- PTAB · Feb 8, 2023 · IPR2022-01335 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 19, 20, and 37–52 based on the §103 combination of Hardin and Salmre, finding a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, the arguments presented in the Preliminary Response, as well as all supporting evidence, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’447 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all Challenged Claims of the ’447 patent on the ground stated in the Petition.” slip op. at 3
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“(1) Petitioner asserts that substantially the same two claim limitations lack written description support in the ’094 application and U.S. Patent Application No. 13/856,392 (“the ’392 application”) (compare Pet. 23–29, with IPR2022-01333, Paper 4 (petition) at 23–28); (2) Petitioner asserts that because these limitations lack written description support in the ’094 and ’392 applications, the Challenged Claims are not entitled to the priority date of either of these applications and, therefore, Hardin ’665 (the pre-issuance publication of the ’094 application) is available as prior art to the Challenged Claims (compare Pet. 1, 2, 28–29, with IPR2022-01333, Paper 4 at 1, 2, 28–29);” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“(3) Petitioner asserts that the same combination of references— Hardin ’665 and Salmre—would have rendered the subject matter of the claims challenged in each petition obvious to one of ordinary skill in the art at the time of the invention (compare Pet. 29–64, with IPR2022-01333, Paper 4 at 29–66); (4) Petitioner asserts the same reasons with rational underpinning as to why one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre as proposed with a reasonable expectation of success (compare Pet. 65–71, with IPR2022-01333, Paper 4 at 66–71);” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“that we should exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (compare Prelim. Resp. 61–66, with IPR2022-01333, Paper 9 at 61–66);” slip op. at 16
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,984,447 - PTAB · Feb 8, 2023 · IPR2022-01334 · APJ Arthur M Peslak · IPR · Institution
The Board instituted review of claims 18 and 21–36 on the Hardin and Salmre obviousness ground, finding a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, the arguments presented in the Preliminary Response, as well as all supporting evidence, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’447 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all Challenged Claims of the ’447 patent on the ground stated in the Petition.” slip op. at 3
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“lack written description support in the ’094 application and U.S. Patent Application No. 13/856,392 (“the ’392 application”) (compare Pet. 23–28, with IPR2022-01333, Paper 4 (petition) at 23–28); (2) Petitioner asserts that because these limitations lack written description support in the ’094 and ’392 applications, the Challenged Claims are not entitled to the priority date of either of these applications and, therefore, Hardin ’665 (the pre-issuance publication of the ’094 application) is available as prior art to the Challenged Claims (compare Pet. 1, 2, 28–29, with IPR2022-01333, Paper 4 at 1, 2, 28–29);” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Hardin ’665 and Salmre—would have rendered the subject matter of the claims challenged in each petition obvious to one of ordinary skill in the art at the time of the invention (compare Pet. 29–62, with IPR2022-01333, Paper 4 at 29–66); (4) Petitioner asserts the same reasons with rational underpinning as to why one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre as proposed with a reasonable expectation of success (compare Pet. 59–65, with IPR2022-01333, Paper 4 at 66–71);” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“that we should exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (compare Prelim. Resp. 61–66, with IPR2022-01333, Paper 9 at 61–66);” slip op. at 15
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,984,447 - PTAB · Feb 8, 2023 · IPR2022-01329 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 19–28, 33, and 34, finding a reasonable likelihood that Hardin ’665 and Salmre render them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “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.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable 1 Petitioner’s Preliminary Reply is limited to the issue of discretionary denial pursuant to Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), and, particularly, the effect of Samsung’s stipulation in related litigation, in accordance with Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“(1) Petitioner asserts that substantially the same two claim limitations lack written description support in the ’094 application and U.S. Patent Application No. 13/856,392 (“the ’392 application”) (compare Pet. 23–27, with IPR2022-01327, Paper 4 (petition) at 23–27); (2) Petitioner asserts that because these limitations lack written description support in the ’094 and ’392 applications, the Challenged Claims are not entitled to the priority date of either of these applications and, therefore, Hardin ’665 (the pre-issuance publication of the ’094 application) is available as prior art to the Challenged Claims (compare Pet. 1, 2, 27–28, with IPR2022-01327, Paper 4 at 1, 2, 27–28);” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“(3) Petitioner asserts that the same combination of references— Hardin ’665 and Salmre—would have rendered the subject matter of the claims challenged in each petition obvious to one of ordinary skill in the art at the time of the invention (compare Pet. 28–62, with IPR2022-01327, Paper 4 at 28–63); (4) Petitioner asserts the same reasons with rational underpinning as to why one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre as proposed with a reasonable expectation of success (compare Pet. 62–68, with IPR2022-01327, Paper 4 at 63–69);” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“(6) Patent Owner relies on the same argument and evidence to assert that we should exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (compare Prelim. Resp. 61–66, with IPR2022-01327, Paper 9 at 61–66);” slip op. at 16
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,049,387 - PTAB · Feb 8, 2023 · IPR2022-01328 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted review of claims 10–18, 31, and 32 under § 103 over Hardin ’665 and Salmre, finding a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable 1 Petitioner’s Preliminary Reply is limited to the issue of discretionary denial pursuant to Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), and, particularly, the effect of Samsung’s stipulation in related litigation, in accordance with Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“Accordingly, for the reasons set forth in IPR2022-01327, Paper 13, we: (1) determine, based on the present record, that the Challenged Claims of the ’387 patent are not entitled to the priority date of the ’094 application, and, therefore, Hardin ’665 is available as prior art to the ’387 patent; (2) determine that, on balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Hardin ’665 and Salmre would have rendered the subject matter of claims 10–18, 31, and 32 of the ’387 patent obvious to one of ordinary skill in the art at the time of the invention; (3) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Fintiv; and (4) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 17
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedOther
“Accordingly, for the reasons set forth in IPR2022-01327, Paper 13, we: (1) determine, based on the present record, that the Challenged Claims of the ’387 patent are not entitled to the priority date of the ’094 application, and, therefore, Hardin ’665 is available as prior art to the ’387 patent; (2) determine that, on balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Hardin ’665 and Salmre would have rendered the subject matter of claims 10–18, 31, and 32 of the ’387 patent obvious to one of ordinary skill in the art at the time of the invention; (3) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Fintiv; and (4) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Accordingly, for the reasons set forth in IPR2022-01327, Paper 13, we: (1) determine, based on the present record, that the Challenged Claims of the ’387 patent are not entitled to the priority date of the ’094 application, and, therefore, Hardin ’665 is available as prior art to the ’387 patent; (2) determine that, on balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Hardin ’665 and Salmre would have rendered the subject matter of claims 10–18, 31, and 32 of the ’387 patent obvious to one of ordinary skill in the art at the time of the invention; (3) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Fintiv; and (4) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 17
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,049,387 - PTAB · Feb 8, 2023 · IPR2022-01330 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on claims 1–10 based on the obviousness ground using Hardin ’665 and Salmre.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to all the challenged claims of the ’418 patent, namely, claims 1–10, based on the sole ground presented in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“lack written description support in U.S. Application No. 12/434,094 (“the ’094 application”) and U.S. Patent Application No. 13/856,392 (“the ’392 application”) (compare Pet. 22–26, with IPR2022-01331, Paper 4 at 22–26 (petition)); (2) Petitioner asserts that because these limitations lack written description support in the ’094 and ’392 applications, the challenged claims are not entitled to the priority date of either of these applications, and, therefore, Hardin ’665 (the pre-issuance publication of the ’094 application) is available as prior art to the challenged claims (compare Pet. 1, 2, 26–27, with IPR2022-01331, Paper 4 at 1, 2, 26–27);” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“(3) Petitioner asserts that the same combination of references— Hardin ’665 and Salmre—would have rendered the subject matter of the claims challenged in each petition obvious to one of ordinary skill in the art at the time of the invention (compare Pet. 27–70, with IPR2022-01331, Paper 4 at 27–69); (4) Petitioner asserts the same reasons with rational underpinning as to why one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre as proposed with a reasonable expectation of success (compare Pet. 64–70, with IPR2022-01331, Paper 4 at 64–69);” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“that we should exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (compare Prelim. Resp. 61–66, with IPR2022-01331, Paper 10 at 61–66);” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,779,418 - PTAB · Feb 7, 2023 · IPR2022-01333 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 1–17, finding a reasonable likelihood that at least one claim was obvious over Hardin ’665 and Salmre.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We reviewed Petitioner’s uncontested evidence and arguments and determine that Petitioner has sufficiently shown a reasonable likelihood that at least one of the challenged claims would have been unpatentable over Hardin and Salmre.” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had at least a bachelor’s degree in computer science or a comparable field of study and at least five years of professional experience in mobile or location-based computing or other relevant academic experience. Pet. 22 (citing Ex. 1003 ¶¶ 38–41). Patent Owner, at this stage of the proceeding, does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 46. Mr. Denning, however, applies Mr. Williams’ level of ordinary skill in the art in Mr. Denning’s Declaration in support in Patent Owner’s Preliminary Response. Ex. 2001 ¶ 26.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no express claim constructions are necessary, and the claims should be given their plain and ordinary meaning in this proceeding.” Pet. 22–23. Patent Owner submits that it “do[es] not believe the Board needs to construe any terms.” Prelim. Resp. 33. We determine that an express construction of any claim term is not necessary for purposes of this Decision because none are in dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“regarding the state of the art, the more predictable field of mechanical/electrical technologies, and the relatively high level of skill in the art, on the present record, there is a disconnect between what the ’094 application discloses and the specific limitation of the Challenged Claims at issue, which requires that the application program makes a request to reserve a geographic area of interest. In addition to the ’094 application’s failure to disclose this limitation expressly, the ’094 application fails to reasonably convey to one of ordinary skill in the art any hint, suggestion, or indication that Patent Owner possessed an invention in which an application program makes such a request. To the contrary, based on our review and the present record, we agree with Petitioner that the ’094 application consistently and repeatedly discloses that a sponsor makes such a request and does not attribute that action expressly, inherently, or otherwise to any other aspect of the invention. See, e.g., Pet. 13 (identifying several instances where the ’094 application attributes that action to a sponsor).” slip op. at 24
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,984,447 - PTAB · Feb 7, 2023 · IPR2022-01331 · APJ Michelle N Wormmeester · IPR · Institution
Instituted IPR on claims 11–18 based on obviousness over Hardin ’665 and Salmre; the Board found a reasonable likelihood of success, including because the claims likely lack the asserted priority date.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to all the challenged claims of the ’418 patent, namely, claims 11–18, based on the sole ground presented in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the time of the invention “would have had at least a bachelor’s degree in computer science or a comparable field of study and at least five years of professional experience in mobile or location-based computing or other relevant academic experience.” Pet. 20 (citing Ex. 1003 ¶¶ 38–41).” slip op. at 15
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“regarding the state of the art, the more predictable field of mechanical/electrical technologies, and the relatively high level of skill in the art, on the present record, there is a disconnect between what the ’094 application discloses and the specific limitation of the challenged claims at issue, which recites that the application program makes a request to reserve a geographic area of interest. In addition to the ’094 application’s failure to disclose this limitation expressly, the ’094 application fails to reasonably convey to one of ordinary skill in the art any hint, suggestion, or indication that Patent Owner possessed an invention in which an application program makes such a request. To the contrary, based on our review of the present record, we agree with Petitioner that the ’094 application consistently and repeatedly discloses that a sponsor makes such a request and does not attribute that action expressly, inherently, or otherwise to any other aspect of the invention. See, e.g., Pet. 13 (identifying several instances where the ’094 application attributes that action to a sponsor).” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“c. Differences Between the Prior Art and the Claims Petitioner sets forth a detailed analysis showing how the combined teachings of the references meet the elements of claims 11–18. Pet. 27–69. In particular, Petitioner relies on Hardin ’665 as teaching most of the limitations of the claims, but relies on Salmre to meet the claim limitations reciting application programs on mobile devices that can reserve geographic areas and a content delivery platform that can be implemented on the same mobile device as the application program. Id. at 28. Additionally, Petitioner contends that one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre with a reasonable expectation of success. Id. at 64–69. In its Preliminary Response, Patent Owner does not raise an argument responding to Petitioner’s challenge based on Hardin ’665 and Salmre aside from whether the ’418 patent claims are entitled to the priority date of the ’094 application, an issue we addressed above (see supra Part III.C.). We have reviewed Petitioner’s uncontested argument and evidence regarding the teachings of Hardin ’665 and Salmre, and we find, for the reasons provided by Petitioner and on the preliminary record before us, that Petitioner has shown sufficiently that the combined teachings of Hardin ’665 and Salmre satisfy the limitations of the claims, and that one of ordinary skill in the art would have had a reason with rational underpinning to combine the teachings as proposed by Petitioner with a reasonable expectation of success.” slip op. at 36
§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,779,418 - PTAB · Feb 7, 2023 · IPR2022-01327 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted review of claims 1–9, 29, and 30 on the § 103 ground over Hardin ’665 and Salmre.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have reviewed Petitioner’s uncontested argument and evidence regarding the teachings of Hardin ’665 and Salmre, and we find, for the reasons provided by Petitioner and on the preliminary record before us, that Petitioner has shown sufficiently that the combined teachings of Hardin ’665 and Salmre satisfy the elements of the claims, and that one of ordinary skill in the art would have had a reason with rational underpinning to combine the teachings as proposed by Petitioner with a reasonable expectation of success.” slip op. at 33
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Analogous artInstituted
“Differences Between the Prior Art and the Claims; Motivation to Modify Petitioner sets forth a detailed analysis showing how the combined teachings of the references meet the elements of claims 1–9, 29, and 30. Pet. 28–63. In particular, Petitioner relies on Hardin ’665 as teaching most of the elements of the claims, but relies, on Salmre to meet the claim elements reciting application programs on mobile devices that can reserve geographic areas and a content delivery platform that can be implemented on the same mobile device as the application program. Id. at 29. Additionally, Petitioner contends that one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre with a reasonable expectation of success. Id. at 63–69.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Differences Between the Prior Art and the Claims; Motivation to Modify Petitioner sets forth a detailed analysis showing how the combined teachings of the references meet the elements of claims 1–9, 29, and 30. Pet. 28–63. In particular, Petitioner relies on Hardin ’665 as teaching most of the elements of the claims, but relies, on Salmre to meet the claim elements reciting application programs on mobile devices that can reserve geographic areas and a content delivery platform that can be implemented on the same mobile device as the application program. Id. at 29. Additionally, Petitioner contends that one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre with a reasonable expectation of success. Id. at 63–69.” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“Objective Considerations of Nonobviousness Neither party presents evidence of objective considerations of nonobviousness at this stage of the proceeding.” slip op. at 34
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSRPatents in suitUS 10,049,387 - Inguran, LLC D/B/A Sexing Technologies v. Premium Genetics (UK) Ltd.All claims unpatentablePTAB · Dec 20, 2016 · PGR2015-00017 · APJ Kristen L Droesch · PGR · Final written decision
Claim 1 is unpatentable under § 102(a)(1) as anticipated by Durack, Mueth, and Frontin-Rollet.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“On September 16, 2016, Patent Owner filed a disclaimer for claims 2–14 of the ’395 Patent, pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2007. Therefore, only claim 1 (“the remaining challenged claim”) is at issue.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“1. “Channel” For purposes of the Institution Decision, the Board construed “channel” as “a long gutter, groove, or furrow.” Dec. Inst. 6–7. Patent Owner relies on testimony by Petitioner’s expert, Dr. Vacca, to assert that “channel” should be construed as “a hollow member for conveying fluids.” PO Resp. 14 (citing Ex. 1002, 153; Ex. 2006, 17:17–18:12). In response, Petitioner contends that Patent Owner provides no support for its contention that a channel must convey and not collect. See Pet. Reply 17. We are not persuaded by Patent Owner’s arguments that a “channel” must convey fluid. At deposition, Dr. Vacca explained, “a hollow member for conveying fluids” “is a definition that I have supplied . . . as one of the definitions of channel that I have . . . provided here.” Ex. 2006, 17:22–18:4. Although Patent Owner provides testimony regarding one definition for “channel,” Patent Owner does not provide evidence sufficient to demonstrate that “a hollow member for conveying fluids” is the broadest reasonable interpretation of “channel.” We maintain the construction of the broadest reasonable interpretation of “channel” as “a long gutter, groove, or furrow,” (see Dec. Inst. 6) which encompasses within its scope “a hollow member for conveying fluids.”” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In view of the broadest reasonable interpretation of “said plurality of buffer channels which are disposed on either side of said first input channel” discussed above in Section II.A.2, on this record, we disagree with Patent Owner’s arguments. We are persuaded that Petitioner has established by a preponderance of the evidence that Durack discloses this claim limitation based on radial bores 173 and 183 disposed on one side of conduit 157 (i.e., the exterior circumferential bounding surface of conduit 157). See Ex. 1005, Fig. 5.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In light of Patent Owner’s position that it met its burden of production in the Preliminary Response, we return to the positions advanced by the parties. As discussed briefly above, Petitioner asserted that the at least one channel limitation recited in claim 1 was not disclosed in the manner required by § 112(a) in any of the patent applications filed before March 16, 2013 (i.e., the ’969 Application and the ’957 Application). See Pet. 12–17. Patent Owner, in its Preliminary Response, argued that there was adequate written description support for the at least one channel limitation of claim 1. See Prelim. Resp. 8–13 (citing Ex. 1001, Fig. 1, 13:21–23; Ex. 1004, 11:66–12:4, 16:22–25). Patent Owner, however, does not address the remaining limitations of claim 1 and whether the prior applications disclose those remaining limitations in the manner required by § 112(a). See PO Resp. 3–6; Prelim. Resp. 7–13. Patent Owner, at oral argument, acknowledged that just one limitation of claim 1 was addressed in the Preliminary Response because it was the only limitation disputed by Petitioner. See Tr. 24:16–25:2. Although Petitioner arguments addressing standing for post-grant review only disputed written description support for the at least one channel limitation of claim 1, we are not aware of any obligation on the part of Petitioner to address whether each and every limitation of claim 1 was disclosed in the manner required by § 112(a). In contrast, in order for Patent Owner to show entitlement to an earlier effective filing date, Patent Owner must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, possession of the invention now claimed by describing the invention, with all its claimed limitations. See Lockwood, 107 F.3d at 1572; VasCath, 935 F.2d at 1563–64. Patent Owner’s arguments addressing only the at least one channel limitation of claim 1 (see PO Resp. 3–6; Prelim. Resp. 7–13) are insufficient to meet Patent Owner’s burden of coming forward with evidence or argument to show possession of the invention, with all its claimed limitations, as of the September 3, 2004 filing date. For all of the foregoing reasons, Patent Owner has not shown sufficiently that the ’395 Patent is entitled to an earlier effective filing date of September 3, 2004. Thus, Mueth and Frontin-Rollet remain prior art to the ’395 Patent.” slip op. at 33
Patent outcomesUS 8,933,395 unpatentableClaim construction§ 102 anticipation§ 112 disclosurePatents in suitUS 8,933,395 - Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCAll claims unpatentablePTAB · Mar 23, 2016 · IPR2014-01527 · APJ Karl D Easthom · IPR · Final written decision
Claim 13 is unpatentable because Reiter anticipates it and, independently, Summers with Fedida and the CBS Petition, Blatt, or Millar renders it obvious.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDisclaimer not foundDecided for petitioner
“Accordingly, several factors tilt against narrowing the claim from its plain and ordinary meaning (in view of the Specification) based on the ’1837 Reh’g Decision, including the (1) broader scope of claim 13 (relative to the claim at issue in the ’1837 Reh’g Decision), (2) different claim phrases recited in the two claims, (3) contradictory arguments by Patent Owner before different tribunals (i.e., the Atlanta lawsuit and the Board), (4) the lack of a close example or clear disclaimer in the Specification applicable to claim 13, (5) broad objectives for combining content from different sources as described in the Specification, and (6) the lack of clarity as to what Patent Owner disclaimed during prosecution relative to claim 13. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014) (The “court also observes that the PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer, which generally only binds the patent owner.”); Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. 274, 279 (1877) (patents are procured ex parte; the public is not bound 15 by decision of the Patent Office to issue a patent); Switzer v. Sockman, 333 F.2d 935 (CCPA 1964) (decision made during ex parte examination not binding in subsequent interference involving application in which holding was made); Sze v. Bloch, 458 F.2d 137, 140 (CCPA 1972) (same). Consistent with the ’243 patent Specification, and taking into account prior arguments by Patent Owner, regardless of whether or not the content of data of interest and the program relate to each other, a proper (coordinated) relative position of the two would include a simultaneous presentation of data of interest and a program. Such a simultaneous presentation may include an overlay, or a separate window, for example, of some form of the data (e.g., a graph) with the program, as discussed in connection with Figure 1C.” slip op. at 15
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In the Institution Decision, we determined that Patent Owner’s position about priority was not persuasive on that limited record. We reasoned that according to the cited passage in the (1981) ’490 patent specification, and according to Patent Owner’s arguments, each receiver stores only a subset of the data (i.e., “those prices that relate to the stocks in its stored portfolio”) that the remote source transmits (i.e., “all closing stock prices applicable that day”), but claim 13 requires the receiver to store all the transmitted data. See Dec. on Inst. 16. That is, claim 13 recites “transmitting at least a portion of said data from said first remote data source to said receiver station in response to said step of receiving said query, said receiver station selecting and storing said transmitted at least a portion of said data.” Ex. 1003, 300:22–26 (emphases added). In essence, in claim 13, the receiver’s query controls the portion of data transmitted to the receiver. In contrast, in the ’490 patent specification, the transmitter controls the data––it sends all the stock data for a given day, and the receiver 25 then culls and records subscriber stock data from that transmitted data. See Ex. 1002, 19:35–41; Prelim. Resp. 12 (as quoted above, Patent Owner adding information to show that the ’490 patent discloses querying for “[all closing stock prices applicable that day]”).” slip op. at 25
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“B. Priority The prior art status of Reiter (filed May 28, 1985) under 35 U.S.C. §102(e) hinges on the priority date for the ’243 patent with respect to claim 13. Petitioner contends that the earliest priority date for the ’243 patent is September 11, 1987. Pet. 9. The ’243 patent was filed as a CIP (continuation-in-part) application through a chain of continuing applications 23 purportedly having a priority date of November 3, 1981––the filing date of the earliest-filed ancestor patent in the chain, U.S. Patent No. 4,694,490. See Ex. 1002 (“the ’490 patent”). Patent Owner contends that the priority date of the ’243 patent is “the November 3, 1981 filing date of the ’490 [p]atent.” PO Resp. 8. The parties agree that the latest possible priority date for claim 13 of the ’243 patent is September 11, 1987. See id. at n.1; Pet. 9. For the reasons that follow, Patent Owner has not rebutted Petitioner’s initial showing that the ’243 patent, a CIP, is not entitled to the earlier filing date of the ’490 patent.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Contrary to Patent Owner’s argument, a program schedule display that includes a currently viewed program or lists local and television movies is not “happenstance” in Reiter––Reiter discloses a schedule guide of programs for viewing, including necessarily includes programs currently being viewed. Ex. 1025, Abstract, 2:30–37, 6:34–38 (describing “updatable television programming information” and “whether a window format . . . or a television overlay format. . . . , the viewer may continue to view the television program he is currently watching”). As Dr. Neuhauser explains, the guide also explains when “the current program will end.” Ex. 1001 ¶ 181 (discussing Reiter’s television schedule data); Ex. 1025, 6:35–38 (“In [the window and overlay format] situations, the viewer may continue to view the television program he is currently watching.”). Dr. Neuhauser also persuasively describes how a similar overlay or window display of “a critical review of movies or shows” during the viewing of that show or movie, constitutes another example of coordinated display that includes related content. See Ex. 1001 ¶ 181 (discussing and quoting Reiter, Ex. 1025, 5:37– 46). Patent Owner also contends that Reiter “fails to explicitly disclose that television scheduling information is stored at the central computer.” PO Resp. 31 (citing Ex. 2009 ¶ 112). This argument pertains to the claim 13 requirement of storing, receiving, and transmitting data from “a first remote 43 data source.” Contrary to this argument, the record supports Petitioner’s contention that Reiter discloses downloading the programming data from a remote central computer. Pet. Reply 22 (citing Ex. 1025 at 2:67–68; 4:50– 51); Ex. 1025, 4:40–51 (“televising scheduling . . . can . . . be provided on a central computer” and “download[ed]”). As Petitioner explains, downloading information “provided on” the central computer necessarily requires storing that information on the central computer. Pet. Reply 22 (citing 1001 ¶ 171; Ex. 1036 ¶ 46); Ex. 1025, 4:40–44. Dr. Russ’s testimony does not address the “provided on” and “download[ed]” language in Reiter. See Ex. 2009 ¶¶ 111–13. Furthermore, Dr. Russ’s testimony admits that the central computer “may retrieve” and “forward” the information, necessarily implying at least temporary (buffer) storage at the central computer. See Ex. 2009 ¶ 113. Based on the foregoing discussion, Petitioner shows by a preponderance of evidence that Reiter anticipates claim 13.” slip op. at 43
Patent outcomesUS 5,887,243 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 5,887,243
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