- Twitter, Inc. v. Palo Alto Research Center LLCAll claims unpatentablePTAB · Mar 22, 2023 · IPR2021-01430 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–5, 7–11, 13–17, 19, and 20 are unpatentable under § 103; PARC’s contingent motion to amend is denied because the proposed substitute claims lack written-description support and are unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Relying on Dr. Turnbull’s testimony, Twitter argues that a person of ordinary skill in the art “would at minimum have a bachelor’s in software, computer, or electrical engineering or computer science with at least two years’ experience in software development, including with respect to context-aware devices and systems, or the equivalent.” Pet. 16 (citing Ex. 1003 ¶ 24). Also, “[a]dditional graduate education could substitute for professional experience, or significant experience in electronic messaging could substitute for formal education.” Id. (citing Ex. 1003 ¶ 24). For this proceeding, PARC does not dispute this proposed level of ordinary skill. PO Resp. 21. Because Twitter’s uncontroverted articulation of the level of ordinary skill in the art is supported by testimonial evidence and appears consistent with the types of problems and solutions in the ’439 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:4–33 (“Background” section of the ’439 patent, describing the field and related art as relating to the use of contextual data in computer systems).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We agree as to Twitter’s last point, as we discuss below, that Cheng teaches a graph-based model that stores data in memory on a per-user basis. See infra Section IV.C.4(a); Ex. 1005, Fig. 7. Moreover, this decision does not address grounds of the Petition that omit Cheng as a reference, Cheng discloses a “context graph” under either party’s construction. Thus, we need not construe the term for this decision. See Nidec, 868 F.3d at 1017. Because the terms “recommender” and “application event data and/or operating system data” are not contested and are not material to our decision, we do not construe these two terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that other claim terms are significant, we discuss them below in the context of the asserted prior art.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We determine that Twitter has persuasively, and with sufficient specificity, shown that the combination of Huomo and Cheng teaches all aspects of limitation 13[d], and that it would have been obvious to modify Huomo by using Cheng’s personal interest graph as the model for how facts and assertions are stored in Huomo’s “blackboard.” This modification would have been compatible with Huomo and would simply affect the form of the information, or types of information, that are stored in Huomo’s blackboard. See Intel Corp., v. PACT XPP Schweiz AG, No. 2022-1037 at 10–13 (Fed. Cir. Mar. 13, 2023) (there is motivation to combine where one reference addresses a problem in one way, and another reference addresses the same problem in an alternative way that would be a suitable option). We agree with Twitter that this modification would have been within the ordinary skill in the art, that there would have been a reasonable expectation of success, and that an ordinarily skilled artisan would have recognized benefits to using Cheng’s graph-based structure such as the ability to better track social relationships through annotating the nodes and edges, and the ability to more easily track users’ shared interests and the influences that users may have on each other. See Pet. 53–55; Ex. 1003 ¶¶ 156–161.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“We determine that Twitter has persuasively, and with sufficient specificity, shown that the combination of Huomo and Cheng teaches all aspects of limitation 13[d], and that it would have been obvious to modify Huomo by using Cheng’s personal interest graph as the model for how facts and assertions are stored in Huomo’s “blackboard.” This modification would have been compatible with Huomo and would simply affect the form of the information, or types of information, that are stored in Huomo’s blackboard. See Intel Corp., v. PACT XPP Schweiz AG, No. 2022-1037 at 10–13 (Fed. Cir. Mar. 13, 2023) (there is motivation to combine where one reference addresses a problem in one way, and another reference addresses the same problem in an alternative way that would be a suitable option). We agree with Twitter that this modification would have been within the ordinary skill in the art, that there would have been a reasonable expectation of success, and that an ordinarily skilled artisan would have recognized benefits to using Cheng’s graph-based structure such as the ability to better track social relationships through annotating the nodes and edges, and the ability to more easily track users’ shared interests and the influences that users may have on each other. See Pet. 53–55; Ex. 1003 ¶¶ 156–161.” slip op. at 30
Patent outcomesUS 9,208,439 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,208,439 - Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCSome claims unpatentablePTAB · Feb 6, 2023 · PGR2021-00102 · APJ Patrick R Scanlon · PGR · Final written decision
Claims 5 and 9 are unpatentable as indefinite under §112(b); the Board did not find claims 1–4, 6–8, and 10–28 unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the record before us, particularly the ’459 patent’s description and Dr. Adnan’s testimony, we agree with Petitioner that the ordinary level of skill in the art does not require the high level of specialized knowledge of control systems suggested by Patent Owner. Moreover, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the full record, we are not persuaded that Mr. Marscher is unqualified to serve as an expert in this proceeding. As noted above, a person of ordinary skill in the art is not required to have been a fracturing operator. Patent Owner’s proposed definition does not even require experience as a fracturing operator. See PO Resp. 22. Furthermore, Mr. Marscher testifies that he has extensive experience developing pumps for fracturing applications. Ex. 2027, 6:24–8:7. Mr. Marscher also testifies that he has experience with control systems relating to pumps and pumps units. Id. at 212:19–23. This testimony, as well as his declaration and curriculum vitae, show that Mr. Marscher has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004. Accordingly, we are not persuaded that Mr. Marscher’s qualifications or experience provide reason to discount the weight associated with Mr. Marscher’s testimony.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“is the pump unit’s highest HHP output and one of ordinary skill in the art would have understood this value is the pump unit’s output power in intermittent duty. Pet. Reply 2 (citing Ex. 1003 ¶¶ 71–72, 123–124; Pet. 9– 10; Ex. 1036, 64:17–67:13, 119:17–120:11, 124:7–24, 198:9–200:9, 221:8– 222:15). However, even if Petitioner is correct that the “maximum power output value” is near or equivalent to a pump unit’s output power in intermittent duty, we are still not persuaded that the term “maximum intermittent power” should be tied to the “maximum power output value,” in conflict with the definition provided in the Specification. Petitioner also argues that Patent Owner’s proposed construction is indefinite. Pet. Reply 3. For the reasons discussed below (see supra § II.I.1), we determine that Petitioner has not shown by a preponderance of the evidence that the term “maximum intermittent power,” as defined in the Specification, is indefinite. Thus, based on the complete record before us, we maintain our prior construction of “maximum intermittent power” for this Final Written Decision.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“5. Additional Terms We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec, 868 F.3d at 1017; see also 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
Patent outcomesUS 10,907,459 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 10,907,459 - Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCNo claims unpatentablePTAB · Feb 6, 2023 · PGR2021-00103 · APJ Patrick R Scanlon · PGR · Final written decision
Claims 1–28 were not shown unpatentable on any asserted ground; the Board found the prior art failed to establish key limitations and rejected the enablement and indefiniteness challenges.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In reply, Petitioner argues that the ’764 patent’s control system is not complex as there are no detailed algorithms, logic, or software. Pet. Reply 4. Instead, the control system merely raises or lowers power of the pumps in accordance with the demand HHP of the job design. Id. (citing Ex. 1036, 97:15–98:18, 98:21–99:25, 100:1–101:25, 102:2–7, 115:4–9, 115:24–116:4, 116:17–22; Ex. 1001, 5:2–6, 6:36–7:7, 10:4–64). According to Petitioner, this “rudimentary control concept” does not necessitate the higher skill level proposed by Patent Owner. Id. Petitioner further notes that Dr. Adnan testifies that “a mechanical engineer who has worked in the industry developing programming and control systems could fall within this definition,” and the person of ordinary skill in the art “is ‘just a specifier.’” Id. (quoting Ex. 2003 ¶ 22; Ex. 1036, 161:21–164:18). Based on our review of the record before us, particularly the ’764 patent’s description and Dr. Adnan’s testimony, we agree with Petitioner that the ordinary level of skill in the art does not require the high level of specialized knowledge of control systems suggested by Patent Owner. Moreover, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the full record, we are not persuaded that Mr. Marscher is unqualified to serve as an expert in this proceeding. As noted above, a person of ordinary skill in the art is not required to have been a fracturing operator. Patent Owner’s proposed definition does not even require experience as a fracturing operator. See PO Resp. 20–21. Furthermore, Mr. Marscher testifies that he has extensive experience developing pumps for fracturing applications. Ex. 2027, 6:24–8:7. Mr. Marscher also testifies that he has experience with control systems relating to pumps and pumps units. Id. at 212:19–23. This testimony, as well as his declaration and curriculum vitae, show that Mr. Marscher has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004. Accordingly, we are not persuaded that Mr. Marscher’s qualifications or experience provide reason to discount the weight associated with Mr. Marscher’s testimony.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In its Reply, Petitioner argues that the maximum power output value is the pump unit’s highest HHP output and one of ordinary skill in the art would have understood this value is the pump unit’s output power in intermittent duty. Pet. Reply 2–3 (citing Ex. 1003 ¶¶ 71–72, 123–124; Pet. 9–10; Ex. 1036, 64:17–67:13, 119:17–120:11, 124:7–24, 198:9–200:9, 221:8–222:15). However, even if Petitioner is correct that the “maximum power output value” is near or equivalent to a pump unit’s output power in intermittent duty, we are still not persuaded that the term “maximum intermittent power” should be tied to the “maximum power output value,” in conflict with the definition provided in the Specification. Petitioner also argues that Patent Owner’s proposed construction is indefinite. Pet. Reply 3. For the reasons discussed below (see supra § II.I.1), we determine that Petitioner has not shown by a preponderance of the evidence that the term “maximum intermittent power,” as defined in the Specification, is indefinite. Thus, based on the complete record before us, we maintain our prior construction of “maximum intermittent power” for this Final Written Decision.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“3. Additional Terms We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 13
Patent outcomesUS 10,815,764 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,815,764 - Apple Inc. v. Rfcyber Corp.InstitutedPTAB · Jan 23, 2023 · IPR2022-01256 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–11 based on the § 103 ground over Buhot, GPC, and Zhu, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. 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 “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’724 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–11) of the ’724 patent, based on the ground asserted in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that an ordinarily skilled artisan for the ’724 patent “would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least one year of experience in the field of mobile payment technology. Additional pertinent education might substitute for the requisite experience and vice versa.” Pet. 6–7 (citing Ex. 1007 (Smith Decl.) ¶¶ 34–35). Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art,” but only for its Preliminary Response. Prelim. Resp. 9. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’724 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“earlier applications, in particular Application No. 11/534,653 (“the ’653 application”), which issued as U.S. Patent No. 8,118,218 B2 (“the ’218 patent”). “It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, 522 F.3d at 1306; New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002); Lucent Techs., Inc. v. Gateway, Inc., 543 F.3d 710, 718 (Fed. Cir. 2008) (“Patent claims are awarded priority on a claim-by-claim basis based on the disclosure in the priority applications.”). The test for determining compliance with the written description requirement under § 112(a) is whether the original disclosure of the earlier-filed application reasonably would have conveyed to one with ordinary skill in the art that the inventor had possession the claimed subject matter at the time of the earlierfiled application. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). It is well settled that “[e]ntitlement to a filing date does not extend to subject matter which is not disclosed but would be obvious over what is expressly disclosed.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571−72 (Fed. Cir. 1997). “It is not sufficient for purposes of the written description requirement of § 112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Id. Nor could the claimed subject matter have been “envisioned” from the earlier disclosure to establish written description support. Goeddel v. Sugano, 617 F.3d 1350, 1356 (Fed. Cir. 2010). We agree with Petitioner that, on this record, there does not appear to be support for limitation [1(j)] in the ’653 application. Patent Owner identifies the following disclosure from the ’218 patent (the patent that issued from the ’653 application) as supporting limitation [1(j)]: According to one embodiment, a smart card has a preloaded smart card operation system that provides security framework to control the access to the Smart card (e.g., an installation of external applications into the smart card). In order to manage the life cycle of an external application, a card manager module is configured by using the smart card security framework. For instance, a Java based smart card, SmartMX, is preloaded with an operating system JCOP 4.1. The Global Platform 2.1 installed on the SmartMX performs the card manager functionality. Ex. 2001 (’218 patent), 4:47–56. Patent Owner argues that “this description is substantively identical to that on which Apple relies for disclosure of the “emulator device” and “replace out of the emulator device . . . replacing out of the emulator device . . .” limitations. Prelim. Resp. 26. Patent Owner contends that “Apple relies on Buhot’s discussion of an ‘operating system 314 (running on processor 400) for the ‘emulator device’ limitation (Pet. at 31), and relies on Zhu’s alleged teachings regarding a ‘smart card manager . . . which governs the process of loading and unloading applications out of an emulator’ for the ‘replace out of the emulator device . . . replacing out of the emulator device’ limitations.” Id. (citing Pet. 43). Patent Owner asserts that Petitioner “cannot argue with a straight face that its proposed combination discloses” slip op. at 21
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,018,724 - Netskope, Inc. v. Bitglass, Inc.All claims unpatentablePTAB · Dec 9, 2022 · PGR2021-00091 · APJ James J Mayberry · PGR · Final written decision
Claims 1, 2, 4–10, and 12–16 are unpatentable; the Board found the asserted obviousness and written-description grounds persuasive, but did not reach specified grounds.
RulingsFinal written decision- Skill levelOther
“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 prevail in this proceeding, Petitioner must support its challenge by a preponderance of the evidence. 35 U.S.C. § 326(e) (2011); 37 C.F.R. § 42.1(d) (2022). Accordingly, all of our findings and conclusions are based on a preponderance of the evidence standard.” slip op. at 15
- Strike new argumentNew argument consideredNew argument disregardedOther
“considering these arguments, we conclude that the arguments do not demonstrate a deficiency in Petitioner’s position. As to the third alleged new argument, we do not reach any of the Cronk-Woelfel grounds. Accordingly, we dismiss Petitioner’s motion as moot. B.” slip op. at 91
- ExcludeOther
“Owner’s “counter” Motion to Strike is dismissed as unauthorized. Finally, Petitioner’s Motion to Exclude Evidence is dismissed as moot.” slip op. at 93
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“1[a][iii], and 1[b][ii] are not disclosed in the ’989 application for the embodiment of Figure 11. Instead, as Patent Owner argues, these limitations are described with respect to the embodiment of Figure 3b. Accordingly, Patent Owner’s assertions require that a person of ordinary skill in the art would have understood that the inventors contemplated combining steps from the two embodiments of Figure 3b and 11. For the reasons discussed below, and as Petitioner asserts, the evidence does not support a person of ordinary skill would find that disclosure.” slip op. at 29
Patent outcomesUS 10,855,671 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 10,855,671 - PTAB · Jun 16, 2022 · IPR2022-00300 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–20 and 22 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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) (2018); see 37 C.F.R. § 42.108. Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’570 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 5 (citing Ex. 1002 ¶ 46). Patent Owner does not identify a proposed level of skill in the art that one would have had at the time of the invention of the ’570 patent or identify any specific shortcoming in Petitioner’s formulation. See generally Prelim. Resp. For purposes of this Decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least” as that language is vague and open-ended. Pet. 5. This assessment is consistent with the ’570 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). In applying such standard, claim terms are generally given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). The parties do not identify any claim terms for construction. Pet. 15; see generally Prelim. Resp. Thus, at this stage of the proceeding, we do not provide any express constructions, and we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 12
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,952,570 - Apple Inc. v. LBT IP I LLCAll claims unpatentablePTAB · Mar 2, 2022 · IPR2020-01191 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 8–10 are unpatentable as obvious; the contingent motion to amend is denied because proposed substitute claims 11–13 are unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Institution Decision, we considered the subject matter of the ’256 patent, the background technical field, and the prior art, and we agreed with Petitioner’s proposed qualifications; however, we deleted the use of the qualifier of “at least” because it introduces vagueness. Inst. Dec. 8–9. Accordingly, we determined that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or an equivalent degree, with two years of experience in GPS navigation, dead reckoning, portable tracking devices, or related technologies, and that additional education may substitute for lesser work experience and vice-versa. Id. Patent Owner adopted the qualifications identified in the Institution Decision. PO Resp. 3. In view of the relevant technology and claims of the ’256 patent, as well as the technology of the asserted prior art, and we adopt the same qualifications as those identified in the Institution Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that no express claim construction is required in order to assess the grounds presented. Pet. 9; see generally Pet. Reply. Patent Owner does not present any proposed construction for any claim terms. See generally PO Resp.; PO Sur-reply. In the Institution Decision, we determined that it was not necessary to provide express interpretations of any claim terms. Inst. Dec. 9–10. On the full record, we likewise determine that it is not necessary to provide an express interpretation of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“incorrect regarding Sakamoto’s teaching on reactivation based on detected signal levels, and instead contends that Sakamoto teaches manual reactivation after it was put in stop-position mode. PO Resp. 14–16 (citing Ex. 1004 ¶ 20). Although Sakamoto may teach manual reactivation from stop-position mode, this does not undermine Petitioner’s persuasive showing that a person of ordinary skill in the art considering Sakamoto would have known to activate GPS receiver 10 from stop-position mode based on a sufficient signal level. More specifically, Petitioner relies upon the disclosures of paragraphs 38 and 39 to support its assertion that in Sakamoto the satellite signal level detection unit monitors the signal level from the GPS satellite on a preset periodic cycle, and based on the measured signal level, the positioning mode is set. See Pet. 31, 33–36; Ex. 1003 ¶¶ 146–155.” slip op. at 27
- Expert testimonyPetitioner expert creditedDecided for petitioner
“checking of signal levels is performed at a cycle set in advance, with the comparison of the detected signal level value to predetermined threshold values then used to set positioning modes.10 Ex. 1004 ¶¶ 37, 38. This disclosure provides support for Mr. Andrews’ testimony that a person of skill would have understood that, based on the detected signal level checked in a cycle, the operational mode is determined. Ex. 1003 ¶ 152. More specifically, Sakamoto’s disclosures support Mr. Andrews’ testimony that in resetting an operation mode, the mode could be changed to a stop-position mode from a normal mode or high mode and to a normal mode or high mode from a stop-position mode, depending on signal level. See id. ¶ 154. The testimony directed to moving from a stop-position mode to a positioning mode is further explained by Mr. Andrews’ rationale that a person of 10 Petitioner asserts, and we agree, that Sakamoto’s teachings on the periodic checking of GPS signals align with similar disclosures in the ’256 patent. See Ex. 1001, 6:63–66, 9:41–49; Pet. Reply 12. ordinary skill in the art would have understood that signal conditions can change based on location and environmental conditions, so it would not have not made sense or have been useful for Sakamoto to set a mode once and then never change it. Ex. 1003 ¶¶ 152, 155; Ex. 2003, 23:21–24:10. Although Sakamoto may not explicitly identify moving out of the stop-position mode as a result of the cyclic signal level checking, the issue is not whether there is express disclosure in the reference—it is whether the claimed invention as a whole would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains. See 35 U.S.C. § 103. Thus, we accord significant weight to Mr. Andrews’ understanding of Sakamoto’s teachings in the view of one of skill of the art regarding its disclosure of periodic checking of signal levels that is used to set positioning modes. We further credit the additional rationale provided by Mr. Andrews as to why one of skill in the art would have not set a stop-position mode and not moved out of it, that is, signal conditions can change based on environmental conditions. See Ex. 1003 ¶ 152; KSR, 550 U.S. at 418 (“a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”); accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Moreover, Patent Owner’s arguments disputing Mr. Andrews’ testimony on an ordinarily skilled artisan’s understanding of Sakamoto are attorney argument only and are unsupported by any record evidence. These attorney arguments are entitled to little, if any, weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value). Accordingly, Petitioner has provided persuasive evidentiary support that, in the view of a person of ordinary skill in the art, Sakamoto teaches activating GPS receiver 10 from stop-position searching mode when a subsequently detected signal level is above a threshold value.” slip op. at 28
Patent outcomesUS 8,102,256 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,102,256 - Apple Inc. v. LBT IP I LLCAll claims unpatentablePTAB · Mar 2, 2022 · IPR2020-01189 · APJ John A Hudalla · IPR · Final written decision
Claims 1, 4–6, 8, 10, 13, and 15 are unpatentable as obvious over Sakamoto; the Board denied the motion to amend because the proposed substitute claims were also obvious over Sakamoto.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We do not agree with Patent Owner that the Specification’s statement about tradeoffs between “optimal battery life” and “optimal update rate” necessarily requires a spectrum of at least three threshold values (i.e., two endpoints and at least one value between them). If anything, this statement supports the view that such tradeoffs can be made between as few as two points: an endpoint where less updates are traded for better battery life, and an endpoint where worse battery life is traded for more updates. See Ex. 1001, Fig. 4 (slider 432). We also do not ascribe any significance to the plural “tradeoffs” in Patent Owner’s cited statement, because every point in such a spectrum would involve its own tradeoffs between battery life and update frequency. Thus, we agree with Petitioner that the Specification does not support Patent Owner’s interpretation of a multitude as necessarily being three or more. We also consider the Specification’s statement about “obtain[ing] optimal battery life, obtain[ing] optimal update rate, [and the] tradeoffs between them” (Ex. 1001, 11:58–63) to at least be consistent with the notion that “multitude” means two or more in the context of the ’774 patent.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“switching among Sakamoto’s positioning modes for teaching the updated sets. Pet. 31 (citing Ex. 1004 ¶¶ 5–10, 28). Mr. Andrews testifies that an ordinarily skilled artisan “would have appreciated that switching the positioning modes (responsive to a low-power condition or to user command) changes the frequency with which Sakamoto’s terminal transmits and receives data (i.e., updates the communication signaling protocol of the terminal).” Ex. 1003 ¶ 89. Petitioner also explains how changing Sakamoto’s modes changes the associated listen rate and request rate. See Pet. 31–34. And, as acknowledged by Patent Owner at the oral hearing, the “updated set based on the claim language would include either/or both a refresh rate and a listen rate.” Tr. 39:17–18. Thus, Petitioner persuasively shows that Sakamoto teaches the recited “updated set of network communication signaling protocols.” We also are persuaded that Sakamoto’s modes switch “in substantially real-time” based on Sakamoto’s teaching of an “automatic shift” from high sensitivity mode to normal mode based on the battery falling below a threshold and based on Sakamoto’s aim of reducing power consumption. Pet. 29–30 (quoting Ex. 1004 ¶¶ 29, 46); Ex. 1003 ¶ 88. Mr. Andrews testifies that an ordinarily skilled artisan “would have appreciated that switching the positioning modes (responsive to a low-power condition or to user command) changes the frequency with which Sakamoto’s terminal transmits and receives data (i.e., updates the communication signaling protocol of the terminal).” Ex. 1003 ¶ 89. Against this showing, Patent Owner has not put forth any evidence to support its contention that “generat[ing] . . . an updated set” requires the generation of entirely new parameters or that such parameters cannot be taken from predetermined sets. As such, Patent Owner’s position amounts to unsupported attorney argument; it does not undermine Petitioner’s persuasive showing that Sakamoto teaches real-time updating of network signaling protocol sets in order to reduce power consumption via Sakamoto’s mode switching. See, e.g., Ex. 1003 ¶¶ 88–89; Ex. 1004 ¶¶ 28, 29, 46.” slip op. at 30
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Having considered Petitioner’s contentions and evidence and Patent Owner’s arguments, we find that Sakamoto teaches every limitation of proposed substitute claim 20 in light of the knowledge of a person of ordinary skill in the art. Thus, we determine Petitioner has shown by a preponderance of the evidence that the subject matter of proposed substitute claim 20 would have been obvious over Sakamoto. 2. Proposed Substitute Claims 23–25 Proposed substitute claims 23–25 depend directly or indirectly from proposed substitute claim 20 and are the same as original claims 4–6 except that the claim dependencies have been updated. We have analyzed all limitations of proposed substitute claims 23–25 above. See supra §§ II.D.3– 5. Thus, for the same reasons, we determine Petitioner has shown, by a preponderance of the evidence, that the subject matter of proposed substitute claims 23–25 would have been obvious over Sakamoto.” slip op. at 65
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“Based on our understanding of this limitation (see infra § III.C), we do not agree with Petitioner’s arguments. Regarding the request rate and listen rate, the ’451 application discloses that the “updated set of network communication signaling protocols . . . includes an update rate (e.g., refresh rate) of location coordinate packets 446.” Ex. 2017, 17:14–16. In turn, “the update rate of location coordinate packets 446 includes request rate 420 of location coordinate packets 422 by target host 452 . . . and/or listen rate 425 of location coordinate packets 422 by portable electronic tracking device 402.” Id. at 17:16–19. Regarding the repeating time interval, the ’451 application discloses that “[i]n response to receipt of updated set of network communication signaling protocols, portable location tracking device 402 adjusts settings (an internal time schedule)” and “[p]ortable location tracking device 402 checks internal time schedule to determine if it should listen for (perform a location lookup of) location coordinates 422 from satellite navigation system 403.” Id. at 18:7–15. Further, the ’451 application describes examples of update rate intervals (in minutes) for tracking a dog, a car, and rented construction equipment that constitute the repeating time intervals for the request rate and/or listen rate. See id. at 21:8–22:16. In light of these disclosures, we determine that the ’451 application adequately supports “a request rate representing a repeating time interval for of location coordination packets to be communicated to a target host and a listen rate representing a repeating time interval for receipt of the location coordinate packets from a satellite navigation system,” as recited in proposed substitute claim 20 and similarly recited in proposed substitute claim 27. For these reasons, and considering Patent Owner’s evidence of support in the ’807 publication and the ’451 application, we determine that Patent Owner has shown adequate written description support for proposed substitute claims 20, 23–25, 27, 29, 32, and 34.” slip op. at 54
Patent outcomesUS 8,497,774 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,497,774 - Apple Inc. v. LBT IP I LLCAll claims unpatentablePTAB · Mar 2, 2022 · IPR2020-01190 · APJ John A Hudalla · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Sakamoto, Gotoh, and Levi; the revised motion to amend proposing claims 21–40 is denied as those claims are also unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“an inter partes review of claims 1–20 (“the challenged claims”) of U.S. Patent No. 8,542,113 B2 (Ex. 1001, “the ’113 patent”). LBT IP I LLC (“Patent Owner”) filed a Preliminary Response (Paper 8). Taking into account the arguments presented in Patent Owner’s Preliminary Response, we determined that the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail with respect to its unpatentability challenges. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on March 4, 2021, as to all challenged claims and all grounds of unpatentability. Paper 9 (“Dec. on Inst.”).” slip op. at 1
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art (or “POSITA”) “would have had a bachelor’s degree in Electrical Engineering, Mechanical Engineering, Computer Engineering, Computer Science, or an equivalent degree, with at least two years of experience in GPS navigation, dead reckoning, portable tracking devices, or related technologies.” Pet. 5 (citing Ex. 1003 ¶ 30). For purposes of our Decision on Institution, we adopted Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least.” Dec. on Inst. 7. Patent Owner states that it adopts this definition. PO Resp. 3; MTA 17; RMTA 17–18. Thus, we discern no reason to change the level of ordinary skill in the art applied in this Final Written Decision. Accordingly, a person 4 The trial record does not include any evidence of secondary considerations of nonobviousness. of ordinary skill in the art would have had a bachelor’s degree in Electrical Engineering, Mechanical Engineering, Computer Engineering, Computer Science, or an equivalent degree, with two years of experience in GPS navigation, dead reckoning, portable tracking devices, or related technologies. We determine that this definition comports with the level of skill necessary to understand and implement the teachings of the ’113 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Neither party puts forth any terms for construction. See Pet. 8. We determine that no terms require explicit construction. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“combination. We are persuaded that an ordinarily skilled artisan would have modified Sakamoto’s terminal to include Gotoh’s accelerometer, which is used to record acceleration data when the terminal is unable to receive GPS signals. See, e.g., Ex. 1003 ¶¶ 112–118; Ex. 1005 ¶ 81. We are further persuaded that an ordinarily skilled artisan would have implemented Levi’s dead reckoning techniques in the combined system to determine differential position coordinates based on accelerometer data. See, e.g., Ex. 1003 ¶¶ 201–202. We note that the secondary references themselves provide reasons for the combination insofar as Gotoh and Levi both teach the use of an accelerometer to supplement GPS positioning when a GPS signal is lost. See Ex. 1005 ¶ 66; Ex. 1006, 2:10–14. We are also persuaded by Mr. Andrews’s uncontested testimony that an ordinarily skilled artisan would have reasonably expected success in making the combination. See, e.g., Ex. 1003 ¶¶ 117, 202. For these reasons, Petitioner has established that an ordinarily skilled artisan would have had reasons to combine Gotoh and Levi with Sakamoto. c. Conclusion Regarding Claim 1 Petitioner has persuasively shown that the combination of Sakamoto, Gotoh, and Levi teaches all limitations of claim 1. Petitioner also has put forth persuasive reasons for combining these references and has established that an ordinarily skilled artisan would have expected success in making the combination. On the entire trial record, we determine Petitioner has shown by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over the combination of Sakamoto, Gotoh, and Levi.” slip op. at 23
Patent outcomesUS 8,542,113 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,542,113 - PTAB · Feb 8, 2022 · PGR2021-00103 · APJ Patrick R Scanlon · PGR · Institution
The Board instituted PGR on claims 1–28 and all petition grounds, finding the Luharuka, API 674, and Karassik challenge more likely than not to prevail on claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” After considering the Petition and Patent Owner’s Preliminary Response, as well as all supporting evidence, we determine that Petitioner has satisfied the burden under 35 U.S.C. § 324(a) to show that it is more likely than not that at least one of the challenged claims is unpatentable.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“These arguments are not persuasive, however, because Patent Owner does not explain adequately how the disclosures of Oehring and Shampine are cumulative of the disclosure of Mu. In this case, the mere fact that 8 We note that Exhibit 2007 does not have ¶ 95 cited by Patent Owner. not mean necessarily that the references are cumulative of Mu. For instance, Petitioner relies on Mu for allegedly disclosing several claim limitations including “receiving a demand hydraulic horse power (HHP) signal,” “the first output power being in the range of approximately 70% to 100% of a maximum continuous power (MCP) level,” and “the second output power . . . being in the range of approximately 70% of the MCP level to approximately a maximum intermittent power (MIP) level.” Pet. 19–41. Patent Owner does not direct us to any disclosure in Oehring or Shampine that are cumulative of these alleged teachings in Mu. Accordingly, we do not agree with Patent Owner that either of Oehring or Shampine is cumulative of Mu. As such, we determine that Petitioner’s reliance on Mu does not involve the same or substantially the same art or arguments previously presented to the Office, and the first part of the Advanced Bionics framework is not satisfied with respect to Mu. And although Crowe is cited in the ’764 patent (see Ex. 1001, code (56)), Petitioner’s reliance on Crowe is minimal. The ground based on Mu and Crowe, thus, does not implicate § 325(d).” slip op. at 8
- Skill levelOther
“This dispute presents a factual issue best decided on a complete record. Accordingly, for purposes of the Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Lastly, on the current record, we disagree with Patent Owner’s argument that Mr. Marscher is not qualified to serve as an expert in this proceeding. See Prelim. Resp. 8. Mr. Marscher’s declaration and curriculum vitae show that he has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004.” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,815,764
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.