- Fluidmaster, Inc. v. Danco, Inc.All claims unpatentablePTAB · Mar 11, 2026 · IPR2024-00635 · APJ Meredith C Petravick · IPR · Final written decision
The majority held claims 1–14 unpatentable under §103 over Guoxin, Ho, and the Quick Connection Art; one judge dissented as to claims 8, 9, 12, and 13.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“A person of ordinary skill in the art (“POSITA”) with respect to the subject matter of the ’698 patent at the time of the priority date, March 11, 2004, would have had an undergraduate degree in mechanical engineering, or other technical training in product design or equivalent work experience. This person would also possess at least one year of experience in developing and/or evaluating mechanical aspects of fluid systems. I consider myself a person of ordinary skill in the art under this definition. Ex. 1004 ¶ 28. Patent Owner argues: A POSITA in the field to which the ’698 Patent is directed would have had at least a Bachelor of Science degree in mechanical engineering or a related field or, as a substitute, at least two years of work or research experience in the design or development of toilet products, parts, and accessories. PO Resp. 6. We adopt Patent Owner’s proposed definition of a POSITA, as it is consistent with the ’698 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, we see no material difference between the level of skill proposed by Patent Owner and that proposed by Petitioner and Dr. Cameron such that our determinations would be the same under either proposed level of skill.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“Patent Owner asserts that, because each of the Flow Limitations relate to water flow through the bowl fill valve, these limitations require adjusting the flow rate of water exiting the flow valve. PO Resp. 15–17 (citing Ex. 2013 ¶ 97); See also PO Sur-Reply 7. Petitioner responds that “the claim language of the ’698 Patent discusses adjusting the water flow, not specifically the ‘flow rate.’” Pet. Reply 13. We are not persuaded by Patent Owner, and the conclusory testimony of Mr. Jobin (Ex. 2013 ¶ 97), that because the Flow Limitations “relate” to water flow through the bowl fill valve, that this necessarily means that the flow rate must be adjusted. As Petitioner points out, neither the term “flowrate” nor any similar term appears in any of the Flow Limitations. Thus, the plain language of the Flow Limitations requires that, contrary to Patent Owner’s position, the claim limitation should not be restricted to adjustments to “flow rate.”” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner argues that Limitations 8B and 12B are directed to the configuration or structure of the bowl fill valve outlet port. Pet. Reply 2–4. According to Petitioner, because Limitations 8B and 12B do recite an overflow tube, the overflow tube is not separately claimed and is recited solely to define the function of the outlet port on the bowl fill valve. Id. at 3. Petitioner, thus, argues that an overflow tube is not separately claimed as a structural element, and that, to meet Limitations 8B and 12B, it is sufficient to show that the prior art discloses a bowl fill valve with an outlet port that is configured to attach directly to a tube that provides water from the outlet port to an overflow tube. Id. at 4. In contrast, Patent Owner argues that Limitations 8B and 12B separately claim the overflow tube, and that Petitioner must show that the prior art discloses a tube that transfers water from the bowl fill valve outlet port to the toilet tank overflow tube. PO Resp. 10–11; PO Sur-reply 2–3. We disagree with Patent Owner, because claims 8 and 12, on their face, require “bowl fill valve outlet port,” but do not require or recite an “overflow tube” as an element of the claimed “bowl fill valve.” When a structure is claimed as “configured to” perform a particular function, it generally requires a structure that is designed to perform the particular function claimed, i.e., it requires more than the mere capability of performing that function. See Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (claim language including the phrase “adapted to” is to be construed consistent with “configured to” language and requires that the structure must be “designed or configured to accomplish the specified objective, not simply that [it] can be made to serve that purpose.”); see also In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014). The plain language of Limitations 8B and 12B is clearly directed to the configuration of the bowl fill valve outlet port, in that these limitations recite “a bowl fill valve outlet port configured to.”8 The recited function is “attach directly to a tube that provides water from the bowl fill valve outlet port to an overflow tube.” The overflow tube is recited as part of the function in a clause identifying the tube to which the bowl fill valve outlet port is configured to attached — “that provides water from the bowl fill valve outlet port to an overflow tube.” The overflow tube, thus, is recited as part of the function defining the required structure of the bowl fill outlet port and is not separately claimed.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“1. Petitioner’s Contentions Petitioner contends that the combination of Guoxin, Ho, and the Quick Connection Art teaches all of the limitations of claims 1–14 and provides a mapping showing where each claim limitation is found in the prior art. Pet. 21–59. We have reviewed the Petition’s mapping and determine that the Petition sufficiently shows that each limitation of claims 1–14 is disclosed by the combination of Guoxin, Ho, and the Quick Connection Art. Further, we have reviewed Petitioner’s rationale for combining the prior art and determine that the Petition sufficiently shows that it would have been obvious to a POSITA to combine Guoxin, Ho, and the Quick Connection Art.” slip op. at 23
Patent outcomesUS 10,934,698 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,934,698 - Tommy John, Inc. v. Pakage Apparel, Inc.All claims unpatentablePTAB · Feb 12, 2026 · IPR2024-01163 · APJ Robert J Silverman · IPR · Final written decision
The Board held claims 1–13, 15, and 16 unpatentable as obvious under § 103 over the identified combinations of Kitsch, Brocks, and Carrillo.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Accordingly, for purposes of this Decision, we adopt Petitioner’s” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“21; 4:1:13–22. Accordingly, Kitsch and Brocks have similar goals, with respect to formation of a secure pouch for containing the genitals, for which each reference discloses a distinct technical solution. Thus, a POSITA would have regarded the application of Brocks’ familiar and effective gathering technique to Kitsch’s side panels as a viable approach for improving a supportive pouch, and would have expected such combination of teachings to achieve the structural benefit used in Brocks. See Pet. 25–27 (citing, inter alia, Ex. 1005 ¶¶ 68–72). In other words, a POSITA would have had a reasonable expectation that the combination of Kitsch and Brocks, as discussed above, would result in what is recited in limitation 1[g].” slip op. at 44
Patent outcomesUS 10,834,974 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,834,974 - Provisur Technologies, Inc. v. Weber Food Technology GmbHAll claims unpatentablePTAB · May 28, 2025 · IPR2024-00235 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–6, 8, 10, and 14–16 are unpatentable as anticipated by Young and obvious over Young and Norrie; the Johnson and Belk ground was not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Provisur proposes that one of ordinary skill in the art would have had: (1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working as an engineer (or similar role) on food processing and/or packaging systems (or in a similar field); or (2) at least seven years of experience working as an engineer (or similar role) on food processing and/or packaging systems (or in a similar field). Pet. 12. Weber does not contest Provisur’s framing of the level of ordinary skill in the art. See generally PO Resp. There being no dispute, we adopt Provisur’s definition of the level of skill in the art.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Provisur construes the claim terms “according to their plain and ordinary meanings as understood by a [person of ordinary skill in the art] in view of the specification and prosecution history” and posits that “[n]o terms require an explicit construction to resolve the unpatentability controversy between the parties here.” Pet. 13. Weber appears to agree, stating in the related district court action that “most of [its] patent claims are plain and ordinary . . . [t]hey’re not difficult or complex claims or claim terms.” Ex. 3 US 5,514,032, issued May 7, 1996 (Ex. 1004, “Young”). 4 US 4,979,269, issued Dec. 25, 1990 (Ex. 1005, “Norrie”). 5 US 6,929,540 B2, issued Aug. 16, 2005 (Ex. 1006, “Johnson”). 6 US 6,198,834 B1, issued Mar. 6, 2001 (Ex. 1007, “Belk”). 1028, 5. This being the case, we do not find the need to expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (confirming that the Board need not construe claim terms where their construction is not material to the dispute).” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“without first determining how much fat existed to begin with, i.e., prior to the side of meat being trimmed. But, as Provisur correctly notes, Weber ignores what one skilled in the art reasonably would have understood from reading Young’s disclosure as a whole. See Pet. 30–36 (citing Ex. 1003 ¶¶ 104–106, 109–112); Pet. Reply 2–12. When that is done, one skilled in the art would have understood that a necessary premise of Young’s determination of the thickness of fat to remain on the loin is knowing the thickness of the fat to begin with, which Young’s imaging system 190 and imaging processing routine 240 determine by first analyzing a series of “fat/lean separation lines” and “edge lines” in the side of meat being trimmed. Pet. 30–32 (citing Ex. 1004, 17:34–62, 18:33–56, 22:53–24:38, Figs. 2, 13); Pet. Reply 3–7 (citing portions of same evidence). More specifically, as described in Young (and articulated by Provisur), the side of meat is placed fat side down on a product support, i.e., platen 20. See Ex. 1004, 7:16–21, Figs. 1, 2. Using several cameras—top plan camera 196, end view camera 197, and fat line camera 198—Young’s imaging system 190 acquires multiple images of the side of meat from various angles and under various lighting conditions to “provide image data regarding each side of [meat].” See id. at 17:34–18:56. That image data is then used by Young’s image processing routine 240 to generate a series of demarcation lines on the side of meat, including: (1) fat/lean separation lines (representing the interface between the loin meat and the fat layer along top, side, and end views of the meat product; and (2) edge lines (representing lines along the outer surface of the meat product). See id. at 22:53–23:67, Figs. 10, 13 (Blocks 242, 246, 250, 254). In addition, “a plurality of points (preferably 20) are generated for each of the fat/lean separation and edge lines using known pattern matching routines.” Id. at 23:28–30, Fig. 13 (Blocks 244, 248, 252, 256); see also id. at 23:61–63 (essentially same). The fat/lean separation and edge lines (and points therein) generated by Young’s image processing routine 240 are then used to calculate certain dimensions and characteristics of the side of meat, such as height, length, and width. Id. at 24:10–22, Fig. 13 (Block 258). As Provisur’s expert credibly testifies, one skilled in the art would have understood that the dimension from the fat/lean separation line to the edge line along the outer surface represents the thickness of fat cover on the side of meat, i.e., before the fat is trimmed. See Ex. 1003 ¶ 106. Insofar as how that dimension is used, Young states that controller 172 uses “dynamic (real time) image data” of the fat/lean separation and edge lines “to dynamically modify the cutting profile of the loin knife assembly 100 so that the assembly follows a fixed distance from the separation line to provide the optimum fat cover for the loin.” Ex. 1004, 18:32–45; see also id. at 17:48–52 (describing “real time processor” for “image processing routines”). Notably, according to Young, the “fixed distance” represents the “desired” thickness of fat that remains on the loin, after trimming, and “sufficiently keeps the loin from drying out, but doesn’t make the loin look too fat,” although “[o]ther fat thicknesses may be desired in the alternative.” Id. at 20:60–66; see also id. at 10:39–42 (“Through control of the knife blade along several axes, assembly 100 preferably produces an optimum separation between loin and belly, with a desired fat covering left on the loin.” (emphases added)). Because the desired thickness of fat cover is what remains on the loin” slip op. at 9
- Strike new argumentNew argument consideredDecided for patent owner
“argument that Weber considers vital to its dispute of Provisur’s showing for the claimed fat thickness determination. During oral hearing, Weber repeatedly argued that Provisur changed theories midstream, i.e., between the time of the petition and the hearing. See Hrg. Tr. 22:18–24:47; see also id. at 31:14–22, 33:8–18, 34:16–20, 49:17–50:15, 54:16–56:25 (repeating same argument). More specifically, according to Weber, Provisur originally relied only on image data from Young’s “top view” camera as processed in “block 246” of Young’s image processing routine 240 when showing how Young meets the claimed fat thickness determination, whereas now Provisur relies on image data from Young’s “end view” cameras as processed in “Block 254.” Compare PO Sur-Reply 3–6 (focusing on Young’s “top view camera” in “block 246”), with Hrg. Tr. 27:4–16 (“[Block] 246, which is what they relied on, is processing images from the top-view camera in Young’s system. It is generating lines from the top-view camera in Young’s system. What they are newly trying to rely on today, for the first time, is Block 254 that is discussed toward the bottom of column 23 in Young, and that analyzes different images from a different camera. It is the end camera. It generates different lines. It demonstrates an end fat/lean line and an end edge line. Prior to today’s hearing, neither Petitioner, nor its expert, had ever discussed Block 254. You will not find a single reference to 254 in their papers, nor have they discussed the end edge line. It is completely new today. It finds absolutely no support in the record.” (emphases added)). We disagree with Weber’s contention. As shown and described in the petition, Provisur relies on more than simply Young’s “top view” camera and “block 246.” See Pet. 29–31. Rather, in its petition, Provisur annotates Young’s Figure 2 to show that image data from all three cameras of “imaging system 190”—“top plan camera 196, end view camera 197, [and] fat line camera 198”—play a role in the determination of fat thickness.8 Id. at 30. Moreover, Provisur cites the entire process depicted in “Figure 13” and described in columns “22:53–24:38” of Young as critical to the determination. Id. at 31. Those cited portions of Young involve not only the analysis of fat/lean and edge lines from “top view” images (block 246), but also the analysis of fat/lean and edge lines from “end view” images (blocks 250 and 254). See Ex. 1004, 23:12–24:13. In other words, Provisur’s showing for the claimed fat thickness determination is based on Young’s collective analysis of all those images. Indeed, Provisur’s expert confirms as much when confronted by Weber on cross-examination— Q. How does [Young] use the other cameras to identify that fat/lean separation line? A. Again, this is a -- this is a three-dimensional product that’s not regular, and all the views basically are needed to be able to describe that complex three-dimensional shape, so that the knife will be able to cut at that -- at that line, offset by whatever desired thickness there is, on that three-dimensional shape. Ex. 2006, 25:15–27:19 (emphasis added). 8 Indeed, contrary to Weber’s assertion, Provisur highlights “fat lean separation camera 198,” not top view camera 196, as most critical to the determination of fat thickness. Pet. 31. In the end, we reject the notion that Provisur changed theories” slip op. at 12
Patent outcomesUS 8,529,321 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,529,321 - Foursquare Labs, Inc. v. Boardactive CorporationAll claims unpatentablePTAB · Nov 27, 2024 · IPR2023-00918 · APJ Robert J Silverman · IPR · Final written decision
Claims 1–29 are unpatentable: claims 1–27 under the Adharapurapu (Alcatel) and Kerr obviousness ground, and claims 28–29 under the Adharapurapu (Alcatel) anticipation ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Our Institution Decision addressed the matter of the appropriate level of ordinary skill, in view of the Petition and the Preliminary Response, as follows: The parties’ descriptions of the level of ordinary skill at the time of the invention do not appear to differ in any material way that would affect this Decision. However, at this stage of the proceeding, it is unclear whether it would be proper to require Patent Owner’s proposed requirement of “three years of experience working with digital advertising and geofencing.” Prelim. Resp. 10–11. Accordingly, for the purposes of this [Institution] Decision, we adopt Petitioner’s description of the relevant level of skill in the art, because it appears to be consistent with the level of skill reflected in the ’620 patent and asserted prior art. Inst. Dec. 16. Patent Owner’s Response endorses the determination presented in the Institution Decision. PO Resp. 2. Petitioner does not address our initial determination in its Reply. See generally Pet. Reply. Accordingly, consistent with our Institution Decision, in this Final Written Decision, we employ Petitioner’s description of the relevant level of skill in the art. C. Claim Interpretation” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“The Specification of the ’620 patent supports the understanding that a “consumer” is “a user or person,” per Patent Owner’s proposal (PO Resp. 11). See Ex. 1001, 8:36–38 (“The AdDrop™ may require the consumer to be one of the first few people to input an answer to a question to win the promotion.”) However, Patent Owner’s further proposed requirement — i.e., that a “consumer” be someone “to whom an advertisement may be sent” — would cloud, rather than clarify, the term’s meaning. PO Resp. 11 (emphasis added). For instance, under Patent Owner’s construction, it is not clear if “consumers” require access to the cellular network or Internet in order to be sent advertisements. Further, Patent Owner’s proposed construction would not assist in resolving any issue in this proceeding, contrary to our ambition to construe claim terms “only to the extent necessary to resolve the controversy.” Vivid Techs., 200 F.3d at 803. Moreover, the role of the term “consumer,” in the ’620 patent’s claims, is based upon the relationship of the “consumer” to particular actions and instrumentalities, e.g., associated “media content,” “profile data,” or a “device.” See, e.g., Ex. 1001, 37:57, 66–67, 38:15. In view of the foregoing, we do not adopt Patent Owner’s proposed construction that requires a “consumer” to be a person “to whom an advertisement may be sent.” See PO Resp. 11 (emphasis added). D. Prior Art References” slip op. at 15
- Strike new argumentNew argument disregardedDecided for petitioner
“As an initial matter, such a new argument that is introduced in a Sur- reply is improper. See 37 C.F.R. § 42.23(b) (“A sur-reply may only respond to arguments raised in the corresponding reply.”); Consolidated Trial Practice Guide10 74 (Nov. 2019) (“While replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered. The Board is not required to attempt to sort proper from improper portions of the reply or surreply.”); Hulu, LLC v. SITO Mobile R&D IP, LLC, IPR2021-00158, Paper 34 at 55 (PTAB Apr. 15, 2022). In addition, Patent Owner’s new “geolocation” argument is founded on attorney argument, without adequate support in record evidence, and is contradicted by the unchallenged testimony of Dr. Goldberg. See Ex. 2002 ¶¶ 29–66 (discussing terrestrial location technologies), 175–195 (discussing the disclosure of “geolocation” features in the Adharapurapu (Alcatel) reference).” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Yet, Patent Owner does not address Petitioner’s stated reasons (quoted above) for combining teachings of Adharapurapu (Alcatel) and Kerr, regarding the “registering asset data” features of limitation 1(a) (including its subparts) — reasons that are supported by the unchallenged testimony of Dr. Goldberg. See Pet. 50–51 (citing Ex. 1002 ¶¶ 196–197). Still further, Patent Owner does not address Petitioner’s other reasons for combining teachings of Adharapurapu (Alcatel) and Kerr, concerning the recited “content interaction layer” and “consumer tracking layer” features of limitation 1(b) (including its subparts): , POSITA would have found it obvious to incorporate Kerr’s user content interaction features into Alcatel to provide user subjective information/feedback for improving the accuracy, reducing noise, and enhancing efficiency in tailored communications. Pet. 43–44. Petitioner’s discussion of these reasons for combining the references’ teachings is supported by additional unrebutted testimony of Dr. Goldberg. Ex. 1002 ¶ 180. Having considered the parties’ arguments and the evidence of record (including the unchallenged testimony of Dr. Goldberg), we determine that Petitioner has sufficiently shown that the combination of Adharapurapu (Alcatel) and Kerr teach or suggest limitation 1(a) (including all subparts).” slip op. at 23
Patent outcomesUS 10,621,620 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,621,620 - Foursquare Labs, Inc. v. Boardactive CorporationAll claims unpatentablePTAB · Nov 27, 2024 · IPR2023-00919 · APJ Michael L Woods · IPR · Final written decision
Claims 1–23 are unpatentable: claims 13–19 were anticipated by Felt, and claims 1–23 would have been obvious over Adharapurapu and Felt.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Accordingly, we deny Petitioner’s motion to exclude in its entirety. IV. PATENT OWNER’s MOTION TO EXCLUDE Patent Owner moves to exclude Exhibits 1002 and 1009—the” slip op. at 84
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Accordingly, the Petition fails to establish that Felt satisfies” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“uncontroverted testimony of Dr. Goldberg, and the reasoning to combine the references, Petitioner has shown by a preponderance of the evidence that claims 1–23 would have been obvious over the combination of Adharapurapu and Felt (Ground 6). Petitioner has also shown, by a preponderance of the evidence, that Felt anticipates claims 13–19 (Ground 1), renders obvious claims 13–19 (Ground 2), and that claims 1–19 would have been obvious over Felt in view of Creemer or Scofield (Ground 4).” slip op. at 86
Patent outcomesUS 10,692,108 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,692,108 - Copeland Comfort Control LP / Ecobee Technologies Ulc v. Ollnova Technologies Ltd.All claims unpatentablePTAB · Oct 1, 2024 · IPR2024-00131 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1, 3–8, 14, 15, and 18 are unpatentable as obvious over the Kates-711 grounds; the Board did not reach the alternative Kates-505 grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had a minimum of a bachelor’s degree in electrical engineering, or a related field, along with at least two years of professional experience in sensors, controls, and/or wireless communications.” Pet. 13–14 (citing Ex. 1002 ¶ 44–47). Petitioner further contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. We apply Petitioner’s proposed level of skill in the art because it appears consistent with the problems addressed in the ’887 patent and the prior art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“sensed condition outside a predetermined range.” Patent Owner’s proposed construction of the second wherein clause replaces the word “suspended” with “that would otherwise occur is stopped.” PO Resp. 8–9 (“emphasis omitted”). This phrase is not part of claim 1. Nonetheless, adopting Patent Owner’s proposed construction could potentially render the second wherein clause superfluous because the first wherein clause does not require transmission of the most recent reading to occur when the change is within the predetermined range. Consequently, the language of claim 1 does not require or suggest Patent Owner’s proposed construction.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“recent reading of the indicator stored in the memory during a period of a transmission interval in response to detecting a change in the sensed condition outside a predetermined range.” Ex. 1001, 14:63–67. This limitation also requires that “during the period of the transmission interval” the transmission “is suspended in response to detecting a change in the sensed condition within the predetermined range.” Id. at 14:67–15:4. Petitioner, therefore, must show that Kates-711 discloses a transceiver configured to transmit information or suspend transmission of the information during a “period” within a “transmission interval.” For the recited “transmission interval,” Petitioner contends that Kates’s “periodic intervals of ‘periodic monitoring’ is a [1.e] ‘transmission interval,’ during which there is a [1.e] ‘transmission period’ that includes a ‘report block.’” Pet. Reply 9. We agree with Petitioner for the following reasons. Kates describes the process shown in Figure 7 as follows: FIG. 7 is a flowchart showing one embodiment of operation of the sensor unit 102 wherein periodic monitoring is provided. In FIG. 7, a power up block 701 is followed by an initialization block 702, After initialization, the sensor unit 102 enters a low-power sleep mode. If a fault occurs during the sleep mode (e.g., the tamper sensor is activated), then the process enters a wake-up block 704 followed by a transmit fault block 705. If no fault occurs during the sleep period, then when the specified sleep period has expired, the process enters a block 706 where the sensor unit 102 takes a sensor reading from the sensor(s) 201. The sensor data is subsequently sent to the monitoring computer 13 in a report block 707. After reporting, the sensor unit 102 enters a listen block 708 where the sensor unit 102 listens for a relatively short period of time for instructions from monitoring computer 708. If an instruction is received, then the sensor unit 102 performs the instructions, otherwise, the process returns to the sleep block 703. Ex. 1004, 15:50–65. Based on this description of Figure 7, we find that Kates’s report block 707 corresponds to the recited “a period of the transmission interval” because it is a period of time when “sensor data is . . . sent to the monitoring computer.” Ex. 1004, 15:61. Further, block 707 is within an interval of “periodic monitoring” i.e., the process loop shown in Figure 7 beginning at block 703 and comprising steps 703, 706, 707, 708, 709, 710 and back to block 703. See also Ex. 1052 ¶ 22 (Dr. Neikirk testifying “each of [Kates’s] periodic intervals during which the ‘periodic monitoring’ process occurs is a ‘transmission interval’ . . . and the report block’ that occurs within this process is a transmission period.” (citations omitted)).” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“2. Analysis Motivation to Combine and Reasonable Expectation of Success Petitioner contends that “[w]hile Kates-711’s teachings not only render obvious but also disclose the ‘memory’ elements ([1.d]-[1.e], [5]), Hitt provides explicit teachings of a memory storing information as claimed.” Pet. 42. Petitioner further contends that Hitt’s memory 155 “stores instructions for execution by processor 156 and also stores periodically sampled sensor data for retrieval by the processor for processing and/or transmission.” Id. at 43 (citing Ex. 1002 ¶ 112; Ex. 1005 ¶¶ 65, 67– 68). According to Petitioner, an ordinarily skilled artisan “would have been motivated to modify Kates-711’s sensor units with Hitt’s teachings of ‘memory’ to achieve the beneficial and predictable result of utilizing a memory to securely store sensor readings.” Id. (citing Ex. 1002 ¶ 114). Petitioner argues that an ordinarily skilled artisan would have been further motivated to modify Kates-711 “by storing these sensor values in memory as taught by Hitt to improve reliability” in light of Hitt’s teaching that “storage of sensor values in memory . . . ensur[es] that the values are available for calculations and not unintentionally lost or erased, e.g., due to power outages or interruptions.” Id. at 44–45 (citing Ex. 1002 ¶ 116; Ex. 1005 ¶¶ 67–68). Petitioner next contends that an ordinarily skilled artisan would have had a reasonable expectation of success because Kates-711 “discloses that its controller may be a ‘conventional programmable microcontroller’; such microcontrollers were well-understood to commonly use a memory to, e.g., track data variables used for control applications.” Pet. 45 (citing Ex. 1002 ¶ 117). We have reviewed Petitioner’s evidence and contentions and find that Petitioner establishes that an ordinarily skilled artisan would have been motivated to modify Kates-711 with the teachings of Hitt and would have had a reasonable expectation of success. Ex. 1002 ¶¶ 112–117.” slip op. at 37
Patent outcomesUS 7,746,887 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,746,887 - Copeland Comfort Control LP / Ecobee Technologies Ulc v. Ollnova Technologies Ltd.All claims unpatentablePTAB · Oct 1, 2024 · IPR2023-00626 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1, 3–8, 14, 15, and 18 are unpatentable as obvious over the Kates-711 grounds; the alternative Kates-505 grounds were not reached.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“For these reasons, in order to resolve the present controversy, we determine that the plain and ordinary meaning of “suspended”, as used in the challenged claims, encompasses both where a transmission that would otherwise occur is suspended by an action such as overriding a flag and where a transmission is not made because there is no change in an indicator or a change does not exceed a limit. Upon review the parties’ respective contentions, we determine that no other express constructions of any other claim term is required for this decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“2. Analysis Motivation to Combine and Reasonable Expectation of Success Petitioner contends that “[w]hile Kates-711’s teachings not only render obvious but also disclose the ‘memory’ elements ([1.d]-[1.e], [5]), Hitt provides explicit teachings of a memory storing information as claimed.” Pet. 42. Petitioner further contends that Hitt’s memory 155 “stores instructions for execution by processor 156 and also stores periodically sampled sensor data for retrieval by the processor for processing and/or transmission.” Id. at 43 (citing Ex. 1002 ¶ 112; Ex. 1005 ¶¶ 65, 67– 68). According to Petitioner, an ordinarily skilled artisan “would have been motivated to modify Kates-711’s sensor units with Hitt’s teachings of ‘memory’ to achieve the beneficial and predictable result of utilizing a memory to securely store sensor readings.” Id. (citing Ex. 1002 ¶ 114). Petitioner argues that an ordinarily skilled artisan would have been further motivated to modify Kates-711 “by storing these sensor values in memory as taught by Hitt to improve reliability” in light of Hitt’s teaching that “storage of sensor values in memory . . . ensur[es] that the values are available for calculations and not unintentionally lost or erased, e.g., due to power outages or interruptions.” Id. at 44–45 (citing Ex. 1002 ¶ 116; Ex. 1005 ¶¶ 67–68). Petitioner next contends that an ordinarily skilled artisan would have had a reasonable expectation of success because Kates-711 “discloses that its controller may be a ‘conventional programmable microcontroller’; such microcontrollers were well-understood to commonly use a memory to, e.g., track data variables used for control applications.” Pet. 45 (citing Ex. 1002 ¶ 117). We have reviewed Petitioner’s evidence and contentions and find that Petitioner establishes that an ordinarily skilled artisan would have been motivated to modify Kates-711 with the teachings of Hitt and would have had a reasonable expectation of success. Ex. 1002 ¶¶ 112–117.” slip op. at 37
- BurdenFwd all claims unpatentableUnpatentable
“III. CONCLUSION12 Weighing the competing evidence and testimony, we determine that Petitioner establishes by a preponderance of the evidence that claims 1, 3–8, 14, 15, and 18 of the ’887 patent are unpatentable.” slip op. at 46
Patent outcomesUS 7,746,887 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,746,887 - Copeland Comfort Control LP v. Ollnova Technologies Ltd.All claims unpatentablePTAB · Oct 1, 2024 · IPR2023-00624 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–5, 7–11, 13–16, and 20–21 are unpatentable: claims 1–5, 7–11, and 20–21 over McFarland, and claims 13–16 over McFarland and Kates-089.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Claim 1 recites “a multi-sensor package configured to detect a plurality of variables and generate sensor data for each detected variable.” Ex. 1001, 10:46–48. Both parties agree that a “multi-sensor package” is a single packaged device with multiple sensors, not a group of individual sensors. See PO Resp. 6; Pet. Reply 2. Claim 1 does not recite a multi-sensor package with “multiple operational sensors.” Patent Owner does not explain the difference between operational sensors and sensors “configured” as recited in claim 1 or why claim 1 should be construed as requiring an “operational” limitation that does not appear in the claim. Consequently, a requirement that the sensors comprising the package be “operational” is neither required by claim 1 nor suggested by the language of claim 1.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had a minimum of a bachelor’s degree in electrical engineering, or a related field, along with at least two years of professional experience in sensors, controls, and/or wireless communications.” Pet. 10–11 (citing Ex. 1002 ¶¶ 46–49). Petitioner further contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner does not address the level of ordinary skill in the art. See PO Resp. We apply Petitioner’s level of skill in the art because it appears consistent with the problems addressed in the ’282 patent and the prior art.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“McFarland discloses an exemplary sensor 209 that “is configured as any of a temperature sensor, humidity sensor, fire sensor, pressure sensor, smoke sensor, occupancy sensor, air quality sensor, gas sensor, O2, CO2, or CO sensor, accelerometer, velocity sensor, [or] combinations thereof” and “may be . . . micro-mechanical sensors . . . or larger sensors for sensing any condition or parameter.” Ex. 1027 ¶ 43 (emphasis added). Patent Owner submits that paragraph 43 of McFarland describes “a device . . . that sense[s] conditions, parameters and/or events such as an environmental condition in a building.” PO Resp. 28 (emphasis added). Based on the foregoing, we find that McFarland teaches “a multi-sensor package configured to detect a plurality of variables.” Ex. 1002 ¶ 72 (“sensor 209 may be configured to detect multiple different variables including temperature, humidity, and other variables”); Ex. 1027 ¶ 43. McFarland further discloses “sensor 209 generates information or data related to the sensed or monitored condition” and “output as one or more signals that may be read by the processor 214.” Ex. 1027 ¶ 43. McFarland further discloses that “information may be generated in response to a physical stimulus such as light, sound, pressure, heat, magnetism, motion, and/or acceleration” that “may be detected as a result of sensing or monitoring the conditions or parameters.” Id.; see also id. ¶ 44 (“A signal generated by the sensor 209 may be an indicator of the sensed condition.”). McFarland also discloses that “processor 214 implements a control process for the device 207” that “may be implemented based on a signal that is read from and/or provided by the sensor 209, such as a measured value of a parameter, an indicator of a sensed condition and/or status of an event.” Id. ¶ 39. Thus, we find McFarland teaches that sensor 209 “generate[s] sensor data for each detected variable.” Ex. 1002 ¶ 74 (“For each condition that it monitors, the sensor generates and outputs sensor data for each measured variable in the form of ‘a measured variable’ or ‘indicator.’” (citing Ex. 1027 ¶¶ 39, 45, 47)). For the foregoing reasons and after reviewing Petitioner’s evidence in light of Patent Owner’s contentions, we find that McFarland teaches this limitation.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Motivation to Combine/Reasonable Expectation of Success Petitioner contends that McFarland discloses that a wireless automation device wakes up and enters a standby or sleep mode in response to a report instruction. Pet. 46. Petitioner acknowledges that McFarland “does not explicitly state that the ‘report instruction’ includes a ‘wake-up command’ or describe how the device is instructed to return to a ‘sleep’ mode between reporting intervals.” Id. (citing Ex. 1027 ¶¶8, 18, 48, 62). Petitioner next contends that Kates-089 “teaches that such a ‘report instruction’ comprises a ‘wake-up command,’ and that a controller issues a ‘standby mode’ instruction (i.e., a ‘power down command’).” Id. (citing Ex. 1029 ¶¶ 78, 82, 86). According to Petitioner, an ordinarily skilled artisan “would have been motivated to modify McFarland with” the teachings of Kates-089 “to advantageously facilitate reporting data both periodically and in response to commands while conserving power via ‘wake-up’ and ‘standby’ (i.e., power-down) commands.” Id. (citing Ex. 1002 ¶ 147; Ex. 1027 ¶ 62; Ex. 1029 ¶¶ 40, 74–75, 82, 86); id. at 47 (arguing that an ordinarily skilled artisan in light of Kates-089 “would have been motivated to modify McFarland’s ‘report’ instruction to include a wake-up command” (citing Ex. 1002 ¶ 149)) (emphasis omitted). Petitioner further contends that an ordinarily skilled artisan would have been motivated to combine McFarland and Kates-089 “to save power consumed during, e.g., the 99.9% of the polling interval when the device may otherwise be unnecessarily turned on.” Id. at 48 (citing Ex. 1002 ¶ 150). Petitioner next contends that an ordinarily skilled artisan would have had a reasonable expectation of success “applying Kates-089’s wake-up and power-down command teachings to McFarland’s wireless automation device” because “McFarland already teaches that the wireless automation device wakes up and powers down in response to certain commands[] and such commands were well understood.” Pet. 48 (citing Ex. 1002 ¶ 151; Ex. 1005 ¶ 32; Ex. 1027 ¶¶ 8, 18, 48, 62; Ex. 1032, 12:48–54; Ex. 1033, 12:16– 22) (emphasis omitted). Patent Owner does not address motivation to combine or reasonable expectation of success for claim 13. See PO Resp. 26–35. We have reviewed Petitioner’s evidence and contentions and find that” slip op. at 45
Patent outcomesUS 8,224,282 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,224,282 - Oracle Corporation v. Parking World Wide LLCAll claims unpatentablePTAB · Jul 11, 2024 · IPR2023-00385 · APJ Benjamin D M Wood · IPR · Final written decision
Claims 1–7 are unpatentable as obvious under §103 over Ivey, Matsumoto, and Tillotson, with Slemmer added for claims 4 and 7; Ward, Haynes, and Tillotson provide an alternative ground.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“improved “efficiency” would have been a sufficient reason for one of ordinary skill in the art to combine Ivey, Matsumoto, and Tillotson, Patent Owner does not expressly dispute Dr. Paradiso’s testimony that the combination of Ivey and Matsumoto “would more efficiently streamline parking enforcement.” Pet. 48. Based on Dr. Paradiso’s undisputed testimony, we find that one of ordinary skill in the art would have been motivated to combine Ivey and Matsumoto in the proposed manner “to more efficiently streamline parking enforcement.” Id. Patent Owner also does not expressly dispute Dr. Paradiso’s testimony that incorporating Tillotson’s reservation and subscription systems into Ivey/Matsumoto would have simplified the payment process and saved motorists’ time. Based on Dr. Paradiso’s testimony, we find that one of ordinary skill in the art would have been motivated to combine Ivey and Matsumoto with Tillotson in the proposed manner to “make the parking management system more efficient and easier to use,” to simplify the process by which parking spaces are paid for, and to save motorists’ time. Id. Finally, Patent Owner does not dispute Petitioner’s contention that one of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Ivey, Matsumoto, and Tillotson, or Dr. Paradiso’s testimony in support of that contention. Therefore, based on Dr. Paradiso’s undisputed testimony, we find that one of ordinary skill in the art would have had a reasonable expectation of success in combining these teachings.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner concurs with Petitioner’s definition. See PO Resp. 6 (“Patent Owner concurs with the Board in adopting Petitioner’s definition of a POSITA” for the Decision on Institution). As we did in our Decision on Institution, we adopt Petitioner’s unopposed definition of a person of ordinary skill. See Dec. 9. 8 Patent Owner has not presented any evidence of secondary considerations. 9 We find (and Patent Owner does not dispute) that Dr. Paradiso is qualified to offer expert testimony from the perspective of a skilled artisan. See, e.g., Ex. 1003 ¶¶ 7, 13.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As the parties do not expressly dispute the construction of any particular term, we determine that no express construction of any term is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where the construction is not material to the dispute). Several of Patent Owner’s arguments, however, imply that the claims are limited in particular ways. For example, Patent Owner suggests” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We disagree that the claims are limited to parking spaces along a street. First, neither independent claim includes any such limitation; instead, the claims are directed to methods “for representing the parking status of a plurality of parking spaces,” without indicating where the plurality of parking spaces are located. Ex. 1001, claims 1, 5. Second, the Specification teaches that the parking spaces that may be represented can be in a lot or garage, not only on a street. See, e.g., id., Abstr. (“A parking status system overlays upon images of a street, a lot, or a garage with representations of parking vehicles the status of any parking space shown in the image.”); id. at 5:4–7 (“The present invention overlays the parking status of vehicles upon a visual image of a street or lot as it matches the GPS coordinates of the parking control officer, the vehicle, and the street scene.”). Patent Owner also suggests that the claims are limited to images obtained from a camera that is part of the user’s portable electronic device. Patent Owner asserts, for example, that Haynes obtains video images from “a camera upon a pole” that is “in a fixed position at a fixed elevation,” whereas “the ’421 patent receives imagery from a mobile device camera held by an officer at his height,” which is “movable.” PO Resp. 24. Again, we disagree that the claims are so limited. The independent claims recite a method for “representing the parking status of a plurality of parking spaces to a screen of a user’s portable electronic device upon a real time camera view.” Ex. 1001, claims 1, 5. “Represent[ing] . . . to a screen” means that the real time camera view of the parking spaces is displayed on the portable electronic device, but does not require the real time camera view to be obtained from the portable electronic device.” slip op. at 11
Patent outcomesUS 10,438,421 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,438,421
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.