- PTAB · Mar 24, 2022 · PGR2021-00112 · APJ Bryan F Moore · PGR · Institution
Instituted PGR on claims 1–20 because Petitioner showed a reasonable likelihood that claim 1 lacks written description support; all petition grounds were included.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“content for output.” Id. at 89. We determine, however, that Petitioner’s argument under Step 2A Prong One that claim 1 is directed to the “obtaining content for output” is not substantially different from the Examiner’s determination that claims 1‒20 recite “collecting information, analyzing it, and displaying certain results of the collection and analysis.” Compare Pet. 37–88 (citing e.g. Electric Power), with Ex. 2001, 193–194 (also citing Electric Power). In both cases, the argument is the same or substantially the same, i.e., that similarly identified subject matter of the claim is obtaining (collecting) data and displaying (outputting) it. Nevertheless, as to Step 2A Prong Two, we determine that the claims at issue in the ’096 prosecution differ in material ways from the ’903 patent claims at issue in this PGR. Specifically, the ’096 patent claims recite a touchscreen interface not recited in the ’903 patent claims. Additionally, the ’903 claims focus on the “output device” as performing the patented steps but in the ’096 prosecution history the “‘information apparatus performs the patented steps and “is integral to the claims” (as the Applicant argued). See Ex. 2008 [comparison of ’096 prosecution claims and ’903 claims]; Ex. 2001, 150; see also Pet. 89 (“the claims at issue in the ’067 application were different than the claims of the ’903 patent addressed here.”). rejection and arguments in the ’096 prosecution history turns on whether the claims in this PGR recite different elements that must be determined to integrate the judicial exception into a practical application (i.e., Prong Two of Step 2A). Petitioner argues that an essential element different than the ’096 claims, i.e. the output device, does not integrate the judicial exception into a practical application because the claims do not amount to an improvement to computer functionality. Pet. 37–72. We find this a close case. Nevertheless, due to the differences in the claims, we determine that the Examiner’s withdrawal of the § 101 rejection in light of the applicant’s arguments regarding the claim being directed to a specific technical solution is not substantially the same argument that Petitioner’s presents in the Petition as to Prong Two of Step 2A.” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“C. Lack of Written Description Support Petitioner contends that the challenged claims are unpatentable for lack of written description for the same reasons it contends the ’903 patent is PGR eligible. Pet. 13–36. The Specification of the ’903 patent has substantially the same disclosures as the Specification of the ’413 application relied on by Patent Owner (see Prelim. Resp. 20) to which the ’903 patent claims priority. Having determined that the disclosures in the ’903 patent Specification and the ’413 application is insufficient to provide written description support for the at least claim 1, we also determine that Petitioner has demonstrated a reasonable likelihood that at least claim 1 is unpatentable for the same reasons. Thus, we exercise our discretion and institute post grant review of claims 1–20 challenged under this ground. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1369–60 (2018).” slip op. at 33
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateInstituted
“in the art at the time of the invention] would have understood that an output system/device could be (or include) an information apparatus. Prelim. Resp. 24. We determine that Patent Owner’s argument has a logical flaw––i.e., the fact that a particular device could be used alternately as an information apparatus or an output device does not necessarily mean that it was known by one of ordinary skill in the art to use a combined information apparatus/output device and have the new combined device perform all the additional functions required by the claims. “The knowledge of ordinary artisans may be used to inform what is actually in the specification, but not to teach limitations that are not in the specification, even if those limitations would be rendered obvious by the disclosure in the specification.” Rivera v. Int’l Trade Comm’n, 857 F.3d 1315, 1322 (Fed. Cir. 2017) (“Rivera”). “The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification . . . . It extends only to that which is 1997). Patent Owner has not pointed to any disclosure in the ’413 application teaching that an “output device” can perform the functions of the “information apparatus” including its interactions with the “output device.” For example, claim 1 recites “wirelessly receiving, by the output system . . . output data from at least one server of the one or more servers over the Internet.” Ex. 1001, 37:28–32. At this stage, we find sufficiently persuasive Petitioner’s argument, which we discuss above, that the only written description support for an “output device” that performs the claimed functions by accessing the Internet provided by Patent Owner is not an “output device” but an “information apparatus.” Prelim. Resp. at 27–29.” slip op. at 29
§ 112 disclosureDiscretionary denialcites Mayo · Bilski · Electric PowerPatents in suitUS 11,029,903 - Coxcom, LLC v. Joao Control & Monitoring Systems, LLCSome claims unpatentablePTAB · Feb 15, 2017 · IPR2015-01762 · APJ Beth Z Shaw · IPR · Final written decision
Claims 1, 3–5, 8, 13–17, 20, and 84–86 are unpatentable as obvious over Koether and Crater; claim 44 was not shown unpatentable on that ground.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“owner must provide sufficient rebuttal evidence to bring reasonably into question the accuracy of Petitioner’s identification of RPIs.” See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012). Whether a non-party is a real party in interest is a “highly fact-dependent question” that is addressed on a “case-by-case” basis. See 77 Fed. Reg. 48,759. “A common focus of the inquiry is . . . whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Id. The concept of control means that “the non-party ‘had the opportunity to present proofs and argument’ . . . or ‘to direct or control the content’ of the filing.” JP Morgan Chase & Co., et al. v. Maxim Integrated Prods., Inc., Case CBM2014-00179, slip op. at 10 (PTAB Feb. 20, 2015) (Paper 11) (“JP Morgan”). “‘The evidence as a whole must show that the non-party possessed effective control over a party’s conduct of the [proceeding] as measured from a practical, as opposed to a purely theoretical standpoint.’” Id. (quoting Gonzalez v. Banco Cent Corp., 27 F.3d 751, 759 (1st Cir. 1994)).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1001, Abst. It describes the relevant problems encountered in the art as those involved in the control, monitoring, or security of vehicles or premises, in a network environment. Id. at 1:20–52; 3:12–21. The ’363 patent is not directed to specific issues associated with electrical circuits or electrical connections between devices. The Specification identifies no specific problem that stems from the apparatus being a particular type of electrical device. From this evidence, we conclude that a person of ordinary skill in the art with respect to the ’363 patent would be skilled in the field of networked systems. For the foregoing reasons, we are not persuaded that the level of ordinary skill in the art requires specific coursework or education in the form of a degree in electrical engineering. Instead, we are persuaded by Petitioner’s statement of the level of ordinary skill in the art, and our finding of the level of ordinary skill is similar to that proposed by Petitioner, but with a slight modification, i.e., that a basic level of experience is required, at the level of at least two years of experience in networked systems. We find that the level of ordinary skill in the art is that of one having at least two years of working experience with networked systems. A more advanced degree would be paired with a shorter period of working experience.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner has not articulated a persuasive reason for giving Mr. Bennett’s testimony little or no weight. Moreover, as discussed above, we are not persuaded that a person of ordinary skill in the art of the ’363 patent would be required to have a specific degree or coursework in electrical engineering. We are, thus, not persuaded that Mr. Bennett’s answers, during deposition, to questions about his background are wrong or that the entirety of his testimony should be given little or no weight based on this testimony.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“For purposes of the Decision to Institute, we construed the terms “remote,” “premises,” and “located at.” Dec. 8–9. We reviewed and adopted Patent Owner’s explicit definitions for these terms, which Patent Owner provided in the prosecution of the application that issued as the ’363 patent. Dec. 8 (citing Ex. 2002). Based on our review of the full record, we discern no reason to modify or further discuss in this Final Written Decision our constructions for these claim terms. For convenience, these claim constructions are reproduced in the table below. Term Citations Construction Remote Ex. 2002, “‘Remote’ means ‘separate and apart from, or 10–11 external from, or at a distance from or distant from, or not located in.’” Premises Ex. 2002, 8– “‘Premises’ means ‘a building or a structure 9 and the grounds or parcel of land associated with the building or the structure, or a building or structure or a portion, room, or office, of or in the building or structure, or a home, mobile home, mobile building, mobile structure, residence, residential building, office, commercial building, commercial office, structure, equipment, facility, machine, rig, assembly line, or edifice.’” Located at Ex. 2002, 8 “‘Located at’ means ‘situated at, or situated in, or situated on.’”” slip op. at 12
Patent outcomesUS 7,397,363 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSRPatents in suitUS 7,397,363
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.