• Good Sportsman Marketing, LLC v. Hangzhou ZH Tech Co., Ltd.Instituted
  PTAB · Nov 22, 2024 · PGR2024-00034 · APJ Patrick R Scanlon · PGR · Institution

  Instituted PGR on claims 1–19 and all asserted grounds after finding at least one claim more likely than not unpatentable.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute a post-grant review. See 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (2022). To institute a post-grant review, we must determine that “the information presented in the petition . . . 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). For the reasons set forth below, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of at least one challenged claim. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We note that the identification of a Ph.D. as an example of “more formal education” creates a vast range of education relative to a bachelor’s degree. Thus, we treat the identification of a Ph.D. just as it is—an example—and not a requirement. In this case, “more formal education” can be satisfied by a level of education less than a Ph.D (but greater than a bachelor’s degree). Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, definition, limited as discussed above, for the purposes of this Decision.” slip op. at 9

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

    “On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 10

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

    “would have understood Unger’s disclosure to “suggest the use of a torsion spring to facilitate attachment and detachment, because torsion springs are designed to impart this functionality.” Id. (citing Ex. 1002 ¶ 118). Petitioner also asserts that one of ordinary skill in the art would have “understood that there were a limited number of ways to impart the referenced resilient or flexible ‘manipulation,’” and “would have been motivated to look to various known solutions to impart the suggested functionality, including the torsional spring mechanism of Smith that is used in a similar hearing protection device application for a similar purpose as Unger’s mounting arms (to apply a clamping force).” Id. at 32 (citing Ex. 1002 ¶¶ 120–121).” slip op. at 17

  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 11,736,855
• Apple Inc. v. Ericsson Inc.Instituted
  PTAB · Oct 28, 2022 · IPR2022-00715 · APJ Norman H Beamer · IPR · Institution

  The Board instituted IPR on claims 1–9 under both § 103 grounds, finding a reasonable likelihood that Apple would prevail over Luo and Zhang, and Luo, Zhang, and Nilsen.

  RulingsInstitution decision

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

    “The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any 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 explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2

  • BurdenOther

    “preponderance of the evidence that the claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s proposal at this stage of the proceeding. Prelim. Resp. 8–9. Petitioner’s proposal is 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). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 8

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

    “Petitioner’s constructions of internal and external networks are consistent with the definitions in the ’454 Specification, quoted in Section II.A above, and we adopt them for the purposes of this Decision. Ex. 1001, 5:37–39. Petitioner’s proposed requirement that “transitioning communications from said first network to said second network” comply with the “make-before-break” embodiment disclosed in the ’454 Specification is not appropriate given the broad language of this claim element. See Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004): Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. Petitioner’s proposed statement of the functions and corresponding disclosed structures for the “means-plus-function” elements of claims 6, 7, and 9 are unchallenged and appear reasonable, and we adopt them for purposes of this Decision.” slip op. at 10

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,792,454
• Offshore Technical Compliance, LLC v. Innovative Pressure Testing, LLCAll claims unpatentable
  PTAB · Oct 28, 2021 · IPR2020-00923 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–17 were held unpatentable as obvious over BOP California, Wodjenski, and Winters; the revised motion to amend proposing claims 19–35 was denied.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “1 The Petition requested review of claims 1–18, but Patent Owner filed a statutory disclaimer of claim 18. Pet. 3; Ex. 2001; see 37 C.F.R. § 42.107(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.”); Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1372 (Fed. Cir. 2018). claims on which we instituted trial. Based on the record before us, Petitioner has shown, by a preponderance of the evidence, that (1) claims 1–17 of the ’143 patent are unpatentable; and (2) Patent Owner’s proposed substitute claims 19–35 are unpatentable.” slip op. at 2

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “B. Testimony of Mr. Anderson Patent Owner contends that the testimony provided by Petitioner’s” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 18

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “D. Claim Construction The Board uses “the same claim construction standard that would be” slip op. at 21

  Patent outcomesUS 9,207,143 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 9,207,143
• Unified Patents Inc. v. KCG Technologies LLCAll claims unpatentable
  PTAB · Feb 10, 2021 · IPR2019-01536 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1–13 are unpatentable as obvious; the revised motion to amend is denied because proposed substitute claims 14–26 are unpatentable as obvious or indefinite.

  RulingsFinal written decision

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

    “We agree with Petitioner. Proposed substitute claim 24 recites “the handheld device” without antecedent basis. This lack of antecedent basis renders proposed substitute claim 24 indefinite, as we noted in our Preliminary Guidance. Pet. Opp. to RMTA 25; Prelim. Guidance 8 (“Proposed substitute claim 24 also recites ‘the handheld device’ and also suffers from the lack of antecedent basis). Despite having the opportunity to correct its error and amend proposed substitute dependent claim 24 when independent claim 14 was amended to remove the recitation of “a handheld device,” Patent Owner did not do so in its Contingent Revised Motion to Amend. RMTA 31. Proposed substitute claim 24 is indefinite because the claim “fails 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, 901 (2014); see USPTO Memorandum on the Approach to Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan. 6, 2021)13; see MPEP 2173.05(e) (9th ed., Rev. 08.2017, June 2020). This is because “the handheld device” is only recited in proposed substitute claim 24, and the proposed substitute claim fails to inform one skilled in the art the scope of invention related to synchronizing “data on the handheld device” “in the virtual smart phone.” Because proposed substitute claims 25 and 26 depend from proposed substitute claim 24, we similarly agree with Petitioner that claims 25 and 26 also are indefinite for lacking an antecedent basis for the term “handheld device.” Pet. Opp. to RMTA 25. Accordingly, we determine Petitioner has demonstrated by a preponderance of the evidence that proposed substitute claims 24–26 are unpatentable under 35 U.S.C. § 112 as indefinite.” slip op. at 40

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “Whether to treat a preamble term as a claim limitation is determined on the facts of each case in light of the claim as a whole and the invention described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (quoting Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir. 2003) (internal quotation marks omitted). “Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble generally is not limiting.” Symantec Corp. v. Computer Assoc. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (internal quotation marks omitted). When the limitations in the body of the claim rely upon or derive essential structure from the preamble, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). A claim preamble also is limiting if the preamble is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes, Inc., 182 F.3d at 1305. We disagree with Patent Owner. Specifically, we do not agree that limitations in the body of the claims require the preamble to serve as an antecedent basis nor do they derive essential structure from the preamble. Rather, all of the elements recited in the body of claim 1 comprise a “virtual smart phone.” That is, we do not discern, and Patent Owner fails to persuasively point us to, any structure imparted by the preamble’s recitation of a “virtual smart phone.” See Pet. Reply 1–2. We similarly do not agree that the without the term “virtual smart phone” there would be no understanding of the “emulating” or “handheld device” limitations. Rather, the recited “software application executing on the processor” limitation provides the structure and meaning for the “emulating” of the “handheld device” features. Furthermore, we agree with the Petitioner that there is no evidence in the record that the prosecution history requires that the preamble is limiting, and the claims were distinguished during prosecution based on the recitation of a “virtual” smart phone. Id. at 2–3. Accordingly, we do not agree with Patent Owner that the preamble is limiting. slip op. at 7

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

    “on the process to . . . emulate features of a handheld device.” Ex. 1001, 12:58–60 (emphasis added). Patent Owner argues that the term “‘emulate’ has a meaning in the art that is common and understood to mean ‘to imitate.’” PO Resp. 18. Patent Owner provides a dictionary definition to support its contention. Ex. 2004 (defining “emulate” as “to imitate in an effort to equal or surpass”). Patent Owner contends the use of “emulate” in claim 1 comports with its commonly understood meaning as “to imitate,” as does the use of the term “emulate” in the written description. Pet. 18–20 (citing Ex. 1001, 1:66–2:3, 2:6–3:5, 12:54–13:2 (claim 1)). Petitioner argues that the term “emulate” should be given its plain and ordinary meaning and does not contest Patent Owner’s construction of the term “emulate” as “to imitate.” Pet. 6–7; Pet. Reply 7. Petitioner, however, contests Patent Owner’s application of that construction to the asserted prior art. Pet. Reply 4–7 (citing Ex. 1034 ¶¶ 24–26). Petitioner specifically argues that Patent Owner implies that “(1) the imitation must be an exact duplicate in display and manner of input . . . or (2) the imitation relates only to the display and touch screen aspects.” Pet. Reply 4–5. In support of its position that Patent Owner’s interpretation of “to imitate” improperly narrows the meaning of “emulate,” Petitioner contends the written description discloses “less than full replication as emulation” and “controlling the handheld device th[r]ough control of a projected image using a variety of control input mechanisms provides emulation.” Pet. Reply 5–6 (citing Ex. 1001, 2:2–5, 3:57–61, 4:63–66, 6:24–42). Petitioner also notes that the dictionary definition Patent Owner proffered indicates that an exact duplication is not required. Pet. Reply 7 (“The complete definition of emulate [as] ‘to imitate in an effort to equal or surpass.’ Ex. 1004, 3”). We conclude that a preponderance of evidence supports the construction of the term “emulate” to mean “to imitate,” without any further restriction such as exact duplication or only display or touch screen aspects. Accordingly, we construe the term “emulate” as “to imitate.”” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at or before the priority date of the ’955 patent “would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, physics, or a related subject, and two to three years of work experience in the field of automotive information systems.” Pet. 6 (citing Ex. 1002 ¶¶ 38–39); Ex. 1034 ¶ 14 (Petitioner’s expert reiterating the same level of ordinary skill in the art). Patent Owner does not propose an ordinary level of skill in the art. We agree with and adopt the level of ordinary skill in the art as articulated by Petitioner.” slip op. at 10

  Patent outcomesUS 9,671,955 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,671,955
• Captioncall, L.L.C. / Sorenson Communications, Inc. v. Ultratec, Inc.All claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-00637 · APJ William V Saindon · IPR · Final written decision

  Claims 1–30 are unpatentable as obvious; Patent Owner’s contingent motion to amend is denied for lack of written-description support and indefiniteness.

  RulingsFinal written decision

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “admitted that the patented features of voice and revoiced text are responsible for ‘giv[ing] the phone back to folks with hearing loss.’” PO Resp. 48 (emphasis added). Thus, Patent Owner is offering the statement for the truth that voice and re-voiced text gives the phone back to folks with hearing loss. Patent Owner’s argument that Mr. Puzey was discussing the existence of features in his company’s product rather than features in Patent Owner’s product does not change that his statement is offered as proof regarding an alleged long-felt need for the features. Accordingly, his testimony is hearsay. slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “art is telecommunication systems. Thus, a [POSA] is a person familiar with at least that technology by way of background and/or experience.” CaptionCall, LLC v. Ultratec, Inc., Case IPR2013-00549, Paper 71, 13 (Final Written Decision) (PTAB 2015); see also CaptionCall, LLC v. Ultratec, Inc., Case IPR2013-00780, Paper 35, 9 (Final Written Decision) (PTAB 2015) (reaffirming our finding in IPR2013- 00549). Patent Owner states that it “does not agree” with that definition of a person of ordinary skill in the art, and that, “without waiving the foregoing objection and reserving all rights,” states that it will “appl[y]” our prior definition of a person of ordinary skill in the art “for purposes of this Response.” PO Resp. 3. By not setting forth arguments advocating a particular definition of the level of ordinary skill in the art, and by applying our prior definition, Patent Owner has waived arguments for any other definition. Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art, as expressed by its declarant, Mr. Occhiogrosso. Ex. 1009 ¶¶ 26–27. This person typically has “a bachelor’s degree” slip op. at 35

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

    “understand a “communication link,” as claimed, to refer to the “communication line” described in the specification. In particular, the link is “intended not only to apply to a traditional land-line . . . but also to all equivalents that offer similar functionality.” Id. at 8:60–63. A link could be “a portion of the bandwidth” of a particular connection, such that a single mode of connection (e.g., IP) could carry out two types of communication (voice and text), with each type corresponding to a different “communication link.” See id. at 8:44–47, 8:63–65. For example, as explained in the ’838 patent, “[e]ach of the telephone lines could be . . . a portion of the bandwidth of an ISDN or DSL service.” Id. at 8:53–65. Accordingly, we adopt Petitioner’s construction of “communication link” as “any communication session, protocol, link, connection, or path distinguishable from [another] communication link[].”” slip op. at 22

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

    “3. Combination of References As we discussed above, Petitioner’s combination takes the two-line” slip op. at 43

  Patent outcomesUS 8,908,838 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 8,908,838
• 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
• PNC Bank, N.A. / U.S. Bank, N. A. et al. v. Secure Axcess, LLCAll claims unpatentable
  PTAB · Sep 8, 2015 · CBM2015-00009 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 1–32 are unpatentable as obvious over the SHTTP document and Arent.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “For the foregoing reasons, we determine that Petitioner has established by a preponderance of the evidence that the subject matter recited in claims 1–32 of the ’191 patent as a whole would have been obvious to one of ordinary skill in the art in view of the teachings of the SHTTP document and Arent. See 35 U.S.C. § 103(a).” slip op. at 71

  • ExcludeMotion to exclude, deniedNot reached

    “Information Prepared by Paul C. Clark” (Ex. 1018). Petitioner opposes, arguing that Exhibit 1018 is Dr. Clark’s notes used during his deposition. We did not refer to or rely on Exhibit 1018 in this Final Written Decision. As such, we need not reach the merits as to Patent Owner’s Motion to Exclude. Accordingly, Patent Owner’s Motion to Exclude certain evidence (Ex. 1018) is dismissed as moot.” slip op. at 71

  • Skill levelSkill level board ownOther

    “Petitioner’s expert adopted the level of ordinary skill in the art at the time of the invention used by Patent Owner’s expert. See Ex. 2006 ¶ 8 (testimony by Patent Owner’s declarant identifying the level of ordinary skill); Ex. 1002 ¶ 29 (testimony by Petitioner’s declarant). We do not 31 disagree with the parties. Therefore, one of ordinary skill in the art would have a bachelor’s degree in computer science, computer engineering, or an equivalent field and least two years of work experience in the area of information technology.” slip op. at 31

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “We agree with Petitioner and its declarant that the provisional application does not disclose the claimed authenticity key or preferences file or the claimed use thereof, as recited in each of independent claims 1, 17, 29, 31, and 32. The provisional application describes the invention in a few sentences. The scarcity of detail fails to provide sufficient disclosure of the claimed steps. For example, we see no disclosure of inserting any data in the provisional application, much less inserting something that could be identified as an authenticity key. Although a shared secret is disclosed, the shared secret is not described as being inserted into the web page or any other data. See id. at 5–6 (“The invention proposes to utilize the shared secret data created as part of being” a credit card holder of a particular credit 33 card company.). Moreover, the record evidence indicates that the provisional application does not disclose the recited “authenticity key.” Pet. 20 (citing Ex. 1002 at 18, ¶ 37). Thus, we agree with Petitioner that the provisional application lacks written description support for “authenticity key,” which is recited by all claims in the ’191 patent. Accordingly, we determine Arent is prior art under 102(a) to the ’191 patent and is available for consideration in this covered business method patent review.” slip op. at 33

  Patent outcomesUS 7,631,191 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,631,191
• PNC Bank, N.A. / U.S. Bank, N. A. et al. v. Secure Axcess, LLCAll claims unpatentable
  PTAB · Sep 8, 2015 · CBM2014-00100 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 1–32 are unpatentable as obvious over SHTTP and Arent; the Board found the combined teachings and reason to combine established by a preponderance of the evidence.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner’s expert adopted the level of ordinary skill in the art at the time of the invention used by Patent Owner’s expert. See Ex. 2006 ¶ 8 (testimony by Patent Owner’s declarant identifying the level of ordinary skill); Ex. 1002 ¶ 29 (testimony by Petitioner’s declarant). We do not 31 disagree with the parties. Therefore, one of ordinary skill in the art would have a bachelor’s degree in computer science, computer engineering, or an equivalent field and least two years of work experience in the area of information technology.” slip op. at 31

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “We agree with Petitioner and its declarant that the provisional application does not disclose the claimed authenticity key or preferences file or the claimed use thereof, as recited in each of independent claims 1, 17, 29, 31, and 32. The provisional application describes the invention in a few sentences. The scarcity of detail fails to provide sufficient disclosure of the claimed steps. For example, we see no disclosure of inserting any data in the provisional application, much less inserting something that could be identified as an authenticity key. Although a shared secret is disclosed, the shared secret is not described as being inserted into the web page or any other data. See id. at 5–6 (“The invention proposes to utilize the shared secret data created as part of being” a credit card holder of a particular credit 33 card company.). Moreover, the record evidence indicates that the provisional application does not disclose the recited “authenticity key.” Pet. 20 (citing Ex. 1002 at 18, ¶ 37). Thus, we agree with Petitioner that the provisional application lacks written description support for “authenticity key,” which is recited by all claims in the ’191 patent. Accordingly, we determine Arent is prior art under 102(a) to the ’191 patent and is available for consideration in this covered business method patent review.” slip op. at 33

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “10. Conclusion Regarding Obviousness We have resolved the question of obviousness based on factual determinations of (1) the scope and content of the prior art; (2) differences between the subject matter of challenged claims and the teachings of the prior art; and (3) the level of ordinary skill in the art. Graham, 383 U.S. at 17–18. Patent Owner did not put forth any objective evidence of nonobviousness. For the foregoing reasons, we determine that Petitioner has established by a preponderance of the evidence that the subject matter recited in claims 1–32 of the ’191 patent as a whole would have been obvious to one of ordinary skill in the art in view of the teachings of the SHTTP document and Arent. See 35 U.S.C. § 103(a).” slip op. at 71

  Patent outcomesUS 7,631,191 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,631,191
• Captioncall, L.L.C. v. Ultratec, Inc.All claims unpatentable
  PTAB · Mar 3, 2015 · IPR2013-00545 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over Ryan and Alshawi because their combined teachings render the claimed relay system obvious.

  RulingsFinal written decision

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

    “of the specification of the patent in which it appears. Thus, we will not limit “trained to the voice of the call assistant” to require training to the voice of only one particular call assistant, because the claim language encompasses the invention as disclosed in the Specification—software trained to a voice pattern of a call assistant. Ex. 1001, 2:41-49 (“Summary of the Invention”). Nor will we limit “trained to the voice of the call assistant” to a particular time in which the training must occur or to a particular manner of training that is not found in the claims nor the specification. Accordingly, “trained to the voice of the call assistant” does not preclude voice recognition software that is designed or built in advance of implementation at the source code level to the voice pattern of a call assistant. Nor is “trained to the voice of the call assistant” limited to training to the voice of one and only one call assistant.” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “For a claim in a later-filed application to be entitled to an earlier filing date, the earlier application must satisfy the written description requirement of 35 U.S.C. § 112, first paragraph. See 35 U.S.C. § 120; In re Huston, 308 F.3d 1267, 1276 (Fed. Cir. 2002). “[T]he purpose of the written description requirement is to ‘ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification.’” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336,1353-54 (Fed. Cir. 2010) (en banc) (quoting Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004)). The written description requirement is met if the specification shows that the inventor has invented what is claimed—that is, the inventor had possession of it. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).” slip op. at 13

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s arguments are unpersuasive at the outset because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.” Sundance, 550 F.3d at 1363-64; SEB, 594 F.3d at 1372-73; Mytee, 439 Fed. App’x at 886–87. Patent Owner’s arguments are also unpersuasive because they attempt to constrict the “pertinent art,” i.e., the pertinent technology, to a particular subset of individuals who use the pertinent technology, rather than the pertinent technology itself. See Pet. Opp. to Mot. to Exc. 4-5 (arguing that the problems in the pertinent art are not “uniquely related” to the deaf and hard-of-hearing). We agree with Petitioner that the relevant field is telecommunication technologies. See Pet. Opp. to Mot. to Exc. 7 (“Mr. Occhiogrosso’s qualifications should be analyzed with respect to the pertinent art of telecommunication technologies in which an intermediary facilitates voice-to-text transcription.”). The ’346 patent states that the “present invention relates to the general field of telephone communications.” Ex. 1001, 1:16- 17. Patent Owner correctly indicates that the ’346 patent focuses on a particular application of that technology: people who need assistance in using telecommunications devices. PO Mot. to Exc. Occhiogrosso 4 (citing” slip op. at 16

  • Expert testimonyPetitioner expert creditedDecided for petitioner

  Patent outcomesUS 6,594,346 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 6,594,346

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.