- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Maxell LtdNo claims unpatentablePTAB · Oct 31, 2025 · IPR2024-00777 · APJ Jameson Lee · IPR · Final written decision
Claims 16–27 were not shown unpatentable because Petitioner failed to account for limitations 16[b] and 16[i] and their counterparts across the asserted obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner proposes that a person of ordinary skill in the art “would have a Bachelor of Science degree in Electrical Engineering, Computer Engineering, Computer Science, Human Computer Interaction, or a related technical field, with at least one year of experience working in the field of user interfaces and/or content management.” PO Resp. 11 (citing Ex. 2040 ¶ 53). The Decision on Institution adopted Petitioner’s proposed level of ordinary skill in the art. Inst. Dec. 10. We find Patent Owner’s stated level to be less precise than that proposed by Petitioner in that the modifier “at least” used by Patent owner imposes no upper bound on the amount of experience possessed by one of ordinary skill in the art. Also, Patent Owner states: “The difference between the Board’s definition and Patent Owner’s (EX2040. ¶53) does not change the arguments set forth herein.” PO Resp. 11. Thus, we continue to adopt Petitioner’s stated level of ordinary skill in the art.4 4 All of our findings and conclusions would still be the same, however, had we applied Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 8
- Prior constructionPrior construction adoptedDecided for patent owner
“In its Reply, Petitioner does not assert that the district court’s construction is incorrect. We agree with Patent Owner that the district court’s construction is better than Petitioner’s proposed construction, because for reasons indicated by Patent Owner, which are not disputed by Petitioner, settings in the computer, e.g., dedicated folders for each user are the user profiles, rather than simply data alone of any kind. Further, when asked about the appropriateness of the district court’s construction, counsel for Petitioner expressed that Petitioner has no objection to the Board’s adopting the district court’s construction for “user profile”: JUDGE LEE: So, you’d be fine with just going with the District Court’s construction? MR. HEINTZ: Yes, Your Honor. Tr. 15:22–24. For the foregoing reasons, we adopt the district court’s construction for “user profile,” i.e., “a collection of settings and information associated with a user.”” slip op. at 13
- BurdenNot shown unpatentable
“PO Resp. 30–31 (Figure 26 omitted). In its Reply, Petitioner still does not provide an articulated reason for placing user profile selection buttons, labeled with user names, within Horn’s panes 2601 or 2602. Reply 12–14. Although Horn does describe personalized profile, Petitioner points to no disclosure of Horn as to how a user would have selected his or her own profile from among a plurality of user profiles. Petitioner presents no reason for placing these user profile selection buttons, labeled with user names, gleaned from or suggested by Baumgartner, within either pane 2601 or pane 2602 in Horn’s workspace view. Further, pane 2602 contains “a list of all collections defined by MFS and the user,” and pane 2601 lists the source examined by the user to create his or her collections. Ex. 1005, 19:41–46. That disclosure suggests the contents of panes 2601 and 2602 are tied to one particular user. No rational basis is articulated by Petitioner to place user profile selection buttons within these panes which appear to be in the profile space of one user. For the foregoing reasons, Petitioner has not adequately accounted for limitation 16[b].” slip op. at 22
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“The test for sufficiency of a written description under 35 U.S.C. § 112 is whether the earlier application’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The specification must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Id. The Court of Appeals for the Federal Circuit has explained: One shows that one is “in possession” of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious. Id. (“[T]he applicant must also convey to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed.”) (emphasis in original). One does that by such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention. Although the exact terms need not be used in haec verba, see Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470 (Fed.Cir.1995) (“[T]he prior application need not describe the claimed subject matter in exactly the same terms as used in the claims. . . .”), the specification must contain an equivalent description of the claimed subject matter. A description which renders obvious the invention for which an earlier filing date is sought is not sufficient. Lockwood v. American Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997).” slip op. at 31
Patent outcomesUS 11,017,815 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,017,815 - PTAB · Jul 15, 2024 · IPR2024-00537 · APJ John F Horvath · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds, finding a reasonable likelihood that at least one claim is unpatentable over Forutanpour.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“deny institution. Fintiv seeks to “minimize potential conflict between the Patent Trial and Appeal Board (PTAB) and district court proceedings.” Fintiv Memo, 1; see also Fintiv, Paper 11 at 5 (introducing factors to weigh “[w]hen the patent owner raises an argument for discretionary denial . . . due to an earlier trial date”) (emphasis added). Because the district court has not set a trial date, and the trial court statistics indicate any trial is likely to occur months after a Final Written Decision in this proceeding, we see little potential for conflicting Board and district court decisions.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). At this stage of the proceeding, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Accordingly, for purposes of this Decision, we adopt Petitioner’s description as our own. slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this standard, a claim is construed “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Only claim terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner construes the claims to have their “plain and ordinary meaning” and contends “that no terms invoke means-plus-function analysis.” Pet. 17–18. Patent Owner does not contend that any terms require construction. Prelim. Resp. 7. At this stage of the proceeding, because the parties do not dispute the meaning of any claim terms and none appear to require construction, we offer no express constructions for any claim terms. See Nidec Motor, 868 F.3d at 1017.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“of the grandparent application is that they disclose a WTRU having a communication peripheral that can (a) operate in Bluetooth or WiFi mode, (b) use Bluetooth to discover nearby devices and services, (c) transfer data to nearby devices, and (d) use discovered environmental information to determine which components are needed to effect data transfer. But they do not expressly disclose using Bluetooth to discover a nearby WTRU and WiFi to transfer data to that WTRU.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 8,737,933 - Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentablePTAB · Oct 19, 2023 · IPR2022-00810 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–10 and 13–21 are unpatentable: Vaios anticipates some claims, and the listed Vaios, Klein, and Naidoo-068 combinations render the remaining claims obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 8 (citing Ex. 1002 ¶¶ 21–24). Patent Owner responds that “Petitioner and its expert rely on conclusory statements regarding a person of ordinary skill in the art” such that Dr. “Hochwald’s conclusory opinion should be given no weight.” PO Resp. 4–5 (citing Ex. 1002 ¶¶ 21–24). Notwithstanding Patent Owner’s arguments, Dr. Hochwald declares that “[a]ll of the opinions contained in this declaration are based on the documents I have reviewed and my professional judgment, as well as my education, experience, and professional knowledge.” Ex. 1002 ¶ 17. Such documents include the “’098 patent (EX1001), the prosecution history of the ’098 patent (EX1017), the prior art references cited herein, and other Hochwald bases his proposed level of ordinary skill on the relevant documents. Moreover, Patent Owner does not offer a proposed level of ordinary skill in the art or even argue that a different level would result in a different analysis by Dr. Hochwald or any other declarant. See id. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’098 patent specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached
“Phillips. See Pet. 7–8. The parties disagree over whether the preamble is limiting. Compare PO Resp. 2–3 (arguing the preamble is limiting), with Reply 2–3 (arguing that “‘for receiving a person at an entrance’ clearly states an intended purpose of the invention”). As the analysis of the grounds art renders the claims unpatentable.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In any event, even if we generally adopt what Patent Owner refers to as an agreed upon plain and ordinary meaning and construe “detecting a person at the entrance” as limited to “detecting a person at an exterior,” and further construe “exterior” as referring to the exterior of an area defined by some type of a “demarcation line” according to the ’098 patent’s description of Figure 1 (see Ex. 1001, 6:40–50), the Petitioner persuasively shows that the prior art teaches the limitation (including when the “demarcation line” defines the exterior of a building), as discussed further below. Accordingly, it is not necessary to explicitly construe the limitation any further or to construe any other claim terms, because any construction would not impact the analysis of Petitioner’s asserted grounds. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“shows that the ’384 provisional does not contemplate transmitting “video of the person at the entrance” to a “remote peripheral device by which a user of the remote peripheral device may view the video of the person at the entrance,” using “a graphic user interface,” as claim step 1c requires. Disclosure in the ’384 provisional of a generic laptop or other remote peripheral device that may be capable of viewing video in isolation is not possession of the claimed invention. In other words, as Petitioner persuasively shows, “[c]ommunication of actual video to the remote peripheral device was not countenanced in the provisional, and [Patent Owner] fails to identify evidence to the contrary.” Id. at 9. That is, as Petitioner also argues, “[w]ritten description support is not established simply by identifying peripheral devices such as PDAs and laptop[s] in the provisional and arguing that such devices were ‘capable of’ displaying video, nor by the provisional’s disclosure of ‘communications’ between the central computer and said peripheral devices.” Id. at 8–9 (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1331–32 (Fed. Cir. 2008)). Under the rationale and holding of Tech. Licensing Corp., even if “a person skilled in the art might conclude” that the ’384 provisional’s disclosed system is capable of performing the same function of viewing the particular video at a remote peripheral device, this is not enough to show adequate written description. See id. at 1334 (“This evidence persuaded the trial court that a person skilled in the art might conclude that R21 and R26 establishing a level shifted signal [as recited in the ’250 patent claims at issue], but that was all,” and that evidence is insufficient to satisfy written description for a level shifted signal), 1333–34 (“The pertinent question is not whether a person skilled in the art could look at both Figure 3 [from the earlier-filed ’323 application] and Figure 16 [from the ’250 patent at issue] and determine that the resistors in the former perform a similar function to the resistors in the latter. Rather, the issue is whether a person skilled in the art would understand from the earlier application alone, without consulting the new matter in the ’250 patent, that the inventor had possession of the claimed ‘other circuit’ in 1992 when the ′323 application was filed.”). Even if there is a disclosure in the ’384 provisional of a system that merely is capable of providing for the viewing of live streaming or recorded video at the remote peripheral device of “the person at the entrance,” this still is not sufficient written description for claim 1, step 1c. Rather, claim 1 requires “a graphic user interface” (which facilitates and controls the viewing) at “the remote peripheral device,” because it requires “providing a [GUI] to a remote peripheral device by which a user of the remote peripheral device may view the video of the person at the entrance.”14 There is no disclosure in the ’384 provisional for providing a GUI to a remote peripheral device. See Inst. Dec. 9 (indicating a lack of showing as to the claimed” slip op. at 19
Patent outcomesUS 8,139,098 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,139,098 - PTAB · Jul 28, 2023 · IPR2022-00483 · APJ Jon M Jurgovan · IPR · Final written decision
The Board cancelled original claims 1–18 and 20–22, but denied substitute claims 23–43 for lack of written-description support.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“37 C.F.R. §§ 42.121(b)(1) and (2). The patent owner bears the burden to show, by a preponderance of the evidence, that a motion to amend complies with these requirements. 37 C.F.R. § 42.121(d)(1). “[T]he motion [to amend] must set forth written description support for each proposed substitute claim as a whole, and not just the features added by the amendment.” Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15, 8 (PTAB Feb. 25, 2019) (precedential). B. Lack of Written Description Support” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot shown unpatentable
“the ’556 application does not provide written description support for the proposed substitute claims. For limitations 23e, 30e, and 37e of respective independent proposed claims 23, 30, and 37, Patent Owner points to paragraphs 11, 37, 60, 78, 83–85, 90, 109–113, 119–130, 150, and Figure 11 of the ’556 application as providing written description support. MTA 6–7, 10, 14–15; Reply 2–3. Reviewing these paragraphs, however, we find no description of the subject matter recited in limitation 23e, which recites “responsive to determining that the [first] variation of the soft information change how the hard information is displayed at the client device, determine a second variation of the soft information.” Nor do we find in those passages written description of the subject matter recited in the similar language of limitations 30e and 37e. Specifically, paragraphs 11 and 37 of the ’556 application address prediction of the response message expected from the client device (similar to limitations 23h–23j, 30h–30j, and 37h–37j, which were added in the MTA to the original claims of the ’759 patent). Paragraphs 60, 78, 83, and 84 describe specific ways to vary soft messaging to establish secondary communications between a server and a client device to detect the presence of a malicious application. Paragraph 85 describes a priori recording of soft information variations to create large sets of composite (hard and soft) messages to be transmitted together. Paragraph 85 also states that, alternatively, the hard and soft messages may be transmitted separately. Paragraph 90 mentions use of “spaghetti” code and soft formatting to make it difficult for malicious applications to alter, replace, or counterfeit in real time. Paragraphs 109 to 113 mention various ways to vary soft information and soft messaging, such as varying or selecting different characters sets, font type, color, or weight, and point sizes from session to session, and predicting the response from the client device to compare with the actual response. Paragraphs 119 to 125 and Figure 11 address soft messaging using un-rendered page elements, and paragraphs 126 to 130 describe soft messaging using graphical elements. Paragraph 150 discusses identifying compatible soft information and selecting a variation of soft information to prevent malicious applications from reverse engineering the soft messaging used to validate communications. None of these disclosures describe the “trial and error” or “testing” approach of limitations 23e, 30e, and 37e in which, responsive to determining that a first variation of the soft information changes how the hard information is displayed at the client device, the security processor creates a second variation of soft information (which is included in the message to the client device if it does not vary how the hard information is displayed—see limitations 23f–23g, 30f–30g, and 37f–37g) to prevent a malicious application from interacting with the hard information. Accordingly, Patent Owner fails to meet its burden to show that limitations 23e, 30e, and 37e of independent proposed substitute claims 23, 30, and 37, as presented in the Motion to Amend, have written description support in the ’556 application, as required under 37 C.F.R. § 42.121(b)(2).” slip op. at 11
§ 112 disclosurePatents in suitUS 10,230,759 - Tencent Technology (Shenzhen) Co. Ltd. v. Yogesh RathodInstitution deniedPTAB · Jun 27, 2022 · DER2022-00002 · APJ Michael R Zecher · DER · Institution
The Board denied institution because Tencent did not make a sufficient showing that the named inventors conceived the invention allegedly communicated to Rathod.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding.” 35 U.S.C. § 135(a)(1). We have authority to institute a derivation proceeding on behalf of the Director. 37 C.F.R. § 42.408(a). The threshold showing for institution of a derivation proceeding is whether the petition demonstrates substantial evidence that, if unrebutted, would support a determination of derivation. See 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c).1 Once a derivation proceeding has been instituted, the standard of proof for establishing that a challenged claim constitutes a derived invention is by a preponderance of the evidence. 37 C.F.R. § 42.1(d). For the reasons set forth below, we conclude” slip op. at 2
- BurdenDenied
“is devoid of any explanation of the circumstances surrounding conception of the invention by the three named inventors of the ’371 application. Most notably, Tencent does not provide supporting testimony from any of the three named inventors or, for that matter, from any other parties that could corroborate the alleged conception. Indeed, the word “conception” does not appear in Tencent’s Petition at all. See Pet. Put simply, Tencent fails to provide any meaningful information regarding the work done by each of the three named inventors that resulted in conception of the invention covered by the pending claims of the ’371 application. Absent some evidence in the record, such as testimony from the three named inventors together with corroborating evidence showing there was formation in the mind of the named inventors of a definite and permanent idea of the complete and operative invention, Tencent has not demonstrated prior conception.6 To the extent Tencent expects us to scour the preliminary record to unearth supporting evidence of prior conception, we decline to do so. It is well-settled that Tencent is “master of its complaint.” SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018). We are constrained by the arguments and evidence presented and developed in Tencent’s Petition, and we are not” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not reached
“6 We recognize that Tencent contends that the ’265 patent and the three applications in its priority chain lack sufficient written description support for the claimed invention. Pet. 17–28. We need not reach Tencent’s arguments that the three applications in the priority chain of the ’265 patent lack sufficient written description support for the claimed invention because, as we explain above, Tencent does not demonstrate that the named inventors in the ’371 application conceived, at any time, the inventions purportedly communicated to Mr. Rathod.” slip op. at 13
- Expert testimonyNot reached
“is devoid of any explanation of the circumstances surrounding conception of the invention by the three named inventors of the ’371 application. Most notably, Tencent does not provide supporting testimony from any of the three named inventors or, for that matter, from any other parties that could corroborate the alleged conception. Indeed, the word “conception” does not appear in Tencent’s Petition at all. See Pet. Put simply, Tencent fails to provide any meaningful information regarding the work done by each of the three named inventors that resulted in conception of the invention covered by the pending claims of the ’371 application. Absent some evidence in the record, such as testimony from the three named inventors together with corroborating evidence showing there was formation in the mind of the named inventors of a definite and permanent idea of the complete and operative invention, Tencent has not demonstrated prior conception.6” slip op. at 13
§ 112 disclosurePatents in suitUS 10,990,265 - Chicago Mercantile Exchange, Inc. v. 5th Market, Inc.All claims unpatentablePTAB · Dec 17, 2014 · CBM2013-00027 · APJ Michael R Zecher · CBM · Final written decision
Claims 1–23 and 41–49 are unpatentable: claims 1–23 are indefinite, and claims 1–4, 6–23, and 41–49 are obvious; the motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“considered, including “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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. CME’s expert witness, Dr. Pirrong, attests that a person with ordinary skill in the art would be an individual who possesses the following: (1) a bachelor’s degree in computer science, or another quantitative field such as mathematics, statistics, economics, or finance; (2) two to five years of work experience in any one of the aforementioned areas; and (3) an understanding of the operation of markets for financial instruments, including computerized and electronic markets. Ex. 1005 ¶ 44.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“We are not persuaded by 5th Market’s proposed claim construction of the claim phrase “external price feed” because its construction of “outside” the network is overly narrow. 5th Market does not direct us to a disclosure in the Specification of the ’419 patent that suggests “outside” the network should be limited to a marketplace trading, but not aggregating orders for, the same securities or items as the originating CORE trading engine, or a diverse marketplace that does not trade or aggregate the same securities or items, as the originating CORE trading engine. If a feature is not necessary to give meaning to what the inventor means by a claim term, it would be 15 “extraneous,” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). We decline to adopt 5th Market’s construction of “outside” the network as the broadest reasonable interpretation, as it would import extraneous limitations into the claims, and it would be inconsistent with the Specification of the ’419 patent. 5th Market’s attempt to limit “outside” the network to the two types of marketplaces identified above is not necessary to give meaning to the claim phrase “external price feed,” and should not be read into the claims that recite this feature. We maintain that the broadest reasonable interpretation of the claim phrase “external price feed” is “price data received from outside of the conditional order transaction network.” As we explained in the Decision to Institute (Dec. 20–22), this claim construction is consistent with the ordinary and customary meaning of “external,” as would be understood by one with ordinary skill in the art, in light of the ’419 patent.” slip op. at 15
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)§112(f) appliesDecided for petitioner
“When construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, 3 the corresponding structure of a means-plus-function limitation must be more than simply a general-purpose computer or microprocessor to avoid impermissible functional claiming, unless certain narrow exceptions concerning generic computer functions apply. Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); see In re Katz Interactive Call Proc. Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011). That is, the specification must disclose “enough of an algorithm to provide the necessary structure under § 112, ¶ 6” or a disclosure that can be 3 Section 4(c) of the AIA re-designated 35 U.S.C. § 112 ¶ 6 as 35 U.S.C. § 112(f). Nonetheless, because the ’419 patent has a filing date before September 16, 2012 (the effective date of the AIA), we refer to the pre-AIA version of 35 U.S.C. § 112. 18 expressed in any understandable terms, e.g., a mathematical formula, in prose, or as a flowchart. Finisar Corp. v. The DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008). Simply reciting a claimed function in the specification, and saying nothing about how the computer or processor ensures that such a function is performed, is not a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009). According to the Specification of the ’419 patent, Table 1 includes conditions that are available for input by subscribers, viewable by other subscribers, and executed by the system’s trading engine, e.g., the CORE trading engine illustrated in Figure 1. Ex. 1001, 17:20–23. Although the CORE trading engine is tantamount to a general purpose computer, there is no explicit disclosure that explains how the conditions included in Table 1 are used to compare orders. For instance, Table 1 includes, amongst other conditions, price, quantity, minimum quantity, cap, and a collar kill that may be used to compare orders. Id. at 17:25–18:20. Table 1, however, does not disclose a well-defined or otherwise recognizable sequence of steps that uses these conditions to compare orders. See Blackboard, 574 F.3d at 1384. Absent such a disclosure, we are not persuaded that the Specification of the ’419 patent discloses a specific algorithm that transforms an otherwise general purpose computer into a special purpose computer programmed to perform the recited function of “comparing.” See Finisar, 523 F.3d at 1340. 19 In summary, because Federal Circuit precedent dictates that the corresponding structure for performing a specialized function, as here, cannot just be a general purpose computer, the Specification of the ’419 patent fails to disclose sufficient structure for performing the recited function of “comparing.”” slip op. at 18
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“Table 1, that purportedly identify the corresponding structure for performing the recited function of “comparing.” PO Resp. 76–77 (citing Ex. 1001, 17:20–18:20; Ex. 2008 ¶ 86). 5th Market argues that these disclosures in the Specification collectively amount to a structure in the form of an algorithm that transforms an otherwise general purpose computer into a special-purpose computer programmed to perform the recited function of “comparing.” Id. at 77–78 (citing Ex. 2008 ¶ 87). In its Reply, CME contends that the ’419 patent does not disclose an algorithm for comparing orders, nor does it explain how a computer may be programmed to compare algorithmic orders with algorithmic or non-algorithmic orders. Pet. Reply 15. As we explained in the claim construction section above, upon reviewing the disclosures in the Specification of the ’419 patent relied upon by 5th Market in its Patent Owner Response, the Specification of the ’419 patent fails to disclose sufficient structure for performing the recited function of “comparing.” In other words, the conditions included in Table 1 of the ’419 patent, by themselves, do not set forth a well-defined or otherwise recognizable sequence of steps for comparing orders and, therefore, do not amount to a specific algorithm that transforms an otherwise general purpose computer into a special purpose computer programmed to perform the recited function of “comparing.” See Blackboard, 574 F.3d at 1384; Finisar, 523 F.3d at 1340. Consequently, we conclude that CME has demonstrated by a preponderance of evidence that claims 1–23, each of 21 which recites the claim phrase “means for comparing,” are indefinite under § 112 ¶ 2.” slip op. at 21
Patent outcomesUS 6,418,419 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 6,418,419 - Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.All claims unpatentablePTAB · Mar 13, 2014 · CBM2013-00004 · APJ Joni Y Chang · CBM · Final written decision
Claims 1–78 are unpatentable: anticipated by Burge and Nakagawa, and claims 16, 17, 47, 63, and 64 are also obvious over the stated combinations with Herrod.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Under 35 U.S.C. § 120, a patent claim is entitled to the benefit of the filing date of an earlier-filed application only if the disclosure of the earlier-filed application provides written description support for the patent claim as required by 35 U.S.C. § 112. In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). The test for determining compliance with the written description requirement under 35 U.S.C. § 112, ¶ 1, is whether the original disclosure of the earlier-filed application reasonably would have conveyed to one with ordinary skill in the art that the inventor had possession the claimed subject matter at the time of the earlier-filed application. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). The specification must convey with reasonable clarity to those skilled in the art that the inventor was in possession of the claimed subject matter, as of the filing date of the earlier-filed application. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563- 64 (Fed. Cir. 1991).” slip op. at 18
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“Upon reviewing the parties’ arguments and supporting evidence, we have reevaluated our determination in the Decision on Institution (Dec. 19- 30) that certain claim features lack written description support in the ’650 application. For example, we agree with Progressive that the claim term “a level of risk” does not require a level of risk to be “assigned based at least in part on the indicated level of willingness of the driver to allow at least one aspect to be recorded.” PO Resp. 10. Nevertheless, based on the record before us, we determine that the original disclosure of the ’650 application does not support the claimed subject matter set forth in claims 1-78 of the ’598 patent. For the reasons stated below, we determine that claims 1-78 of” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“C. Principles of Law To establish anticipation under 35 U.S.C. § 102, each and every element in a claim, arranged as is recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).” slip op. at 30
- ExcludeMotion to exclude, deniedDenied
“We disagree with Liberty that Mr. Zatkovich must be qualified both in the field of insurance and in the field of vehicle telematics to give reliable testimony in this proceeding. It is only the “hypothetical” person of ordinary skill in the art who possesses ordinary skill in each of the fields involved in a claimed invention. In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“The person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant prior art.”). The qualifications of Mr. Zatkovich, as summarized in his curriculum vitae (Ex. 2014), qualify him to give expert testimony on the subject of vehicle telematics, computer systems, and network communications. With regard to Mr. Zatkovich’s alleged lack of 5 With some enumerated exceptions, the Federal Rules of Evidence apply to covered business method patent review. 37 C.F.R. § 42.62. The Federal Rule of Evidence 702 entitled “Testimony by Experts” states: If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case. 59 ordinary skill on the specific subject of insurance, the Board weighs his testimony accordingly, taking into account the limited extent of his expertise. We also disagree that Mr. Zatkovich’s technical experience must have been acquired prior to January 1996. Under the Federal Rule of Evidence 702, a witness who is qualified as an expert by knowledge, skill, experience, training or education may testify in the form of an opinion. Liberty has not shown that Rule 702 of the Federal Rules of Evidence requires the witness to have particular experience with the specific subject matter of the ’598 patent, or requires the relevant experience of the witness to have been acquired during the January 1996 time-frame.” slip op. at 59
Patent outcomesUS 8,090,598 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,090,598
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.