• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring, Inc.Some claims unpatentable
  PTAB · Nov 25, 2025 · PGR2024-00030 · APJ Linda E Horner · PGR · Final written decision

  Claims 17 and 18 are unpatentable under §112(d) for improper dependent form; claims 1–10 and 12–16 were not shown unpatentable on the asserted obviousness grounds.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We do not credit Dr. Anthony’s testimony, which is based on the arbitrary shading in Figure 7 (see Ex. 1002 ¶ 174), that Schröder teaches or suggests limitation 1[d] because it (1) is inconsistent with Petitioner’s reasoning for limitation 1[c], and (2) it is based on an admitted misreading of the embodiment of Schröder’s Figure 5 (see Ex. 1002 ¶ 175). As to the first item, Dr. Anthony states that “a POSITA would have been motivated to place a battery in a part of the cavity that is far from a PCB holding other electrical components because that configuration allows for better thermal management.” Ex. 1002, para. 175. The problem with this statement is that Petitioner relies on Schröder’s teaching that inlay 12, i.e., the alleged PCB, could include “other electrical components,” such as a battery to support its position that Schröder suggests placing a battery between the ring halves. See, e.g., Pet. Reply 2 (pointing to Dr. Mercier’s depo testimony that inlay 12 with “other components” is inserted between ring halves); id. at 3 (relying on Schröder’s teaching about placing components in depressions on inlay 12). So, Petitioner earlier asserts for the battery limitation 1[c] that Schröder teaches or suggests putting a battery on inlay 12 inside the ring halves, but then for limitation 1[d], Dr. Anthony testifies that a POSITA would place the battery “far” away from the inlay 12 (i.e., the alleged PCB). These positions are inconsistent.” slip op. at 25

  • Skill levelSkill level board ownOther

    “at least a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, or equivalent experience, and at least two years’ experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. Pet. 8 (citing Ex. 1002 ¶¶ 18–22). Petitioner also contends that a person of ordinary skill would have been “familiar with, for example, sensor system design and signal processing” and that “[a] higher level of education or skill might make up for less experience, and vice versa.” Id. Patent Owner agrees with Petitioner’s proposed definition of a person of ordinary skill in the art. Resp. 26. We adopt this uncontested definition of the level of ordinary skill in the art. This definition is supported by the record and consistent with the disclosure in the ’178 patent and the references cited in the Petition.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Patent Owner indicates that in the related ITC proceeding involving the ’178 patent, the Administrative Law Judge (ALJ) adopted three constructions agreed-upon by the parties in that proceeding8 and also construed two disputed terms.9 Resp. 26–27 (citing Ex. 2016, 5, 6, 14). Patent Owner agrees with Petitioner, however, that no terms need to be construed to decide the issues raised in the Petition. Id. at 27. We reviewed the constructions adopted by the ITC. Ex. 2016, 5, 6, 14. 8 In the ITC proceeding, the ALJ adopted the parties’ agreed-upon constructions that: (1) the preamble of claim 1 [a finger-worn wearable ring device] is limiting; (2) [positioned/configured to fit] within a “cavity” is [positioned/configured to fit] within a “hollow space”; and (3) [the internal housing component] “coupled with” [the external housing component] is [the internal housing component] “connected with” [the external housing component]. Ex. 2016, 5. 9 In the ITC proceeding, the ALJ construed the claims such that: (1) the internal and external housing components of claims 1, 12, and 17 enclose space and do not necessarily exclude potting material; and (2) “circumferential,” as recited in claims 1, 17, and 18, does not require a closed shape. Ex. 2016, 14, 17. These constructions are not germane to the issues we need to decide to resolve this proceeding. Thus, we agree that no explicit claim construction is necessary for this decision. To the extent the parties’ arguments raise any implicit issues of claim construction, we address those issues within the context in which they are raised in our analysis below.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “The record supports Patent Owner’s argument that Mestas’s batteries are much too large to fit within a ring form factor, and “Mestas’s batteries, layout, and other components . . . would have to be scaled down 5 to 10 times to be appropriately sized for a finger worn ring.” Resp. 64 (internal quotation marks omitted) (citing Dr. Anthony’s cross-examination testimony at Ex. 2021, 313:12). Moreover, we do not credit Dr. Anthony’s testimony that miniaturization of the battery would have been “trivial to implement.” Ex. 1002 ¶ 242. Dr. Anthony admitted on cross-examination that it would not have been within the level of skill of a person having ordinary skill in the art to design a smaller version of Mestas’s battery, and that such a person would need to procure a battery of the appropriate size and specifications for implementation in a finger-ring from a battery manufacturer. Ex. 2021, 315:9–318:9. Yet Dr. Anthony had not ascertained, for purposes of his testimony, whether there was a battery available in 2013 that was appropriate to fit within the inlay space of the modified version of Schröder’s finger-ring that he and Petitioner allege would have been obvious to one of skill in the art at that time. Id. at 321:5–10. Further, we credit Dr. Mercier’s testimony that Dr. Anthony’s testimony fails to consider the differences in power requirements between Mestas and Schröder or to account for the constraints of such a substantially smaller form factor in Schröder’s finger-ring as compared to Mestas’s wrist device. Ex. 2018 ¶¶ 159–160. Although large curved batteries suitable for use in a wrist band or other larger wearable device, such as shown in Mestas, were known at the time of the ’178 patent, we also have evidence that prior art “finger ring wearables up to the ’178 patent had used ‘coin’ type batteries.” Id. at 66 (citing Ex. 2018 ¶ 161). We credit Dr. Mercier’s testimony that a person having ordinary skill in the art would look to a coin type battery for the necessary power requirements of Schröder’s device. Ex. 2018 ¶ 161. Indeed, this testimony is consistent with the other art of record that consistently shows the use of flat batteries in finger-ring devices, often stacked above and protruding from the general ring shape of the device. See, e.g., Ex. 1005 (Niwa), Figs. 22, 28; Ex. 2025 (Asada ’701 patent), Fig. 4; Ex. 1035 (Rhee), Figs. 7-1, 8-1, 8-2; Ex. 1037 (Asada article), Fig. 9; Ex. 1034 (Asada ’199 patent), Fig. 2; Ex. 1028 (Kimura), Fig. 24; Ex. 2018 ¶¶ 61–70. In fact, Oura’s first-generation ring design, released in 2015, used a Superbowl ring-type design, with the battery and other components mounted on top of the ring. Ex. 2034; Ex. 2018 ¶ 71. Based on these findings, Petitioner has not met its burden to show by a preponderance of the evidence that a person having ordinary skill in the art would have been led to modify Schröder’s finger-ring to place a curved battery between the internal and external housing components in light of the teachings in Mestas. Thus, Petitioner has not met its burden to show by a preponderance of the evidence that dependent claim 3 of the ’178 patent is unpatentable over Schröder and Mestas.” slip op. at 38

  Patent outcomesUS 11,868,178 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 11,868,178
• Jpmorgan Chase Bank, N.A. v. Identitii LimitedInstitution denied
  PTAB · Aug 26, 2024 · IPR2024-00593 · APJ Meredith C Petravick · IPR · Institution

  Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “We determine that the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing that claims 1–2 and 4–20 are unpatentable over Kennedy and Kurani-816. 2. Ground 2 — Kennedy, Kurani-816, and Yago Claim 3 depends from claim 1. We determine that Petitioner has not met its burden to show a reasonable likelihood that claim 3 would have been obvious over Kennedy, Kurani-816, and Yago. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”).” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “We agree with Patent Owner. We are not persuaded by Petitioner that it would have been obvious to a POSITA, based on the disclosures of Kennedy and Kurani-816, to store a digital title in memory 228 of processing server 102 for the purpose of record keeping. See Ex. 2013 ¶ 91. Kennedy discloses that processing server 102 includes a memory 228 for storing data used to perform its function, such as encryption keys, algorithms, and application programs. Ex. 1033 ¶ 46. Kennedy does not disclose memory 228 being a document store for record keeping of transaction messages or other transaction data. See id. In Kennedy, a private blockchain 206 stores data record 208 containing the transaction data. See e.g., id. ¶¶ 48–51; Fig. 2. Kurani-816 discloses digital titles that are specific to an asset and not to a particular financial transaction. Ex. 1034, 3:13–15. The digital titles are stored in a database at a digital title company and provided to the seller or buyer during a transaction. See e.g., id. at 6:34–9:7. Kurani-816 does not disclose transmitting the digital title to a financial transaction processing server, like processing server 102. Id. Thus, neither Kennedy nor Kurani-816 teaches transmitting documents pertaining to a financial transaction and a token corresponding to a financial transaction to identify the document to a first document store, as required by claim elements 1 and 6. For the reasons above, we are not persuaded by Petitioner that claim 1 would have been obvious to a POSITA over Kennedy and Kurani-816.” slip op. at 19

  • Parallel petitionsNot reached

    “Because we have denied institution in IPR2024-00590 and deny institution in this proceeding based on the patentability merits, we do not need to reach the issue of whether both Petitions should be instituted.” slip op. at 3

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached

    “patent applications, including one filed on August 14, 2015. Ex. 1001, code (30). Petitioner asserts that the ’413 patent is not entitled to priority to August 14, 2015 because the provisional applications do not provide written description support for certain claim terms. Pet. 6–15. Patent Owner disputes Petitioner’s assertion. Prelim. Resp. 20, n.7. As both Kennedy and Kurani-816 were filed after August 14, 2015 (see Ex. 1033, code (22); Ex. 1034, code (22)), if the ’413 patent is entitled to priority to August 14, 2015, then neither Kennedy nor Kurani-816 is available as prior art. We do not need to reach this issue because, regardless of whether Kennedy and Kurani-816 are available as prior art, Petitioner has not shown a reasonable likelihood that it would have been obvious to a POSITA to combine Kennedy and Kurani-816 as proposed by Petitioner.” slip op. at 5

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,984,413
• I4f Licensing NV v. Vilox ABInstitution denied
  PTAB · Aug 21, 2024 · IPR2024-00602 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were anticipated by Miller or obvious over Miller alone or Miller and Roy.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). For the reasons explained below, we do not institute an inter partes review.” slip op. at 2

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

    “Considering all of the arguments and evidence, we agree with Patent Owner that Petitioner insufficiently supports its position that Miller discloses a locking recess with a curved horizontal locking surface. Petitioner does not cite any text in Miller that discloses a locking recess with a curved horizontal locking surface. E.g., Pet. 7–8, 14–23. Instead, Petitioner relies on Miller’s Figure 3 as allegedly showing a curved horizontal locking surface. E.g., id. at 15–18, 21–23. We do not find that Miller’s Figure 3 shows a locking recess with a curved horizontal locking surface in the location identified by Petitioner, i.e., the location of the curved red arrow that Petitioner added to Miller’s Figure 3. E.g., Pet. 15, 22. Even assuming that this portion of Miller’s drawing shows a very subtle rise (which we do not find), it does not show clearly a curve, as opposed to, for example, a slightly inclined flat surface. Moreover, we agree with Patent Owner that, at the point of Petitioner’s curved red arrow, Figure 3’s overlapping representation of the tongue’s lower surface and the groove’s upper surface prevents distinguishing one from the other. Prelim. Resp. 45 (“In Figure 3, the lines merge so that no conclusion can reasonably be made by a [person of ordinary skill in the art] as to whether a locking recess is present in the groove or not.”). Accordingly, Figure 3 does not allow discerning a curve in the groove’s upper surface at the point identified by Petitioner.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Additionally, Petitioner does not provide a persuasive reason that a person of ordinary skill in the art would have had to configure Miller’s panel with a curved horizontal locking surface, in addition to an inclined horizontal locking surface, as required by independent claim 1. Pet. 34–39; Prelim. Resp. 54. In support of its argument that it was well-known to use curved locking surfaces, Petitioner provides a vague string cite of evidence that dubiously includes Miller (which has not been shown to disclose a curved horizontal locking surface). Pet. 37 (citing Ex. 1002 ¶¶ 25–26, 56; Ex. 1006, Figs. 2–4, 9, and 10 and associated description; Ex. 1004; Ex. 1006; Ex. 1005; Ex. 1009; Ex. 1010; Ex. 1011; Ex. 1012; Ex. 1013; Ex. 1014). Moreover, to the extent Petitioner is correct that it was well-known and easy to configure a panel with a curved locking surface, that may show that a person of ordinary skill in the art could have added a curved horizontal locking surface to Miller’s panel. But that does not show sufficiently that such a modification would have been obvious, as it does not demonstrate why a person of ordinary skill in the art would have modified Miller’s cladding panel to add a curved horizontal locking surface. See Belden v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (stating that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”) (citing InTouch Techs., Inc. v. VGo Commc’ns, Inc., 751 F.3d 1327, 1351–1352 (Fed. Cir. 2014)). Additionally, to the extent that Petitioner is correct that a person of ordinary skill in the art would have recognized a strength benefit of having two locking recesses, that does not explain why a person of ordinary skill in the art would have added a curved locking surface, as opposed to, for example, another substantially planar locking surface like the one at Miller’s contact point 42. Pet. 36–39; Ex. 1004, 5:19–34. And Petitioner does not identify, much less substantiate, any other reason that a person of ordinary skill in the art would have had for combining a curved locking surface with an inclined horizontal locking surface in Miller’s cladding panel. Pet. 36–39. Because Petitioner has not persuasively addressed claim 1’s requirement that its dual locking recesses include one with a curved horizontal locking surface, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that independent claim 1 would have been obvious over Miller. E.g., Pet. 7–8, 34–39. Additionally, this deficiency is not remedied in Petitioner’s challenges to dependent claims 2–15 based on Miller. E.g., Pet. 34, 40–50. Accordingly, Petitioner does not establish a reasonable likelihood of prevailing on its position that dependent claims 2–15 would have been obvious over Miller.” slip op. at 23

  § 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,421,425
• Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 11,021,867
• Twitter, Inc. / Google LLC v. B.E. Technology, L.L.C.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,769,440
• Askeladden L.L.C. v. Mobile Equity Corp.Institution denied
  PTAB · Jun 1, 2022 · IPR2022-00380 · APJ Hyun J Jung · IPR · Institution

  Institution was denied because Petitioner failed to show a reasonable likelihood of prevailing on any challenged claim 1–19.

  RulingsInstitution decision

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

    “In inter partes reviews, the petitioner bears the burden of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To institute an inter partes review, a petitioner must show “a reasonable likelihood” of prevailing with respect to at least one of the challenged claims. 35 U.S.C. § 314.” slip op. at 7

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner asserts that one of ordinary skill in the art “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, and systems.” Pet. 17 (citing Ex. 1002 ¶¶ 82–84). For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s proposed level of ordinary skill and does not propose its own level of ordinary skill. Prelim. Resp. 30 n.24. We adopt Petitioner’s asserted level of ordinary skill only to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. This level of skill in the art is consistent with the disclosure of the ’236 patent and the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (Citing Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner proposes interpretations for “mobile device,” “point-of-sale terminal,” “mobile enablement center,” “service data point,” and “register.” Pet. 10–16. Patent Owner responds that “[t]he Board does not need to expressly construe any claim elements to deny the Petition.” Prelim. Resp. 10. likelihood of prevailing does not depend on a particular interpretation for any claim term, we determine that no claim term requires express interpretation. 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 9

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

    “asserted merchant identifier in Krasnyansky, the site’s creditID, identifies a merchant terminal, as required by claim 1. As Patent Owner points out, Krasnyansky expressly discloses that creditID identifies an account in a database, not a terminal. Prelim. Resp. 31–36. In particular, Krasnyansky teaches that “both the Wallet and the seller-site must present a unique identifier to the Payserver,” the identifiers “are the key[s] to all accounts in the Payserver’s database,” “each account has a pair of identifiers, both uniquely identifying the account in the database,” “[o]ne of the two identifiers is used in all account-debiting operations,” the identifiers “are seller-site requires the debitID of the Wallet and the creditID of the site.” Ex. 1005, 9:10–18; see also id. at 36:28–37:8 (describing similarly). Petitioner appears to argue that identifying an account in a database would also identify the merchant and merchant terminal. See Pet. 24–26. Petitioner, however, does not point to any portion of Krasnyansky that supports a site’s creditID further identifying a Web site or the computer hosting the Web site. See id. Krasnyansky, instead, only provides express support for the site’s creditID identifying the account. See Ex. 1005, 9:10–18. Krasnyansky also indicates that a site nickname, rather than the site’s creditID, identifies the Web site in one embodiment (see id. at 15:20–22), which further undermines Petitioner’s argument that identifying the account would identify the Web site and the computer running and hosting a Web site. Furthermore, Krasnyansky describes using site nickname and creditID to complete the transaction without any need for identifying the computer running and hosting debit-site 400. See id. at 15:12–16:22. Petitioner does not address these portions of Krasnyansky. See Pet. 24–26. Petitioner, thus, does not argue sufficiently that Krasnyansky requires identifying the computer running and hosting a site to complete any transaction. See id.” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,589,236
• Askeladden L.L.C. v. Mobile Equity Corp.Institution denied
  PTAB · Jun 1, 2022 · IPR2022-00379 · APJ Hyun J Jung · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, chiefly due to the missing terminal-identifier showing.

  RulingsInstitution decision

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

    “instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims.” slip op. at 2

  • Skill levelSkill level board ownOther

    “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, and industry practices and standards for point-of-sale and payment processing systems.” Pet. 16 (citing Ex. 1002 ¶¶ 87–89). For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s proposed level of ordinary skill and does not propose its own level of ordinary skill. Prelim. Resp. 30 n.24. determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. This level of skill in the art is consistent with the disclosure of the ’058 patent and the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (Citing Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Because determining whether Petitioner shows a reasonable likelihood of prevailing does not depend on a particular interpretation for any claim term, we determine that no claim term requires express interpretation. 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.’”) (Fed. Cir. 1999)). As discussed below, even if we applied Petitioner’s proposed interpretation of “terminal,” we would come to the same determination.” slip op. at 10

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

    “asserted terminal identifier in Krasnyansky, the site’s creditID, identifies a terminal, as required by claim 1. As Patent Owner points out, Krasnyansky expressly discloses that creditID identifies an account in a database, not a terminal. Prelim. Resp. 31–34. In particular, Krasnyansky teaches that “both the Wallet and the seller-site must present a unique identifier to the Payserver,” the identifiers “are the key[s] to all accounts in the Payserver’s database,” “each account has a pair of identifiers, both uniquely identifying the account in the database,” “[o]ne of the two identifiers is used in all account-debiting operations,” the identifiers “are called debitID and creditID,” and a “payment transaction from a Wallet to a seller-site requires see also id. at 36:28–37:8 (describing similarly). Petitioner appears to suggest that identifying an account in a database would also identify the seller’s Web site and, in turn, identify the computer running and hosting the seller’s Web site. See Pet. 24–26. Petitioner, however, does not point to any portion of Krasnyansky that supports a site’s creditID further identifying the Web site or the computer hosting the Web site. See id. Krasnyansky, instead, only provides express support for the site’s creditID identifying the account. See Ex. 1006, 9:10–18. Krasnyansky also indicates that a site nickname, rather than the site’s creditID, identifies the Web site in one embodiment (see id. at 15:20–22), which further undermines Petitioner’s argument that identifying the account would identify the computer running and hosting a Web site. Furthermore, Krasnyansky describes using site nickname and creditID to complete the transaction without any need for identifying the computer running and hosting debit-site 400. See id. at 15:12–16:22. Petitioner does not address these portions of Krasnyansky. See Pet. 24–26. Petitioner, thus, does not argue sufficiently that Krasnyansky requires identifying the computer running and hosting a site to complete any transaction. See id. Even if we adopted Petitioner’s proposed interpretation of “terminal” to mean “any type of computer which enables the input of information” so that “terminal identifier” would identify such a computer, Petitioner does not explain adequately how a site’s creditID identifies any computer when Krasnyansky expressly describes that creditID identifies an account in a database. See Pet. 24–26; Ex. 1002 ¶¶ 111–117.” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,535,058
• 3shape A/S / 3shape Inc. v. Align Technology, Inc.Institution denied
  PTAB · Jan 26, 2022 · IPR2021-01241 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable under any asserted ground.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any 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). After considering the information presented in the Petition and the Preliminary Response, we determine that the reasonable likelihood standard is not met. Accordingly, we deny institution of an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s definition of a POSA. See, generally Prelim. Resp. We find that Petitioner’s definition of a POSA is consistent with the scope and content of the ’936 Patent and the asserted prior art, and we apply this definition for purposes of this Decision.” slip op. at 7

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

    “We agree with Patent Owner that the claim language provides a temporal relationship between “first scan data” and “second scan data.” We determine that, in claims 1 and 9, “first scan data” pertains to an earlier scan than “second scan data,” and “second scan data” includes surface data of a physically changed portion of the intra-oral cavity, where the physical change occurs after the first scan and before the second scan. Our interpretation is based on the plain language of claims 1 and 9, which recite that “second scan data” includes “surface data of a physically changed portion of the patient’s intraoral cavity.” The claim language as a whole makes clear that a physical change occurs between the first scan and the second scan. Petitioner implicitly agrees with this interpretation by characterizing its arguments as showing that “a dentist or orthodontist makes a physical change to the tooth between scans.” Pet. 12 (emphasis added). In other words, claims 1 and 9 require the following order of steps: first scan, physical change, second scan.” slip op. at 8

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

    “For the reasons discussed above, we determine that claim 1 requires a temporal relationship between “first scan data” and “second scan data.” More specifically, we determine that “first scan data” pertains to an earlier scan than “second scan data,” and “second scan data” includes surface data of a physically changed portion of the intra-oral cavity, where the physical change occurs after the first scan and before the second scan. Petitioner contends that “Rubbert’s original scan of the patient’s teeth (without brackets) satisfies the ‘second’ scan data limitation, and the monitoring scan of the patient’s teeth (with brackets) satisfies the ‘first’ scan data limitation, with the teeth without brackets being a ‘physically changed portion’ relative to the teeth with brackets.” Pet. 28. Petitioner’s contention does not satisfy our claim construction for “first scan data” and “second scan data.” Although Petitioner contends that “first scan data” is disclosed by Rubbert’s “monitoring scan of the patient’s teeth (with brackets)” (id.), Petitioner does not show that Rubbert’s monitoring scan is an earlier scan than the one that produces “second scan data.” Instead, Petitioner contends that “second scan data” is disclosed by Rubbert’s earlier scan—an original scan of the patient’s teeth without brackets retrieved from a stored patient record. Pet. 26–28. The temporal relationship between “first scan data” and “second scan data,” as identified by Petitioner in Rubbert, is the reverse of the temporal relationship required by claim 1. According to Petitioner’s contentions, Rubbert’s “second scan data” pertains to an earlier scan than “first scan data.” As properly construed, claim 1 requires the opposite. Furthermore, Petitioner does not show that Rubbert discloses “surface data of a physically changed portion of the patient’s intra-oral cavity,” as recited in claim 1. Petitioner contends that Rubbert discloses this limitation “because the second scan data (without a bracket) is a physically changed portion in the oral cavity relative to the first scan data (with a bracket).” Pet. 28. Petitioner’s contention does not satisfy our claim construction. Petitioner does not identify any disclosure in Rubbert of a physical change that takes place after the alleged first scan (with a bracket) and before the alleged second scan (without a bracket). Rubbert does not disclose physically removing a bracket from the patient’s tooth and then rescanning the tooth after removal of the bracket. Petitioner does not assert otherwise. Although Petitioner asserts that “installing a bracket” is a “physical” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,791,936
• Avery Dennison Rfid Company / Avery Dennison Retail Information Services LLC v. Evrythng LimitedInstituted
  PTAB · Jan 25, 2022 · IPR2021-01259 · APJ Sharon Fenick · IPR · Institution

  The Board instituted IPR on claims 1–29, finding a reasonable likelihood of success on the Lim anticipation and Fitzpatrick–Herzig obviousness grounds, among others.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Determination on Discretion to Institute We consider the above factors and take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. After considering the factors outlined in the precedential order in Fintiv, we decline to exercise our discretion to deny institution under § 314(a).” slip op. at 15

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’321 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision on Institution, we adopt Petitioner’s proposed level of ordinary skill in the art. This level of skill comports with the teachings of the ’321 patent and the asserted prior art.” slip op. at 18

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “and “rules database” (recited in claims 1, 22, and 29). Pet. 18–23. Patent Owner does not address these proposed constructions and specifically notes its belief that, for the purposes of institution, no claim construction is necessary. Prelim. Resp. 6–7. After considering the parties positions and the record at this time, for the purposes of institution, we determine no claim construction is required. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,794,321
• 3shape A/S / 3shape Inc. v. Align Technology, Inc.Institution denied
  PTAB · Jan 11, 2022 · IPR2021-01120 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 were obvious over Babayoff ’529 and Atiya.

  RulingsInstitution decision

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

    “2. Summary Regarding Obviousness Challenge Because Patent Owner’s arguments and evidence persuasively rebut Petitioner’s assertion that the Ancestral Applications do not provide written description support for the challenged claims, Petitioner has not shown adequately that Babayoff ’529 is prior art to the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 would have been obvious over Babayoff ’529 and Atiya. III. CONCLUSION For the foregoing reasons, we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the patent ’151 patent. Accordingly, we do not institute an inter partes review. IV. ORDER For the reasons given, it is: ORDERED that the Petition is denied; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art usually is evidenced by the references themselves. 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). As Petitioner’s description of a person of ordinary skill is supported by expert testimony and appears consistent with the technology at issue, for purposes of this Decision, we apply Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 13

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

    “In response, Patent Owner objects that “Petitioners’ interpretation of the claims as requiring the use of unfiltered white light to determine depth data is plainly at odds with the claims themselves.” Prelim. Resp. 4. Patent Owner argues that “[t]his interpretation leads to a contradiction between the independent and dependent claims: the same light illuminating the intraoral structure would have to be simultaneously filtered (as recited in the dependent claims) and unfiltered (as Petitioners presume to be required by the independent claims).” Id. Patent Owner also suggests the possibility that the Petition’s arguments mean “the independent claims encompass using unfiltered white light to obtain depth data.” Id. at 7. We do understand the Petition’s arguments to mean that the independent claims encompass using unfiltered white light to illuminate an intraoral structure, not that the independent claims require using white light to illuminate an intraoral structure. And we agree with that understanding of the independent claims’ scope. Consistent with Patent Owner’s explanation, if we construed the independent claims to require using unfiltered white light to illuminate an intraoral structure, that would conflict directly with the dependent claims’ express requirement to use colored filters.” slip op. at 15

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

    “2. Summary Regarding Obviousness Challenge Because Patent Owner’s arguments and evidence persuasively rebut Petitioner’s assertion that the Ancestral Applications do not provide written description support for the challenged claims, Petitioner has not shown adequately that Babayoff ’529 is prior art to the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 would have been obvious over Babayoff ’529 and Atiya.” slip op. at 26

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 10,750,151

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.