- Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. Qinetiq LimitedNo claims unpatentablePTAB · Apr 11, 2024 · PGR2023-00003 · APJ William A Capp · PGR · Final written decision
The Board held claims 1–5 not unpatentable; Petitioner failed to prove its asserted §101, §102, §103, and §112 grounds, including indefiniteness and written-description challenges.
RulingsFinal written decision- BurdenNot shown unpatentable
“prevail, Petitioner bears the burden to demonstrate that the challenged claims are unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to 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). The standard of proof is preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). We have jurisdiction under 35 U.S.C. § 6.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill Petitioner’s expert, Mr. Serra testifies that he is familiar with the” slip op. at 45
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“process of claim 1. The first principal decision is the selection of a known liner design from a library that is made at the beginning of the design process. The second principal decision is made at the conclusion of the design process where a “final liner design” emerges after hole shapes produced by modified liners converge toward the desired hole shape. A person of ordinary skill in the art, having read claim 1 in context, would understand that the term “optimized” in the claim refers to the hole shape of the known liner design that is selected from among the known liner designs in the library during the selection step of the claim. A person of ordinary skill in the art would similarly understand that the design that is chosen in the initial selection process is “optimized” with respect to the population of known liner designs in the library as opposed to being “optimized” relative to liner designs produced during the later varying and modelling steps of the design process.” slip op. at 26
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable
“Accordingly, Petitioner has not shown that claims 1–5 of the ’039” slip op. at 22
Patent outcomesUS 11,215,039 not shown unpatentableClaim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Bilski · Phillips · Markman · NautilusPatents in suitUS 11,215,039 - Supercell OY v. Gree, Inc.No claims unpatentablePTAB · Oct 15, 2019 · PGR2018-00061 · APJ Hyun J Jung · PGR · Final written decision
The Board found claims 1–7 and 9–20 not shown unpatentable under §§ 101, 112(a), or 112(b), because Petitioner did not meet its burden on any ground.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“would possess at least an associate degree in the field of computer science (or a related academic field) and at least two additional years of practical (e.g., work) experience in the field of video game programming and development.” PO Resp. 15 (citing Ex. 2004 ¶ 27). Patent Owner alternatively contends that, if the person of ordinary skill in the art did not have a formal degree, then such a person “would have at least four years of practical (e.g., work) experience in the field of video game programming and development, or an equivalent field of study” and “would have training or familiarity with computer processing technology, namely systems for processing the progress of a video game, including the generation of game screens, and the tracking and displaying of in-game player status information.” Id. at 15–16 (citing Ex. 2004 ¶ 27). Petitioner does not present any arguments regarding level of ordinary skill. See generally Pet.; Pet. Reply. We find Patent Owner’s proposed level of ordinary skill credible based on the Specification and apply that level of skill to our analysis of the parties’ disputes. We, thus, adopt Patent Owner’s unchallenged, asserted level of ordinary skill quoted above. slip op. at 8
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Patent Owner, on the other hand, describes how the Specification of the ’793 patent, with supporting declarant testimony, provides adequate written description for the disputed limitations. PO Resp. 69–71 (citing Pet. 53–54; Ex. 1001, 4:32–34; Ex. 2004 ¶¶ 89–105). The Specification states that “a screen information generator that generates information relating to a game screen based on an instruction received by the instruction receiving device.” Ex. 1001, 4:32–34. Patent Owner also presents declarant testimony that explains the quoted portion of the Specification and that the ordinarily skilled artisan would have understood from the Specification that it provides adequate written description support for the disputed recitations. Ex. 2004 ¶¶ 89–105 (citing Ex. 1001, 2:1–7, 3:9–12, 3:46–53, 4:32–34, 4:37–41, 4:47–49, 7:24–58, 8:9–11, 8:18–35, 8:42–45, 8:65–67, 11:5–6, Figs. 2A, 2B). We credit Patent Owner’s declarant testimony because the relied upon portions of the Specification support it.” slip op. at 28
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“claims 1, 11, and 17 are limiting. Turning to the language of the claims, claim 1 recites “generating information relating to a game screen based on a received instruction [(‘the generating step’)]; and outputting information relating to the generated game screen to a user terminal at a predetermined time [(‘the outputting step’)].” Ex. 1001, 13:57–60. Claim 1’s wherein clause recites, inter alia, that “the second game screen includes latest state information at a time when receiving a first instruction which is an instruction to update the state information.” Because of the logical link between the “received instruction” in the generating step and the “when receiving a first instruction” in the wherein clause, we determine that the wherein clause must relate to the generating step, not the outputting step, as asserted by Petitioner. Claim 11 also recites “a screen information generation step in which a screen information generator . . . generates information relating to a game screen based on the instruction received” and its wherein clause expressly states “in the screen information generation step.” Ex. 1001, 14:66–15:2, 15:9. Similarly, claim 17 recites “a screen information generator that generates information relating to a game screen based on an instruction received” and expressly states “wherein the screen information generator generates information.” Id. at 16:13–15, 16:19. We, thus, determine that the claims support Patent Owner’s contention that the wherein clauses refer to recitations regarding generating information relating to a game screen based on received instruction. Turning to the Specification, we find that it describes the claimed invention as “capable of reducing the influence of a communication state or performance of hardware by generating a game screen with information to be displayed on the game screen as the latest information at the timing when an instruction to update is received.” Ex. 1001, 1:51–55 (emphasis added); see also Ex. 2004 ¶ 49 (testifying as to why the Specification describes a technological improvement). The wherein clauses of the independent claims reiterate this part of the Specification. See Ex. 1001, 13:61–67, 15:9–17, 16:19–27. We, thus, find that the Specification supports our determination that the wherein clauses refer to recitations regarding generating information relating to a game screen based on received instruction and are limiting.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“To resolve the parties’ dispute, we determine that an express interpretation for any of these terms or any other claim term is not necessary. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing explicitly only those claim terms in controversy and only to the extent necessary to resolve the controversy).” slip op. at 17
Patent outcomesUS 9,700,793 not shown unpatentableClaim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Electric Power · NautilusPatents in suitUS 9,700,793 - Supercell OY v. Gree, Inc.No claims unpatentablePTAB · Sep 26, 2019 · PGR2018-00050 · APJ Carl M Defranco · PGR · Final written decision
The Board held claims 1–10 not unpatentable under § 101, § 112(a), or § 112(b), finding the claims patent eligible and rejecting the written-description and indefiniteness challenges.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“Neither Supercell nor GREE proposes a construction for any particular claim term. See Pet. 20–26; PO Resp. 6. We determine that no express construction of the claim terms is necessary for purposes of this decision, with one exception. We note that the Specification of the ’886 patent describes the claimed “terminal attribute” as follows: “Examples of the attribute information may include the OS version, the browser type, the terminal type, the communication circumstance, and the like.” Ex. 1001, 11:33–35. In that regard, the Specification also explains a communication circumstance as follows: “For example, in a case where an information processing speed or a communication speed in the user terminal . . . is high, the number of rounds is set to be large.” Id. at 11:20–23. As such, we determine that the plain and ordinary meaning of “terminal attribute” encompasses at least the examples listed in the Specification and should be read accordingly.3” slip op. at 5
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable
“We agree with GREE that the claims are drawn to a specific technological improvement in the transmission of online game content by using a terminal attribute to improve the efficiency and functionality of transmitting multiple rounds of an online game to a user terminal, and that this improvement is not an abstract idea.7 Although, as Supercell argues, the recited function of “transmitting game view data” may be result-oriented (see Pet. 33–37; Reply 4–6), the claims nonetheless recite a specific technique for achieving that result-oriented function—identifying a terminal attribute of the user terminal and determining the predetermined number based on the terminal attribute. That particular technique, as made clear by the ’886 patent, solves a specific technological problem with conventional online game systems—long wait times and interruptions in the transmission of multiple rounds of the game. See Ex. 1001, 1:46–54 (describing the problem with conventional online game systems). So, rather than reciting just result-oriented functions, the clear focus” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“As explained by GREE’s expert, a skilled artisan would have known from that description how to determine the predetermined number of rounds using a terminal attribute table. See Ex. 1007, 57:20–62:10, 82:14–23, 87:7– 90:22. That expert testimony, which we find persuasive, is unrebutted and stands in direct contrast to unsupported attorney argument from Supercell. See Pet. 58–61; Reply 19–21. Thus, we determine that Supercell has not established by a preponderance of the evidence that claims 1–10 are unpatentable under 35 U.S.C. § 112(a) as lacking written description support.” slip op. at 14
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable
“Pet. 64–65; Reply 22–23. But aside from that conclusory assertion, Supercell’s Petition simply poses a series of rhetorical questions without further analysis or evidentiary support. See Pet. 65–66. GREE, on the other hand, offers expert testimony as to why the meaning of the claimed “determining” limitation is clear not only from the claim language itself but also in light of the Specification. Ex. 2001 ¶¶ 40– 42 (citing Ex. 1001, 11:20–41). We find that testimony persuasive. We also find persuasive GREE’s reasoning in response to each of the rhetorical questions raised by Supercell, even though it was under no obligation to do so. PO Resp. 47–49; Sur-Reply 17–19. And given the lack of argument, not to mention evidentiary support, in the Petition as to the purported indefiniteness of the challenged claims, we are not persuaded that Supercell has carried its burden of showing that the claims are unpatentable under 35 U.S.C. § 112(b).” slip op. at 15
Patent outcomesUS 9,675,886 not shown unpatentableClaim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Electric PowerPatents in suitUS 9,675,886 - Yamaha Golf Car Company v. Club Car, LLCNo claims unpatentablePTAB · Apr 2, 2019 · IPR2017-02144 · APJ Robert L Kinder · IPR · Final written decision
The Board found claims 11 and 17–19 not shown unpatentable: claim 11 was entitled to priority over the ’918 Publication, and the obviousness challenge to claims 17–19 was unsupported.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“slows the speed of the golf car until it returns to the course—“[Y]our cart has been slowed down because you are outside the boundaries of the course. Your car will continue to slow down until you return to the course.” Ex. 1004, 30 (emphases added) (also showing that “Reduce Maximum Speed” may be adjusted to a select speed as similarly set forth in Figure 3 of the ’569 patent). The ’894 Provisional specifies that the Curtis 1510 controller includes a configuration setting for “REVERSE SPEED,” and we find persuasive Mr. Andrews’ testimony that this control setting is separate from the maximum forward speed settings, “M1 MAX SPEED,” “M2 MAX SPEED,” “M3 MAX SPEED,” and “M4 (HIGH) MAX SPEED.” Ex. 1004, 12; Ex. 2009 ¶ 58 (“‘REVERSE SPEED’ is a separate configuration setting that the controller can configure based on GPS location.”). We find that these disclosures in the ’894 Provisional—slowing or stopping the car until it reverses course and separate configurable settings for reverse speed in the motor controller—establish affirmative support for a configuration as claimed where the car’s forward movement is disabled, but the car may still move in a reverse direction, as required by claim 11. Because the maximum forward speed can be set to zero to stop the vehicle from further movement towards the restricted area, but setting the maximum speed to zero leaves the separate “REVERSE SPEED” configuration setting in the motor controller unchanged, Patent Owner has shown how the vehicle is capable of operation only in a reverse direction. See Ex. 1004, 10, 12, 16, 30. From a functional capability, there is simply no difference between the descriptions found in the ’894 Provisional and the claimed limitations. See Ex. 2009 ¶¶ 49–60. Thus, Patent Owner has met its burden of showing adequate written description support for claim 11 in the earlier ’894 Provisional. Accordingly, the ’918 Publication does not qualify as prior art against claim 11. Based on the final trial record before us, Petitioner does not present sufficient arguments and credible evidence to support a finding that claim 11 is anticipated by the ’918 Publication.” slip op. at 17
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner
“slows the speed of the golf car until it returns to the course—“[Y]our cart has been slowed down because you are outside the boundaries of the course. Your car will continue to slow down until you return to the course.” Ex. 1004, 30 (emphases added) (also showing that “Reduce Maximum Speed” may be adjusted to a select speed as similarly set forth in Figure 3 of the ’569 patent). The ’894 Provisional specifies that the Curtis 1510 controller includes a configuration setting for “REVERSE SPEED,” and we find persuasive Mr. Andrews’ testimony that this control setting is separate from the maximum forward speed settings, “M1 MAX SPEED,” “M2 MAX SPEED,” “M3 MAX SPEED,” and “M4 (HIGH) MAX SPEED.” Ex. 1004, 12; Ex. 2009 ¶ 58 (“‘REVERSE SPEED’ is a separate configuration setting that the controller can configure based on GPS location.”). We find that these disclosures in the ’894 Provisional—slowing or stopping the car until it reverses course and separate configurable settings for reverse speed in the motor controller—establish affirmative support for a configuration as claimed where the car’s forward movement is disabled, but the car may still move in a reverse direction, as required by claim 11. Because the maximum forward speed can be set to zero to stop the vehicle from further movement towards the restricted area, but setting the maximum speed to zero leaves the separate “REVERSE SPEED” configuration setting in the motor controller unchanged, Patent Owner has shown how the vehicle is capable of operation only in a reverse direction. See Ex. 1004, 10, 12, 16, 30. From a functional capability, there is simply no difference between the descriptions found in the ’894 Provisional and the claimed limitations. See Ex. 2009 ¶¶ 49–60. Thus, Patent Owner has met its burden of showing adequate written description support for claim 11 in the earlier ’894 Provisional. Accordingly, the ’918 Publication does not qualify as prior art against claim 11. Based on the final trial record before us, Petitioner does not present sufficient arguments and credible evidence to support a finding that claim 11 is anticipated by the ’918 Publication.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“slows the speed of the golf car until it returns to the course—“[Y]our cart has been slowed down because you are outside the boundaries of the course. Your car will continue to slow down until you return to the course.” Ex. 1004, 30 (emphases added) (also showing that “Reduce Maximum Speed” may be adjusted to a select speed as similarly set forth in Figure 3 of the ’569 patent). The ’894 Provisional specifies that the Curtis 1510 controller includes a configuration setting for “REVERSE SPEED,” and we find persuasive Mr. Andrews’ testimony that this control setting is separate from the maximum forward speed settings, “M1 MAX SPEED,” “M2 MAX SPEED,” “M3 MAX SPEED,” and “M4 (HIGH) MAX SPEED.” Ex. 1004, 12; Ex. 2009 ¶ 58 (“‘REVERSE SPEED’ is a separate configuration setting that the controller can configure based on GPS location.”). We find that these disclosures in the ’894 Provisional—slowing or stopping the car until it reverses course and separate configurable settings for reverse speed in the motor controller—establish affirmative support for a configuration as claimed where the car’s forward movement is disabled, but the car may still move in a reverse direction, as required by claim 11. Because the maximum forward speed can be set to zero to stop the vehicle from further movement towards the restricted area, but setting the maximum speed to zero leaves the separate “REVERSE SPEED” configuration setting in the motor controller unchanged, Patent Owner has shown how the vehicle is capable of operation only in a reverse direction. See Ex. 1004, 10, 12, 16, 30. From a functional capability, there is simply no difference between the descriptions found in the ’894 Provisional and the claimed limitations. See Ex. 2009 ¶¶ 49–60. Thus, Patent Owner has met its burden of showing adequate written description support for claim 11 in the earlier ’894 Provisional. Accordingly, the ’918 Publication does not qualify as prior art against claim 11. Based on the final trial record before us, Petitioner does not present sufficient arguments and credible evidence to support a finding that claim 11 is anticipated by the ’918 Publication.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“sufficiently how the ’918 Publication’s disclosure of a “signal . . . of the violation” (Ex. 1003 ¶ 68) also teaches or suggests the additional claim requirements of “the driver interface unit . . . operable to communicate an alarm to the base station of a controller limiting the performance of a driver command” as required by claim 17. Petitioner recognizes the distinction by arguing “that the system could also provide a message to the course personnel . . . of any remedial corrective measures taken in response.” Pet. 25 (emphasis added). Based on the evidence cited, the ’918 Publication does not provide any such notification. Petitioner cannot suggest that a reference could have a feature that it does not have without some rational basis as to why such a feature would have been suggested by the reference. Mr. Breen’s explanation mirrors Petitioner’s contention (Ex. 1001 ¶ 277) and likewise states “that the system could also provide a message to the course personnel” (emphasis added) but no further explanation is provided as to how this unsupported conclusion was reached. Petitioner has also failed to lay the necessary foundation to establish that “common sense” could fill the gap for the missing limitation, or provide a basis for modifying the ’918 Publication to teach the claim 17 limitation. We recognize that in certain instances “common sense” can be used to supply the missing claim limitation, but only if the art is “unusually simple and the [patented] technology particularly straightforward.” Arendi Sarl v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016). In this proceeding, we have no testimony or evidence to establish either condition is met. Neither Petitioner nor Mr. Breen explain adequately why the limitations of claim 17” slip op. at 24
Patent outcomesUS 7,480,569 not shown unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 7,480,569
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.