- Tesla, Inc. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Jun 26, 2026 · IPR2025-00220 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–18 are unpatentable under § 103 over Wallen and Berggren because the combined teachings render the claimed subject matter obvious.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree that Patent Owner’s proposed claim construction is wholly unsupported by, and inconsistent with, the language of independent claims 1, 7, and 13, and the aims of the ’670 Patent Specification. See Ex. 1001, 2:3– 25, 9:32–10:5, 12:51–67, 18:54–19:6, 19:26–42, 20:12–26. Moreover, the cited extrinsic evidence––testimony by Patent Owner’s expert Dr. Lomp–– does not support Patent Owner’s proposed construction because it is internally inconsistent and also undermined by Dr. Lomp’s inconsistent deposition testimony. See Ex. 1036, 11:6–17, 12:9–12; Ex. 2010 ¶¶ 40, 48. Similarly, the extrinsic evidence cited by Petitioner (e.g., Exs. 1037, 1038, 2009) undermines Patent Owner’s position emphasizing the intended recipient devices of SIB1. In summary, we decline to adopt Patent Owner’s proposed claim construction because it is unsupported by the claim language, the ’670 Patent Specification, and the cited extrinsic evidence. with the ordinary and customary meaning which does not include limiting SIB1 to an ordinary legacy SIB and excluding MTC specific SIBs or SIBs intended for MTC devices. In addition, we need not construe explicitly any other claim term or phrase. See, e.g., Nidec Motor Corp. 868 F.3d at 1017 (“[W]e 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 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor’s degree from an accredited program in electrical engineering, computer engineering, computer science, or equivalent training, and at least two years of professional experience relating to wireless communication technology” and “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 15–16 (citing Ex. 1003 ¶¶ 19–21). Patent Owner does not dispute Petitioner’s definition. See generally PO Resp. We find that “at least” in Petitioner’s formulation of the level of skill in the art is vague and open-ended. Otherwise, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’670 Patent Specification and the prior art of record. slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“filing date. As explained above, the burden of production shifted to Patent Owner to show that Wallen is not prior art because the ’670 Patent is entitled to the earlier January 20, 2012, filing date of foreign priority application GB1201000. See Dynamic Drinkware, 800 F.3d at 1379–1380. For a claim in a later-filed application to be entitled to the filing date of an earlier application, the earlier application must provide written description support for the claimed subject matter. Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1337 (Fed. Cir. 2010). To satisfy the written description requirement, “a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also VasCath v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“[T]he applicant must . . . convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention . . . now claimed.” (emphasis omitted)), Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[I]t is the specification itself that must demonstrate possession.”). Patent Owner’s arguments fail to meet this burden of production because, aside from addressing a system information block 1, Patent Owner’s arguments do not substantively address how GB1201000 provides written description support for any other limitations of the claimed invention. See PO Resp. 43, 57. Accordingly, Patent Owner has not met its burden of production in coming forward with evidence or argument to show possession of the claimed invention in foreign priority application GB1201000, the burden of production did not shift back to Petitioner, and,” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“primary synchronization signal (PSS), a secondary synchronization signal (SSS), and a physical broadcast channel (PBCH) including a master information block (MIB).” See Pet. 41–42 (citing Ex. 1003 ¶¶ 70–75; Ex. 1005 ¶¶ 76, 77, 83–84). Petitioner implicitly acknowledges that Wallen does not expressly disclose a physical broadcast channel (PBCH), but relies on Berggren for confirming that the LTE standard specifies that a PBCH carries the MIB. See Pet. 42–43 (citing Ex. 1003 ¶ 74; Ex. 1007 ¶¶ 73–75). According to Petitioner, “a person of ordinary skill in the art would have been motivated to transmit Wallen’s MIB using a PBCH as taught by Berggren.” Pet. 43 (citing Pet. 33–38). In particular, Petitioner asserts that a person of ordinary skill in the art “would have been motivated for Wallen’s LTE system to utilize the LTE standard implementation details taught by Berggren,” and “it would have been predictable and beneficial for Wallen’s user equipment to receive the MIB in the [PBCH], as was standard in LTE.” Pet. 34 (citing Ex. 1003 ¶ 58), 37 (citing Ex. 1003 ¶ 63). According to Petitioner, “the combination is nothing more than ‘the predictable use of prior art elements according to their established functions.’” Pet. 38 (citing KSR, 550 U.S. at 417). Based on the entire record developed during trial, we are persuaded by a preponderance of the evidence that Petitioner provides sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to a person of ordinary skill in the art to modify Wallen’s broadcast MIB with Berggren’s teachings of using a PBCH for transmitting broadcast MIBs. See Pet. 33–38; KSR, 550 U.S. at 418.” slip op. at 24
Patent outcomesUS 11,206,670 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,206,670 - Weatherford U.S., L.P v. Halliburton Energy Services, Inc.Some claims unpatentablePTAB · Dec 9, 2025 · IPR2024-00990 · APJ Brent M Dougal · IPR · Final written decision
Claims 11–12 and 14–20 are unpatentable; claims 1–10 and 21–23 are not shown unpatentable. Substitute claims 29–37 are unpatentable, and the motion to amend is denied as to them.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of skill is uncontested. Patent Owner adopts the level of skill identified by Petitioner as: [at] the time of the alleged invention in 2018, a POSITA[2] would have had a B.S. degree in mechanical or petroleum engineering or a similar technical discipline, with at least five years of experience in oil or gas well drilling, completion, and/or subsurface production operations or in technical support of such operations including at least some experience in unconsolidated formations utilizing sand control methods and means. Also,” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“on embodiments of Yeh with concentric sand screens having nine shunt tubes (six transport tubes and three packing tubes) (Yeh Figures 4A–B) and eccentric sand screens with four shunt tubes (two transport tubes and two packing tubes) (Yeh Figures 8A, 8C). See Pet. 32–37, 39, 41–43. Yet, Petitioner’s reasoning as to why “a higher-pressure shunt tube assembly necessitated greater wall thickness” rests on an unspoken one to one comparison between the shunt tubes of the different systems. See id.; see also Ex. 1003 ¶¶ 291–297 (Petitioner’s declarant comparing possible transport tubes of different pressure regions without considering or addressing any difference in the number of transport tubes). However, the embodiments relied on by Petitioner have different numbers of shunt tubes, and thus the greater wall thickness does not appear to be “necessitated” in the way inferred by Petitioner. Further, Petitioner’s analysis would seem to be most appropriate when comparing two concentric sand screens for different pressure regions, or two eccentric sand screens for different pressure regions. relies on Yeh’s teachings related to a horizontal well bore of 5000 feet for the “concentric screen → crossover tool → eccentric screen” arrangement, as well as, for why the concentric screen needs to be rated for a high pressure. Pet. 32–37, 39, 41–43. Petitioner also refers to these features for why one of skill in the art would combine the teachings of Yeh and Yeh2. Id. at 32. However, on cross-examination, Petitioner’s declarant agreed that it is concentric sand screens having a 6x3 shunt tube design that would provide the noted benefits of being rated for a higher pressure and being more robust (as relied on in the Petition), as compared to eccentric sand screens. Ex. 2013, 42:20–43:8; Sur-reply 4–5. This also exposes another issue with Petitioner’s arguments. Though Petitioner identifies that one of skill in the art would be aware that material choice, wall thickness, and pipe diameter all impact burst pressure of a pipe (Pet. 42 (citing Ex. 1017, 24 (Equation (14))), the Petition essentially ignores the fact that the claims do not require a single pipe in isolation. The claims require two shunt tube assemblies, each surrounding a base pipe within a wellbore. It is uncontested that a wellbore provides a confined space for such a system and thus any change in wall thickness of one pipe can result in a significant impact in the function of the other pipes. We find the testimony of Petitioner’s declarant (see, e.g., Ex. 1003 ¶¶ 290–297) unpersuasive when discussing wall thickness because it focusses on basic considerations of a standalone pipe, without sufficient consideration of the claimed completion assembly with its required pipe and tube structure. PO Resp. 20–26.” slip op. at 17
- Strike new argumentNew argument disregardedDecided for patent owner
“In response to Patent Owner’s argument concerning Yeh’s embodiments relied on in the Petition, Petitioner argues for the first time that Patent Owner’s declarant “conceded, Yeh discloses that both concentric and 47:19–48:21). Petitioner does not provide a citation to Yeh or a citation to where the Petition relies on the same number of shunt tubes between concentric and eccentric screens. The deposition cited by Petitioner discusses Yeh at column 16, lines 26 through 35. However, the Petition does not cite or rely on these teachings of Yeh. Thus, we decline to consider this late argument.4 See 35 U.S.C. § 312(a)(3) (requiring the petition to identify “with particularity . . . the grounds on which the challenge to each claim is based, and the evidence that supports the grounds”); 37 C.F.R. § 42.104(b)(5).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Thus, we agree with Petitioner that the combination of Yeh and Yeh2 teaches determining the shunt tube system operating pressures associated with the distal end of the production zone, but also more generally, determining the operating pressures along the entire production zone. With this knowledge of the system operating pressures, Petitioner argues that one of skill in the art would have selected eccentric screens for the distal end of the production zone “at any point at which the slurry pressure dropped below the pressure capacity of the eccentric screen shunt tubes.” Pet. 66 (citing Ex. 1005, 30:16–20; Ex. 1003 ¶ 388). In other words, knowing that the pressure decreases as you approach the toe, Yeh’s low-pressure rated eccentric screens could be used from some point prior to and covering the toe. determined pressure.” PO Resp. 37–38. We disagree. As discussed above, the record supports Petitioner’s position that one of skill in the art would have “understood the need to determine the shunt tube system operating pressure throughout the horizontal wellbore.” Ex. 1003 ¶ 383; see also Pet. 64–65. We find convincing Petitioner’s argument that one of skill with this understanding of the system pressures would select a shunt tube system rated to not only address the distal end, but also to address the needs of the adjacent region, so long as the pressure rating supported such a selection. See Pet. 65–67; Ex. 1003 ¶¶ 385–388.” slip op. at 22
Patent outcomesUS 11,333,007 mixedClaim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 11,333,007 - Apple Inc. v. Paul PoniatowskiAll claims unpatentablePTAB · Oct 2, 2025 · IPR2024-00731 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–6, 8–13, 15–20, and 22–27 are unpatentable as obvious over Wang, Dua, and Yong.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). For purposes of this proceeding, Petitioner argues a person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in computer science, computer engineering, or equivalent with one to two years of experience in the field of mobile transactions.” Pet. 8 (citing Ex. 1003 ¶¶ 35–37). Petitioner adds that “[a]dditional education or experience might substitute for the above requirements.” Id. Patent Owner does not address the level of ordinary skill in the art. See PO Resp. 2 US Patent App. Pub. No. US 2002/0023215 A1 (Ex. 1004). 3 US Patent App. Pub. No. US 2006/0165060 A1 (Ex. 1005). 4 Korean Unexamined Patent App. Pub. No. 10-2007-0063899 (Ex. 1006). Petitioner submits Yong’s Korean-language patent application and a certified translation of the same. See id. We refer to the English-language translation of Yong. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner, as it is supported by Dr. Bederson’s testimony and appears consistent with the ’578 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)); Ex. 1003 ¶ 36.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“We agree with Petitioner that nothing in the claim language or the Specification requires that the claimed optical input receive information concerning the prices of goods directly from the goods themselves. Patent Owner does not explicitly address the claim construction of this term. See PO Resp. Patent Owner, however, does assert that “it would be logical for those skilled in [the] art to apply any available technology to further modify and improve the shopping experience by taking a scan/pic of the products bar codes, instead of entering them manually.” Id. at 2–3. This assertion is not inconsistent with a finding that the scanned bar code information may be received indirectly. Accordingly, on this record, we construe the term “receiving information concerning the prices of goods” to encompass receiving pricing information from a server.” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“We agree with Petitioner that the Priority Applications do not disclose the optical input and network hub limitations or their equivalent. As Petitioner argues, “disclosure in a parent application that merely renders the later-claimed invention obvious is not sufficient to meet the written description requirement; the disclosure must describe the claimed invention with all its limitations.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)) (“It is not sufficient…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”). Reply 4. Accordingly, for the purposes of determining eligible prior art for this Decision, we rely on the ’578 patent’s application filing date of October 19, 2009.” slip op. at 15
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We determine that the preponderance of the evidence supports Petitioner arguments that the cited references are analogous art. Our reviewing court has stated that “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations and internal quotes omitted). While these two criteria are helpful in many instances, we must not lose sight of the key question at hand: what is “prior art” as that term is used in 35 U.S.C. § 103(a)? References that are “too remote to be treated as ‘prior art’” are excluded from the obviousness analysis. In re Sovish, 769 F.2d 738, 741, 226 (Fed. Cir. 1985). The non-analogous art test provides helpful insight on the underlying question of what is “prior art” within the meaning of the statute; we should not, however, be blind to the reality of the circumstances of the case before us. In re Wood, 599 F.2d 1032, 1036 (CCPA (1979). Nor should we adhere to rigid and mandatory formulas that overly limit the inquiry. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Focusing on the first of the two tests above, the test for analogous art “requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” In re Bigio, 381 F.3d at 1325. We thus consider all explanations of the inventors’ subject matter while keeping in mind that prior art is analogous when it “is from the same field of endeavor, regardless of the problem addressed. . . .” In re Bigio, 381 F.3d at 1320 (emphasis added). Thus, “field of endeavor” should not be defined narrowly based only upon the specific problem addressed.” slip op. at 21
Patent outcomesUS 8,270,578 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,270,578 - Apple Inc. v. Paul PoniatowskiInstitutedPTAB · Oct 7, 2024 · IPR2024-00731 · APJ Jennifer S Bisk · IPR · Institution
The Board instituted review of claims 1–6, 8–13, 15–20, and 22–27 based on a reasonable likelihood that Wang, Dua, and Yong render them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–6, 8–13, 15–20, and 22–27 of the ’578 patent on the sole ground of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). For purposes of this proceeding, Petitioner argues a person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in computer science, computer engineering, or equivalent with one to two years of experience in the field of mobile transactions.” Pet. 8 (citing Bederson Decl. ¶¶ 35–37). Petitioner adds that “[a]dditional education or experience might substitute for the above requirements.” Id. To the extent necessary, and for purposes of this Decision, we accept this assessment offered by Petitioner, as it is supported by Dr. Bederson’s testimony and appears consistent with the ’578 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“scanner, reader, or camera” that is aimed at a barcode or special code of a product, the price of which is then added to the retail bill. Pet. 10–11 (quoting Ex. 1001, 7:45–49, 9:5–11). According to Petitioner, the Specification does not elaborate further on the meaning of the term “information concerning prices of goods.” Id. at 11. Petitioner, thus, interprets the term to encompass scenarios in which price information is received directly or indirectly. Id. Petitioner notes that during prosecution of the ’578 patent, the Examiner rejected this limitation over prior art, stating that prior art “sends the scanned bar code information to the server,” which “then preferably returns a description of the item and information,” and “[t]his item description and price information is displayed on the telephone’s display.” Id. at 12 (quoting Ex. 1002, 231). According to Petitioner, this is an example of indirectly receiving information concerning the prices of goods as it comes from a queried server, not from the item itself. Id. Petitioner notes that Patent Owner never disputed, and in fact, made statements supporting that these actions were encompassed by the claim limitation. Id. (citing Ex. 1002, 214). We agree with Petitioner that nothing in the claim language or the Specification requires that the claimed optical input receive information concerning the prices of goods directly from the goods themselves. Thus, on this record, we preliminarily construe the term “receiving information concerning the prices of goods” to encompass receiving pricing information from a server.” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In an inter partes review, the burden is on the petitioner to show a reasonable likelihood that it would prevail on a ground of unpatentability. 35 U.S.C. § 314(a). With respect to entitlement to any earlier effective filing date, however, a patent owner is not presumed to be entitled to the earlier filing dates of ancestral applications that do not share the same disclosure, such as in a continuation-in-part situation. See PowerOasis, Inc. v. T–Mobile USA, Inc., 522 F.3d 1299, 1305–06 (Fed.Cir.2008) (stating that once a defendant establishes that a reference is § 102(b) prior art, burden is on patent owner to come forward with evidence proving priority to an earlier filing date).” slip op. at 12
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 8,270,578 - PTAB · May 20, 2024 · IPR2024-00114 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–8 on all asserted grounds, finding a reasonable likelihood that at least one claim would have been obvious over DiPerna964 and Strack.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We determine below that Fintiv factors 1–5 do not favor discretionary denial. Thus, we do not reach the issue of whether the merits are compelling. CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022- 01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (precedential) (Board must first address Fintiv factors 1–5, and should engage the compelling merits question only if that analysis favors discretionary denial) (“CommScope”). 7. Balancing the Fintiv Factors Weighing against exercising our discretion to deny institution is factor 3 involving the parties’ limited investment and lack of substantive orders in the District Court litigation. Factor 4 concerning the limited overlap of the issues in the two cases also weighs against discretionary denial. Only factor 5, that Petitioner and the defendant in the District Court litigation are the same party, weighs in favor of discretionary denial. Factor 1 concerning the absence of a stay in the District Court litigation, and factor 2 concerning the close proximity between the start of trial in the District Court litigation and the estimated deadline for the final written decision, are neutral on the facts of this case. We therefore determine that the balance of factors 1–5 weighs against discretionary denial. Accordingly, we do not consider the issue of whether compelling merits have been shown under factor 6. See CommScope, Paper 23 at 4–5.2” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Pet. 9 (citing Ex. 1006, 23) (emphasis added). From this passage, we understand the “safety” switch to be “separate” from the panic button, not a part of it. This understanding is reinforced by claim 7 which depends from claim 1 and recites that the mobile device “further compris[es] a safety switch,” meaning it is a separate element from the panic button. Ex. 1001, 9:3–4. Thus, moving the safety switch into position readies the panic button, which is not the same as the panic button readying itself to perform functions in claims 1–8 of the ’404 patent. Patent Owner does not sufficiently address this issue in its assertions. See Prelim. Resp. 5–7. Patent Owner’s reliance on disclosures elsewhere in the ’404 patent is likewise not persuasive. Prelim. Resp. 5–6. For example, the ’353 application mentions “ready” in relation to using a self-defense mechanism such as pepper spray, which has not been shown to be related to the panic button. Ex. 1006, 5, 9–10. Although Patent Owner relies on the ’353 application’s description of voice activation using a codeword, voice activation does not ready the panic button for activation to perform functions, but actually activates the panic button to perform those functions. Prelim. Resp. 6 (citing Ex. 1006, 17). Petitioner thus met its burden here to demonstrate that claims 1–8 of the ’404 patent lack written description support for a panic button adapted to “ready itself” to perform the recited functions because the limitation is not present in the ’353 application to which the ’404 patent claims priority. Pet. 8–10. The burden of production thus shifted to Patent Owner to demonstrate that the ’353 application has written description support for this limitation, which it has not done on this record. Prelim. Resp. 5–7.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“of the proceeding, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions that at least one of claims 1–8 of the ’404 patent would have been obvious under 35 U.S.C. § 103 based on the ground set forth in the Petition. Accordingly, we institute trial for all challenged claims on all grounds asserted by Petitioner. See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). Our factual findings, conclusions of law, and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims or to the construction of any claim term. V. ORDER For the foregoing reasons, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–8 of the ’404 patent is hereby instituted on all challenges to patentability set forth in the Petition; and” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner has shown sufficiently that a POSITA would have combined DiPerna964 and Strack with a reasonable expectation of success. Pet. 16–18. DiPerna964 and Strack are directed to similar mobile devices for use in security and emergency situations. Id. at 16–17. Petitioner demonstrates sufficiently that a POSITA would have regarded Strack’s arming and timer technique as an improvement that would have been useful with DiPerna964’s mobile device (at least in some circumstances) to provide the user with additional time to evaluate whether triggering the 911 call is warranted. Id. at 17–18. This amounts to the use of a known technique to improve similar devices in the same way, which is a recognized rationale for combining prior art references. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401, 417 (2007). Accordingly, on this record, Petitioner has presented a reasonable likelihood that a POSITA would have combined DiPerna964 and Strack with a reasonable expectation of success. Pet. 16–18.” slip op. at 22
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,265,404 - Apple Inc. v. Aire Technology LimitedAll claims unpatentablePTAB · Dec 15, 2023 · IPR2023-00188 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–3, 11, 12, 16, 18, and 20 are unpatentable under the stated obviousness grounds; the motion to amend with substitute claims 23–26 is denied.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not accord the testimony of Dr. Phinney little or no weight simply because it matches what Petitioner states in the Petition. The Xerox case cited by Patent Owner does not require or indicate otherwise. See Xerox at 1517 (noting that the deficiencies with expert testimony are that they are conclusory and lacking supporting evidence or technical reasoning.). Dr. Phinney’s testimony apprises us of why one of ordinary skill in the art would have understood the assertions made in the Petition, and his testimony is supported by evidence. We find that the declarations of Dr. Phinney are based on specific factual disclosures in the evidence of record. Therefore, we credit Dr. Phinney’s declaration testimony for the matters asserted based on the evidence and technical reasoning provided therein. Having considered the arguments and evidence of record, we” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“knowledgeable and familiar with the smart card and Radio Frequency Identifier (RFID) arts. Pet. 13. Petitioner states that such a “person would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the electrical engineering field. Lack of work experience can be remedied by additional education, and vice versa.” Id. at 13. Patent Owner does not address the level of ordinary skill. See generally, PO Resp. 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’249 patent has an effective filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of § 103. 2 U.S. Patent No. 6,824,064 (Ex. 1005) 3 Japanese Paten Application No. 2000-163539A (Ex. 1006) 4 RFID Handbook: Radio-Frequency Identification Fundamentals and Applications, Klause Finkenzeller, 1999 (Ex. 1007) 5 Smart Card Handbook: Third Edition, Wolfgang Rankl, 2003 (Ex. 1008) references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Further, although Patent Owner is correct in stating that Guthery discloses an embodiment of a request-to-send packet that includes size information, we do not agree that Guthery requires this information to be included in the request-to-send packet. Rather, we agree with Petitioner, that Guthery’s description of a request-to-send packet as shown in Figure 8, which does not include information about the size of the message, indicates that the size information is not required by the request-to-send packet in at least some embodiments of Guthery. Ex. 1005, 8:65–9:12, Fig. 8; see id. at 8:25–29 (The “present invention is not limited to the packet types discussed and in fact assumes that new types can and will be defined in the future as needed.”); 7:43–50 (“In one particular embodiment,” packets have a fixed number of bytes, but “in other embodiments, packet types may have different sizes.”). We agree with Petitioner, that Guthery discloses multiple embodiments, and the combination made by Petitioner relies on the embodiments shown in Figures 14 and 15, where the requested application only needs two buffers and therefore would know, without receiving information from the request-to-send packet, to ask for two buffers. Ex. 1005, 12:19–59. We find that a person of ordinary skill, in combining the teachings in Guthery with Nozawa to identify and initialize an application most likely to be selected by the smart card reader, would rely on (a) information about the size of a message as shown in Figure 8, (b) Guthery’s teaching of an application programmed to determine its own memory requirements (Ex. 1005, 9:25–31), and (c) Guthery’s teaching of an application that only needs two buffers as shown in Figures 15A-15D, to preemptively transmit a permission-to-send packet from the application to the reader without waiting to receive the request-to-send packet from the reader, to yield the benefit of improving efficiency and reducing latency as taught by Nozawa. See Phinney Decl. ¶¶ 55 (testifying that Guthery’s system would preemptively prepare the buffers and transmit the permissionto-send packet without waiting to receive the request-to-send packet).” slip op. at 17
- 112 supportMotion to amend, deniedDenied
“In light of the full record before us, including Patent Owner’s arguments at the Oral Hearing, we now consider whether the proposed amended claim properly encompasses a device other than the reader performing the claimed selection. We agree with Petitioner’s contention, that the “claim doesn’t tell us . . . which element performs the selection,” and that “[t]his difference . . . divorces the claim from the functionality described in the specification.” Opp. 3–4 (citing Ex. 1002, 290 (Spec. ¶ 21)). Dr. Phinney’s testimony supports this contention. Ex. 1026 ¶ 12. We do not give weight to the arguments by Patent Owner’s attorney at the Oral Hearing, because attorney argument cannot take the place of objective evidence. Gemtron Corp., 572 F.3d at 1380. This is especially true here, where the specification discloses that the reader makes the selection, but does not disclose that any other device makes or would be capable of performing the selection. Patent Owner has not shown, nor do we find, support in the disclosure of the ’706 patent for a device other than the reader performing or capable of performing a selection. Thus, based on Patent Owner’s position that the proposed claim amendment would encompass non-reader devices making the selection, the proposed amendment adds new matter and is impermissible. See Gentry Gallery Inc. v. Berkline Corp., 134 supporting disclosure, and therefore . . . a narrow disclosure will limit claim breadth.”). Accordingly, Patent Owner has not shown, nor do we find, support for “wherein after selection of one of the plurality of applications, subsequent communication between the reading device and the selected application takes place without requiring any further steps” as recited in independent proposed substitute claims 23, 25, and 26. Due to the lack of support in the original disclosure of the ’706 patent for this limitation, proposed substitute claims 23, 25, and 26, and claim 24 by virtue of its dependency from claim 23, seek to introduce new subject matter.” slip op. at 40
Patent outcomesUS 8,581,706 unpatentable§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,581,706 - Apple Inc. v. Aire Technology LimitedAll claims unpatentablePTAB · Dec 15, 2023 · IPR2022-01137 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–3, 11, 12, 16, 18, and 20 are unpatentable as obvious; the motion to amend with proposed substitute claims 23–26 is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“knowledgeable and familiar with the smart card and Radio Frequency Identifier (RFID) arts. Pet. 13. Petitioner states that such a “person would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the electrical engineering field. Lack of work experience can be remedied by additional education, and vice versa.” Id. at 13. Patent Owner does not address the level of ordinary skill. See generally, PO Resp. 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’249 patent has an effective filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of § 103. 2 U.S. Patent No. 6,824,064 (Ex. 1005) 3 Japanese Paten Application No. 2000-163539A (Ex. 1006) 4 RFID Handbook: Radio-Frequency Identification Fundamentals and Applications, Klause Finkenzeller, 1999 (Ex. 1007) 5 Smart Card Handbook: Third Edition, Wolfgang Rankl, 2003 (Ex. 1008) references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, 1994). Petitioner submits that the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction. Pet. 13–14. Although we may discuss the scope of the claim language during our analysis, we agree that no specific construction is necessary for us to reach our decision.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not accord the testimony of Dr. Phinney little or no weight simply because it matches what Petitioner states in the Petition. The Xerox case cited by Patent Owner does not require or indicate otherwise. See Xerox at 1517 (noting that the deficiencies with expert testimony are that they are conclusory and lacking supporting evidence or technical reasoning.). Dr. Phinney’s testimony apprises us of why one of ordinary skill in the art would have understood the assertions made in the Petition, and his testimony is supported by evidence. We find that the declarations of Dr. Phinney are based on specific factual disclosures in the evidence of record. Therefore, we credit Dr. Phinney’s declaration testimony for the matters asserted based on the evidence and technical reasoning provided therein.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“discloses an embodiment of a request-to-send packet that includes size information, we do not agree that Guthery requires this information to be included in the request-to-send packet. Rather, we agree with Petitioner, that Guthery’s description of a request-to-send packet as shown in Figure 8, which does not include information about the size of the message, indicates that the size information is not required by the request-to-send packet in at least some embodiments of Guthery. Ex. 1005, 8:65–9:12, Fig. 8; see id. at 8:25–29 (The “present invention is not limited to the packet types discussed and in fact assumes that new types can and will be defined in the future as needed.”); 7:43–50 (“In one particular embodiment,” packets have a fixed number of bytes, but “in other embodiments, packet types may have different sizes.”). We agree with Petitioner, that Guthery discloses multiple embodiments, and the combination made by Petitioner relies on the embodiments shown in Figures 14 and 15, where the requested application only needs two buffers and therefore would know, without receiving information from the request-to-send packet, to ask for two buffers. Ex. 1005, 12:19–59. We find that a person of ordinary skill, in combining the teachings in Guthery with Nozawa to identify and initialize an application most likely to be selected by the smart card reader, would rely on (a) information about the size of a message as shown in Figure 8, (b) Guthery’s teaching of an application programmed to determine its own memory requirements (Ex. 1005, 9:25–31), and (c) Guthery’s teaching of an application that only needs two buffers as shown in Figures 15A-15D, to preemptively transmit a permission-to-send packet from the application to the reader without waiting to receive the request-to-send packet from the reader, to yield the benefit of improving efficiency and reducing latency as taught by Nozawa. See Phinney Decl. ¶¶ 55 (testifying that Guthery’s system would preemptively prepare the buffers and transmit the permissionto-send packet without waiting to receive the request-to-send packet).” slip op. at 17
Patent outcomesUS 8,581,706 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,581,706 - United Services Automobile Association v. Auto Telematics Ltd.Institution deniedPTAB · Dec 14, 2023 · IPR2023-00858 · APJ Sean P O’Hanlon · IPR · Institution
The Board denied institution because Petitioner did not show that Peng qualifies as prior art, so it failed to establish a reasonable likelihood of prevailing on any challenge to claims 1–55.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“remaining limitations. As such, the Petition fails to establish that P3 does not provide sufficient written description support for the challenged claims. Thus, the Petition fails to satisfy Petitioner’s burden to establish that Peng qualifies as prior art. Petitioner’s failure is fatal to all of the Petition’s challenges, each of which relies on Peng as prior art. III. CONCLUSION For the foregoing reasons, we determine that Petitioner has not demonstrated a reasonable likelihood of showing that Peng qualifies as prior art to the ’879 patent. Therefore, we determine that Petitioner has failed to demonstrate a reasonable likelihood of prevailing on any of its challenges to claims 1–55 of the ’879 patent. We therefore deny institution of the petitioned inter partes review. IV. ORDER In consideration of the foregoing, it is hereby ordered that the Petition is denied, and no trial is instituted.” slip op. at 21
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“Our reviewing court has explained that “[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” Santarus, 694 F.3d at 1351. The Federal Circuit noted that such support need not rise to the level of disclaimer and that it is possible to support both the inclusion and exclusion of the same element. Id. In Inphi Corp. v. Netlist, Inc., 805 F.3d 1350 (Fed. Cir. 2015), the Federal Circuit expanded on the discussion of negative limitations, noting that “properly described, alternative features are sufficient to satisfy the written description standard of § 112, paragraph 1 for negative claim limitations.” Inphi, 805 F.3d at 1357; see also MPEP § 2173.05(i) (9th ed., Rev. 07.2022, Feb. 2023) (stating that, “[i]f alternative elements are positively recited in the specification, they may be explicitly excluded in the claims”). We agree with Patent Owner that P3 provides support for the subject limitation to satisfy the written description requirement of 35 U.S.C. § 112. In particular, P3 discloses the use of the Witness application on a mobile device and the Witness application receives sensor data “typical for modern smart-phones.” Ex. 1505, 5:25–35. These sensor/data inputs include G-force/accelerometer, GPS module (speed, location, elevation, direction, etc.), 3D compass, and camera. Id. Additionally, P3 discloses the processing of mobile phone sensor data to derive driving information such as driving speed and G-force. P3 discloses, Another setting that can be controlled in the Settings Screen is the G-force threshold at which the Witness application will assume that a crash has taken place. It is expected that different vehicles and driving styles will need different G-force thresholds to be set to ensure a reasonable sensitivity to crash forces whilst also prevent crash detection false positives.” slip op. at 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“3. Conclusion Petitioner does not argue that P3 does not disclose any of the remaining limitations. As such, the Petition fails to establish that P3 does not provide sufficient written description support for the challenged claims. Thus, the Petition fails to satisfy Petitioner’s burden to establish that Peng qualifies as prior art. Petitioner’s failure is fatal to all of the Petition’s challenges, each of which relies on Peng as prior art.” slip op. at 21
§ 102 anticipation§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,198,879 - United Services Automobile Association v. Auto Telematics Ltd.Institution deniedPTAB · Nov 27, 2023 · IPR2023-00912 · APJ George R Hoskins · IPR · Institution
The Board denied institution on claims 1–7 because Petitioner did not show a reasonable likelihood that Peng qualifies as prior art to the ’271 patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine the information presented does not establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we deny institution of the petitioned inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“We find P3’s disclosure reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the limitation in claim 1 that requires determining a start of a driving period during which a mobile device is removably attached to a vehicle and the vehicle is in use, based on inputs received by a user interface and sensor data from the mobile device’s sensor set.” slip op. at 22
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“B. Legal Standards—Priority of Filing Date A U.S. patent application is entitled to assert priority to the filing date of an earlier-filed foreign application “for the same invention.” 35 U.S.C. § 119(a). This requires that the earlier-filed foreign application must, among other requirements, provide written description support under 35 U.S.C. § 112 for the claimed subject matter in the later-filed U.S. application. See In re Ziegler, 992 F.2d 1197, 1200 (Fed. Cir. 1993) (“A foreign patent application must meet the requirements of 35 U.S.C. § 112, first paragraph, in order for a later filed United States application to be entitled to the benefit of the foreign filing date under 35 U.S.C. § 119.”). “To satisfy the written description requirement, a patent’s specification must ‘reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”’ Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1016 (Fed. Cir. 2022) (alteration in original) (quoting Ariad Pharms., Inc. v. Eli Lily & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). The written description “test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad, 598 F.3d at 1351. “For negative claim limitations, . . . there is adequate written description when, for example, ‘the specification describes a reason to exclude the relevant [element].”’ Novartis, 38 F.4th at 1016 (second alteration in original) (quoting Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We mostly agree with Patent Owner. First, as a matter of claim construction, we agree with Patent Owner that the claimed “driving score” corresponds to an assessment of what type of driver an individual is. See id. at 28; Ex. 1001, 10:10–17 (stating “driving information can be matched to a particular driver” which is “particularly useful when assessing a risk profile of said driver” and “[t]he driving information may comprise the driving score”), 12:4–9 (stating “[t]he driving score may be used to determine a risk profile for at least one of the vehicle and driver”). However, to the extent that Patent Owner would limit a driving score to a “number” (Prelim Resp. 28), we disagree. The ’271 patent specification does not support such a construction. See Ex. 1001, 10:10–17, 12:4–9.” slip op. at 31
Claim construction§ 102 anticipation§ 112 disclosurePatents in suitUS 9,311,271 - United Services Automobile Association v. Auto Telematics Ltd.Institution deniedPTAB · Nov 8, 2023 · IPR2023-00769 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution on claims 1–27 because Petitioner did not show a reasonable likelihood that Peng qualifies as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A. Legal Standards – Priority In an inter partes review, the burden of persuasion is on the petitioner to prove unpatentability by a preponderance of the evidence, and that burden never shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). For a claim in a later-filed U.S. patent application to be entitled to the filing date of an earlier U.S. or foreign patent application, the earlier application must, among other requirements, provide written description support under 35 U.S.C. § 112 for the claimed subject matter in the later-filed U.S. application. In re Ziegler, 992 F.2d 1197, 1200 (Fed. Cir. 1993) (“A foreign patent application must meet the requirements of 35 U.S.C. §112, first paragraph, in order for a later filed United States application to be entitled to the benefit of the foreign filing date under 35 U.S.C. § 119.”); Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010) (explaining that, to obtain the benefit of a parent application’s filing date under section 120, “the claims of the later-filed application must be supported by the written description in the parent ‘in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.’” (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997))). “To satisfy the written description requirement, a patent’s specification must ‘reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”’ Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1016 (Fed. Cir. 2022) (alteration in original) (quoting Ariad Pharms., Inc. v. Eli Lily & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). “For negative claim limitations, . . . there is adequate written description when, for example, ‘the specification describes a reason to exclude the relevant [element].”’ Id. (quoting Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)).” slip op. at 10
- BurdenDecided for patent owner
“Petitioner contends that “each priority document fails to provide support for at least [1.9]–[1.13] of independent claim 1 (nor the same limitations found in claims 26 and 27) of the ’369 patent.” Pet. 5. While Petitioner arguably provides some explanation for its challenge to limitation [1.9], we observe that Petitioner does not provide any evidence or supporting argument for limitations [1.10]–[1.13]. See Pet. 5–6; Prelim. Resp. 21. As discussed above, we determine that P3’s disclosure reasonably conveys to one skilled in the art that the inventor had possession of limitation [1.9] of claim 1 that requires “wherein the driving information is derived without data from vehicle sensors.” Ex. 1001, 31:63–64. With respect to limitations [1.10]–[1.13], we determine that the Petition is incomplete and lacks sufficient explanation for Petitioner’s challenge to these limitations.” slip op. at 19
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“Our reviewing court has explained that “[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” Santarus, 694 F.3d at 1351. The Federal Circuit noted that such support need not rise to the level of disclaimer and that it is possible to support both the inclusion and exclusion of the same element. Id. In Inphi Corp. v. Netlist, Inc., 805 F.3d 1350 (Fed. Cir. 2015), the Federal Circuit expanded on the discussion of negative limitations, noting “that properly described alternative features are sufficient to satisfy the written description standard of § 112, paragraph 1 for negative claim limitations.” Inphi, 805 F.3d at 1357; see also Manual of Patent Examining Procedure (“MPEP”) § 2173.05(i) (9th ed., Rev. 07.2022, Feb. 2023) (stating that, “[i]f alternative elements are positively recited in the specification, they may be explicitly excluded in the claims”). We agree with Patent Owner that P3 provides support for the limitation in question sufficient to satisfy the written description requirement of 35 U.S.C. § 112. In particular, P3 discloses the use of the Witness application on a mobile device and the Witness application receives sensor data “typical for modern smart-phones.” Ex. 1505, 5:25–35. These sensor/data inputs include G-force/accelerometer, GPS module (speed, location, elevation, direction, etc.), 3D compass, and camera. Id.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“written description support for claims 1, 26, and 27, and so fails to satisfy Petitioner’s burden to establish that Peng qualifies as prior art. Therefore, we determine Petitioner has failed to demonstrate a reasonable likelihood of prevailing on its challenges of claims 1, 26, and 27, all of which are based on Peng. C. Claims 2–25 Petitioner does not separately dispute that P3 discloses the limitations in dependent claims 2–25. Therefore, the Petition fails to establish that P3 does not provide sufficient written description support for any one of these claims, and so fails to satisfy Petitioner’s burden to establish that Peng qualifies as prior art.” slip op. at 21
§ 103 obviousness§ 112 disclosurePatents in suitUS 10,192,369
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.