- PTAB · Jun 15, 2023 · IPR2023-00273 · APJ Scott C Moore · IPR · Institution
The Board instituted IPR on claims 5, 7, 8, 14–19, 24, and 25, finding a reasonable likelihood that at least one challenged claim would be unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On this record, it is unclear the extent to which issues in the instant proceeding overlap with those in the parallel district court proceeding. Accordingly, this factor is neutral.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(4) Conclusion for Claim 5 Based on the current record, Petitioner’s contentions (see Pet. 40–42) and the supporting testimony of Dr. Lequesne (see Ex. 1002 ¶¶ 174–182) demonstrate, in a manner that is sufficiently persuasive for purposes of institution, that the subject matter of claim 5 would have been obvious over the combination of Poertzgen and Boucheret. Accordingly, Petitioner has shown a reasonable likelihood that it will prevail on its argument that claim 5 is unpatentable under 35 U.S.C. § 103(a). We, therefore, institute an inter partes review as to all grounds and all challenged claims. 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a).” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededNot reached
“In this case, Petitioner asserts that “[n]o construction of any terms is necessary for the purposes of this proceeding.” Pet. 16. Patent Owner argues that, in the asserted grounds based on Weiler, Petitioner improperly construes the claim term “actuator housing” to encompass Weiler’s brake caliper. Prelim. Resp. 12. Patent Owner asserts that this “interpretation conflicts with how the two terms are used in Patent Owner’s specification and claims, and also conflicts with the way the prior art uses the two terms.” Id. at 12–13. This argument is not persuasive for reasons described below in our discussion of Ground 4. Patent Owner also states that it “does not agree with the manner in which Petitioner reads ‘sub-frame’ on the prior art,” but, “[f]or purposes of this Patent Owner Preliminary Response only, Patent Owner does not traverse Petitioners’ reading of ‘sub-frame.’” Prelim. Resp. 13. On this preliminary record, we decline to adopt specific constructions of any claim terms.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“On this record, Patent Owner’s arguments are unavailing. It is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR, 550 U.S. at 418. Here, Petitioner has offered declaration evidence that Boucheret’s teaching of adding an isolator between an electric motor and a component to which it is mounted in order to reduce NVH would have led motor 42 and the sub-frame of unit 40. Pet. 36–38. Patent Owner does not argue that the proposed modification would have been beyond level of ordinary skill in the art. See KSR, 550 U.S. at 417 (noting that, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). Patent Owner’s argument regarding the expectation of success in using Boucheret’s grooved radially-mounted dampers at the axial end of Poertzgen’s motor (see Prelim. Resp. 24, 26) suggests that obviousness could only be shown if Boucheret’s dampers could be bodily incorporated into Poertzgen to arrive at the claimed invention. An obviousness analysis is not so constrained. See, e.g., Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference[.]”); see also In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). We are also unpersuaded by Patent Owner’s assertion that Boucheret would only teach one of ordinary skill in the art to mount Poertzgen’s motor using radial lugs and dampers. See Prelim. Resp. 20. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Here, Petitioner has offered declaration testimony that one of ordinary skill in the art would have had reason to add vibration dampers at the location where Poertzgen’s motor is mounted to a frame (i.e., the” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,021,415 - Beable Education, Inc. v. Achieve3000, Inc.All claims unpatentablePTAB · Jan 3, 2023 · IPR2021-01169 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1–14 are unpatentable as obvious over Cappellucci_949, Cappellucci_934, Cupp, and Tudor.
RulingsFinal written decision- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“nonobviousness. Objective evidence of nonobviousness, when present, must be considered as part of an obviousness inquiry. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012). Notwithstanding what the teachings of the prior art would have suggested to one of ordinary skill in the art, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that one or more of the challenged claims would not have been” slip op. at 70
- ExcludeMotion to exclude, deniedMixed
“and 1022 are inadmissible in that any copyright dates on these exhibits are hearsay not falling into any exception. MTE 3–4. We are not persuaded by this argument. As an initial matter, for the same reasons discussed as to the first argument, the copyright date goes to public availability, which, under Yeda Research, is not a basis to exclude these two exhibits. See MTE Opp. 7 (relying on the prior discussion as to this argument). Thus, Petitioner need not rely on the date in the copyright marks for the truth of the matter asserted—i.e., the years.17 See id. (arguing that “the dates listed on the disputed evidence are not hearsay because Petitioner is not relying on them ‘to prove the truth of the matter asserted’” (quoting Fed. R. Evid. 801(c)(2)). Accordingly, the copyright marks in Exhibits 1017 and 1022 are not hearsay in the context of how they are relied on by Petitioner in this proceeding.” slip op. at 90
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentable
Patent outcomesUS 9,652,993 unpatentable§ 103 obviousnesscites PhillipsPatents in suitUS 9,652,993 - Exactech, Inc. v. Zimmer, Inc.Institution deniedPTAB · Nov 9, 2022 · IPR2022-00840 · APJ Sean P O’Hanlon · IPR · Institution
Institution was denied for claims 18–21 because Petitioner did not show a reasonable likelihood that DeOrio and Stulberg rendered the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“press-fit or screwed to the tibia. Pet. 33. Petitioner and its declarant, Mr. Drewry, rely on column six, lines 28–33 and Figure 4 to support the contention that “DeOrio discloses an intramedullary rod 28 that is secured to the tibia by being press-fit or screwed into a bore drilled into the intramedullary canal of the tibia.” Id. (emphasis added) (citing Ex. 1004, 6:28–33, Fig. 4; Ex. 1003 ¶¶ 50, 73); Ex. 1003 ¶ 73 (citing Ex. 1004, 6:28–33, Fig. 4). However, DeOrio makes no such disclosure of a press-fit or screwed connection between the intermedullary rod and the tibia. The relevant portion of column six discloses only that “a bore is drilled into the intramedullary canal of a patient’s tibia.” Ex. 1004, 6:30–31. Figure 4 illustrates shaft 30 of intermedullary rod 28 extending into the tibia, presumably in the bore drilled therein. DeOrio does not provide details regarding how the intermedullary rod is positioned within the bore, and certainly makes no disclosure of a press-fit or screwed connection as asserted by Petitioner. Thus, DeOrio does not support Petitioner’s contentions.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“For at least the foregoing reasons, Petitioner has not shown sufficiently that DeOrio discloses or teaches a fastener as recited in claim 18. Petitioner’s reliance on Stulberg to teach a computer-assisted tracking system does not correct this deficiency. See Pet. 38–41. Therefore, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claim 18 or its dependent claims 19–21 would have been obvious in view of DeOrio and Stulberg.” slip op. at 16
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,029,477 - PTAB · Sep 21, 2022 · IPR2022-00707 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted review of claims 1, 2, 4–10, 12–17, 19, and 20 on all asserted grounds, finding a reasonable likelihood that Smith renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“from Mr. Crevelt. Based largely on this testimony, Petitioner demonstrates a reasonable likelihood that Smith discloses a “method of electronic fund transfer between a stored value account and a gaming account” as recited in limitation [1.0].” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“based on Sommer. Pet. 49–84. Because, as discussed above, Petitioner meets the threshold for institution by demonstrating a reasonable likelihood that at least claim 1 is unpatentable as obvious over Smith, we need not decide whether Petitioner’s other challenges demonstrate the same. The challenges based on Sommer, in our view, are best left for trial after full development of the record. Because “[e]qual treatment of claims and grounds for institution purposes has pervasive support in SAS,” we institute review of all the challenges as raised in the Petition. See PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).” slip op. at 20
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,785,926 - PTAB · Sep 21, 2022 · IPR2022-00706 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 4–10, 12–17, 19, and 20 on all petitioned grounds, finding a reasonable likelihood that Smith renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314, the Office may not institute review of fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). For the reasons expressed below, we determine that Petitioner has demonstrated a reasonable likelihood of establishing that at least claim 1 is unpatentable. In accordance with the SAS decision and 37 C.F.R. § 42.108(a), we institute an inter partes review of all challenged claims of the ’176 patent on all grounds alleged by Petitioner. D. THE CHALLENGED CLAIMS” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). 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). Here, neither party proposes an interpretation of the claim terms beyond their ordinary and customary meaning. See Pet. 10. Thus, at this stage, we see no reason to depart from that approach. B. LEVEL OF ORDINARY SKILL IN THE ART” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, Patent Owner does not contest Mr. Crevelt’s testimony, and we discern no reason to question Mr. Crevelt’s credibility. Thus, for purposes of institution, we adopt the level of skill in the art proffered by Petitioner. C. LEGAL STANDARDS” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner challenges claims 1, 2, 4–10, 12–17, 19, and 20 as obvious based on Sommer. Pet. 49–84. Because, as discussed above, Petitioner meets the threshold for institution by demonstrating a reasonable likelihood that at least claim 1 is unpatentable as obvious over Smith, we need not decide whether Petitioner’s other challenges demonstrate the same. The challenges based on Sommer, in our view, are best left for trial after full development of the record. Because “[e]qual treatment of claims and grounds for institution purposes has pervasive support in SAS,” we institute review of all the challenges as raised in the Petition. See PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,466,176 - PTAB · Aug 31, 2022 · IPR2022-00696 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 1, 2, 6, 8–12, and 15–20 after finding a reasonable likelihood that claim 1 is obvious over Smith.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Preamble—“computer-based method of transferring funds between a stored value account and a gaming account” (Pet. 13–15 (citing Ex. 1005 ¶¶ 36, 39, 43, 45, 92, Figs. 1, 3, 6;; Ex. 1001 ¶¶ 99–102)); Method Step 1—“receiving, by one or more computing devices, a player identifier of a player, wherein the player identifier is associated with a gaming account having a balance maintained by a casino computing system” (Pet. 15–19 (citing Ex. 1005 ¶¶ 9–19, 34–36, 39, 41–46, 47, 49, 59, 73, 76–78, 85–86, Figs. 1, 3, 6; Ex. 1001 ¶¶ 104– 113)); Method Step 2—“identifying, by any of the one or more computing devices, a stored value account based at least partially on the player identifier, wherein the stored value account is associated with a stored value payment vehicle issued to the player, and wherein a balance of the stored value account is maintained by an issuer processor computing system” (Pet. 19–23 (citing Ex. 1005, Abstract, ¶¶ 17, 33– 35, 41, 43–44, 49, 56, 58, 75, 77–78, 84, 91, 93–94, Figs. 1, 3, 5, 6; Ex. 1001 ¶¶ 114–124)); and Method Steps 3 and 4—“instructing, by any of the one or more computing devices, the issuer processor computing system to decrease the balance of the stored value account; and instructing, by any of the one or more computing devices, the casino computing system to increase the balance of the gaming account.” (Pet. 23–24 (citing Ex. 1005 ¶¶ 44–45, 77–79, 85, Figs. 3, 6; Ex. 1001 ¶¶ 125–130)). At this stage, Sightline does not respond to Everi’s showing. After reviewing the preliminary record (including Everi’s contentions, the cited portions of Smith, and the testimony of Everi’s declarant), we are persuaded that Everi demonstrates a reasonable likelihood that challenged claim 1 is unpatentable as obvious over Smith.” slip op. at 5
Nonecites PhillipsPatents in suitUS 8,998,708 - PTAB · Aug 31, 2022 · IPR2022-00614 · APJ Scott C Moore · IPR · Institution
The Board instituted IPR of claims 1, 2, 6–11, 14–20, and 22–26 based on a reasonable likelihood that claim 1 is obvious over Smith.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner’s arguments (id. at 10–24) and the supporting testimony of Dwight Crevelt (Ex. 1001 ¶¶ 99–131) demonstrate, in a manner that is sufficiently persuasive at this stage of the proceeding, that Smith teaches or suggests each limitation of claim 1. Accordingly, Petitioner has shown a reasonable likelihood that it will prevail on its argument that claim 1 is unpatentable under 35 U.S.C. § 103. We, therefore, institute an inter partes review as to all grounds and all challenged claims. See 35 U.S.C. § 314(a); SAS, 138 S. Ct. at 1359–60; AC Techs., 912 F.3d at 1364.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“during the relevant time frame “would have a Bachelor’s degree in Computer Engineering or Computer Science, or an equivalent degree, with at least two years of experience in casino or gaming transaction facilitation, or related technologies.” Pet. 9 (citing Ex. 1001 ¶ 37). Patent Owner does not presently challenge Petitioner’s definition of the level of ordinary skill in the art. On this record, we adopt Petitioner’s formulation regarding the level of ordinary skill in the art. We also find that Petitioner’s formulation is consistent with the level of skill reflected by the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes construction for any of the claim terms. Pet. 9–10. Accordingly, we decline to construe any claim terms at this time. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner’s arguments (id. at 10–24) and the supporting testimony of Dwight Crevelt (Ex. 1001 ¶¶ 99–131) demonstrate, in a manner that is sufficiently persuasive at this stage of the proceeding, that Smith teaches or suggests each limitation of claim 1. Accordingly, Petitioner has shown a reasonable likelihood that it will prevail on its argument that claim 1 is unpatentable under 35 U.S.C. § 103. We, therefore, institute an inter partes review as to all grounds and all challenged claims. See 35 U.S.C. § 314(a); SAS, 138 S. Ct. at 1359–60; AC Techs., 912 F.3d at 1364.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,708,809 - PTAB · Aug 31, 2022 · IPR2022-00663 · APJ Carl M Defranco · IPR · Institution
Review instituted for claims 1, 2, 4–9, 11–17, 19, and 20; Everi showed a reasonable likelihood that claim 1 is obvious over Smith.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“6. Conclusion We have fully considered Everi’s showing with respect to how Smith discloses or renders obvious each of the steps of method claim 1. See Pet. 14–27. In doing so, we conclude that Everi demonstrates a reasonable likelihood that the method of challenged claim 1 is unpatentable as obvious over Smith.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“over Smith. See Pet. 10–47. In challenging claim 1, Everi provides a detailed mapping of how Smith satisfies each of the recited steps. See id. at 17–27. Although Sightline does not respond to Everi’s challenge at this stage, we nonetheless consider Everi’s showing with respect to each of the recited steps of method claim 1.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13. Here, neither party proposes an express construction of the claim terms beyond their ordinary and customary meaning. See Pet. 10. Thus, at this stage, we see no reason to further construe any claim terms.” slip op. at 6
- Skill levelSkill level petitioner adoptedOther
“Everi’s declarant, Mr. Crevelt, testifies that one skilled in the art during the relevant time frame “would have at least a Bachelor’s degree in Computer Engineering or Computer Science, or an equivalent degree, with at least two years of experience in casino or gaming transaction facilitation, or related technologies.” Ex. 1001 ¶ 37. At this stage, Everi’s formulation of the relevant skill in the art appears reasonable. Hence, we adopt it for purposes of institution. We also note that Everi’s formulation appears consistent with the level of skill reflected in the asserted prior art.” slip op. at 6
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,196,123 - PTAB · Jul 14, 2022 · IPR2022-00411 · APJ Paul J Korniczky · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 6–9, 11, or 13 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“authority to institute an inter partes review if “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) (2018). After considering the Petition, Preliminary Response, and other evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims. Thus, we deny Petitioner’s request to institute an inter partes review of claims 1, 2, 6–9, 11, and 13 of the ’690 patent.” slip op. at 2
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“2 The substantive discussion in Petitioner’s three declarations are essentially identical to each other and to the Petition. For example, pages 40–74 of the Petition are essentially identical to a single paragraph in each of the declarations –– Hopkins Decl. ¶ 88 on pages 54–92, Keough Decl. ¶ 88 on pages 63–97, and Denton Decl. ¶ 65 on pages 46–81. Thus, we question whether the declarations provide independent analysis and we give the declarations little, if any, weight. See Intex Recreation Corp. et al. v. Team Worldwide Corp., IPR2018-00875, Paper 129 at 40, n. 15 (PTAB Sept. 11, 2019) (“We further note that Dr. Stevick’s testimony is nearly identical to the language appearing in the Patent Owner Response, down to the case citation. This identity in language causes us to attribute less weight to a declarant’s testimony.” (citations omitted)).” slip op. at 7
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that Petitioner’s definition is unclear. Prelim. Resp. 14. Petitioner’s definition includes unclear and subjective requirements such as that the person of ordinary skill in the art have (a) worked “long enough to be aware of” certain items, including unexplained “primary existing RV features,” (b) familiarity with unexplained “common terminology,” (c) “good mechanical aptitude,” (d) “good spatial perception,” (e) “significant experience” with a wide variety of roles, and (f) “sufficient awareness of the various governmental regulations applicable to RVs.” Id. (citing Pet. 18–20). Patent Owner’s proposed definition of the person of ordinary skill in the art appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’690 patent. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Patent Owner.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“While we generally agree with Patent Owner that a person of ordinary skill in the art would understand that a truss and beam, as used in the ’690 patent, are two different structures, serve different purposes, and provide different benefits to the overall design of a chassis, Patent Owner identifies the function, but not the structure, of a truss and beam. After considering the extrinsic and intrinsic evidence, we construe: (1) a beam to be a “body, with one dimension large compared with the other dimensions, configured to carry lateral loads (perpendicular to the large and bending dimension) and bending movements;” and (2) a truss to be a “frame built from members in tension and compression.” These definitions are consistent with the support structures shown in Figures 7 and 9 and discussed in column 3, lines 21–48 of the Specification. Referring to Figures 7 and 9, for example, truss 93C is a frame built from members in tension and compression and beam 93D has one large dimension and supports loads applied to its perpendicular axis. In addition, third section 93 of chassis 90 has beams, not trusses. Ex. 1001, 3:26–28.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,046,690 - Interactive Communications International, Inc. v. Blackhawk Network, Inc.All claims unpatentablePTAB · Mar 15, 2022 · PGR2020-00084 · APJ Frederick C Laney · PGR · Final written decision
Claims 1–19, 21–42, and 44–53 are unpatentable as obvious over Szrek; claims 20 and 43 are unpatentable as obvious over Szrek and Gilmore.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find Patent Owner’s contention persuasive. We agree that the description of a POSA in this case, which is most consistent with the scope and content of the ’894 patent and the prior art, properly includes a working knowledge of both POS activation systems and lottery systems. Therefore, the level of skill in the art for this case is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Although Patent Owner’s proposal most accurately reflects the background of the hypothetical person of ordinary skill in the art, the differences between the parties’ proposed formulations are not material to any issue in dispute and the parties do not contend otherwise. All of the findings and conclusions set forth below would have been the same had we instead adopted Petitioner’s proposed formulation.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“After considering the parties’ arguments and evidence, we determine that the plain meaning of “transaction processor”/“transaction processor system” applies, which is a processor [system] that processes transactions between two devices.8 We agree with Petitioner that adding “third party” to the plain meaning simply creates uncertainty. For example, it is unclear whether “third party” imports a limitation for the owner/manufacturer of the processor/system to be a different entity than the owner/manufacturer of the retailer and lottery administration devices (which is unrelated to the functionality or structure of the processor/system) or whether “third party” 8 Rather than “between two devices,” Patent Owner refers to “between a lottery administration system and retailer.” PO Resp. 20. Because other elements in the claims dictate the particular devices with which the transaction processor communicates, we determine that it would be improper to import that limitation into the meaning of “transaction processor”/“transaction processor system.” Nevertheless, even if those particular devices were imported, it would not change our obviousness analysis because no issue rests on whether the alleged transaction processor in the prior art is processing a transaction between a lottery administration system and retailer. imports a limitation for the processor/system to be a separate and distinct device from the retailer point of sale and lottery administration devices. Although Patent Owner’s counsel made clear that the latter interpretation was intended (Tr. 41:10–42:7, 43:2–43:15), we do not agree that the use of the words “third party” in Figures 7 and 8 of the ’894 patent limits the “transaction processor” and “transaction processor system” to being a separate and distinct device from the retailer and lottery administration devices. Identifying the transaction processor as a “Third Party Processor” in two illustrative figures depicting a process (Ex. 1001, Figs. 7, 8), without anything more in the written description to explain why a “third party processor” may be an important or significant aspect of the transaction processor or invention as a whole, does not justify limiting the plain meaning of a “transaction processor” to the “third party processor” shown. Info-Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1267 (Fed. Cir. 2015) (explaining that an invention will only be limited to its preferred embodiment when “the patentee uses words that manifest a clear intention to restrict the scope of the claims to that embodiment”).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Therefore, we construe “transaction processor” and “transaction processor system” in accordance with their plain meaning, which is a processor [system] that processes transactions between two devices. Additionally, we decline to limit “transaction processor” and “transaction processor system” to “third party” processors or systems because the intrinsic record does not justify such a modification and it would create uncertainty. However, we do construe the “transaction processor”/“transaction processor system,” “retailer”/“retailer POS,” and “lottery administration system” as separate and distinct components.” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“processing unit, causes payment confirmation for the pre-printed lottery ticket to be provided to the lottery administration system. And Patent Owner disputes whether Petitioner has sufficiently shown Szrek discloses the transaction processor (store back office 240) provides payment confirmation to the lottery administration system (game provider 250). PO Resp. 13–14, 48–53; Sur-reply 19–20. We are persuaded by Petitioner, however, that Szrek’s description of the inter-operational characteristics of store back office 240, cash register/POS terminal 230, and game provider system 250 would have suggested to a skilled artisan at the time of the invention that store back office 240 would include an instruction to cause payment confirmation for the pre-printed lottery ticket to be provided to the game provider system 250. Ex. 1007, 4:28–29, 4:56–67, 5:17–20, 6:44–47; Ex. 1005 ¶¶ 62–64.” slip op. at 43
Patent outcomesUS 10,769,894 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,769,894
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.