• Cambridge Mobile Telematics, Inc. v. Sfara, Inc.Institution denied
  PTAB · Dec 13, 2024 · IPR2024-00966 · APJ John F Horvath · IPR · Institution

  The Board denied institution because the Petition did not explain whether the component limitations invoke § 112(f) or identify corresponding structure, as required by Rule 42.104(b)(3).

  RulingsInstitution decision

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

    “The Consolidated Trial Practice Guide[1,2](“CTPG”) . . . instructs that “[w]here claim language may be construed according to 35 U.S.C. § 112(f), a petitioner must provide a construction.” CTPG 45 (emphases added) (citing 37 C.F.R. § 42.104(b)(3)). The CTPG advises that a party “may choose to elaborate why § 112(f) should or should not apply to the limitation at issue.” Id. Notably, the CTPG warns that “[a] petitioner who chooses not to address construction under § 112(f) risks failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).” Id.” slip op. at 6

  • BurdenDenied

    “Given these facts, we determine that rule 104(b)(3) mandates that the Petition either identify “the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function” recited in the “component” term limitations or explain why the “component” term limitations are not subject to a means-plus-function construction. This, it fails to do. To be clear, we note that our rules do not prohibit a petitioner from taking inconsistent claim construction positions before the Board and a district court. See 10x Genomics, Inc. v. Bio-Rad Labs, Inc., IPR2020- 00086, Paper 8 at 18 (PTAB Apr. 27, 2020). However, where, as here, a petitioner has proposed a claim term be construed solely as a means-plus-function limitation in a district court proceeding and emphasized that the issue is not only “most significant” but potentially “case . . . dispositive,” we determine the petition is obliged to either apply that construction in this proceeding or explain why that construction is not applicable. Accordingly, we find the Petition to be deficient under rule 104(b)(3).4” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other

    “connote a definite structure. See Williamson, 792 F.3d at 1350 (identifying words such as “mechanism,” “element,” “device,” and others as verbal constructs that do not connote sufficiently definite structures). Indeed, the Specification discloses all of the “components” recited in claims 1, 8, and 15, including the “comparing component,” can be “implemented as a computer having tangible computer-readable media for carrying or having computer-executable instructions or data structures stored thereon.” Ex. 1001, 5:35–43. Thus, like the word “module,” a recognized nonce word, each of the recited “components” is nothing more than “a generic description for software or hardware that performs a specified function” and their recitation “operate[s] as a substitute for ‘means’ in the context of § 112, para. 6.” Williamson, 792 F.3d at 1350. Accordingly, we construe the “comparing component” limitation recited in claims 1, 8, and 15 as a meansplus-function limitation whose function is “generating a comparison signal.”2” slip op. at 14

  • Skill levelNot reached
  Claim constructionDiscretionary denialcites Markman
  Patents in suitUS 9,333,946
• Nintendo Co., Ltd. / Nintendo Of America Inc. v. Gamevice, Inc.All claims unpatentable
  PTAB · Oct 29, 2024 · IPR2023-00643 · APJ Matthew S Meyers · IPR · Final written decision

  Claims 1–7 are unpatentable as obvious over Willner and Park; the Board did not reach the other instituted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The main distinction between Petitioner’s ordinarily skilled artisan and Patent Owner’s is that Patent Owner’s definition requires “a mechanical engineering degree” whereas Petitioner’s definition allows for a degree in “mechanical, electrical, or computer engineering.” See Pet. Reply 16 (citing Pet. 13). However, Mr. Kitchen states that he qualifies as one of ordinary skill in the art based on Patent Owner’s proffered definition “even without an undergraduate degree in mechanical engineering” because he has “over 40 years of experience in the design and development of interactive products, including specifically with respect to handheld gaming devices.” Ex. 1033 ¶ 7 (citing Ex. 1002 ¶¶ 24–30). Mr. Kitchen asserts that his experience is in “the same category of products claimed in the ’393 patent and described in the prior art references at issue in this proceeding.” Id. In view of this and based on the complete record before us, we view the parties’ proposals as substantially the same because Petitioner’s proposed definition includes the requisite education Patent Owner’s definition requires. Thus, we find (as we did in the Institution Decision) that Petitioner’s level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’393 patent and the prior art of record. See Inst. Dec. 20–21 (citing Okajima, 261 F.3d at 1355). More particularly, we do not agree with Patent Owner that the education component for the level of ordinary skill in the art for computing gaming devices would be limited to just mechanical engineering. We note that, based on the record and evidence before us, our decision and analysis would be the same applying either party’s definition of a person of ordinary skill in the art.” slip op. at 10

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

    “After reviewing the full record, we determine that it is unnecessary to construe the term “confinement structures,” as it appears in the limitation “a pair of confinement structures” to reach a determination in this proceeding. 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)). However, we will address the parties’ dispute regarding whether the prior art discloses or teaches physical component(s) that hold(s) a computing device within our merits analysis below. The parties do not dispute the construction of any other claim terms and we find that no other terms require express construction to resolve the controversy between the parties. Accordingly, we do not construe any other claim terms expressly. See Realtime Data, 912 F.3d at 1375 (“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., 200 F.3d at 803).” slip op. at 12

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

    “First, the test for obviousness “is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference, . . . but rather whether ‘a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention.’” Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016); see also Pet. Reply 11–12 (arguing the same). Second, we disagree with Patent Owner’s assertion that the proposed combination would fail “to retain[] computing device 10 in position during normal user operation” because Park’s adjustable bridge “configuration does not allow mobile phone (1) to be seated for stability in the device.” PO Resp. 20 (citing Ex. 1004 ¶ 42; Ex. 2004 ¶ 68). At the outset, we note that Patent Owner’s argument mischaracterizes the disclosure of Park. Instead, we find Park discloses that a “basic configuration of [Park’s] game pad device for a mobile phone according to the present invention” “sufficiently allows mobile phone (1) to be mounted on the device according to the present invention and used.” Ex. 1004 ¶¶ 25, 41. Although Park discloses that “mobile phone (1) may come loose during gaming or become detached in severe cases” (id. ¶ 41), we do not view this disclosure to otherwise negate Park’s teaching that its adjustable bridge (30,40) “sufficiently allows mobile phone (1) to be mounted on the device according to the present invention and used.” Id. We credit Mr. Kitchen’s declaration testimony to that effect. See Ex. 1033 ¶ 47 (declaring that one of ordinary skill in the art would have “understood this disclosure to mean that a computing device (mobile phone) would have been secured by the device for normal use . . . as part of a handheld gaming device.”).” slip op. at 24

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We agree with Petitioner and find more credible Mr. Kitchen’s opinion regarding “normal user operation.” In doing so, we credit Mr. Kitchen’s opinion that Willner’s sidewalls would “function to secure the sides of the computing device and hold it in place” and, “[i]n the combination, Park’s bridge would be adjusted to reduce the length of the bridge and thereby ‘mount’ a computing device by having Willner’s side walls (confinement structures) ‘apply pressure’ to opposing sides of the computing device.” Ex. 1002 ¶¶ 154–156 (citing Ex. 1004 ¶¶ 38–41). We note that the ’393 patent operates in a similar manner using a sufficient compressive load to hold a computing device. More particularly, the ’393 patent discloses that [t]he expansion and contraction of the distance between the pair of confinement structures 316, facilitates placement of the computing device 302 between the pair of confinement structures 316, the application of sufficient compressive load being placed on the computing device 302 to securely hold the computing device between the pair of confinement structures 316. Ex. 1001, 10:11–20. Thus, we find Mr. Kitchen’s opinion credible and supported by the complete record. Accordingly, we find that Petitioner has proven, by a preponderance of the evidence, that the combination of Willner and Park teaches or suggests “a pair of confinement structures,” as recited by limitation 1[b][1].” slip op. at 22

  Patent outcomesUS 10,391,393 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,391,393
• Masimo Corporation v. Apple Inc.No claims unpatentable
  PTAB · Oct 15, 2024 · IPR2023-00745 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–4 and 8–22 were not shown unpatentable because Mills did not disclose the required embedded structure and Markel combined with Mills did not teach it; the revised motion to amend was dismissed as moot.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “Patent Owner’s Revised Contingent Motion to Amend asserts that in “the event the Board finds at least one challenged [Revised Motion to Amend] claim unpatentable, [Patent Owner] respectfully requests that the Board grant this Motion with respect to the corresponding proposed substitute claim(s).” Paper 27, 1. Because we determine that Petitioner has not established that any of the challenged claims 1–4 and 8–22 are unpatentable, Patent Owner’s Revised Contingent Motion to Amend is moot.” slip op. at 61

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Our analysis and the end result are the same under either proposed definition.” slip op. at 11

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

    “structure where a lead is embedded in a portion of the enclosure from other embodiments where a lead is merely positioned against or in parallel contact with a portion of the enclosure. See Ex. 2003 ¶¶ 36–37. The Specification describes distinct embodiments such as “lead 472 of the heart sensor can be positioned against the back surface of bezel 460,” or “[a]lternatively, lead 472 can be placed within the thickness of bezel 460 (e.g., in a pocket within the bezel wall), but underneath the outer surface of the bezel.” Ex. 9:44–48. We agree with Patent Owner, and Dr. Kenny, that “[t]his passage distinguishes a lead that is embedded in a portion of the enclosure from a lead that is merely ‘positioned against’ or in parallel contact with a portion of the enclosure.” PO Resp. 6–7 (citing Ex. 2003 ¶¶ 33–35). See also Ex. 2008, 31:10–33:18, 109:18–110:19 (Petitioner’s expert, Mr. Oslan, suggesting that a first component or object in parallel contact with and positioned under a second component or object would not necessarily indicate that the first component or object is embedded in the second component or object). Similarly, we also agree that “the claims of the ’257 use the term ‘embedded in’ while also using the word ‘embedded’ in other contexts, which” indicates distinct claim scope for “the term ‘embedded in,’” versus “the broader term ‘embedded.’” Ex. 2003 ¶ 38. For instance, claim 9 distinctly requires “embedded with,” which is a broader term that, according to Dr. Kenny, encompasses embodiments where a lead may be adjacent/parallel to the first portion of the enclosure. Id.” slip op. at 18

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

    “under the exterior of the first portion” (see Pet. 21–22, 24–25; Pet. Reply 4); and (3) leaf spring 62 is embedded in housing 12 and electrode 14 (see Pet. 22–24). None of Petitioner’s mappings disclose every element of claim 1 and Petitioner improperly jumps between these various mappings without fully examining a single mapping for each and every limitation of claim 1. See Pet. 18–25. In essence, Petitioner invites the Board to piece together a single theory that meets all claim elements from these disparate theories that each require distinct structure within Mills. See Amazon.com, Inc., et al. v. Avago Technologies General IP (Singapore) PTE. LTD., IPR2017-01112, Paper 11, at 13 (PTAB Aug. 23, 2017) (“Petitioner is inviting us to assume the role of archeologist of the record, which invitation we decline.”).” slip op. at 36

  Patent outcomesUS 10,076,257 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,076,257
• Masimo Corporation v. Apple Inc.Institution denied
  PTAB · Nov 21, 2023 · IPR2023-00831 · APJ Scott A Daniels · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that the sole design claim would have been obvious over any asserted primary reference.

  RulingsInstitution decision

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

    “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claim. See 35 U.S.C. § 314(a). Accordingly, we do not institute an inter partes review of the challenged claim. slip op. at 2

  • Skill levelSkill level board ownOther

    “different, but not incompatible. On one hand, Petitioner proffers a person with a degree in industrial/product design who consults with a person of ordinary skill in the art having an electrical engineering, or similar degree. On the other hand, Patent Owner proffers a person having “a degree in Industrial Design or Mechanical Engineering, and at least two years of professional experience creating Industrial Designs of consumer products.” Prelim. Resp. 3. Considering that this is a design for an electronic “charger,” we find that both parties’ assertions as to the designer of ordinary skill appropriately include engineering and industrial design experience well-suited to a robust understanding of the function and aesthetics of charger devices. And, we do not find it out of the ordinary, as Petitioner contends, that a designer of ordinary skill would have collaborated with other technical professionals in designing such products. We also note that, under the present record, our analysis of this case would be the same under either party’s definition of the designer of ordinary skill in the art.” slip op. at 8

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

    “In this case, a verbal description of the claimed design is helpful to our analysis. Petitioner’s claim construction, particularly as it erroneously calls for certain elements to be “factored out,” is too general, and does not adequately address the overall ornamental visual impression of the claimed charger. See Pet. 14–30. With some exceptions, we find Patent Owner’s claim construction the more persuasive and consistent with the appropriate scope and overall ornamentality of the claimed charger. Prelim. Resp. 3–10. Our claim construction, below, is based on, and paraphrased to some extent, from Patent Owner’s proposed construction: Considering the overall visual impression of the claimed charger as shown in Figures 1–11 of the ’131 patent, the charger has an overall appearance of a compact ice hockey puck shape having a top face with a circular recess that evokes a contemporary appearance. The claimed design includes an overall cylindrical shape, with a circular shape that is visible in plan and bottom views. The top face is dominated by a prominent circular recess that is inset relative to a flat ring having a distinct proportional width relative to the circular recess. The overall cylindrical shape has a distinctive ratio of width (e.g., diameter) to height that, as shown in the figures of the claimed design, evoking the overall appearance of a compact ice hockey puck shape. The overall cylindrical shape includes non-orthogonal transitional edges (e.g., beveled or curved edges) between the sidewall and the top and bottom faces which contributes to the charger’s overall compact ice hockey puck appearance. The featureless flat bottom surface and sidewall are shown as continuous, unbroken, and uninterrupted by features that distract from the continuity of the design, and also contribute to the charger’s overall compact ice hockey puck appearance.” slip op. at 18

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

    “’131 patent compared with Lee, we are persuaded that Lee is not an appropriate primary reference. While we agree that a designer of ordinary skill in the art would have considered the front face of the claimed charger and Lee as similar in appearance, a designer of ordinary skill in the art would consider not just the front face of the designs, but the overall appearance of the designs as a whole. See Borden, 90 F.3d at 1574 (The obviousness “inquiry focuses on the visual impression of the claimed design as a whole and not on selected individual features.”). the front face of the claimed design, but the smooth uninterrupted cylinder walls that seamlessly transition to a flat, planer, bottom surface that is a cleaner and more contemporary appearance from Lee’s stepped sidewall and raised yellow ring on the bottom face of Lee’s charger. The cylindrical characteristics of the claimed design evoke a stocky ice hockey puck shaped appearance different from the Lee’s narrower stacked disc shaped design. We find that the cumulative visually apparent differences of the sidewall, bottom face and overall cylindrical ice hockey puck shaped appearance and proportions of the claimed charger outweigh any similarity of the front faces, and thus we are not persuaded that Lee’s charger is a primary reference “the design characteristics of which are basically the same as the claimed design.” Rosen, 673 F.2d at 391.” slip op. at 37

  Claim construction§ 103 obviousness
• Masimo Corporation v. Apple Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00728 · APJ Josiah C Cocks · IPR · Institution

  The Board denied institution because Masimo did not show a reasonable likelihood that the claimed design was obvious over Paulke, Yuen with Mendelson and Bushnell, or Fong with Bushnell.

  RulingsInstitution decision

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

    “respective constructions of the ’936 patent, i.e., that the claimed design incorporates two arc-shaped portions residing on a rear face of an electronic device, we observe that one point of disagreement centers on the proposed presence of an “outer continuous circle” as is advanced by Patent Owner. See Prelim. Resp. 4. Although we agree with Petitioner that the “sidewall” of the arcs does not appear to be a claimed feature, careful review of the figures of the ’936 patent, particularly Figure 4, does appear to bear out the conclusion that the arc-shaped portions do incorporate a continuous circle.2 Accordingly, we adopt the claim construction that is advanced by Patent Owner. See, e.g., supra § I.C.2. We note, however, that even were we to adopt Petitioner’s claim construction, the ultimate outcome of this proceeding would be the same. That is so because, for reasons discussed below, we conclude that Patent Owner has identified sufficient deficiencies in Petitioner’s proposed grounds that preclude institution of inter partes review irrespective of any claim construction.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In assessing the parties’ views as to level of skill of a designer of ordinary skill in the art, we conclude that they are effectively the same. Indeed, the parties do not identify any material difference between the parties’ proposed assessments. Nevertheless, for clarity and completeness, we adopt Petitioner’s proposed assessment. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 17

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

    “III. CONCLUSION For the reasons set forth above, we conclude that Petitioner has not shown a reasonable likelihood that it would prevail with respect to the claimed design of the ’936 patent. IV. ORDER It is ORDERED that Petitioner’s request for an inter partes review of the claim of the ’936 patent is denied and no trial is instituted.” slip op. at 38

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

    “(see, e.g., Prelim. Resp. 21–24), the arc-shaped portions of the ’936 design are thinner than those of Paulke’s Figure 1G, and the spacing of the arc-shaped portions in the ’936 patent is noticeably smaller than in Paulke. That enlarged spacing in Paulke eliminates any appearance of an outer continuous circle formed by the outer ring of the arc-shaped portions, which is present in the ’936 design. In that respect, we find credible Patent Owner’s argument that “the Paulke arc-shaped components have the appearance of two separate features rather than the unified circular appearance of arcs of the ’936 patent. Prelim. Resp. 23 (citing Ex. 2001 ¶¶ 51–52). Additionally, the orientation of the arc-shaped portions in Paulke is rotated 90 degrees from that of the ’936 patent.5 In our view, there is a plausible argument to be made that the above-noted differences establish sufficient visual dissimilarities to remove Paulke from being considered a proper Rosen reference. Nevertheless, even were we to assume that Paulke is a proper Rosen reference, for the reasons discussed below, we do not find persuasive that a designer of ordinary skill in the art would have made Petitioner’s proposed modifications to Paulke’s biosensor module, so as to arrive at the design of the ’936 patent.” slip op. at 20

  Claim construction§ 103 obviousness
• DK Crown Holdings Inc. v. Diogenes LimitedInstitution denied
  PTAB · Jun 22, 2023 · IPR2023-00265 · APJ Sean P O’Hanlon · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that DeWaal, alone or with Schugar, renders claims 1, 4–15, 17–19, or 32 unpatentable.

  RulingsInstitution decision

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

    “recited wager. Pet. 35. However, Petitioner does not explain adequately how this wager “coincides with each of the defined number of legs” of DeWaal’s bonus game (which Petitioner maps to the recited multi-outcome wagering event (id. at 23)) as required by the challenged claims. Rather, Petitioner refers to the player’s input for each round of bonus game. Id. at 35. As explained above, DeWaal discloses that a player’s selection of a winning outcome for each round of the bonus game is independent of the wager made by the player in the base game. As acknowledged by Petitioner’s declarant, Mr. Crevelt, DeWaal’s wager allows “a player [to] qualify for the bonus game,” but “players of the bonus event must also ‘make an input in association with the plurality of outcomes in each round as indicated by block 108’ in FIG. 3.” Ex. 1007 ¶ 141 (quoting Ex. 1004 ¶ 129). Nor has Petitioner explained adequately how DeWaal identifies “players eligible to win each of the defined number of legs” of the bonus game “based on the wager” as required by the challenged claims. Rather, Petitioner again refers to the player’s input for each round of the bonus game. Pet. 40. The wager in DeWaal is the bet placed to play the initial game, which occurs prior to the multi-round bonus event. Ex. 1004 ¶ 83. That wager does not, however, serve to identify a winner of a leg of DeWaal’s bonus game. Instead, players advance by making separate choices at each leg of the bonus game. See, e.g., id. ¶¶ 119, 127. That is, it is those choices, not the wager, that determines whether the player advances at each leg. As such, we are not persuaded DeWaal describes “identifying one or more players eligible to win each of the defined number of legs based on the wager” as required by the challenged claims.” slip op. at 16

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

    “As noted above, Petitioner maps DeWaal’s base game wager to the recited wager. Pet. 35. However, Petitioner does not explain adequately how this wager “coincides with each of the defined number of legs” of DeWaal’s bonus game (which Petitioner maps to the recited multi-outcome wagering event (id. at 23)) as required by the challenged claims. Rather, Petitioner refers to the player’s input for each round of bonus game. Id. at 35. As explained above, DeWaal discloses that a player’s selection of a winning outcome for each round of the bonus game is independent of the wager made by the player in the base game. As acknowledged by Petitioner’s declarant, Mr. Crevelt, DeWaal’s wager allows “a player [to] qualify for the bonus game,” but “players of the bonus event must also ‘make an input in association with the plurality of outcomes in each round as indicated by block 108’ in FIG. 3.” Ex. 1007 ¶ 141 (quoting Ex. 1004 ¶ 129). Nor has Petitioner explained adequately how DeWaal identifies “players eligible to win each of the defined number of legs” of the bonus game “based on the wager” as required by the challenged claims. Rather, Petitioner again refers to the player’s input for each round of the bonus game. Pet. 40. The wager in DeWaal is the bet placed to play the initial game, which occurs prior to the multi-round bonus event. Ex. 1004 ¶ 83. That wager does not, however, serve to identify a winner of a leg of DeWaal’s bonus game. Instead, players advance by making separate choices at each leg of the bonus game. See, e.g., id. ¶¶ 119, 127. That is, it is those choices, not the wager, that determines whether the player advances at each leg. As such, we are not persuaded DeWaal describes “identifying one or more players eligible to win each of the defined number of legs based on the wager” as required by the challenged claims.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “For at least the foregoing reasons, Petitioner has not shown sufficiently that DeWaal discloses or teaches a wager as recited in independent claims 1 and 32. Petitioner’s reliance on Schugar to teach a partial buy-out offer does not correct this deficiency. See Pet. 55–58.” slip op. at 17

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

    “Independent claims 1 and 32 include several limitations involving “the wager.” First, the wager is received “in response to input from a player desiring to participate in the multi-outcome wagering event” (“receiving recitation”). Ex. 1001, 33:25–30, 40:7–11. The claims here further recite that the wager must “coincide[] with each of the defined number of legs.” Id. Second, the claims then identify “one or more players eligible to win each of the defined number of legs based on the wager.” Id. at 33:39–42, 40:20–23. Accordingly, we construe claims 1 and 32 to set out a method where the wager (1) enters the player into the event (and, thus, is set before the event) and (2) is of a nature such that it serves as the metric by which the player is evaluated at each leg to determine whether the player remains eligible to win the event.2 Neither party offers a claim construction of this term.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,704,338
• DK Crown Holdings Inc. v. Diogenes LimitedInstituted
  PTAB · Jun 22, 2023 · IPR2023-00266 · APJ Sean P O’Hanlon · IPR · Institution

  Instituted inter partes review of claims 1, 2, 8, 9, 13–16, 20–27, 29, and 30 on all proposed grounds; Petitioner showed a reasonable likelihood of prevailing on obviousness over Schugar and DeWaal.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “above factors. In evaluating the factors, we take a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review. Fintiv, Paper 11 at 6. We are also guided by the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”),3 which provides several clarifications concerning the application of the Fintiv factors. One such clarification instructs that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3; see also id. at 7–8. Thus, we will not exercise our discretion to deny institution if a petitioner makes a stipulation similar to that provided in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (designated precedential in relevant part). Petitioner states that it “makes a Sotera-style stipulation not to pursue, in the co-pending proceeding district court proceeding, any argument that the Challenged Claims are invalid on any ground that was raised or could 3 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. have been reasonably raised in this IPR, should a Final Written Decision issue here.” Pet. 66.” slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “Thus, under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims. Id. at 8.” slip op. at 10

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner bears the burden of persuasion to prove unpatentability of each challenged claim by a preponderance of the evidence. 35 U.S.C. § 316(e). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition and Patent Owner’s Preliminary Response shows that there is a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a). slip op. at 11

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

    “Patent Owner’s arguments do not address the rationale for combining the reference teachings as set forth in the Petition. Petitioner does not propose to modify Schugar’s games to incorporate features of DeWaal’s games. Rather, Petitioner proposes to implement “Schugar’s method of conducting a sport wagering event on DeWaal’s system hardware and thin-client configuration.” Pet. 22–23. Schugar’s system is designed for games hosted by a casino, and Schugar contemplates coordination between multiple casinos through the use of shared databases. See, e.g., Ex. 1005 ¶¶ 19, 105. Schugar further discloses use of its system in pari-mutuel betting. Id. ¶ 126. Based on the current record, we find persuasive the evidence showing that using a centralized server is the most practical way to conduct such betting arrangements and reduce the risk of cheating. See Pet. 25–26; Ex. 1007 ¶¶ 78–79; Ex. 1004 ¶ 88. Although Patent Owner’s declarant testifies, “I don’t view Schugar’s teachings as requiring hardware, such as a central server, that supports a pari-mutuel pool” (Ex. 2001 ¶ 102), we accord little weight to this conclusory assertion. See 37 C.F.R. § 42.65(a).” slip op. at 19

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,970,969
• DK Crown Holdings Inc. v. Diogenes LimitedInstituted
  PTAB · Jun 21, 2023 · IPR2023-00262 · APJ William V Saindon · IPR · Institution

  The Board instituted review of claims 1 and 10 on all grounds, finding a reasonable likelihood that claim 1 is anticipated by DeWaal.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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.” For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’341 patent is unpatentable, we institute an inter partes review of all challenged claims based on all grounds raised in the Petition. 37 C.F.R. § 42.08(a).” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalNot reached

    “one of a buy-out offer and partial buy-out offer” to the players during the wagering event. During prosecution of the ’341 patent, the examiner applied a prior art rejection upon construing the claim in the disjunctive form. Ex. 1002, 109 (Office Action, Oct. 28, 2014). That is, construing the language in the form of at least one of X and Y to be satisfied upon a showing in the art of either X or Y. The applicant, however, argued that the prior art needed to disclose both (i.e., the conjunctive form). Id. at 86, 88 (Applicant Response, Dec. 18, 2014). The examiner subsequently withdrew the rejection. Id. at 69 (Office Action, Mar. 12, 2015). Petitioner characterizes the applicant’s argument as a “plain and unmistakable statement[] of disavowal during the prosecution” of the disjunctive form (i.e., X or Y), thus limiting the term to the conjunctive form (i.e., X and Y). Pet. 18 (citing Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) (“The prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution.”)). Petitioner asserts, however, that Patent Owner has taken the position in district court that the disjunctive construction should be used. Pet. 19, n.4 (citing Ex. 1049 (Patent Owner’s Initial Infringement Contentions)). Thus, there is at least some indication of the plausibility of both constructions. Patent Owner has not yet entered any arguments in this case. We encourage further briefing on the construction of the “at least one of” term during trial.” slip op. at 6

  Claim construction§ 102 anticipation
  Patents in suitUS 9,117,341
• DK Crown Holdings Inc. v. Diogenes LimitedInstitution denied
  PTAB · Jun 15, 2023 · IPR2023-00261 · APJ William V Saindon · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–30 were unpatentable over DeWaal alone or with Schugar and Scott.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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.” For the reasons provided below, we determine Petitioner has not satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has not demonstrated a reasonable likelihood that at least one claim of the ’439 patent is unpatentable, we do not institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2

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

    “wager.” First, the wager is received “in response to the . . . players desiring to participate in the multi-outcome wagering event” (“receiving” limitation). The claim here further specifies that the wager must “coincide[] with each of the number of legs.”1 Second, the claim then identifies one or more winners “based on the wager” (“identifying” limitation). The claim here also” slip op. at 7

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

    “adequately address the specific “wager” recited in the receiving and identifying limitations. In particular, the wager in DeWaal is the bet placed to play the initial game, which occurs prior to the multi-round bonus event. Ex. 1004 ¶ 83. Alternatively, DeWaal discloses that it could require a separate fee to enter the bonus game. Id. In either case, putative wager in DeWaal serves to allow entry into the event. That wager does not, however, serve to identify a winner of a leg of DeWaal’s bonus game. Instead, players advance by making separate choices at each leg of the bonus game. See, e.g., id. ¶¶ 119, 127. That is, it is those choices, not the wager, that determines whether the player advances at each leg. As such, we are not persuaded DeWaal describes “identifying one or more winners . . . based on the wager.” Similarly, even if we were to consider the player’s choices in DeWaal’s bonus event, such as whether to risk further play or take the buyout (e.g., Ex. 1004 ¶ 146), to be a form of wager, that wager would be different from the one required in claim 1. In particular, claim 1 requires the wager to be “in response to the . . . players desiring to participate in the . . . event” as well as to “coincide[] with each of the defined number of legs.” Thus, by the time the player in DeWaal is making choices during the event, they have already expressed a desire to participate in the event, and any such “wager” to continue the event is tied only to that leg, not to “each of the defined number of legs.” In other words, claim 1 requires the wager to be something that is set ahead of time, and to contain information that is used, at each leg, to evaluate whether that player remains eligible. Accordingly, we determine that Petitioner has not addressed sufficiently each limitation of claim 1.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “The other claims and ground addressed in the Petition are deficient for the same reasons. Petitioner’s position regarding independent claim 26 is effectively identical to that of claim 1. Pet. 55 (“DeWaal therefore discloses each limitation of Claim 26 for the reasons discussed above with regard to Claim 1.”). Similarly, Petitioner’s obviousness grounds bring in references for limitations regarding buy-outs and partial buy-outs, not for the wager limitations. See id. at 55–64.” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,721,439
• Farmers Edge, Inc. / Farmers Edge (US), Inc. v. Agi Suretrack, LLCInstitution denied
  PTAB · May 11, 2023 · IPR2023-00166 · APJ Robert L Kinder · IPR · Institution

  The Board denied institution for claims 1–10 because Petitioner did not show a reasonable likelihood that the Nadison 610, Johnson, and ISO11783 combination rendered them obvious.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine that the information presented in the Petition shows “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) (2018). For the reasons set forth below, upon considering the Petition, Preliminary Response, Preliminary Reply, Preliminary Sur-reply, and evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’017 patent would have had: a bachelor’s degree in either electrical, computer, mechanical, or agricultural engineering or a similar degree and have at least 2 years of experience in heavy machinery telematics, and agricultural practice (including modern farming machinery and precision agriculture devices and systems), as well as networking and communications protocols specific to modern farming machinery and software development. Pet. 11. Patent Owner does not dispute this level of skill. See Prelim. Resp. 14. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable.” slip op. at 11

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

    “Petitioner asserts “[n]o terms need construction for this IPR” but “reserves the right to identify terms for construction as may become necessary in . . . ‘the District Court case’[] and to respond to any constructions that Patent Owner submits.” Pet. 20. Patent Owner “agrees with Petitioner that no terms require construction” and also “reserves the right to identify terms for construction as may become necessary in the parallel district court litigation . . . and to respond to any construction that Petitioner may submit.” Prelim. Resp. 15. On this record, we determine that no claim term requires an express construction for the purpose of determining whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “We agree with Petitioner that the ISO11783 requires a device to have a NAME field in order for the task controller to identify the device. See Ex. 1013, 12. However, we are not persuaded by Mr. Ault’s testimony or Petitioner’s arguments that the communication protocol must be defined in an implement profile such as the NAME field even if manufacturers use systems beyond those directly supported in the ISO11783. See Pet. 27–48; Ex. 1013, 28, 33; Ex. 1002 ¶¶ 64, 114–125, 162–167; Ex. 1014, 5, 9. The NAME field specifies ECU function and place in a network. See Ex. 1010, 9–10. However, it is not clear why any communication protocol would identify the function or place of an ECU in a network, which is the purpose of the NAME field. See Pet. 37–38 (“The NAME field includes a device class, manufacturer code, and identity number among other fields.”). Petitioner has not explained sufficiently otherwise. We further observe that Mr. Ault alludes that ISO11783 provides a standardized, and thus known, communication protocol that supports the use of proprietary communications simultaneous with standardized messages. Id. ¶ 64. Mr. Ault later surmises that “it would have been obvious to a POSITA to store proprietary message formats for manufacturers that use proprietary message format.” Id. ¶ 167. We observe that in paragraphs 63 and 64 of his declaration, Mr. Ault relies on Exhibit 1014, titled “An Electronic Communication Protocol for Agricultural Equipment,” for the proposition that ISO11783 “supports the use of proprietary communications simultaneous with standardized messages” and “[m]anufacturers are free to implement enhanced control and information systems beyond those directly supported in the standard.” Id. ¶ 64 (citing Ex. 1014, 7)7 (alteration in original). We understand this cited disclosure in Exhibit 1014 acknowledges that proprietary communications are beyond those directly supported in the ISO11783 and that enhanced control and information systems are required for proprietary communications. Id. Said another way, these statements are consistent with our understanding that ISO11783 does not, by default, teach proprietary communication protocols defined in the device description fields, e.g., NAME field. Ex. 1014, 7 (“ISO11783 does not provide a complete design that can be implemented without further considerations on agricultural equipment.”). That being the case, we agree with Patent Owner’s position that the ISO11783 does not itself “identify different proprietary formats (i.e., the communication protocol) used by a given implement from a stored collection of implement profiles.” Prelim. Resp. 21. 7 Petitioner cites to page 9, however, we use the stamped page numbers for the exhibit. Even assuming for the moment that proprietary message formats “indicate” communication protocols, Petitioner has still not explained sufficiently why a POSITA would store those proprietary message formats in the NAME field. As noted above, the NAME field specifies ECU function and place in a network. See Ex. 1010, 9–10. However, it is not clear why proprietary message formats would identify the function or place of an ECU in a network. See id.; see also Pet. 37 (“The NAME field includes a device class, manufacturer code, and identity number among other fields.”).” slip op. at 27

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,107,017

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.