• Avail Medsystems, Inc. v. Teladoc Health, Inc.Institution denied
  PTAB · Jul 21, 2022 · IPR2022-00444 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any of claims 1–20 was unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “A. Legal Standards Petitioner has the burden of proof. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”).” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner notes both parties assert a similar educational background, but they differ on the kind of additional practical experience a skilled artisan would have had––i.e., two years of research or experience in teleconferencing systems versus two years of experience in robotics or telemedicine. Id. at 10. However, Patent Owner does not explain, in application, how the two years of research or experience in teleconferencing systems versus telemedicine affects the patentability analysis in this case. See generally Prelim. Resp. And Patent Owner argues that regardless of which level of skill is adopted the opinions of Petitioner’s expert, Dr. Stone, “should be given little or no weight because Dr. Stone does not have the requisite level of skill to testify from the perspective of a [skilled artisan].” Id. at 11–12. For purposes of this Decision, we accept Petitioner’s contention regarding the level of skill that a skilled artisan would have had at the time of the invention because it is not evident that the difference between the two years of research or experience in teleconferencing systems versus telemedicine would have any meaningful effect on our determination of the issues presented. Regarding Patent Owner’s argument about whether the background of Petitioner’s expert qualifies him to offer testimony from the perspective of a skilled artisan, we address that issue below (see infra § II.D.1.a.3).” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable. The opinions would not be based on any specialized knowledge, training, or experience that would be helpful to the factfinder. In fact, “[a]dmitting testimony from a person ... with no skill in the pertinent art serves only to cause mischief and confuse the factfinder.” [Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362 (Fed. Cir. 2008)]. That testimony would “amount[ ] to nothing more than advocacy from the witness stand.” Id. at 1364–65. Kyocera, 22 F.4th at 1376–77. We find substantially the same fact pattern presents itself in this case. In particular, the definition of a skilled artisan we have adopted for this Decision, which was proposed by Petitioner and Dr. Stone, requires at least two years of research or work experience in designing or engineering teleconferencing systems, such as those used in telemedicine (see supra § II.B). Although Dr. Stone has advanced degrees in electrical engineering and extensive experience with medical devices (see Ex. 1002 ¶¶ 3–12; Ex. 1003, 1–4, 8–11), he lacks specific experience researching or engineering teleconferencing systems, such as those used in telemedicine. We agree with Patent Owner that Dr. Stone’s vague reference to “numerous experiences with teleconferencing” and to having performed “design reviews of telemedicine devices” (Ex. 1002 ¶ 13 (emphasis added)) falls short of establishing two years of research or work experience in designing or engineering teleconferencing systems. Therefore, it would be inappropriate for us to consider any testimony by Dr. Stone on any issue that is analyzed through the lens of an ordinarily skilled artisan.7” slip op. at 25

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

    “The evidence from King that Petitioner cites may reasonably support a finding that a skilled artisan would have known to use the auxiliary video port 70 of mobile robot 12 to connect King’s boom-mounted video camera (see Ex. 1010 ¶ 18; Ex. 1011 ¶¶ 3, 14), but it fails to demonstrate with any particularity a reason why a skilled artisan would have selected an articulating boom to couple a second camera to the mobile robot 12 of Wang. In fact, we do not find anywhere in the Petition a clear statement why a skilled artisan would do so; rather, the Petition focuses on why a skilled artisan would have known to couple a camera to an articulating boom. See Pet. 24, 29–32.” slip op. at 28

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,887,545
• Rideco Inc. v. Via Transportation, Inc.Instituted
  PTAB · Jun 28, 2022 · IPR2022-00286 · APJ Richard H Marschall · IPR · Institution

  Instituted IPR of claims 1–20 on all asserted grounds; the Board found a reasonable likelihood of prevailing on obviousness over Lambert, Poykko, and McCall.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “When a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition, it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB. See Sotera, Paper 12 at 18–19. With such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in the parallel district court litigation. For these reasons, the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Id. at 7. The Interim Procedure “applies to all proceedings pending before the Office,” and therefore governs our treatment of Petitioner’s Sotera 6 Petitioner’s stipulation refers to “any ground of invalidity raised in the Petition or that could have been raised in the Petition” while the stipulation in Sotera refers to “any ground raised or that could have been reasonably raised in an IPR,” but we view the language as similar enough to fall within the scope of Sotera’s analysis. Reply 4; Sotera, Paper 12 at 18–19. Petitioner arguably stipulates to a broader prohibition than the petitioner in Sotera because Petitioner’s stipulation may encompass grounds that it could not have reasonably raised in the Petition. 7 Available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf stipulation here. Id. at 9. Petitioner’s stipulation tracks the language of the Sotera stipulation that the Interim Procedure addresses and we “will not discretionarily deny institution” when Petitioner submits such a stipulation.8 Id. at 7. Because our analysis of Petitioner’s stipulation alone requires us to not exercise our discretion to deny institution under § 314(a), we need not address the parties’ remaining arguments as to application of the Fintiv factors to the facts in this case.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the invention “would have been a person having (i) a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field[;] (ii) a working knowledge of computer programming and navigation systems; and (iii) two to four years of experience with location-based systems, user interfaces and databases.” Pet. 5–6 (citing Ex. 1003 ¶ 37). Patent Owner “does not dispute Petitioner’s definition.” Prelim. Resp. 23. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’824 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Under these circumstances, where the parties now agree that the ordinary meaning should apply to the claim limitations in question and the district court adopted the same approach, we see no reason to depart from applying the ordinary meaning to those same claim limitations in this proceeding. We therefore apply the plain and ordinary meaning to “virtual bus stops” and “real-time.” In addition, we decline Patent Owner’s request that we deny institution based on alleged inconsistencies between Petitioner’s “ordinary meaning” interpretation urged here versus Petitioner’s rejected proposed constructions in the district court litigation as a sufficient basis to deny institution. As to the construction of dependent claim 8, we need not reach Petitioner’s arguments to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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 11

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

    “Petitioner also establishes sufficiently, based on the current record, that it would have been obvious to combine Lambert’s system with Poykko’s teaching to store a database of potential pickup and dropoff locations in memory, with those “virtual bus stops” accessed by Lambert’s server. See Pet. 25–26; Ex. 1005 ¶ 48. As Petitioner puts it, “it would have been obvious to a PHOSITA to similarly configure Lambert’s server to access memory including a database of stopping points associated with the rideshare system’s coverage area when dynamically selecting pickup and dropoff locations.” Id. at 26; Ex. 1003 ¶ 168. Petitioner’s assertions are adequately supported, at this stage of the proceeding, by Poykko and declarant testimony. See id. at 25–28 (citing Ex. 1003 ¶¶ 167–172). Similarly, Petitioner’s assertion that the combination of Lambert, Poykko, and McCall discloses the remaining limitations of claim 1 finds adequate support in the current record. See id. at 28–44.” slip op. at 21

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,816,824
• Godbersen-Smith Construction Company D/B/A/ Gomaco Corporation v. Guntert & Zimmerman Const. Div., Inc.All claims unpatentable
  PTAB · Jun 9, 2022 · IPR2021-00136 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–15 are unpatentable: claims 1–3, 5–7, 14, and 15 over CIII and Rio; claim 4 over CIII, Rio, and Widdrington; claims 9–13 over CIII, Rio, and Smolders; and claim 8 over CIII, Rio, and …

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Whether a document qualifies as a printed publication is a legal conclusion based on underlying factual determinations. Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). slip op. at 30

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Petitioner’s contentions Petitioner contends that a person having ordinary skill in the art” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “(f) Conclusion-motivation to combine and reasonable expectation of success In conclusion, for the reasons discussed above, we find that Petitioner has demonstrated, by a preponderance of the evidence, that a person having ordinary skill in the art would have had reasons to combine Rio’s and CIII’s teachings and would have had a reasonable expectation of success in the combination. We also find that Petitioner’s reasons are adequately supported with rational underpinnings. See KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 82

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Inc., No. 2020-1350, 2022 WL 499843 (Fed. Cir. Feb. 18, 2022), is instructive. The Federal Circuit held that the Board properly found that the objective indicia evidence “says nothing to suggest non-obviousness of one of the two types of systems and methods within the claims’ coverage,” where one of the embodiments within the scope of the claims was found in the prior art. Zaxcom, Inc., 2022 WL 499843, *2. Accordingly, because there was no long-felt unsolved need for an embodiment covered by the claims, Patent Owner does not demonstrate a nexus between the claimed invention and a long-felt need.” slip op. at 89

  Patent outcomesUS 9,908,571 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 9,908,571
• Godbersen-Smith Construction Company D/B/A/ Gomaco Corporation v. Guntert & Zimmerman Const. Div., Inc.All claims unpatentable
  PTAB · Jun 9, 2022 · IPR2021-00234 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–19 are unpatentable: claims 1, 2, and 8–14 over Swisher and Rio; claim 3 over Swisher, Rio, and [reference not shown]; claims 14–19 over Swisher, Rio, and [reference not shown]; and claims 4–7 over …

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableDecided for petitioner

    “to Patent Owner, Guntert & Zimmerman Const. Div., Inc. We have jurisdiction under 35 U.S.C. § 6, and we issue this Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons below, we conclude that Petitioner has proven, by a preponderance of the evidence, the unpatentability of claims 1–19 of the ’101 patent.” slip op. at 2

  • Skill levelOther

    “B. Level of Ordinary Skill” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “(f) Conclusion-motivation to combine and reasonable expectation of success In conclusion, for the reasons discussed above, we find that Petitioner has demonstrated, by a preponderance of the evidence, that a person having ordinary skill in the art would have had reasons to combine Rio’s and Swisher’s teachings and would have had a reasonable expectation of success in the combination. We also find that Petitioner’s reasons are adequately supported with rational underpinnings. See KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 72

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner

    “the prior art. Zaxcom, Inc., 2022 WL 499843, *2. Accordingly, because there was no long-felt unsolved need for an embodiment covered by the claims, Patent Owner does not demonstrate a nexus between the claimed invention and a long-felt need.” slip op. at 79

  Patent outcomesUS 10,196,101 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,196,101
• Godbersen-Smith Construction Company D/B/A/ Gomaco Corporation v. Guntert & Zimmerman Const. Div., Inc.All claims unpatentable
  PTAB · May 19, 2022 · IPR2021-00050 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–13 are unpatentable: claims 1 and 7 over Swisher and Rio; claims 2–6 and 12–13 over Swisher, Rio, and CIII; claims 4 and 13 also over Widdrington; and claims 8–11 over Guntert, with or …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill Public accessibility of a reference centers on whether the reference is disseminated or otherwise made available to persons having ordinary skill in the art. See Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1355–56 (Fed. Cir. 2018). As such, we start by defining the level of ordinary skill. 1. Petitioner’s contentions Petitioner contends that a person having ordinary skill in the art “would have had at least a four-year degree in mechanical engineering or a closely related field and at least two years of experience designing, developing, or operating heavy machinery, including their components and control systems.” Pet. 12 (referencing Ex. 1002 (Declaration of Dr. William Singhose) ¶ 22). Petitioner also contends that “[a]dditional education could substitute for professional experience and significant work experience—such as working with, servicing, or operating heavy machinery in the field— could substitute for formal education.” Id. at 12–13. Other than providing his understanding of the types of information considered in determining the level of ordinary skill, Dr. Singhose does not provide any additional support for this definition. See Ex. 1002 ¶¶ 21–22. 2. Patent Owner’s response Patent Owner contends that the level of ordinary skill in the art is a person having “a Bachelor’s degree in mechanical engineering, or a related field, and approximately two years of experience designing or developing heavy machinery, including their components and/or control systems.” PO Resp. 12 (referencing Ex. 2030 (Declaration of Dr. Carl Nelson) ¶ 21). Like Dr. Singhose, Dr. Nelson provides his understanding of the types of information considered in determining the level of ordinary skill, but does not provide any additional support for this definition. See Ex. 2030 ¶¶ 19–21.” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Whether a document qualifies as a printed publication is a legal conclusion based on underlying factual determinations. Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). slip op. at 27

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “C. Ground 1: Claims 1 and 7 as anticipated by Swisher Petitioner contends that Swisher anticipates claims 1 and 7. Pet. 6, 18–33. We address Petitioner’s contentions with respect to how Swisher discloses the subject matter of independent claim 1, below.18 1. Independent claim 1” slip op. at 40

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “(3) Conclusion-reasonable expectation of success We find, on the complete trail record, that Petitioner has demonstrated, by a preponderance of the evidence, that a person having ordinary skill in the art would have had reasons to combine Rio’s teaching directed to its actuators, sensors, and control system with Swisher’s control system, with a reasonable expectation of success. We weigh heavily Rio’s own disclosure on using a rotary actuator in conjunction with a jacking column. We also agree with Patent Owner’s declarant, Dr. Nelson, that any problem that may be encountered in combining the teachings of Swisher and Rio is the type a mechanical engineer may encounter with many types of machines and mechanisms, and the physics and math involved in solving these problems are the same. Cf. Ex. 1157, 13:11–16:13. d) Conclusion-motivation to combine In conclusion, we find that Petitioner has demonstrated, by a preponderance of the evidence, that a person having ordinary skill in the art would have had reasons to combine Rio’s and Swisher’s teachings and would have had a reasonable expectation of success in the combination. We also find that Petitioner’s reasons are adequately supported with rational underpinnings. See KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 69

  Patent outcomesUS 9,708,020 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,708,020
• Godbersen-Smith Construction Company D/B/A/ Gomaco Corporation v. Guntert & Zimmerman Const. Div., Inc.All claims unpatentable
  PTAB · May 19, 2022 · IPR2020-01698 · APJ James J Mayberry · IPR · Final written decision

  The Board held claims 1–20 unpatentable: claims 1–11, 13–17, 19, and 20 over CIII and Rio; claim 18 over CIII, Rio, and Smolders; and claims 11–12 over CIII, Rio, and Widdrington.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “the level of ordinary skill. That is, our conclusion of public accessibility of CIII does not depend on the actual dissemination of the manual to customers. We find, independent of this actual dissemination, a person having ordinary skill in the art, exercising reasonable diligence, could have accessed CIII prior to the earliest filing date of the ’749 patent, by locating a dealer or user of the underlying machine, and requesting a copy. See, e.g., Ex. 1012 ¶¶ 3, 13; Ex. 1164 ¶ 6. The lack of any restrictions on disseminating the manual supports a finding that this approach would have been successful. See, e.g., Ex. 1012 ¶¶ 3, 26; Ex. 1164 ¶ 6.” slip op. at 31

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “4. Analysis and Conclusion – Level of Ordinary Skill The level of skill in the art is “a prism or lens” through which we view” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “d) Conclusion-motivation to combine In conclusion, we find that Petitioner has demonstrated, by a preponderance of the evidence, that a person having ordinary skill in the art would have had reasons to combine Rio’s and CIII’s teachings and would have had a reasonable expectation of success in the combination. We also find that Petitioner’s reasons are adequately supported with rational underpinnings. See KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 61

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner

    “where one of the embodiments within the scope of the claims was found in the prior art. Zaxcom, Inc., 2022 WL 499843, *2. Accordingly, because there was no long-felt unsolved need for an embodiment covered by the claims, Patent Owner does not demonstrate a nexus between the claimed invention and a long-felt need.” slip op. at 86

  Patent outcomesUS 10,029,749 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,029,749
• Haas Automation, Inc. v. Olati LLCAll claims unpatentable
  PTAB · May 13, 2022 · IPR2021-00146 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–8 are unpatentable: claims 1, 2, 4, and 6 are anticipated by Oraby; claims 7 and 8 are obvious over Oraby and Edie, among other grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In the Decision on Institution, we agreed with Patent Owner’s arguments and adopted Patent Owner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 10. Petitioner indicates that it does not challenge this determination for the purposes of this proceeding. Pet. Reply 1. Based on our review of the complete record, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10

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

    “1. “at least one controller . . . adjusts the power” In the Decision on Institution, we determined that there was no need to construe explicitly the phrase “at least one controller . . . adjusts the power.” Dec. Inst. 11–12 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Neither party disagrees with this determination. Pet. Reply 7 & n.4; PO Resp. 8–9. Thus, on the full record, there is no controversy between the parties regarding the construction of this phrase. Furthermore, explicitly construing this phrase would have no effect on the analysis below. Accordingly, we need not construe this phrase to resolve the issues in dispute in this proceeding. See Nidec, 868 F.3d at 1017; see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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)). After considering the parties’ arguments regarding Patent Owner’s proposed claim construction for the phrase “adjusts the power exerted by at least one of the spindle drive system and the feed drive system in real-time based on the real-time determinations,” we declined to adopt the proposed construction in the Decision on Institution. Dec. Inst. 13–16 (citing Prelim. Resp. 9–11; Paper 8, 2–4; Paper 9, 2–3). Neither party has addressed this proposed construction in their post-institution briefing. Therefore, on the complete trial record before us, we need not construe this phrase to resolve Realtime Data, 912 F.3d at 1375.” slip op. at 11

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

    “d) Conclusion In summary, we construe “real-time” to mean “autonomously during a machining operation and performed quickly enough to achieve a desired machining system performance.”” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Like the database in Lister, the University of Sheffield’s University Library database allowed members of the public, at least as early as 2004, to “electronically search[] the University Library index” via the internet or the library’s computer terminals, and using any of the author, department, date, and, most importantly, title. See Ex. 1010 ¶ 7. Indeed, Ms. Abbs states that, once a thesis such as Oraby is received by the library, “at least the title, author, related department, and date of completion are recorded in the University Library’s records.” Id. ¶ 3 (emphasis added). Furthermore, like the manuscript in Lister, Oraby has a title that is descriptive of its subject matter—“Mathematical Modelling and In-Process Monitoring Techniques for Cutting Tools” (Ex. 1004, 1)—as Oraby indeed covers “mathematical models which describe the cutting tool-workpiece interaction” and “accurate on-line monitoring of tool-state” (see id. at 3). Thus, a reasonably diligent researcher in the field of CNC machining interested in ways to improve the 11 The court ultimately held, however, that the manuscript did not qualify as prior art because there was insufficient evidence that the aforementioned “date that [the manuscript] was included in either [of the two] databases that permitted keyword searching of titles” had actually antedated the patent’s critical date. Lister, 583 F.3d at 1316–17. library’s database by title for references disclosing such improvements. Furthermore, given Oraby’s title that describes its subject matter covering particular improvements in the CNC machining process, Oraby would have been discovered through such an electronic search. As such, Ms. Abbs’ declaration is sufficient evidence to establish by a preponderance of the evidence that Oraby was publicly available before the ’432 patent’s critical date and therefore qualifies as a printed publication.” slip op. at 21

  Patent outcomesUS 8,136,432 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,136,432
• Askeladden L.L.C. v. Aml IP LLCInstitution denied
  PTAB · May 11, 2022 · IPR2022-00319 · APJ Michael L Woods · IPR · Institution

  The Board denied institution on all grounds and claims 1–13 because the Petition did not show a reasonable likelihood that Armes, alone or with Steury or Maritzen, rendered the claims unpatentable.

  RulingsInstitution decision

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

    “to satisfy both the “bridge computer” and at least one “service provider computer,” we do not see how the method steps recited in limitations B, Ci, and Cii are satisfied. Petitioner’s attempt to satisfy these steps with Armes’s card provider 3 computer (i.e., as the “bridge computer”) raises multiple questions that persuade us Petitioner has not demonstrated by a reasonable likelihood that these limitations are satisfied. For example, to satisfy the recited “service providers,” Petitioner relies on “incentive rewards [or MR] companies.” Pet. 25 (citing Ex. 1005 ¶¶ 52, 59, 87); see also id. at 40 (relying on MR company to satisfy limitation B); see also id. at 41 (relying on MR company to satisfy limitation Ci); see also id. at 43 (relying on MR company to satisfy limitation Cii). Petitioner also cites to the testimony of Mr. Zatkovich. See, e.g., id. at 39– 41 (citing Ex. 1002 ¶¶ 120–124). The Petition does not clearly explain how Armes’s “bridge computer” (i.e., the card provider’s computer system) makes a “determin[ation] from among the plurality of service providers,” however, when the card provider itself is a service provider. The testimony of Mr. Zatkovich does not relieve our confusion. Mr. Zatkovich’s testimony merely parrots, verbatim, that which is in the Petition. Compare Ex. 1002 ¶¶ 120–124, with Pet. 39–41. Although Petitioner and Mr. Zatkovich cite to Armes, the citations are to disjointed disclosure whose relevance is not clearly apparent. See Fritch, 972 F.2d 1266 (“one cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art”); see also Karsten, 242 F.3d at 1383 (“[To establish anticipation,] all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.”). For instance, Mr. Zatkovich cites to both Armes’s back end application service 8 and STN system 18 for performing the step of “determining from among the plurality of service providers . . . whether the given vendor is associated with the same [or different] service provider.” See Ex. 1002 ¶¶ 122, 124; see also Pet. 40; see also supra § I.D. It is not clear to us, however, how “STN system 18” and “backend application service 8”—both acting as the “bridge computer”—perform the step of “determining from among the plurality of service providers . . . whether the given vendor is associated with the same [or different] service provider,” as recited in claim 1. In support of his assertions, Mr. Zatkovich quotes Armes’s disclosure that “CAS 7 recognizes the transaction as involving a STN 15, and forwards the request to the STN system 18” (Ex. 1002 ¶ 122, citing Ex. 1005 ¶ 109)) and “backend application service 8, upon receiving a STN 15, recognizes the associated PPC originated with another card issuer 92” (Ex. 1002 ¶ 124 (citing Ex. 1005 ¶ 95)). Even if “CAS 7 recognizes the transaction as involving a STN 15,” for example, we do not see this as performing the step of “determining whether the given vendor is associated with the same service provider,” as Petitioner asserts. See Pet. 40. As explained above, Armes uses STNs to improve credit card security (supra § II.D.1), and the computer system’s mere recognition that “the transaction [] involve[es] a STN” is not a determination of “whether the given vendor is associated with the same service provider.”” slip op. at 36

  • Skill levelSkill level board ownDecided for patent owner

    “We are not persuaded that a POSITA “would have at least one or two years of experience with payment or credit systems,” as Petitioner proposes (see Pet. 17), or “would have at least a Master of Science [] Degree . . . or equivalent work experience in the field of computer networks,” as Patent Owner proposes. See Prelim. Resp. 6. Rather, we adopt a hybrid of Petitioner’s and Patent Owner’s proposed level of skill. For purposes of this Decision, we find that a POSITA at the time of the invention would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related study along with knowledge of the general structure of payment or credit systems, its hardware and software components.” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Both parties acknowledge and agree with the final Claim Construction Order. See Pet. 14; see also Prelim. Resp. 4. We further note that the claims of the ’979 patent “shall be construed using the same claim construction standard that would be used to construe the claim[s] in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2021). For purposes of this Decision, we consider and adopt the District Court’s claim construction of “bridge computer” in our analysis. Id. (“Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.”). 2. “service provider” In the Claim Construction Order, the court concluded that the term “service provider” shall mean “a business that provides internet-related services to customers.” Ex. 1017, 1. Petitioner does not propose a construction of this term. See Pet. 11– 16. Patent Owner, on the other hand, expounds upon the District Court’s claim construction, submitting that there are two different types of “service providers”: (1) “A service provider of [the] type may maintain a virtual presence on the web in the form of a web site”; and (2) one that “may offer on-line access to customers (e.g., broadband or dial-up Internet access using an Internet account associated with the service).” See Prelim. Resp. 4–5. Patent Owner does not dispute the District Court’s interpretation, however, and acknowledges that “[t]hese different types of service providers are referred to collectively herein as ‘service providers’ or ‘Internet service providers’.” Id. 5. For purposes of this Decision, we consider and adopt the District Court’s claim construction of “service provider” in our analysis. 37 C.F.R. § 42.100(b).” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Specifically, we agree with Patent Owner that Petitioner improperly uses hindsight “to pick and choose among isolated disclosures in [Armes] to deprecate the claimed invention.” Prelim. Resp. 28 (quoting In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (quoting In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988))); see also Karsten, 242 F.3d at 1383 (“[To establish anticipation,] all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.”).” slip op. at 34

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,876,979
• Samsung Electronics Co., Ltd. v. Netlist, Inc.Instituted
  PTAB · May 5, 2022 · IPR2022-00063 · APJ Bryan F Moore · IPR · Institution

  The Board instituted IPR on claims 1–34 and all asserted grounds after finding a reasonable likelihood that Samsung would prevail on obviousness over Ellsberry and Jeddeloh.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “another patent asserted in the Related Case was filed within a week of the Preliminary Response. Id. We decline to attempt to predict how the District Court would proceed should a stay be requested by either of the parties. Accordingly, we find that this factor neither favors nor weighs against discretionary denial of inter partes review. C. Factor 2 — Proximity of Court’s Trial Date Patent Owner admits that “[t]he district of Delaware has not yet set a trial date.” Id. Accordingly, this factor weighs against exercising our discretion to deny inter partes review.” slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “Given the facts above, because Averbuj was not presented in combination with the other references asserted here and is only used in two of the four grounds, the combination of references asserted in the Petition do not qualify as art that was “previously presented” to the Office. Thus, we find that the combination of references asserted in the Petition, were not previously presented to the Office. Additionally, Patent Owner does not assert or explain sufficiently that Ellsberry, Jeddeloh, and/or Lee are cumulative of any reference cited during prosecution of the ’523 patent. Prelim. Resp. 41–43. On this record, we are not persuaded that Ellsberry, Jeddeloh, and Lee are cumulative of any reference cited during prosecution of the ’523 patent. Accordingly, the first condition of the first part of the Advanced Bionics framework is not satisfied, and we need not consider whether Petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Conclusion After evaluating the Becton, Dickinson factors within the Advanced” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” Pet. 6. Patent Owner does not dispute Petitioner’s characterization or offer its own. Accordingly, for purposes of this decision, we adopt Petitioner’s characterization of the level of ordinary skill, which we determine is consistent with the ’523 patent written description and the asserted prior art. slip op. at 14

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

    “Petitioner offers constructions of several terms which are not disputed by Patent Owner. Pet. 13–15. Nevertheless, we determine that it is not necessary to provide an express interpretation of any of the terms of the claims at this juncture. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 15

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,217,523
• Maxlite, Inc. v. Jiaxing Super Lighting Electric Appliance Co., Ltd.All claims unpatentable
  PTAB · Apr 29, 2022 · IPR2020-00208 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 7, and 12–18 are unpatentable as anticipated by Duan under § 102(a)(1).

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a B.S. degree in electrical engineering, or an equivalent field, as well as at least 2-4 years of academic or industry experience in lighting design, including knowledge of LEDs and related technology for driving LEDs. A person of ordinary skill in the art with a higher level of education may have fewer years of academic or industry experience, or vice versa. Pet. 22 (citing Ex. 1002 ¶ 10). Patent Owner does not contest Petitioner’s articulation of the level of skill in the art. PO Resp. 4–5. We regard Petitioner’s definition as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, we adopt Petitioner’s proposal.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “embodiments that operate with a low frequency driving signal in a double-ended configuration, Patent Owner did not recite “low frequency” or “double-ended” in its claims and instead chose the broader term “first driving mode.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The fact that a limitation in the specification may define over the prior art does not justify importing that limitation into the claims unless a term is expressly defined such that the patentee becomes his own lexicographer or there is an express disavowal of claim scope. See GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1308–09 (Fed. Cir. 2014). There is no evidence of an express disavowal here. As to lexicography, we disagree with Patent Owner’s contention that the Specification defines the phrase “first driving mode.” Patent Owner relies on the mere fact that the specification describes an embodiment with a first driving mode that has a low frequency driving signal and is in a “double-ended” configuration, but this is not sufficient to define the term. The specification does not require that a low frequency driving signal must necessarily be used. In fact the specification, although not entirely clear, suggests that the driving signal may be from a high frequency ballast. Ex. 1001, 51:8–14. Thus, the fact that the patent here discloses a low frequency driving signal does not mean that all the claims are directed to such a driving signal. See E-Pass Tech., Inc. v. 3Com Corp., 343 F.3d 1364, 1368–69 (Fed. Cir. 2003). Indeed, dependent claim 15 recites “the first driving mode is performed when the external driving signal is a relatively low frequency or voltage signal,” while the independent claims were directed to a more general driving signal. The doctrine of claim differentiation suggests that the independent claims here should not include explicit limitations of a dependent claim. See Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004).” slip op. at 7

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “We determine that Patent Owner has not shown sufficiently that the Chinese priority patent applications it relies on—the ’636 Chinese Application and the ’586 Application—provide written description support for the limitation of “a mode determination circuit, configured to generate a first determined result signal based on the external driving signal” and “a mode switching circuit, coupled to the filter circuit and the driving circuit, configured to determine whether to perform a first driving mode or a second driving mode based on the first determined result signal,” recited in claim 1. PO Resp. 31–34, 60–67. Specifically, Patent Owner relies on structures in the ’636 Chinese Application and the ’586 Application that are not sufficiently similar to structures in the ’826 patent i.e., DR Circuit 140, excluding diodes D5 and D6, as shown in Figs. 24i-j and 29b. Id. at 27 (citing Ex. 2001, 23–24, 29, and 33, Fig. 24i–j and 29b).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “For the reasons above, Patent Owner has not established that claim 1 of the ’826 patent is entitled to the effective filing date of the ’636 Chinese Application (i.e., June 10, 2015) or the ’586 Application (i.e., March 26, 2015). Because the remaining asserted claims are dependent claims, Patent Owner has also not established that claims 7 and 12–18 of the ’826 patent are entitled to the effective filing date of the ’636 Chinese Application or the ’586 Application. The application that led to the ’826 patent was filed on March 25, 2016. The ’826 patent claims it is a continuation-in-part of application No. 15/055,630 (“the ’630 Application”), filed on February 28, 2016. So, even if the challenged claims were entitled to the earlier February 28, 2016 filing date, Duan issued on July 1, 2015, and is, thus, prior art to the challenged claims of the ’826 patent under 35 U.S.C. § 102(a)(1).” slip op. at 18

  Patent outcomesUS 9,807,826 unpatentable
  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 9,807,826

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.