- PTAB · Sep 19, 2025 · PGR2025-00025 · APJ Kimberly Mcgraw · PGR · Institution
The Board instituted PGR on claims 1–19 and all asserted grounds, finding it more likely than not that claim 1 is anticipated by the Gatorade Label.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Post-grant review is available for patents that issue from applications that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). After considering the briefing and the evidence of record, for the reasons set forth below, we determine that Petitioner has shown that the ’422 Patent is eligible for post-grant review and has shown it is more likely than not that at least one challenged claim of the ’422 Patent is unpatentable under § 324(a). Accordingly, we institute a post-grant review of the challenged claims of the ’422 Patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would possess at least (1) a Bachelor’s degree in chemistry or a related field, with (2) five years of experience in material identification and characterization using multiple analytical methods and field sampling, or equivalent research or professional experience.” Pet. 12 (citing Ex. 1014 ¶ 24). Patent Owner does not dispute Petitioner’s definition for one of ordinary skill in the art nor provide a proposed definition of its own. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s undisputed proposal regarding the level of one of ordinary skill in the art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“336. The applicant explained that not all combinations of shrink films and light blocking materials are recyclable. Id. at 335. The applicant explained that films can be compatible with PET recycling in two ways, (1) the film can float in water and be separated from PET that sinks in water or (2) the PET films crystallize and “can be recovered with the PET stream.” Id. at 336 (citing “A Resource Document by the Association of Plastic Recyclers (APR)”) (found at Ex. 1002, 323–332) (emphasis omitted). The applicant explained that “removing the label before or during the recycling process is not evidence of the recyclability of the label” and that “[r]emoving the label during the recycling process is not equivalent to actually recycling the label.” Id. at 335. As such, a POSITA reading the prosecution history would understand that a label is not recyclable with a PET container, as recited by the independent claims, by removing the label from the PET recycle stream before or during the recycling process.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“To determine how a person skill in the art would determine if a shrink label is “recyclable” as recited in the independent claims, we look to how the Specification of the ’422 Patent describes or defines recyclable shrink labels. For example, the ’422 Patent states that PET shrink films are generally considered recyclable if no inks are retained on the film after a caustic wash cycle typically used in PET reclaiming processes. Ex. 1001, 6:61–65. The ’422 Patent further states that labels are fully recyclable if the polymers used are clear, preferably clear PET, and the labels include inks that can be washed off in a “typical PET recycling wash (caustic wash).” Id. at 11:44– 49; see also id. at 11:49–54 (describing embodiments in which the labels are free or substantially free of inks that cannot be washed off in a caustic wash or where the labels are free or substantially free of color plastics that cannot be recycled). The ’422 Patent further discusses “industry standards” for determining whether various embodiments of shrink labels are recyclable. See, e.g., id. at 11:29–53. For example, the Specification states that the “Association for Plastic Recyclers (APR) Critical Guidance Protocol for Clear PET Articles with Labels and Closures (PET-CG-02)” (Ex. 1005) can certify that a film is fully recyclable with a container or bottle. Id. at 11:34– 38. Additionally, the Specification states that labels “are recyclable according to the Evaluation of the Near Infrared (NIR) Sorting Potential of a Whole Plastic Article (SORT-B-01)” (Ex. 1010) and/or the “Evaluation of Sorting Potential for Plastic Articles Utilizing Metal, Metalized, or Metallic Printed Components (SORT-B-03)” (Ex. 1011). Ex. 1001, 11:39–44. The ’422 Patent further states that embodiments of the labels “are fully recyclable. For example, the labels may include inks that can be washed off in a typical PET recycling wash (caustic wash) and the polymers” are preferably clear PET. Id. at 11:44–48. The ’422 Patent thus provides various descriptions or standards to determine the recyclability of shrink labels. For the purposes of addressing the anticipation and obviousness grounds, we determine that any of these standards can be used to determine if a shrink label is “recyclable.” We note that our construction is preliminary and is based on the present record. We invite the parties to further the address the construction of “wherein the recyclable shrink label is recyclable with a PET container” during trial.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · NautilusPatents in suitUS 11,961,422 - Askeladden, L.L.C. v. Ohva, Inc.All claims unpatentablePTAB · Mar 10, 2025 · IPR2023-00921 · APJ Amee A Shah · IPR · Final written decision
Claims 1–4 are unpatentable as obvious: claim 1 over Cho, Aaron, and Carpenter; claim 2 over those references and de Geer; claim 3 over Cho and Aaron; and claim 4 over Cho, Aaron, and de …
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“application are similar, as indicated by the redline comparison of two provided as Exhibit 1015. Critically, however, the “Summary of the Invention” sections are completely different. Id. at 2–4. The question is whether one of ordinary skill in the art would have understood with reasonable clarity, without the benefit of the Summary added for the ’286 patent/’674 application, that the ՚030 application describes a smart telephone that executes coded instructions to “convert the analog variable voltage audio signal received at the microphone port to the transaction data as digital data.”” slip op. at 43
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Here, although the ’286 patent distinguishes “account data” from “transaction data” in the embodiment of Figure 11, the “transaction data” is submitted by the user to perform a series of banking transactions after manually entering a PIN code, whereas the “account data” is stored on the server, and the token information is accepted from the smart card’s 1001, 10:12–18, 10:30–35, 10:40–42, 11:21–22, 11:65–12:4, 12:22–36. Thus, the claimed “transaction data” that is “accepted . . . from an output interface of a transaction card” and “accepted . . . from a transaction card at an input interface of the card reader,” as recited in independent claims 1 and 3, comprises data stored on and read from a card, such as an ID number, password, authentication information, or session information, that can be used to facilitate a transaction. The evidence indicates that the claimed “transaction data” is distinct from the “transaction data B1-Bn” described in connection with the Figure 11 embodiment.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As discussed above in Section II.C, we construe the term “transaction data” as encompassing any data involved in a transaction, including account data. Again, we emphasize that claim 1 requires that the transaction data is accepted by the card reader from an output interface of the transaction card. Cho provides that card reader 230 reads a digital signal that includes account information of card 130 whereby the account information “may include at least one of an account number, a card expiration data, etc.” Ex. 1005, 5:54–58. We further agree with Petitioner that to the extent “transaction data” is for the purpose of conducting banking transactions, Cho’s account data of a credit card number and expiration date can perform that purpose. Patent Owner’s arguments that the transaction data cannot be “static” and that claim 1 requires “processing actual transaction-specific data” are not commensurate with the scope of the claim 1. The claim does not recite any limitations that the transaction data be dynamic or “not static,” nor does it recite any processing of the transaction data outside of using it to “facilitate transactions.” Petitioner has shown that Cho teaches the claimed transaction data.” slip op. at 55
Patent outcomesUS 9,679,286 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,679,286 - PTAB · Aug 16, 2024 · IPR2023-00658 · APJ Scott A Daniels · IPR · Final written decision
The Board canceled original claim 1, denied the proposed substitute claim as indefinite under § 112, and did not reach the asserted obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We have, on the complete record now before us, mainly the testimony of Petitioner’s declarant, Mr. Hatch, who testifies that the designer of ordinary skill in the art would be a person who has a bachelor’s degree in furniture design or an equivalent field or alternatively two years of practical experience designing furniture . . . [which] is appropriate given the relatively simple nature of the design at issue, which involves little more than two boards forming a tabletop. Ex. 1002 ¶¶ 34–35. Based on the complete record, we adopt Petitioner’s articulation of a designer of ordinary skill as it is supported by the testimony of Mr. Hatch. Id. ¶¶ 33–38. We also note that, based on the complete trial record, our” slip op. at 18
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In contrast, Patent Owner’s declarant, Mr. Williams, testifies based on his “experience[,] that tenons are generally included in the larger portion of two table top portions.” Ex. 2006 ¶ 55. However, Mr. Williams’ experience does not explain why an ordinary observer would understand such functional and ornamental characteristics of tenon and hole arrangements. Id. Nor does this testimony proclaim that tenons must be in the larger of two table top potions. Indeed, even considering an ordinary observer imbued with Mr. Williams’ level of expertise and experience, and understanding for instance that it may be more likely that the wider portion includes tenons, this does not resolve the glaring inconsistency that Figure 1 illustrates holes and Figure 8 illustrates tenons. In other words, Mr. Williams’ “experience” does not resolve the visible tension that, on one hand, Figure 1 illustrates holes as part of the claimed ornamental design in the wider portion of the table top, and on the other hand, Figure 8 illustrates tenons as part of the same wider portion of the table top. The problem here may be more eloquently explained as “Two roads diverged in a yellow wood[,] And sorry I could not travel both.” Robert Frost, The Road Not Taken, The Poetry of Robert Frost—The Collected Poems, 105, Henry Holt and Co. (1969). Considering the entire record before us in this case we credit Mr. Hatch’s testimony. The issue is not, as Patent Owner has framed it, whether “[o]ne of ordinary skill in the art would understand how the tenons and holes should be positioned on each of the table top portions.” Reply Opp. 7. The question is whether a person of ordinary skill in the art viewing the design for a table top in the proposed substitute claim as would an ordinary observer, understand whether or not the wider portion of the table top as Figures 1 and 6, holes. As Mr. Hatch persuasively explains, in the proposed substitute claim a majority of the drawings for the wider portion, i.e., Figures 1–6, omit the tenons added in Figure 8. Ex. 1011 ¶ 37 (Mr. Hatch testifying that “Figure 8 is the only amended figure that adds tenons/dowels.”) Indeed, Figures 1 and 6 not only fail to illustrate tenons, but actually are amended to include holes rather than tenons, as described in the Motion to Amend. See, e.g., Motion to Amend 6 (Patent Owner describing, “Figure 1: Removal of disclaimer of a total of four holes by amending the outline of the four holes from broken lines to solid lines.”). On the complete record in this proceeding, we determine that a” slip op. at 28
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“On the complete record in this proceeding, we determine that a designer of skill in the art considering the claim from either their own, or the perspective of an ordinary observer, would be uncertain whether the wider portion of the claimed table top depicted in Figures 1–8 includes tenons, or holes. It is reasonable that anyone observing two distinct ornamental designs for the same wider portion of the table top would be unclear as to the claimed ornamental design where holes are shown in one figure but tenons are shown in another figure illustrating the same wider portion of the table top. Observing as a whole, the figures illustrating the table top in the proposed substitute claim, the question remains, does the wider portion of the table top include tenons, or holes? See Maatita, 900 F.3d at 1376 (“Ultimately, a patent is indefinite for § 112 purposes whenever its claim, read in light of the visual disclosure (whether it be a single drawing or multiple drawings), ‘fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.’”) (quoting Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014)). proposed substitute claim fails to “inform those skilled in the art about the scope of the invention with reasonable certainty.” See Nautilus, 572 U.S. at 910. Thus, Petitioner has shown, by a preponderance of the evidence, that the proposed substitute claim is indefinite and we accordingly deny Patent Owner’s Noncontingent Motion to Amend.” slip op. at 29
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“Federal Circuit recently explained that “a design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.” In re Maatita, 900 F.3d 1369, 1377 (Fed. Cir. 2018). In Maatita, the Federal Circuit reversed the Board’s finding of indefiniteness of a design for a shoe bottom, i.e., a shoe sole, finding that Maatita’s two-dimensional drawing clearly demonstrates the perspective from which the shoe bottom should be viewed. A potential infringer is not left in doubt as to how to determine infringement. In this case, Maatita’s decision not to disclose all possible depth choices would not preclude an ordinary observer from understanding the claimed design, since the design is capable of being understood from the two-dimensional, plan- or planar-view perspective [] shown in the drawing. Id. at F.3d 1378–79. Different from Maatita, the issue in this proceeding is not whether an ordinary observer would sufficiently understand a three-dimensional ornamental design from a two-dimensional figure, but whether inconsistencies between figures of the proposed substitute claim render the scope of the claimed table top uncertain. See Maatita, 900 F.3d at 1376 (The Federal Circuit specifically distinguishing Maatita’s single two-dimensional drawing from indefiniteness issues raised by inconsistent drawings: “[h]ere, we are not dealing with inconsistencies in the drawings, or inconsistencies between the drawings and the verbal description, but” slip op. at 24
§ 103 obviousness§ 112 disclosurecites Nautilus - Askeladden, L.L.C. v. Ohva, Inc.Rehearing grantedPTAB · Mar 15, 2024 · IPR2023-00921 · APJ Amee A Shah · IPR · Rehearing
Granted petitioner’s rehearing request and instituted IPR of claims 1–4 on all asserted grounds, finding a reasonable likelihood of prevailing based on the preliminary construction of “transaction data.”
RulingsRehearing decision- RehearingRehearing, grantedGranted
“institute has the burden of showing the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c).” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Although the ’286 patent distinguishes “account data” from “transaction data” in the embodiment of Figure 11, the “transaction data” is submitted by the user to perform a series of banking transactions after manually entering a PIN code, whereas the “account data” is stored on the server, and the token information is accepted from the smart card’s embedded token, i.e., the output interface of the transaction card. See Ex. 1001, 10:12–18, 10:30–35, 10:40–42, 11:21–22, 11:65–12:4, 12:22–36. Thus, the claimed “transaction data” that is “accepted . . . from an output interface of a transaction card” and “accepted . . . from a transaction card at an input interface of the card reader,” as recited in independent claims 1 and 3, comprises data stored on and read from a card, such as an ID number, password, authentication information, or session information, that can be used to facilitate a transaction. Such claimed “transaction data” is distinct from the “transaction data” described in connection with the Figure 11 embodiment. We therefore do not limit the claimed “transaction data” and instead preliminarily construe that term as encompassing any data involved in a transaction, including account data. As described above, the claimed transaction data must come from the output interface of a transaction card. Should either party believe that a different construction should apply in the instituted trial, it should explain the proposed construction, how the construction is supported by the record, and how the construction affects our unpatentability analysis.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateInstituted
“The dispute relates to whether the ’030 application describes the claimed “smart telephone” accepting transaction data and executing coded instructions to convert the analog signal to digital data representing transaction data as digital data. See Pet. 14–15, 19–27. In Petitioner’s view, that term is supported only by language added to the “Brief Summary of the Invention” during prosecution of the application resulting in the ’286 patent. Id. at 17. In contrast, argues Petitioner, the corresponding section of the ’030 application instead describes transmitting sound to a PC, not a smart telephone. Id. at 19–26. Patent Owner submits that the ’030 application describes generating sounds from a smart phone and using a “key jack sound pass generator” to communicate sounds. Prelim. Resp. 16. Patent Owner contends that the claim language is supported by disclosure of receiving the audio signal at a microphone port and converting the signal to transaction data. Id. at 16–18. Patent Owner points also to description of direct communication between a “client device” and server. Id. at 19. On the present record, we find that Petitioner, at this stage in the proceeding, has shown sufficiently how it contends that the earliest possible effective filing date for claims 1–4 of the ’286 patent is March, 3, 2015, such that the Cho, Aaron, Carpenter, and de Geer references qualify as prior art. Patent Owner has identified a factual dispute regarding the significance of the ’030 application’s disclosures, and we view that dispute as best resolved through trial.” slip op. at 9
- PTAB / AIA Trials › Real party in interest / privityDecided for petitioner
“35 U.S.C. § 312(a)(2) provides that one of the “Requirements of Petition” is that “the petition identifies all real parties in interest.” “Whether a non-party is a RPI is a ‘highly fact-dependent question’ and must be considered on a case-by-case basis.” SharkNinja Operating LLC. v. IROBOT Corp., No. IPR2020-00735, 2020 WL 6050687, at *4 (PTAB Oct. 13, 2020) (precedential) (citing Ventex Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 148 at 6 (PTAB Jan. 24, 2019) (Paper 148) (precedential) (citing Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012))). Here, addressing whether TCH is an unnamed RPI would not create a time bar or estoppel under 35 U.S.C. § 315. There is no allegation or evidence that TCH is “barred or estopped from this proceeding or that Petitioner purposefully omitted [TCH] to gain some advantage.” SharkNinja at *4. Rather, Patent Owner argues that for “once again willfully fail[ing] to identify TCH as a real party in interest, . . . the Petition should be denied on that basis.” Prelim. Resp. 7. In other words, Patent Owner contends only that we deny institution because of “the alleged failure of a procedural requirement that can be corrected under our precedent.” SharkNinja at *4. We understand that” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 9,679,286 - Apple Inc. v. Rfcyber Corp.All claims unpatentablePTAB · Jan 19, 2024 · IPR2022-01256 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1–11 are unpatentable as obvious over Buhot, GPC, and Zhu.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“earlier applications, in particular Application No. 11/534,653 (“the ’653 application”), which issued as U.S. Patent No. 8,118,218 B2 (“the ’218 patent”). “‘It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.’” PowerOasis, Inc. v. T- Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). The test for determining compliance with the written description requirement under § 112(a) 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 of 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). It is well settled that “[e]ntitlement to a filing date does not extend to subject matter which is not disclosed but would be obvious over what is expressly disclosed.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571−72 (Fed. Cir. 1997). “It is not sufficient for purposes of the written description requirement of § 112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Id. We agree with Petitioner there does not appear to be support for limitation [1(j)] in the ’653 application. We find that the disclosure of the ’653 application—limited to general teachings of a smart card, an operating system, and a smart card manager—is insufficient to show possession of limitation [1(j)]. See Ex. 2001 (’218 patent), 4:47–56. As we explained above, “[e]ntitlement to a filing date does not extend to subject matter which is not disclosed but would be obvious over what is expressly disclosed.” Lockwood, 107 F.3d at 1571−72. The ’653 Application contains no disclosure of replacing applications, even if the disclosure might render such replacing obvious, it is not sufficient to show the possession required to establish entitlement to a priority date. Accordingly, we agree with Petitioner that the challenged claims of the ’724 patent are entitled to a priority date no earlier than March 4, 2012.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Mr. Smith, Petitioner contends that an ordinarily skilled artisan for the ’724 patent “would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least one year of experience in the field of mobile payment technology. Additional pertinent education might substitute for the requisite experience and vice versa.” Pet. 6–7 (citing Ex. 1007 (Smith Decl.) ¶¶ 34–35). Patent Owner states that “[t]he parties agree on the level of skill in the art.” PO Resp. 11. Accordingly, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’724 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner contends that it applies “the plain and ordinary meaning as understood by a [person of ordinary skill in the art] for all terms not expressly construed below,” and indicates that in parallel District Court litigation, the parties agreed to claim construction for the term “emulator device” to mean “hardware device, alone or containing software, that pretends to be another particular device or program that other components expect to interact with.” Pet. 8. Petitioner proposes that the term “application” should be construed to mean “‘software program suitable for being executed on a portable device,’” but that the “distinction between the parties’ respective proposals need not be resolved for this proceeding.” Id. at 8–9. Petitioner finally contends that the phrase “a portion of or in entirety” in each independent claim means “in its entirety or partially,” but not both. Id. at 9. Patent Owner submits that “[t]he parties agree that the Board should construe ‘emulator device’ as ‘hardware device, alone or containing software, that pretends to be another particular device or program that other components expect to interact with.’” PO Resp. 11. Patent Owner “does not believe that any other terms require construction to resolve the issues presented in this proceeding.” Id. We apply the agreed upon constructions above, but otherwise find that no express constructions are necessary for this decision.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We agree with Petitioner that, even if the applications were stored in “generic memory” as Patent Owner contends, Zhu provides adequate security and would not undermine Petitioner’s motivation to combine. See Intel, 61 F.4th at 1380 (“It’s not necessary to show that a combination is the best option, only that it be a suitable option.”). Indeed, Zhu addresses the problem Patent Owner contends it would cause in the combination.3 As Zhu 3 Patent Owner argues that Petitioner should be precluded from discussing Zhu’s encryption embodiment because it was not raised in the Petition. See Sur-Reply 6–7. We disagree. The claims do not recite anything about how the data should be stored. Thus, it is not surprising that the Petition did not address it. Patent Owner raised the teaching away argument regarding the security of the data. See PO Resp. 12–16. Petitioner relies on the exact same mapping, same motivation, and same arguments why Zhu accounted for certain limitations. See Reply 4–11. Petitioner’s Reply merely explained that Zhu did address the problem Patent Owner contended would “teach away” from the combination. Indeed, Patent Owner was aware of Zhu’s teachings and addressed them in their Patent Owner Response. The Federal recognizes, “[l]oading one of the smart card applications already resident on the smart card to another memory location on the mobile device can provide sufficient memory for the selected smart card application, but can also create a security problem.” Ex. 1006 (Zhu), 3:25–34. To address this problem, Zhu proposes encrypting these applications in generic memory which “reduces the possibility of unauthorized access to the information.” Id. at 3:59–61, 8:30–55, 9:28–33; Ex. 1033 (Smith Supp. Decl.) ¶¶ 5–6. Although acknowledging this disclosure, Patent Owner’s expert, Dr. Weaver, testifies that Zhu’s encryption is inadequate and that encryption would have certain drawbacks. See Ex. 2002 (Weaver Decl.) ¶ 69. We find this testimony, which directly contradicts the teachings of Zhu that encryption is an adequate solution, lacks sufficient support to be entitled to much weight. Dr. Weaver provides no citations to support his contention that a person of ordinary skill at the time of the invention would find encryption so inadequate or problematic as he now contends. Moreover, we find that Dr. Weaver’s testimony on cross examination provides an additional, independent basis to give this testimony little weight. On cross examination, Dr. Weaver contended that there was nothing uniquely inadequate about the particular encryption scheme disclosed in Zhu, but rather that his “opinion was more general, that encryption schemes known in the 2012 time frame were all breakable with computing power and time,” and thus, inadequate Circuit has explained that “the petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner.” Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018). That is the case here, so we find that Petitioner’s arguments and evidence regarding Zhu’s encryption are proper. for storing payment applications in a mobile device’s general memory. Ex. 1027 (Weaver Tr.), 26:11–23; see also id. at 23:3–8 (“[D]oes encryption ever provide a sufficiently high security to permit storing payment application on a mobile device’s general memory? A. No”); 24:15–25:23 (testifying all publicly known encryption schemes in 2012 were breakable). However, when confronted with the fact that the ’724 patent discloses storing payment application on general baseband memory using an encryption method that was breakable, id. at 26:24–29:7, Dr. Weaver testified that this encryption method was sufficient to allow storing payment applications in general baseband memory even though it was “not perfectly secure,” id. at 29:8–14. Dr. Weaver provides no explanation or rationale why the encryption method in the ’724 patent, which he admits suffers from the same drawbacks he identified with respect to Zhu, is sufficient, but other encryption methods would not be sufficient. In its Sur-reply, Patent Owner attempts to rehabilitate Dr. Weaver’s testimony with justifications and qualifications not found in his original testimony. Sur-Reply 7–8. Yet, Dr. Weaver’s testimony discussed above was clear and unequivocal. See Ex. 1027 (Weaver Tr.), 24:15–29:14. Patent Owner made no effort to redirect his testimony at his deposition, so it cannot now do so through mere attorney argument. We find the inconsistency between Dr. Weaver’s treatment of Zhu and his treatment of similar disclosure in the ’724 patent exposes the insufficient reasoning supporting his opinions regarding the adequacy of Zhu’s use of encryption in the combination. Accordingly, we give no weight to his testimony that a skilled artisan would not have combined Zhu with a Buhot/GPC system due to security concerns. In contrast, we find the testimony of Mr. Smith regarding the use of encryption and the tradeoffs with the benefits of adopting Zhu’s memory management technique, which he offers in his Supplemental Declaration, to be well-reasoned, consistent with the disclosure of Zhu and the ’724 patent4, and entitled to substantial weight. See Ex. 1033 (Smith Supp. Decl.) ¶¶ 4–15. As Petitioner recognizes, “‘[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.’” Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016). As Mr. Smith and Dr. Weaver testified, decryption without access to the security keys is an extremely computationally intensive and time-consuming process. Ex. 1033 (Smith Supp. Decl.) ¶¶ 6–8; Ex. 1027 (Weaver Tr.), 23:17–25:2; see also Ex. 10175, 132. Mr. Smith testifies that the benefits of using encryption would be sufficient to resolve the security concerns Patent Owner raises, and that any burden of generating a certificate would be outweighed by the benefits of using encryption and the memory advantages Zhu’s technique would offer. See Ex. 1033 (Smith Supp. Decl.) ¶¶ 4–15. Accordingly, we find that Patent Owner’s security concerns would be” slip op. at 25
Patent outcomesUS 11,018,724 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,018,724 - Apple Inc. v. Rfcyber Corp.InstitutedPTAB · Jan 23, 2023 · IPR2022-01256 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–11 based on the § 103 ground over Buhot, GPC, and Zhu, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen 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) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’724 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–11) of the ’724 patent, based on the ground asserted in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that an ordinarily skilled artisan for the ’724 patent “would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least one year of experience in the field of mobile payment technology. Additional pertinent education might substitute for the requisite experience and vice versa.” Pet. 6–7 (citing Ex. 1007 (Smith Decl.) ¶¶ 34–35). Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art,” but only for its Preliminary Response. Prelim. Resp. 9. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’724 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“earlier applications, in particular Application No. 11/534,653 (“the ’653 application”), which issued as U.S. Patent No. 8,118,218 B2 (“the ’218 patent”). “It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, 522 F.3d at 1306; New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002); Lucent Techs., Inc. v. Gateway, Inc., 543 F.3d 710, 718 (Fed. Cir. 2008) (“Patent claims are awarded priority on a claim-by-claim basis based on the disclosure in the priority applications.”). The test for determining compliance with the written description requirement under § 112(a) 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 earlierfiled application. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). It is well settled that “[e]ntitlement to a filing date does not extend to subject matter which is not disclosed but would be obvious over what is expressly disclosed.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571−72 (Fed. Cir. 1997). “It is not sufficient for purposes of the written description requirement of § 112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Id. Nor could the claimed subject matter have been “envisioned” from the earlier disclosure to establish written description support. Goeddel v. Sugano, 617 F.3d 1350, 1356 (Fed. Cir. 2010). We agree with Petitioner that, on this record, there does not appear to be support for limitation [1(j)] in the ’653 application. Patent Owner identifies the following disclosure from the ’218 patent (the patent that issued from the ’653 application) as supporting limitation [1(j)]: According to one embodiment, a smart card has a preloaded smart card operation system that provides security framework to control the access to the Smart card (e.g., an installation of external applications into the smart card). In order to manage the life cycle of an external application, a card manager module is configured by using the smart card security framework. For instance, a Java based smart card, SmartMX, is preloaded with an operating system JCOP 4.1. The Global Platform 2.1 installed on the SmartMX performs the card manager functionality. Ex. 2001 (’218 patent), 4:47–56. Patent Owner argues that “this description is substantively identical to that on which Apple relies for disclosure of the “emulator device” and “replace out of the emulator device . . . replacing out of the emulator device . . .” limitations. Prelim. Resp. 26. Patent Owner contends that “Apple relies on Buhot’s discussion of an ‘operating system 314 (running on processor 400) for the ‘emulator device’ limitation (Pet. at 31), and relies on Zhu’s alleged teachings regarding a ‘smart card manager . . . which governs the process of loading and unloading applications out of an emulator’ for the ‘replace out of the emulator device . . . replacing out of the emulator device’ limitations.” Id. (citing Pet. 43). Patent Owner asserts that Petitioner “cannot argue with a straight face that its proposed combination discloses” slip op. at 21
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,018,724 - Arkema Inc. / Arkema France v. Honeywell International Inc.All claims unpatentablePTAB · Aug 25, 2022 · PGR2016-00012 · APJ Sheldon M Mcgee · PGR · Remand
Claims 1–20 are unpatentable under § 102(a) for prior public use; the Board did not reach the remaining anticipation, obviousness, and enablement grounds.
RulingsRemand decision- RemandOther
“On October 1, 2019, the Federal Circuit held that we “abused [our] discretion by assuming the authority that 35 U.S.C. § 255 expressly delegates to the Director: to determine when a Certificate of Correction is appropriate,” and vacated our Final Written Decision. Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345 (Fed. Cir. 2019). The Federal Circuit instructed us to “authorize Honeywell to file a motion seeking leave to petition the Director for a Certificate of Correction.” Id. at 1351. Pursuant to the Federal Circuit’s mandate, we gave our authorization, and Patent Owner filed its Motion for Leave to Request a Certificate of Correction. PGR11 Paper 61; PGR12 Paper 41. After additional briefing from the parties was complete, we granted Patent Owner’s Motion. PGR11 Paper 77; PGR12 Paper 57. Patent Owner filed its Request for a Certificate of Correction, as well as a Petition to Accept [Unintentionally] Delayed Claim to Priority under 35 U.S.C. § 120 and 37 C.F.R. § 1.78. PGR11 Ex. 2174; PGR12 Ex. 2172.” slip op. at 3
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Synthes USA, LLC v. Spinal Kinetics, Inc., 734 F.3d 1332, 1344 (Fed. Cir. 2013). And, although there are no bright-line rules for the amount of disclosure needed in an unpredictable art, that amount “necessarily changes with each invention” and “changes with progress in the field.” Ariad, 598 F.3d at 1351. Here, we find that the art of AAC was unpredictable and that a heat-transfer composition for AAC required specific technical features that were unpredictable and unexpected. Thus, we conclude that the ’525 application requires a more-detailed disclosure than would be required in a predictable field to adequately demonstrate possession of a heat-transfer composition consisting essentially of HFO-1234yf and PAG for use in AAC. (iii) Disclosure in the ’525 Application With these background findings in mind, we now turn to the four corners of the ’525 application—and we find that the ’525 application does not contain the detailed disclosure needed in this case to reasonably convey possession of a heat-transfer composition consisting essentially of HFO- 1234yf and PAG for use in AAC.” slip op. at 37
- Skill levelSkill level board ownDecided for patent owner
“develops new refrigerants for use as heat transfer fluids. Ex. 1002 ¶ 149. Such a person would have had a Ph.D. in Chemistry, Chemical Engineering, Mechanical Engineering, Material Science, or a related field or discipline and at least 3 to 5 years of experience, or alternatively an M.S. degree and 5 to 10 years of experience. Id. Patent Owner’s Declarant, Dr. Bivens, provides a similar description of the person of ordinary skill in the art, stating that such a person would have a B.S. degree in Chemical Engineering or Chemistry, and five years of work experience, or a Ph.D. or M.S. degree and 2–3 years of experience. Ex. 2001 ¶ 23. Based on these descriptions, we find that the parties’ definitions of ordinary skill in the art are substantially the same, and agree with the parties that an ordinarily skilled artisan would be educated in the Chemical and Chemical Engineering arts or related disciplines. We also agree with the parties that a person having less formal education, such as a B.S. or M.S. degree, would require more years of experience than a person with more formal education, such as a Ph.D., to qualify as an ordinarily skilled artisan. We also find that neither party states how any difference in the parties’ articulated levels of skill impacts this proceeding. Thus, our analysis would be the same regardless of any minor differences between the parties’ respective articulations. Finally, we note that the level of ordinary skill in the art is reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › On-sale bar (Pfaff, Helsinn)UnpatentableUnpatentable
“Tr. 114:15–115:18 (emphases added). Thus, we find that Patent Owner does not contest that a heat-transfer composition consisting essentially of HFO- 1234yf and PAG for AAC was in public commercial use before the March 26, 2014, filing date of the ’017 patent. Accordingly, we find that Petitioner’s evidence, together with Patent Owner’s concessions, demonstrates by a preponderance of evidence that the claimed subject matter of the ’017 patent was in commercial use before its March 26, 2014, effective filing date. See Ex. 1002 ¶¶ 399–409. In particular, as to claims 1, 3–10, 12, 13, and 15–20, we credit Dr. Brown’s uncontested testimony that the refrigerant-lubricant AAC composition of the Ford Transit Custom Bus, the Mazda CX 5 (2.0i and 2.2D), and the Opel Mocca used HFO-1234yf and a PAG lubricant as early as 2012. Ex. 1002 ¶ 399 (citing Ex. 101324, 2, 38, 55, 70). We also credit Dr. Brown’s 24 Behr Hella Services, Refrigerant and Oil Filling Quantities Passenger Cars & Commercial Vehicles 2014–15. PGR12 Ex. 1013. (“Service Guide”). PGR12 Ex. 1013. The Service Guide provides tables setting forth specifications for refrigerant type, refrigerant quantity, vehicle manufacturers’ original equipment compressor oil type, and oil filling quantity for the air-conditioning system of each vehicle listed in the tables. Id. at 2–3. Petitioner and Dr. Brown direct us to the Sevice Guide’s entries calculations, which show that the Ford Transit Custom Bus had an AAC refrigerant-lubricant composition of 26.7% of PAG lubricant and 73.3% of HFO-1234yf (Ex. 1002 ¶ 401 (citing Ex. 1013, 38)); the Mazda CX 5 2.0i had 16.7% PAG lubricant and 83.3% HFO-1234yf (Ex. 1002 ¶ 402 (citing Ex. 1013, 55)); the Mazda CX 5 2.2D had a 17.5% PAG lubricant and 82.5% HFO-1234yf (id.); and the Opal Mocca had 11.6% PAG lubricant and 88.4% HFO-1234yf (Ex. 1002 ¶ 402 (citing Ex. 1013, 70)). As to dependent claims 2, 11, and 14, which all require that the lubricant is present “in an amount from about 30% to about 50% weight,” we credit Dr. Brown’s uncontested testimony that the refrigerant-lubricant composition of the Ford Transit Custom Bus recited lubricant amount. Ex. 1002 ¶ 403. In particular, we agree with Dr. Brown that, because the lubricant accounts for 26.7% of the AAC refrigerant-lubricant composition in the Ford Transit Custom Bus, the lubricant makes up “about 30%” of the refrigerant-lubricant composition as claimed. Id. For these reasons, we find that Petitioner has met its burden to show that claims 1–20 are unpatentable for anticipation under § 102(a)(1).” slip op. at 55
Patent outcomesUS 9,157,017 unpatentable§ 102 anticipation§ 112 disclosurePatents in suitUS 9,157,017 - Arkema Inc. / Arkema France v. Honeywell International Inc.All claims unpatentablePTAB · Aug 25, 2022 · PGR2016-00011 · APJ Grace Karaffa Obermann · PGR · Remand
Claims 1–20 are unpatentable under § 102(a) for prior public use; the Board did not reach the other anticipation, obviousness, and enablement grounds.
RulingsRemand decision- RemandOther
“On October 1, 2019, the Federal Circuit held that we “abused [our] discretion by assuming the authority that 35 U.S.C. § 255 expressly delegates to the Director: to determine when a Certificate of Correction is appropriate,” and vacated our Final Written Decision. Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345 (Fed. Cir. 2019). The Federal Circuit instructed us to “authorize Honeywell to file a motion seeking leave to petition the Director for a Certificate of Correction.” Id. at 1351. Pursuant to the Federal Circuit’s mandate, we gave our authorization, and Patent Owner filed its Motion for Leave to Request a Certificate of Correction. PGR11 Paper 61; PGR12 Paper 41. After additional briefing from the parties was complete, we granted Patent Owner’s Motion. PGR11 Paper 77; PGR12 Paper 57. Patent Owner filed its Request for a Certificate of Correction, as well as a Petition to Accept [Unintentionally] Delayed Claim to Priority under 35 U.S.C. § 120 and 37 C.F.R. § 1.78. PGR11 Ex. 2174; PGR12 Ex. 2172.” slip op. at 3
- Skill levelSkill level board ownDecided for petitioner
“develops new refrigerants for use as heat transfer fluids. Ex. 1002 ¶ 149. Such a person would have had a Ph.D. in Chemistry, Chemical Engineering, Mechanical Engineering, Material Science, or a related field or discipline and at least 3 to 5 years of experience, or alternatively an M.S. degree and 5 to 10 years of experience. Id. Patent Owner’s Declarant, Dr. Bivens, provides a similar description of the person of ordinary skill in the art, stating that such a person would have a B.S. degree in Chemical Engineering or Chemistry, and five years of work experience, or a Ph.D. or M.S. degree and 2–3 years of experience. Ex. 2001 ¶ 23. Based on these descriptions, we find that the parties’ definitions of ordinary skill in the art are substantially the same, and agree with the parties that an ordinarily skilled artisan would be educated in the Chemical and Chemical Engineering arts or related disciplines. We also agree with the parties that a person having less formal education, such as a B.S. or M.S. degree, would require more years of experience than a person with more formal education, such as a Ph.D., to qualify as an ordinarily skilled artisan. We also find that neither party states how any difference in the parties’ articulated levels of skill impacts this proceeding. Thus, our analysis would be the same regardless of any minor differences between the parties’ respective articulations. Finally, we note that the level of ordinary skill in the art is reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“We agree with Petitioner that the ’525 application’s statement that the compounds are “adaptable for use” weighs against a finding of adequate written description. First, “adaptable for use” is vague, as Dr. Bivens acknowledges. See Ex. 1177, 151:15 (testifying that “adaptable for use can have a wide range of meaning”). Second, the ’525 application gives no direction on how a skilled artisan would need to adapt any particular composition for use in AAC, or even if any “adaptation” was necessary. We find that such a teaching is important in this case to show that the inventors had possession of the claimed invention, given our findings above that the art of AAC was unpredictable and that a heat-transfer composition for AAC required specific technical features that were unpredictable and unexpected. For completeness, we again reject Patent Owner’s argument that “[t]o show the inventors possessed claim 1 requires no more” than the statement in the written description that “‘the compositions of the present invention are believed to be adaptable . . . with or without system modification.’” PGR12 Resp. 27–28 (quoting Ex. 1001, 7:4–8). Regardless of the exact wording of claim 1, the inventors “still [had to have] describe[d] some way of performing the claimed methods.” Ariad, 598 F.3d at 1355. And here, with merely a passing reference to AAC, the ’525 application fails to provide any credible “technologic knowledge” to demonstrate to an ordinarily skilled artisan that Patent Owner “was in possession of the invention that is claimed.” Id.” slip op. at 43
- Novelty / Anticipation (§102) › Prior-art status of a reference › On-sale bar (Pfaff, Helsinn)UnpatentableUnpatentable
“unless . . . the claimed invention was . . . in public use . . . before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(1). “The proper test for the public use prong . . . is whether the purported use was accessible to the public or was commercially exploited.” Delano Farms Co. v. Cal. Table Grape Comm’n, 778 F.3d 1243, 1247 (Fed. Cir. 2015) (quotation omitted). “Commercial exploitation is a clear indication of public use . . . .” Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1380 (Fed. Cir. 2005).” slip op. at 53
Patent outcomesUS 9,157,017 unpatentable§ 102 anticipation§ 112 disclosurePatents in suitUS 9,157,017 - Google LLC / Samsung Electronics Co., Ltd. et al. v. Parus Holdings, Inc.All claims unpatentablePTAB · Oct 19, 2021 · IPR2020-00846 · APJ David C Mckone · IPR · Final written decision
Claims 1, 2, 4–7, 9, 10, 13, and 14 are unpatentable as obvious over the stated prior-art combinations.
RulingsFinal written decision- BurdenNew argument disregardedDecided for petitioner
“According to our rules, “[a]rguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). For example, the Board has explained that “parties that incorporate expert testimony by reference in their petitions, motions, or replies without providing explanation of such testimony risk having the testimony not considered by the Board.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 35–36 (November 2019) (“TPG”)3 (citing Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12) (informative)).” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Mr. Lipoff, contends that a person of ordinary skill in the art “would have had a Bachelor’s Degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing,” and that “[m]ore education could substitute for less experience, and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 41–48). Patent Owner does not contest Petitioner’s proposal or offer an alternative. On the complete record, we are persuaded that Petitioner’s proposal is consistent with the technology 7 The complete record does not include allegations or evidence of objective indicia of nonobviousness. described in the Specification and the cited prior art and adopt Petitioner’s proposed level of skill.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“proposed combination with Kovatch. PO Resp. 37. According to the Federal Circuit, “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Mouttet, 686 F.3d 1322, 1333–34 (Fed. Cir. 2012) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)) (alteration in original). However, “the ‘mere disclosure of alternative designs does not teach away.’” Id. at 1334 (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Indeed, “just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” Id. (citing Gurley, 27 F.3d at 553). Specifically, Patent Owner (PO Resp. 37), points to disclosure in Neal describing disadvantages of a keyword search strategy (e.g., “users must be familiar with the appropriate key word terms that are likely to yield the desired data records”) and disadvantages of a classification search strategy (e.g., “users may not always anticipate the proper classification of certain records, and may search the wrong categories for their desired database record”). Ex. 1007, 2:16–65. Neal then describes a “preferred embodiment” in which “the system manager will expand the scope of the search strategies from ‘exact’ string matches, along a continuum of search methodologies, including perhaps fuzzy logic strategies.” Id. at 7:14–17. According to Neal, “[t]he purpose of expanding the search strategies is to avoid the situation wherein the search fails to identify the desired item from any data set, and thereby drops into logical block 222 a negative search result is reported to the user.” Id. at 7:28–32. Patent Owner argues that “Neal advocates for employing a sequence of search algorithms from the narrowest to the most broad.” PO Resp. 38 (citing Ex. 1007, 7:56–58; Ex. 2059 ¶ 124). Patent Owner contends that Neal teaches away from a combination “that employs a single keyword matching search strategy.” Id. Patent Owner argues that Petitioner’s combination of Kovatch and Neal results in a system that only sequentially searches datasets using a single keyword matching search strategy, and not the cascading sequence of search methodologies described by Neal. Id. at 37–39. We do not agree with Patent Owner that Neal teaches away from a system that employs a single keyword matching search strategy. Indeed, Neal’s preferred embodiment expressly contemplates such a system. For example, Neal describes employing a first “exact string search” methodology to search a first data set (Figure 2, block 206). Ex. 1007, 6:34– 46. This appears to be what Patent Owner considers a “single keyword matching search strategy.” PO Resp. 37–38. Neal describes that if this search of the first data set does not yield a match, the system searches a second data set using a second search methodology (Figure 2, block 210). Ex. 1007, 6:47–52. However, in the preferred embodiment there is no requirement that the second search methodology in 210 must be different from the first search methodology in 206. For example, if the first preferred supplier did not yield an exact string match to the input search term, the same search methodology could be applied to a second preferred supplier’s catalog. Id. at 6:59–65. Thus, Neal expressly teaches using a single keyword search strategy on a first dataset and the same keyword search strategy on a second dataset, without necessarily employing a cascading sequence of different search methodologies. See Reply 19.” slip op. at 39
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“advertisements while waiting for information to be retrieved; rather, it first retrieves the requested information and then generates an audio stream with both the commercials and retrieved information. Reply 22–23 (citing Ex. 1005, 14:1–8, 18:1–15; Ex. 1057 ¶ 18). Petitioner’s characterization of Kovatch is correct (and Patent Owner’s incorrect). Kovatch’s system first navigates to a destination and retrieves requested information (step 6), then generates commercials (step 8), then intermixes the commercials and information (step 9), and finally returns speech to the user (step 10). Ex. 1005, 14:1–8. We find unavailing Patent Owner’s argument that, when combined, Neal’s teachings would have an adverse impact on Kovatch’s generation and presentation of advertisements.” slip op. at 45
Patent outcomesUS 7,076,431 unpatentable§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 7,076,431 - PTAB · Oct 19, 2021 · IPR2020-00847 · APJ Sheldon M Mcgee · IPR · Final written decision
Claims 1, 2, 4–7, 10, and 14 are unpatentable as obvious over Kurganov-262 and Chakrabarti; the Board did not reach the alternative grounds.
RulingsFinal written decision- BurdenDecided for petitioner
“Turning now to obviousness, Petitioner identified disclosure within Kurgonov-262 and Chakrabarti which teaches or suggests the limitations of claim 1. Pet. 11–21. Furthermore, Petitioner identified multiple reasons that would have prompted the skilled artisan to combine the teachings of Kurganov-262 and Chakrabarti to arrive at the subject matter of claim 1. Id. at 21–22. Because Patent Owner focused its arguments solely on the issue of whether Kurganov-262 is prior art, Petitioner’s assertions regarding the substantive teachings of Kurganov-262 and Chakrabarti remain unrebutted on the complete record. PO Resp. 31–34; Sur-reply 1–3. Patent Owner likewise failed to substantively address Petitioner’s proffered reasons why the skilled artisan would have been motivated to combine these teachings. PO Resp. 31–34; Sur-reply 1–3. We have reviewed the disclosures of Kurganov-262 and Chakrabarti relied on by Petitioner, as well as the explanations provided by Mr. Lipoff, and are persuaded that the limitations of claim 1 are disclosed in the prior art. Pet. 11–21; Ex. 1002 ¶¶ 103–109; Ex. 1004; Ex. 1008. Petitioner also persuades us that the skilled artisan would have been motivated to apply Chakrabarti’s techniques for web crawling to Kurganov-262’s system, and would have had a reasonable expectation of successfully doing so, thus arriving at the subject matter of claim 1 of the ʼ084 patent. Pet. 21–23; Ex. 1002 ¶¶ 110–114. Therefore, Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 of the ʼ084 patent would have been obvious over the combined disclosures of Kurganov-262 and Chakrabarti.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person having ordinary skill in the art as having “a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing. More education could substitute for less experience, and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 41–47). Patent Owner does not contest Petitioner’s definition of the skilled artisan. See generally, PO Resp. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Moreover, the level of ordinary skill in the art is also reflected by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Thus, on the complete record, we accept Petitioner’s assessment of the level of one of ordinary skill in the art. C. Asserted Obviousness based on Kurganov-262 and Chakrabarti” slip op. at 11
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Rather, on the complete record, Patent Owner makes inadequately supported assertions regarding what the skilled artisan “would understand” based on the ʼ084 patent’s disclosure. See PO Resp. 33–34. For example, Patent Owner asserts that “[a] POSITA would understand that” polling or pinging “describes a process where by existing and new devices and/or websites are discovered,” and that “‘polling’ includes asking for information from a website, including a listing of URLs or asking a website of a search engine to provide new website information.” Id. at 34 (citing Ex. 2059 ¶¶ 154–155). We reject this line of argument because we afford minimal weight to Patent Owner’s reliance on paragraphs 153–155 of Exhibit 2059. PO Resp. 33–34. These declaration paragraphs provide little detail beyond what is argued in the Patent Owner Response. See 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 22
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“We are persuaded by Petitioner’s arguments that sufficient written description support does not exist in the ʼ996 application for “limitation 1.i” which requires the computing device to be “configured to periodically search via the one or more networks to identify new web sites and to add the new web sites to the plurality of web sites.” Pet. 6–11. Thus, we determine that Kurganov-262 is available as prior art against the challenged claims. On the complete record, Patent Owner fails to direct us to specific disclosure within the ʼ996 application that evinces written description for limitation 1.i. Rather, Patent Owner’s citations to the ʼ084 patent fail to describe with adequate precision a computing device configured to periodically search the network(s) to identify new web sites and add such new web sites to the plurality of web sites that are accessed. See PO Resp. 31–34.” slip op. at 20
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,451,084
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.