• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01450 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 5, 23, 25, 26, 28, 29, and 34–36 were unpatentable under § 103.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Pet.”) requesting inter partes review of claims 1–3, 5, 23, 25, 26, 28, 29, and 34–36 of U.S. Patent No. 8,692,659 B2 (Ex. 1002, “the ’659 patent”). Magna Electronics Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. An inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 1–3, 5, 23, 25, 26, 28, 29, and 34–36 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 5

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “As best understood from FIG. 16B, extension 8513 of header console 8512 extends downwardly behind the upper portion of windshield W (such portion of windshield W which typically includes a shadeband element as known in the art) and includes a forked portion 8513a, such as an inverted V-shaped or U-shaped portion, which straddles a mirror mounting button 8536 that is mounted to windshield W. Optionally, the downwardly extending portion of header/header console 8512 may be mounted to the inner surface of windshield W, such as by an adhesive or may be releasably, mechanically attached such as by being received by and/or supported by one or more attaching members adhered to the inner surface of the windshield, such as by attachment members, including rails, channels, or the like. Ex. 1012, col. 28, ll. 15–28 (emphasis added). The above disclosure in the ’287 patent describes a console that straddles (and thus is local to) a mirror mounting button and is mounted to a vehicle windshield using attachment members, such as rails or channels. Id. As such, the above disclosure in the ’287 patent is sufficient to show that the inventors had possession of the claimed attachment members. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found

    “obvious to combine the cited teachings of Schofield and Klappenbach. Petitioner argues that it would have been obvious to use the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach because the vehicle headlight dimming control in Schofield provides more functionality. Id. at 46–48 (citing Ex. 1113 ¶¶ 56, 59). Petitioner’s argument explains why one of ordinary skill in the art would select the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach, but does not explain why it would have been obvious to mount the vehicle headlight dimming control in Schofield using the fastening device and housing in Klappenbach. Petitioner argues that the housing in Klappenbach would advantageously seal the components of the camera in Schofield to prevent intrusion of elements from the environment. Pet. 47–48 (citing Ex. 1113 ¶ 58). Petitioner’s argument is not persuasive because Schofield teaches that the imaging sensor module disclosed therein already is protected from such intrusions. Ex. 1007, col. 3, l. 67–col. 4, l. 4. Further, the housing in Klappenbach is not just a protective housing for sensor components, but, rather, a structure designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, col. 3, ll. 46–67, Fig. 1. Petitioner also argues that the fastening device in Klappenbach can be preinstalled. Pet. 48 (citing Ex. 1113 ¶ 58). Petitioner does not explain, though, why that would have made it obvious to use the fastening device and housing in Klappenbach with the vehicle headlight dimming control in Schofield. Moreover, Petitioner does not provide a specific explanation or identify specific evidence showing that it would have been obvious to one of ordinary skill in the art that the housing in Figures 1 and 2 of Klappenbach is, or can be, configured to accommodate a forward facing camera generally or the vehicle headlight dimming control in Figure 1 of Schofield particularly. Pet. 45–48. Therefore, on this record, Petitioner has not shown sufficiently that it would have been obvious to one of ordinary skill in the art to combine the cited teachings of Blank, Schofield, and Klappenbach in the manner proposed by Petitioner.” slip op. at 11

  Claim construction§ 103 obviousness§ 112 disclosure
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01436 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 78–80 and 83–89 were unpatentable under § 103.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Pet.”) requesting inter partes review of claims 78–80 and 83–89 of U.S. Patent No. 8,692,659 B2 (Ex. 1002, “the ’659 patent”). Magna Electronics Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. An inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 78–80 and 83–89 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “written description of an attachment member attached to a vehicle windshield and local to a mirror mounting button, as recited in the challenged claims. Pet. 10–13 (citing Ex. 1913 ¶¶ 31–33, 40, 44–46). Petitioner’s argument is not persuasive. The ’287 patent discloses the following: As best understood from FIG. 16B, extension 8513 of header console 8512 extends downwardly behind the upper portion of windshield W (such portion of windshield W which typically includes a shadeband element as known in the art) and includes a forked portion 8513a, such as an inverted V-shaped or U-shaped portion, which straddles a mirror mounting button 8536 that is mounted to windshield W. Optionally, the downwardly extending portion of header/header console 8512 may be mounted to the inner surface of windshield W, such as by an adhesive or may be releasably, mechanically attached such as by being received by and/or supported by one or more attaching members adhered to the inner surface of the windshield, such as by attachment members, including rails, channels, or the like. Ex. 1012, col. 28, ll. 15–28 (emphasis added). The above disclosure in the ’287 patent describes a console that straddles (and thus is local to) a mirror mounting button and is mounted to a vehicle windshield using attachment members, such as rails or channels. Id. As such, the above disclosure in the ’287 patent is sufficient to show that the inventors had possession of the claimed attachment member. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “camera.” Ex. 1002, col. 53, l. 63–col. 54, l. 2. Petitioner argues that the housing in Klappenbach corresponds to the claimed structure configured to accommodate a forward facing camera, and that the vehicle headlight dimming control in Schofield includes the claimed forward facing camera. Pet. 39–42. The housing in Klappenbach is designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, col. 3, ll. 46–67, Fig. 1. Petitioner does not provide a specific explanation or identify specific evidence showing that the housing in Figures 1 and 2 of Klappenbach also is configured to accommodate a forward facing camera. Pet. 39–42. Therefore, on this record, Petitioner has not shown sufficiently that the combined teachings of Blank, Schofield, Klappenbach, and Carter would have taught or suggested the limitation “said structure is configured to accommodate a forward facing camera” to one of ordinary skill in the art.” slip op. at 11

  § 103 obviousness§ 112 disclosure
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01431 · APJ Phillip J Kauffman · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 62–66 and 69 were unpatentable under § 103.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 62–66 and 69 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. B.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “§ 112, first paragraph, does not require the description to be literally the same as the claim language at issue. In re Wertheim, 541 F.2d 257, 265 (CCPA 1976); In re Lukach, 442 F.2d 967, 969 (CCPA 1971). Rather, by whatever language, the specification only must convey with reasonable clarity to those skilled in the art that, as of the filing date of the application, the inventor was in possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991); see also Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing with approval the standard in Vas Cath, and stating “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”). Petitioner contends that pursuant to the holding in Lockwood, the specific combination found in each of the challenged claims of the ’659 patent must be disclosed in the ’287 patent in order to meet the written description standard. See Pet. 10–17 (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997)). To the extent that Petitioner suggests that the combination must be disclosed in a single embodiment, we disagree. Rather, in Lockwood, the court relied upon the written description standard found in Vas-Cath, and held that because one of the continuations in the chain of five applications did not describe the claim features, the later patent could not claim priority to the earlier patent. Lockwood, 107 F3d at 1571–72 (citing Vas-Cath Inc., 935 F.2d at 1563–64). Consequently, we agree with Patent Owner that the written description requirement does not compel that a single embodiment fully describe the invention. See Prelim. Resp. 9–12. With this standard in mind we analyze Petitioner’s contentions.” slip op. at 7

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner

    “We have reviewed the parties’ assertions and supporting evidence, and, for the reasons discussed below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that the ’287 patent is prior art.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “b) Rationale Petitioner’s rationale for the proposed modification is not persuasive. First, Petitioner contends that it would have been obvious to utilize Klappenbach’s housing 2 in Blank’s device to provide rain sensor functionality. Pet. 37. Then Petitioner reasons it would have been obvious to replace Klappenbach’s rain sensor with the improved functionality of Schofield’s camera that includes rain sensing capability. See id. at 43. Petitioner’s argument explains why one of ordinary skill in the art would select Schofield’s camera, rather than the Klappenbach’s rain sensor, but does not explain why it would have been obvious to mount Schofield’s camera in Klappenbach’s housing. See Prelim. Resp. 32–33. Second, Petitioner reasons that Klappenbach’s housing would advantageously seal the components of Schofield’s camera to prevent intrusion of elements from the environment. Pet. 38, 43–44 (citing Ex. 1713 ¶ 59). However, Schofield’s camera already is protected from such intrusions. See Ex. 1007, 3:67–4:4; Prelim. Resp. 32, 34. Third, Petitioner reasons that Klappenbach’s technique of attaching the fastening device during windshield manufacture is a manufacturing advantage because the sensor is not mounted until after the motor vehicle is built. Pet. 37–38 (citing Ex. 1010, 2:11–16; Ex. 1713 ¶ 58). As discussed above, Klappenbach’s device is mounted pressed against and at the angle of the windshield, while Schofield’s is mounted spaced from the windshield and horizontal. Petitioner does not explain persuasively how Klappenbach’s technique provides a manufacturing advantage for a device such as Schofield’s camera that is mounted in a different manner. See Prelim. Resp. 32 (noting this advantage is particular to a refractive rain sensor). Further, Petitioner’s reasoning is contradictory in that it touts that Schofield’s camera “advantageously eliminates the requirement for optical coupling,” yet relies upon Klappenbach’s mounting technique for optical coupling. See Ex. 1713 ¶ 59. 5. Conclusion For at least the foregoing reasons, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claims 62, 63, 65, 66, and 69 would have been obvious over Blank, Schofield, Klappenbach, and Batavia. C. OBVIOUSNESS OVER BLANK, SCHOFIELD, KLAPPENBACH, BATAVIA, CARTER, AND ADMITTED PRIOR ART” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01430 · APJ Phillip J Kauffman · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 14–21 and 24 were unpatentable under § 103.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 14–21 and 24 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. B.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “specific combination found in each of the challenged claims of the ’659 patent must be disclosed in the ’287 patent in order to meet the written description standard. See Pet. 10–16 (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997)). To the extent that Petitioner suggests that the combination must be disclosed in a single embodiment, we disagree.. Lockwood contains no such explicit holding. Rather, in Lockwood, the court relied upon the written description standard found in Vas-Cath, and held that because one of the continuations in the chain of five applications did not describe the claim features, the later patent could not claim priority to the earlier patent. Lockwood, 107 F3d at 1571–72 (citing Vas-Cath Inc., 935 F.2d at 1563–64). Consequently, we agree with Patent Owner that the written description requirement does not compel that a single embodiment fully describe the invention. See Prelim. Resp. 9–12. With this standard in mind we analyze Petitioner’s contentions.” slip op. at 7

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “a) Structure Configured to Accommodate a Camera Independent claim 1 requires a structure configured to accommodate a forward facing camera. Petitioner relies on Klappenbach’s housing 2 as the claimed structure to accommodate Schofield’s forward facing camera (dimming control 12 having image sensor module 14 that may be a video camera). Pet. 40–44. As Petitioner acknowledges, Klappenbach’s rain sensor does not include a camera; rather, Klappenbach’s outer housing part 2 is designed specifically to accommodate transmitter 10 and receiver 11. See id. at 43; Ex. 1010, 3:46–67, Figs. 1, 2. Rather, Klappenbach’s outer housing part 2 is designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, 3:46–67, Fig. 1. Klappenbach’s sensor is pressed against, and at the angle of the windshield. Id. at 1:45–59; Figs. 1, 2. In contrast, Schofield’s camera is spaced from the windshield, and oriented horizontally. See Ex. 1007, Fig. 1; Prelim. Resp. 27–28. Petitioner does not provide a specific explanation or identify specific evidence showing that the housing in Figures 1 and 2 of Klappenbach also is configured to accommodate a forward facing camera. See Pet. 36–38, 41– 44. Consequently, Petitioner has not addressed persuasively this difference between the prior art and the claimed subject matter, nor explained sufficiently how claim 56 is unpatentable. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966) (factor 2); 37 C.F.R. § 42.104(b)(4).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “b) Rationale Petitioner’s rationale for the proposed modification is not persuasive. First, Petitioner contends that it would have been obvious to utilize Klappenbach’s housing 2 in Blank’s device to provide rain sensor functionality. Pet. 37. Then Petitioner reasons it would have been obvious to replace Klappenbach’s rain sensor with the improved functionality of Schofield’s camera that includes rain sensing capability. See id. at 43. Petitioner’s argument explains why one of ordinary skill in the art would select Schofield’s camera rather than the Klappenbach’s rain sensor, but does not explain why it would have been obvious to mount Schofield’s camera in Klappenbach’s housing. See Prelim. Resp. 32–33. Second, Petitioner reasons that Klappenbach’s housing would advantageously seal the components of Schofield’s camera to prevent intrusion of elements from the environment. Pet. 38, 43–43 (citing Ex. 1613 ¶ 58). However, Schofield’s camera already is protected from such intrusions. See Ex. 1007, 3:67–4:4; Prelim. Resp. 32, 34. Third, Petitioner reasons that Klappenbach’s technique of attaching the fastening device during windshield manufacture is an advantage because the sensor is not mounted until after the motor vehicle is built. Pet. 38 (citing Ex. 1010, 2:11–16; Ex. 1613 ¶ 58). As discussed above, Klappenbach’s device is mounted pressed against and at the angle of the windshield, while Schofield’s is mounted spaced from the windshield and horizontal. Petitioner does not explain persuasively how Klappenbach’s technique provides a manufacturing advantage for a device such as Schofield’s camera that is mounted in a different manner. See Prelim. Resp. 32 (noting this advantage is particular to a refractive rain sensor). Further, Petitioner’s reasoning is contradictory in that it touts that Schofield’s camera “advantageously eliminates the requirement for optical coupling,” yet relies upon Klappenbach’s mounting technique for optical coupling. See Ex. 1613 ¶ 59.” slip op. at 14

  § 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01451 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 90–97 were unpatentable under § 103.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Pet.”) requesting inter partes review of claims 90–97 of U.S. Patent No. 8,692,659 B2 (Ex. 1002, “the ’659 patent”). Magna Electronics Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. An inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 90–97 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 6

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “written description of the attachment members attached to a vehicle windshield and local to a mirror mounting button, as recited in the challenged claims. Pet. 11–13 (citing Ex. 2013 ¶¶ 31–33, 40, 44–46). Petitioner’s argument is not persuasive. The ’287 patent discloses the following: As best understood from FIG. 16B, extension 8513 of header console 8512 extends downwardly behind the upper portion of windshield W (such portion of windshield W which typically includes a shadeband element as known in the art) and includes a forked portion 8513a, such as an inverted V-shaped or U-shaped portion, which straddles a mirror mounting button 8536 that is mounted to windshield W. Optionally, the downwardly extending portion of header/header console 8512 may be mounted to the inner surface of windshield W, such as by an adhesive or may be releasably, mechanically attached such as by being received by and/or supported by one or more attaching members adhered to the inner surface of the windshield, such as by attachment members, including rails, channels, or the like. Ex. 1012, col. 28, ll. 15–28 (emphasis added). The above disclosure in the ’287 patent describes a console that straddles (and thus is local to) a mirror mounting button and is mounted to a vehicle windshield using attachment members, such as rails or channels. Id. As such, the above disclosure in the ’287 patent is sufficient to show that the inventors had possession of the claimed attachment members. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Petitioner argues that the ’287 patent does not contain sufficient written description of “how the ‘rails, channels or the like’ would adhere to the windshield to permit co-engagement as the inverted U or V-shaped portion 8513a engages the mirror mounting button 8536.” Pet. 13 (citing Ex. 2013 ¶¶ 33, 40). Petitioner’s argument is not persuasive because the challenged claims of the ’659 patent do not recite that the attachment members or structure supported by the attachment members engage the mirror mounting button. See Ariad, 598 F.3d at 1351 (“[T]he test for sufficiency is whether the disclosure . . . reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.”) (emphasis added). Further, as discussed above, the ’287 patent explains that the console supported by the attachment members straddles the mirror mounting button. Ex. 1012, col. 28, ll. 15–28.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner

    “We also are not persuaded, on this record, that it would have been obvious to combine the cited teachings of Schofield and Klappenbach. Petitioner argues that it would have been obvious to use the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach because the vehicle headlight dimming control in Schofield provides more functionality. Id. at 42–44 (citing Ex. 2013 ¶ 56). Petitioner’s argument explains why one of ordinary skill in the art would select the vehicle headlight dimming control in Schofield rather than the rain sensor in Klappenbach, but does not explain why it would have been obvious to mount the vehicle headlight dimming control in Schofield using the fastening device and housing in Klappenbach. Petitioner argues that the housing in Klappenbach would advantageously seal the components of the camera in Schofield to prevent intrusion of elements from the environment. Pet. 43–44 (citing Ex. 2013 ¶ 58). Petitioner’s argument is not persuasive because Schofield teaches that the imaging sensor module disclosed therein already is protected from such intrusions. Ex. 1007, col. 3, l. 67–col. 4, l. 4. Further, the housing in Klappenbach is not just a protective housing for sensor components, but, rather, a structure designed specifically to accommodate transmitter 10 and receiver 11, as shown in Figure 1. Ex. 1010, col. 3, ll. 46–67, Fig. 1. Petitioner also argues that the fastening device in Klappenbach can be preinstalled. Pet. 44 (citing Ex. 2013 ¶ 58). Petitioner does not explain, though, why that would have made it obvious to use the fastening device and housing in Klappenbach with the vehicle headlight dimming control in Schofield. Moreover, Petitioner does not provide a specific explanation or identify specific evidence showing that it would have been obvious to one of ordinary skill in the art that the housing in Figures 1 and 2 of Klappenbach is, or can be, configured to accommodate a forward facing camera generally or the vehicle headlight dimming control in Figure 1 of Schofield particularly. Pet. 41–44. Therefore, on this record, Petitioner has not shown sufficiently that it would have been obvious to one of ordinary skill in the art to combine the cited teachings of Blank, Schofield, Klappenbach, and Carter in the manner proposed by Petitioner.” slip op. at 11

  Claim construction§ 103 obviousness§ 112 disclosure
  Patents in suitUS 8,692,659
• TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution denied
  PTAB · Dec 21, 2015 · IPR2015-01429 · APJ Phillip J Kauffman · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 56–61 were unpatentable under § 103.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 56–61 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. B.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “1002, 1:7–23. For a claim to gain the benefit of the filing date of an earlier filed application under 35 U.S.C. § 120, each application in the chain leading back to that earlier application must comply with the written description requirement of 35 U.S.C. § 112, first paragraph. See, e.g., Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007). Satisfaction of the written description requirement under 35 U.S.C. § 112, first paragraph, does not require the description to be literally the same as the claim language at issue. In re Wertheim, 541 F.2d 257, 265 (CCPA 1976); In re Lukach, 442 F.2d 967, 969 (CCPA 1971). Rather, by whatever language, the specification only must convey with reasonable clarity to those skilled in the art that, as of the filing date of the application, the inventor was in possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991); see also Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing with approval the standard in Vas Cath, and stating “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”).” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “and, for the reasons discussed below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that the ’287 patent is prior art.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found

    “b) Rationale Petitioner’s rationale for the proposed modification is not persuasive. First, Petitioner contends that it would have been obvious to utilize Klappenbach’s housing 2 in Blank’s device to provide rain sensor functionality. Pet. 37. Then Petitioner reasons it would have been obvious to replace Klappenbach’s rain sensor with the improved functionality of Schofield’s camera that includes rain sensing capability. See id. at 43. Petitioner’s argument explains why one of ordinary skill in the art would select Schofield’s camera rather than the Klappenbach’s rain sensor, but does not explain why it would have been obvious to mount Schofield’s camera in Klappenbach’s housing. See Prelim. Resp. 32–33. Second, Petitioner reasons that Klappenbach’s housing would advantageously seal the components of Schofield’s camera to prevent intrusion of elements from the environment. Pet. 38, 44–45 (citing Ex. 1513 ¶ 58). However, Schofield’s camera already is protected from such intrusions. See Ex. 1007, 3:67–4:4; Prelim. Resp. 32, 34. Third, Petitioner reasons that Klappenbach’s technique of attaching the fastening device during windshield manufacture is an advantage because the sensor is not mounted until after the motor vehicle is built. Pet. 37–38 (citing Ex. 1010, 2:11–16; Ex. 1513 ¶ 58). As discussed above, Klappenbach’s device is mounted pressed against and at the angle of the windshield, while Schofield’s is mounted spaced from the windshield and horizontal. Petitioner does not explain persuasively how Klappenbach’s technique provides a manufacturing advantage for a device such as Schofield’s camera that is mounted in a different manner. See Prelim. Resp. 32 (noting this advantage is particular to a refractive rain sensor). Further, Petitioner’s reasoning is contradictory in that it touts that Schofield’s camera “advantageously eliminates the requirement for optical coupling,” yet relies upon Klappenbach’s mounting technique for optical coupling. See Ex. 1513 ¶ 59.” slip op. at 14

  § 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 8,692,659
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 2, 2015 · IPR2014-00825 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, 6, 7, 10, 13, 19, and 20 are unpatentable as obvious; the petition did not prove claims 2, 5, 8, 9, 11, 12, and 14–18 unpatentable.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “Applying these principles to the instant case, in an inter partes review, the burden of persuasion is on Petitioner to prove “unpatentability by a preponderance of the evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the Patent Owner. See Dynamic Drinkware, 800 F.3d at 1379. (explaining petitioner “had the burden of persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifted”). Petitioner also has the initial burden of production. Id. Petitioner satisfied its burden of production by arguing in its Petition that Spadaro was prior art under § 102(e) and, in combination with one or more other prior art references, would have rendered claims 1–20 obvious at the time the invention was made under § 103(a). Pet. 4–5, 13–36.” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “Even if we were to find that Petitioner’s citation to two pages of its declarant’s testimony, without explanation, does not amount to improper incorporation by reference, the testimony of Petitioner’s declarant, Leonard J. Forys, Ph.D., is insufficient to show one of ordinary skill in the art was in possession of the subject matter of the claims at issue. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). First, the testimony of Petitioner’s declarant, Dr. Forys, is conclusory, merely quoting some portions of the ’357 patent without adequately explaining how the quoted portions relate to the subject matter recited by the claims. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, during cross-examination Dr. Forys explained his analysis, “I just went through the ’167 patent and just picked a few things out that seem to indicate that they are already there. . . . So it was illustrative. It’s not a detailed analysis. It is just suggestive.” Ex. 2006, 48:1–7.” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “The ’357 patent does not set forth a special definition for “call application management system.” As confirmed by Dr. Forys (id.), the plain language of the claim specifies the function required to be performed by the call application management system—connecting calls responsive to receiving a request to connect the call. Although Dr. Forys found Patent Owner’s proposed construction to be “reasonable,” Patent Owner’s proposed construction unnecessarily introduces the term “call processing,” which is not recited by the claim itself and on its face seems broader than the recited function of a call application management system—to connect a call. We do not agree with Patent Owner that a call application management system must perform examples of call processing described by the Specification, but not recited in the claim. Limitations from embodiments are not to be imported into the claims. See In re Van Geuns, 988 F.2d at 1184. Furthermore, we find that Patent Owner’s contention— the name “the call application management system of Claim 1 would be understood [by one of ordinary skill in the art] to manage, from start to finish, each call placed or received at the plurality of prisons” (PO Resp. 6)—places too much weight on the term “management” without sufficiently addressing the term “application.” We credit the testimony of Petitioner’s declarant, who disagrees that call application management system is 25 required to manage “all call processing, ‘from start to finish.’” Ex. 1020 ¶ 8 (emphasis omitted). Therefore, in light of the plain language of the claim, the Specification of the ’357 patent, and according the testimony of Patent Owner’s declarant and Petitioner’s declarant appropriate weight, we construe “call application management system” to mean a system that performs the enumerated function—“connecting a call to or from the telephone terminals over a telephone carrier network responsive to receiving a request for connecting the call.”” slip op. at 25

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony14 systems comports with the level of ordinary skill in the art reflected in the prior art of record, which relate to telephone communication systems. Petitioner has not explained sufficiently why the broader field of communications systems is a more appropriate area of academic or industry experience than telephony systems. Thus, we generally adopt Patent Owner’s proposed academic or industry experience in telephony systems. Therefore, one of ordinary skill in the art would have a Bachelor of Science degree in electrical engineering, computer science, or an equivalent field, as well as at least three years of academic or industry experience in telephony systems.” slip op. at 29

  Patent outcomesUS 7,529,357 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,529,357
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 2, 2015 · IPR2014-00824 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, 6, 7, 10, 19, and 20 are unpatentable over Spadaro and Hodge; claim 13 is unpatentable over Spadaro, Hodge, and Cree. Claims 2, 5, 8, 9, 11, 12, and 14–18 were …

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “the burden of persuasion is on Petitioner to prove “unpatentability by a preponderance of evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the Patent Owner. See id. (explaining petitioner “had the burden of 11 Dynamic Drinkware issued after the time of the trial hearing and post-hearing briefing. 11 persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifted”). Petitioner also has the initial burden of production. Id. Petitioner satisfied its burden of production by arguing in its Petition that Spadaro was prior art under § 102(e) and, in combination with one or more other prior art references, would have rendered claims 1–20 obvious at the time the invention was made under § 103(a). Pet. 4–5, 19–35.” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “production under § 103(c)(1), Petitioner contends it carried its burden of production to show that the ’167 patent (grandparent) sufficiently would have conveyed to one of ordinary skill in the art that the Patent Owner had possession of the claimed subject matter and, therefore, the ’260 patent is entitled to the benefit of the filing date of the ’167 patent. Reply 7. As Petitioner recognizes (Reply 6), a claim in an application is entitled, under 35 U.S.C. § 120, to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims in the later application, as required by 35 U.S.C. § 112. 35 U.S.C. § 120; In re Chu, 66 F.3d 292 (Fed. Cir. 1995). Petitioner’s argument consists of a single paragraph identifying claim numbers and locations where the ’167 patent purportedly describes the subject matter of most, but not all, of the claims at issue and a citation to a single paragraph in its declarant’s supplemental declaration supporting Petitioner’s Reply. Reply 7 (listing claims 2, 8, 9, 11, and 14–18, but not listing claims 5 and 12; citing Ex. 1020 ¶ 16).” slip op. at 21

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “The ’260 patent does not set forth a special definition for “call application management system.” As confirmed by Dr. Forys (id.), the plain language of the claim specifies the function required to be performed by the call application management system—connecting calls responsive to 26 receiving a request to connect the call. Although Dr. Forys found Patent Owner’s proposed construction to be “reasonable,” Patent Owner’s proposed construction unnecessarily introduces the term “call processing,” which is not recited by the claim itself and on its face seems broader than the recited function of a call application management system—to connect a call. We do not agree with Patent Owner that a call application management system must perform examples of call processing described by the Specification, but not recited in the claim. Limitations from embodiments are not to be imported into the claims. See In re Van Geuns, 988 F.2d at 1184. Furthermore, we find that Patent Owner’s contention— the name “the call application management system would be understood [by one of ordinary skill in the art] to manage, from start to finish, each call placed or received at the plurality of prisons” (PO Resp. 6)—places too much weight on the term “management” without sufficiently addressing the term “application.” We credit the testimony of Petitioner’s declarant, who disagrees that call application management system is required to manage “all call processing, ‘from start to finish.’” Ex. 1020 ¶ 8. Therefore, in light of the plain language of the claim, the Specification of the ’260 patent, and according the testimony of Patent Owner’s declarant and Petitioner’s declarant appropriate weight, we construe “call application management system” to mean a system that performs the enumerated function—“connecting a call to or from the telephone terminals over a telephone carrier network responsive to receiving a request for connecting the call.”” slip op. at 26

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties propose similar levels of ordinary skill in the art and do not directly challenge the other’s proposal. We consider the level of ordinary skill in the art to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The prior art references, like the ’260 patent, relate to telephone communication systems. See Ex. 1001, 1:60–62 (indicating the technical field relates to inmate management and call processing); Ex. 1004, 1:7–9 (indicating the field of the invention relates to the processing of voice telephone calls); Ex. 1005, 1:7–9 (indicating the field of the invention relates to telephone communication systems). In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony15 systems comports with the level of ordinary skill in the art reflected in the prior art of record, which relate to telephone communication systems. Petitioner has not explained sufficiently why the broader field of communications systems is a more appropriate area of academic or industry 15 MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 2112 (6th ed. 2003) (defining telephony as “[t]he transmission of speech to a distant point by means of electric signals”) (Ex. 3001). 30 experience than telephony systems. Thus, we generally adopt Patent Owner’s proposed academic or industry experience in telephony systems. Therefore, one of ordinary skill in the art would have a Bachelor of” slip op. at 30

  Patent outcomesUS 8,340,260 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,340,260
• Boku, Inc. / Boku Account Services, Inc. v. Xilidev, Inc.Some claims unpatentable
  PTAB · Nov 2, 2015 · CBM2014-00148 · APJ Justin T Arbes · CBM · Final written decision

  Claims 1–18 and 20–23 are unpatentable; claim 19 was not shown unpatentable because Gerson does not disclose its product identification code and quantity limitations.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable

    “the particular function of the limitation and then identifying the corresponding structure for that function in the specification. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015). A structure is corresponding “only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001) (quotation omitted). Additionally, the corresponding structure of a means-plus-function limitation must be “more than simply a general purpose computer or microprocessor” to avoid pure functional claiming. Williamson, 792 F.3d at 1352 (citing Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)). If a special purpose computer is required to carry out the recited function, the specification must disclose an “algorithm for performing the claimed function,” id., which may be expressed “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure,” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citation omitted). “[I]f a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim, a means-plus-function clause is indefinite” under 35 U.S.C. § 112, second paragraph. Williamson, 792 F.3d at 1352.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “discloses every limitation of claims 12–16 and 18. For example, with respect to claim 12, Petitioner asserts, with supporting testimony from Dr. Shamos, that Gerson discloses (1) a “payment authorization source” (i.e., bank or other financial institution) configured to authorize payment for a transaction; (2) a “payment resolution module” (i.e., central processing computer) in communication with the bank or other financial institution; (3) a “hand-held device” (i.e., user’s mobile phone) in communication with the central processing computer that transmits an authorization request (i.e., payment transaction) to the central processing computer; and (4) a “confirmation device” (i.e., POST) that receives an “authorization code” (i.e., transaction-specific authorization code) from the user and authorizes the transaction in response to validating the authorization code. -140 Pet. 69–73; see Ex. 1003, 83–90. Petitioner further argues that Gerson necessarily includes an “I/O interface” because the central processing computer transmits (i.e., outputs) the transaction-specific authorization code to the mobile phone via a “wireless telecommunications link,” and such transmission requires an I/O interface between the mobile phone and central processing computer. -140 Pet. 71–72 (citing Ex. 1005, 6 (ll. 8–14)). We also have reviewed Petitioner’s arguments and evidence for the other challenged claims, and are persuaded that Petitioner has met its burden of demonstrating anticipation by a preponderance of the evidence. Based on all of the evidence of record, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 12–16 and 18 are anticipated by Gerson under 35 U.S.C. § 102(b).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “It would have been obvious to combine Gerson’s system storing the authorization code in a processor with Wronski’s database additionally storing an indication of the transaction request because in both cases the information relates to the transaction being authorized and therefore Wronski merely stores additional information about the same transaction that Gerson does. Furthermore, a user in Gerson would be motivated to combine the processor database with Wronski’s database including an indication of the transaction request because such a combination would facilitate the later retrieval of transaction specific information (such as when Gerson’s processor database is accessed by the point-of-sale system).” slip op. at 20

  • Skill levelSkill level board ownOther

    “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, 405 (2007) (quoting 35 U.S.C. § 103(a)). Dr. Shamos testifies that he believes a person of ordinary skill in the art would have had “an undergraduate degree in computer science, or equivalent work experience, and, in addition, at least two years of experience with electronic payment systems, including familiarity with databases and integration with interactive voice response software.” Ex. 1003 ¶ 14; see -140 Pet. 11. Based on the record presented, including our review of the ’168 patent and the types of problems and solutions described in the ’168 patent and cited prior art, we determine that a person of ordinary skill in the art would have had an undergraduate degree in computer science (or equivalent work experience) and at least two years of experience with electronic payment systems, including familiarity with databases. We apply this level of ordinary skill in the art for purposes of this Decision. Although a person of ordinary skill in the art may have had experience with interactive voice response software, we do not see why such experience should be required, as the ’168 patent discloses that “various communication mediums and protocols [for interacting with users were] known in the art,” of which interactive voice response is merely one example. See, e.g., Ex. 1001, col. 5, ll. 4–52.” slip op. at 18

  Patent outcomesUS 7,273,168 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 7,273,168
• Boku, Inc. / Boku Account Services, Inc. v. Xilidev, Inc.Some claims unpatentable
  PTAB · Nov 2, 2015 · CBM2014-00140 · APJ Justin T Arbes · CBM · Final written decision

  Claims 1–18 and 20–23 are unpatentable: claim 17 is indefinite, claims 12–16 and 18 are anticipated by Gerson, claims 1–11 and 20–23 are obvious over Gerson and Wronski, and claims 1–5, 7–16, 18, and 20–23 …

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable

    “the particular function of the limitation and then identifying the corresponding structure for that function in the specification. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015). A structure is corresponding “only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001) (quotation omitted). Additionally, the corresponding structure of a means-plus-function limitation must be “more than simply a general purpose computer or microprocessor” to avoid pure functional claiming. Williamson, 792 F.3d at 1352 (citing Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)). If a special purpose computer is required to carry out the recited function, the specification must disclose an “algorithm for performing the claimed function,” id., which may be expressed “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure,” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citation omitted). “[I]f a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim, a means-plus-function clause is indefinite” under 35 U.S.C. § 112, second paragraph. Williamson, 792 F.3d at 1352.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Petitioner has not shown that Gerson discloses, expressly or inherently, a hand-held device providing a product identification code and product quantity (in addition to the transaction amount), and we do not find any such disclosure in the reference. The mobile phone in Gerson only provides the purchase amount. See Ex. 1005, 3 (ll. 22–23), 7 (ll. 6–13). Further, Petitioner’s assertion that it “would have been obvious” to also provide a product identification code and product quantity is insufficient to prove anticipation. See -140 Pet. 79–80; Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255–56 (Fed. Cir. 1989) (“Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.”). Based on all of the evidence of record, we determine that Petitioner has not shown, by a preponderance of the evidence, that claim 19 is anticipated by Gerson under 35 U.S.C. § 102(b).” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable

    “It would have been obvious to combine Gerson’s system storing the authorization code in a processor with Wronski’s database additionally storing an indication of the transaction request because in both cases the information relates to the transaction being authorized and therefore Wronski merely stores additional information about the same transaction that Gerson does. Furthermore, a user in Gerson would be motivated to combine the processor database with Wronski’s database including an indication of the transaction request because such a combination would facilitate the later retrieval of transaction specific information (such as when Gerson’s processor database is accessed by the point-of-sale system).” slip op. at 20

  • Skill levelSkill level board ownDecided for petitioner

    “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, 405 (2007) (quoting 35 U.S.C. § 103(a)). Dr. Shamos testifies that he believes a person of ordinary skill in the art would have had “an undergraduate degree in computer science, or equivalent work experience, and, in addition, at least two years of experience with electronic payment systems, including familiarity with databases and integration with interactive voice response software.” Ex. 1003 ¶ 14; see -140 Pet. 11. Based on the record presented, including our review of the ’168 patent and the types of problems and solutions described in the ’168 patent and cited prior art, we determine that a person of ordinary skill in the art would have had an undergraduate degree in computer science (or equivalent work experience) and at least two years of experience with electronic payment systems, including familiarity with databases. We apply this level of ordinary skill in the art for purposes of this Decision. Although a person of ordinary skill in the art may have had experience with interactive voice response software, we do not see why such experience should be required, as the ’168 patent discloses that “various communication mediums and protocols [for interacting with users were] known in the art,” of which interactive voice response is merely one example. See, e.g., Ex. 1001, col. 5, ll. 4–52.” slip op. at 18

  Patent outcomesUS 7,273,168 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 7,273,168

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.