate and distinct component positioned on, or attached to, the base, we also conclude that “provided on the base” may be construed more broadly to mean that the suction nozzle assembly is part of the base or included in the base. That broader meaning comports with the specification of the ’541 patent and the plain and ordinary meaning of the term “provided on.”” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We find unpersuasive Bissell’s assertion that Beskow’s suction nozzle assembly is not “provided on the base,” as claimed. See PO Resp. 7–10, 17– 21. That is because Bissell’s assertion that the suction nozzle assembly, as claimed, must be a physically separate component from the base relies on an improper claim construction. As discussed above, we construe “a suction nozzle assembly provided on the base” to encompass not only a suction nozzle assembly that is “positioned on” the base, as Bissell asserts, but also one that it is “part of” the base or “included in” the base.” To that end, Beskow discloses that “debris and fluid inlets 724, 726 may be formed entirely or partially as a removable inlet tray 730” and “may be separately removable from the cleaning head 102, integral to or not removable from the cleaning head 102.” Ex. 1004, 20:6–7, 29–32. That the debris and fluid inlet portions of Beskow’s suction nozzle assembly are removably attached to Beskow’s cleaning head 102 (i.e., the claimed “base”) necessarily means they are “positioned on” and “included in” the base under the proper construction of “provided on the base.” Indeed, Beskow’s disclosure is no different than the preferred embodiment of the ’541 patent, where suction nozzle assembly 580 “is configured to be received in the upper cover 542,” which indisputably is part of “base 14.” Ex. 1001, 10:52–54, Fig. 8 (emphasis added); see also id. at 8:12–13 (“Upper cover 542 can be configured to releasably receive the suction nozzle assembly 580.”). Thus, we find that Beskow satisfies the claim limitation of “a suction nozzle assembly provided on the base.”” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“SharkNinja also challenges claims 1–20 as being rendered obvious by either Beskow alone or the combined teachings of Beskow and Li. See Pet. 25–26. Bissell responds that SharkNinja’s showing for these challenges fails “for the same reasons discussed with respect to Ground 1.” PO Resp. 33. Because we determine that claims 1–20 are unpatentable as anticipated by Beskow, we need not address whether those same claims are unpatentable under SharkNinja’s additional grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding that petitioner “is entitled to a final written decision addressing all of the claims it has challenged”); Boston Scientific Scimed, Inc. v. Cook Grp. Inc., 809 F. Appx 984, 990 (Fed. Cir. 2020) (nonprecedential) (recognizing that the “Board need not address issues that are not necessary to the resolution of the proceeding” and, thus, has “discretion to decline to decide additional instituted grounds once the petitioner has prevailed on all its challenged claims”).” slip op. at 23
Patent outcomesUS 11,096,541 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,096,541 - PTAB · Sep 25, 2023 · IPR2023-00531 · APJ Hubert C Lorin · IPR · Institution
The Board instituted inter partes review of claims 1, 3–9, and 20 because Petitioner showed a reasonable likelihood that Flore anticipates them.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of claims 1, 3–9, and 20 of the ’988 patent. Accordingly, we grant the Petition and institute an inter partes review of the ’988 patent. IV. ORDER It is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1, 3–9, and 20 of the ’988 patent is instituted with respect to the ground set forth in the Petition; and” slip op. at 33
- BurdenDecided for petitioner
“We have reviewed the evidence and find that, at this stage, Petitioner sufficiently shows on this record that Flore teaches “routing the communication from the first DMA gateway [Inter-AS Anchor 152] to the target device [UE 110] by relaying the communication from the first DMA gateway [Inter-AS Anchor 152] to the second DMA gateway [SGSN 142] via the DMA gateway communications network [via a Gn interface].” Given that we find, at this stage, that Petitioner sufficiently shows that Flore teaches every limitation in the claim, on this record, Petitioner has demonstrated a reasonable likelihood of prevailing in demonstrating that claim 1 of the ’988 patent is anticipated by Flore.” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this time, we decline to adopt a construction of the claim term “DMA server” that would limit its scope to include a P2P connection with other DMA servers. The claims do not include a limitation calling for the “DMA server” to be connected to other DMA servers via a P2P connection. There is a single mention of “a DMA server” in the claim and its scope is not limited so as to be connected to other DMA servers via a P2P connection. See, e.g., Ex. 1001, claim 1[b]: “a DMA server.” Nor does the present record sufficiently support the view that a POSITA would have understood the claim term “DMA server” to be necessarily limited to one that it is connected to other DMA servers via a P2P connection.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“II. ANALYSIS A. Principles of Law To “demonstrate anticipation, the proponent must show ‘that the four corners of a single, prior art document describe every element of the claimed 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 102. Because the challenged claims of the ’988 patent have an effective filing date before the effective date of the applicable AIA amendments, we refer to the pre-AIA version of 35 U.S.C. § 102 throughout this Decision. invention.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Xerox Corp. v. 3Com Corp., 458 F.3d 1310, 1322 (Fed. Cir. 2006)). The prior-art document “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Id. (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Hence, a patent challenger cannot rely on portions from different, unrelated embodiments in a prior-art document to demonstrate anticipation. See id. at 1369, 1371. The “disclosure of a limited number of combination possibilities” may anticipate a claim. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1274 (Fed. Cir. 2017). Hence, a reference may anticipate “if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016). The “dispositive question regarding anticipation [is] whether one skilled in the art would reasonably understand or infer from the [reference’s] teaching” that it discloses every claim element arranged as in the claim. In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991); see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003).” slip op. at 7
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 7,855,988 - Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.Institution deniedPTAB · Jun 20, 2023 · IPR2023-00351 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution on all challenged claims because the claims receive the provisional’s earlier priority date, making Gottlieb unavailable as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition, Preliminary Response, and the evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute inter partes review of claims 1–3, 6, 13, 14, 16–22, 26–28, and 41 of the ’138 patent based on the grounds raised in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“Reading the ’791 provisional’s description of the hydraulic link in conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date. Likewise, we observe that claim 41 recites that the “hydraulic fluid acts as an incompressible solid so that movement caused by the actuation of said dimensionally responsive member is transmitted through said fluid layer.” Ex. 1001, 20:53–56 (emphases added). Again, the ’791 provisional discloses that the “trapped fluid acts as a solid and transmits the movement of the magnetostrictive material 40 to the needle valve 14, causing it to lift against the needle spring 16.” Id. at 12:5–13:14 (emphases added). We find, based on this description of the hydraulic link, with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, it would act as an incompressible solid. Petitioner does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 12
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Reading the ’791 provisional’s description of the hydraulic link in conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date. Likewise, we observe that claim 41 recites that the “hydraulic fluid acts as an incompressible solid so that movement caused by the actuation of said dimensionally responsive member is transmitted through said fluid layer.” Ex. 1001, 20:53–56 (emphases added). Again, the ’791 provisional discloses that the “trapped fluid acts as a solid and transmits the movement of the magnetostrictive material 40 to the needle valve 14, causing it to lift against the needle spring 16.” Id. at 12:5–13:14 (emphases added). We find, based on this description of the hydraulic link, with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, it would act as an incompressible solid. Petitioner does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot reached
“Petitioner does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 13
§ 102 anticipation§ 112 disclosurePatents in suitUS 6,575,138 - Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.Institution deniedPTAB · Jun 20, 2023 · IPR2023-00352 · APJ Carl M Defranco · IPR · Institution
The Board denied institution because the challenged claims are entitled to the provisional’s earlier filing date, making Gottlieb unavailable as prior art for every asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For a patent to claim the benefit of the filing date of its provisional application, the provisional application must comply with the written description requirement of 35 U.S.C. § 112. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To show sufficient written description support, the provisional must reasonably convey to those skilled in the art that the inventor had possession of the later-claimed subject matter as of the provisional’s filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The written description inquiry is a question of fact, and, as such, “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Ariad, 598 F.3d at 1351.” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“The hydraulic link 22 consists of a hydraulic cavity 84 formed by hydraulic chamber 28 and hydraulic chamber cap 86. The cavity 84 is filled with viscous fluid. Within the chamber 28 is located the hydraulic piston part 72 of the needle valve 15. The chamber 28 is fitted around the hydraulic piston 72. O-ring seals 90 are located in the hydraulic chamber cap 86 and in the bottom of the hydraulic chamber 28 to prevent the fluid from leaking out of the cavity 84. The diametrical clearance between the outside diameter of the hydraulic piston 72 and the inside diameter of the hydraulic chamber 28 is extremely small (on the order of 50 to 250 microns). The exact clearance is dependent on the viscosity of the chosen fluid. The hydraulic flow in this clearance . . . is very small. The hydraulic fluid . . . acts as a solid during fast motions, because there is little flow going around the needle piston. Because the actuation occurs suddenly (on the order of 200 μs), the hydraulic fluid between the hydraulic chamber 28 and the needle valve piston 72 does not have the time to flow around the piston 72. Instead, the trapped fluid acts as a solid and transmits the movement of the magnetostrictive material 40 to the needle valve 14, causing it to lift against the needle spring 16. Id. at 12:5–13:14 (emphases added). Reading the ’791 provisional’s description of the hydraulic link in conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date.” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date. Mercedes does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 11
§ 102 anticipation§ 112 disclosurePatents in suitUS 6,298,829 - PTAB · Apr 12, 2023 · IPR2022-01563 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR of claims 1–14 because Petitioner showed a reasonable likelihood that claims 1–14 would have been obvious over Yong and Xavier.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1‒14 based on the ground set forth in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Weighing the arguments and evidence, we determine that Petitioner has met its burden under 35 U.S.C. § 314 of demonstrating a reasonable likelihood that Yong qualifies as prior art. Hulu at 13. As Petitioner asserts, the KIPO logo and the multiple instances of publication number 10-2007-0087811 on Yong’s first page provide some evidence of authenticity. Ex. 1009, 1; Reply to Prelim. Resp. 3. Additionally, KIPO Yong tends to show that Yong constitutes an authentic version of Korean Publication No. 10-2007-0087811. Yong’s and KIPO Yong’s Figures appear substantially the same. Compare Ex. 1009, 42–48, with Ex. 2001, 28–33. Additionally, the content starting on page 2 of Yong, where Patent Owner contends “claims appear to be present,” closely resembles the content starting on page 11 of KIPO Yong, which Patent Owner posits “may be claims.” Prelim. Resp. 22, 29; Ex. 1009, 2–30; Ex. 2001, 11–27. Consistent with Patent Owner’s observations, these portions of Yong and KIPO Yong appear to present claims. Specifically, these sections of Yong and KIPO Yong each appear to present exactly 140 claims. Ex. 1009, 2–30; Ex. 2001, 11–27. These sections share a number of other similarities, also. For example, in both Yong and KIPO Yong, in the midst of Korean characters, what appears to be claim 69 recites “POS.” Ex. 1009, 16; Ex. 2001, 19. Similar commonalities appear numerous places within these portions of Yong and KIPO Yong. Ex. 1009, 2–30; Ex. 2001, 11–27. The similarities between Yong and KIPO Yong tend to show that Yong is an authentic version of Korean Publication No. 10-2007-0087811 and has the same substantive content as KIPO Yong, just formatted and arranged differently. This is not significantly undermined by Patent Owner’s observations about certain differences between the documents, especially in the absence of a translation of KIPO Yong, which would have facilitated comparing the documents’ content. Indeed, considering Patent Owner’s omission of a translation of KIPO Yong, Patent Owner’s complaints of prejudice and “Petitioner’s hide-the-ball tactics” ring hollow. Prelim. Sur-reply 2, 5. Although we agree with Patent Owner that Petitioner has not yet met the requirements of Rule 42.63(b) for the translation of Yong, we do not find it warranted to deny institution on this basis. Instead, we treat Patent’s Owner’s pre-institution arguments that Petitioner fails to comply with Rule 42.63(b) as evidentiary objections. If Patent Owner wishes to preserve its objections, Patent Owner must formally object to Petitioner’s evidence after institution of inter partes review by this Decision.” slip op. at 16
- Parallel petitionsDecided for petitioner
“As discussed above, Petitioner filed four petitions challenging the ’435 patent on the same day, including this proceeding, IPR2022-01563, as well as IPR2022-01528, IPR2022-01561, and IPR2022-01564. In this proceeding, IPR2022-01563, and in IPR2022-01561 and IPR2022-01564, Petitioner challenges claims 1–14 of the ’435 patent over various prior art grounds. Pet. 11; Not. 2. In IPR2022-01528, Petitioner challenges claims 15–19 of the ’435 patent over various prior art grounds. Not. 2. Pursuant to the Board’s Consolidated Trial Practice Guide (Nov. 2019) (“TPG”),3 Petitioner’s Notice provides a ranking of the four petitions in the order in which Petitioner wishes the Board to consider them on the merits and a succinct explanation of the differences between the Petitions. See TPG 59–60; Not. 1–5. Petitioner ranks the instant Petition as “3,” the petition in IPR2022-01528 as “1,” the petition in IPR2022-01561 as “2,” and the petition in IPR2022-01564 as “4.” Not. 2–5. Petitioner, however, contends that “all four Petitions merit institution” because “[a]ll four Petitions present significant material differences which are not redundant and which demonstrate different substantive bases for rendering obvious or for showing anticipation of each of the challenged claims of the ’435 Patent,” and “[d]ue to word count limitations, Petitioner 3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. was not able to present all these grounds in a single petition.” Id. at 1, 3. Petitioner elaborates that 1) the claims of the ’435 Patent comprise over 1,500 words, such that to cover a plurality of grounds in one petition covering all the claims would use at least twenty percent of the 14,000-word petition limit; and 2) Patent Owner has asserted 15 of the 19 claims of the patent in the pending district court litigation (see Ex. 1026). Id. at 2. Patent Owner argues that “the panel should, at most, address the -01528 petition on the merits, as petitioner requested, and discretionarily deny the other three petitions under § 314(a).” Prelim. Resp. 3–4. Regarding the ’435 patent’s claims’ length, Patent Owner argues that “the ’435 Patent claims is indicative of the quality of examination, rather than an excuse for the piling on that Petitioner exhibits in these challenges.” Id. at 6. Under the circumstances presented, where Patent Owner does not dispute Petitioner’s observation that the ’435 patent has very long claims, we conclude it is not unreasonable for Petitioner to file multiple petitions. In our view, even if it were accurate, Patent Owner’s argument that the claims’ “narrowness” reflects quality examination does not detract from Petitioner’s argument that the length of the claims warrants more than one petition. Prelim. Resp. 6.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“3. Discussion In asserting obviousness of claims 1–14 over Yong and Xavier, Petitioner argues that Yong discloses many of the challenged claims’ limitations. Pet. 13–43. For example, Petitioner relies primarily on Yong as allegedly disclosing claim 1’s limitations. Id. at 13–26. Petitioner relies on Xavier as “teach[ing] the use of a session between a mobile phone and se[r]ver in a self-checkout system.” Id. at 15. Petitioner argues that “[h]aving reviewed Xavier, a [person of ordinary skill in the art] would have been motivated to add the session handling of Xavier to Yong.” Id. According to Petitioner, “[a person of ordinary skill in the art] would have understood that a session manager would have been necessary to manage the communications between the mobile communication terminal 100 and the store POS server 200, the commercial transaction server 400 and the payment server 500.” Id. At this stage, aside from the arguments discussed above in Section II.C.1 that we should not consider Yong as prior art, Patent Owner does not dispute the merits of Petitioner’s challenge to claims 1–14. Having reviewed Petitioner’s arguments and evidence, we determine Petitioner has demonstrated a reasonable likelihood of establishing that claims 1–14 would have been obvious over Yong and Xavier. Pet. 1–43.” slip op. at 24
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,803,435 - PTAB · Apr 12, 2023 · IPR2022-01528 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR of claims 15–19 on all petitioned grounds, finding a reasonable likelihood that Yong anticipates claim 15.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 15‒19 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDenied
“We do not agree with Patent Owner’s argument that Petitioner’s parallel filing of four petitions warrants denying all four petitions. Prelim. Resp. 7 (“Petitioner’s abuse of process in filing four petitions justifies discretionary denial of all of the petitions.”). Accordingly, given that Petitioner ranks the instant Petition “1,” we decline to deny institution in this proceeding. Additionally, under the circumstances presented, where Patent Owner does not dispute Petitioner’s observation that the ’435 patent has very long claims, we conclude it is not unreasonable for Petitioner to file multiple petitions. In our view, even if it were accurate, Patent Owner’s argument that the claims’ “narrowness” reflects quality examination does not detract from Petitioner’s argument that the length of the claims warrants more than one petition. Prelim. Resp. 6.” slip op. at 33
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Weighing the arguments and evidence, we determine that Petitioner has met its burden under 35 U.S.C. § 314 of demonstrating a reasonable likelihood that Yong qualifies as prior art. Hulu at 13. As Petitioner asserts, the KIPO logo and the multiple instances of publication number 10-2007-0087811 on Yong’s first page provide some evidence of authenticity. Ex. 1009, 1; Reply to Prelim. Resp. 3.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner contends that [a] person having ordinary skill in the art (“POSITA”) as of the claimed priority date would have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field or equivalent coursework or experience, and one to two years of experience with mobile device applications and retail POS systems. (Shamos ¶ 34.) More education can supplement practical experience and vice versa. (Id.) Pet. 12. Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art. Prelim. Resp. 18. For purposes of deciding whether Petitioner has demonstrated a reasonable likelihood of prevailing, we adopt Petitioner’s definition of a person of ordinary skill in the art, which we find consistent with the ’435 patent and the asserted prior art.” slip op. at 11
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 10,803,435 - PTAB · Apr 11, 2023 · IPR2022-01564 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that Keith anticipates at least claims 1 and 10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1‒14 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Under the circumstances presented, where the priority date of the challenged claims is disputed, we conclude it is not unreasonable for Petitioner to present separate challenges, one of which relies on references that are prior art only if the challenged claims are not entitled to Patent Owner’s claimed priority date, which has yet to be finally determined. See TPG 59 (stating that “a dispute about priority date requiring arguments under multiple prior art references” can be a potential reason for the Board to institute trial on multiple petitions challenging the same patent). Thus, on the present record, we decline to exercise our discretion to deny institution of this Petition on the basis of Petitioner filing multiple petitions.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field or equivalent coursework or experience, and one to two years of experience with mobile device applications and retail POS systems,” also noting that “[m]ore education can supplement practical experience and vice versa.” Pet. 20–21 (citing Ex. 1002 ¶ 34). Patent Owner, at this stage of the proceeding, does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 18. For the purposes of this Decision, we apply Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’435 patent and the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that an express construction of this or any other claim term is not necessary for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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)).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,803,435 - Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentablePTAB · Mar 15, 2023 · PGR2021-00109 · APJ Stephen E Belisle · PGR · Final written decision
Claims 1–12, 15–17, and 21–23 are unpatentable; the revised contingent motion to amend is granted for claim 32 and denied for claims 24–31, 33–35, 38–40, and 44–46.
RulingsFinal written decision- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time” slip op. at 22
- BurdenNot shown unpatentable
“Accordingly, based on the foregoing and the complete record before” slip op. at 38
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“C. Claim Construction We apply the claim construction standard articulated in Phillips v.” slip op. at 23
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteMixed
“persuaded by Petitioner that the limitations “a channel-shaped portion configured to receive the structural component” and “a base configured to receive an end portion of the structural component thereon to support the structural component” would not have informed the skilled artisan, with reasonable certainty, about the scope of the claimed invention. See Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370 (Fed. Cir. 2006) (“When the meaning of the claim would reasonably be understood by persons of ordinary skill when read in light of the specification, the claim is not subject to invalidity upon departure from the protocol of ‘antecedent basis.’”). Accordingly, we conclude that Petitioner” slip op. at 40
Patent outcomesUS 11,021,867 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,021,867 - Twitter, Inc. / Google LLC v. B.E. Technology, L.L.C.Some claims unpatentablePTAB · Sep 1, 2022 · IPR2021-00483 · APJ Miriam L Quinn · IPR · Final written decision
Claims 1–24 and 26–37 are unpatentable, principally under the Guyot-based grounds; claim 25 was not shown unpatentable under Guyot or Robinson.
RulingsFinal written decision- BurdenDecided for petitioner
“review claims 1−37 of U.S. Patent No. 8,769,440 B2 (“the ’440 patent”) owned by B.E. Technology, L.L.C. We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 47.73. For the reasons discussed below, Petitioner has shown by a preponderance of the evidence that claims 1−24 and 26−27of the ’440 patent are unpatentable. And Petitioner has not shown by a preponderance of the evidence that claim 25 is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for patent owner
“have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject, and two to three years of work experience in network-based technologies.” 482 Pet. 10 (citing Houh Decl. ¶¶ 57−61). Patent Owner “only disagrees with Petitioner’s and Dr. Houh’s assessment of the applicable level of skill in the art with respect to its failure to acknowledge that a person of ordinary skill in the art would have a working knowledge of network-based targeted advertising.” PO Resp. 9. We agree with Petitioner’s proffered level or ordinary skill in the art and with Patent Owner’s clarification because the prior art of record is in the field of network-based targeted advertising, and knowledge of such a field would assist a person of ordinary skill in the art in appreciating the tools necessary to implement it. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating that the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown). Accordingly, we adopt Petitioner’s proffered level of ordinary skill in the art with the caveat proposed by Patent Owner that the level of skill includes working knowledge of network-based targeted advertising.” slip op. at 33
- Expert testimonyPetitioner expert discountedDecided for patent owner
“identifier” and Subscriber Data was not presented in the Petition and to the extent it was vaguely alluded to, the extent of that combination was not explained. The claim requires determining the “unique identifier” associated with the computer, which Guyot may be able to perform with “unique proprietary identifier.” But the claim also requires that “the identifier”—not some other piece of information separate and distinct from that identifier— identify information sent from the computer to the one or more servers. The Petition, for the “determining a unique identifier” limitation (limitation 1.3), alludes to Guyot’s “unique proprietary identifier” identifying the computer, and without argument or explanation concludes that it is “used again by the system in selecting an appropriate advertisement to be displayed on the specific computer associated with the user of that computer, as described further in limitation [1.4].” Pet. 19. The supporting testimony from Dr. Houh is verbatim what is asserted in the Petition and offers no explanation for such a conclusion and no support in Guyot for those assertions. Accordingly, we give Dr. Houh’s testimony in this regard no weight. Reviewing the further explanations for “limitation [1.4],” Petitioner again presents the argument that Guyot’s “unique proprietary identifier” is assigned and thus identifies the computer itself. Id. at 21 (citing Ex. 1041, 3:20−21). But in discussing advertisement selection and the information on which that selection is based, Petitioner relies on the Subscriber Data and Subscriber Statistics without explaining how or why Guyot’s unique” slip op. at 48
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“presented by Petitioner concerning the terms “computer’ and “computer user.” Indeed, there is no dispute between the parties that the claim may encompass situations in which a single computer is operated by a single computer user, though the claim could also encompass multiple computers and multiple users. See Reply 1; Sur-reply 1; see also KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (“This court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’”). Accordingly, because the parties’ disputes center around other claim terms, we are not persuaded that the scope of “computer” and “computer user” needs further clarification.” slip op. at 14
Patent outcomesUS 8,769,440 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,769,440
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.