- Skyhawke Technologies, LLC v. L&H Concepts, LLCAll claims unpatentablePTAB · Jul 10, 2015 · IPR2014-00438 · APJ James T Moore · IPR · Final written decision
Claims 1–3 are unpatentable as obvious over Palmer and Vanden Heuvel; claims 4, 5, 13, and 17 are unpatentable over Palmer, Vanden Heuvel, and Osamu.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We have determined that Mr. Ball’s testimony as to the level of ordinary skill in the art is most credible and accurate – while the level of skill in the pertinent time period was somewhat low, that “an ordinary artisan would have at least some experience working in the field” either “designing or building” portable computing devices. Ex. 2014 ¶ 18. In other words, the skilled artisan would have a grasp as to what was practicable to do back in the time the invention was made.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“We find that the preamble is non-limiting. A claim preamble has the import that the claim as a whole suggests for it. When the claim preamble recites structural limitations of the claimed invention, the PTO and courts give limiting effect to that usage. Conversely, when the claim body defines a structurally complete invention and the preamble only states a purpose or intended use for the invention, the preamble is not claim limiting. Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). While the preambles in the challenged claims may give some overall context for the claim limitations, we find that they are not necessary to give life to the claim terms or breathe meaning into the claims. The claims and the Specification indicate that the challenged claims may be used in the field of golf or similar sporting events, without necessarily limiting their application only to golf.4 We observe that claims 1–5 and 17 each contain specific references to golf in the preamble of the claim. Ex. 1001, 16:65– 17:41, 20:50–21:9. Claim 13 does not discuss golf in either the body or the preamble. Id. at 19:3–33. In any event, as Palmer describes a handheld golf device, for the purposes of this decision, we see no practical difference in whether the “golf” portion of the preamble applies to the challenged claims, as handheld golf devices were well-known.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyMixed
“To invoke § 112, paragraph six, the alleged means-plus-function claim element must not recite a definite structure that performs the described function. Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996). As in Cole, the drafter of the instant claims was “enamored of the word ‘means,’” id., utilizing it seven times in the final paragraph of claim 1 to include a piece of structure which essentially was completely recited within the claim. Stripped of the excessive “means” verbiage, claim 1 recites: key entry . . . wherein the key entry . . . includes first key . . . comprising one entry key for selectively displaying information screens, second screen-dependent field select key . . . the second screen-dependent field select key . . . comprising two bi-directional tab keys for scrolling in opposite directions through the data input fields on a displayed information screen, and third screen-dependent value select key . . . the third screen-dependent value select key . . . comprising two bi-directional scroll keys for scrolling in opposite directions through the predefined data associated with the data input field on the displayed information screen. Ex. 1001, 17:7–26 (“means” language deleted). We are persuaded that such detailed recitation of structure (including three particular types of keys with particular functions) removes these limitations of claim 1 from the ambit of § 112, sixth paragraph. As a consequence, we conclude the final paragraph of claim 1 describes a user 5 Because the ’566 patent has an effective filing date before September 16, 2012, we refer to the pre–AIA version of 35 U.S.C. § 112. key interface which requires three types of keys, each having the particular function recited — an entry key for selecting a display screen, two bi-directional tab keys for scrolling through entry fields in a display screen, and two bi-directional scroll keys for scrolling through data to input in a display screen.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We believe the Patent Owner is misinterpreting the guidance of the Supreme Court in its argument. As the Supreme Court noted: A person of ordinary skill is also a person of ordinary creativity, not an automaton. . . . When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, 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. . . . [We] must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417–21 (2007). While the Petitioner’s proposed screen size motivation is no longer persuasive (or necessary) to this panel and this decision, we conclude that a preponderance of evidence in this trial supports a conclusion that replacing an alphanumeric keyboard with a set of tab and scroll keys was a substitution of one known data entry method with an equivalent data entry mechanism. We expressly reject the screen washout argument made, and the underlying testimony in Mr. Ball’s Declaration.” slip op. at 19
Patent outcomesUS 5,779,566 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 5,779,566 - Square, Inc. v. Rem Holdings 3, LLCSome claims unpatentablePTAB · Jul 7, 2015 · IPR2014-00312 · APJ Denise M Pothier · IPR · Final written decision
Claims 1, 2, 6, 7, and 10–17 are unpatentable under §103 over Lekernel and Padilla, alone or with Wallner; claims 3–5, 8, and 9 are not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“We agree that the McLaughlin declaration does not outline specific qualifications of one skilled in the art. Ex. 1015 ¶ 9. However, Dr. McLaughlin states, and we agree, that “the level of ordinary skill in the art is evidenced by the prior art references.” Id. and Pet. Reply 3 (citing In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). We also agree with Petitioner that Patent Owner has unduly narrowed the qualifications of one of ordinary skill. See Pet. Reply 1. In particular, and in contrast with the above assertions, Patent Owner describes Mr. Bourdeauducq as an expert in the relevant field. PO Resp. 1 (stating “Sebastien Bourdeauducq (See Exhibit 2033), (and an actual expert in the Relevant Field)”). Yet, Mr. Bourdeauducq lacks several of the purported qualifications of an ordinarily skilled artisan that Patent Owner asserts. Pet. Reply 2. For example, Mr. Bourdeauducq was about eighteen years old when he wrote the Lekernel article, had no engineering degree, had about one week of experience with magnetic stripe card readers, and had a general consumer understanding of credit card processing. Id. (citing Ex. 1064, 12:14–15:20). Based on the record, we determine that the level of skill in the art is more aligned with a high school or first-year engineering student taking a class covering the topic of basic circuit analysis and having a general, consumer knowledge of magnetic card readers.4 Mr. Bourdeauducq, Dr. McLaughlin, Dr. Morley, and Mr. Wood all have these qualifications. Ex. 2033 ¶ 3 (referring to Exhibit A) and Ex. 1064, 15:16–20; Ex. 1015 ¶ 2 and Ex. 2035, 88:15–18; Ex. 2031 ¶¶ 6, 9; Ex. 2032 ¶¶ 7–8. As such, contrary to Patent Owner’s assertions, we disagree that the McLaughlin declaration should be given no weight. PO Resp. 11. Also, regardless of whether Dr. McLaughlin has immediate knowledge of certain details about magnetic card readers (e.g., card reader manufacturers, frequency characteristics of a read head signal when a card is swiped), we disagree that he is not qualified as an ordinarily skilled artisan. See PO Resp. 16, 19 (quoting portions from Ex. 2035); see Pet. Reply 1–2.” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed
“We agree that the McLaughlin declaration does not outline specific qualifications of one skilled in the art. Ex. 1015 ¶ 9. However, Dr. McLaughlin states, and we agree, that “the level of ordinary skill in the art is evidenced by the prior art references.” Id. and Pet. Reply 3 (citing In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). We also agree with Petitioner that Patent Owner has unduly narrowed the qualifications of one of ordinary skill. See Pet. Reply 1. In particular, and in contrast with the above assertions, Patent Owner describes Mr. Bourdeauducq as an expert in the relevant field. PO Resp. 1 (stating “Sebastien Bourdeauducq (See Exhibit 2033), (and an actual expert in the Relevant Field)”). Yet, Mr. Bourdeauducq lacks several of the purported qualifications of an ordinarily skilled artisan that Patent Owner asserts. Pet. Reply 2. For example, Mr. Bourdeauducq was about eighteen years old when he wrote the Lekernel article, had no engineering degree, had about one week of experience with magnetic stripe card readers, and had a general consumer understanding of credit card processing. Id. (citing Ex. 1064, 12:14–15:20). Based on the record, we determine that the level of skill in the art is more aligned with a high school or first-year engineering student taking a class covering the topic of basic circuit analysis and having a general, consumer knowledge of magnetic card readers.4 Mr. Bourdeauducq, Dr. McLaughlin, Dr. Morley, and Mr. Wood all have these qualifications. Ex. 2033 ¶ 3 (referring to Exhibit A) and Ex. 1064, 15:16–20; Ex. 1015 ¶ 2 and Ex. 2035, 88:15–18; Ex. 2031 ¶¶ 6, 9; Ex. 2032 ¶¶ 7–8. As such, contrary to Patent Owner’s assertions, we disagree that the McLaughlin declaration should be given no weight. PO Resp. 11. Also, regardless of whether Dr. McLaughlin has immediate knowledge of certain details about magnetic card readers (e.g., card reader manufacturers, frequency characteristics of a read head signal when a card is swiped), we disagree that he is not qualified as an ordinarily skilled artisan. See PO Resp. 16, 19 (quoting portions from Ex. 2035); see Pet. Reply 1–2.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“§§ “Requisites,” “Hardware,” and “Improvements” and Ex. 1015 ¶¶ 39–42). Patent Owner does not dispute these findings related to Padilla or reasons to combine the references. See generally PO Resp. The record also reflects that conditioning signals within a circuit to achieve a desired result was known and, given the combined Lekernel/Padilla system, one skilled in the art would have conditioned signals sent from the card reader to the microphone input based on the cell phone’s characteristics. See Dec. on Inst. 12, 14–15 (citing Pet. 17–18 (discussing proving an analog signal in an acceptable processing range) and citing Ex. 1015 ¶ 29). In the Decision to Institute, we discussed cell phone characteristics, such as Padilla’s, and how these characteristics relate to whether signal attenuation is needed for the phone’s input. See Dec. on Inst. 14 (citing Ex. 1015 ¶ 29). For example, Padilla suggests using phones other than “the Siemens MC60” to turn a mobile phone into a magnetic stripe reader. Ex. 1010 § “Foreword.” Accordingly, based on the cell phone selected and its characteristics, we determine that one skilled in the art would have recognized that conditioning signals inputted and received by a cell phone’s microphone input may be necessary. Dec. on Inst. 12 (citing Pet. 17), 14. Specifically, we concluded that “an ordinarily skilled artisan would have recognized that the characteristics of the cell phone’s microphone input impact whether attenuation between the read head and the cell phone’s microphone input is needed.” Dec. on Inst. 14; see also Pet. 21–22, 24–25. The record includes two particular examples where one skilled in the art would have added resistance to Lekernel’s circuit and attenuated the signal received by the phone of the combined Lekernel/Padilla system. See Dec. on Inst. 14 (citing to Ex. 1015 ¶ 29). First, Dr. McLaughlin describes a known technique of providing the microphone input an acceptable level for the cell phone using a voltage divider by placing a resistor at the output of coil 24 or the read head. Ex. 1015 ¶ 16. To be clear, in this scenario, the resistor would be added outside Figure 2’s amplifier in Lekernel to achieve a voltage drop and to “to ensure the signal falls within a range of signals detectable and usable by a cell phone,” preventing damage to a recipient device. See Ex. 1015 ¶¶ 9, 14. Dr. McLaughlin further discusses impedance matching the card reader circuit with the cell phone’s microphone input when the cell phone has internal amplification. Dec. on Inst. 14 (citing Ex. 1015 ¶ 29); Ex. 1015 ¶¶ 28–29. Given the background knowledge of an ordinary artisan, one skilled in the art would have understood to add resistance to the combined Lekernel/Padilla system (e.g., after the amplifier in Lekernel’s Figure 2) for attenuating the signal sent to the microphone input in order to achieve an acceptable level for the cell phone and/or to impedance match the read head device with the cell phone.” slip op. at 18
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“In the context of this proceeding, we do not agree with Patent Owner’s contention that when the marketed product embodies and is coextensive with the claimed features, a secondary consideration factor (e.g., commercial success) is a presumptively attributed to the claimed invention. PO Resp. 49–50. For example, In re Huang, 100 F.3d 135 (Fed. Cir. 1996) states “that [commercial] success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention-as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” Id. at 140 (emphasis added); see also In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (indicating there is no nexus where the evidence results from something other than what is both claimed and novel in the claim). Thus, in establishing a nexus with a secondary consideration in this proceeding, Patent Owner needs to show a specific feature of the claim is attributable to the commercial success of Square’s card reader and not just that the device is coextensive with the claimed features. Patent Owner points to an interview of Mr. Jack Dorsey, described as Square’s CEO. PO Resp. 51–52. In the interview and in response to asking what Square was, Mr. Dorsey states “OK, well [ah] Square is [ahh] a very simple little device that plugs into your iPhone or Android device and allows anyone to accept credit card immediately wherever they are.” PO Resp. 52 (citing Ex. 2047). Patent Owner asserts that this discussion establishes a nexus to the claimed “output plug” feature. Id. Yet, this statement just describes the plug and does not relate the plug itself to any of Square’s commercial success. The statement is also vague as how the device plugs into a phone, such that there is an insufficient tie to the recited “output plug, adapted to be inserted into a jack associated with a microphone input associated with a cell phone” in claim 1. Ex. 1001, 6:66– 67 (emphasis added). Although stating the reader is “very simple” and “little,” Patent Owner has not demonstrated these features are claimed and are a novel or unique feature of the claims — a requisite needed to outweigh the case for obviousness based on commercial success.” slip op. at 25
Patent outcomesUS 8,584,946 mixed§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,584,946
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.