- Facebook, Inc. v. Palo Alto Research Center LLCAll claims unpatentablePTAB · Mar 22, 2023 · IPR2021-01461 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–5, 7–11, 13–17, 19, and 20 are unpatentable under § 103; PARC’s contingent motion to amend is denied because the pending substitute claims lack written-description support and are obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Mr. Schmandt’s testimony, Facebook argues that a person of ordinary skill in the art “would have possessed at least a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of context-based computer systems, such as the collection, processing and use of context data in computer systems capable of adapting their operation based on context.” Pet. 6 (citing Ex. 1002 ¶¶ 15– 18). Facebook also contends that a person might qualify as an ordinarily skilled artisan “with more formal education and less technical experience, or vice versa.” Id. For this proceeding, PARC does not dispute this proposed level of ordinary skill. PO Resp. 16–17. Because Facebook’s uncontroverted articulation of the level of ordinary skill in the art is supported by testimonial evidence and appears consistent with the types of problems and solutions in the ’439 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:4–33 (“Background” section of the ’439 patent, describing the field and related art as relating to the use of using contextual data in computer systems).” slip op. at 10
- Strike new argumentNew argument consideredDecided for petitioner
“construction of the term “facts and assertions” or the identification of facts and assertions within Cheng. See Paper 23, 1–2. Having reviewed the arguments, we do not consider them untimely. As we discuss in more detail below, Facebook relied on the ordinary and customary meaning of the term “facts and assertions” in its Petition, and then when PARC raised an alternative construction of the term in its Response, Facebook responded to those arguments. See infra Sections IV.B.2, IV.C.4(a). Facebook’s Reply only responded to arguments raised in PARC’s Response and was not untimely. See 37 C.F.R. § 42.23(b) (permitting a petitioner to respond to arguments in a patent owner response); Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018) (“[T]he 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, or if it is used ‘to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.’” (quoting Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1369 (Fed. Cir. 2016))). Moreover, PARC had a meaningful opportunity to address the arguments in its Sur-reply and in oral argument. See PO Sur-reply 7–12; Tr. 22–34. Thus, we do not find Facebook’s contested arguments untimely and we have considered them in our decision.7” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with Facebook. As we discuss below, Cheng teaches a graph-based model that stores data in memory on a per-user basis. See infra Section IV.C.4(a); Ex. 1003, Fig. 7. Also, as PARC acknowledges, Facebook’s expert Mr. Schmandt stated in deposition that he assumed, for his analysis, that the term “context graph” requires a “graph-based model.” PO Resp. 22 (citing Ex. 2019, 36:16–37:8); see also PO Sur-reply 4. Thus, because Facebook’s analysis of Cheng is consistent with the assumption that “context graph” has the meaning PARC proposes in this proceeding, we do not need to construe the term “context graph” to reach our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[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
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with the parties that a person of ordinary skill in the art would have understood the term “fact” to include an indication of truth, whereas an assertion need not include such an indication. However, we disagree with PARC that a person of ordinary skill would have considered the term “assertion” to exclude facts. Indeed, in its ordinary and customary meaning, a fact stored in a context graph would be a type of assertion. We appreciate PARC’s argument that when two different terms appear in a claim, they presumably refer to different things. See PO Resp. 27 (citing CAE Screenplates, 224 F.3d at 1317). And we agree that the two terms have different meanings in claim 1 based on the plain meaning of each term. However, the specification refers to “stor[ing] facts and assertions about a user’s behavior and interests,” which simply appears to identify a single category of data for storage, i.e., “facts and assertions,” without specifying a clear difference between “facts” and “assertions.” See Ex. 1001, 3:21–22. In any event, we find no evidence of record suggesting that either (1) the (citing Pet. Reply 8–9). Because Facebook appears to have been relying on what it regarded as the plain meaning of the terms without proposing an explicit construction, we do not interpret Facebook’s argument in the Petition (Pet. 20–21) to imply that there is no distinction between a fact and an assertion, and do not find Mr. Schmandt’s later testimony (see, e.g., Ex. 2019, 41:3–11) inconsistent with arguments made in the Petition. ordinary and customary meaning of the term “assertion” excludes facts, or (2) that the ’439 patent uses these terms in a way that departs from their ordinary and customary meaning. That claim 1 requires the presence of both “facts” and “assertions” does not render the two terms superfluous, as this would exclude prior art in which a context graph includes only assertions but not facts. On the other hand, a disclosure of a collection of facts would meet the term “facts and assertions” because a person of ordinary skill in the art would have regarded any subset of the facts to also be assertions.” slip op. at 15
Patent outcomesUS 9,208,439 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,208,439 - Twitter, Inc. v. Palo Alto Research Center LLCAll claims unpatentablePTAB · Mar 22, 2023 · IPR2021-01430 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–5, 7–11, 13–17, 19, and 20 are unpatentable under § 103; PARC’s contingent motion to amend is denied because the proposed substitute claims lack written-description support and are unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Relying on Dr. Turnbull’s testimony, Twitter argues that a person of ordinary skill in the art “would at minimum have a bachelor’s in software, computer, or electrical engineering or computer science with at least two years’ experience in software development, including with respect to context-aware devices and systems, or the equivalent.” Pet. 16 (citing Ex. 1003 ¶ 24). Also, “[a]dditional graduate education could substitute for professional experience, or significant experience in electronic messaging could substitute for formal education.” Id. (citing Ex. 1003 ¶ 24). For this proceeding, PARC does not dispute this proposed level of ordinary skill. PO Resp. 21. Because Twitter’s uncontroverted articulation of the level of ordinary skill in the art is supported by testimonial evidence and appears consistent with the types of problems and solutions in the ’439 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:4–33 (“Background” section of the ’439 patent, describing the field and related art as relating to the use of contextual data in computer systems).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We agree as to Twitter’s last point, as we discuss below, that Cheng teaches a graph-based model that stores data in memory on a per-user basis. See infra Section IV.C.4(a); Ex. 1005, Fig. 7. Moreover, this decision does not address grounds of the Petition that omit Cheng as a reference, Cheng discloses a “context graph” under either party’s construction. Thus, we need not construe the term for this decision. See Nidec, 868 F.3d at 1017. Because the terms “recommender” and “application event data and/or operating system data” are not contested and are not material to our decision, we do not construe these two terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[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))). To the extent that other claim terms are significant, we discuss them below in the context of the asserted prior art.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We determine that Twitter has persuasively, and with sufficient specificity, shown that the combination of Huomo and Cheng teaches all aspects of limitation 13[d], and that it would have been obvious to modify Huomo by using Cheng’s personal interest graph as the model for how facts and assertions are stored in Huomo’s “blackboard.” This modification would have been compatible with Huomo and would simply affect the form of the information, or types of information, that are stored in Huomo’s blackboard. See Intel Corp., v. PACT XPP Schweiz AG, No. 2022-1037 at 10–13 (Fed. Cir. Mar. 13, 2023) (there is motivation to combine where one reference addresses a problem in one way, and another reference addresses the same problem in an alternative way that would be a suitable option). We agree with Twitter that this modification would have been within the ordinary skill in the art, that there would have been a reasonable expectation of success, and that an ordinarily skilled artisan would have recognized benefits to using Cheng’s graph-based structure such as the ability to better track social relationships through annotating the nodes and edges, and the ability to more easily track users’ shared interests and the influences that users may have on each other. See Pet. 53–55; Ex. 1003 ¶¶ 156–161.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“We determine that Twitter has persuasively, and with sufficient specificity, shown that the combination of Huomo and Cheng teaches all aspects of limitation 13[d], and that it would have been obvious to modify Huomo by using Cheng’s personal interest graph as the model for how facts and assertions are stored in Huomo’s “blackboard.” This modification would have been compatible with Huomo and would simply affect the form of the information, or types of information, that are stored in Huomo’s blackboard. See Intel Corp., v. PACT XPP Schweiz AG, No. 2022-1037 at 10–13 (Fed. Cir. Mar. 13, 2023) (there is motivation to combine where one reference addresses a problem in one way, and another reference addresses the same problem in an alternative way that would be a suitable option). We agree with Twitter that this modification would have been within the ordinary skill in the art, that there would have been a reasonable expectation of success, and that an ordinarily skilled artisan would have recognized benefits to using Cheng’s graph-based structure such as the ability to better track social relationships through annotating the nodes and edges, and the ability to more easily track users’ shared interests and the influences that users may have on each other. See Pet. 53–55; Ex. 1003 ¶¶ 156–161.” slip op. at 30
Patent outcomesUS 9,208,439 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,208,439 - Offshore Technical Compliance, LLC v. Innovative Pressure Testing, LLCAll claims unpatentablePTAB · Oct 28, 2021 · IPR2020-00923 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–17 were held unpatentable as obvious over BOP California, Wodjenski, and Winters; the revised motion to amend proposing claims 19–35 was denied.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“1 The Petition requested review of claims 1–18, but Patent Owner filed a statutory disclaimer of claim 18. Pet. 3; Ex. 2001; see 37 C.F.R. § 42.107(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.”); Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1372 (Fed. Cir. 2018). claims on which we instituted trial. Based on the record before us, Petitioner has shown, by a preponderance of the evidence, that (1) claims 1–17 of the ’143 patent are unpatentable; and (2) Patent Owner’s proposed substitute claims 19–35 are unpatentable.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for patent owner
“B. Testimony of Mr. Anderson Patent Owner contends that the testimony provided by Petitioner’s” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“D. Claim Construction The Board uses “the same claim construction standard that would be” slip op. at 21
Patent outcomesUS 9,207,143 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,207,143 - Canon Inc. / Canon U.S.A., Inc. v. Hidehiko NakajimaAll claims unpatentablePTAB · Mar 5, 2020 · PGR2018-00090 · APJ John P Pinkerton · PGR · Final written decision
Claims 1–6 are unpatentable under § 112(a) for lack of written description and under the stated § 103 combinations; the § 112(b) indefiniteness challenge was not proven.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“E. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the ’625 patent would have had a bachelor’s degree in optical engineering, mechanical engineering, electrical engineering, optics or physics, with at least three years of experience working in optical engineering, a master’s degree in one of the above disciplines with at least two years of experience working in optical engineering, a Ph.D. in one of the above disciplines focusing on optical engineering, or other equivalent experience. Pet. 35 (citing Ex. 1002 ¶ 48). In the Institution Decision, we adopted Petitioner’s proposed description of the level of ordinary skill in the art. Dec. on Inst. 11. Patent Owner did not file a Patent Owner Response and, therefore, has not expressed a position on the level of ordinary skill in the art. Based on the subject matter at issue and the prior art of record, we adopt Petitioner’s proposal and apply this level of ordinary skill in the art for purposes of this Final Written Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner contends that we should construe the following terms or phrases: (1) “mechanical control”; (2) “a mechanism separate from the rotation and the selector”; and (3) “wherein the rotary switch is configured to rotate without exerting mechanical control over a mechanism separate 11 The claim construction standard recently changed for all post-grant proceedings filed on or after November 13, 2018. See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018). Because the Petition in this proceeding was filed on August 6, 2018, however, the applicable claim construction standard remains the “broadest reasonable construction,” as set forth in 37 C.F.R. § 42.200(b) (2018). from the rotation and the selector switch.” Pet. 11–15. Petitioner asserts that all other claim terms need not be construed and should be given their ordinary and customary meaning, as understood by a person of ordinary skill in the art. Id. at 10. We agree with Petitioner and, therefore, we construe below the terms and phrases identified by Petitioner. We also determine that no express interpretation of any other claim term is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[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
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“mean ‘directing influence over’ when used to describe an act, such as in ‘exerting . . . control’ here.” Pet. 11 (citing Ex. 1018, 3; Ex. 1002 ¶ 54). Petitioner further contends that, although the ’625 patent’s Specification does not discuss “mechanical control” at all, it does use the word “control” to describe acts in a manner consistent with this meaning. Id. at 11–12 (citing Ex. 1001, 2:58–60 (“[T]he digital camera system controls the discrete function or the continuous function corresponding to the output.”), 7:19–21). Thus, Petitioner argues that the term “mechanical control,” as used in the ’625 patent, means “physically engaging to direct influence over.” Id. at 12 (citing Ex. 1002 ¶ 55). We agree with Petitioner that, outside of independent claim 1, the composite term “mechanical control” is not used in the ’625 patent’s Specification. Regarding Petitioner’s proposed construction of “physically engaging to direct influence over,” we note that neither the Specification nor Petitioner’s definition of “control” requires or suggests “engaging.” Considering the claim terms “mechanical” and “control” in light of the Specification, the definition of “mechanical,” Petitioner’s arguments, and Petitioner’s dictionary definition of “control,” we maintain our construction from the Institution Decision and we conclude that the broadest reasonable interpretation of the term “mechanical control” is “physical influence over.” Dec. to Inst. 16.” slip op. at 15
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateUnpatentable
“Based on the record, we determine Petitioner has demonstrated, by a preponderance of the evidence, that the “wherein clause” limitation lacks written description support in the Prior Applications and the ’625 patent’s Specification. First, as explained in our claim construction analysis above, we are persuaded by Petitioner’s argument that the limitation “wherein the rotary switch is configured to rotate without exerting mechanical control over a mechanism separate from the rotation and the selector switch” is a negative limitation. See supra Section II.C.3. We have construed the limitation to mean that the rotary switch “is configured to rotate so as not to exert physical influence over a component that is not part of (1) the rotary switch, or the ball bearing between the rotary switch and camera chassis, and (2) the selector switch and its parts.” We are persuaded that this is a negative limitation because it excludes rotary switches configured to exert physical influence over any physical component other than the rotary switch and ball bearing with which it rotates, as well as the selector switch and its parts.” slip op. at 22
Patent outcomesUS 9,813,625 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham · NautilusPatents in suitUS 9,813,625 - Samsung Electronics Co., Ltd. v. Daniel L. FlammAll claims unpatentablePTAB · Feb 12, 2018 · IPR2016-01512 · APJ Michael R Zecher · IPR · Final written decision
Claims 27, 31, 32, 34, 37, 40, 41, 44, 47, 48, and 50 are unpatentable under § 103 over the stated combinations of prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the knowledge level of a person of ordinary skill in the art. Samsung’s declarant, Dr. Shanfield, testifies that a person of ordinary skill in the art as of September 1997 would be an individual who possesses the following: (i) a Bachelor’s degree in engineering, physics, chemistry, materials science, or a similar field, and three or four years of work experience in semiconductor manufacturing or related fields[;] or (ii) a Master’s degree in engineering, physics, chemistry, materials science, or a similar field[,] and two or three years of work experience of work experience in semiconductor manufacturing or related fields[]. Ex. 1002 ¶ 18. According to Dr. Shanfield, “[m]ore education can supplement practical experience and vice versa.” Id. Conversely, the named inventor of the ’264 patent, Dr. Flamm, does not offer an assessment of the level of skill in the art as of September 1997, nor does Dr. Flamm explicitly state his intent to adopt Dr. Shanfield’s assessment. See generally Ex. 2001.3 Given Dr. Flamm’s silence on this matter, we adopt Dr. Shanfield’s assessment because it is consistent with the ’264 patent and the asserted prior art, and apply it to our obviousness evaluation below.” slip op. at 14
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“halogen lamp with Kadomura’s dry etching apparatus would degrade uniformity and control. In particular, we do not credit Dr. Flamm’s supporting testimony on this particular issue because it is conclusory in nature. Ex. 2001 ¶ 34. According to 37 C.F.R. § 42.65(a), “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of objective support for expert opinion “may render the testimony of little probative value in [a patentability] determination”). For instance, Dr. Flamm testifies that: A [person of ordinary skill in the art] would not have combined Narita with Kadomura to effectuate a temperature change because a [person of ordinary of skill in the art] would know that heating through intimate contact with Kadomura’s electrostatic chuck was operable to provide better uniformity and control than an [IR] lamp or halogen lamp taught by Narita. Such [IR] lamp or halogen lamp is primarily for rapid heating, commonly called “RTP,” which would not be combined with Kadomura’s technique that emphasizes better uniformity and control for cryogenic processing. A [person of ordinary skill in the art] would recognize that these different techniques teach away from each other. Ex. 2001 ¶ 34. Dr. Flamm, however, provides little, if any, support for these statements. Absent underlying facts or data to support his opinion, we are not convinced that heating with an IR lamp or halogen lamp, as taught by Narita, would degrade uniformity and control. See Pet. Reply 19–20 (referencing teachings in Narita that provide for control and uniformity).” slip op. at 37
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for petitioner
“Flamm does not dispute that the priority date of the challenged claims of the ’264 patent is the September 11, 1997 filing date of the ’650 provisional application. Consequently, because all the references that serve as the basis of the grounds instituted in this proceeding were filed before September 11, 1997, they qualify as prior art to the challenged claims of the ’264 patent.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“The relevant inquiry here is whether Samsung has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. In KSR, the Supreme Court framed the question as whether “[one] of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading [the prior art].” 550 U.S. at 424. The Supreme Court explained that we “must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id. at 417. The Supreme Court stated that, “[i]f a person of ordinary skill [in the art] can implement a predictable variation, § 103 likely bars its patentability.” Id. Based on the record developed during trial, we agree with Samsung that using Matsumura’s control recipes in Kadomura’s dry etching apparatus and method is a predictable use of prior art elements according to their established functions—an obvious combination that would provide better temperature control, particularly with respect to accurately controlling the thermal history curve. See Pet. 31–33; Pet. Reply 8–9; Ex. 1002 ¶¶ 43, 60, 61; KSR, 550 U.S. at 417. We begin our analysis by examining the problem addressed by Matsumura. In its “Background of the Invention” section, Matsumura discloses that the thermal history curve (i.e., the temperature changing pattern) of the wafer-stage has a large influence on the resolution” slip op. at 24
Patent outcomesUS RE40,264 unpatentable§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham - Apple, Inc. v. Personalweb Technologies, LLC, And Level 3 Communications, LLCAll claims unpatentablePTAB · Mar 25, 2015 · IPR2013-00596 · APJ Kevin F Turner · IPR · Final written decision
Claims 24, 32, 70, 81, 82, and 86 are unpatentable as obvious over Woodhill and Stefik.
RulingsFinal written decision- Skill levelOther
“must prove unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). To establish obviousness of a claimed invention, all the claim limitations must be taught or suggested by the prior art. See CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003); In re Royka, 490 F.2d 981, 985 (CCPA 1974). A patent claim composed of several elements, however, is not proved obvious merely by demonstrating that each of its elements was known, independently, in the prior art. KSR, 550 U.S. at 418. In that regard, for an obviousness analysis it is important to identify a reason that would have prompted one of skill in the art to combine prior art elements in the way the claimed invention does. Id. A precise teaching directed to the specific subject matter of a challenged claim, however, is not necessary to establish obviousness. Id. Rather, obviousness must be gauged in view of common sense and the creativity of an ordinarily skilled artisan. Id. Moreover, obviousness can be established when the prior art, itself, would have suggested the claimed subject matter to a person of ordinary skill in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976).” slip op. at 11
- Expert testimonyOther
“Id. at 41–42. In support of its asserted ground of unpatentability, Apple proffers the testimony of Dr. Benjamin F. Goldberg. Ex. 1007 ¶¶ 61–88.” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“C. Priority of the Subject Claims Apple asserted that claims 24, 32, 70, 81, 82, and 86 of the ’310 Patent are not entitled to the benefit of the filing date of the earliest priority application under 35 U.S.C. § 120. Pet. 55–57. Specifically, Apple asserted that the earliest priority application does not provide sufficient written description support for the claim feature: “a hash function.” Id. at 55. In the Decision to Institute, we found that that the original disclosure of the earliest priority application of the ’310 Patent—namely, the application filed on April 11, 1995—provides sufficient written description support for the claimed feature “a hash function.” Dec. 11–13. We are not persuaded that any modification is necessary in light of any evidence or argument introduced during trial. Thus, we determine that Priority Web has established that it is entitled to the benefit of the April 11, 1995 filing date.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Apple further contends that a person of ordinary skill in the art reading Woodhill and Stefik would have understood that the combination of Woodhill and Stefik would have allowed for the selective access features of Stefik to be used with Woodhill’s content-dependent identifiers feature. Pet. 42. We agree in this regard and are persuaded that the combination of Woodhill and Stefik renders claims 24, 32, 70, 81, 82, and 86 of the ’310 Patent unpatentable under 35 U.S.C. § 103.” slip op. at 15
Patent outcomesUS 7,802,310 unpatentable§ 103 obviousness§ 112 disclosurecites Phillips · KSRPatents in suitUS 7,802,310 - Chicago Mercantile Exchange, Inc. v. 5th Market, Inc.All claims unpatentablePTAB · Dec 17, 2014 · CBM2013-00027 · APJ Michael R Zecher · CBM · Final written decision
Claims 1–23 and 41–49 are unpatentable: claims 1–23 are indefinite, and claims 1–4, 6–23, and 41–49 are obvious; the motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“considered, including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. CME’s expert witness, Dr. Pirrong, attests that a person with ordinary skill in the art would be an individual who possesses the following: (1) a bachelor’s degree in computer science, or another quantitative field such as mathematics, statistics, economics, or finance; (2) two to five years of work experience in any one of the aforementioned areas; and (3) an understanding of the operation of markets for financial instruments, including computerized and electronic markets. Ex. 1005 ¶ 44.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“We are not persuaded by 5th Market’s proposed claim construction of the claim phrase “external price feed” because its construction of “outside” the network is overly narrow. 5th Market does not direct us to a disclosure in the Specification of the ’419 patent that suggests “outside” the network should be limited to a marketplace trading, but not aggregating orders for, the same securities or items as the originating CORE trading engine, or a diverse marketplace that does not trade or aggregate the same securities or items, as the originating CORE trading engine. If a feature is not necessary to give meaning to what the inventor means by a claim term, it would be 15 “extraneous,” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). We decline to adopt 5th Market’s construction of “outside” the network as the broadest reasonable interpretation, as it would import extraneous limitations into the claims, and it would be inconsistent with the Specification of the ’419 patent. 5th Market’s attempt to limit “outside” the network to the two types of marketplaces identified above is not necessary to give meaning to the claim phrase “external price feed,” and should not be read into the claims that recite this feature. We maintain that the broadest reasonable interpretation of the claim phrase “external price feed” is “price data received from outside of the conditional order transaction network.” As we explained in the Decision to Institute (Dec. 20–22), this claim construction is consistent with the ordinary and customary meaning of “external,” as would be understood by one with ordinary skill in the art, in light of the ’419 patent.” slip op. at 15
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)§112(f) appliesDecided for petitioner
“When construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, 3 the corresponding structure of a means-plus-function limitation must be more than simply a general-purpose computer or microprocessor to avoid impermissible functional claiming, unless certain narrow exceptions concerning generic computer functions apply. Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); see In re Katz Interactive Call Proc. Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011). That is, the specification must disclose “enough of an algorithm to provide the necessary structure under § 112, ¶ 6” or a disclosure that can be 3 Section 4(c) of the AIA re-designated 35 U.S.C. § 112 ¶ 6 as 35 U.S.C. § 112(f). Nonetheless, because the ’419 patent has a filing date before September 16, 2012 (the effective date of the AIA), we refer to the pre-AIA version of 35 U.S.C. § 112. 18 expressed in any understandable terms, e.g., a mathematical formula, in prose, or as a flowchart. Finisar Corp. v. The DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008). Simply reciting a claimed function in the specification, and saying nothing about how the computer or processor ensures that such a function is performed, is not a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009). According to the Specification of the ’419 patent, Table 1 includes conditions that are available for input by subscribers, viewable by other subscribers, and executed by the system’s trading engine, e.g., the CORE trading engine illustrated in Figure 1. Ex. 1001, 17:20–23. Although the CORE trading engine is tantamount to a general purpose computer, there is no explicit disclosure that explains how the conditions included in Table 1 are used to compare orders. For instance, Table 1 includes, amongst other conditions, price, quantity, minimum quantity, cap, and a collar kill that may be used to compare orders. Id. at 17:25–18:20. Table 1, however, does not disclose a well-defined or otherwise recognizable sequence of steps that uses these conditions to compare orders. See Blackboard, 574 F.3d at 1384. Absent such a disclosure, we are not persuaded that the Specification of the ’419 patent discloses a specific algorithm that transforms an otherwise general purpose computer into a special purpose computer programmed to perform the recited function of “comparing.” See Finisar, 523 F.3d at 1340. 19 In summary, because Federal Circuit precedent dictates that the corresponding structure for performing a specialized function, as here, cannot just be a general purpose computer, the Specification of the ’419 patent fails to disclose sufficient structure for performing the recited function of “comparing.”” slip op. at 18
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“Table 1, that purportedly identify the corresponding structure for performing the recited function of “comparing.” PO Resp. 76–77 (citing Ex. 1001, 17:20–18:20; Ex. 2008 ¶ 86). 5th Market argues that these disclosures in the Specification collectively amount to a structure in the form of an algorithm that transforms an otherwise general purpose computer into a special-purpose computer programmed to perform the recited function of “comparing.” Id. at 77–78 (citing Ex. 2008 ¶ 87). In its Reply, CME contends that the ’419 patent does not disclose an algorithm for comparing orders, nor does it explain how a computer may be programmed to compare algorithmic orders with algorithmic or non-algorithmic orders. Pet. Reply 15. As we explained in the claim construction section above, upon reviewing the disclosures in the Specification of the ’419 patent relied upon by 5th Market in its Patent Owner Response, the Specification of the ’419 patent fails to disclose sufficient structure for performing the recited function of “comparing.” In other words, the conditions included in Table 1 of the ’419 patent, by themselves, do not set forth a well-defined or otherwise recognizable sequence of steps for comparing orders and, therefore, do not amount to a specific algorithm that transforms an otherwise general purpose computer into a special purpose computer programmed to perform the recited function of “comparing.” See Blackboard, 574 F.3d at 1384; Finisar, 523 F.3d at 1340. Consequently, we conclude that CME has demonstrated by a preponderance of evidence that claims 1–23, each of 21 which recites the claim phrase “means for comparing,” are indefinite under § 112 ¶ 2.” slip op. at 21
Patent outcomesUS 6,418,419 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 6,418,419 - Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.All claims unpatentablePTAB · Mar 13, 2014 · CBM2013-00004 · APJ Joni Y Chang · CBM · Final written decision
Claims 1–78 are unpatentable: anticipated by Burge and Nakagawa, and claims 16, 17, 47, 63, and 64 are also obvious over the stated combinations with Herrod.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Under 35 U.S.C. § 120, a patent claim is entitled to the benefit of the filing date of an earlier-filed application only if the disclosure of the earlier-filed application provides written description support for the patent claim as required by 35 U.S.C. § 112. In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). The test for determining compliance with the written description requirement under 35 U.S.C. § 112, ¶ 1, is whether the original disclosure of the earlier-filed application reasonably would have conveyed to one with ordinary skill in the art that the inventor had possession the claimed subject matter at the time of the earlier-filed application. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). The specification must convey with reasonable clarity to those skilled in the art that the inventor was in possession of the claimed subject matter, as of the filing date of the earlier-filed application. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563- 64 (Fed. Cir. 1991).” slip op. at 18
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“Upon reviewing the parties’ arguments and supporting evidence, we have reevaluated our determination in the Decision on Institution (Dec. 19- 30) that certain claim features lack written description support in the ’650 application. For example, we agree with Progressive that the claim term “a level of risk” does not require a level of risk to be “assigned based at least in part on the indicated level of willingness of the driver to allow at least one aspect to be recorded.” PO Resp. 10. Nevertheless, based on the record before us, we determine that the original disclosure of the ’650 application does not support the claimed subject matter set forth in claims 1-78 of the ’598 patent. For the reasons stated below, we determine that claims 1-78 of” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“C. Principles of Law To establish anticipation under 35 U.S.C. § 102, each and every element in a claim, arranged as is recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).” slip op. at 30
- ExcludeMotion to exclude, deniedDenied
“We disagree with Liberty that Mr. Zatkovich must be qualified both in the field of insurance and in the field of vehicle telematics to give reliable testimony in this proceeding. It is only the “hypothetical” person of ordinary skill in the art who possesses ordinary skill in each of the fields involved in a claimed invention. In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“The person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant prior art.”). The qualifications of Mr. Zatkovich, as summarized in his curriculum vitae (Ex. 2014), qualify him to give expert testimony on the subject of vehicle telematics, computer systems, and network communications. With regard to Mr. Zatkovich’s alleged lack of 5 With some enumerated exceptions, the Federal Rules of Evidence apply to covered business method patent review. 37 C.F.R. § 42.62. The Federal Rule of Evidence 702 entitled “Testimony by Experts” states: If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case. 59 ordinary skill on the specific subject of insurance, the Board weighs his testimony accordingly, taking into account the limited extent of his expertise. We also disagree that Mr. Zatkovich’s technical experience must have been acquired prior to January 1996. Under the Federal Rule of Evidence 702, a witness who is qualified as an expert by knowledge, skill, experience, training or education may testify in the form of an opinion. Liberty has not shown that Rule 702 of the Federal Rules of Evidence requires the witness to have particular experience with the specific subject matter of the ’598 patent, or requires the relevant experience of the witness to have been acquired during the January 1996 time-frame.” slip op. at 59
Patent outcomesUS 8,090,598 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,090,598
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.