- PTAB · Sep 3, 2024 · IPR2023-00797 · APJ Stephen E Belisle · IPR · Remand
The Board denied institution because Honda did not show a reasonable likelihood that claims 23, 24, 26, or 27 were obvious over either asserted combination.
RulingsRemand decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 23, 24, 26, and 27 of the ’302 patent. Accordingly, constrained by the record before us, we deny institution of an inter partes review of the ’302 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“We find Patent Owner’s arguments persuasive, and the above testimony of its technical expert, Mr. Alberth, even more so. Based on the foregoing and the record before us, we find Petitioner fails to sufficiently show that the ’586 Provisional lacks written description support for the feature of a transmitter configured to form and transmit, in response to a received request, “the probing signal with a code sequence modulated in the frequency domain,” as recited in independent claim 23. Although not its burden, we find Patent Owner sufficiently evidences that the disclosure of the ’586 Provisional would have reasonably conveyed to skilled artisans that the inventor possessed the features of the subject limitation. 5. Conclusion For the reasons expressed above, and based on the record before us, we determine Petitioner has not sufficiently shown that Koo is prior art to the Challenged Claims. Accordingly, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that any of the Challenged Claims is unpatentable as obvious over the combination of 802.16a-2003, 802.16-2001, and Koo.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“But in doing so, Petitioner ignores the context in which the skilled artisan would have read Kitroser: where IEEE, the governing body issuing the Call for Contributions, itself explicitly questioned “if [implementing 802.16a in a mobile systems environment] is technically feasible and, if so, at what level” (Ex. 2007, 1 (emphasis added)), and where, as noted above, Kitroser provides no explanation, support, or other commentary for its “no changes” statements, and admits such statements are “subject to change in form and content after further study” and subject to amendment and withdrawal entirely (Ex. 1007, 1–4 (emphasis added)). Based on the foregoing, although Petitioner may have identified a “reason” that the skilled artisan allegedly would have combined 802.16a with Kitroser, we are not persuaded that it is a rational reason, i.e., a reason sufficiently shown to have a rational underpinning at the time of the invention of the Challenged Claims. See KSR, 550 U.S. at 418 (To support the legal conclusion of obviousness, “there must be some articulated reasoning with some rational underpinning” for combining elements in the manner claimed. (quoting In re Kahn, 441 F.3d at 988)).” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’302 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Buehrer (Ex. 1003 ¶ 23), except that we omit the two instances of “at least” to remove the unbounded nature of the definition.” slip op. at 13
§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,771,302 - Crusoe Energy Systems, LLC v. Upstream Data Inc.Institution deniedPTAB · Mar 29, 2024 · PGR2023-00052 · APJ Matthew S Meyers · PGR · Institution
Institution was denied because Petitioner did not show it was more likely than not that claims 1–41 were unpatentable under any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the Petition, Preliminary Response, and the cited evidence, we conclude that Petitioner has not satisfied its burden under 35 U.S.C. § 324 to show that it is more likely than not that claim 1 is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner disagrees with Petitioner’s articulation of the level of ordinary skill in the art, but does not offer a definition of its own. Prelim. Resp. 5. According to Patent Owner, “[t]his Petition and related declaration propose two alternative levels of ordinary skill in the art, where the second alternative does not require any formal education or any experience in the field of oil or gas production.” Id. While Patent Owner disagrees with Petitioner’s characterization of the level of ordinary skill in the art, Patent Owner does not explain how a different level of skill is likely to alter Petitioner’s analysis. Instead, Patent Owner contends that it “applied Petitioner’s articulation and confirmed the analysis detailed below would not change based on disagreements over the level of ordinary skill in the art.” Id. (citing Ex. 2101 ¶¶ 16–17). 8 To the extent necessary, and for purposes of this Decision, we accept Petitioner’s statement on the level of skill in the art. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). The prior art itself may be sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima, 261 F.3d at 1355 (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because the meanings of the claim terms “blockchain mining devices,” “mining processor,” and “adapted to mine transactions” are inextricably linked with Petitioner’s indefiniteness grounds, we will address the meaning of those terms in the context of the parties’ arguments to the extent necessary to resolve the controversy as set forth below in Section III.C. Similarly, we will address the parties’ arguments regarding the disputed means-plus-function limitations in our discussion of 35 U.S.C. § 112(f) as set forth below in Section III.E. 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’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Disclosure Requirements (§112) › Definiteness (Nautilus)Not shown unpatentable
“To satisfy the definiteness requirement of § 112(b), a patent’s claims must, when “viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, 572 U.S. at 910. We are not persuaded that the Petition shows that it is more likely than not that Petitioner would prevail in demonstrating that the term “blockchain mining devices,” as recited by independent claims 1 and 24, is indefinite. As an initial matter, we agree with Patent Owner that “Petitioner’s indefiniteness theory is flawed because its ‘alternative interpretations’ are of its incorrect claim construction rather than the claim language in view of the specification as required by Nautilus.” Prelim. Resp. 13. We find the Specification informs, with reasonable certainty, those skilled in the art about the meaning of the term “blockchain mining devices.” The 18 Specification informs us that “each blockchain mining device 12 may be composed of suitable components. The blockchain mining device 12 may have a network interface, such as network equipment 88, and one or a plurality of mining processors 92 (92A-92E for example).” Ex. 1001, 15:21–25. And, claim 1 recites that the “blockchain mining devices [are] connected to the generator” and “each have a mining processor and are connected to a network interface.” Id. at 19:59–62. Thus, reading the term “blockchain mining devices” in light of the language of the claim and the Specification, an ordinarily skilled artisan would have understood “blockchain mining devices” to mean a device composed of, for example, a network interface and one or more processors. Id. at 15:21–25, 19:59–62.” slip op. at 18
Claim construction§ 112 disclosureDiscretionary denialPatents in suitUS 11,574,372 - 3shape A/S / 3shape Inc. v. Align Technology, Inc.Institution deniedPTAB · Jan 11, 2022 · IPR2021-01120 · APJ Neil T Powell · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 were obvious over Babayoff ’529 and Atiya.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“2. Summary Regarding Obviousness Challenge Because Patent Owner’s arguments and evidence persuasively rebut Petitioner’s assertion that the Ancestral Applications do not provide written description support for the challenged claims, Petitioner has not shown adequately that Babayoff ’529 is prior art to the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 would have been obvious over Babayoff ’529 and Atiya. III. CONCLUSION For the foregoing reasons, we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the patent ’151 patent. Accordingly, we do not institute an inter partes review. IV. ORDER For the reasons given, it is: ORDERED that the Petition is denied; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill is supported by expert testimony and appears consistent with the technology at issue, for purposes of this Decision, we apply Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In response, Patent Owner objects that “Petitioners’ interpretation of the claims as requiring the use of unfiltered white light to determine depth data is plainly at odds with the claims themselves.” Prelim. Resp. 4. Patent Owner argues that “[t]his interpretation leads to a contradiction between the independent and dependent claims: the same light illuminating the intraoral structure would have to be simultaneously filtered (as recited in the dependent claims) and unfiltered (as Petitioners presume to be required by the independent claims).” Id. Patent Owner also suggests the possibility that the Petition’s arguments mean “the independent claims encompass using unfiltered white light to obtain depth data.” Id. at 7. We do understand the Petition’s arguments to mean that the independent claims encompass using unfiltered white light to illuminate an intraoral structure, not that the independent claims require using white light to illuminate an intraoral structure. And we agree with that understanding of the independent claims’ scope. Consistent with Patent Owner’s explanation, if we construed the independent claims to require using unfiltered white light to illuminate an intraoral structure, that would conflict directly with the dependent claims’ express requirement to use colored filters.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“2. Summary Regarding Obviousness Challenge Because Patent Owner’s arguments and evidence persuasively rebut Petitioner’s assertion that the Ancestral Applications do not provide written description support for the challenged claims, Petitioner has not shown adequately that Babayoff ’529 is prior art to the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 would have been obvious over Babayoff ’529 and Atiya.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,750,151 - 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 - Supercell OY v. Gree, Inc.All claims unpatentablePTAB · Sep 23, 2019 · PGR2018-00055 · APJ Lynne H Browne · PGR · Final written decision
Claims 1–12 are unpatentable under § 101; the Board denied the motion to amend because substitute claims 13–24 are also patent ineligible.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“claims provide more detail than the original claims, we do not agree that in this instance such detail renders the proposed substitute claims patent eligible. As explained above in Part II.B.2.a, the original claims are directed to a judicial exception (namely a certain method of organizing human activity), which is patent ineligible. The proposed substitute claims do not remedy this deficiency in the original claims. Rather, the proposed substitute claims merely add more detail to the ineligible subject matter. For example, substitute claim 13 recites “controlling . . . an effect of an attack . . . according to . . . a plurality of attack values, each of the plurality of attack values assigned to each attack of the number of attacks within the predetermined time by any characters in the group.” PO MTA 27. This recitation clearly provides more detail than was provided in original claim 1; however, the additional detail specifies how the video game is conducted (i.e., the rules to be followed) as opposed to a technological improvement. In other words the proposed substitute claims, like the original claims, recite following rules (specifically, rules for a battle game), which is a certain method of organizing human activity that has been found to be patent ineligible. Guidance at 52. For this reason, and the reasons discussed above in Part II.B.2.b regarding the original claims, we determine that the proposed substitute claims are directed to a judicial exception (abstract idea). We also determine that the proposed substitute claims do not integrate the recited abstract idea into a practical application for the reasons discussed above in Part II.B.2.c and that the additional elements beyond the recited abstract idea do not recite an inventive concept for the reasons discussed above in Part II.B.2.d. Accordingly, we find that substitute claims 13–24 are not patent eligible.” slip op. at 52
- BurdenFwd mixedMixed
“We are persuaded that Petitioner is correct because once again Patent Owner relies on the limitations that are encompassed by the judicial exception for the inventive concept. Our analysis under step 2B, like our analysis above under step 2A prong 2, looks to the additional elements beyond the judicial exception. Guidance, 84 Fed. Reg. at 56 (“For example the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element.”). Patent Owner identifies no additional elements beyond the judicial exception as providing an inventive concept and does not argue that the additional elements beyond that judicial exception are not well-known, routine, and conventional. For these reasons, we determine that claims 1–12 do not provide an inventive concept.” slip op. at 27
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Even if Patent Owner’s assertions that the limitations of claim 1 are analogous to the identified limitations in Examples 37 and 38 of the Guidance and do not recite mathematical concepts, this is not dispositive on the issue of whether claim 1 is directed to patent-ineligible subject matter. The Guidance identifies “following rules” such as “rules for conducting a wagering game” as one method of organizing human activity that is patent ineligible. Guidance, 84 Fed. Reg. at 52 (citing In re Smith, 815 F.3d at 818). The preamble to claim 1 recites “[a] method for providing a battle game to each of a plurality of client devices via a network.” Ex. 1001, 7:54– 55. The preamble of Example 37 recites “[a] method of rearranging icons on a graphical user interface (GUI) of a computer system” and the preamble of Example 38 recites “[a] method for providing a digital computer simulation of an analog audio mixer.” USPTO, Subject Matter Eligibility Examples: Abstract Ideas 1 (Jan. 7, 2019), https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_ 20190107.pdf. Neither of the example claims has anything to do with a method of providing a battle game or following rules, and thus, cannot demonstrate by analogy that claim 1 is patent eligible.” slip op. at 22
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“We are persuaded that Petitioner is correct because once again Patent Owner relies on the limitations that are encompassed by the judicial exception for the inventive concept. Our analysis under step 2B, like our analysis above under step 2A prong 2, looks to the additional elements beyond the judicial exception. Guidance, 84 Fed. Reg. at 56 (“For example the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element.”). Patent Owner identifies no additional elements beyond the judicial exception as providing an inventive concept and does not argue that the additional elements beyond that judicial exception are not well-known, routine, and conventional. For these reasons, we determine that claims 1–12 do not provide an inventive concept. e. Conclusion re Subject Matter Eligibility For the reasons set forth in Parts II.B.2.a–d, we are persuaded that Petitioner has met its burden of showing that claims 1–12 are not subject matter eligible.” slip op. at 27
Patent outcomesUS 9,687,744 unpatentableClaim construction§ 101 eligibility§ 112 disclosureDiscretionary denialcites Alice · Mayo · Bilski · NautilusPatents in suitUS 9,687,744 - Nintendo Of America, Inc. / Nintendo Co., Ltd. v. Ilife Technologies, Inc.All claims unpatentablePTAB · Apr 28, 2016 · IPR2015-00115 · APJ Jacqueline Wright Bonilla · IPR · Final written decision
Claims 1 and 11 are unpatentable as obvious over Unuma; the Yasushi ground fails because Yasushi is not prior art.
RulingsFinal written decision- BurdenDecided for patent owner
“Yasushi was published on November 10, 1998. As described above, claims 1 and 11 of the ’890 patent are entitled to a priority date of September 15, 1999. Thus, Yasushi is available as prior art against these claims under 35 U.S.C § 102(a) unless Patent Owner establishes (i) a reduction to practice before November 10, 1998, or (ii) conception before November 10, 1998, followed by a diligent reduction to practice. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed. Cir. 2001) (“To antedate . . . an invention, a party must show either an earlier reduction to practice, or an earlier conception followed by a diligent reduction to practice.”) (emphasis added) (citation omitted).” slip op. at 27
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“[of Figure 1] also senses along a third axis.” Reply 5. We do not find this argument persuasive for the reasons discussed above in relation to claim construction. In view of how we have construed the claims at issue, Patent Owner does not need to show written description support in its priority documents for a system that measures acceleration along all three axes, but rather must show support for a sensor that senses accelerative phenomena with regard to a system of axes (in three dimensions) in relation to which position or motion can be defined. As discussed above, in certain embodiments, such sensing can be accomplished by measuring acceleration along two axes. Petitioner also argues that “a third sensor would need to be added to a two axis accelerometer in order to sense relative to a 3D frame of reference.” Reply 5 (citing Ex. 1012, 9:25–10:22; 26:20–27:8). Although Dr. Sturges indicates that he “would have had to add another accelerometer orthogonal to the other two” in order “to establish a three-dimensional coordinate system” (Ex. 1012, 10:18–22), we do not find this testimony persuasive to support that a third sensor would be needed in order to sense relative to a three dimensional frame of reference. This portion of testimony relates to how three accelerometers can establish a three-dimensional coordinate system, not whether acceleration measurements in two dimensions provides information regarding a body relative to a 3D frame of reference. See id. at 9:25–10:22. As discussed above, the ’890 patent describes a system that specifically contemplates a fall detection application for a body, which contemplates the up/down (z axis) of interest, i.e., measures acceleration along two axes to obtain information about (sense acceleration phenomena of) a body relative to a 3D frame of reference. Ex. 1001, 8:64–9:17. As to Dr. Sturges’ further testimony that a dual-axis accelerometer would not establish a three-dimensional coordinate system (Ex. 1012, 27:4– 8), we do not find this testimony persuasive to support a finding that a third sensor is needed in order to sense relative to a three dimensional frame of reference. A dual axis accelerometer alone, without additional information regarding the system/environment in which it will be operating, is different from a dual axis accelerometer defined to be in a particular orientation. For example, consistent with our discussion above regarding disclosures in the specification, Dr. Sturges has testified that a third axis could be defined even if there was no sensing along that axis. See, e.g., Ex. 1012, 45:15–21 (“Q. So how is that Z axis—so it’s drawn in there as a third dimension, but what is defining that Z axis? A. That those axes are relative to the space in which the instrument exists, and the axes are attached so that we can see the – the frame of reference clearly in that figure.”). Accordingly, we determine that Patent Owner has shown sufficiently how the great-grandparent application (filed on September 15, 1999) describes sensing acceleration phenomena (claim 1), and measuring dynamic and static acceleration (claim 11), of a body relative to a 3D frame of reference, as recited in the challenged claims.” slip op. at 22
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“For the foregoing reasons, we determine that Patent Owner has shown sufficiently that the written description of the great-grandparent application filed on September 15, 1999, conveyed with reasonable clarity that the inventors were in possession of a sensor that sensed accelerative phenomena, as recited in claim 1 (or measured dynamic and static acceleration, as recited in claim 11), of a body with regard to a system of axes (in three dimensions) in relation to which position or motion could be defined in the environment, in accordance with the construction of the claims as set forth above. Accordingly, we determine that claims 1 and 11 are entitled to a priority date of September 15, 1999.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference not prior artNot shown unpatentableNot shown unpatentable
“Yasushi was published on November 10, 1998. As described above, claims 1 and 11 of the ’890 patent are entitled to a priority date of September 15, 1999. Thus, Yasushi is available as prior art against these claims under 35 U.S.C § 102(a) unless Patent Owner establishes (i) a reduction to practice before November 10, 1998, or (ii) conception before November 10, 1998, followed by a diligent reduction to practice. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed. Cir. 2001) (“To antedate . . . an invention, a party must show either an earlier reduction to practice, or an earlier conception followed by a diligent reduction to practice.”) (emphasis added) (citation omitted).” slip op. at 27
Patent outcomesUS 7,479,890 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 7,479,890 - Nintendo Of America, Inc. / Nintendo Co., Ltd. v. Ilife Technologies, Inc.All claims unpatentablePTAB · Apr 28, 2016 · IPR2015-00112 · APJ Hyun J Jung · IPR · Final written decision
Claims 1, 2, 11, and 12 are unpatentable: claims 2 and 12 as obvious over Yasushi, and claims 1, 2, 11, and 12 as obvious over Unuma.
RulingsFinal written decision- Skill levelOther
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“For the foregoing reasons, we construe “a sensor . . . that senses accelerative phenomena of said body relative to a three dimensional frame of reference in said environment” as “a sensor that senses accelerative phenomena of a body with regard to a system of axes (in three dimensions) in relation to which position or motion can be defined in the environment.” The recited “sensor” comprises a plurality of acceleration devices, i.e., at least two devices, that measure acceleration along at least two axes.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“There is nothing in the Specification that indicates a deviation from this ordinary meaning. Accordingly, the plain language of the claim means that the sensor senses accelerative phenomena of said body with regard to a three dimensional frame of reference. We also interpret “three dimensional frame of reference” to refer to “a system of axes (in three dimensions) in relation to which position or motion can be defined.” (see The Oxford English Dictionary, available at http://www.oed.com/view/Entry/317084?redirectedFrom=frame+of+referen ce#eid (last visited Apr. 26, 2016) (Ex. 3006) (defining “frame of reference” as “[a] system of coordinate axes in relation to which size, position, or motion, can be defined;” see also Ex. 1001, 2:25–27 (“the present invention introduces systems, as well as methods of operating such systems, for evaluating movement of a body relative to an environment”), 2:53–56 (“the sensor may be a plural-axis sensor that senses accelerative phenomena and generates an output signal to the processor indicative of measurements of both dynamic and static acceleration of the body in plural axes”). In other words, the plain language of the claim refers to a sensor that senses accelerative phenomena of said body with regard to a system of axes (in three dimensions) in relation to which position or motion can be defined.” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateNot entitled to earlier dateMixed
“For the foregoing reasons, we determine that Patent Owner has shown sufficiently that the written description of the grandparent application filed on September 15, 1999, conveyed with reasonable clarity that the inventors were in possession of a sensor that sensed accelerative phenomena of a body with regard to a system of axes (in three dimensions) in relation to which position or motion could be defined in the environment, in accordance with the construction of the claim as set forth above. Accordingly, we determine that claims 1 and 11 are entitled to a priority date of September 15, 1999. In the Decision on Institution, we also noted that “entitlement to priority is decided on a claim-by-claim basis, and various claims may be entitled to different priority dates.” Dec. on Inst. 16 (quoting X2Y Attenuators, LLC v. Int’l Trade Comm’n, 757 F.3d 1358, 1366 (Fed. Cir. 2014)). Petitioner’s basis for asserting that dependent claims 2 and 12 lack written description support in the parent application filed on September 15, 1999 appears to be their dependence on independent claims 1 and 11. Reply 6 (citing Ex. 1012 ¶¶ 13–25). Patent Owner makes no assertion that dependent claims 2 and 12 are entitled to the September 15, 1999 priority date. Prelim. Resp. 12–14. Petitioner bears the burden of going forward with evidence that there is art prior to the application date of the ’331 patent that either anticipates or renders obvious the claims of the ’331 patent, which it has. Patent Owner then has the burden of going forward with evidence (i) that the prior art does not actually anticipate or render obvious the claims, or (ii) that the alleged prior art is not actually prior art because the challenged claim is entitled to the benefit of a filing date prior to the date of the alleged prior art. The second item requires Patent Owner to show why the written description in the earlier application supports the claim. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). Dependent claims 2 and 12 recite “wherein one of said plurality of” slip op. at 28
Patent outcomesUS 7,095,331 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 7,095,331 - Nintendo Of America, Inc. / Nintendo Co., Ltd. v. Ilife Technologies, Inc.No claims unpatentablePTAB · Apr 28, 2016 · IPR2015-00109 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–3, 9–12, and 18–20 were not shown unpatentable under § 103 over Yasushi because Yasushi was not prior art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“Turning first to the express language of independent claims 1 and 10, claim 1 recites a “system within a communications device capable of evaluating movement of a body relative to an environment . . . wherein said communication1 device transmits said tolerance indicia,” and claim 10 recites a “method for operating a system within a communications device . . . wherein said method comprises the steps of . . . transmitting said tolerance indicia through said communications device.” We, thus, agree with Patent Owner that claims 1 and 10 only require the “communications device” to transmit tolerance indicia. The ’796 patent also states that the “term ‘communication device’ is defined broadly to include, without limitation, cellular telephones, personal digital assistants, hand held computers, laptops, computers, wireless Internet access devices, and other similar types of communications equipment.” Ex. 1001, 2:46–50. Because of the qualifiers “broadly,” “without limitation,” and “other similar types of communications equipment,” we do not find that the ’796 patent’s purported definition of “communication device” limits the” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“describes that “[s]ystem 11 includes circuit boards 13 and 15 . . . associated with a housing (generally designated 17),” that “[h]ousing 17 may comprise . . . halves 19 and 21 that encase boards 13 and 15,” and that “[s]ystem 11 includes a processor . . . and a sensor 25.” Ex. 1007, 39:10–12, 39:16–19, 40:4–5; see also Ex. 1001, 5:25–28, 5:32–36, 5:45–46. Figure 2 illustrates system 11, “which includes processing circuitry 39, indicating means 41, . . . along with sensor 25” and shows sensor 25 on board 15 within housing 17. Ex. 1007, 42:18–21; see also Ex. 1001, 6:48–51. The grandparent application also describes that an “[e]xemplary indicating means 41 . . . [is] operable to . . . communicate such state, or tolerance, indicia to a monitoring controller,” that “[i]ndicating means 41 may take any number of forms,” and that “in system 11 of the present embodiment, stage 41 is an RF transmitter.” Ex. 1007, 43:14–20. Based on these descriptions of system 11 with an RF transmitter, we find that the grandparent application provides adequate written description support for the “communications device” recited by the challenged claims.” slip op. at 19
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“In order to receive benefit of the filing date of an application previously filed in the United States, the subsequent application for patent must be for an invention disclosed in the manner provided in 35 U.S.C. § 112, first paragraph. 35 U.S.C. § 120; see also 37 C.F.R. § 1.78; see Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (discussing requirements of claiming benefit of priority date of earlier application under 35 U.S.C. § 120).3 To satisfy 35 U.S.C. §112, first paragraph, the written description must convey with reasonable clarity to those skilled in the art that the inventor was in possession of the claimed invention. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). One shows “possession” of the invention by describing the invention using such descriptive means as words, structures, figures, diagrams, formulas, etc. that fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). The issue of whether the written 3 The subsequent application must also be filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the previously filed application and contain or be amended to contain a specific reference to the previously filed application. 35 U.S.C. § 120; see also 37 C.F.R. § 1.78. In this case, the application that matured into the ’796 patent was filed on December 30, 2002, which is before the patenting of the parent application on December 31, 2002, which was similarly entitled to the benefit of the filing date of the grandparent application. Ex. 1001, 1; Ex. 1007, 8. The application that matured into the ’796 patent contained a specific reference to the grandparent application. Ex. 1006, 38. description requirement has been satisfied is a question of fact. Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 865 (Fed. Cir. 1993).” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference not prior artDecided for patent owner
“overcome Yasushi’s publication date.4 See In re Facius, 408 F.2d 1396, 1403–04 (CCPA 1969) (holding, in a prosecution context, that an earlier filed reference was prima facie available as prior art and placing the burden on the party claiming prior invention to overcome that reference). Patent Owner may meet its burden by providing evidence that the publication date of the reference is not “before the invention thereof by the applicant for [a] patent,” 35 U.S.C. § 102(a), that is, antedating Yasushi. Yasushi was published on November 10, 1998. As described above, claims 1–3, 9–12, and 18–20 of the ’796 patent are entitled to a priority date of September 15, 1999. Thus, Yasushi is available as prior art against these claims under 35 U.S.C § 102(a) unless Patent Owner establishes (i) a reduction to practice before November 10, 1998, or (ii) conception before November 10, 1998, followed by a diligent reduction to practice. Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed. Cir. 2001) (“To antedate . . . an invention, a party must show either an 4 Even though Patent Owner bears the burden of production in antedating a reference, the burden of persuasion to prove unpatentability of the challenged claims remains with Petitioner. See 35 U.S.C. § 316(e). earlier reduction to practice, or an earlier conception followed by a diligent reduction to practice.”) (emphasis added) (citation omitted). Reduction to practice is a question of law predicated on subsidiary factual findings. Brown v. Barbacid, 276 F.3d 1327, 1332 (Fed. Cir. 2002). To establish an actual reduction to practice, the inventor must prove that: (1) an embodiment of the invention was constructed that meets all the limitations of the claims at issue; and (2) the inventor appreciated that the invention would work for its intended purpose. Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998). The invention does not have to be at a commercially satisfactory stage of development for an actual reduction to practice, but must have been sufficiently tested to demonstrate that it will work for its intended purpose. See, e.g., Scott v. Finney, 34 F.3d 1058, 1062 (Fed. Cir. 1994) (citing numerous cases wherein the character of the testing necessary to support an actual reduction to practice varied with the complexity of the invention and the problem it solved). It is well settled that an inventor’s testimony alone is insufficient to” slip op. at 22
Patent outcomesUS 6,864,796 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 6,864,796 - PTAB · Jun 9, 2015 · IPR2014-00245 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–24 were canceled; substitute claims 25–48 were denied because Patent Owner did not show patentability over the prior art, and claims 39–45 and 48 also failed § 101.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“establish that it is entitled to the relief requested. See 37 C.F.R. § 42.20(c). Entry of proposed amendments is not automatic, but occurs only upon the patent owner having met the requirements of 37 C.F.R. § 42.121 and demonstrated, by a preponderance of the evidence, the patentability of the proposed substitute claims. See Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 7–8 (PTAB June 11, 2013) (Paper 26, “Idle Free”) (informative); Toyota Motor Corp. v. American Vehicular Scis. LLC, Case IPR2013-00419, slip. op. at 4–5 (PTAB Mar. 7, 2014) (Paper 32, “Toyota”). For the reasons explained below, we conclude that Patent Owner has not met its burden with respect to claims 25–48.” slip op. at 10
- ScopeDecided for patent owner
“As discussed above, the claims do not require encrypting data before transmitting that data as part of the store instruction. Accordingly, we decline to import into the claims a limitation based on a specific embodiment in the Specification. See, e.g., SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). We decline to read the exemplary disclosure of encrypting the data before transmitting it with the store instruction into the broadest reasonable interpretation of “data.”” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“3. Written Description Support Pursuant to 37 C.F.R. § 42.121(b), a motion to amend in an inter partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.”” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“appliance to generate encrypted received data” and “store the encrypted received data in the second memory device,” recited in proposed substitute claim 25 and similarly recited in the other proposed substitute independent claims. See Reply 4–5. We agree with Patent Owner that McCanne does not disclose explicitly that its receiving TA is configured to “encrypt the original data received with the store instruction . . . to generate encrypted received data” and “store the encrypted received data in the second memory device.” See id. at 5. Thus, we are not persuaded that McCanne anticipates the proposed substitute claims, as asserted by Petitioner, because McCanne fails to describe each and every element as set forth in the proposed substitute claims, either expressly or inherently. See Opp. 8–12; Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).” slip op. at 26
§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 8,392,684
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.