• Cradlepoint, Inc. / Honeywell International, Inc. et al. v. 3g Licensing SAAll claims unpatentable
  PTAB · Sep 15, 2022 · IPR2021-00639 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1–25 are unpatentable as obvious; the Board denied the motion to amend because proposed substitute claims 26–50 would have been obvious over Oksala or Oksala and Yoshioka.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “B. The Level of Ordinary Skill in the Art Our reviewing court has explained that “the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (citing Al-Site Corp. v. VSI International, Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999)). “This reference point prevents these factfinders from using their own insight or, worse yet, hindsight, to gauge obviousness.” Id.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “e. Conclusion For the reasons provided above, we are persuaded that each limitation of independent claim 1 is either taught or suggested by Oksala. We are also persuaded that Oksala’s disclosure would have motivated a person of ordinary skill in the art to modify Oksala, as Petitioner contends, to yield the subject matter of claim 1. Accordingly, we conclude that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 would have been obvious over Oksala.” slip op. at 52

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Accordingly, we determine that Petitioner has shown, by a preponderance of the evidence, that the subject matter of proposed substitute claims 35 and 43 would have been obvious over Oksala.” slip op. at 78

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable

    “2. Indefiniteness In its Opposition, Petitioner contends the limitations “wherein each established data connection is a packet-switched connection; and wherein each requested data connection is a packet-switched connection,” as recited in substitute claim 26, and similarly recited in substitute claims 35 and 43, render the proposed substitute claims indefinite. MTA Opp. 12 (emphases added). First, according to Petitioner, the term “packet-switched connection” does not have a claim construction, which means that it can refer to two different types of packet-switched data (i.e., Layer 1 and packet network). Id. at 12. Second, Petitioner contends that there are two recitations of “a packet-switched connection,” making it “unclear if they are the same packet-switched connection or a different one.” Id. at 12–13. Third, Petitioner contends that the claims include “another antecedent issue” because “a wireless network” appears twice in the claim. Id. at 13.” slip op. at 81

  Patent outcomesUS 8,189,611 unpatentable
  § 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,189,611
• Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution denied
  PTAB · Feb 22, 2022 · PGR2021-00108 · APJ Aaron W Moore · PGR · Institution

  Institution was denied because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable, including because the asserted combination did not link rule generation to the packet correlation.

  RulingsInstitution decision

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

    “Obviousness Analysis A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, primarily: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham, 383 U.S. at 17–18.6 Petitioner asserts that claims 1–2, 7–8, 10, 12–13, and 17–18 are unpatentable under § 103 as obvious in view of Paxton and Sutton. See Pet. 6, 18–64. For the reasons described below, we are not persuaded by Petitioner’s argument and evidence.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2-3 years of experience in the design or development of telecommunication systems, or the equivalent” and that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 13–15 (citing Ex. 1003 ¶¶ 18–20). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, and because we find it generally consistent with the disclosures of the ’797 patent and the prior art, we adopt it for purposes of this analysis. C.” slip op. at 9

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

    “Patent Owner argues that “[t]he plain and ordinary meaning of the terms “determining . . . a first plurality of log entries” and “determining . . . a second plurality of log entries” is “identifying” or “ascertaining” log entries.” Prelim. Resp. 16. Patent Owner also argues that “[t]he terms “provisioning, . . . based on the determined correlation, . . . rules configured to identify the first plurality of packets received by the network device,” and “provisioning, . . . based on the determined correlation, . . . rules configured to identify the second plurality of packets transmitted by the network device” (“provisioning rules”) . . . should be given their plain and ordinary meaning—rules configured to identify packets.” Prelim. Resp. 20. Neither party, however, argues that the prior art arguments presented in the Petition turn on the construction of these terms. Instead, it appears that they are raised as claim construction issues only because Petitioner is challenging the language under Section 112. We will discuss the Section 112 arguments below, but do not see a dispute about the constructions offered by the parties above the makes a difference in the prior art analysis and, therefore, do not construe these terms at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10

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

    “respect to this limitation for several reasons, including that Petitioner’s “alleged rule generation and provisioning” is responsive to detecting malicious activity, not “based on the determined correlation.” Prelim. Resp. 38. On this record, we agree with Patent Owner. The claims require “generating, by the computing system and based on the determined correlation, one or more rules configured to identify packets received from the first host.” We do not have sufficient argument or evidence to show that one of ordinary skill in the art would have found it obvious to generate these rules “based on” the determined correlation.” slip op. at 16

  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham · Nautilus
  Patents in suitUS 10,931,797
• Samsung Electronics Co., Ltd. v. Acorn Semi, LLCAll claims unpatentable
  PTAB · Jan 12, 2022 · IPR2020-01204 · APJ Aaron W Moore · IPR · Final written decision

  Claims 1–8, 13–16, and 77–80 are unpatentable as anticipated by Grupp ’483; the challenged claims are not entitled to the earlier priority date.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that “[a]ny of the following combinations of education and experience would have qualified someone as an ordinarily skilled artisan in the field of the ’336 Patent”: (a) “a Ph.D. in electrical engineering, physics, materials science”; (b) “chemical engineering, with two years of practical experience with semiconductor research and design”; (c) “a Master’s degree in electrical engineering, physics, materials science, or chemical engineering, with four years of practical experience with semiconductor research and design”; or (d) “a Bachelor’s degree in electrical engineering, physics, materials science, or chemical engineering, with six to eight years of practical experience with semiconductor research and design.” Pet. 13 (citing Ex. 1016 ¶¶ 70–71). Petitioner further asserts that “[m]ore education could compensate for less practical experience, and vice versa” and that “[t]he same level of ordinary skill would have been applicable in August 2002, February 2011, or November 2012.” Id. Patent Owner does not address the level of skill in the art. Because Petitioner’s proposal is consistent the disclosures of the ’336 patent and the cited art, we apply it in this Decision.” slip op. at 10

  • ExcludeOther

    “We dismiss Patent Owner’s Motion to Exclude as moot because, unlike other cases in this family, this case does not include any claims that recite an “oxide of titanium.”” slip op. at 53

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

    “III. CLAIM CONSTRUCTION Neither party seeks any claim constructions, and we see no terms that need to be expressly construed to resolve the issues before us, so we do not engage in any formal claim construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot entitled to earlier dateNot shown unpatentable

    “We agree with Petitioner that the pre-2011 priority applications do not describe the recited genus. To support a claim to a genus, a specification must disclose “either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010). Here, the recited genus is an interface layer comprising a metal oxide, where the interface layer is configured to provide a specific contact resistivity between a contact metal and a semiconductor of less than or equal to approximately” slip op. at 15

  Patent outcomesUS 8,766,336 unpatentable
  Claim construction§ 102 anticipation§ 112 disclosurecites Graham
  Patents in suitUS 8,766,336
• Falkbuilt Ltd. v. Dirtt Environmental Solutions Ltd.Institution denied
  PTAB · Sep 24, 2021 · PGR2021-00067 · APJ Stacy B Margolies · PGR · Institution

  The Board denied institution because Petitioner did not show that claims 1–5, 8–12, and 15–17 were more likely than not unpatentable as indefinite or obvious.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a) (2020). We may not institute a post-grant review 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.” 35 U.S.C. § 324(a) (2018). After considering the Petition, the Preliminary Response, Patent Owner’s Certificate of Correction Brief, and Petitioner’s Certificate of Correction Response Brief, we determine that Petitioner has not demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we deny institution of post-grant review.” slip op. at 2

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable

    “indefinite. “[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014); see also id. at 910 (The definiteness requirement “require[s] that a patent’s claims, when viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of invention with reasonable certainty.”). Petitioner has not sufficiently shown that, when viewed in light of the specification and the prosecution history, claims 2 and 3 fail to inform a skilled artisan about the scope of the invention with reasonable certainty. Petitioner fails to address the amendment of claim 2 leading up to the issuance of the patent.” slip op. at 13

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

    “Petitioner fails to sufficiently explain how the references are combined to teach this limitation or the reason one of ordinary skill in the art would have made such a combination. For example, Petitioner fails to explain how one would have “[a]ppli[ed] the teachings of Shingu to Scranton.” Id. Such a combination is not readily apparent from the references themselves because Shingu relates to moving a camera so that it can take a repeat photograph and does not describe determining the architectural space surrounding the user. Petitioner also does not provide a reason why one of ordinary skill in the art would have combined the cited teachings of Shingu and Scranton to arrive at the claimed features. See id. at 41–42. Nor does Petitioner’s declarant, Dr. Welch, provide testimony explaining how the teachings would have been combined or a reason to make the combination. See Ex. 1002 ¶¶ 79–81. Indeed, as Patent Owner notes, Dr. Welch does not even reference Scranton in his analysis of this claim limitation. See id.; Prelim. Resp. 19–20. Petitioner therefore fails to sufficiently show that the combination of Shingu and Scranton teaches “the particular physical location and the virtual predetermined position comprising the same relative view position within the architectural design file and an architectural space surrounding the user.”” slip op. at 25

  • Expert testimonyPetitioner expert discountedOther

    “and Scranton teaches the “receive a communication” limitation. Petitioner relies on Dr. Welch’s testimony to fill in gaps for what is not expressly disclosed in Shingu. As explained above, Shingu discloses an augmented reality system “that helps users take pictures from the same position and camera angle as a previous photo.” Ex. 1003, 272. Shingu discloses “us[ing] an existing method to estimate camera position as implemented in ARToolKit.” Id. at 271 (emphasis added). Shingu—which describes aiming a camera on an object at a certain angle—does not disclose having a user located within a particular physical space. Petitioner therefore relies on Dr. Welch to assert that it was known ARToolKit could provide the claimed functionality—indicating a relative direction that the virtual reality module (the camera in Shingu) is facing, and a location of a user with respect to the one or more position tracking sensors, wherein the user is located within the particular physical space. Pet. 34–35 (citing Ex. 1002 ¶¶ 69, 72). Dr. Welch’s testimony, in turn, is based on Wagner (Exhibit 1018), which appears to have been downloaded in February 2021. See Ex. 1002 ¶¶ 69 (citing Ex. 1018), 72; Ex. 1018 (footer). Although Dr. Welch gives a date of 2002 for Wagner (see Ex. 1002 ¶ 69), that date does not appear in Exhibit 1018. See Ex. 1018. Petitioner fails to explain in its Petition what evidence supports its assertion that Wagner shows that ARToolKit had been applied to the creation of a floor of a building “more than a decade before the time of the alleged invention” or that the techniques described in Welch were “well known by the time of the alleged invention.” See Pet. 34–35. Nor does the cited testimony from Dr. Welch identify evidence or otherwise provide support for the 2002 date or that the functionality described in Wagner was “well known.” See Ex. 1002 ¶¶ 69, 72. Thus, Petitioner’s assertions and Dr. Welch’s testimony regarding what was known to a person of ordinary skill in the art about the functionality of ARToolKit goes well beyond the express disclosures of Shingu—using “an existing method to estimate camera position” (Ex. 1003, 271)—and, on the current record, are not sufficiently supported by contemporaneous evidence. Petitioner therefore does not sufficiently show that the combination of Shingu and Scranton teaches “receiv[ing] a communication from the one or more position tracking sensors, wherein the communication comprises an indication of a relative direction that the virtual reality module is facing, and a location of the user with respect to the one or more position tracking sensors, wherein the user is located within the particular physical space.”” slip op. at 22

  § 103 obviousness§ 112 disclosurecites Phillips · Nautilus
  Patents in suitUS 10,783,284
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 2, 2015 · IPR2014-00825 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, 6, 7, 10, 13, 19, and 20 are unpatentable as obvious; the petition did not prove claims 2, 5, 8, 9, 11, 12, and 14–18 unpatentable.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “Applying these principles to the instant case, in an inter partes review, the burden of persuasion is on Petitioner to prove “unpatentability by a preponderance of the evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the Patent Owner. See Dynamic Drinkware, 800 F.3d at 1379. (explaining petitioner “had the burden of persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifted”). Petitioner also has the initial burden of production. Id. Petitioner satisfied its burden of production by arguing in its Petition that Spadaro was prior art under § 102(e) and, in combination with one or more other prior art references, would have rendered claims 1–20 obvious at the time the invention was made under § 103(a). Pet. 4–5, 13–36.” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “Even if we were to find that Petitioner’s citation to two pages of its declarant’s testimony, without explanation, does not amount to improper incorporation by reference, the testimony of Petitioner’s declarant, Leonard J. Forys, Ph.D., is insufficient to show one of ordinary skill in the art was in possession of the subject matter of the claims at issue. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). First, the testimony of Petitioner’s declarant, Dr. Forys, is conclusory, merely quoting some portions of the ’357 patent without adequately explaining how the quoted portions relate to the subject matter recited by the claims. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, during cross-examination Dr. Forys explained his analysis, “I just went through the ’167 patent and just picked a few things out that seem to indicate that they are already there. . . . So it was illustrative. It’s not a detailed analysis. It is just suggestive.” Ex. 2006, 48:1–7.” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “The ’357 patent does not set forth a special definition for “call application management system.” As confirmed by Dr. Forys (id.), the plain language of the claim specifies the function required to be performed by the call application management system—connecting calls responsive to receiving a request to connect the call. Although Dr. Forys found Patent Owner’s proposed construction to be “reasonable,” Patent Owner’s proposed construction unnecessarily introduces the term “call processing,” which is not recited by the claim itself and on its face seems broader than the recited function of a call application management system—to connect a call. We do not agree with Patent Owner that a call application management system must perform examples of call processing described by the Specification, but not recited in the claim. Limitations from embodiments are not to be imported into the claims. See In re Van Geuns, 988 F.2d at 1184. Furthermore, we find that Patent Owner’s contention— the name “the call application management system of Claim 1 would be understood [by one of ordinary skill in the art] to manage, from start to finish, each call placed or received at the plurality of prisons” (PO Resp. 6)—places too much weight on the term “management” without sufficiently addressing the term “application.” We credit the testimony of Petitioner’s declarant, who disagrees that call application management system is 25 required to manage “all call processing, ‘from start to finish.’” Ex. 1020 ¶ 8 (emphasis omitted). Therefore, in light of the plain language of the claim, the Specification of the ’357 patent, and according the testimony of Patent Owner’s declarant and Petitioner’s declarant appropriate weight, we construe “call application management system” to mean a system that performs the enumerated function—“connecting a call to or from the telephone terminals over a telephone carrier network responsive to receiving a request for connecting the call.”” slip op. at 25

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony14 systems comports with the level of ordinary skill in the art reflected in the prior art of record, which relate to telephone communication systems. Petitioner has not explained sufficiently why the broader field of communications systems is a more appropriate area of academic or industry experience than telephony systems. Thus, we generally adopt Patent Owner’s proposed academic or industry experience in telephony systems. Therefore, one of ordinary skill in the art would have a Bachelor of Science degree in electrical engineering, computer science, or an equivalent field, as well as at least three years of academic or industry experience in telephony systems.” slip op. at 29

  Patent outcomesUS 7,529,357 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,529,357
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 2, 2015 · IPR2014-00824 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, 6, 7, 10, 19, and 20 are unpatentable over Spadaro and Hodge; claim 13 is unpatentable over Spadaro, Hodge, and Cree. Claims 2, 5, 8, 9, 11, 12, and 14–18 were …

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “the burden of persuasion is on Petitioner to prove “unpatentability by a preponderance of evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the Patent Owner. See id. (explaining petitioner “had the burden of 11 Dynamic Drinkware issued after the time of the trial hearing and post-hearing briefing. 11 persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifted”). Petitioner also has the initial burden of production. Id. Petitioner satisfied its burden of production by arguing in its Petition that Spadaro was prior art under § 102(e) and, in combination with one or more other prior art references, would have rendered claims 1–20 obvious at the time the invention was made under § 103(a). Pet. 4–5, 19–35.” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “production under § 103(c)(1), Petitioner contends it carried its burden of production to show that the ’167 patent (grandparent) sufficiently would have conveyed to one of ordinary skill in the art that the Patent Owner had possession of the claimed subject matter and, therefore, the ’260 patent is entitled to the benefit of the filing date of the ’167 patent. Reply 7. As Petitioner recognizes (Reply 6), a claim in an application is entitled, under 35 U.S.C. § 120, 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 in the later application, as required by 35 U.S.C. § 112. 35 U.S.C. § 120; In re Chu, 66 F.3d 292 (Fed. Cir. 1995). Petitioner’s argument consists of a single paragraph identifying claim numbers and locations where the ’167 patent purportedly describes the subject matter of most, but not all, of the claims at issue and a citation to a single paragraph in its declarant’s supplemental declaration supporting Petitioner’s Reply. Reply 7 (listing claims 2, 8, 9, 11, and 14–18, but not listing claims 5 and 12; citing Ex. 1020 ¶ 16).” slip op. at 21

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

    “The ’260 patent does not set forth a special definition for “call application management system.” As confirmed by Dr. Forys (id.), the plain language of the claim specifies the function required to be performed by the call application management system—connecting calls responsive to 26 receiving a request to connect the call. Although Dr. Forys found Patent Owner’s proposed construction to be “reasonable,” Patent Owner’s proposed construction unnecessarily introduces the term “call processing,” which is not recited by the claim itself and on its face seems broader than the recited function of a call application management system—to connect a call. We do not agree with Patent Owner that a call application management system must perform examples of call processing described by the Specification, but not recited in the claim. Limitations from embodiments are not to be imported into the claims. See In re Van Geuns, 988 F.2d at 1184. Furthermore, we find that Patent Owner’s contention— the name “the call application management system would be understood [by one of ordinary skill in the art] to manage, from start to finish, each call placed or received at the plurality of prisons” (PO Resp. 6)—places too much weight on the term “management” without sufficiently addressing the term “application.” We credit the testimony of Petitioner’s declarant, who disagrees that call application management system is required to manage “all call processing, ‘from start to finish.’” Ex. 1020 ¶ 8. Therefore, in light of the plain language of the claim, the Specification of the ’260 patent, and according the testimony of Patent Owner’s declarant and Petitioner’s declarant appropriate weight, we construe “call application management system” to mean a system that performs the enumerated function—“connecting a call to or from the telephone terminals over a telephone carrier network responsive to receiving a request for connecting the call.”” slip op. at 26

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties propose similar levels of ordinary skill in the art and do not directly challenge the other’s proposal. We consider the level of ordinary skill in the art to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The prior art references, like the ’260 patent, relate to telephone communication systems. See Ex. 1001, 1:60–62 (indicating the technical field relates to inmate management and call processing); Ex. 1004, 1:7–9 (indicating the field of the invention relates to the processing of voice telephone calls); Ex. 1005, 1:7–9 (indicating the field of the invention relates to telephone communication systems). In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony15 systems comports with the level of ordinary skill in the art reflected in the prior art of record, which relate to telephone communication systems. Petitioner has not explained sufficiently why the broader field of communications systems is a more appropriate area of academic or industry 15 MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 2112 (6th ed. 2003) (defining telephony as “[t]he transmission of speech to a distant point by means of electric signals”) (Ex. 3001). 30 experience than telephony systems. Thus, we generally adopt Patent Owner’s proposed academic or industry experience in telephony systems. Therefore, one of ordinary skill in the art would have a Bachelor of” slip op. at 30

  Patent outcomesUS 8,340,260 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,340,260
• Groupon, Inc. v. Blue Calypso, LLCSome claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00035 · APJ Michael W Kim · CBM · Final written decision

  Claims 1–25 and 29 are unpatentable: claims 2–15, 20–23, and 29 over Paul; claims 1–19, 23–25, and 29 for lack of written description. Claims 26–27 were not shown unpatentable.

  RulingsFinal written decision

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

    “Accordingly, we look to the ordinary meaning of the term “subsidy”— financial assistance given by one to another.5 The ’516 patent’s use of “subsidy” is consistent with its ordinary meaning. Specifically, the ’516 patent describes an advertiser setting up a subsidy program to subsidize communication fees, offer product discounts, generate and accumulate “reward points” for subscribers, or mitigate or defer other expenses of the subscriber. Ex. 1001, 3:21–27 (referring to Fig. 2). These examples are financial in nature. Product discounts reduce the monetary cost of a financial transaction, reward points are a form of currency, and mitigating or deferring expenses reduces the monetary cost of a financial transaction or postpones the monetary cost of a financial transaction, respectively. Also, the ’516 patent describes, as part of a subscriber setup process, an intermediary presenting, to a subscriber for selection, “subsidy programs 5 AMERICAN HERITAGE DICTIONARY 896 (3d ed. 1992) (defining “subsidy” as “1. Monetary assistance granted by a government to a person or group in support of an enterprise regarded as being in the public interest. 2. Financial assistance given by one person or government to another.”). available, including the criteria for continued subsidy and levels of subsidy.” Ex. 1001, 4:41–43 (referring to Fig. 3). For these reasons, in the Decision to Institute, the Board construed “subsidy” as “financial assistance given by one to another.” Dec. 7–9. Neither party challenges this construction. Having considered whether the construction set forth in the Decision to Institute should be changed in light of evidence introduced during trial, we are not persuaded any modification is necessary. Therefore, we maintain the construction of “subsidy” as “financial assistance given by one to another.”” slip op. at 7

  • BurdenNot shown unpatentable

    “The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). 1. Whether the Ratsimor Paper Was Publicly Accessible in November 2003 Although Petitioner does provide some evidence to support its position, after considering all of the evidence regarding the facts and the circumstances surrounding the public accessibility of the Ratsimor paper, in view of the relevant case law, we determine that Petitioner has not met its burden of showing that the Ratsimor paper was publicly accessible in November 2003.” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable

    “The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). 1. Whether the Ratsimor Paper Was Publicly Accessible in November 2003 Although Petitioner does provide some evidence to support its position, after considering all of the evidence regarding the facts and the circumstances surrounding the public accessibility of the Ratsimor paper, in view of the relevant case law, we determine that Petitioner has not met its burden of showing that the Ratsimor paper was publicly accessible in November 2003.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “1. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371. Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior art reference is read from the perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”).” slip op. at 24

  Patent outcomesUS 7,664,516 mixed
  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 7,664,516

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.