• Apple Inc. v. Rfcyber Corp.All claims unpatentable
  PTAB · Jan 19, 2024 · IPR2022-01239 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–5, 12–14, 17, and 18 are unpatentable under § 103 over Laracey and Jogu, with Tang or Dorsey added for claims 17 and 18, respectively.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art “would have had at least a bachelor’s degree in computer science, computer engineering, or equivalent with at least one year of experience in the field of mobile payments,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 6–7 (citing Ex. 1003 ¶¶ 34–35). Patent Owner does not address the level of ordinary skill in its Response. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior” slip op. at 11

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

    “agreed to construe the claim term “payment gateway” as a “server or collection of servers for settling a payment.” Pet. 9 (citing Ex. 1016, 2). Petitioner further contends that the parties are disputing the constructions of the claim terms “e-purse,” e-purse applet,” and “application” in the District Court Case, but the differences between the proposed constructions need not be resolved for this proceeding because its asserted grounds of unpatentability satisfy both Patent Owner’s and Petitioner’s proposed constructions.9 Id. at 9–10 (citing Ex. 1016, 4–5). Petitioner, however, applies its proposed construction in its arguments. See Pet. 29. 9 In the District Court Case, Petitioner proposed that “e-purse” should be construed as “software that stores electronic financial information, including electronic value, in a local portable device,” while Patent Owner proposed was adopted in the District Court Case, as well as in another proceeding in the Eastern District of Texas. PO Resp. 11 (citing RFCyber Corp. v. Google LLC, No. 2:20-cv-274-JRG, 2021 WL 5357465, at *6-*9 (E.D. Tex. Nov. 17, 2021); RFCyber Corp. v. Apple Inc., No. 6:21-cv-00916-ADA, Dkt. 100 (W.D. Tex. Sep. 13, 2022)). Patent Owner argues that because the parties agree that an e-purse must be “software” that “stores financial information in a local device,” “[t]he Board need not resolve the distinction between the parties’ proposals for this proceeding because Petitioner fails to show that Laracey discloses ‘an electronic purse (e-purse) maintained locally in the mobile device’ under the agreed portions of the construction.” Id. at 11–12. We agree that the differences between the two proposed constructions are minimal. On the full record before us, however, Petitioner does not explain sufficiently why the proper construction of “e-purse” requires that the stored financial information include electronic value and that the software is in a local portable device. Therefore, we adopt the district court’s construction of “e-purse” as “software that stores electronic financial information in a local device” for purposes of this Decision.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “does rely on Laracey’s stored value account alone as the claimed e-purse, we disagree that Petitioner has not shown sufficiently that Laracey’s stored value account is software. As noted above, Mr. Smith testifies that “a stored value account was well known prior to the ’046 patent and was commonly stored in a form of secured memory and contained data representing an transaction” and “Laracey’s stored value account would have been understood to be software located in memory within a mobile device that contained financial information including data representing an amount of money (e.g., a balance) useable for purchases.” Ex. 1003 ¶ 100. In contrast, Dr. Weaver testifies that “an ‘account’ like the PetPlace Gift account is not software. Instead, it is simply a visualization of a collection of information. Laracey simply displays the gift card account balance 884n on the mobile phone 102 after that account balance has been received from the Transaction Management System (TMS) 130.” Ex. 2001 ¶ 56. Weighing the competing testimony of Mr. Smith and Dr. Weaver, we credit Mr. Smith’s testimony as more persuasive evidence. Dr. Weaver does not explain adequately why “a visualization of a collection of information” is not software, or, more importantly, why displaying an account balance on the mobile phone does not involve software.” slip op. at 20

  • BurdenFwd all claims unpatentableUnpatentable

    “Based on the full record before us, we determine that Petitioner has met its burden of establishing that the combination of Laracey and Jogu discloses the “verifying” limitations of claims 1 and 12. c) The Remaining Aspects of Petitioner’s Contentions Patent Owner does not offer any arguments specifically addressing the remaining limitations of claims 1 and 12. PO Resp. 13–32. We need not set forth formal findings as to the undisputed assertions by Petitioner that the combination of Laracey and Jogu discloses or suggests these limitations. See LG Elecs., Inc. v. Conversant Wireless Licensing S.A.R.L., 759 F. App’x 917, 925 (Fed. Cir. 2019) (“The Board is ‘not required to address undisputed matters’ or arguments about limitations with which it was never presented.” (quoting In re Nuvasive, Inc., 841 F.3d 966, 974 (Fed. Cir. 2016))). Also, we cautioned Patent Owner “that any arguments not raised in the response may be deemed waived.” Paper 8, 9; cf. 37 C.F.R. § 42.23(a) (“Any material fact not specifically denied may be considered admitted.”). Nevertheless, we have reviewed Petitioner’s contentions with respect to the remaining limitations of claims 1 and 12 and find that the combination of Laracey and Jogu discloses these limitations as set forth by Petitioner. See Pet. 14–29, 32–33, 42–47, 52–54. d) Conclusion For the above reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1 and 12 are unpatentable over the combination of Laracey and Jogu.” slip op. at 36

  Patent outcomesUS 10,600,046 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,600,046
• Apple Inc. v. Rfcyber Corp.All claims unpatentable
  PTAB · Jan 19, 2024 · IPR2022-01256 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1–11 are unpatentable as obvious over Buhot, GPC, and Zhu.

  RulingsFinal written decision

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

    “earlier applications, in particular Application No. 11/534,653 (“the ’653 application”), which issued as U.S. Patent No. 8,118,218 B2 (“the ’218 patent”). “‘It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.’” PowerOasis, Inc. v. T- Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). The test for determining compliance with the written description requirement under § 112(a) is whether the original disclosure of the earlier-filed application reasonably would have conveyed to one with ordinary skill in the art that the inventor had possession of the claimed subject matter at the time of the earlier-filed application. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). It is well settled that “[e]ntitlement to a filing date does not extend to subject matter which is not disclosed but would be obvious over what is expressly disclosed.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571−72 (Fed. Cir. 1997). “It is not sufficient for purposes of the written description requirement of § 112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Id. We agree with Petitioner there does not appear to be support for limitation [1(j)] in the ’653 application. We find that the disclosure of the ’653 application—limited to general teachings of a smart card, an operating system, and a smart card manager—is insufficient to show possession of limitation [1(j)]. See Ex. 2001 (’218 patent), 4:47–56. As we explained above, “[e]ntitlement to a filing date does not extend to subject matter which is not disclosed but would be obvious over what is expressly disclosed.” Lockwood, 107 F.3d at 1571−72. The ’653 Application contains no disclosure of replacing applications, even if the disclosure might render such replacing obvious, it is not sufficient to show the possession required to establish entitlement to a priority date. Accordingly, we agree with Petitioner that the challenged claims of the ’724 patent are entitled to a priority date no earlier than March 4, 2012.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the declaration testimony of Mr. Smith, Petitioner contends that an ordinarily skilled artisan for the ’724 patent “would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least one year of experience in the field of mobile payment technology. Additional pertinent education might substitute for the requisite experience and vice versa.” Pet. 6–7 (citing Ex. 1007 (Smith Decl.) ¶¶ 34–35). Patent Owner states that “[t]he parties agree on the level of skill in the art.” PO Resp. 11. Accordingly, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’724 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11

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

    “Petitioner contends that it applies “the plain and ordinary meaning as understood by a [person of ordinary skill in the art] for all terms not expressly construed below,” and indicates that in parallel District Court litigation, the parties agreed to claim construction for the term “emulator device” to mean “hardware device, alone or containing software, that pretends to be another particular device or program that other components expect to interact with.” Pet. 8. Petitioner proposes that the term “application” should be construed to mean “‘software program suitable for being executed on a portable device,’” but that the “distinction between the parties’ respective proposals need not be resolved for this proceeding.” Id. at 8–9. Petitioner finally contends that the phrase “a portion of or in entirety” in each independent claim means “in its entirety or partially,” but not both. Id. at 9. Patent Owner submits that “[t]he parties agree that the Board should construe ‘emulator device’ as ‘hardware device, alone or containing software, that pretends to be another particular device or program that other components expect to interact with.’” PO Resp. 11. Patent Owner “does not believe that any other terms require construction to resolve the issues presented in this proceeding.” Id. We apply the agreed upon constructions above, but otherwise find that no express constructions are necessary for this decision.” slip op. at 12

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

    “We agree with Petitioner that, even if the applications were stored in “generic memory” as Patent Owner contends, Zhu provides adequate security and would not undermine Petitioner’s motivation to combine. See Intel, 61 F.4th at 1380 (“It’s not necessary to show that a combination is the best option, only that it be a suitable option.”). Indeed, Zhu addresses the problem Patent Owner contends it would cause in the combination.3 As Zhu 3 Patent Owner argues that Petitioner should be precluded from discussing Zhu’s encryption embodiment because it was not raised in the Petition. See Sur-Reply 6–7. We disagree. The claims do not recite anything about how the data should be stored. Thus, it is not surprising that the Petition did not address it. Patent Owner raised the teaching away argument regarding the security of the data. See PO Resp. 12–16. Petitioner relies on the exact same mapping, same motivation, and same arguments why Zhu accounted for certain limitations. See Reply 4–11. Petitioner’s Reply merely explained that Zhu did address the problem Patent Owner contended would “teach away” from the combination. Indeed, Patent Owner was aware of Zhu’s teachings and addressed them in their Patent Owner Response. The Federal recognizes, “[l]oading one of the smart card applications already resident on the smart card to another memory location on the mobile device can provide sufficient memory for the selected smart card application, but can also create a security problem.” Ex. 1006 (Zhu), 3:25–34. To address this problem, Zhu proposes encrypting these applications in generic memory which “reduces the possibility of unauthorized access to the information.” Id. at 3:59–61, 8:30–55, 9:28–33; Ex. 1033 (Smith Supp. Decl.) ¶¶ 5–6. Although acknowledging this disclosure, Patent Owner’s expert, Dr. Weaver, testifies that Zhu’s encryption is inadequate and that encryption would have certain drawbacks. See Ex. 2002 (Weaver Decl.) ¶ 69. We find this testimony, which directly contradicts the teachings of Zhu that encryption is an adequate solution, lacks sufficient support to be entitled to much weight. Dr. Weaver provides no citations to support his contention that a person of ordinary skill at the time of the invention would find encryption so inadequate or problematic as he now contends. Moreover, we find that Dr. Weaver’s testimony on cross examination provides an additional, independent basis to give this testimony little weight. On cross examination, Dr. Weaver contended that there was nothing uniquely inadequate about the particular encryption scheme disclosed in Zhu, but rather that his “opinion was more general, that encryption schemes known in the 2012 time frame were all breakable with computing power and time,” and thus, inadequate Circuit has explained that “the petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner.” Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018). That is the case here, so we find that Petitioner’s arguments and evidence regarding Zhu’s encryption are proper. for storing payment applications in a mobile device’s general memory. Ex. 1027 (Weaver Tr.), 26:11–23; see also id. at 23:3–8 (“[D]oes encryption ever provide a sufficiently high security to permit storing payment application on a mobile device’s general memory? A. No”); 24:15–25:23 (testifying all publicly known encryption schemes in 2012 were breakable). However, when confronted with the fact that the ’724 patent discloses storing payment application on general baseband memory using an encryption method that was breakable, id. at 26:24–29:7, Dr. Weaver testified that this encryption method was sufficient to allow storing payment applications in general baseband memory even though it was “not perfectly secure,” id. at 29:8–14. Dr. Weaver provides no explanation or rationale why the encryption method in the ’724 patent, which he admits suffers from the same drawbacks he identified with respect to Zhu, is sufficient, but other encryption methods would not be sufficient. In its Sur-reply, Patent Owner attempts to rehabilitate Dr. Weaver’s testimony with justifications and qualifications not found in his original testimony. Sur-Reply 7–8. Yet, Dr. Weaver’s testimony discussed above was clear and unequivocal. See Ex. 1027 (Weaver Tr.), 24:15–29:14. Patent Owner made no effort to redirect his testimony at his deposition, so it cannot now do so through mere attorney argument. We find the inconsistency between Dr. Weaver’s treatment of Zhu and his treatment of similar disclosure in the ’724 patent exposes the insufficient reasoning supporting his opinions regarding the adequacy of Zhu’s use of encryption in the combination. Accordingly, we give no weight to his testimony that a skilled artisan would not have combined Zhu with a Buhot/GPC system due to security concerns. In contrast, we find the testimony of Mr. Smith regarding the use of encryption and the tradeoffs with the benefits of adopting Zhu’s memory management technique, which he offers in his Supplemental Declaration, to be well-reasoned, consistent with the disclosure of Zhu and the ’724 patent4, and entitled to substantial weight. See Ex. 1033 (Smith Supp. Decl.) ¶¶ 4–15. As Petitioner recognizes, “‘[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.’” Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016). As Mr. Smith and Dr. Weaver testified, decryption without access to the security keys is an extremely computationally intensive and time-consuming process. Ex. 1033 (Smith Supp. Decl.) ¶¶ 6–8; Ex. 1027 (Weaver Tr.), 23:17–25:2; see also Ex. 10175, 132. Mr. Smith testifies that the benefits of using encryption would be sufficient to resolve the security concerns Patent Owner raises, and that any burden of generating a certificate would be outweighed by the benefits of using encryption and the memory advantages Zhu’s technique would offer. See Ex. 1033 (Smith Supp. Decl.) ¶¶ 4–15. Accordingly, we find that Patent Owner’s security concerns would be” slip op. at 25

  Patent outcomesUS 11,018,724 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 11,018,724
• Apple Inc. v. Rfcyber Corp.All claims unpatentable
  PTAB · Jul 18, 2023 · IPR2022-00413 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1–17 are unpatentable under § 103 over Dua and GlobalPlatform, with Smart Card Handbook and Thibadeau added for claims 7–12.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Here, the parties’ definitions differ in one significant way. Petitioner requires one year of more specific experience, i.e., mobile payment experience, while Patent Owner requires more experience, but that experience can be more general related to computer and network security. We agree with Petitioner that mobile payment technology is an important aspect of the claimed invention and should be included in the definition. However, we also find that Petitioner’s definition is flexible enough to address the concerns of Patent Owner because, as the definition explains “[l]ack of professional experience [can] be remedied by additional education, and vice versa.” Petitioner’s articulation of the level of ordinary skill in the art is consistent with the ’009 patent and the asserted prior art, and we apply it in our obviousness evaluations below.2 See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “is “essential,” Petitioner has still shown a motivation to combine because the proposed combination does not “discard” SIP as Patent Owner contends. In particular, Patent Owner asserts that Petitioner “argues that a [person of ordinary skill] would discard all of Dua’s SIP teachings and use GlobalPlatform’s system for personalization instead.” PO Resp. 12. However, we agree with Petitioner that this mischaracterizes the proposed combination. See Reply 6–7. As the Petition states, Petitioner relies on Dua’s SIP session to establish the initial connection between the endpoints (between the smart card and a server) and download the application and send application identifying information to the server. See Pet. 22 (describing GlobalPlatform’s receipts transmitted “via a wireless SIP session”), 23 (downloading extensions “during a SIP session”). As Mr. Smith credibly testifies, “Dua teaches utilizing the SIP protocol to connect endpoints,” and “Dua’s SIP networking protocol for connecting endpoints functions like a ‘pipe’ to connect the two endpoints (e.g., smart card and server or host such as Dua’s WCM) together over a network.” Ex. 1046 (Smith Supp. Decl.) ¶ 15. Moreover, as Mr. Smith clarifies in his Supplemental Declaration, “Dua’s SIP protocol constructs the connection between endpoints, and GlobalPlatform establishes a secure channel within that connection for smart are ‘not intended, in any way, to limit the scope of the present invention[,]” or “[t]he foregoing disclosure and description of the present invention is illustrative and explanatory thereof” as insufficient). card specific communications.” Ex. 1046 ¶ 14; see also Pet. 24–26 (discussing the use of GlobalPlatform to create the secure channel). We find that Mr. Smith credibly testifies that “a [person of ordinary skill in the art] would have understood that in the combination, GlobalPlatform’s processes relying on the exchange of Application Protocol Data Unit (“APDU”) messages would be sent over Dua’s SIP endpoint-to-endpoint connection (“pipe”) because, (1) SIP is derived from HTTP, (2) APDUs are the standard messaging protocol for smart cards, and (3) it was known to transmit APDUs over HTTP.” Ex. 1046 ¶ 16. Mr. Smith supports this assertion with detailed testimony relying on extensive citations to Dua, Ex. 1046 ¶ 17, GlobalPlatform, id. ¶¶ 18, 20, Chen5 (id. ¶ 19), and Thibadeau, id. ¶ 21. We find this testimony was reasoned, detailed, and entitled to substantial weight. Thus, we find that Petitioner has shown that in the proposed combination Dua’s SIP protocol would not be “discarded,” but rather, would remain an integral part of the combination. See Ex. 1046 ¶¶ 14–21.” slip op. at 23

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

    “(b) “Secure Element” Patent Owner argues that Petitioner fails to show that the combination teaches or suggests a “secure element,” as required by the claims. PO Resp. 18–20. Patent Owner argues that, although “a smart card may be a secure element . . . the ’009 patent does not state or suggest that all smart cards are secure elements.” Id. at 19. Patent Owner asserts that a person of ordinary skill in the art “would therefore understand that a smart card may be a secure element only if it provides the necessary security, such as by being tamper-resistant.” Id. at 19 (citing Ex. 2007 ¶¶ 72–75). Patent Owner contends that “[w]hile some smart cards meet this definition, not every smart card will, and [Petitioner] does not show otherwise.” Id. We find that Petitioner has shown sufficiently that the combination of Dua and GlobalPlatform accounts for this limitation. To begin with, we do not find the testimony of Mr. Gomez on this point to be credible or entitled to much weight. In his Declaration, Mr. Gomez contends that “a secure element must include a heightened level of security and be tamper-proof,” Ex. 2007 ¶ 73, and that “while some secure elements may be smart cards, not all smart cards are secure elements,” id. ¶ 71. Yet, on cross examination, Mr. Gomez repeatedly contended that smart cards and secure elements were “distinctly different” and “separate and unrelated.” Ex. 1045, 53:16–54:1. Mr. Gomez continued to assert that “the common understanding was that a secure element . . . has a very strong level of security beyond what you would normally find . . . in products at the time, such as smart cards.” Id. at 55:22–56:8. This cross examination testimony is inconsistent with his prior testimony and with the Specification of the ’009 patent, which explains that the secure element “may be in [the] form of a smart card.” Ex. 1001, 6:59. There is no indication in the Specification that a “secure element” was a special product “beyond” what was available at the time. If anything, the Specification indicates that the term “secure element” is not intended to capture something different than a smart card, but rather a broad genus of items that include a smart card. See id. at 6:59–61 (“the [secure element] may be in [the] form of a smart card, an integrated circuit (IC) or a software module upgradable by overwriting some of all of the components therein.”). Even if we accept the Patent Owner’s contention that a person of ordinary skill in the art “would . . . understand that a smart card may be a secure element only if it provides the necessary security, such as by being tamper-resistant,”6 we find that Petitioner has shown that the GlobalPlatform-compliant smart cards meet this standard. As Mr. Smith explains in great detail, supported by numerous citations to the prior art, GlobalPlatform-compliant smart cards have and support numerous features designed to make them tamper-resistant. See Ex. 1046 ¶¶ 30–36. We find this testimony wellreasoned, well-supported, and give it substantial weight. Patent Owner argues that the use of a key set cannot make a secure element tamper resistant because a key set is separately recited in the claim. However, Mr. Gomez confirmed that “a key-based encryption scheme” was “one way” to satisfy the claim term “secure element.” Ex. 1045, 57:7–11. Indeed, the only security for the “secure element” mentioned in the Specification is that the secure element “in the mobile device is installed with a set of default 6 Patent Owner and Mr. Gomez have repeatedly stated that no construction of this term is necessary. See Tr. 49:3–18; Ex. 1045, 55:9–56:9. We find no need to construe it because we find that even under the “understanding” that Patent Owner has offered the prior art teaches this limitation.” slip op. at 30

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

    “is “essential,” Petitioner has still shown a motivation to combine because the proposed combination does not “discard” SIP as Patent Owner contends. In particular, Patent Owner asserts that Petitioner “argues that a [person of ordinary skill] would discard all of Dua’s SIP teachings and use GlobalPlatform’s system for personalization instead.” PO Resp. 12. However, we agree with Petitioner that this mischaracterizes the proposed combination. See Reply 6–7. As the Petition states, Petitioner relies on Dua’s SIP session to establish the initial connection between the endpoints (between the smart card and a server) and download the application and send application identifying information to the server. See Pet. 22 (describing GlobalPlatform’s receipts transmitted “via a wireless SIP session”), 23 (downloading extensions “during a SIP session”). As Mr. Smith credibly testifies, “Dua teaches utilizing the SIP protocol to connect endpoints,” and “Dua’s SIP networking protocol for connecting endpoints functions like a ‘pipe’ to connect the two endpoints (e.g., smart card and server or host such as Dua’s WCM) together over a network.” Ex. 1046 (Smith Supp. Decl.) ¶ 15. Moreover, as Mr. Smith clarifies in his Supplemental Declaration, “Dua’s SIP protocol constructs the connection between endpoints, and GlobalPlatform establishes a secure channel within that connection for smart are ‘not intended, in any way, to limit the scope of the present invention[,]” or “[t]he foregoing disclosure and description of the present invention is illustrative and explanatory thereof” as insufficient). card specific communications.” Ex. 1046 ¶ 14; see also Pet. 24–26 (discussing the use of GlobalPlatform to create the secure channel). We find that Mr. Smith credibly testifies that “a [person of ordinary skill in the art] would have understood that in the combination, GlobalPlatform’s processes relying on the exchange of Application Protocol Data Unit (“APDU”) messages would be sent over Dua’s SIP endpoint-to-endpoint connection (“pipe”) because, (1) SIP is derived from HTTP, (2) APDUs are the standard messaging protocol for smart cards, and (3) it was known to transmit APDUs over HTTP.” Ex. 1046 ¶ 16. Mr. Smith supports this assertion with detailed testimony relying on extensive citations to Dua, Ex. 1046 ¶ 17, GlobalPlatform, id. ¶¶ 18, 20, Chen5 (id. ¶ 19), and Thibadeau, id. ¶ 21. We find this testimony was reasoned, detailed, and entitled to substantial weight. Thus, we find that Petitioner has shown that in the proposed combination Dua’s SIP protocol would not be “discarded,” but rather, would remain an integral part of the combination. See Ex. 1046 ¶¶ 14–21.” slip op. at 23

  Patent outcomesUS 9,240,009 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,240,009
• Medtronic Corevalve LLC / Medtronic, Inc. v. Speyside Medical, LLCAll claims unpatentable
  PTAB · Aug 16, 2022 · IPR2021-00244 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 21 and 22 are unpatentable as obvious over Salahieh and Sands; the Board did not reach the remaining grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSITA”), at the time the ’708 or its parent applications were filed, would have had a minimum of either a medical degree and experience working as an interventional cardiologist or a Bachelor’s degree in bioengineering or mechanical engineering (or a related field) and approximately two years of professional experience in the field of prosthetic cardiovascular implants. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 23 (citing Ex. 1002 ¶¶ 31–34). For purposes of this Final Written Decision, we maintain our determination from the Institution Decision because neither party disputes that determination, and that level of ordinary skill is consistent with the record. See Resp. 11 (applying Petitioner’s level of ordinary skill).” slip op. at 8

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

    “ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Furthermore, we expressly construe the claims only to the extent necessary to resolve the issues presented in this case. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 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))). For purposes of this decision, the parties agree that we do not need to construe any claim terms to resolve their dispute. Resp. 12, 13 n.1; Reply 1 (“The Board need not construe any claim terms as the claims are unpatentable under Grounds 1-2.”). Accordingly, we need not construe expressly any claim terms in this decision. Nidec, 868 F.3d at 1017.” slip op. at 8

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

    “petitioner’s grounds of unpatentability. A petitioner bears the burden of proving that a non-patent reference qualifies as a printed publication. Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (“As petitioner, Blizzard had the burden to prove Lin is a printed publication.”); Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 11 (PTAB Dec. 20, 2019) (precedential) (“To prevail in a final written decision in an inter partes review, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication.”). The determination of whether a reference is a “printed publication” “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Whether a document qualifies as a printed publication is a legal conclusion based on underlying factual determinations. Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). We do not reach Patent Owner’s arguments regarding the McCarthy declaration because we find Petitioner’s other evidence and arguments demonstrate by a preponderance of the evidence that Sands was publicly available.8 Our analysis focuses on the indicia of availability on Sands and Dr. Drasler’s testimony, as outlined below.” slip op. at 11

  Patent outcomesUS 9,603,708 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,603,708
• Medtronic Corevalve LLC / Medtronic, Inc. v. Speyside Medical, LLCSome claims unpatentable
  PTAB · Aug 12, 2022 · IPR2021-00243 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–4, 6–10, 16, and 17 are unpatentable as obvious over Lane; claims 18–22 and 24 were not shown unpatentable over the Lane and Thomas combinations.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 7. Petitioner does not challenge Patent Owner’s modification to its proposed definition, and Petitioner’s expert, Dr. Drasler, agrees that experience in the field of prosthetic cardiovascular implants would have included experience with transcatheter prosthetic cardiovascular implants as well as delivery systems and methods used to implant such prostheses. See generally Pet. Reply; Ex. 2048, 11:6–12:1. Thus, based on our review of the complete record, we adopt Petitioner’s definition of the level of ordinary skill in the art, modified as proposed by Patent Owner. We note, however, that our analysis in this proceeding would not differ if we did not adopt the modification proposed by Patent Owner.” slip op. at 8

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

    “We agree with Petitioner. Patent Owner’s proposal that the distal end of the delivery catheter “houses the prosthetic” is in tension with the express language of the claim because the proposed construction suggests that “houses” necessarily means more than “at least” part of the prosthesis is disposed in the distal end. Indeed, if “houses” was not more limiting than “at least partially disposed” there would be no need to further define the spatial relationship between the distal end of the catheter and the prosthetic valve. Petitioner further argues that the Patent Owner’s construction is improper because it “wrongly limits the term to require that ‘the proximal end includes a handle that controls the deployment of the implant.’” Pet. Reply at 3 (citing PO Resp. 37–38). Petitioner asserts that the claims do not recite a handle and the ’897 patent’s “specification makes clear that a handle is a separate, optional component that is not integral to a delivery catheter: inner tubular member ‘can’ be connected to handle 907 and outer tubular member ‘can be connected’/‘attach[ed]’ to outer sheath handle 908.” Id. (citing Ex. 1001, 20:19–29, 26:30–33, claim 10). We again agree with Petitioner. Although the specification describes an embodiment in which proximal end 905 of inner tubular member 904 can be connected to handle 907 and proximal end 902 of outer tubular member 901 can be connected to handle 908 (Ex. 1001, 20:19–26), it is generally improper to read limitations from specific embodiments into the claims. See Cadence Pharms. Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015) (“[E]ven if all of the embodiments discussed in the patent included a specific limitation, it would not be proper to import from the patent’s written description limitations that are not found in the claims themselves.” (internal quotations omitted)); SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). Furthermore, at the oral hearing, Patent Owner indicated that “the proximal end includes a handle that controls the deployment of the implant” part of its proposed construction is not necessary. Tr. 61:8–14. In view of the above, we decline to adopt Patent Owner’s proposed” slip op. at 10

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

    “Furthermore, inventors can act as their own lexicographers if they clearly set forth a definition of a claim term other than its ordinary and customary meaning. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 677 (Fed. Cir. 2015). But any such definition must appear in the specification “with reasonable clarity, deliberateness, and precision.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Absent any such definition, “limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, a definition of “introducer catheter” does not appear in the specification “with reasonable clarity, deliberateness, and precision.” See generally Ex. 1001.” slip op. at 17

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

    “We determine that we need not expressly construe this 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 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 22

  Patent outcomesUS 9,445,897 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,445,897
• Godbersen-Smith Construction Company D/B/A/ Gomaco Corporation v. Guntert & Zimmerman Const. Div., Inc.All claims unpatentable
  PTAB · May 19, 2022 · IPR2021-00050 · APJ James J Mayberry · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

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

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

  RulingsFinal written decision

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

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

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

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

    “1. “at least one controller . . . adjusts the power” In the Decision on Institution, we determined that there was no need to construe explicitly the phrase “at least one controller . . . adjusts the power.” Dec. Inst. 11–12 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Neither party disagrees with this determination. Pet. Reply 7 & n.4; PO Resp. 8–9. Thus, on the full record, there is no controversy between the parties regarding the construction of this phrase. Furthermore, explicitly construing this phrase would have no effect on the analysis below. Accordingly, we need not construe this phrase to resolve the issues in dispute in this proceeding. See Nidec, 868 F.3d at 1017; see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). After considering the parties’ arguments regarding Patent Owner’s proposed claim construction for the phrase “adjusts the power exerted by at least one of the spindle drive system and the feed drive system in real-time based on the real-time determinations,” we declined to adopt the proposed construction in the Decision on Institution. Dec. Inst. 13–16 (citing Prelim. Resp. 9–11; Paper 8, 2–4; Paper 9, 2–3). Neither party has addressed this proposed construction in their post-institution briefing. Therefore, on the complete trial record before us, we need not construe this phrase to resolve Realtime Data, 912 F.3d at 1375.” slip op. at 11

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

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

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

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

  Patent outcomesUS 8,136,432 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,136,432
• Best Buy Co., Inc. / Target Corporation et al. v. James L. DriessenAll claims unpatentable
  PTAB · Apr 15, 2022 · IPR2021-00198 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over NetPack, with Boyle additionally supporting claim 4’s scratch-off code limitation; alternate grounds were not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’052 patent. For example, the ’052 patent states the “invention is essentially retail point of sale for the Internet.” Ex. 1001, 4:21–22. This aligns with Petitioner’s proposed level of skill, which specifically requires working knowledge of such systems as opposed to Patent Owner’s assertion that experience in the prepaid card industry is required. The ’052 patent further describes the requirements for “Font Fingerprinting, hidden pixelization, concealed ASCII and non-visible/inaudible codification” and “ISO standard 10918” for delivery of images over the Internet. Id. at 5:64–67, 6:40–41; see also id. at 6:50–8:23 (describing the technical aspects of the invention), 9:44–46 (“Fig. 5 shows some examples of recording devices that are used or could be modified for use as the media delivery method, access CARD, or to deliver a small cookie-free-cache-back application.”), 9:51–54 (“[T]he CARD may also deliver a small amount of software code to run the mini-Application for Cookie Free Cache Back system.”). Based on this disclosure in the ’052 patent, we agree with Petitioner that a person of ordinary skill in the art would have had a degree in computer engineering or a related field as opposed to a degree in business or marketing, as Patent Owner asserts.” slip op. at 9

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

    “After reviewing the evidence and argument presented by the parties, we determine that it is not necessary to resolve whether preselection is limited to seller side preselection only because, as discussed below in our analysis of claim 1, we find the prior art discloses preselection by the seller. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10

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

    “cards would be used, such as . . . the retail and backend computer systems and security mechanisms for selling cards and authorizing their use through a computer network, or details such as using scratch-off materials to conceal codes.” Pet. 18–19. Petitioner provides several reasons why a skilled artisan would have been motivated to implement “Boyle’s detailed teachings on retail sale of online access cards . . . into the NetPack system.” Id. at 19. First, Petitioner contends that “[g]iven the overlapping and complementary nature of these two references, a [skilled artisan] implementing the NetPack online access system would have quickly identified Boyle as providing relevant teachings.” Id. at 19–20 (citing Ex. 1003 ¶¶ 138–140, 144–250; Ex. 1004, 1). Second, Petitioner contends that, given NetPack’s lack of “express disclosure of certain implementation details,” a skilled artisan would have been motivated “to rely on and incorporate Boyle’s teachings for implementation details such as using computers to store prices for products, to record payments, and to authorize product downloads.” Id. at 20 (citing Ex. 1003 ¶ 141). Third, Petitioner contends that a skilled artisan “would have appreciated the benefits provided by certain aspects of Boyle, such as using a scratch-off label to conceal important information on a card ‘from public view prior to [a card] being sold’” and “would recognize the need to conceal the authentication information on a NetPack card from the public and naturally consider adopting a known and common method for doing so from Boyle.” Id. (citing Ex. 1003 ¶ 142; Ex. 1004, 6:31–7:3). Fourth, Petitioner contends that a skilled artisan “would have had a reasonable expectation of success in using Boyle’s teachings in NetPack” because “NetPack and Boyle describe highly-similar systems” and “by 1999 e-commerce was well known and used, and Boyle relied on many ‘well known’ aspects of e-commerce, such as webpages and authentication.” Id. (citing Ex. 1003 ¶ 143; Ex. 1004, 3:7–4:27, 12:14–20, 15:1–8, 15:26–32). Patent Owner does not address Petitioner’s stated reasons for combining the teachings of NetPack and Boyle or reasonable expectation of success. See PO Resp. 31–34. Based on our review of Petitioner’s contentions and evidence, we find Petitioner states reasons supported by a rational underpinning for combining the teachings of NetPack and Boyle.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “For the following reasons, we are persuaded by Petitioner’s contentions that NetPack’s Chat Pack is “preselected” under Patent Owner’s construction of that term. We make the following findings concerning the disclosure of NetPack. NetPack discloses a Chat Pack product available on a “Special Application Card.” Ex. 1005, Ex. A, 4 of 11. The Chat Pack product is described as “Send files to Anyone Without ‘E’ Mail.” Id. NetPack “makes it possible for Internet products and services to be purchased in a retail store” with one of “three discrete innovations.” Ex. 1005, Ex. A, 6 of 11. One of those innovations is “NetPack’s Special Application Package (SAP)™ [which] makes it possible for software manufactures, some book publishers, or other Internet products or services to be represented and purchased in a retail store environment and then later down loaded from the Internet.” Id. The SAP “will employ bar code inventory, theft control language, and magnetic terminal validation. A single bar code or terminal pass at the point of distribution will activate the product . . . . The card shall display the corresponding URL product description on the front and rear of the card.” Id. at 8 of 11. “In the retail store, [the] Special Application Package . . . can represent any specified value, product, or service.” Id. at 10 of 11. NetPack discloses that “the cards facilitate the ability to stock a large inventory of Internet deliverable software products or services with little or no investment.” Id. NetPack discloses “preselected” as required by claim 1 even under Patent Owner’s construction of “preselection,” which requires the seller to perform the preselection prior to the customer selecting the product for purchase. Chat Pack is sold as a Special Application card. The Special Application card “can represent any specified value, product, or service.” Ex. 1005, 10 of 11. In this case, Chat Pack is the specified product. Therefore, the Chat Pack product is preselected by the seller.” slip op. at 17

  Patent outcomesUS 10,304,052 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,304,052
• Med-El Elektromedizinische Geräte Ges.M.B.H. v. Sonova AGAll claims unpatentable
  PTAB · Mar 31, 2022 · IPR2021-00023 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1, 2, 7, 8, and 14 are unpatentable over Meier; claims 5, 10, and 11 are unpatentable over Meier and Kenigsberg.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “porous cover element for acoustic aperture SE, Meier’s disclosure is not so limited. Id. at 3:18–21. For example, Meier describes “cover elements for vents.” Id. at 4:66; see Ex. 2011, 73:1–5 (Dr. Giacomin’s similar testimony). Petitioner, relying on the testimony of Dr. Giacomin, explains that “[b]ased on the disclosure of Meier, the cover element covers the air vent in a manner similar to how the cover elements are shown covering the acoustic input or output apertures, e.g., the cover element is assembled with the housing such that crevices are formed between these two components.” Pet. 26–27; see also id. at 21 (same); Ex. 1002 ¶¶ 42, 44–46, 52, 60–61. Dr. Giacomin testifies that even when a nonporous cover element is used, the cover element needs to be coated with a hydrophobic coating to prevent water from entering the vents, i.e., crevices. Ex. 2011, 73:1–23. Dr. Giacomin’s testimony below illustrates Petitioner’s position.” slip op. at 30

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “materials science.” Pet. 17–18 (citing Ex. 1002 ¶ 20). Patent Owner does not propose its own definition or dispute Petitioner’s proposed definition except to assert that “other disciplines including electrical engineering should be included.” PO Resp. 8–9. In light of the record before us, we determine that Petitioner’s proposed definition is consistent with the prior art of record and apply it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings on ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). We also include disciplines, including electrical engineering, as Patent Owner proposes. Accordingly, the definition for a person of ordinary skill in the art, applied herein, “would have had, as of December 2003, the equivalent of a Bachelor of Science degree in chemical engineering, mechanical engineering, electrical engineering, physics, or a related discipline and at least two years of related experience, preferably with a working understanding of plastics manufacturing, chemistry, and/or materials science.”” slip op. at 9

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

    “Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with Patent Owner that this term need not be expressly construed because, as explained below, Petitioner has sufficiently shown the cited art discloses a “coating” regardless of whether we adopt Petitioner’s proposed construction.” slip op. at 11

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Petitioner has not persuasively explained why we should depart from the construction for “hydrophobic” adopted in the district court. Nor has Petitioner persuasively explained why here different constructions should apply in different forums. See Tr. 6:16–7:9, 32:3–9. Pursuant to 37 C.F.R. § 42.100(b), we have considered the district court construction of the term “hydrophobic,” which is consistent with the record evidence, and adopt it as our own. Therefore, we construe “hydrophobic” to mean “having resistance to water penetration wherein the contact angle between the water droplet with the surface exceeds 90 degrees.”” slip op. at 15

  Patent outcomesUS 7,267,847 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,267,847

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.