• Metacluster LT, Uab v. Bright Data Ltd.Other
  PTAB · Mar 19, 2024 · PGR2022-00052 · APJ Sheila F Mcshane · PGR · Final written decision

  The Board cancelled claims 1–27 and denied substitute claims 28–51 because the original disclosure lacked written-description support for the claimed CSP limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we adopted Petitioner’s proposed level of ordinary skill in the art, with the exclusion of “at least” because it introduces ambiguity. Inst. Dec. 8. Patent Owner “does not dispute the Board’s findings on the qualifications of a POSA [person of ordinary skill in the art] for purposes of this proceeding.” See RMTA 13. We determine that Petitioner’s definition, with the exclusion of “at least,” is consistent with the prior art of record and the skill reflected in the Specification of the ’034 patent and we use this level of skill here in the evaluation of the Revised Motion to Amend.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Patent Owner argues that “claim construction is not necessary” and that “the meaning of the claims would be easily understood by a POSA.” RMTA 13. In the Petition, Petitioner proposed constructions for the terms “client device” and “first server,” and the original claims were rendered obvious under this construction. Pet. 23–27. Petitioner does not assert that the substitute claims of the Revised Motion to Amend are anticipated or rendered obvious by prior art or are patent ineligible. See generally RMTA Opp. Nor does Petitioner’s patentability challenge of the substitute claims contend that express construction is needed. See generally id. For purposes of this Decision, we determine that express claim construction is unnecessary. We need only construe terms that are necessary to resolve disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 10

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied

    “written description requirement. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989); All Dental Prodx LLC v. Advantage Dental Prods., 309 F.3d 774, 779 (Fed. Cir. 2002). The issue here, however, is whether the disclosure of the ’034 patent would have reasonably conveyed to a person of ordinary skill that the inventors had possession of the CSP Limitations. Ariad, 598” slip op. at 14

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “to cancelling claims 1–27; and deny-in-part the Motion to Amend as to proposed substitute claims 28–51. In summary: Motion to Amend Outcome Claim(s) Original Claims Cancelled by Amendment 1–27 Substitute Claims Proposed in the Amendment 28–51 Substitute Claims: Motion to Amend Granted Substitute Claims: Motion to Amend Denied” slip op. at 20

  Claim construction§ 112 disclosure
  Patents in suitUS 11,272,034
• 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
• ROKU, Inc. v. Universal Electronics, Inc.Rehearing denied
  PTAB · May 13, 2021 · IPR2019-01595 · APJ Minn Chung · IPR · Rehearing

  The Board denied rehearing of its decision denying institution on claims 1 and 2, finding no abuse of discretion on priority entitlement or motivation to combine Darbee and Golender.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a 1 Petitioner also filed a request for the Precedential Opinion Panel (“POP”) to review the Decision (Paper 13 (Notification of Receipt of POP Request)), which the POP denied (Paper 14 (Order)). paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying institution of trial based on the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence that could have been presented in the Petition.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “issue upon which the priority determination turns—what the priority applications reasonably would have conveyed to a person of ordinary skill in the art—because Dr. Medvidovic did not provide any testimony on that issue. And we did not overlook or misapprehend any testimony of Dr. Medvidovic regarding what the priority applications reasonably would have conveyed to a person of ordinary skill in the art because we could not have overlooked or misapprehended any testimony that was not presented in the Medvidovic Declaration. As discussed above, Dr. Medvidovic’s testimony based on what is expressly disclosed in or necessarily follows from the disclosures of the priority applications was insufficient because Dr. Medvidovic did not explain adequately why the disclosures in the priority applications would not reasonably have conveyed to a person of ordinary skill in the art the subject matter of the User Action Limitation. Thus, Dr. Medvidovic’s testimony was insufficient to raise a genuine issue of material fact on the issue of what the priority applications reasonably would have conveyed to a person of ordinary skill in the art. Although Patent Owner’s declarant, Mr. Bear, provided detailed testimony and explanations regarding how a person of ordinary skill in the art would have understood the priority applications to describe the subject matter recited in the User Action Limitation (see Ex. 2001 ¶¶ 111–122, 126–127), Dr. Medvidovic did not provide adequate testimony or explanations to the contrary on the issue (see Ex. 1010 ¶¶ 53–63).” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “misapprehend or overlook 37 C.F.R. § 42.108(c). The mere fact that Dr. Medvidovic provided testimony different from the testimony of Mr. Bear does not by itself raise a genuine issue of material fact. See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325–26 (Fed. Cir. 2016) (“The mere existence in the record of dueling expert testimony does not necessarily raise a genuine issue of material fact.”). As the Request acknowledges, Dr. Medvidovic in his Declaration (Ex. 1010, “Medvidovic Declaration”) testified that the subject matter of the User Action Limitation is “neither expressly disclosed [in] nor necessarily follows from” the descriptions in the priority applications about event journal data. Req. 3 (emphases added) (citing Ex. 1010 ¶¶ 57–62). As discussed above, however, the test for determining compliance with the written description requirement under 35 U.S.C. § 112 is whether the original disclosure of the earlier-filed application reasonably would have conveyed to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter at the time of the earlier-filed application. Ariad Pharm., 598 F.3d at 1351. The record shows that Dr. Medvidovic did not provide any testimony in his Declaration as to what the disclosures in the priority applications reasonably would have conveyed to a person of ordinary skill in the art. See Ex. 1010 ¶¶ 53–63. Nor did Dr. Medvidovic explain adequately in his Declaration why the disclosures in the priority applications would not reasonably have conveyed to a person of ordinary skill in the art the subject matter of the User Action Limitation. See id.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Under Petitioner’s definition of the level of ordinary skill in the art, however, “less education can be remedied with additional work experience (e.g., 5–6 years).” Pet. 7 (citing Ex. 1010 ¶¶ 64–67). As stated in the Bear Declaration, Mr. Bear’s work experience includes at least 9 years of computer software programming using a variety of coding languages, such as BASIC, Pascal, C, C++, and 68000 Assembly Language. See Ex. 2001 ¶¶ 10–12. Thus, Mr. Bear is qualified to testify from the perspective of a person of ordinary skill in the art under Petitioner’s definition of a person of ordinary skill in the art. As discussed in the Decision, although we did not find the parties’ proposals for the level of ordinary skill in the art to be materially different, to the extent the testimony from the parties’ declarants on the level of ordinary skill in the art raised a genuine issue of material fact, we adopted and applied Petitioner’s definition for purposes of the Decision, being mindful of the rule that “a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” Dec. 9 (citing 37 C.F.R. § 42.108(c)). Thus, the record shows that, under Petitioner’s definition of the level of ordinary skill in the art adopted in consideration of § 42.108(c), the Decision appropriately credited Mr. Bear’s testimony on what the priority applications reasonably would have conveyed to a person of ordinary skill in the art.” slip op. at 11

  § 103 obviousness§ 112 disclosure
  Patents in suitUS 8,015,446
• Flex Logix Technologies Inc. v. Venkat KondaAll claims unpatentable
  PTAB · Mar 16, 2021 · PGR2019-00042 · APJ Norman H Beamer · PGR · Final written decision

  Claims 1–7, 9–15, and 17–19 are unpatentable under §§ 102(a)(1) and 103; the revised motion to amend and motion to exclude are denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 16

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

    “Because only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy, we do not expressly construe any claim term for purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 17

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

    “Ex. 1001, 49:9–18. Petitioner argues, and we agree, that this language is non-limiting as reciting optional features that “may or may not” be present, and therefore irrelevant to the issue of anticipation.9 Pet. 54–57.” slip op. at 23

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

    “In light of these and other disclosures in Wong ’308, Petitioner argues that a POSITA would have been motivated to implement the switches of the ’756 PCT application using multiplexers. Pet. 102; Ex. 1002 ¶ 182. Patent Owner does not challenge this fact — the references to multiplexers (also referred to a “muxes”) in the ’342 patent suggest that Patent Owner would concede this point. E.g., Ex. 1001, 9:67, 14:33. Upon review of the record, we are persuaded that Petitioner has proved by a preponderance of the evidence that the combination of the ’724 provisional application and Wong ’308 renders claims 1–7, 9–15, and 17–19 obvious.” slip op. at 29

  Patent outcomesUS 10,003,553 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham · Nautilus
  Patents in suitUS 10,003,553
• Flex Logix Technologies, Inc. v. Venkat KondaRehearing denied
  PTAB · Sep 16, 2020 · IPR2020-00261 · APJ Jo-Anne M Kokoski · IPR · Rehearing

  The Board denied Patent Owner’s rehearing requests, leaving institution of review of claims 1–7, 11, 15–18, 20–22, 32, and 47 in place.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “in our Decision on Institution. In the Decision, we directly addressed Patent Owner’s arguments that Dr. Baker is not qualified to testify in this proceeding because he is neither a person of ordinary skill in the art, nor an expert in the relevant art. See Dec. 7–8. In particular, we explained that there is no requirement “that the expert’s experience perfectly match the relevant field, or that the expert is a person of ordinary skill in the art.” Id. at 7. We also explained that Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7

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

    “Moreover, in the Decision, we directly addressed Patent Owner’s argument with respect to whether the ’394 provisional and ’605 PCT provided support for the claim limitation “said routing network comprising a plurality of stages y, in each sub-integrated circuit block, starting from the lowest stage of 1 to the highest stage of y, where y≧1” when y=1. Dec. 14. In particular, we found that Patent Owner’s arguments, as we understand them, are directed only to the disclosure of a network with only one stage (y=1). [Prelim. Resp.] at 15–39. Patent Owner does not address the other limitations of claim 1, and does not point to any disclosures in the priority applications that describe a sub-integrated circuit block with only one stage that also comprises pluralities of forward connecting links and backward connecting links as required by claim 1. Id. Thus, we did not overlook Patent Owner’s arguments, but rather evaluated the disclosures in the ’394 provisional and ’605 PCT and determined, on the record at this stage of the proceeding, that they do not provide sufficient written description support for the challenged claims. The parties will have the opportunity to further develop the record on these issues during trial, and the Board will evaluate the fully-developed record at the close of the evidence. D. Public Availability of the ’394 provisional” slip op. at 9

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 8,269,523
• Flex Logix Technologies, Inc. v. Venkat KondaRehearing denied
  PTAB · Sep 16, 2020 · IPR2020-00260 · APJ Jo-Anne M Kokoski · IPR · Rehearing

  The Board denied the Patent Owner’s rehearing requests, leaving institution in place for claims 1–7, 11, 15–18, 20–22, 32, and 47.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • Strike new argumentNew argument disregardedOther

    “Consolidated Trial Practice Guide, 90. The Consolidated Trial Practice Guide goes on to state that “[a]bsent a showing of ‘good cause’ prior to filing the request for rehearing or in the request for rehearing itself, new evidence will not be admitted.” Id. (citing Huawei, Paper 19 at 4).” slip op. at 4

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6

  • Skill levelOther

    “(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 8,269,523
• Flir Systems, Inc. / Flir Maritime US, Inc. (F/K/A Raymarine, Inc.) v. Garmin Switzerland GmbHSome claims unpatentable
  PTAB · Jul 10, 2018 · IPR2017-00946 · APJ Scott B Howard · IPR · Final written decision

  Claims 28, 29, and 45 were held unpatentable; claims 1–7, 12–23, 25–27, and 41–44 were not shown unpatentable. Substitute claims 73 and 74 were allowed.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “C. Legal Principles 1. Anticipation A patent claim is unpatentable under 35 U.S.C. § 102 if “the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)). Moreover, the reference must also “disclose[] within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). However, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). We analyze the ground based on anticipation in accordance with the above-stated principles.” slip op. at 22

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

    “and agree with Patent Owner that the terms “re-routing the course” and “re-route the course” mean “to change at least a portion of the route of the course relative to a previous routing.” That is, there must be a first routing of a course and that routing must be changed by performance of the marine route calculation algorithm to avoid preselected conditions by identifying one or more non-user selected waypoints. The construction is consistent with the words of the claims. The claims do not merely require routing a course, but “re-routing the course.” The ordinary meaning of the prefix “re” is that something is being done again. See Tr. 18 (Petitioner agreeing that “if you put R-E in front of a word, normally that means it’s occurring a second time”). Although the claims do not explicitly recite both an original “routing” of a course that is changed by “re-routing the course,” the original “routing” is implicitly required by the use of the prefix “re.” See Tr. 34 (Patent Owner agreeing that although the claims do not explicitly require an initial routing, the initial routing is implicit in the use of “re-routing”), 44–45 (Petitioner agreeing that “re-routing” ordinarily implies an initial routing).” slip op. at 10

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

    “proposed construction of “course” as “the path of intended travel of a craft with respect to the earth.” Instead, we need only focus on the words recited in the claim. Claim 1, which is representative, recites that performing the marine route calculation algorithm to “route a course between a first location and the potential waypoint avoiding the preselected conditions,” where such performance includes “identifying one or more non-user selected waypoints.” Ex. 1001, claim 1. The other independent claims recite similar limitations. See Ex. 1001, claims 12, 20, 27. Based on the limitation recited in the claim, the broadest reasonable interpretation of routing a “course” encompasses the identification of one or more non-user selected waypoints between a first location and a potential waypoint. No further construction is necessary for purposes of this Decision.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We are persuaded by Petitioner’s argument that the person of ordinary skill in the art need not have first-hand experience with marine navigation devices and systems. Pet. Reply 25–26. The ’703 patent explicitly defines “marine navigation” broadly, noting that “the use of the word ‘marine’ in the embodiments of the present invention (including the claims) could be replaced with the phrase ‘non-street based.’” Ex. 1001, 1:57–67 (emphasis added). Such non-street based navigation is broad enough to encompass avionic navigation. See Pet. Reply 25–26; cf. Ex. 1003, 4–7 (demonstrating Dr. Braasch’s experience in avionic navigation). We find that Petitioner’s definition is supported by the testimony of its expert, Dr. Braasch, and, for the reasons stated above, we are not persuaded that the person of ordinary skill in the art necessarily would have had first-hand experience in marine—as opposed to non-street based— navigation. We, therefore, determine, based on the complete record, that Petitioner’s proposed definition correctly states the level of ordinary skill in the art, and we apply it for purposes of this Decision.7, 8” slip op. at 24

  Patent outcomesUS 7,268,703 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,268,703
• BMW Of North America, LLC v. Stragent, LLCAll claims unpatentable
  PTAB · Jun 13, 2018 · IPR2017-00677 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 51–59 are unpatentable: claims 51–59 over Staiger and Millsap, and claims 51 and 54–57 over each OSEK-based obviousness ground.

  RulingsFinal written decision

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

    “We have reviewed the relevant deposition testimony, in which Dr. Miller was asked to identify the standard he used when construing claim terms in his Declaration. Ex. 1025, 27:1–34:14. We agree with Petitioner that Dr. Miller did not provide responses sufficient to conclude that he was aware of and/or applied the correct claim-construction standard. See id. at 27:5–6 (“I used what is generally accepted in the field.”), 27:9–11 (“So to – for construing the claim terms is providing a definition of what the term is. So I provided a general definition for the terms.”), 30:3–6 (“Well, that’s the standard that I used for construing the claim terms in this Declaration. I don’t know if that’s the legal qualification for construing claim terms.”), 32:18–23 (“broadest reasonable interpretation” would mean “when you’re defining a term that you would define it in a way that is, first of all, reasonable, that it makes sense and that it’s broad, meaning general and that it’s interpreting the phrase or the term”). Nevertheless, we are not persuaded that the appropriate remedy is exclusion of Dr. Miller’s testimony. As Patent Owner asserts, “[t]he role of the expert witness under the Federal Rules of Evidence is to ‘help the trier of fact to understand the evidence or to determine a fact in issue.’” Paper 24, 2–3 (quoting Fed. R. Evid. 702) (emphasis by Patent Owner). As Patent Owner further asserts, Petitioner does not “impugn[]” Dr. Miller’s credibility as an expert in the subject matter at issue. Id. at 3–4. We agree with Patent Owner that “Petitioner’s attack on the sufficiency of the evidence is improper in a motion to exclude.” Id. at 4 (citing Microsoft Corp. v. Surfcast, Inc., Case IPR2013-00292 at 52–53 (Paper 93) (PTAB Oct. 14, 2014)). We accordingly deny Petitioner’s Motion to Exclude.” slip op. at 13

  • Expert testimonyPatent owner expert discountedOther

    “Petitioner alternatively argues in its Reply that “Because Dr. Miller did not apply the correct claim construction standard, his opinions on claim construction (Ex. 2001, §§16-21) should be afforded no weight.” Reply 2. Although we agree that the weight to be accorded to Dr. Miller’s testimony on claim construction is impacted by the uncertainty of the analytical procedure he followed, we are not persuaded that his testimony should be discounted wholesale. Dr. Miller provides relevant opinions on a number of issues, particularly including how a person of ordinary skill in the art would understand certain terms in light of the Specification, that are helpful to us as the trier of fact. “There is no more certain test for determining when experts may be used than the common sense inquiry whether the untrained layman would be qualified to determine intelligently and to the best possible degree the particular issue without enlightenment from those having a specialized understanding of the subject involved in the dispute.” Ladd, Expert Testimony, 5 Vand. L. Rev. 414, 418 (1952).” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “shared “in real time utilizing a second network protocol . . . ,” and dependent claim 59 recites that information is processed “to create, in real-time, messages in at least two other message formats . . . .” Petitioner argues that the Specification of the ’843 patent expressly defines “real-time”: “In the context of the present description, real-time may include any response time that may be measured in milli- or microseconds, and/or is less than 1 second.” Ex. 1001, col. 3, ll. 35–38. Accordingly, Petitioner proposes that “‘real-time’ should be construed as responses that occur in less than one second.” Pet. 13. Patent Owner contends that the definition from the Specification should be adopted. PO Resp. 15. We construe “real-time” as Petitioner proposes, i.e., as including responses that occur in less than one second. The first part of the quote cited above provided in the Specification (“may be measured in milli- or microseconds”) is not limiting because any response time, no matter how large or small, may be measured in milli- or microseconds.” slip op. at 16

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

    “been reached in association with the storage request.” Petitioner proposes that “threshold” be construed consistent with a dictionary definition it provides, as a “value above which something is true or will take place and below which it is not or will not.” Pet. 13–14 (citing Ex. 1016, 5). Observing that the Specification of the ’843 patent uses “threshold” in the context of an elapsed time, Petitioner further proposes that this construction “include the maximum value (i.e., time-out) of a timer.” Id. (citing Ex. 1001, col. 8, ll. 21–25, col. 8, ll. 47–51). We agree, and accordingly construe “threshold” as Petitioner proposes.3 3. “heterogeneous networks” Dependent claim 55 recites that the “apparatus is operable such that the first network and the second network are heterogeneous networks.” The Specification of the ’843 patent defines “heterogeneous networks”: “In the context of the present description, heterogeneous networks may refer to any different communication networks with at least one aspect that is different.” Ex. 1001, col. 7, ll. 26–29. In light of this explicit definition, for purposes of this Decision, we construe “heterogeneous networks” as Petitioner proposes, i.e., as “networks having at least one aspect that is different.” Pet. 14 (citing 3 Patent Owner advocates for the same construction advanced by Petitioner, but omits inclusion of the maximum value of a timer. PO Resp. 15. Although Patent Owner asserts that the construction is otherwise “the definition provided by the ‘843 Patent,” it does not cite to the ’843 patent to support its assertion, and we are unable to identify such a definition in the patent. Nevertheless, we agree with Petitioner that any distinction between the constructions is not material to any grounds. See Reply 6.” slip op. at 16

  Patent outcomesUS 8,566,843 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,566,843
• Texas Association Of Realtors v. Uber Technologies, Inc.All claims unpatentable
  PTAB · Aug 4, 2017 · IPR2016-00615 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–28 are unpatentable under § 103(a); the contingent motion to amend is denied because substitute claims are obvious and lack written-description support.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “II. ANALYSIS Petitioner bears the burden of proving unpatentability of the challenged claims, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must establish the facts supporting its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Petitioner relies on the Declaration of Michael Goodchild, Ph.D. (Ex. 1010) and the Reply Declaration of Dr. Goodchild (Ex. 1020). Patent Owner does not rely on any supporting declaration or cross-examination testimony. Below, we discuss whether Petitioner has met its burden with respect to claims 1–28. A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Obviousness is resolved based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness,2 i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7

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

    “First, Petitioner argues that based on the dictionary definition of “demarcate,” the broadest reasonable interpretation of “demarcating” is “‘to determine or mark off the boundaries or limits of’ something.” Id. (quoting Ex. 1013, RANDOM HOUSE WEBSTER’S UNABRIDGED DICTIONARY, (2d ed. 2001), 5); Ex. 1010 ¶¶ 35, 36. Next, Petitioner contends that the broadest reasonable interpretation of “delimiting” is “determining or marking off the boundaries or limits of something, such as by providing a perimeter line or highlighting.” Pet. 7; Ex. 1013, 4; Ex. 1010 ¶¶ 37–39. Petitioner reasons that the Specification provides examples of delimiting “via a perimeter line in any graphical way” and by highlighting. Pet. 7 (citing Ex. 1001, 6:34–39, 8:13–19). Patent Owner does not address these interpretations in its Response, but at oral hearing Patent Owner agrees that Petitioner’s interpretations were “a fair assessment.” Tr. 92:19–94:3. Patent Owner also responds that there was no substantive difference between the two terms – “demarcating” and “delimiting.” Id. at 93:19–29. Petitioner’s proposed interpretations for “demarcating” and “delimiting” are consistent with the claim language, written description of the ’045 patent, and the plain meaning of each term. We therefore interpret “demarcating” to mean “determining or marking off the boundaries or limits of something,” and interpret “delimiting” to mean “determining or marking off the boundaries or limits of something, such as by providing a perimeter line or highlighting.”” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The parties do not argue in the Petition or Patent Owner Response that we should adopt a specific formulation regarding the level of ordinary skill in the art. Dr. Goodchild, however, testifies that a person of ordinary skill in the art at the time of the ’045 patent “would have had a Bachelor of Science degree (or its equivalent), and three years’ experience in the development, management, and use of geographic information systems and related geospatial technologies.” Ex. 1010 ¶ 14. Based on the record presented, including our review of the ’045 patent and the types of problems and solutions described in the ’045 patent and cited prior art, we agree with Dr. Goodchild’s assessment of the level of ordinary skill in the art and therefore adopt it for purposes of this Decision. As noted, we have also considered the cited references as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Petitioner also provides a persuasive rationale for combining the teachings of O’Clair and Tadman. Id. at 9–10, 14–15. Specifically, Petitioner contends both references are in “similar fields,” with both references referring to the mapping application Google Maps, and [a] person of ordinary skill in the art would have found it obvious and desirable at the time of the ’045 Patent’s filing to combine the features of Tadman into O’Clair to achieve, for example, the ability for a “user to conduct a joint query by using both spatial and non-spatial searches” and the other “advanced features” described by Tadman. Id. at 9–10 (quoting Ex. 1010 ¶¶ 50–51). As further explained by Dr. Goodchild, “[t]he combination of O’Clair’s systems and methods with Tadman’s teachings of polygon-based search would yield the predictable and desirable result of a GIS [geographic information] system which allowed a user to obtain search results located with a polygon-shaped area of interest.” Ex. 1010 ¶ 52; see also Tr. 17:17–19:19. In its Response, Patent Owner does not contest Petitioner’s rationale for combining features of Tadman and O’Clair, nor does Patent Owner challenge Petitioner’s rationale for combining any of the prior art. See Tr. 38:21–39:33 (counsel for Patent Owner agreeing lack of motivation to combine is not argued in the Patent Owner Response). We find persuasive Petitioner’s arguments as to why a person of ordinary skill in the art would have had reason to combine the references’ teachings in the manner asserted.” slip op. at 15

  Patent outcomesUS 8,510,045 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,510,045
• Motionpoint Corporation v. Transperfect Global, Inc.All claims unpatentable
  PTAB · Jul 15, 2015 · CBM2014-00060 · APJ Bart A Gerstenblith · CBM · Final written decision

  Claims 1–28 are unpatentable for lack of adequate written description under § 112, first paragraph.

  RulingsFinal written decision

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

    “that “hyperlink” is a well-understood term that the ’022 patent uses in accordance with its ordinary meaning. As explained above, the Microsoft Computer User’s Dictionary makes clear that a hyperlink includes a connection to another element or document. Patent Owner points to no persuasive evidence that the ’022 patent describes a hyperlink as separate from this connection such that the connection can be changed with the hyperlink remaining the same. Indeed, the ’022 patent describes “replac[ing] all links in the translated web page 7 with links that point to the translation manager 4” as part of the translation process. Ex. 1001, 3:37–38. Thus, as described in the patent, changing the connection to point to the translation manager requires a new link. This is consistent with the ordinary meaning of a hyperlink as including a specific connection from one document to another element or document. Our preliminary construction of “hyperlink” included “a link or connection” but did not include a recitation of the element or document linked. To resolve the parties’ dispute, consistent with the ordinary meaning and the specification, we conclude, on the full record before us, that one of ordinary skill in the art at the time of the invention would have understood “hyperlink” to mean “a connection between an element in a hypertext document, such as a word, phrase, symbol, or image, and a different element in the document, another hypertext document, a file, or a script.”” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “First, the inter partes reexamination of the ’022 patent is relevant to our consideration of the claim construction issues presented here because claim construction was at issue in the reexamination. Second, we see no risk of undue prejudice that would outweigh the probative value of the documents and evidence submitted in the reexamination. Of note, is that this proceeding is not a jury trial and, thus, the risk of prejudice in this forum is less than what may otherwise exist before a jury. Third, we agree with Petitioner that Exhibit 1013 is not hearsay at least under Federal Rule of Evidence 801(d)(2)(B) because the testimony in Dr. Nakhimovsky’s Declaration was submitted by, and on behalf of, Patent Owner to the Patent Office, thus evidencing that Patent Owner manifested a belief that the statements contained therein were true. Accordingly, Patent Owner’s Motion to Exclude as applied to Exhibit 1013 is denied.” slip op. at 22

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable

    “Patent Owner’s first argument is contrary to our constructions of the term “hyperlink” and the phrase “said hyperlink.” As reflected in our construction, “said hyperlink” in each of independent claims 1, 17, and 26, refers back to the original recitation of “one or more hyperlinks” in the original (untranslated) electronic communication. The portion of the specification relied upon by Patent Owner does not disclose providing translation of said further electronic communications when the original one or more hyperlink is activated. Rather, this disclosure indicates that the translation manager may replace all of the links (i.e., hyperlinks) in the translated web page with links that point to the translation manager. These replaced links are in the translated electronic communication (e.g., web page 7), and not in the original untranslated electronic communication (e.g., web page 2). Thus, this disclosure does not reasonably convey to one of ordinary skill in the art that the inventors had possession of a translation manager that provides translation of further electronic communications when the one or more hyperlinks in the original untranslated electronic communication is activated (i.e., one or more hyperlinks with unmodified destination addresses). See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 25

  • Disclosure Requirements (§112) › Definiteness (Nautilus)Not reached

    “E. Indefiniteness of Claims 23 and 25–28 Under 35 U.S.C. § 112, Second Paragraph Our determination that each challenged claim is unpatentable for lack of an adequate written description renders it unnecessary to reach Petitioner’s contentions that claims 23 and 25–28 of the ’022 patent are indefinite.” slip op. at 31

  Patent outcomesUS 6,857,022 unpatentable
  Claim construction§ 112 disclosurecites Phillips
  Patents in suitUS 6,857,022

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.