- PTAB · Jun 22, 2023 · IPR2023-00266 · APJ Sean P O’Hanlon · IPR · Institution
Instituted inter partes review of claims 1, 2, 8, 9, 13–16, 20–27, 29, and 30 on all proposed grounds; Petitioner showed a reasonable likelihood of prevailing on obviousness over Schugar and DeWaal.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“above factors. In evaluating the factors, we take a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review. Fintiv, Paper 11 at 6. We are also guided by the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”),3 which provides several clarifications concerning the application of the Fintiv factors. One such clarification instructs that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3; see also id. at 7–8. Thus, we will not exercise our discretion to deny institution if a petitioner makes a stipulation similar to that provided in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (designated precedential in relevant part). Petitioner states that it “makes a Sotera-style stipulation not to pursue, in the co-pending proceeding district court proceeding, any argument that the Challenged Claims are invalid on any ground that was raised or could 3 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. have been reasonably raised in this IPR, should a Final Written Decision issue here.” Pet. 66.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Thus, under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims. Id. at 8.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner bears the burden of persuasion to prove unpatentability of each challenged claim by a preponderance of the evidence. 35 U.S.C. § 316(e). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition and Patent Owner’s Preliminary Response shows that there is a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a). slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner’s arguments do not address the rationale for combining the reference teachings as set forth in the Petition. Petitioner does not propose to modify Schugar’s games to incorporate features of DeWaal’s games. Rather, Petitioner proposes to implement “Schugar’s method of conducting a sport wagering event on DeWaal’s system hardware and thin-client configuration.” Pet. 22–23. Schugar’s system is designed for games hosted by a casino, and Schugar contemplates coordination between multiple casinos through the use of shared databases. See, e.g., Ex. 1005 ¶¶ 19, 105. Schugar further discloses use of its system in pari-mutuel betting. Id. ¶ 126. Based on the current record, we find persuasive the evidence showing that using a centralized server is the most practical way to conduct such betting arrangements and reduce the risk of cheating. See Pet. 25–26; Ex. 1007 ¶¶ 78–79; Ex. 1004 ¶ 88. Although Patent Owner’s declarant testifies, “I don’t view Schugar’s teachings as requiring hardware, such as a central server, that supports a pari-mutuel pool” (Ex. 2001 ¶ 102), we accord little weight to this conclusory assertion. See 37 C.F.R. § 42.65(a).” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,970,969 - PTAB · Jun 21, 2023 · IPR2023-00267 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1, 7, 15, and 21 on all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Scott.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a) (2020). An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’822 patent is unpatentable, we institute an inter partes review of all challenged claims based on all grounds raised in the Petition. 37 C.F.R. § 42.108(a).” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We are persuaded by Petitioner’s undisputed contentions on the current record that Petitioner demonstrates a reasonable likelihood that claim 1 is unpatentable.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Petitioner states that “[n]o terms of the ’822 Patent require construction beyond their plain and ordinary meaning.” Pet. 10. For purposes of our Decision, which examines claim 1 below, we determine that it is not necessary to construe any particular term.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or a similar field; and at least two years of experience in the wager based gaming industry. A person with less education but more relevant practical experience may also meet this standard.” Pet. 10 (internal citations removed). Based on the record before us, we adopt Petitioner’s definition for purposes of this Decision.” slip op. at 9
Claim construction§ 102 anticipationPatents in suitUS 10,997,822 - PTAB · Jun 21, 2023 · IPR2023-00262 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1 and 10 on all grounds, finding a reasonable likelihood that claim 1 is anticipated by DeWaal.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’341 patent is unpatentable, we institute an inter partes review of all challenged claims based on all grounds raised in the Petition. 37 C.F.R. § 42.08(a).” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalNot reached
“one of a buy-out offer and partial buy-out offer” to the players during the wagering event. During prosecution of the ’341 patent, the examiner applied a prior art rejection upon construing the claim in the disjunctive form. Ex. 1002, 109 (Office Action, Oct. 28, 2014). That is, construing the language in the form of at least one of X and Y to be satisfied upon a showing in the art of either X or Y. The applicant, however, argued that the prior art needed to disclose both (i.e., the conjunctive form). Id. at 86, 88 (Applicant Response, Dec. 18, 2014). The examiner subsequently withdrew the rejection. Id. at 69 (Office Action, Mar. 12, 2015). Petitioner characterizes the applicant’s argument as a “plain and unmistakable statement[] of disavowal during the prosecution” of the disjunctive form (i.e., X or Y), thus limiting the term to the conjunctive form (i.e., X and Y). Pet. 18 (citing Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) (“The prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution.”)). Petitioner asserts, however, that Patent Owner has taken the position in district court that the disjunctive construction should be used. Pet. 19, n.4 (citing Ex. 1049 (Patent Owner’s Initial Infringement Contentions)). Thus, there is at least some indication of the plausibility of both constructions. Patent Owner has not yet entered any arguments in this case. We encourage further briefing on the construction of the “at least one of” term during trial.” slip op. at 6
Claim construction§ 102 anticipationPatents in suitUS 9,117,341 - PTAB · Apr 19, 2023 · IPR2023-00006 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR of claims 1–10 on all grounds presented and granted Dell’s motion to join the Intel IPR, subject to participation conditions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Dell’s Petition is substantially identical to the Intel IPR petition, challenging the same patent and claims, based on the same grounds of unpatentability, and relying on the same evidence (including the same prior art combinations supported by the same witness’s testimony). See Mot. 1, 2–3. Dell seeks institution only of the same claims and ground for which the Board has instituted review in the Intel IPR. Id.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Dell timely filed its Motion for Joinder within one month of the institution of the Intel IPR, as required by 37 C.F.R. § 42.122(b). Dell also states it “will agree to consolidated filings for all substantive papers in the proceeding” and “to incorporate [Dell’s] filings with those of Intel in a consolidated filing, subject to the ordinary rules for one party on page limits.” Mot. 3–4. Dell represents that “Intel and [Dell] will be jointly responsible for the consolidated filings” and Dell “agrees not to be permitted any arguments separate from those advanced by [Dell] and Intel in the consolidated filings.” Id. at 4. Further according to Dell, “Intel and Dell will designate an attorney to conduct the cross examination of any given witness produced by [Patent Owner] and the redirect of any given witness produced by Intel or Dell,” and “Dell will not receive any separate cross-examination or redirect time.” Id. at 6. As discussed in Section II above, the instituted grounds in this proceeding are the same as those instituted in the Intel IPR. In light of that overlap, and the essentially identical timing of the two proceedings, and Dell’s foregoing stipulations limiting its participation to an understudy role, we determine Dell has established persuasively that joinder is appropriate and will have little to no impact on the timing, cost, or complexity of briefing and/or discovery on the instituted grounds. Thus, in consideration of the foregoing, and in the manner set forth in the following Order, Dell’s Motion for Joinder is granted.” slip op. at 5
None - Intel Corporation v. 3d Surfaces, LLCInstitutedPTAB · Apr 19, 2023 · IPR2022-01591 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR on claims 10–20 because Petitioner showed a reasonable likelihood that claims 10–20 would have been obvious over Sfarti and Foley.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person having ordinary skill in the art (“POSITA”) would have had “a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related scientific field, and approximately two years of work experience in computer graphics or, alternatively, two years work towards a masters or doctorate degree in these proceeding, Patent Owner “applies Petitioner’s definition.” Prelim. Resp. 10. We agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“On this record, we agree with Petitioner that “unit” does not connote any particular structure, and that the terms “tessellation unit,” “transform unit,” “lighting unit,” and “rendering unit” recite function without reciting sufficient structure for performing that function. Therefore, these terms should be construed as means plus function terms. “Construing a means-plus-function claim term is a two-step process. The court must first identify the claimed function. Then, the court must determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015) (en banc) (citation omitted). In cases involving a special purpose computer-implemented means-plus-function limitation, the Federal Circuit requires “that the specification disclose an algorithm for performing the claimed function.” Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1374 (Fed. Cir. 2015). “A description of the function in words may disclose, at least to the satisfaction of one of ordinary skill in the art, enough of an algorithm to provide the necessary structure under § 112, ¶ 6.” Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011). “The law is clear that patent documents need not include subject matter that is known in the field of the invention and is in the prior art, for patents are written for persons experienced in the field of the invention.” S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1371 (Fed. Cir. 2001). Claim 10 recites “a transform unit that transforms the graphic objects into transformed objects.” Claim 15 recites a similar limitation. Claim 12 recites “said transform unit transforms the spatial coordinates of said graphic objects.” The specification discloses that the function of “transform[ing] the graphic objects into transformed objects” and “transform[ing] the spatial coordinates of said graphic objects” is performed by a graphics processing unit (GPU) including a dedicated processor programmed to execute the transform step of the disclosed microcode. Ex. 1001, 5:63–6:3; 7:10–15, 7:19–20, 12:49––52; Ex. 1003 ¶¶ 106–107. We construe “transform unit” as a means plus function limitation with the function of transforming graphic objects into transformed objects (claims 10 and 15), or the function of transforming the spatial coordinates of said graphic objects (claim 12), and with the corresponding structure of a GPU including a dedicated processor programmed to execute the transform step of the microcode disclosed in the specification. b) Tessellation unit Claim 10 recites “a tessellation unit for tessellating the transformed objects.” Claims 11 and 15 recite a similar limitation. The specification discloses that the function of “tessellating the transformed objects” is performed by a GPU that includes a dedicated processor coupled between the transform unit and a lighting unit, where the dedicated processor is programmed to execute the tessellating steps of the disclosed microcode. Ex. 1001, 6:4–59, 7:10–15, 7:20–24, 12:49–52; Ex. 1003 ¶¶ 108–109. We construe “tessellation unit” as a means plus function limitation with the function of tessellating the transformed objects and with the corresponding structure of a GPU including a dedicated processor coupled between the programmed to execute the tessellating steps of the disclosed microcode. c) Lighting unit Claim 10 recites a “lighting unit comprising means for lighting triangles resulting from said tessellation unit.” Claim 13 recites “a lighting unit . . . for lighting the tessellated transformed objects.” Claim 15 recites “lighting vertices of triangles resultant from said tessellating using said lighting unit.” The specification discloses that the function of “lighting triangles resulting from said tessellation unit,” “lighting the tessellated transformed objects,” and “lighting vertices of triangles resultant from said tessellating” is performed by a GPU that includes a dedicated processor programmed to execute code to light the vertices of the triangles. Ex. 1001, 6:60–65, 7:10–15, 7:24–26, 12:49–52; Ex. 1003 ¶¶ 110–111. We construe “lighting unit” as a means plus function limitation with the function of lighting triangles resulting from said tessellation unit (claim 10), lighting the tessellated transformed objects (claim 13), or lighting vertices of triangles resultant from said tessellating (claim 15), and with the corresponding structure of a GPU that includes a dedicated processor programmed to execute code to light the tessellated objects. d) Rendering unit Claim 14 recites “a rendering unit operatively coupled to the lighting unit for rendering the lighted, tessellated, transformed objects.” The specification discloses that the function of rendering the lighted, tessellated, transformed objects is performed by a GPU that includes a dedicated processor programmed to execute the rendering steps of the disclosed microcode. Ex. 1001, 6:65–7:3, 7:10–15, 7:24–26, 12:49–52; Ex. 1003 ¶¶ 112–113. We construe “rendering unit” as a means plus function objects, and with the corresponding structure of a GPU that includes a dedicated processor to execute the rendering steps of the disclosed microcode.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“e) Remaining claim terms No other terms require express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted)).” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“We agree with Petitioner. Pages 511–527 of Foley were previously presented to the Office. See Ex. 1001, code (56). In contrast, Petitioner relies on pages 17, 279–281, 508, 521, 721, 736–737, 807, 855, 866–871, 873–879, 888, and 890–892 of Foley. See Pet. 30–77. Out of all of the pages of Foley cited in the Petition, only one, page 521, was previously presented to the Office. On the record before us, there is no indication that any of the remaining pages of Foley cited in the Petition were presented to, or considered by, the Office. Notably, the IDS disclosure cited just 17 pages out of Foley’s over 1200 pages of content, but did not cite the pages that teach the feature that the Examiner found was patentable over the prior art. Compare Ex. 1017, at 177 (In the statement of allowable subject matter, the Examiner concluded that “the prior [art] fails to teach a tessellate unit coupled between the transform unit and the lighting unit.”), with Ex. 1007, at 807 (Foley teaches that “tessellation should occur after transformation into a coordinate system in which screen size can be determined” for the benefits of “enabl[ing] tessellation size to be determined adaptively, and limit[ing] the amount of data that is transformed.”); see also id. at 866–877. Thus, the 2 U.S. Patent No. 7,532,213, which was reissued as the ’534 patent at issue here. See Ex. 1001, code (64). previously presented to the Office. Patent Owner contends that even if Petitioner cites to portions of Foley not considered by the Office, the Examiner considered other references that are cumulative to and substantially the same as the portions of Foley cited by Petitioner. Prelim. Resp. 22. In particular, Patent Owner contends that the ’534 patent recognizes that pipeline graphics architecture was well-known at the time of invention, and that other references that teach pipeline graphics architecture were considered by the Office. Prelim. Resp. 23–24 (citing Ex. 1001, Fig. 2, 2:42–58; Ex. 1032, Fig. 2b, 5:18–22; Ex. 1033, Fig. 1A, 6:28–31, 21:1–3). We disagree with Patent Owner. Foley’s disclosure of a pipeline graphics architecture that teaches the benefits of employing dedicated processors for tessellating after transforming is explicit and, so far as we can tell from the record presented, is not found in any reference previously cited to the Office. See Ex. 1007, 807, 866–877. Thus, the same or substantially the same art was not previously presented to the Office.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham - PTAB · Apr 19, 2023 · IPR2023-00004 · APJ George R Hoskins · IPR · Institution
The Board instituted review of claims 1–4, 9–11, 17, and 18 on all petitioned grounds and granted Dell’s motion to join the Intel IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In view of these representations by Dell, and having reviewed Dell’s Petition, we determine that, under the current circumstances, it is appropriate to exercise our discretion to institute inter partes review of the challenged claims based upon the same grounds authorized and for the same reasons discussed in our institution decision in the Intel IPR.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As the moving party, Dell bears the burden of proving it is entitled to the requested relief. See 37 C.F.R. § 42.20(c). A motion for joinder should: set forth the reasons joinder is appropriate; identify any new grounds of unpatentability asserted in the petition; and explain what impact (if any) joinder would have on the trial schedule for the existing review. See, e.g., PTAB Consolidated Trial Practice Guide (Nov. 2019)6, 76–77.” slip op. at 4
NonePatents in suitUS 7,245,299 - Intel Corporation v. 3d Surfaces, LLCInstitutedPTAB · Apr 19, 2023 · IPR2022-01589 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR on claims 1–4, 9–11, 17, and 18 on all grounds, finding a reasonable likelihood that claim 1 would be shown obvious over Sfarti and Foley.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“of the ’299 patent considered the same argument presented in the Petition’s obviousness combination of Sfarti and Foley, and correspondingly “determined that it would not have been obvious to modify the teachings of [Sfarti] to implement the ordered steps in a GPU” based on Foley. Prelim. Resp. 26–27 (citing Ex. 1002, 64–69, 112–114, 172–180). Specifically, we disagree that the Examiner’s double patenting rejection presents the same argument as the Petition’s obviousness combination. The Examiner stated “it would have been obvious to one of ordinary skill to substitute the computer readable medium of claim 21 [of the ’501 patent] with the graphics processing unit of [original claim 1].” Ex. 1002, 67. The Examiner, in making this obviousness-type double patenting rejection3, did not find a prior art reference that showed a graphics processing unit with separately dedicated processors. Rather, the Examiner attempted to use the graphics processing unit recited in original claim 1 as prior art against itself. The applicant successfully argued against the Examiner’s improper use of the pending claims as prior art by stating that the ’501 patent did not disclose the graphics processing unit incorporating the tessellation unit as claimed. See id. at 138, 175.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“that upon institution Dell will not pursue any grounds in the [District Court Litigation] that were raised or reasonably could have been raised in its IPR petition for the challenged claims.” Reply 1 (citing IPR2023-00004, Paper 134). More precisely, however, Dell has actually stated in IPR2023-00004 that Dell “will stipulate, consistent with Sotera Wireless, that if this IPR [i.e., IPR2023-00004] is instituted, [Dell] will not pursue in the parallel district court proceeding any grounds raised or that reasonably could have been raised in this IPR for the challenged claims.” IPR2023-00004, Paper 13, 1 (emphases added). Contemporaneously with the present Decision, we are issuing a decision in IPR2023-00004 instituting review of the ’299 patent on the same two grounds being instituted here, and we also are joining the two proceedings together for purposes of trial. Thus, Dell’s stipulation has taken effect.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On this record, we agree with Petitioner that a person of ordinary skill would have implemented the steps of transforming, tessellating, lighting, and rendering as taught by Sfarti in a graphics pipeline of dedicated processors as taught by Foley to yield the benefits of providing more processing power than a single CPU can provide, and significantly improving performance speed. See Pet. 31–38; Ex. 1003 ¶¶ 132–147. On this record we agree with Petitioner that a person of ordinary skill in the art would have performed tessellating after transforming using the graphics pipeline of dedicated processors of Foley to yield the benefits of adaptively determining tessellation size and limiting the amount of data that needs to be transformed as taught by Foley.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to the ’299 patent “would have had at least a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related scientific field, and approximately two years of work experience in computer graphics or, alternatively, two years[’] work towards a masters or doctorate degree in these scientific fields.” Pet. 10; Ex. 1003 ¶¶ 96–97. Patent Owner “applies Petitioner’s definition” in the Preliminary Response. Prelim. Resp. 9.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,245,299 - PTAB · Mar 3, 2023 · IPR2022-01359 · APJ Michael A Valek · IPR · Institution
The Board instituted inter partes review of claims 1, 3, 4, and 6–15 on all asserted obviousness grounds based on Park, Kim, Williams, and, for claims 11–13, Hileman.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“III. DISCRETION UNDER 35 U.S.C. § 314(a) Patent Owner argues the Board should exercise discretion to deny institution under Fintiv6 “due to the advanced state of the parallel District 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), included revisions to 35 U.S.C. § 103 that became effective after the filing of the applications to which the ’191 patent claims priority. Therefore, we apply the pre-AIA version of the statute. 2 WO 01/11523 A1, published Feb. 15, 2001 (Ex. 1005) (“Park”). 3 KR2003-0085802, published Nov. 7, 2003 (Ex. 1007). The Petition relies on a certified translation of this Korean language reference (Ex. 1006), which we refer to herein as “Kim.” 4 WO 2008/052013 A2, published May 2, 2008 (Ex. 1008) (“Williams”). 5 US 2003/0040944 A1, published Feb. 27, 2003 (Ex. 1009) (“Hileman”). 6 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). Court proceeding.” See Prelim. Resp. 4–15. Petitioner contends that the Fintiv factors do not favor discretionary denial here. See Pet. 71–74. After considering the parties’ arguments and the circumstances of this case, we decline to exercise discretion to deny institution under 35 U.S.C. § 314(a). In particular, Petitioner has stipulated that if inter partes review is instituted it will not pursue the invalidity grounds raised in the Petition or any other ground that reasonably could have been raised in the Delaware litigation. Ex. 1033, 1. The Director has provided guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. See Ex. 1013, 3, 7.7 That guidance applies here.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Patent Owner’s argument is not persuasive. Even assuming the Examiner considered the particular disclosures Patent Owner cites in Angert, Petitioner has sufficiently shown that Park and Kim provide additional teachings that are material to the challenged claims. For example, the Petition relies on Park’s teaching that the delivery agent has a mobile digital camera that provides the customer with a “live video feed of the delivery of their order” that they can “interactively view, in real-time.” See, e.g., Pet. 18, 34–35 (quoting Ex. 1005, 4:27–32, 48:18–20). Moreover, the Petition relies on Kim’s teaching that in addition to providing images of the delivery, a delivery agent can utilize a digital camera in mobile communication terminal to send images of the product to the customer so they “can confirm whether the product ordered is identical to the product being delivered.” Id. at 19 (citing Ex. 1006, 1–2). As explained in our analysis of Ground 1 below, such teachings are material to Petitioner’s patentability challenges. We see no corollary to these teachings in Angert nor does Patent Owner otherwise identify any similar teachings or arguments the Examiner previously considered. See generally Prelim. Resp. 44–46. For these reasons, the Petition does not present the same or substantially the same art or arguments as that previously presented to the Office. Because the first part of the Advanced Bionics framework has not been met, we decline to exercise discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner’s showing is sufficient to establish a reasonable likelihood that it will prevail in demonstrating that claims 1 and 14 are obvious over Park, Kim, and Williams. Patent Owner’s arguments against institution in the Preliminary Response are unavailing on the current record. We address those arguments below.” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art (“POSITA”) in August 2009 (the earliest alleged priority date) would have been someone knowledgeable and familiar with the electronic commerce arts that are pertinent to the ’191 patent. That person would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of electronic commerce. Lack of work experience can be remedied by additional education, and vice versa. Pet. 13 (citing Ex. 1003 ¶ 24). Patent Owner offers a similar description of a POSITA. Prelim. Resp. 19. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this Decision. Moreover, we do not perceive any meaningful difference between the parties’ respective descriptions of the level of ordinary skill in the art.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,202,191 - PTAB · Mar 3, 2023 · IPR2022-01358 · APJ Michael A Valek · IPR · Institution
The Board instituted IPR on claims 1–5, 8, 9, 12, 14, 18, 19, and 21–28 on all asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“After considering the parties’ arguments and the circumstances of this case, we decline to exercise discretion to deny institution under 35 U.S.C. § 314(a). In particular, Petitioner has stipulated that if inter partes review is instituted it will not pursue the invalidity grounds raised in the Petition or any other ground that reasonably could have been raised in the Delaware litigation. Ex. 1033, 1. The Director has provided guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. See Ex. 1013, 3, 7.8 That guidance applies here.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Patent Owner’s argument is not persuasive. Even assuming the Examiner considered the particular disclosures Patent Owner cites in Angert, Petitioner has sufficiently shown that Park and Kim provide additional teachings that are material to the challenged claims. For example, the Petition relies on Park’s teaching that the delivery agent has a mobile digital camera that provides the customer with a “live video feed of the delivery of their order” that they can “interactively view, in real-time.” See, e.g., Pet. 18, 34–35 (quoting Ex. 1005, 4:27–32, 48:18–20). Moreover, the Petition relies on Kim’s teaching that in addition to providing images of the delivery, a delivery agent can utilize a digital camera in mobile communication terminal to send images of the product to the customer so they “can confirm whether the product ordered is identical to the product being delivered.” Id. at 19 (citing Ex. 1006, 1–2). As explained in our analysis of Ground 1 below, such teachings are material to Petitioner’s patentability challenges. We see no corollary to these teachings in Angert nor does Patent Owner otherwise identify any similar teachings or arguments the Examiner previously considered. See generally Prelim. Resp. 44–46. For these reasons, the Petition does not present the same or substantially the same art or arguments as that previously presented to the Office. Because the first part of the Advanced Bionics framework has not been met, we decline to exercise discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On the current record, we disagree with Patent Owner and find that Petitioner has articulated a sufficient rationale for combining the references. Petitioner asserts, supported by the testimony of its declarant and teachings in Park and Kim, that the combination would “enhance the reliability of the delivery” and “increase customer satisfaction” by providing a “a sensory cue of a visual comparison between the product to be delivered and the desired product.” See Pet. 20–23 (citing exhibits). Petitioner also explains that the problem Kim’s product confirmation functionality is intended to address is “particularly acute” for perishable items such as food, which Park teaches its system is designed to deliver. Id. at 21. Petitioner acknowledges that adding Kim’s functionality would add time to the delivery process, but argues that “[a]ny additional time . . . could be absorbed into the desired hour delivery time of Park” or “alternatively, a POSITA would have recognized that the confirmation teachings of Kim could be provided as an option to the user with an advisory message to the user that such confirmation may add time to his or her order.” Id. at 23–24. Petitioner’s rationale is reasonable on the current record. While Park is focused on providing fast delivery, it would seem that a POSITA would also understand that delivering the wrong product is likely to cause an even greater delay then the additional time necessary to for the delivery agent to send a product image and receive customer confirmation. See Pet. 23 (urging that incorporating Kim’s functionality “would reduce the likelihood in Park that the delivery agent made an incorrect delivery, thereby saving resources in the Park system (e.g., by preventing the delivery of goods that would need to be returned and/or refunded”) (citing Ex. 1003 ¶ 56; Ex. 1021, 3:4–53). Moreover, Petitioner’s argument that the product confirmation functionality could be presented as an option so as to balance the competing desire for fast delivery would seem to be a reasonable exercise of a POSITA’s ordinary creativity. See KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill in also a person of ordinary creativity, not an automaton.”).” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 13–14 (citing Ex. 1003 ¶ 24). Patent Owner offers a similar description of a POSITA. Prelim. Resp. 18–19. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this Decision. Moreover, we do not perceive any meaningful difference between the parties’ respective descriptions of the level of ordinary skill in the art.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,115,067 - PTAB · Mar 3, 2023 · IPR2022-01357 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 1, 2, 4, 6, 9, 10, 14–17, 21, 22, and 24–26 based on a reasonable likelihood that claims 1, 24, and 26 are obvious over Park and Kim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Instacart submits that one skilled in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of electronic commerce” and that “[l]ack of work experience can be remedied by additional education, and vice versa. Pet. 14 (citing Ex. 1003 ¶ 24). Consumeron responds that one skilled in the art “would have been someone with a background in electrical engineering, computer science, or the like and two years of working with platforms for the acquisition and delivery of products.” Prelim. Resp. 18. At this stage, we discern no meaningful difference between the levels of skill in the art espoused by the parties, given that working in the field of electronic commerce necessarily entails working with platforms for the acquisition and delivery of products. Accordingly, for purposes of institution, we adopt the level of skill in the art as articulated by Instacart.” slip op. at 4
- Prior constructionPrior construction adoptedDecided for patent owner
“Notably, however, the district court did not adopt Consumeron’s proposed construction for this term. Instead, in a claim construction order dated January 18, 2023,6 the district court construed “mobile delivery agent system” to mean “a mobile system that includes at least a device to capture video or still images and a device set up to communicate with a remote server.” Ex. 1034, 1. In doing so, the district court expressly rejected Consumeron’s argument that an MDAS requires a “mobile computing device” and “the use of the internet.” Ex. 1035, 17. At this stage, we see no reason to depart from the district court’s careful and comprehensive analysis of this term. See id. at 13–17. Thus, for purposes of this proceeding, we adopt the district court’s construction of “mobile delivery agent system.”” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We disagree with Consumeron that Instacart fails to articulate a sufficient reason for combining Park and Kim. Instacart asserts, with support from its declarant, that combining the teachings of Park and Kim would “enhance the reliability of the delivery” and “increase customer satisfaction” by “provid[ing] the sensory cue of a visual comparison between the product to be delivered and the desired product.” See Pet. 23 (citing Ex. 1003 ¶¶ 55; Ex. 1006, 1). Instacart also explains that the problem Kim’s product confirmation functionality is intended to address is “particularly acute” for perishable food items, which Park’s system is designed to deliver. Id. at 22 (citing Ex. 1003 ¶ 54; Ex. 1005, 1:11–21; Ex. 1006, 1–2; Ex. 1014, 2; Ex. 1022, 2–3). And although adding Kim’s functionality would add time to Park’s delivery process, Instacart notes that “[a]ny additional time . . . could be absorbed into the desired hour delivery time of Park” or “alternatively, a POSITA would have recognized that the confirmation teachings of Kim could be provided as an option to the user with an advisory message to the user that such confirmation may add time to his or her order.” Id. at 25 (citing Ex. 1003 ¶ 57). We find Instacart’s rationale for the asserted combination to be reasonable on the current record. Although Park is focused on providing fast delivery, one skilled in the art would have understood that delivery of an unacceptable product to the customer is of greater concern in terms of “cost and efficiency” than any additional time needed for the delivery agent to receive customer confirmation of an acceptable product. See, e.g., Ex. 1003 ¶ 56.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We have considered the parties’ arguments and determine that the circumstances of this case do not warrant discretionary denial of the Petition. In particular, because Instacart has submitted a Sotera stipulation (Ex. 1033), we will not discretionarily deny institution under § 314(a) in view of the parallel district court action. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022), at 3, 7 (addressing impact of Sotera stipulation on the exercise of § 314(a) discretion). In addition, contrary to Consumeron’s assertion, neither Park nor Kim are sufficiently cumulative of Angert to warrant discretionary denial under § 325(d). See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, 2020 WL 740292, *3–4 (PTAB Feb. 13, 2020) (precedential). That is because Park and Kim provide additional material teachings not disclosed by Angert that include, for example, Park’s teaching that the delivery agent has a mobile digital camera that provides the customer with a “live video feed” of their order that they can “interactively view, in real-time” (Ex. 1005, 4:27–32, 48:18–20) and Kim’s teaching that a delivery agent can utilize a digital camera in a mobile communication terminal to send images to the customer so they “can confirm” that the product ordered is identical to the product being delivered (Ex. 1006, 1–2). Consumeron does not identify any similar teachings in Angert. See Prelim. Resp. 46–47. Thus, we decline to exercise our discretion under § 325(d).” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,628,835
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.