- Apple Inc. v. Paul PoniatowskiInstitutedPTAB · Oct 7, 2024 · IPR2024-00731 · APJ Jennifer S Bisk · IPR · Institution
The Board instituted review of claims 1–6, 8–13, 15–20, and 22–27 based on a reasonable likelihood that Wang, Dua, and Yong render them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–6, 8–13, 15–20, and 22–27 of the ’578 patent on the sole ground of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). For purposes of this proceeding, Petitioner argues a person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in computer science, computer engineering, or equivalent with one to two years of experience in the field of mobile transactions.” Pet. 8 (citing Bederson Decl. ¶¶ 35–37). Petitioner adds that “[a]dditional education or experience might substitute for the above requirements.” Id. To the extent necessary, and for purposes of this Decision, we accept this assessment offered by Petitioner, as it is supported by Dr. Bederson’s testimony and appears consistent with the ’578 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“scanner, reader, or camera” that is aimed at a barcode or special code of a product, the price of which is then added to the retail bill. Pet. 10–11 (quoting Ex. 1001, 7:45–49, 9:5–11). According to Petitioner, the Specification does not elaborate further on the meaning of the term “information concerning prices of goods.” Id. at 11. Petitioner, thus, interprets the term to encompass scenarios in which price information is received directly or indirectly. Id. Petitioner notes that during prosecution of the ’578 patent, the Examiner rejected this limitation over prior art, stating that prior art “sends the scanned bar code information to the server,” which “then preferably returns a description of the item and information,” and “[t]his item description and price information is displayed on the telephone’s display.” Id. at 12 (quoting Ex. 1002, 231). According to Petitioner, this is an example of indirectly receiving information concerning the prices of goods as it comes from a queried server, not from the item itself. Id. Petitioner notes that Patent Owner never disputed, and in fact, made statements supporting that these actions were encompassed by the claim limitation. Id. (citing Ex. 1002, 214). We agree with Petitioner that nothing in the claim language or the Specification requires that the claimed optical input receive information concerning the prices of goods directly from the goods themselves. Thus, on this record, we preliminarily construe the term “receiving information concerning the prices of goods” to encompass receiving pricing information from a server.” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In an inter partes review, the burden is on the petitioner to show a reasonable likelihood that it would prevail on a ground of unpatentability. 35 U.S.C. § 314(a). With respect to entitlement to any earlier effective filing date, however, a patent owner is not presumed to be entitled to the earlier filing dates of ancestral applications that do not share the same disclosure, such as in a continuation-in-part situation. See PowerOasis, Inc. v. T–Mobile USA, Inc., 522 F.3d 1299, 1305–06 (Fed.Cir.2008) (stating that once a defendant establishes that a reference is § 102(b) prior art, burden is on patent owner to come forward with evidence proving priority to an earlier filing date).” slip op. at 12
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 8,270,578 - Satco Products, Inc. v. The Regents Of The University Of CaliforniaInstitution deniedPTAB · Nov 8, 2021 · IPR2021-00661 · APJ Steven M Amundson · IPR · Institution
The Board denied institution of review for claims 1 and 2 under § 314(a), finding the Fintiv factors weighed against review because of the advanced, overlapping ITC investigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The Fintiv factors “relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Fintiv, IPR2020-00019, Paper 11 at 6. A stay of parallel litigation pending resolution of a Board proceeding “allays concerns about inefficiency and duplication of efforts.” Id. That the E.D.N.Y. case was stayed “at its earliest stage,” however, does not “allay[] concerns about inefficiency and duplication of efforts” in view of the 1220 investigation. Additionally, the E.D.N.Y. case was stayed “pending completion” of the 1220 investigation, not because of any Board proceeding. Ex. 3002, 1. With dates set in the 1220 investigation for the ALJ’s initial determination and the ITC’s final determination, a stay seems highly unlikely, especially with the initial determination date about a week away. Hence, factor (1) weighs against institution. See Fitbit, Inc. v. Koninklijke Philips N.V., IPR2020-00771, Paper 14 at 16–17 (PTAB Oct. 19, 2020).” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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). But we have discretion to deny a petition even when a petitioner satisfies the “reasonable likelihood” threshold standard for instituting trial. See, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). Based on the current record and for the reasons explained below, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not reached
“essentially the same argument about the ’557 patent’s effective filing date for its challenge based on Nakamura-959 and Nakamura-949 as for its invalidity defense based on insufficient written-description support for claim 1. See Pet. 7, 12–21, 37; Ex. 2004, 29–33; Ex. 2005, 245–48; Ex. 2014, 64–65, 70. As we understand the arguments, resolving the ’557 patent’s effective filing date does not require interpreting any part of § 1.57. See Pet. 12–21; Prelim. Resp. 29–31. Instead, the issue turns on whether the ’154 application supports claim 1 according to § 112’s first paragraph. See Pet. 12–21; Prelim. Resp. 29–31. Also, the challenges based on Tanda present a similar issue whether the ’447 provisional supports claim 1 according to § 112’s first paragraph. See Pet. 12–21, 61; Prelim. Resp. 29–31, 36–37. “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Under the circumstances here, the ITC can apply the test for sufficiency of disclosure to the ’154 application and the ’447 provisional just as well as the Board.” slip op. at 27
§ 112 disclosureDiscretionary denialPatents in suitUS 10,658,557 - Election Systems & Software, LLC v. Hart Intercivic, Inc.All claims unpatentablePTAB · Sep 1, 2021 · PGR2020-00031 · APJ Jason M Repko · PGR · Final written decision
Claims 1–30 are unpatentable: claims 1–5, 15–19, 25, and 11–14, 28 on obviousness grounds; claims 6, 7, 9, 10, 23, 24, 29, 30 on anticipation; claims 20–22 on obviousness.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On September 2, 2020, we instituted an inter partes review of all challenged claims based on all grounds in the Petition. Paper 6 (“Inst. Dec.”). Patent Owner filed a Response. Paper 14 (“PO Resp.”). Petitioner filed a Reply. Paper 19 (“Pet. Reply”). Patent Owner filed a Sur-reply. Paper 20 (“Sur-reply”). An oral hearing was held on July 6, 2021. A transcript of that hearing has been entered into the record. Paper 28 (“Tr.”).” slip op. at 2
- Skill levelDecided for petitioner
“B. Level of Ordinary Skill in the Art According to Petitioner, A person of ordinary skill in the art at the time the ‘966 patent was filed (“POSITA”) would have had at least a Bachelor’s degree in electrical engineering or computer science or an equivalent field, or equivalent work experience and, in addition, at least two years’ experience with electronic voting machines, including familiarity with ballot marking devices (“BMDs”), optical character recognition, bar codes and hash functions. Pet. 24 (citing Shamos Decl. ¶¶ 50–51). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 6. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. (PO Resp. 3). We continue to find that the level of ordinary skill identified by Petitioner (Pet. 24) is consistent with the record. See Inst. Dec. 6. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“testimony also support Petitioner’s conclusion that the accuracy of Brockhouse’s OCR could be improved. Pet. 56; Ex. 1005, 1:20–21 (disclosing that OCR is error prone); Shamos Decl. ¶ 231. On this record, Petitioner provides sufficient “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“4. Claims 7, 9, 10, 24, and 30, Anticipation The Petition states that the statutory basis for challenging claims 7, 9, 10, 24, and 30 is “35 U.S.C. §§ 102 and/or 103.” Pet. 3. In this section, we consider anticipation under Section 102. Patent Owner does not contest Petitioner’s analysis. See generally PO Resp.; PO Sur-reply. Upon review of the entirety of the record, we credit the undisputed testimony of Dr. Shamos and are persuaded by Petitioner’s uncontested analysis. In particular, claims 7 and 24 depend from claims 6 and 23, respectively. Both claims 7 and 24 add “wherein the bar code is utilized to confirm the printed vote record is valid.” Ex. 1001, 9:30–31 (claim 7), 11:18–19 (claim 24). For claims 7 and 24, Petitioner asserts that Nadaf counts the vote only after confirming that the PVR is valid. Pet. 70 (citing Ex. 1007, 6:2–10). In the cited passages, Nadaf refers to the process as “confirming the institutional provenance and integrity of the content of the printed vote.” Ex. 1007, 6:2–6. According to Nadaf, “Only after being audited will the printed vote be validated for counting.” Id. at 6:7–10. On this record, Petitioner supports the assertion that Nadaf confirms the printed vote’s validity with the bar code, as recited. See Pet. 69–70. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 7 and 24 are anticipated by Nadaf. Claim 9 recites a “two dimensional bar code.” Ex. 1001, 9:35–36. Claims 10 and 30 recite “a QR code bar code” Id. at 12:34–35. As for claims 9, 10, and 30, Petitioner asserts that Nadaf’s PVR contains both voter-readable text and a bar code encoded with voter selections. Pet. 71 (citing Ex. 1006, Fig. 4). Petitioner asserts that (1) Nadaf’s Figure 4 shows an example QR code and (2) a QR code is a two-dimensional bar code. Id. (citing Ex. 1007, 18:9; Ex. 1003 ¶ 296). On this record, Petitioner shows that Nadaf discloses the two-dimensional bar code that is a QR code, as recited in claims 9, 10, and 30. Thus, we determine that Petitioner has shown by a preponderance of the evidence that claims 9, 10, and 30 are anticipated by Nadaf.” slip op. at 56
Patent outcomesUS 10,445,966 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,445,966 - Flex Logix Technologies Inc. v. Venkat KondaAll claims unpatentablePTAB · Mar 16, 2021 · PGR2019-00042 · APJ Norman H Beamer · PGR · Final written decision
Claims 1–7, 9–15, and 17–19 are unpatentable under §§ 102(a)(1) and 103; the revised motion to amend and motion to exclude are denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy, we do not expressly construe any claim term for purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Ex. 1001, 49:9–18. Petitioner argues, and we agree, that this language is non-limiting as reciting optional features that “may or may not” be present, and therefore irrelevant to the issue of anticipation.9 Pet. 54–57.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“In light of these and other disclosures in Wong ’308, Petitioner argues that a POSITA would have been motivated to implement the switches of the ’756 PCT application using multiplexers. Pet. 102; Ex. 1002 ¶ 182. Patent Owner does not challenge this fact — the references to multiplexers (also referred to a “muxes”) in the ’342 patent suggest that Patent Owner would concede this point. E.g., Ex. 1001, 9:67, 14:33. Upon review of the record, we are persuaded that Petitioner has proved by a preponderance of the evidence that the combination of the ’724 provisional application and Wong ’308 renders claims 1–7, 9–15, and 17–19 obvious.” slip op. at 29
Patent outcomesUS 10,003,553 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham · NautilusPatents in suitUS 10,003,553 - Juniper Networks, Inc. v. Finjan, Inc.No claims unpatentablePTAB · Apr 7, 2020 · IPR2019-00026 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1, 15, and 41 were not shown unpatentable: Abadi did not identify suspicious code in its annotations, and the Abadi and Gryaznov combination did not cure that deficiency.
RulingsFinal written decision- Skill levelOther
“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 said subject matter pertains.” 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, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; 2 Abadi et al., U.S. Patent No. 6,253,370 B1, issued June 26, 2001 (filed Dec. 1, 1997) (Ex. 1008, “Abadi”). 3 Dmitry O. Gryaznov, Scanners of the Year 2000: Heuristics, Virus Bull. Conf. 225 (Sept. 1995) (Ex. 1009, 2–11, “Gryaznov”). (3) the level of skill in the art; and (4) when in evidence, objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). “To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds with the principles stated above in mind.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Having considered the parties’ arguments, we see no reason to disturb their agreed construction of “Downloadable” as “an executable application program, which is downloaded from a source computer and run on the destination computer,” with which the parties state their express agreement. We clarify in Section II.D.2. below that we agree with Patent Owner that the executable application program that is to be run on the destination computer must be the same executable application program that is downloaded from the source computer within the agreed construction. Sur-reply 1–2. This interpretation is not a question of the construction of the term “Downloadable” itself, but rather flows from the express language of the challenged claims, in which “the Downloadable” that is “ma[de] . . . available to web clients” in the final step of each of independent claims 1 and 41 has its antecedent basis in the first claim step, “receiving . . . a Downloadable.” Likewise, the antecedent in claim 15 for “the Downloadable” that is made available to web clients is the Downloadable in which suspicious code is identified by the content inspection engine. We also agree with Patent Owner that the claimed “linking” of a DSP “to the Downloadable” does not compel a different understanding because we are not persuaded that the linking contemplated in the ’844 patent requires modification of the code of the Downloadable itself. Sur-reply 2–3.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Having considered the full record developed during trial, we agree with Patent Owner that the replacement of the word “profile” with “information” does not add any clarity to the meaning of this phrase and that the proper construction of “Downloadable security profile that identifies suspicious code in [the received / a] Downloadable” in the context of the ’844 patent is “profile that must at least include, but is not necessarily limited only to, an identification of hostile, potentially hostile, undesirable, or potentially undesirable code in the corresponding Downloadable.” PO Resp. 7–8. Regardless, we do not discern that the difference between the parties’ positions with respect to these phrases is dispositive of any issues in this proceeding.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“generate an ID for the Downloadable.” PO Resp. 21 (emphasis added) (quoting Ex. 2015, 15), 23 (emphasis added) (citing Ex. 2015, 20). Based on Patent Owner’s arguments, we are not persuaded that the ’639 provisional demonstrates possession by the inventors of linking a DSP to the Downloadable “before a web server makes the Downloadable available to web clients.” Rather, by the time that the DSP has been linked to the Downloadable (e.g., by code scanner 325, in Patent Owner’s mapping), we understand that the Downloadable has already been received—and hence “made available”—by the web server. Notably, this conclusion does not depend on where the “linking” occurs—particularly, whether it may occur at a network gateway, a focus of the parties’ claim construction arguments (see, e.g., Pet. 25–27; PO Resp. 10–12; Section II.B.5, supra)—but instead on when it occurs relative to the Downloadable being made available to clients. Further, having considered the alleged Appendix to the ’639 provisional (Ex. 2015, 37–45), including portions cited by Dr. Butler in related litigation (see Ex. 2047), we are not persuaded that anything in the Appendix demonstrates possession of linking “before a web server makes the Downloadable available to web clients.” In conclusion, therefore, we are not persuaded that the inventors were in possession of the subject matter of the challenged claims at any time prior to the December 22, 1997, filing date of the ’648 application.” slip op. at 35
Patent outcomesUS 6,154,844 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 6,154,844 - Wombat Security Technologies v. Phishme, Inc.Rehearing deniedPTAB · Jul 20, 2017 · PGR2017-00009 · APJ Jennifer S Bisk · PGR · Rehearing
The Board denied Wombat’s rehearing request, leaving institution of PGR denied because the petition did not show the patent was eligible for PGR.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION The applicable standard for granting a request for rehearing is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements of a request for rehearing are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“sufficiently shown that the ’038 patent was eligible for post-grant review. Inst. Dec. 8–13. Specifically, we found deficient Petitioner’s contention that the challenged claims were not entitled to the benefit of the filing date of Application No. 13/785,252 (“the ’252 application”) to which the ’038 patent claims priority as a continuation-in-part. Inst. Dec. 8–13. This finding was based on the following deficiencies of the Petition: (1) the Petition did not discuss the relevant disclosure of the application to which the ’038 patent claims priority—Application No. 13/785,282 (“the ’252 application”)—as originally filed, citing instead to the ’940 patent, which issued from the ’252 application; (2) the Petition did not address the Examiner’s statements in the Notice of Allowability that “[t]he present application is being examined under the pre-AIA first to invent provisions”; and (3) Petitioner did not satisfy its burden to show that a person of ordinary skill in the art would not have understood the inventor to have possession of “providing feedback to the individual confirming that the identified email was a simulated phishing attack” (“the feedback limitation”). Id. For the third deficiency, we found the feedback limitation supported by at least paragraphs 5 and 18 of the ’252 application, which discuss training individuals who receive simulated phishing attacks such that users are better able to recognize and thwart a real phishing attack. Id. at 11–12.” slip op. at 2
- BurdenDecided for patent owner
“being recited expressly in the ’252 application it “satisf[ied] its burden to establish that it was more likely than not that the ’038 patent was not entitled to the filing date of the [’252 application].” Reh’g Req. 3. In Blue Calypso, LLC v. Groupon, Inc., however, the Federal Circuit explicitly found that identifying a limitation as not being recited expressly in the specification at issue was not enough to support a finding of lack of written description. 815 F.3d 1331, 1345 (Fed. Cir. 2016). The Federal Circuit explained that it was “troubled by the fact that the Board did not cite any evidence other than the fact that the terms were not present in the specification to support its finding,” concluding this placed “undue weight on the absence of the [exact] terms appearing in the specification.” Id. at 1345–46. Petitioner’s burden, therefore, is not established simply by pointing out that the ’252 application does not explicitly state the feedback limitation.” slip op. at 4
- Disclosure Requirements (§112) › Written description (Ariad)Not reached
“being recited expressly in the ’252 application it “satisf[ied] its burden to establish that it was more likely than not that the ’038 patent was not entitled to the filing date of the [’252 application].” Reh’g Req. 3. In Blue Calypso, LLC v. Groupon, Inc., however, the Federal Circuit explicitly found that identifying a limitation as not being recited expressly in the specification at issue was not enough to support a finding of lack of written description. 815 F.3d 1331, 1345 (Fed. Cir. 2016). The Federal Circuit explained that it was “troubled by the fact that the Board did not cite any evidence other than the fact that the terms were not present in the specification to support its finding,” concluding this placed “undue weight on the absence of the [exact] terms appearing in the specification.” Id. at 1345–46. Petitioner’s burden, therefore, is not established simply by pointing out that the ’252 application does not explicitly state the feedback limitation.” slip op. at 4
§ 112 disclosurePatents in suitUS 9,398,038 - Google, Inc. / Apple Inc. v. Smartflash LLCAll claims unpatentablePTAB · Nov 10, 2016 · CBM2015-00130 · APJ Jennifer S Bisk · CBM · Final written decision
Claims 3–10, 15–31, and 33 are unpatentable under § 101; claim 22 is also indefinite under § 112.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“We are persuaded that the challenged claims are drawn to a patent- ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of conditioning and controlling access to content. For example, claim 17 recites “code to evaluate the use status data using the use rules data to determine whether access is permitted to the stored data.” Ex. 1001, 27:1–15. As discussed above, the ’221 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1001, 1:20–55. The Specification explains that these pirates obtain data either by unauthorized or legitimate means and then make the data available over the Internet without authorization. Id. The Specification further explains that once data has been published on the Internet, it is difficult to police access to and use of it by internet users who may not even realize that it is pirated. Id. The ’221 patent proposes to solve this problem by restricting access to data on a portable data carrier based upon payment validation. Id. at 1:59–2:4. The ’221 patent makes clear that the crux of the claimed subject matter is restricting access to stored data based on supplier-defined access rules and validation of payment. Id. at 1:59–2:15. Although the Specification refers to data piracy on the Internet, the challenged claims are not limited to the Internet. The underlying concept of the challenged claims, particularly when viewed in light of the Specification, is controlling access to content based upon payment as Petitioner contends. As discussed further below, this is a fundamental economic practice long in existence in commerce. See Bilski, 561 U.S. at 611.” slip op. at 10
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“recite only well-known, routine, and conventional computer components and activities, which is insufficient to establish an inventive concept.” Reply 6. Petitioner adds that “[t]he specification [of the ’221 patent] itself disclaims [the claimed hardware elements] as non-inventive.” Id. (citing Ex. 1001, 4:4–13, 11:28–29, 12:29–32, 13:35–38, 16:46–50, 18:7–17). We are persuaded that claims 3–10, 15–31, and 33 do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt the rationale articulated in the Petition that the additional elements of the challenged claims are generic features of a computer that do not bring the challenged claims within § 101 patent eligibility. Pet. 49–82; Reply 6–19; ’126 Pet. 25–31; ’126 Reply 8–12.” slip op. at 15
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“Upon consideration of the entire record, we are persuaded sufficiently byPetitioner’s argument that a person of ordinary skill in the art would not know that the antecedent basis for “said use rules” refers back to the “use rules data” introduced in claim 17. Although lack of antecedent basis alone is insufficient to render a claim indefinite, here the lack of antecedent basis introduces ambiguity into the claim. It is unclear whether claim 22 should recite “use rules” or “said use rules data,” rather than “said use rules.” As indicated above, we have construed “use rules” and “use rules data” differently. Accordingly, we are persuaded that claim 22 is amenable to two plausible claim interpretations, and we determine that the phrase “said use rules” does not inform those skilled in the art about the scope of the invention with reasonable certainty and, therefore, is indefinite under 35 U.S.C § 112, ¶ 2. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (affirming Board’s conclusion, in context of ex parte appeal, that claims were indefinite “on grounds that they ‘contain[ ] words or phrases whose meaning is unclear.’”).” slip op. at 32
- ExcludeMotion to exclude, deniedDenied
“Patent Owner has not articulated a persuasive reason for excluding Dr. Tygar’s Declaration. Because Exhibit 1002 relates to the underlying factual issues related to patent eligibility, we are not persuaded that it is irrelevant under FRE 401 and 402. It is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702. Accordingly, we decline to exclude Exhibit 1002 in its entirety or any paragraph therein.” slip op. at 34
Patent outcomesUS 8,118,221 unpatentable§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · EnfishPatents in suitUS 8,118,221 - Google, Inc. / Apple Inc. v. Smartflash LLCAll claims unpatentablePTAB · Nov 10, 2016 · CBM2015-00126 · APJ Jennifer S Bisk · CBM · Final written decision
Claims 3–10, 15–31, and 33 are unpatentable under § 101; claim 22 is also indefinite under § 112, ¶ 2.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Petitioner argues that the challenged claims are directed to the abstract idea of “controlling access to something based on validation that payment has been made” (’126 Pet. 21) or “payment for and/or controlling access to data” (Pet. 41). Specifically, Petitioner contends that “each challenged claim is drawn on its face to the concept of payment for and/or controlling access to data.” Pet. 43; see also ’126 Pet. 22 (“challenged claim 3 simply performs four steps inherent in the abstract idea of conditioning access on payment validation.”). We are persuaded that the challenged claims are drawn to a patent- ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of conditioning and controlling access to content. For example, claim 17 recites “code to evaluate the use status data using the use rules data to determine whether access is permitted to the stored data.” Ex. 1001, 27:1–15.” slip op. at 10
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“132 S. Ct. at 1297). “This requires more than simply stating an abstract idea while adding the words ‘apply it’ or ‘apply it with a computer.’ Similarly, the prohibition on patenting an ineligible concept cannot be circumvented by limiting the use of an ineligible concept to a particular technological environment.” Versata, 793 F.3d at 1332 (citations omitted). Moreover, the mere recitation of generic computer components performing conventional functions is not enough. See Alice, 134 S. Ct. at 2360 (“Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”). Petitioner argues that “the [challenged c]laims’ ‘additional features’ recite only well-known, routine, and conventional computer components and activities, which is insufficient to establish an inventive concept.” Reply 6. Petitioner adds that “[t]he specification [of the ’221 patent] itself disclaims [the claimed hardware elements] as non-inventive.” Id. (citing Ex. 1001, 4:4–13, 11:28–29, 12:29–32, 13:35–38, 16:46–50, 18:7–17). We are persuaded that claims 3–10, 15–31, and 33 do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt the rationale articulated in the Petition that the additional elements of the challenged claims are generic features of a computer that do not bring the challenged claims within § 101 patent eligibility. Pet. 49–82; Reply 6–19; ’126 Pet. 25–31; ’126 Reply 8–12.” slip op. at 15
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“Upon consideration of the entire record, we are persuaded sufficiently byPetitioner’s argument that a person of ordinary skill in the art would not know that the antecedent basis for “said use rules” refers back to the “use rules data” introduced in claim 17. Although lack of antecedent basis alone is insufficient to render a claim indefinite, here the lack of antecedent basis introduces ambiguity into the claim. It is unclear whether claim 22 should recite “use rules” or “said use rules data,” rather than “said use rules.” As indicated above, we have construed “use rules” and “use rules data” differently. Accordingly, we are persuaded that claim 22 is amenable to two plausible claim interpretations, and we determine that the phrase “said use rules” does not inform those skilled in the art about the scope of the invention with reasonable certainty and, therefore, is indefinite under 35 U.S.C § 112, ¶ 2. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (affirming Board’s conclusion, in context of ex parte appeal, that claims were indefinite “on grounds that they ‘contain[ ] words or phrases whose meaning is unclear.’”).” slip op. at 32
- ExcludeMotion to exclude, deniedDenied
“Patent Owner has not articulated a persuasive reason for excluding Dr. Tygar’s Declaration. Because Exhibit 1002 relates to the underlying factual issues related to patent eligibility, we are not persuaded that it is irrelevant under FRE 401 and 402. It is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702. Accordingly, we decline to exclude Exhibit 1002 in its entirety or any paragraph therein.” slip op. at 34
Patent outcomesUS 8,118,221 unpatentable§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · EnfishPatents in suitUS 8,118,221 - Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentablePTAB · Jun 21, 2016 · IPR2015-01376 · APJ Kerry Begley · IPR · Final written decision
Claims 1–3, 8, and 15–25 are unpatentable: Pong anticipates claims 1–3, 8, 15, 16, and 25; Pong and Smith render claims 17–24 obvious. Claim 11 is not shown unpatentable.
RulingsFinal written decision- BurdenOther
“and 37 C.F.R. § 42.73. Having considered the record before us, we determine Petitioner has shown by a preponderance of the evidence that claims 1–3, 8, and 15–25 of the ’121 patent are unpatentable. See 35 U.S.C. § 316(e). Petitioner, however, has not demonstrated by a preponderance of the evidence that claim 11 is unpatentable.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Communications AB, Sony Mobile Communications (USA) Inc., LG Electronics, Inc., LG Electronics USA, Inc., and LG Electronics Mobilecomm USA, Inc. (collectively, “Subsequent Petitioners”; and with Initial Petitioners, “Petitioner”) filed a Petition in IPR2015-01376, requesting inter partes review of claims 1–3, 8, 11, 12,3 and 15–25 of the 2 The Petition also lists Samsung Telecommunications America, LLC (“STA”) as a petitioner. Paper 6 (“Pet.”), 1. After the filing of the Petition, however, STA merged with and into Samsung Electronics America, Inc. Paper 10. Thus, STA no longer exists as a separate corporate entity. Id. 3 Subsequent Petitioners represented that they included claim 12 “merely to conform” to the Petition and motion for rehearing of the Institution Decision, regarding claim 12, that was pending before the Board and that if the motion was denied, they requested joinder on “all claims except claim 12.” IPR2015-01376, Paper 3 (“IPR2015-01376 Pet.”), 1 n.1, 33 n.5. Because we denied the motion, we understood Subsequent Petitioners to no longer maintain their challenge of claim 12 and to the extent they did, we determined they had not shown the IPR2015-01376 Petition warranted institution of review of the claim. IPR2015-01376, Paper 12, at 12–15. IPR2015-01376 Pet. Subsequent Petitioners also filed a motion for joinder with this proceeding, which we granted. IPR2015-01376, Papers 4, 12.” slip op. at 2
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“addresses Koster—a prior art U.S. patent of record as Exhibit 1009 that was filed on July 13, 2004 and issued on April 13, 2004—Patent Owner’s failure to demonstrate enablement of the proposed substitute claims results in a failure to demonstrate novelty and non-obviousness of the proposed substitute claims over the prior art of record. When arguing how the limitations of the proposed substitute claims distinguish them from the disclosures of the references of record, Patent Owner’s Motion addresses Koster only by asserting that “[a]s to . . . Koster . . . , because, as discussed above, all of the substitute claims find support in the [’]347 Application, . . . Koster . . . is not prior art to any of the proposed substitute claims.” Mot. 22. Because Patent Owner does not persuade us that the proposed substitute claims are enabled by the disclosure in the ’347 Application, we find unpersuasive Patent Owner’s suggestion that the proposed substitute claims are entitled to the filing date of the ’347 Application. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (“For a patent to claim priority from the filing date of its provisional application, . . . the specification of the provisional must . . . enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.”) (internal citation and quotations omitted); Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (“The earlier application must contain a written description of the subject matter of the interference count, and must meet the enablement requirement.”); see also Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1359 (Fed. Cir. 2005) (“[If] the 1983 PCT application was . . . not enabled, Novo would not be able to rely upon the application’s priority date to overcome the Brewer patent.”). Accordingly, we also find unpersuasive Patent Owner’s assertion basis for asserting that the proposed substitute claims are patentable over Koster (by itself or in combination with other references of record), we conclude that Patent Owner has not met its burden of demonstrating patentability of the proposed substitute claims over the references of record. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307 (Fed. Cir. 2015) (upholding Board’s requirement that patent owner “show patentable distinction [of the substitute claims] over the prior art of record”); Opp. 1–4. Thus, Patent Owner has not met its burden for proposed substitute claims 26–34.” slip op. at 84
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Decision and maintain in this Decision—in which “states” is not limited to cache coherency states—we determine that Pong’s presence bit vector discloses the recited “probe filtering information” “representative of states associated with selected ones of the cache memories,” where either the write update or the write invalidate protocol is implemented. See Inst. Dec. 7–10; supra § II.B.1.a. First, under this construction, there is no dispute that “states associated with selected ones of the cache memories” includes presence. See Inst. Dec. 9–10; PO Resp. 25 (arguing that Petitioner’s argument that the presence bit vector represents the “state” of presence allegedly is foreclosed only by Patent Owner’s proposed “construction of state as a cache coherence protocol state”); id. at 1–11, 25–27; Reply 15; Ex. 3001, 497–48 (definition of “state”); Ex. 2016 ¶ 87. Nor is there any dispute that the bits in Pong’s presence bit vector represent this state of presence. Pong discloses that when a bit in the presence bit vector is set, the processor that corresponds to the bit “has a copy of the data block,” i.e., a copy of the data block is present. Ex. 1003 ¶ 51. Accordingly, we agree with Petitioner that in both the write update and write invalidate protocols, a set bit represents the state of presence of a cached copy of the data block in a” slip op. at 42
Patent outcomesUS 7,296,121 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,296,121 - Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentablePTAB · Jun 21, 2016 · IPR2015-00163 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 4–6 and 19–24 are unpatentable over Koster and Koster with Smith, respectively; claims 11 and 12 were not shown unpatentable, and the motion to amend was denied.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“ANALYSIS A. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Dr. Horst and Dr. Oklobdzija agree that a person of ordinary skill in the art would have had at least a “bachelor’s degree in electrical engineering, computer engineering, or computer science” and “two years of experience in the design of multiprocessor systems.” Ex. 1014 ¶ 8; Ex. 2016 ¶ 8. We adopt this proposal as the level of ordinary skill in the art, based on the testimony of the parties’ experts as well as our review of the ’121 patent and the prior art involved in this proceeding.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner
“evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[e] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“The heart of the dispute regarding this limitation, however, lies in whether the disclosure of microprocessors as devices in a system necessarily discloses that those microprocessors are “programmed.” Because the ’121 patent does not illuminate this issue, but instead the parties rely on expert testimony and other extrinsic evidence to support their respective positions, we consider this issue to more properly fall within the category of unpatentability as opposed to claim construction. See Pet. 34–36; PO Resp. 12–19, 25–29; Reply 5–8. Thus, we do not further construe the term “programmed” other than to note that the ’121 patent uses the term in the ordinary and customary manner. See Ex. 1001, 7:49–52, 27:64–28:24, 29:1–3; Ex. 2012, 359; Ex. 2013, 590–91; Ex. 2014, 931.” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“reasonable likelihood of prevailing on this proposed ground of unpatentability. Inst. Dec. 19–24. We have reviewed Petitioner’s anticipation arguments and supporting evidence, including Koster’s disclosure, the detailed arguments appearing on pages 31–38 of the Petition, and the testimony of Dr. Horst. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, which we also have considered, Petitioner has shown, by a preponderance of the evidence, that each of claims 4–6 is unpatentable under 35 U.S.C. § 102 as anticipated by Koster. Petitioner, however, has not shown, by a preponderance of the evidence that Koster anticipates claims 11 and 12.” slip op. at 27
Patent outcomesUS 7,296,121 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,296,121
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.