- Reboot Labs LLC v. Lpi, Inc.Institution deniedPTAB · May 18, 2023 · IPR2023-00134 · APJ Cynthia L Murphy · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were anticipated or obvious over the asserted prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R § 42.4(a). Petitioner bears the burden of demonstrating this reasonable likelihood. 35 U.S.C. § 314(a). slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“A. water heating device The challenged claims all require a water heating device. Ex. 1001, 12:28, 13:1, 13:48, 14:31. A person of ordinary skill would understand that a “water heating device” is a device that actually heats water, as opposed to, for example, a device that merely interacts with already heated water. This claim construction aligns with the disclosure of the ’161 Patent. See, e.g., Ex. 1001, 6:39–45.6 Consequently, the claim term “water heating device” would not be met by a device that merely interacts with already hot water.” slip op. at 6
- Skill levelDecided for patent owner
“V. LEVEL OF ORDINARY SKILL IN THE ART Petitioner’s prior art arguments all hinge, one way or another, on what would have been known, understood, envisioned, or obvious to a person of ordinary skill in the art. See, e.g., Pet. 4, 12, 27, 28, 29, 31, 32, 33. Yet Petitioner does not discuss, much less provide us with a proposed definition of, the level of ordinary skill in the art. Petitioner’s omission of any discussion whatsoever about the level of ordinary skill in the art, alone, makes us question the likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Although the prior art can be used to establish the level of ordinary skill, here, Petitioner does not give any indication that its position is based upon a level of ordinary skill established in this manner. This, at best, introduces conjecture into Petitioner’s prior art arguments because, as indicated above, they all hinge on what would have been known, understood, envisioned, or obvious to a person of ordinary skill in the art.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“In the circuit diagrammed in Petitioner’s annotated drawing, water is conveyed through heating device 46, through cross-feed line 80, into cold tub chamber 14, out of cold tub chamber 14, through cooling device 67, into tub cold chamber 14, through weir 19, into hot water tub 16, out of hot water tub 16, and back to heating device 46. Thus, in Petitioner’s diagrammed circuit, water is conveyed to both the heating device 46 and the cooling device 67 only by passing through tub chambers 14/16 therebetween. As discussed above in Section IV, the specific coupled-in-series arrangement required by the challenged claims is not met by an arrangement in which water is conveyed to both the heating device and the cooling device only by passing through the tub therebetween. Consequently, Hargrove does not disclose the specific coupled-in-series arrangement required by the challenged claims. Thus, Petitioner has not shown a reasonable likelihood that it would prevail in showing that independent claims 1 and 15 are anticipated by Hargrove.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,712,161 - PTAB · May 17, 2023 · IPR2023-00146 · APJ Josiah C Cocks · IPR · Institution
The Board instituted review of claims 1–7 and 24–31 on all petition grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the record before us, and having not yet heard from Patent Owner, we determine that Petitioner, for purposes of instituting an inter partes review, has adequately accounted for all the features required by claims 1–7 and 24–31. See Pet. 27–73. III. CONCLUSION Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As Mr. Zatkovich explains, for purposes of the ’792 Patent, a POSITA[7] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, credit card and smartcard payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 15 (citing (Ex. 1002 ¶¶ 101–103); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“and 24. Petitioner contends that, to the extent “smartlink module” is limiting, a person of ordinary skill in the art would understand that it means “a device that includes (1) a processor, (2) a wireless data channel to wirelessly communicate transaction data between said processor and a third party terminal, and (3) a second data channel electronically coupled to a mobile communication device.” Pet. 12 (citing Ex. 1002 ¶¶ 69–70).8 Petitioner also contends that such meaning is consistent with the disclosure of the ’792 patent. Id. at 12–13. For purposes of this Decision, we adopt Petitioner’s proposal as to the meaning of “smartlink module.” Petition also contends that a person of ordinary skill in the art “would understand the ‘module’ [in dependent claims 2–7 and 25–31] to be referring to the ‘smartlink module’ [in their respective independent claims].” Pet. 13 (citing Ex. 1002 ¶¶ 68, 78). We also accept that understanding.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. Remaining claim terms We conclude that, for purposes of deciding whether to institute an inter partes review, it is unnecessary to make explicit the meaning of any other claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we 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)).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,792 - Laltitude LLC, Dba Picasso Tiles v. Altus Holdings, Inc.All claims unpatentablePTAB · May 10, 2023 · IPR2022-00155 · APJ Bart A Gerstenblith · IPR · Final written decision
The sole challenged claim was held unpatentable as anticipated by Zhao US and Zhao CN; the Board did not reach the three obviousness grounds.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“same as that used for infringement, except that for anticipation, the patented design is compared with the alleged anticipatory reference rather than an accused design. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1238, 1240 (Fed. Cir. 2009). The ordinary observer test for design patent infringement was first enunciated by the Supreme Court in Gorham Co. v. White, 81 U.S. 511 (1871), as follows: [I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. Id. at 528. The ordinary observer test requires the fact finder to consider all of the ornamental features illustrated in the figures that are visible at any time in the “normal use” lifetime of the accused product, i.e., “from the completion of manufacture or assembly until the ultimate destruction, loss, or disappearance of the article.” Int’l Seaway, 589 F.3d at 1241. Further, while the ordinary observer test requires consideration of the overall prior art and claimed designs, [t]he mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Just as “minor differences between a patented design and an accused article’s design cannot, and shall not, prevent a finding of infringement” . . . so too minor differences cannot prevent a finding of anticipation. Id. at 1243 (citation omitted) (quoting Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (1984)).” slip op. at 8
Patent outcomesUS D719,138 unpatentable§ 102 anticipation - Sercomm Corp. v. Atlas Global Technologies, LLCInstitution deniedPTAB · Apr 12, 2023 · IPR2022-01519 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution for claims 1–19 because Petitioner did not show Chun was prior art, defeating both proposed obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a). Petitioner’s burden includes demonstrating that the evidence on which it relies constitutes prior art to the subject patent” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“We find the above-noted arguments persuasive. They account for what is actually set forth in the Korean provisionals, are supported by the testimony of Dr. Psounis, and are unaddressed by Petitioner.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) at the time of the alleged invention would have a bachelor’s degree in electrical engineering, computer science, computer engineering, or a similar discipline, and either a master’s degree in one of these fields of study or a minimum of two years of experience working in the wireless communications industry. An individual with an advanced degree in a relevant field would require less experience in the design of wireless communication systems and methods.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2020); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Neither party offers any specific construction for any claim term. See Pet. 7; Prelim. Resp. 11. For purposes of this Decision on Institution, we have given all claim terms their ordinary and customary meaning and determine that it is not necessary to make that meaning explicit for any term.” slip op. at 7
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 9,912,513 - Sercomm Corporation v. Atlas Global Technologies, LLCInstitution deniedPTAB · Apr 11, 2023 · IPR2022-01520 · APJ Stephen E Belisle · IPR · Institution
The Board denied institution because Sercomm did not show a reasonable likelihood of proving claims 1–9 and 11–19 unpatentable under any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and related briefing, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 1–9 and 11–19 of the ’919 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, based on the record before us, we deny institution of an inter partes review of the ’919 patent.” slip op. at 2
- Skill levelSkill level board ownOther
“Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Although slight differences exist in the formulation of such skill level between the parties, we discern no meaningful differences because none of those differences would affect the outcome of our analysis. Considering the subject matter of the ’919 patent, the background technical field, the prior art, and parties’ proposed definitions of the skilled artisan, we apply the level of skill cumulatively set forth above by the parties, which is consistent with testimony of both parties’ experts (Ex. 1003 ¶ 41; Ex. 2003 ¶ 48).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningPrior construction adoptedDecided for patent owner
“‘number of the one or more station information fields in the NDPA’ found earlier in the claims by explaining that this number is the number of station information fields in the NDPA, rather than, for example, the number of a particular station information field.” Prelim. Resp. 21. Patent Owner argues “Petitioner’s construction simply removes the term ‘cardinality’ from this claim element,” and “introduces ambiguity into the claims by suggesting that the number could be either the number of station information fields or the number (or index) of the station information field directed to a station,” which is the very ambiguity “the patentee sought to avoid” during prosecution.” Id. at 20–22; see id. at 21–27. We agree with Patent Owner and find Petitioner’s arguments unpersuasive. See, e.g., Ex. 1002, 159 (Examiner stating, “The applicant proposed amending the claim to further define the process of determining a number and further defining the number as a cardinality wherein the cardinality is a number of elements in a set or group.” (emphasis added)).6” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner and find Petitioner’s arguments unpersuasive. In particular, we find Petitioner does not show sufficiently, let alone with particularity, how or why 802.11ac allegedly discloses (explicitly or inherently) the combined features of “determining” that the number of elements in the set of STA Info fields “is one,” and “in response to” that determination, transmitting first CSI feedback in response to receiving the NDP. Instead, as noted by Patent Owner (Prelim. Resp. 32), Petitioner merely contends that, because 802.11ac’s VHT SU beamforming can be performed with a single station, 802.11ac allegedly discloses sending feedback in response to determining that the number of the one or more STA Info fields in the NDPA is one. We find Petitioner’s reasoning here unpersuasive, and agree with Patent Owner and its expert that Petitioner does not explain, sufficiently and with particularity, how any disclosure in 802.11ac describes channel sounding feedback being sent or received in response to determining the number of STA Info fields. See Prelim. Resp. 31–33; Ex. 2003 ¶¶ 104–109; see also Prelim. Resp. 28–31. For the foregoing reasons, we are not persuaded that the cited evidence adequately supports Petitioner’s contention that 802.11ac discloses limitation 1.D, namely “in response to determining that the number of the one or more station information fields in the NDPA is one, transmitting first Channel State Information (CSI) feedback in response to receiving the NDP,” as recited in independent claim 1.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,020,919 - Tiktok Inc. v. Advanced Coding Technologies LLCInstitution deniedPTAB · Mar 27, 2023 · IPR2022-01546 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7 were unpatentable as obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we deny the Petition and do not institute an inter partes review of the ’154 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner, supported by Dr. Lett’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have been a person with a working knowledge of digital video and audio technologies.” Pet. 4 (citing Ex. 1003 ¶ 22). Petitioner contends that a person of ordinary skill in the art would have had a Bachelor of Science, a Bachelor of Applied Science, or a Bachelor of Engineering degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to digital video and audio technologies. Id. Alternatively, Petitioner contends, “the person could have also had a Master of Science, Master of Applied Science, or Master of Engineering degree in a relevant academic discipline with less than a year of related work experience in the same discipline.” Id. at 5 (citing Ex. 1003 ¶ 22). Patent Owner states that “[f]or the purpose of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 13. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’154 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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)). Petitioner and Patent Owner agree that no claim terms require an express construction at this stage of the proceeding. Pet. 14; Prelim. Resp. 13. Accordingly, we need not construe any claim terms expressly because none are in dispute.7 See Vivid Techs., 200 F.3d at 803.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Third, as noted above, Petitioner also argues that it would have been obvious to one of ordinary skill in the art that elapsed playback time would be indicated by time stamps included in the audio content. Pet. 15–16. But, on this aspect of Petitioner’s contention, neither Petitioner nor Mr. Lett provides any reason why one of ordinary skill in the art would have found it obvious to include a time stamp in Lindroos’ audio data. Id.; Ex. 1003 ¶ 35. As reflected in our discussion above, Mr. Lett’s testimony regarding Exhibits 1010–1013 is unsupported by the references cited. Thus, Petitioner’s assertion that this limitation was “well known” and “would have been obvious” to one of ordinary skill in the art is not supported on the record before us. Accordingly, Petitioner fails to demonstrate on the present 13 Mr. Lett states that he “refer[s] to these other publications . . . merely for purposes of corroborating this common background knowledge recognizable to a [person of ordinary skill in the art] at the time.” Ex. 1003 ¶ 35. record that it was “well known and would have been obvious” “for elapsed playback time to be indicated by time stamps included in the audio content.” Pet. 15–16 (citations omitted).14” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,615,154 - PTAB · Mar 14, 2023 · IPR2022-01442 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR on claims 1–30 on all grounds in the Petition, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“incorporates by reference Miltenberger’s teachings (see Prelim. Resp. 16; Ex. 1004, 23:35–37), the record before us simply does not convey that it is the entirety, or even the majority, of any incorporated content that forms the basis of the Petition’s proposed grounds of unpatentability based on Bryson.13 We agree with Petitioner that Miltenberger seemingly does not describe content associated with the development of “player communities,” or, in connection with those communities, the presentation of only legal gaming options to a player based on device location. See, e.g., Pet. 88 n.13. It is Petitioner’s view that such disclosure is distinctly present in Bryson and is offered to account for limitations of the claims that Patent Owner expressly represented were absent from Miltenberger’s disclosure. See, e.g., Ex. 1002, 242–243, 132. It is clear, in our view, that Petitioner relies on content in Bryson that goes beyond Miltenberger’s teachings, and that such content is offered to present new prior art teachings and new argument that previously were not presented to the Office. That Bryson and Miltenberger may share some other content, as emphasized by Patent Owner (see, e.g., Prelim. Resp. 19–21), simply does not give rise to a determination that 13 There is no indication in the record that Bryson previously was before the Examiner during prosecution of the application that matured as the ’220 patent. Bryson’s additional disclosure should not now be considered on its own merit in evaluating the patentability of claims of the ’220 patent.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 14
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“constituting an “algorithm” that delineates the particular structure of the claimed “gaming option creation module,” it is difficult, on this record, to agree with that determination. Indeed, although the Specification of the ’220 patent provides description of the operation and configuration of “gaming option creation module 150” (see, e.g., Ex. 1001, Figs. 1, 2; 7:46– 49; 10:13–17), the entirety of the content of the ’220 patent identified by Patent Owner omits any reference to gaming option creation module 150. Furthermore, the ’220 patent specifically links the gaming option creation module to components readily identified as structural, such as “special-purpose hardware (e.g., one or more ASICS, PLDs, FPGAs, or the like)” and “programmable circuitry (e.g., one or more microprocessors, microcontrollers, or the like)” (see, e.g., Ex. 1001, 8:61–9:5) that form no part of Patent Owner’s assertion as to the corresponding structure of the claimed gaming option creation module. The omission of any assessment of the description of any gaming option creation module (e.g., component 150) in the ’220 patent, or the readily identifiable structural components attributed to such a module, casts doubt on the correctness of Patent Owner’s claim construction position. On the record before us, we are not satisfied that Patent Owner has established the corresponding structure of the claimed gaming option creation module. We are mindful of Patent Owner’s argument that Petitioner’s proffered constructions of the Module Terms are deficient on the merits, because Petitioner “fails to properly address the algorithms” per Federal Circuit and PTAB case law concerning means-plus-function limitations, “and instead merely identifies structure and generic functions.” Prelim. Resp. 60 (emphasis added) (citing Pet. 32–35). We, however, also do not agree with Patent Owner, at this time, that Petitioner’s constructions are offered entirely “absent any explanation” and provide “no clarity.” See Prelim. Resp. 56–60. Nevertheless, we do not need to address these arguments at the present time. They might lead to a subset of the claims of the ’220 patent surviving the present proceeding, but do not affect the patentability of several other claims at issue in the present proceeding, including independent claims 1, 8, 15, and 30. See 35 U.S.C. § 314(a) (authorizing institution of inter partes review if there is a reasonable likelihood Petitioner would prevail with respect to at least one of the challenged claims). Thus, we leave resolution of these issues raised by Patent Owner to a full trial on the merits, which will afford Petitioner the opportunity to defend the Petition against Patent Owner’s arguments, if Patent Owner opts to maintain them in its post-institution Papers.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“35 U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). When applying that standard, we interpret the claim language as it would have been understood by one of ordinary skill in the art in light of the specification. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279–80 (Fed. Cir. 2017). Thus, we give claim terms their ordinary and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,497,220 - PTAB · Mar 14, 2023 · IPR2022-01445 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR on claims 1–29 on all petitioned grounds, finding a reasonable likelihood that DraftKings would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Miltenberger (see, e.g., Prelim. Resp. 19), the record before us simply does not convey that it is the entirety, or even the majority, of any shared content that forms the basis of the Petition’s proposed grounds of unpatentability based on Bryson.11 We agree with Petitioner that Miltenberger seemingly does not describe content associated with the development of “player communities,” or, in connection with those communities, the presentation of only legal gaming options to a player based on device location. See, e.g., Pet. 77 n.17. It is Petitioner’s view that such disclosure is distinctly present in Bryson and is offered to account for limitations of the claims that Patent Owner expressly represented were absent from Miltenberger’s disclosure. See, e.g., Ex. 10065 242–243, 132. It is clear, in our view, that Petitioner relies on content in Bryson that goes beyond Miltenberger’s teachings, and that such content is offered to present new prior art teachings and new argument that previously were not presented to the Office. That Bryson and Miltenberger may share some other content simply does not give rise to a determination that Bryson’s additional disclosure should not now be considered on its own merit in evaluating the patentability of claims of the ’131 patent. Furthermore, because the record readily conveys that Petitioner’s reliance on, and discussion of, Bryson does not constitute the same or substantially the same art or argument previously presented to the office, there was no need for Petitioner to show how “the USPTO previously erred” 11 There is no indication in the record that Bryson previously was before the Examiner during prosecution of the applications that matured as the ’220 patent and the ’131 patent. as urged by Patent Owner. See Prelim. Resp. 23–24. That is not an inquiry that is germane to the situation at hand. We have considered Patent Owner’s arguments pertaining to its request for our exercise of discretionary denial pursuant to § 325(d). We do not agree with Patent Owner that Petitioner’s Petition, and in particular its reliance on Bryson for its proposed grounds, is underpinned by prior art or argument that were previously presented to the Office. Accordingly, our inquiry into the two-part framework of Advanced Bionics need not go further than consideration of the first part of the framework in our determination that discretionary denial under § 325(d) is not appropriate here. 2. Conclusion — 325(d) We do not exercise our discretion to deny institution of an inter partes review based on 35 U.S.C. §325(d).12” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“On the record before us, we are not satisfied that Patent Owner has established the corresponding structure of the claimed gaming option creation module. We are mindful of Patent Owner’s argument that Petitioner’s proffered constructions of the “means for” and “module” terms are deficient on the merits, because Petitioner “fails to properly address the algorithms” per Federal Circuit and PTAB case law concerning means-plus-function limitations, “and instead merely references generic functions with no analysis.” Prelim. Resp. 53 (emphasis added) (citing Pet. 22–55). We, however, also do not agree with Patent Owner, at this time, that Petitioner’s constructions are offered entirely “absent any explanation” and provide “no clarity.” See id. at 50–51. Nevertheless, we do not need to address these arguments at the present time. They might lead to a subset of the claims of the ’131 patent surviving the present proceeding, but do not affect the patentability of several other claims at issue in the present proceeding, including independent claims 1 and 8. See 35 U.S.C. § 314(a) (authorizing institution of inter partes review if there is a reasonable likelihood Petitioner would prevail with respect to at least one of the challenged claims). Thus, we leave resolution of these issues raised by Patent Owner to a full trial on the merits, which will afford Petitioner the opportunity to defend the Petition against Patent Owner’s arguments, if Patent Owner opts to maintain them in its post-institution Papers.” slip op. at 19
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“constituting an “algorithm” that delineates the particular structure of the claimed “gaming option creation module,” it is difficult, on this record, to agree with that determination. Indeed, although the Specification of the ’131 patent provides description of the operation and configuration of “gaming option creation module 150” (see, e.g., Ex. 1001, Figs. 1, 2; 7:50– 53; 10:16–19), the entirety of the content of the ’131 patent identified by Patent Owner omits any reference to gaming option creation module 150. Furthermore, the ’131 patent specifically links the gaming option creation module to components readily identified as structural, such as “special-purpose hardware (e.g., one or more ASICS, PLDs, FPGAs, or the like)” and “programmable circuitry (e.g., one or more microprocessors, microcontrollers, or the like)” (see, e.g., Ex. 1001, 9:3–9) that form no part of Patent Owner’s assertion as to the corresponding structure of the claimed gaming option creation module. The omission of any assessment of the description of any gaming option creation module (e.g., component 150) in the ’131 patent, or the readily identifiable structural components attributed to such a module, casts doubt on the correctness of Patent Owner’s claim construction position. On the record before us, we are not satisfied that Patent Owner has established the corresponding structure of the claimed gaming option creation module. We are mindful of Patent Owner’s argument that Petitioner’s proffered constructions of the “means for” and “module” terms are deficient on the merits, because Petitioner “fails to properly address the algorithms” per Federal Circuit and PTAB case law concerning means-plus-function limitations, “and instead merely references generic functions with no analysis.” Prelim. Resp. 53 (emphasis added) (citing Pet. 22–55). We, however, also do not agree with Patent Owner, at this time, that Petitioner’s constructions are offered entirely “absent any explanation” and provide “no clarity.” See id. at 50–51. Nevertheless, we do not need to address these arguments at the present time. They might lead to a subset of the claims of the ’131 patent surviving the present proceeding, but do not affect the patentability of several other claims at issue in the present proceeding, including independent claims 1 and 8. See 35 U.S.C. § 314(a) (authorizing institution of inter partes review if there is a reasonable likelihood Petitioner would prevail with respect to at least one of the challenged claims). Thus, we leave resolution of these issues raised by Patent Owner to a full trial on the merits, which will afford Petitioner the opportunity to defend the Petition against Patent Owner’s arguments, if Patent Owner opts to maintain them in its post-institution Papers.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,024,131 - PTAB · Mar 14, 2023 · IPR2022-01448 · APJ Frances L Ippolito · IPR · Institution
The Board instituted IPR on claims 1–29 on all petitioned grounds, finding a reasonable likelihood that DraftKings would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” Having considered the arguments and evidence presented in the parties’ briefs, we institute inter partes review for the reasons described below.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“(see Ex. 1004, 23:35–37), the preliminary record does not convey that Miltenberger’s disclosure is the entirety, or even the majority, of any incorporated content on which Petitioner relies for formulating its proposed grounds of unpatentability based on Bryson.9 We agree with Petitioner that Miltenberger seemingly does not describe content associated with the 9 There is no indication in the record that Bryson previously was before the Examiner. development of “player communities,” or, in connection with those communities, the presentation of only legal gaming options to a player based on device location. See, e.g., Pet. 81 n.7. It is Petitioner’s view that such disclosure is distinctly present in Bryson and is offered to account for limitations of the claims that Patent Owner expressly represented were absent from Miltenberger’s disclosure. See, e.g., Ex. 1064, 57. It is clear, in our view, that Petitioner relies on content in Bryson that goes beyond Miltenberger’s teachings, and that such content is offered to present new prior art teachings and new argument that previously were not advanced to the Office. That Bryson and Miltenberger may share some other content, as emphasized by Patent Owner (see, e.g., Prelim. Resp. 15–17), simply does give rise to a determination that Bryson’s additional disclosure should not now be considered on its own merit in evaluating the patentability of claims of the ’657 patent. Furthermore, because the record readily conveys that Petitioner’s reliance on, and discussion of, Bryson does not constitute the same or substantially the same art or argument previously presented to the office, there was no need for Petitioner to show how “the USPTO previously erred” as urged by Patent Owner. See Prelim. Resp. 20. That is not an inquiry that is germane to the situation at hand. We have considered Patent Owner’s arguments pertaining to its request for our exercise of discretion to deny institution pursuant to § 325(d). We do not agree with Patent Owner that Petitioner’s Petition, and, in particular, its reliance on Bryson for its proposed grounds, is underpinned by prior art or argument that were previously presented to the Office. Accordingly, our inquiry into the two-part framework of Advanced Bionics need not go further than consideration of the first-part of the framework in our determination that discretionary denial under § 325(d) is not appropriate here.” slip op. at 43
- Other 314aInstitution denied discretionary otherDenied
“failure to comply with Rules 100(b) and 104(b)(3). See Prelim. Resp. 48–49 (“Due to the high number of terms Petitioner opted to deal with in this improper manner (8 terms total), the Board should ‘evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system (see 35 U.S.C. § 316(b)), the entire petition should be denied under 35 U.S.C. § 314(a).’”). As discussed, we disagree with Patent Owner that the claim construction provided in the Petition fails to comply with our rules. Supra Sect. II.C. Thus, we decline to deny the Petition on this basis.” slip op. at 45
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“We beg to differ. Petitioner asserts that a server performs each of the above modules’ functionalities because the ’657 patent teaches that the “tournament administration module” is within the administration server. Pet. 21 (citing Ex. 1003 ¶ 116; Ex. 1001, Fig. 1). The Petition relies on Mr. Nicely’s testimony, which provides, among other things, that pursuant to § 112 ¶ 6, the foregoing structure of each claimed “module” must include an algorithm that performs the corresponding function described in the specification of the ’657 Patent . . . I therefore provide the claim chart below identifying the portions of the specification of the ‘657 Patent that describe the claimed functions of each recited “module”: Ex. 1003 ¶ 117 (emphasis added). Thus, we disagree with Patent Owner that (1) “Petitioner’s articulation provides no clarity,” (2) the Petition has failed to identify an algorithm, or (3) the Petition does not satisfy our rules. See Prelim. Resp. 47, 49–53. This is because the Petition clearly identifies and explains the basis for Petitioner’s proposed construction by citation to Mr. Nicely’s testimony and to the Specification, including citations to that which Petitioner asserts is the algorithm performed by the server.6 Pet. 19–21. Whether Patent Owner agrees with Petitioner’s construction is a separate issue that may be addressed during trial after institution. Again, we note, Patent Owner has not disputed Petitioner’s construction of “tournament administration module” other than to assert the Petition fails to comply with Rules 100(b) and 104(b)(3). Prelim. Resp. 22. Thus, we determine that, for the purposes of institution, Petitioner’s proposed construction of “tournament administration module” satisfies our rules. Moreover, we agree with Petitioner’s proposed construction, which is preliminarily supported by Petitioner’s citations to the Specification. Ex. 1001, 4:14–31, 13:28–15:30, Fig. 1; see Pet. 19–21. The parties are encouraged to develop the record on any claim construction disputes after institution.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,614,657 - PTAB · Mar 14, 2023 · IPR2022-01446 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR on claims 1–30 and all petitioned grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“an inter partes review, we “may take into account whether, and reject the petition . . . because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d) (emphasis added). When applying § 325(d), we utilize a two-part framework. See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). First, we determine “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, at 8. In this first part, we consider: the similarities and material differences between the asserted art and the prior art involved during examination; the cumulative nature of the asserted art and the prior art evaluated during examination; and the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art. Id. at 10 (citing factors (a), (b), and (d) of Becton, Dickinson & Co. v. B. Braun” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“However, limitation 12[d] recites simply that at least one processor “create[s] a list of player gaming options for a player at a current location.” Ex. 1001, 17:14–17. Claim 12 does not contain either term “dynamically” or “customized,” nor does the claim contain an arguably analogous term for either term, so far as we can tell from the present record. See id. at 17:14–20. The same is true for the other three independent claims of the ’205 patent. See id. at 15:50–58 (claim 1), 17:50–55 (claim 19), 18:55–63 (claim 28). Thus, Patent Owner’s arguments attempting to distinguish Bryson from the independent claims of the ’205 patent on the basis that Bryson does not provide a dynamic or a customized creation of player gaming options rest on unclaimed limitations.” slip op. at 26
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not agree with Patent Owner’s position. The mere fact that Mr. Nicely’s declaration testimony is largely carried forward into the Petition’s analysis does not, by itself, mean that his testimony is too conclusory to support institution of review, as Patent Owner’s sparse argument suggests. We have reviewed and considered the proffered testimony from both witnesses as part of reaching the various conclusions provided below. See 37 C.F.R. § 42.108(c) (2021) (Board considers “information presented in the petition” and “a patent owner preliminary response . . . including any testimonial evidence” when deciding whether to institute review) (as amended at PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence, 85 Fed. Reg. 79129 (Dec. 9, 2020)).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ positions appear to be substantively equivalent. For purposes of this Decision, and for completeness, we adopt Petitioner’s assessment as reasonable and consistent with the prior art and the ’205 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). We note, however, that, as each party’s assessment is substantively equivalent, our determinations as a part of this Decision would be the same were we to expressly adopt Patent Owner’s assessment.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,978,205
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.