• Apple Inc. v. Rfcyber Corp.No claims unpatentable
  PTAB · Jul 18, 2023 · IPR2022-00412 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–19 were not shown unpatentable because the Dua, GlobalPlatform, and Philips combination did not establish the claimed emulator personalization.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On the full record before us, we agree with Petitioner that a person of ordinary skill in the art should have some level of experience relating to mobile payment technology. For example, the title of the ’787 patent, “Method and Apparatus for Conducting E-commerce and M-commerce,” provides a strong indication that mobile payments are a key aspect of the disclosed invention. See Ex. 1001, code (54). The ’787 patent describes its technical field as: “The present invention is generally related to commerce over networks. Particularly, the present invention is related to electronic purses that can be advantageously used in portable devices configured for both electronic commerce (a.k.a., e-commerce) and mobile commerce (a.k.a., m-commerce),” which reinforces that mobile payment technology is a key aspect. See id. at 1:17–21. In addition, we credit Mr. Smith’s uncontroverted testimony that mobile payment experience is required, which we find persuasive and supported by evidence. See Ex. 1042 ¶¶ 4–10. On the other hand, we agree with Patent Owner that network security is an important aspect of the ’787 patent’s invention. But to the extent that Patent Owner is asserting that mobile payment technology and computer or network security are distinct concepts such that the proper level of ordinary skill would include experience in one or the other but not both, we disagree. Rather, we view the ’787 patent as relating to methods and apparatuses for 1:17–21) and describing security as being an aspect of the commerce (see id. at code (57) (“[A] mechanism is provided to enable a portable device to conduct transactions over an open network with a payment server without compromising security.”), 2:16–19 (“During a transaction, the security keys are used to establish a secured channel between an embedded e-purse and an SAM (Security Authentication Module) or backend server.”)). For the above reasons, we find Petitioner’s contentions on this issue more persuasive on the full record before us. In order to avoid any doubt that we consider computer or network security to be an element of mobile payment technology, we determine for the purposes of this Decision that one of ordinary skill in the art would have at least a Bachelor’s degree in computer science, computer engineering, electrical engineering or an equivalent, and one year of professional experience relating to mobile payment technology, including computer or network security. In addition, a lack of professional experience could be remedied by additional education, and vice versa.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for patent owner

    “ordinary skill in the art should have some level of experience relating to mobile payment technology. For example, the title of the ’787 patent, “Method and Apparatus for Conducting E-commerce and M-commerce,” provides a strong indication that mobile payments are a key aspect of the disclosed invention. See Ex. 1001, code (54). The ’787 patent describes its technical field as: “The present invention is generally related to commerce over networks. Particularly, the present invention is related to electronic purses that can be advantageously used in portable devices configured for both electronic commerce (a.k.a., e-commerce) and mobile commerce (a.k.a., m-commerce),” which reinforces that mobile payment technology is a key aspect. See id. at 1:17–21. In addition, we credit Mr. Smith’s uncontroverted testimony that mobile payment experience is required, which we find persuasive and supported by evidence. See Ex. 1042 ¶¶ 4–10. On the other hand, we agree with Patent Owner that network security is an important aspect of the ’787 patent’s invention. But to the extent that Patent Owner is asserting that mobile payment technology and computer or network security are distinct concepts such that the proper level of ordinary skill would include experience in one or the other but not both, we disagree. Rather, we view the ’787 patent as relating to methods and apparatuses for 1:17–21) and describing security as being an aspect of the commerce (see id. at code (57) (“[A] mechanism is provided to enable a portable device to conduct transactions over an open network with a payment server without compromising security.”), 2:16–19 (“During a transaction, the security keys are used to establish a secured channel between an embedded e-purse and an SAM (Security Authentication Module) or backend server.”)). For the above reasons, we find Petitioner’s contentions on this issue more persuasive on the full record before us. In order to avoid any doubt that we consider computer or network security to be an element of mobile payment technology, we determine for the purposes of this Decision that one of ordinary skill in the art would have at least a Bachelor’s degree in computer science, computer engineering, electrical engineering or an equivalent, and one year of professional experience relating to mobile payment technology, including computer or network security. In addition, a lack of professional experience could be remedied by additional education, and vice versa. Regarding Petitioner’s assertion that Mr. Gomez’s testimony should be given little to no weight, Patent Owner argues that Mr. Gomez is well qualified under both proposed levels of ordinary skill. Sur-reply 4–5. During the hearing, Petitioner modified its position somewhat, arguing that Mr. Gomez’s “testimony should be accorded little to no weight, particularly where he weighs in on issues specific to financial transactions and smart cards.” Tr. 8:15–18 (emphasis added). Petitioner stated further that “[w]e’re simply asking the Board to take into the account each individual expert’s background knowledge on a per issue basis.” Id. at 59:26–60:2. Based on the full record, we disagree that all of Mr. Gomez’s testimony” slip op. at 12

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

    “Petitioner contends that all claim terms, except “emulator” and “midlet,” should have their plain and ordinary meaning. Pet. 12. As to the claim terms “emulator” and “midlet,” Petitioner contends that the ’787 patent expressly defines those terms “so those definitions are controlling.” Id. (citing Ex. 1001, 4:47–50, 5:20–22). Patent Owner argues that “claim construction is not required to resolve any issues” in this proceeding. PO Resp. 9. We determine that we need not expressly construe any claim term to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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” slip op. at 14

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

  Patent outcomesUS 9,189,787 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,189,787
• Rideco Inc. v. Via Transportation, Inc.No claims unpatentable
  PTAB · Jun 23, 2023 · IPR2022-00286 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because the asserted combinations failed to teach or render obvious system-selected virtual bus stops and a pair of associated stops.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Discussion We have considered the parties’ arguments and evidence of record, and we adopt Petitioner’s asserted level of ordinary skill because it is consistent with the problems identified and solutions provided in the ’824 patent and the prior art. In particular, we agree with Petitioner that the relevant field of art is not limited to backend artificial intelligence components in a ride-sharing system as Patent Owner contends. See Pet. Reply 10–11; see also PO Resp. 31–32. We disagree with Patent Owner’s assertions that the ’824 patent is directed towards a complex artificial intelligence system far beyond the scope of traditional navigation systems. See PO Resp. 31–32. Neither Patent Owner nor its expert, Dr. Jacquillat, cites to the patent in determining the relevant skill in the art to explain why the art of the ’824 patent is limited to artificial intelligence components. See id.; Ex. 2022 ¶¶ 41–51. As Patent Owner acknowledges, the ’824 patent makes no reference to “artificial intelligence” directly, and Patent Owner instead relies upon declarant testimony to argue that the patent is directed towards an advancement in artificial intelligence. PO Sur-reply 11. Patent Owner claims, without support, that “programming a computer to make decisions in the place of humans is a form of artificial intelligence.” Id. Regardless, we need not determine the precise definition of artificial intelligence to determine the relevant skill in the art pertaining to a patent that never uses the term. We agree with Petitioner that an artisan with an understanding of computer programming and navigation systems as well as two to four years of experience in location-based systems would understand the “computer-implemented transportation system” of the ’824 patent. In summary, we find that the relevant level of ordinary skill in the art “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).” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Having addressed the relevant skill in the art, we address Patent Owner’s contention that Mr. Andrews “is not qualified to offer opinions concerning the artificial intelligence components of a ride-sharing system that are at issue in the ’824 patent.” PO Resp. 37. As discussed previously, we disagree with Patent Owner’s proposed qualifications for a person of ordinary skill in the art, and have adopted Petitioner’s position. Patent Owner does not offer an opinion as to whether Mr. Andrews would be qualified as a person of ordinary skill in the art under Petitioner’s definition. The record reflects that Mr. Andrews possessed an advanced degree in electronic engineering, had a working knowledge of computer programming and navigation systems, and had more than two years of experience with location-based systems, user interfaces, and databases at the time of the ’824 patent. See, e.g., Ex. 1003 ¶¶ 4–19; Ex. 1009. Therefore, we find that Mr. Andrews is qualified to offer opinions as a person of ordinary skill in the art for the ’824 patent under the relevant definition. Additionally, we find that Mr. Andrews’s background would qualify him as a person of ordinary skill in the art even if we adopted Patent Owner’s proposed level of ordinary skill in the art. Under Patent Owner’s proposal, a person of ordinary skill in the art would have a “degree in computer science, operations research, industrial engineering, applied mathematics, or a related field with at least two years of experience with optimization modeling, large scale optimization algorithms, or artificial intelligence solutions in the context of ride-sharing systems.” PO Resp. 30 (emphasis added). The record demonstrates that Mr. Andrews meets these qualifications. Mr. Andrews possesses a Bachelor of Science degree in Electrical Engineering and a Master of Science degree in Electronic Engineering, which we find to be in a “related field.” Ex. 1003 ¶ 6. Additionally, Mr. Andrews has significantly more than two years of experience in the fields Patent Owner suggests are relevant as evidenced by, for example, Mr. Andrews testimony that he has experience in “location-based systems,” and “work[ing] in database dispatch systems for fleet management.” Ex. 2023, 44:2–9; 44:15–19. Furthermore, given Mr. Andrews’s advanced degree, Patent Owner’s definition would allow Mr. Andrews to have less than two years of experience in the pertinent fields. PO Resp. 30; Ex. 1003 ¶ 6.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther

    “Under these circumstances, where the parties now agree that the ordinary meaning should apply to “virtual bus stops” and the district court adopted the same approach, we see no reason to depart from applying the ordinary meaning in this proceeding. We therefore apply the plain and ordinary meaning proposed by the parties, where “virtual bus stops” means “pickup and dropoff locations selected by the ride-sharing system itself.” As to the construction of dependent claim 8, we agree with Patent Owner that we need not formally construe the term to resolve the issues before us. 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))). As to Petitioner’s remaining arguments, we do not read artificial intelligence or other limitations into the claims as Petitioner warns against, and Petitioner does not argue for any specific construction in relation to these arguments that would require us to resolve a specific claim construction dispute. See Pet. Reply 4–10.” slip op. at 16

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Ex. 1004, 4:17–23. The Petition does not cite to any declarant support, additional prior art, other embodiments in Lambert, or any obviousness analysis when addressing “virtual bus stops.” See Pet. 25. Although for later aspects of claim 1 the Petition relies on Poykko and an obviousness analysis when arguing that it would have been obvious to configure Lambert’s server to operate in a certain way (e.g., to access memory that includes a database of locations as taught by Poykko), the Petition does not rely on such an analysis when first addressing “virtual bus stops” alone. See id. The combination of Lambert’s statement above with Poykko and other aspects of Lambert, potentially with allegedly obvious modifications of Lambert, may serve as the basis of Petitioner’s arguments for these later limitations involving “virtual bus stops,” but these later allegations do not reach back and redefine Petitioner’s more limited argument with respect to “virtual bus stops” in isolation.8 To the extent Petitioner argues in its Reply that a combination of Lambert and Poykko or other obviousness arguments 8 In our Institution Decision, we noted that Patent Owner, at that stage of the proceeding, failed to properly address Petitioner’s proposed combination of Lambert and Poykko for various “virtual bus stop” limitations. Inst. Dec. 22–23. That said, we do not view the Petition’s arguments and evidence as to “virtual bus stops” limitation in isolation, prior to addressing the “memory” limitation and adding Poykko and obviousness to the analysis, as relying on a combination of Lambert and Poykko or obviousness. See Pet. 25. satisfy the “virtual bus stops” limitation, we agree with Patent Owner that this introduces an improper new theory in the Reply. See PO Sur-reply 20– 22.” slip op. at 29

  Patent outcomesUS 9,816,824 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,816,824
• Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCNo claims unpatentable
  PTAB · Feb 6, 2023 · PGR2021-00103 · APJ Patrick R Scanlon · PGR · Final written decision

  Claims 1–28 were not shown unpatentable on any asserted ground; the Board found the prior art failed to establish key limitations and rejected the enablement and indefiniteness challenges.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In reply, Petitioner argues that the ’764 patent’s control system is not complex as there are no detailed algorithms, logic, or software. Pet. Reply 4. Instead, the control system merely raises or lowers power of the pumps in accordance with the demand HHP of the job design. Id. (citing Ex. 1036, 97:15–98:18, 98:21–99:25, 100:1–101:25, 102:2–7, 115:4–9, 115:24–116:4, 116:17–22; Ex. 1001, 5:2–6, 6:36–7:7, 10:4–64). According to Petitioner, this “rudimentary control concept” does not necessitate the higher skill level proposed by Patent Owner. Id. Petitioner further notes that Dr. Adnan testifies that “a mechanical engineer who has worked in the industry developing programming and control systems could fall within this definition,” and the person of ordinary skill in the art “is ‘just a specifier.’” Id. (quoting Ex. 2003 ¶ 22; Ex. 1036, 161:21–164:18). Based on our review of the record before us, particularly the ’764 patent’s description and Dr. Adnan’s testimony, we agree with Petitioner that the ordinary level of skill in the art does not require the high level of specialized knowledge of control systems suggested by Patent Owner. Moreover, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on the full record, we are not persuaded that Mr. Marscher is unqualified to serve as an expert in this proceeding. As noted above, a person of ordinary skill in the art is not required to have been a fracturing operator. Patent Owner’s proposed definition does not even require experience as a fracturing operator. See PO Resp. 20–21. Furthermore, Mr. Marscher testifies that he has extensive experience developing pumps for fracturing applications. Ex. 2027, 6:24–8:7. Mr. Marscher also testifies that he has experience with control systems relating to pumps and pumps units. Id. at 212:19–23. This testimony, as well as his declaration and curriculum vitae, show that Mr. Marscher has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004. Accordingly, we are not persuaded that Mr. Marscher’s qualifications or experience provide reason to discount the weight associated with Mr. Marscher’s testimony.” slip op. at 10

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

    “In its Reply, Petitioner argues that the maximum power output value is the pump unit’s highest HHP output and one of ordinary skill in the art would have understood this value is the pump unit’s output power in intermittent duty. Pet. Reply 2–3 (citing Ex. 1003 ¶¶ 71–72, 123–124; Pet. 9–10; Ex. 1036, 64:17–67:13, 119:17–120:11, 124:7–24, 198:9–200:9, 221:8–222:15). However, even if Petitioner is correct that the “maximum power output value” is near or equivalent to a pump unit’s output power in intermittent duty, we are still not persuaded that the term “maximum intermittent power” should be tied to the “maximum power output value,” in conflict with the definition provided in the Specification. Petitioner also argues that Patent Owner’s proposed construction is indefinite. Pet. Reply 3. For the reasons discussed below (see supra § II.I.1), we determine that Petitioner has not shown by a preponderance of the evidence that the term “maximum intermittent power,” as defined in the Specification, is indefinite. Thus, based on the complete record before us, we maintain our prior construction of “maximum intermittent power” for this Final Written Decision.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “3. Additional Terms We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes because doing so would have no effect on the analysis below. See 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)).” slip op. at 13

  Patent outcomesUS 10,815,764 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,815,764
• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCNo claims unpatentable
  PTAB · Dec 2, 2022 · IPR2022-00361 · APJ Brent M Dougal · IPR · Final written decision

  The Board held claims 1–14 not shown unpatentable because Mann was not established as analogous art and the asserted obviousness grounds all relied on Mann.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(‘PHOSITA’) at the time of the ’924 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 5 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 7. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’924 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7

  • Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable

    “A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). The Federal Circuit has laid out two separate tests to determine whether a reference is analogous art to the claimed invention, i.e., whether one of ordinary skill in the art would even look to the 2004). They are: “(1) whether the art is from the same field of [the inventor’s] endeavor” and “(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id.; see also In re Klein, 647 F.3d at 1348. Petitioner only addresses the first test (“field of endeavor”) and has thus waived any arguments related to the second test (“reasonably pertinent to the particular problem”).” slip op. at 10

  • BurdenNot shown unpatentable

    “For all of these reasons, Petitioner has not established by a preponderance of the evidence that Mann is analogous art to the ’924 patent. Nor has Petitioner established that Mann is a proper reference for use in an obviousness challenge. d) Conclusion for Claims 1–6, 11, 14 As Petitioner has not established that Mann is a proper reference for use in an obviousness challenge, Petitioner has not established by a preponderance of the evidence that claims 1–6, 11, and 14 are obvious over the combination of Mann and Numazaki.” slip op. at 16

  Patent outcomesUS 8,194,924 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 8,194,924
• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCNo claims unpatentable
  PTAB · Dec 2, 2022 · IPR2022-00093 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–14 were not shown unpatentable because Mann was not established as analogous art and thus was not a proper reference for the asserted obviousness combinations.

  RulingsFinal written decision

  • Obviousness (§103) › Analogous artNon analogous artNot shown unpatentableNot shown unpatentable

    “A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). The Federal Circuit has laid out two separate tests to determine whether a reference is analogous art to the claimed invention, i.e., whether one of ordinary skill in the art would even look to the 2004). They are: “(1) whether the art is from the same field of [the inventor’s] endeavor” and “(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id.; see also In re Klein, 647 F.3d at 1348. Petitioner only addresses the first test (“field of endeavor”) and has thus waived any arguments related to the second test (“reasonably pertinent to the particular problem”).” slip op. at 10

  • BurdenNot shown unpatentable

    “For all of these reasons, Petitioner has not established by a preponderance of the evidence that Mann is analogous art to the ’924 patent. Nor has Petitioner established that Mann is a proper reference for use in an obviousness challenge. d) Conclusion for Claims 1–6, 11, 14 As Petitioner has not established that Mann is a proper reference for use in an obviousness challenge, Petitioner has not established by a preponderance of the evidence that claims 1–6, 11, and 14 are obvious over the combination of Mann and Numazaki.” slip op. at 16

  Patent outcomesUS 8,194,924 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 8,194,924
• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCNo claims unpatentable
  PTAB · Dec 2, 2022 · IPR2021-00923 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–14 were not shown unpatentable because Mann was not established as analogous art and a proper reference for the obviousness challenges.

  RulingsFinal written decision

  • Obviousness (§103) › Analogous artNon analogous artNot shown unpatentableNot shown unpatentable

    “A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). The Federal Circuit has laid out two separate tests to determine whether a reference is analogous art to the claimed invention, i.e., whether one of ordinary skill in the art would even look to the 2004). They are: “(1) whether the art is from the same field of [the inventor’s] endeavor” and “(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id.; see also In re Klein, 647 F.3d at 1348.” slip op. at 10

  Patent outcomesUS 8,194,924 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 8,194,924
• Intel Corporation v. Health Discovery CorporationNo claims unpatentable
  PTAB · Sep 16, 2022 · IPR2021-00554 · APJ Per Curiam · IPR · Final written decision

  Claims 1, 5–7, 13, 18, 22, and 32 were not shown unpatentable under § 103 because Intel did not establish a reason to combine Kohavi, Boser, and Hocking.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “B. LEVEL OF SKILL IN THE ART Petitioner contends a person of ordinary skill in the art at the time of the alleged invention of the ’483 patent (a “POSITA”) would have had “at least a Master’s degree in electrical engineering, computer science, or the equivalent with three years of experience in machine learning and data-analysis techniques.” Pet. 19–21 (citing Ex. 1003 ¶ 15). Petitioner contends further that “[a]dditional education could substitute for professional experience, and vice versa. Id. at 21. Patent Owner does not contest that a skilled artisan would have this kind background knowledge and experience, except that it “believes that the use of the term ‘at least’ is inappropriate inasmuch as it would extend to persons having more than ordinary skill in the art.” Resp. 24. We agree with Patent Owner and adopt the parties’ articulation of the level of ordinary skill in the art without the term “at least.” This articulation is supported by Dr. Evgeniou’s testimony and appears commensurate with the level of ordinary skill as reflected in the asserted prior art and the ’483 patent.” slip op. at 7

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

    “C. CLAIM CONSTRUCTION Petitioner proposes that we construe the term “data” as “biological data.” Pet. 19. Patent Owner disputes Petitioner’s construction, and asserts that we need not construe the term to resolve any asserted ground in this petition. See Resp. 21–24. We agree with Patent Owner that no claim terms require express construction in order to determine whether or not 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 8

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

    “reasoning Petitioner has proffered in support of combining the teachings of Kohavi, Boser, and Hocking in the manner proposed in the Petition lacks rationale underpinning. Specifically, the evidence and reasoning do not demonstrate persuasively that a person of ordinary skill in the art would have been motivated to modify Kohavi’s wrapper method to use a cost function instead of accuracy as the evaluation function for the wrapper method. At most, the combined Kohavi-Boser-Hocking disclosures suggest that a person of ordinary skill in the art, once presented with the separate pieces of highlighted information from those references, may have understood that they could be combined in the manner claimed, but that is not enough because Petitioner has not shown persuasively why a person of ordinary skill in the art would have known to pick out those three references and combine them to arrive at the claimed invention. See Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017) (holding that the Board’s reasoning that “a person of ordinary skill in the art reading Woodhill and Stefik would have understood that the combination of Woodhill and Stefik would have allowed for the selective access features of Stefik to be used with Woodhill’s content-dependent identifiers feature” to be deficient to establish a motivation because it “say[s] no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined. And that is not enough: it does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention”).” slip op. at 14

  Patent outcomesUS 8,095,483 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,095,483
• Intel Corporation v. Health Discovery CorporationNo claims unpatentable
  PTAB · Sep 12, 2022 · IPR2021-00552 · APJ Garth D Baer · IPR · Final written decision

  Claims 1, 5, 6, 10, 12, and 16 were not shown unpatentable because Intel did not establish that a skilled artisan would have been motivated to use Hocking’s weight ranking in the Kohavi-Boser method.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. LEVEL OF SKILL IN THE ART Petitioner contends a person of ordinary skill in the art at the time of the alleged invention of the ’959 patent would have had “at least a Master’s degree in electrical engineering, computer science, or the equivalent with three years of experience in machine learning and data-analysis techniques.” Pet. 21 (citing Ex. 1003 ¶ 15). Further, “[a]dditional education could substitute for professional experience, and vice versa. Id. Patent Owner does not contest that a skilled artisan would have this kind background knowledge and experience, except that it “believes that the use of the term ‘at least’ is inappropriate inasmuch as it would extend to persons having more than ordinary skill in the art.” PO Resp. 22–23. We agree with Patent Owner and adopt the parties’ articulation of the level of ordinary skill in the art without the term “at least.” This articulation is supported by Dr. Evgeniou’s testimony and appears commensurate with the level of ordinary skill as reflected in the asserted prior art and the ’959 patent.” slip op. at 8

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

    “C. CLAIM CONSTRUCTION Petitioner proposes that we construe the term “data” as “biological data.” Pet. 20–21. Patent Owner disputes Petitioner’s construction, and asserts that we need not construe the term to resolve any asserted ground in this petition. See PO Resp. 19–22. We agree with Patent Owner that no claim terms require express construction in order to determine whether or not 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 8

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

    “context of the combination [of Kohavi/Boser/Hocking], a feature subset is evaluated using Boser’s SVM as the induction algorithm, and ranking criteria [is] computed based on the estimates of feature weight values determined according to the teachings of Hocking.” Pet. 48, 57–58 (emphasis added). This, however, only begs the central question of why a skilled artisan had a motivation to change the ranking criteria in Kohavi’s wrapper method from one that is based on estimates of how well the induction algorithm (an SVM in the proposed combination) classifies data (i.e., an evaluation of the SVM result) to one that is based on the feature weight estimates computed by an SVM to classify data (i.e., an evaluation of a variable used to provide an SVM result). Petitioner states that a skilled artisan “would have been motivated to use Hocking’s simple and computationally efficient ranking based on weight values” generated by Boser’s SVM, but Petitioner provides no persuasive basis to find that a skilled artisan would have viewed Hocking’s “ranking based on weight values” to be a simple or computationally efficient ranking criteria in Kohavi’s wrapper method used with an SVM. Although Petitioner’s expert refers to Hocking’s teaching that an optimal subset of variables can be derived “with a minimum of computation” (Ex. 1003 ¶ 216), we find little persuasive value in this representation as a motivating factor because it is unclear a skilled artisan would have recognized a link between the minimal computational benefits of Hocking’s ranking when applied to Kohavi/Boser combination. It is undisputed that Hocking’s ranking is characterized as using “a minimum of computation” in the context of a very different application than SVMs and relies on different objectives and assumptions. See Reply 11, 13, 15. Petitioner has not shown persuasively that those computational gains would also have been recognized by skilled artisans to occur in the context of Kohavi’s wrapper method applied to Boser’s SVM. Petitioner expert suggests that, because Kohavi describes using the computationally complex “backwards feature elimination,” “Hocking’s teachings of simple and computationally efficient ranking criteria for feature selection” would have motivated further improvement to Kohavi’s wrapper method.” Ex. 1003 ¶ 216. No persuasive technical reasoning or evidence, however, is offered to actually demonstrate that a skilled artisan would have reasonably expected an improvement to occur; for example, neither Petitioner, nor its expert, explains how the modification would have improved upon what was previously known. All that is provided is a conclusory statement that has little, if any, evidentiary value.” slip op. at 32

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Regarding Petitioner’s contention that such modification would have been more computationally efficient, Patent Owner’s expert credibly and persuasively explains why a skilled artisan would not have recognized Hocking’s linear regression model to be reducible to the computationally efficient form that Petitioner’s expert suggests. Ex. 2014 ¶¶ 40–54. In particular, we find it credible that a skilled artisan would not have known at the time of the invention that the estimated variance values of the combined Hocking’s Equations (5) and (6) could be treated as a constant and, as a result, canceled out of the equations. Id. In view of this fact, we are not persuaded that Hocking’s reference to simplicity and computational efficiency demonstrates a skilled artisan had a motivation to make the modification Petitioner proposes. Furthermore, because a skilled artisan would not have recognized at the time of the invention that Hocking’s Equations (5) and (6) were reducible to the form Petitioner proposes,” slip op. at 34

  Patent outcomesUS 7,542,959 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,542,959
• Intel Corporation v. Health Discovery CorporationNo claims unpatentable
  PTAB · Sep 6, 2022 · IPR2021-00550 · APJ Garth D Baer · IPR · Final written decision

  Claims 1–23 were not shown unpatentable under § 103 because Petitioner did not establish a motivation to combine the references to use SVM weights as ranking criteria.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “C. CLAIM CONSTRUCTION Petitioner proposes that we construe the term “data” as “biological data.” Pet. 22. Patent Owner disputes Petitioner’s construction, and asserts that we need not construe the term to resolve any asserted ground in this petition. See Resp. 22–26. We agree with Patent Owner that no claim terms require express construction in order to determine whether or not 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 8

  • Skill levelSkill level board ownOther

    “B. LEVEL OF SKILL IN THE ART Petitioner contends a person of ordinary skill in the art at the time of the alleged invention of the ’188 patent (a “POSITA”) would have had “at least a Master’s degree in electrical engineering, computer science, or the equivalent with three years of experience in machine learning and data-analysis techniques.” Pet. 22–23 (citing Ex. 1003 ¶ 15). Further, “[a]dditional education could substitute for professional experience, and vice versa. Id. at 23. Patent Owner does not contest that a skilled artisan would have this kind background knowledge and experience, except that it “believes that the use of the term ‘at least’ is inappropriate inasmuch as it would extend to persons having more than ordinary skill in the art.” Resp. 26. We agree with Patent Owner and adopt the parties’ articulation of the level of ordinary skill in the art without the term “at least.” This articulation is supported by Dr. Evgeniou’s testimony and appears commensurate with the level of ordinary skill as reflected in the asserted prior art and the ’188 patent.” slip op. at 8

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

    “teachings demonstrates that a skilled artisan would have had a motivation at the time of the invention to modify Kohavi’s wrapper method, when used with a Boser SVM, to change the computed ranking criteria from the estimated accuracy or performance of Boser’s SVM classifier to the optimized plurality of weights computed by Boser’s SVM algorithm in the process of providing a classifier. As noted above, at most, the combined Kohavi/Boser/Hocking disclosures suggest that a skilled artisan, once presented with the separate pieces of highlighted information from those references, may have understood that they could be combined in the manner claimed, but that is not enough because Petitioner has not shown persuasively why a skilled artisan would have known to pick out those three references and combine them to arrive at the claimed invention. See Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017) (holding that the Board’s reasoning that “a person of ordinary skill in the art reading Woodhill and Stefik would have understood that the combination of Woodhill and Stefik would have allowed for the selective access features of Stefik to be used with Woodhill’s content-dependent identifiers feature” to be deficient to establish a motivation because it “say[s] no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined. And that is not enough: it does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention”).” slip op. at 30

  Patent outcomesUS 7,117,188 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,117,188
• Platform Science, Inc. v. Omnitracs, LLCNo claims unpatentable
  PTAB · Aug 29, 2022 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–4, 6–9, 11, 12, and 15 were not shown unpatentable because Coffee did not disclose the claimed copying, and Coffee combined with Heijden did not cure that deficiency.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “In our Initial and Rehearing Decisions, we noted that Patent Owner did not contest Petitioner’s proffered level of ordinary skill in the art at that stage of the proceeding and we found “Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’308 patent and the prior art of record.” Initial Dec. 13 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978)); Rehearing Dec. 16 (same). Therefore, we adopted Petitioner’s unopposed position as to the level of ordinary skill in the art. Initial Dec. 13; Rehearing Dec. 16. In its Patent Owner Response, Patent Owner states that “[f]or purposes of this proceeding, Patent Owner does not dispute Petitioner’s offered level of ordinary skill in the art.” PO Resp. 7. Accordingly, we maintain our preliminary finding by adopting Petitioner’s proposed level of ordinary skill in the art, as set forth above.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “received message 7102 and the header of the response message 7202 are not the same. PO Resp. 25 (citations omitted); Pet. Reply 14. In the Petition, Petitioner argued that “header information” was the same in each message (received and response). Pet. 32 (citations omitted), 36–37. Petitioner relies on Tables 58 and 63, which show “Header.” Id. at 32–33, 37. Petitioner also relies on paragraphs 102 and 118 of Mr. Andrews’s Declaration. Neither the Petition nor Mr. Andrews’s Declaration, however, provide any sufficient basis to find that even a portion of the header or header information is copied from the received message to the response message. Mr. Andrews states his opinion as though it were fact without providing the underlying factual support for his opinion. See Ex. 1003 ¶¶ 102, 118; see 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). In cross-examination, Mr. Andrews provided additional information explaining which portion of the headers he believes are the same, but he still does not provide any explanation as to why he believes the information is copied. See, e.g., Ex. 2007 at 111:3–25. The same is true of Petitioner’s Reply, which reiterates Mr. Andrews’s deposition testimony, but still fails to provide any reason as to why Coffee’s charts or Mr. Andrews’ testimony necessarily means that Coffee copies a portion of the header from the received message to the response message. See Continental Can Co. U.S.A., Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”). And, despite Petitioner’s identification of a “Header” listed in Tables 58 and 63, Coffee does not expressly describe the header or part of the header as being copied from the received message to the response message. The Petition and Mr. Andrews also state that “if Coffee did not employ such copying, the response message would not automatically include information extracted from the received message.” Pet. 38 (citing Ex. 1003 ¶ 118). But, Coffee does not expressly describe the header as being “extracted from the received message” or describe automatically including the header in a response message to make the leap argued by Petitioner and Mr. Andrews. Accordingly, on the full record before us, we find that Petitioner has not established that Coffee explicitly or inherently discloses copying the header or header information and we do not credit Mr. Andrews’ testimony, discussed above, because he fails to provide the underlying factual basis for the opinions offered.” slip op. at 43

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

    “proceeding and on the full record before us, we do not find that Coffee’s silence is sufficient to support Petitioner’s argument. See Campbell Soup Co. v. Gamon Plus, Inc., 787 Fed. Appx. 731, 739 (Fed. Cir. 2019) (“We do not find any error in the Board changing its understanding of the teachings of [a prior art reference] from the institution decision to the final written decision. ‘The Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced that its inclinations were wrong.’” (quoting Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016))). Coffee does not explain the process by which the IOD of the received message is included in the response message; rather, Coffee just states that the response message “contains the IOD of the message being answered.” See, e.g., Ex. 1005, 56:63–67 (see full text quoted above). In particular, although Coffee attributes certain actions to the operator, the lack of attribution to the operator does not necessitate that the only viable possibility remaining is that Coffee copies the IOD from the received message to the response message. Even if it may be said that Coffee probably (or possibly) copies the IOD, that probability is not sufficient to find that Coffee necessarily copies the IOD. See Continental Can, 948 F.2d at 1269 (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”).7 Additionally, on the full record before us, we determine that Mr. Andrews’s testimony, as with his testimony as to copying of the header and selected response, fails to provide any factual or underlying support for his opinions expressed therein. See Ex. 1003 ¶¶ 100–102. In particular, the leap occurs in paragraph 102, where Mr. Andrews takes the fact that some information (at least the IOD) from the received formatted message is included with the response message to opine that this means the information is “copied over.” Id. ¶ 102. But, again, Coffee is silent. And because Mr. Andrews did not provide any underlying factual basis for his opinion, we do not credit his testimony as to copying the IOD. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 48

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

    “generally, including the alleged benefits of such and reasons why one of ordinary skill in the art would have been prompted to include field-mapping information in Coffee’s MDT. See id. at 62–70. None of Petitioner’s discussion, however, explains how the combination of Coffee and Heijden remedies the deficiencies that we identified regarding Petitioner’s challenge based on Coffee. In particular, Petitioner does not assert or explain how the teachings of Heijden would be applied to Coffee such that Coffee would then copy or fill in the specific information from Coffee’s received message to Coffee’s response message, particularly as pertains to the header, Response, and IOD fields (which Petitioner relied on in the first ground), or any other information field from Coffee. The same is true of Mr. Andrews’s testimony. See Ex. 1003 ¶¶ 214–231. Additionally, it appears that Petitioner’s analysis of the combination of Heijden and Coffee maintains the position that Coffee copies information fields. See Pet. 70 (“Given that Coffee’s system already implements field mapping to copy information fields . . . .”). And, Mr. Andrews’s testimony similarly maintains that Coffee copies information fields. See Ex. 1003 ¶ 229 (“Coffee also discloses (at least inherently) field mapping by describing that data is copied from fields in request messages into corresponding fields in response message.”). But, as we explain in detail in the context of Petitioner’s challenge based on Coffee, Petitioner has not shown sufficiently that Coffee copies or fills in information from a received message to a response message. Thus, we do not find and Petitioner does not allege that Ground “1B” fills the gaps identified in Petitioner’s Ground “1A.”10 Accordingly, we determine that Petitioner has not established, by a preponderance of the evidence, that the combination of Coffee and Heijden would have rendered the subject matter of claims 1–4, 7–9, and 12 unpatentable.” slip op. at 60

  Patent outcomesUS 6,925,308 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,925,308

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.