• Unified Patents Inc. v. William GreciaInstitution denied
  PTAB · Aug 30, 2016 · IPR2016-00602 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 1 unpatentable over DeMello or Pestoni, alone or in the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “requesting inter partes review of claim 1 of U.S. Patent No. 8,887,308 B2 (Ex. 1003, “the ’308 patent”). William Grecia (“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). We have jurisdiction under 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 that follow, we have decided not to institute an inter partes review.” slip op. at 2

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

    “reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Under this standard, claim terms are generally given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A “claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer,” however, and clearly set forth a definition of the claim term in the specification. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).” slip op. at 6

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

    “Claim 1 requires the “credential” to be assigned to the apparatus of (a). As Patent Owner points out, the specification of the ’308 patent describes such credential as “an API Key, an Application Secret Key and could also include an Application ID,” which “[is] usually embedded in the source code of the apparatus, or stored on a remote Internet server.” Id. at 28–29 (citing Ex. 100[3], 10:51–56); Ex. 1003, 10:51–66. The apparatus, such as an Internet-powered desktop or a browser-based application, uses the API Key to establish a data exchange session with the API. Ex. 1003, 10:51–58. By contrast, the “credential in DeMello is assigned to the user, not the device.” Prelim. Resp. 28. As Petitioner explains, “[i]n DeMello, the reader prompts a user to provide login credentials (e.g., PASSPORTTM credentials) to connect to the PASSPORT server via the API of the PASSPORT server to authenticate the user at the PASSPORT server.” Pet. 31 (emphases added); see also Ex. 1006, 23:6–10. Further, Mr. Cherukuri characterizes the PASSPORT credentials as “user’s credentials.” See Ex. 1009 ¶ 72 (cited at Pet. 32) (emphasis added). Neither Petitioner nor Mr. Cherukuri explains persuasively how the user PASSPORT credentials in DeMello are assigned to the reader (apparatus of (a)). Based on the record presented, we are not persuaded that DeMello discloses the recited credential. In view of the foregoing, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that DeMello anticipates claim 1.” slip op. at 9

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

    “B. Obviousness over DeMello, Wieder, and the Admitted Prior Art Petitioner argues that claim 1 of the ’308 patent would have been obvious over DeMello, Wieder, and “the admitted prior art.” See Pet. 19– 39. Petitioner does not cite Wieder or the admitted prior art as teaching the elements found to be lacking in the above discussion with respect to DeMello. Accordingly, on this record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 1 would have been obvious over DeMello, Wieder, and the admitted prior art.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,887,308
• Sure-Fire Electrical Corporation v. Yongjiang Yin And Shenzhen El Lighting Co. Ltd.Rehearing denied
  PTAB · Aug 30, 2016 · IPR2014-01448 · APJ Debra K Stephens · IPR · Rehearing

  The Board denied rehearing of its final written decision, leaving claims 1 and 7 unpatentable over He and Korodi under § 103.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, concluding Petitioner had shown by a preponderance of the evidence that the challenged claims are unpatentable. Specifically, we determined Petitioner had established by a preponderance of the evidence claims 1 and 7 are unpatentable under 35 U.S.C. § 103(a) over He and Korodi (Final Dec. 11–25). In light of our determination that Petitioner had established by a preponderance of the evidence that claims 1 and 7 of the ’279 Patent are unpatentable under 35 U.S.C. § 103(a) as obvious over He and Korodi, we took no position on whether the same claims are also obvious over the combination of the teachings and suggestions of Gustafsson and He (id. at 25).” slip op. at 3

  § 103 obviousness
  Patents in suitUS 7,671,279
• Google Inc. v. Better Food Choices LLCAll claims unpatentable
  PTAB · Aug 18, 2016 · CBM2015-00071 · APJ Minn Chung · CBM · Final written decision

  Claims 1–20 are unpatentable under § 101; claims 1–10 are also indefinite under § 112, ¶ 2 because the specification lacks an algorithm for the claimed correlating function.

  RulingsFinal written decision

  • BurdenOther

    “As an initial matter, Patent Owner asserts that Petitioner has not met its burden of proof because Petitioner relies only on the ’115 patent and its prosecution history to argue unpatentability and does not present any other evidence, such as a witness. PO Resp. 6–7, 13–20. Patent Owner argues that Petitioner has presented no evidence of unpatentability because the ’115 patent and its file history “shows the Patent Owner has a valid, issued patent and nothing more.” Id. at 7. We are not persuaded because, as discussed below, in this case we need to look only to the ’115 patent and its prosecution history to support a finding of unpatentability under §§ 101 and 112. See In re TLI Comm. LLC Patent Litig., 823 F.3d 607, 613–14 (Fed. Cir. 2016) (the patent alone is sufficient to sustain a finding of unpatentability under § 101).” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “rebuttable presumption that the limitation is written in a means-plus-function format under 35 U.S.C. § 112, ¶ 6. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008) (citation omitted). If, in addition to the word “means” and the functional language, the claim recites sufficient structure for performing the described functions in their entirety, the presumption is overcome, and § 112, ¶ 6 does not apply. Id. “Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.” Id. at 1259–60.” slip op. at 28

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “with the Supreme Court and Federal Circuit precedents on step one analysis under the Alice framework. In step one of the Alice analysis, to determine whether the challenged claims are directed to an abstract idea, the inquiry is to ask, considered in light of the Specification, whether “their character as a whole” is directed to an abstract idea, not, as Patent Owner contends, identifying the “core invention” of the patent. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). Relying on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas,” the court in Enfish clarified that a relevant inquiry in step one of the Alice framework is to ask whether the “focus” of the claims is on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. Enfish, 822 F.3d at 1335–36 (citing Alice, 134 S. Ct. at 2358–59). In this inquiry, claims “directed to an improvement in the functioning of a computer” are contrasted with claims “simply adding conventional computer components to well-known business practices” or “generalized steps to be performed on a computer using conventional computer activity.” See TLI, 823 F.3d at 612 (quoting Enfish, 822 F.3d at 1338). The Federal Circuit further clarified recently and described the first-stage inquiry as “looking at the ‘focus’ of the claims, their ‘character as a whole.’” Elec. Power Grp., LLC v. Alstom S.A., No. 2015-” slip op. at 17

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of collecting and correlating information to provide personalized nutritional information of food products to shoppers into a patent-eligible application of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. TLI, 823 F.3d at 613. Rather, the recited components must involve more than performance of “‘well- understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294).” slip op. at 22

  Patent outcomesUS 5,841,115 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Nautilus
  Patents in suitUS 5,841,115
• Unified Patents Inc. v. William GreciaInstitution denied
  PTAB · Aug 16, 2016 · IPR2016-00600 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Pet.”) requesting inter partes review of claims 1–30 of U.S. Patent No. 8,533,860 B1 (Ex. 1001, “the ’860 patent”). William Grecia (“Patent Owner”) filed a Preliminary Response (Paper 10, “Prelim. Resp.”). We have jurisdiction under 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 that follow, we have decided not to institute an inter partes review. slip op. at 2

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

    “As Patent Owner points out, the “claims require a verification token ‘corresponding to the digital content.’” Prelim. Resp. 29. Petitioner does not provide persuasive explanation as to how a retailer password or e-mail corresponds to digital content. In fact, Petitioner does not appear to address this recited feature at all. See 35 U.S.C. §312(a)(3) (a petition must identify, “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim”); 37 C.F.R. § 42.104(b) (a petition must identify “[h]ow the construed claim is unpatentable under the statutory grounds identified” and “where each element of the claim is found in the prior art,” and must explain the “relevance of the evidence to the challenge raised”); 37 C.F.R. § 42.22(a)(2) (a petition must include a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). As Petitioner does not identify specifically how a retailer password or e-mail in DeMello corresponds to digital content, we are not persuaded that Petitioner has made a sufficient showing that DeMello discloses the recited verification token.” slip op. at 9

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

    “It is not sufficient, however, for Petitioner to demonstrate that each of the claim elements is known. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner must also provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In that regard, with respect to element [B], Petitioner argues: DeMello teaches “user authentication” and establishing a membership relationship with a retailer (left of Figure 4), which inherently would include providing a token, such as a retailer password and/or email (e.g., Amazon log-on credentials). User authentication and establishing a membership are obvious in view of the admitted prior art. The admitted prior art steps are described in the parent ‘555 Patent as verifying membership for site to buy content, and DeMello recites establishing such a membership relationship. It would be obvious to use the verification token of the admitted prior art to establish a membership relationship. Pet. 18–19. Petitioner does not, however, explain sufficiently why one of ordinary skill in the art would have considered combining DeMello and any other patent or printed publication to arrive at the claimed invention. For example, Petitioner does not explain persuasively why one of ordinary skill in the art would have considered “us[ing] the verification token of the admitted prior art to establish a membership relationship” in DeMello, when DeMello already teaches “establishing a membership relationship with a retailer.” See id. With respect to elements [C] and [G], Petitioner does not appear to proffer any reason for combining DeMello and the admitted prior art. See Pet. 20–21, 26–28. Finally, with respect to element [D], Petitioner merely asserts that “it is obvious that the browser of the reader mentioned in DeMello includes a GUI, since browsers provide a GUI.” Id.at 23. Again, Petitioner does not explain sufficiently why one of ordinary skill in the art would have considered combining DeMello and any other patent or printed publication to arrive at the claimed invention. Based on the record presented, we are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness with respect to elements [B], [C], [D], and [G]. See Kahn, 441 F.3d at 988. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that claims 1, 9, and 11 would have been obvious over DeMello and the admitted prior art. See also Pet. 42 (referring to analysis of claim 1 for claim 9), 44–45 (referring to analysis of claim 1 for claim 11). Claims 2–8, 10, and 12–20 depend from claims 1, 9, or 11. We therefore also determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that these dependent claims would have been obvious over DeMello and the admitted prior art.” slip op. at 12

  • PTAB / AIA Trials › §315(b) time barNot reached

    “barred under 35 U.S.C. § 315(b) because “[Patent Owner] filed and served a complaint alleging that Google infringed the ‘860 patent” and “Google, an original founding member of [Petitioner] and continuing customer of [Petitioner] (Ex. 2005), is a privy of [Petitioner].” Prelim. Resp. 41–42. Because the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, we need not address Patent Owner’s assertions that the Petition is time-barred under 35 U.S.C. § 315(b) based on privity.” slip op. at 21

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,533,860
• Mastercard International Inc. v. Leon StamblerAll claims unpatentable
  PTAB · Jul 6, 2016 · CBM2015-00044 · APJ Peter P Chen · CBM · Final written decision

  Claims 51 and 53 are unpatentable as anticipated by Davies; claims 51, 53, 55, and 56 are unpatentable as obvious over Davies and Meyer; claim 55 over Davies and Nechvatal; and claim 56 over Davies, …

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “F. Level of Ordinary Skill in the Art Petitioner’s proposal for the level of ordinary skill in the art is “at least a bachelors degree in computer programming and two years’ experience as a programmer or developer in the field of computer science, with a working understanding of cryptographic operations for transforming original input into a coded output using a known algorithm.” Pet. 14–15. Patent Owner has proposed similarly, that one of ordinary skill in the art would possess “(1) undergraduate education in mathematics, physics, computer science, electrical engineering or similar technical subject; and (2) either postgraduate education in networking, cryptography, or other discipline encompassing information theory, or equivalent experience with applications involving communication of financial, military, medical or similarly sensitive data over secure and non-secure networks.” Prelim. Resp. 30–31. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “1. “variable authentication number (VAN)” In the Decision to Institute, we construed the term “variable authentication number” or “VAN” as “a variable number resulting from a coding operation that can be used in verifying the identity of a party or the integrity of information or both.” Dec. to Inst. 8. See also Case IPR2014-00694, slip op. at 8–9 (PTAB Oct. 31, 2014) (Paper 10). Patent Owner “does not challenge this construction.” PO Resp. 16–17. Patent Owner asserts additional construction of the term is necessary for CBM standing issues, but does not elaborate further. PO Resp. 1. Patent Owner also argues we incorrectly applied the broadest reasonable interpretation to the term in the Decision to Institute. PO Resp. 9. The Decision to Institute noted that our review of the claims of the expired ’302 patent is similar to that of a district court’s review, In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012); Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005), but inadvertently mentioned the broadest reasonable interpretation standard in construing this term. Dec. to Inst. 7–8. We reaffirm our agreement with Patent Owner that the Phillips framework is applied to the expired ’302 patent. Our construction of “VAN” is the same under either claim construction standard. We reject Patent Owner’s undeveloped argument regarding standing, and maintain the construction of VAN from the Decision to Institute, as the ordinary and customary meaning of the term: “a variable number resulting from a coding operation that can be used in verifying the identity of a party or the integrity of information or both.”” slip op. at 10

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

    “2. Sequence of method steps: receiving, generating In the Decision to Institute, we agreed with Patent Owner and construed the sequence of method steps in independent claim 51 to mean that at least a portion of the receiving step must precede the generating step. Dec. to Inst. 8. See also Case IPR2014-00694, slip op. at 11–14 (PTAB Oct. 31, 2014) (Paper 10). We maintain that construction as the ordinary and customary meaning of the sequence of the receiving and generating method steps.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “intended use of an invention is generally not treated as limiting the scope of the claim. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). However, “a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). “The effect preamble language should be given can be resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). When the limitations in the body of the claim rely upon or derive essential structure from the preamble elements, e.g., the preamble serves as an antecedent basis for limitations in the claim, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). In this case, the preamble of independent claim 51 recites “a credential being previously issued,” and the limitations of the claim include “determining whether the at least a portion of the received funds transfer information is authentic by using the VAN and the credential information.” Ex. 1001, 33:18–19, 33:29–31. Thus, the preamble’s recitation of “a credential” is an antecedent basis for the recited “the credential information” in the “determining” step, and we determine that the preamble limits the scope of the challenged independent claim 51 and dependent claims 53, 55, and 56.” slip op. at 11

  Patent outcomesUS 5,793,302 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,793,302
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Jun 11, 2016 · IPR2016-00301 · APJ Matthew R Clements · IPR · Institution

  The Board denied institution of inter partes review of claims 1-5, 7-10, 12-22, and 25-31 under § 325(d), finding substantially the same art or arguments had been presented before.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “In determining whether to exercise our discretion to deny institution under § 325(d), we have reviewed the timeline of the Petition’s filings. Petitioner filed the instant Petition on December 9, 2015, approximately two months after the Board issued the decisions denying institution in the ’973 IPR. The reliance on Radia in the instant Petition appears, therefore, to be an attempt to bolster the unsuccessful challenge previously presented regarding Hendel’s alleged disclosure of the limitations of claim 1. See Prelim. Resp. 16–18 (arguing Petitioner used prior Institution Decisions as a roadmap); see also id. at 14–16 (arguing Petitioner fails to explain why Radia could not have been presented in an earlier petition). Under § 325(d), our determination here rests on whether the same or substantially the same prior art was presented previously. Finding that Hendel was presented previously in the ’973 IPR, and that the instant Petition relies on bolstering Hendel guided by our Decision in the ’973 IPR, we exercise our discretion under § 325(d) and deny institution of inter partes review. III. CONCLUSION For the foregoing reasons, we conclude that the instant Petition raises the same or substantially the same prior art or arguments as those previously presented to the Office. In light of the circumstances of the present case, we exercise our discretion not to institute inter partes review of the ’577 patent.” slip op. at 8

  Discretionary denial
  Patents in suitUS 6,377,577
• Toyota Motor Corporation v. Signal IP, Inc.Institution denied
  PTAB · Jun 9, 2016 · IPR2016-00293 · APJ Jason J Chung · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 2, and 6 obvious over either asserted combination.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “inter partes review of claims 1, 2, and 6 of U.S. Patent No. 5,714,927 (Ex. 1001, “the ’927 patent”). Paper 2 (“Pet.”). In response, Patent Owner, Signal IP, Inc., filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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.” For the reasons set forth below, we deny institution of inter partes review of the ’927 patent.” slip op. at 2

  • Prior constructionPrior construction adoptedDecided for petitioner

    “(1) a related inter partes review (Pet. 8), and (2) a related matter before the U.S. District Court for the Central District of California (id. at 6–8). Regarding the related inter partes review, the Board previously construed the term “alert command” as raw alert data that is used to generate an alert signal, and the term “alert signal” as a signal that provides a visual or audio alert to a driver. Volkswagen Grp. of Am., Inc. v. Signal IP, Inc., Case IPR2015-00968, slip op. at 6–7 (PTAB Aug. 25, 2015), Paper 6. In order to reach our decision below, we need only construe the terms “alert command” and “alert signal.” We, therefore, decline to specifically construe any other claim terms at this time. We agree with Petitioner’s construction of the terms “alert command” and “alert signal,” consistent with our prior construction in IPR2015-00968. (See id. for our prior construction of the terms.) Thus, we construe the term “alert command” as raw alert data that is used to generate an alert signal, and the term “alert signal” as a signal that provides a visual or audio alert to a driver. Id. As explained below, even using Petitioner’s construction of these terms, Petitioner’s challenge fails to establish a reasonable likelihood that Petitioner would prevail in establishing unpatentability.” slip op. at 6

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

    “Petitioner asserts that it would have been obvious “to modify Pakett’s system such that it determines whether the ‘alert signal,’ as opposed to the ‘alert command,’ was active for a ‘threshold time’ as the claim requires.” Pet. 47. Petitioner asserts that this could be accomplished by activating a warning (alert signal) as soon as Pakett recognizes that an obstacle is present, and then applying the processing method previously applied to the persistence period instead to determine whether to sustain the warning. Id. at 47–48 (citing Ex. 1010 ¶¶ 101–04). Petitioner asserts that “one of ordinary skill in the art would consider Pakett’s delay of a warning until after the end of the persistence period to be nothing more than an optional redundancy,” and, thus, that this modification would have been obvious as “nothing more than a routine, obvious design choice.” Id. at 48 (citing Ex. 1010 ¶ 104). We disagree with Petitioner that the cited portions of Pakett’s teaching to delay the warning until after the persistence period is “nothing more than an optional redundancy,” at least because the cited portions of Packett do not indicate, either explicitly or implicitly, the 17 function of waiting for the persistence period before sending a warning to the driver indicators as optional or redundant. See id. Pakett clearly states that during the persistence period, “no warnings are sent to the driver indicators.” Ex. 1002, 6:50–51 (emphasis added). Pakett explains that waiting through the persistence period before sending warnings to the driver indicators prevents the system from incorrectly identifying stationary obstacles that were identified by the square wave generator 29 as valid obstacles in the blind spot. Id. at 7:56–63. Pakett thus explains that waiting through the persistence period before sending warnings to the driver indicators filters out false positives of objects in the blind spot of the vehicle. Id.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,714,927
• Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCInstitution denied
  PTAB · Jun 9, 2016 · IPR2016-00453 · APJ Michael W Kim · IPR · Institution

  The Board denied institution on claims 11–20, exercising discretion under § 314(a) because this was an unjustified serial petition and separately rejecting it under § 325(d).

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied

    “patent, using substantially the same prior art, and filed so long apart that Petitioner received the benefit of having studied Patent Owner’s Preliminary Response in an earlier petition. That is especially so if Petitioner, at the time of filing of the earlier petition was aware of or should have been aware of the prior art references newly cited and applied in the later petition. To that end, Petitioner does not assert that it was unaware of Nazem prior to filing the instant Petition or any earlier petition. The potential inequity based on a petitioner’s filing of serial and similar attacks against the same claims of the same patent, while having the opportunity to adjust litigation positions along the way based on either patent owner’s contentions responding to prior challenges or the Board’s decision on prior challenges, is real and cannot be ignored. This is not to say, however, that multiple petitions against the same claims of the same patent are never permitted. Rather, each case depends on its own facts. We look to and consider, in each case, as we do here, what rationale a petitioner offers for filing multiple petitions and for the time elapsed between those filings. Generally, however, we are unpersuaded that the possibility of an adverse claim construction alone, especially where the possibility of the adverse claim construction was expressly a result of assertions made by a patent owner in the previous proceeding, is sufficient to justify serial petitions.” slip op. at 9

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “Emphasis added. As admitted by Petitioner, all of the grounds in the instant Petition and the petition in IPR2015-01706 rely primarily on MyLibrary. Furthermore, the only reference cited additionally in the instant proceeding is Nazem, and Nazem mentions, on multiple occasions, variations of “MyYahoo” or “my.yahoo.com.” Ex. 1047, Figs. 1, 3, 4, 5A, 5B; 2:63-3:2; Appendices A and B. Moreover, Petitioner asserts the following: For example, one such prior art personalized portal, referenced by MyLibrary as an inspiration, was the MyYahoo system, Ex. 1005 at 1, a system described in U.S. Patent No. 5,983,227 to Nazem et al. (issued Nov. 9, 1999) (Ex. 1047). Ex. 1047 at Face, Fig. 5a (“MyYahoo!”). Pet. 21. A person having ordinary skill in the art would have been motivated to add content, such as disclosed in Nazem, to the personalized web pages of MyLibrary because MyYahoo was an inspiration for the system of MyLibrary, thereby suggesting the additional MyYahoo functionality would work well with MyLibrary. Pet. 22. Given these articulated connections between the substance of MyLibrary and Nazem, we have no trouble determining that presenting MyLibrary and Nazem in this proceeding is “the same or substantially the same prior art or arguments” as was presented previously to the Office in IPR2015-01706, with MyLibrary alone.” slip op. at 13

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied

    “III. CONCLUSION For the foregoing reasons, we exercise discretion not to institute inter partes review of any of claims 11–20 of the ’177 patent, and also reject the Petition under 35 U.S.C. § 325(d). IV. ORDER It is ORDERED that no trial or inter partes review is instituted for any claim of the ’177 patent on any ground in this proceeding.” slip op. at 14

  Discretionary denial
  Patents in suitUS 7,516,177
• American Megatrends, Inc. / Micro-Star International Co., Ltd. et al. v. Kinglite Holding, Inc.Institution denied
  PTAB · May 31, 2016 · IPR2016-00122 · APJ Brian J Mcnamara · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–20 obvious over BBS and the knowledge of an ordinarily skilled artisan.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “For this reason, Petitioner has not demonstrated that a person of ordinary skill would have been motivated to modify BBS to arrive at the subject matter recited in claim 1. Independent Claims 10 and 19 Petitioner contends that the combination of BBS and the knowlege of one of ordinary skill renders independent claim 10 obvious for reasons similar to those discussed with respect to claim 1 (Pet. 26) and that claim 19 is a computer program product claim similar in scope to apparatus claim 1 (id at 29). For the same reasons as discussed with respect to claim 1, we are not persuaded by Petitioner’s arguments concerning claims 10 and 19.” slip op. at 22

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

    “Reordering priorities, as urged by Petitioner, expressly contradicts the disclosure in BBS that the user cannot change priority using the Boot Menu. Ex. 1006, 42. BBS states: [u]nlike in Setup, the Boot Menu doesn’t allow you to edit the position of an IPL device in the IPL Priority. This menu simply allows you to select a Boot First device. A Boot First device attempts booting first before the regular IPR Priority is considered. You select a Boot First device from the Boot Menu by using the up/down keys to move the highlight bar to the desired device, and then by pressing <ENTER> the ordinal value from the IPL Priority for this selection is stored so that that later the INT 19h handler can boot from this device. Id. Thus, BBS discloses that a user who exercises the <HOT KEY> option during POST may select a Boot First device by highlighting it on a pop-up menu. Upon making this selection, the identifier of the Boot First device is saved and that device is used to boot the O/S. The user does not have the option of changing IPL Priority. BBS explicitly states that the Boot Menu does not allow a user to change the position of an IPL device in the IPL Priority. Thus, the priority swapping described by Petitioner as suggested by BBS is not allowed using the BBS Boot Menu. In BBS a user must reenter Setup to change the priority. Prelim. Resp. 14. Based on this disclosure alone, we agree with Patent Owner that one of ordinary skill would not have been motivated to swap priorities or the device numbers corresponding to the priorities.” slip op. at 21

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

    “Determine if a boot process should proceed from and determining whether to boot from Petitioner contends that there is no substantive difference between the two expressions determine if a boot process should proceed from (claims 1 and 19) and determining whether to boot from (claim 10) and that they are co-extensive in scope. Pet. 8. According to Petitioner, both expressions should be read to mean “[determine/determining], based on a user’s command to continue to boot from.” Id. at 9. Patent Owner contends that Petitioner reads “based on the user input” into these terms from an example in the specification and that Petitioner’s construction is superfluous if the claim preamble, which recites “based on user input” (independent claims 1 and 10),2 is given patentable weight. Prelim. Resp. 3–4. We agree with Patent Owner that the expressions are self-explanatory and should be given their plain and ordinary meaning in the context of the claims in which they appear.” slip op. at 8

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

    “If not Petitioner contends that if not should be construed to be at least as broad as “[determine/determining] to not continue to boot from.” Pet. 9. Patent Owner contends that if not should be construed to mean “if it is determined not to proceed with a boot process from a currently configured device. Prelim. Resp. 6. Patent Owner notes that the use of the word “continue” in Petitioner’s definition implies that a boot process has already been initiated, when that is not the case. Id. at 7. Patent Owner points to Figure 3 of the ’641 Patent in which the process flow first determines whether the boot process proceeds from the currently specified drive (step 120) and later, after making that determination and the desired drive is complete, the process flow initiates the boot process (step 140). Claim 1 recites as step (b) performing sub-steps (b.1), (b.2), and (b.3) if the condition in step (a) is not satisfied. The condition in step (a) is determining if a boot process should proceed from a currently configured device. The claim requires no further construction. If the boot process should proceed from the currently configured device the condition in step (a) is met, step (b) is by-passed, and at step (c) the boot process is initiated; if the boot process should not proceed from the currently configured device, the condition in step (a) is not met, the process moves to step (b) and sub-steps (b.1), (b.2), and (b.3) are performed.” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,282,641
• Corelogic, Inc. v. Boundary Solutions, Inc.Institution denied
  PTAB · May 24, 2016 · CBM2016-00016 · APJ Peter P Chen · CBM · Institution

  The Board denied institution for claims 1–19 because the petition did not establish that the ’957 patent qualifies as a covered business method patent.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “method patent,” as defined by the AIA. CoreLogic bears the burden of persuasion that the ’957 patent is a covered business method patent. See 37 C.F.R. § 42.304(a). For the reasons discussed below, we determine CoreLogic has made an insufficient showing that the ’957 patent is a “covered business method patent.” The AIA defines “covered business method patent” as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” AIA § 18(d)(1); see also 37 C.F.R. § 42.301(a). The legislative history of the AIA “explains that the definition of covered business method patent was drafted to encompass patents ‘claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.’” Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention; Final Rule, 77 Fed. Reg. 48,374, 48,735 (Aug. 14, 2012) (“CBM Final Rules”) (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)); see also Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1338 (Fed. Cir. 2016). To determine whether a patent is eligible for a covered business method patent review, the focus is on the claims. AIA § 18(d)(1) (“a patent that claims . . .” (emphasis added)); 37 C.F.R. § 42.301(a) (same); CBM Final Rules, 77 Fed. Reg. at 48,736 (comment 4) (“[T]he definition set forth in § 42.301(a) . . . is based on what the patent claims.”). A patent need have only one claim directed to a covered business method to be eligible for review. CBM Final Rules, 77 Fed. Reg. at 48,736 (comment 8) (“A patent having one or more claims directed to a covered business method is a covered business method patent for purposes of the review, even if the patent includes additional claims.”).” slip op. at 5

  • Adverse judgmentAdverse judgmentOther

    “patent because “[a]t least claim 1 of the ’957 patent claims data processing or other operations that are financial in nature or, at a minimum, incidental or complementary to a financial activity.” Pet. 7. CoreLogic also relies on dependent claims 13 and 16–18, and argues that those claims “explicitly limit the claims to financial applications.” Id. at 9; see also id. at 11 (alleging that claims 16–18 cover “subject matter incidental or complementary to a financial activity”). As noted above, however, BSI disclaimed claims 13 and 16–18 at the same time it filed its Preliminary Response. See Ex. 2003. “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996). We agree with other panels that have considered this issue under similar facts and concluded that the disclaimed claims should not be consulted when determining whether the patent is a covered business method patent under AIA §18(d)(1).1 We are mindful that other Board decisions have evaluated compliance with CBM standing requirements at the time of filing, but those cases are distinguishable2 and not binding here. Any suggestion in those cases that a decision on institution should address the disclaimed claims because they existed at the time the petition was filed is inconsistent with Federal Circuit precedent instructing us to treat the claims as if they never existed, and our Rules forbidding institution “based on disclaimed claims.” Guinn, 96 F.3d at 1422; 37 CFR § 42.207(e) (“No post-grant review will be instituted based on disclaimed claims.”); see also Google Inc. v. SimpleAir, Inc., CBM2015- 00019, slip op. at 5–6 (PTAB Aug. 19, 2015) (Paper 15) (Order Denying Request for Rehearing) (rejecting petitioner’s argument that disclaimed claim should be considered because it existed at the time the petition was 1 See, e.g., AT&T Mobility LLC v. Intellectual Ventures II LLC, CBM2015- 00185, slip op. at 9–10 (PTAB May 4, 2016) (Paper 10); Great West Casualty Co. v. Intellectual Ventures II LLC, CBM2015-00171, slip op. at 7–9 (PTAB Feb. 9, 2016) (Paper 10); Google Inc. v. SimpleAir, Inc., CBM2015-00019, slip op. at 14–15 (PTAB May 19, 2014) (Paper 11). 2 In Travelers Lloyds of Texas Ins. Co. v. Integrated Claims Sys., LLC, CBM2014-00187, slip op. at 7, 8 n.1 (PTAB Mar. 30, 2016) (Paper 31), the Patent Owner attempted to cancel a claim after institution, not disclaim a claim prior to institution. In J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC, CBM2014-00157, slip op. at 9 (PTAB Jan. 12, 2016) (Paper 40), the Patent Owner’s disclaimer occurred after institution, not prior to institution. filed). We therefore do not consider disclaimed claims 13 and 16–18 in our analysis.” slip op. at 6

  • BurdenDecided for patent owner

    “We agree with BSI. CoreLogic does not explain adequately how any of the claims of the ’957 patent recite a method or apparatus “for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” AIA § 18(d)(1); see also 37 C.F.R. § 42.301(a). CoreLogic focuses on claim 1, but fails to identify any limitation in claim 1 or any other claim that relates to a financial activity in any way. Claim 1 claims a “method for retrieving geographic parcel boundary polygon maps and associated parcel attribute data,” which has applicability to retrieving and displaying map data, not financial products and services. CoreLogic suggests that the “transmitting” step of claim 1 “can be used” by various entities in a business context, but does not argue, let alone establish, that the claim terms on their face are financial in nature. See Pet. 1. CoreLogic asserts that the Specification of the ’957 patent describes several methods of generating revenue using the claimed methods, and that numerous businesses may pay for access to map data generated using the claimed method. Pet. 10–16. CoreLogic’s reliance on these portions of the Specification is unavailing. First, CoreLogic fails to address how these disclosures relate directly to, or meaningfully informs our analysis of, the language of the claims. For example, CoreLogic does not direct us to any claims or claim limitations that require users to pay for access to the map database or use of the claimed methods. Second, CoreLogic fails to address portions of the Specification that indicate the claimed invention can be used “for free,” i.e., without any generation of revenue or financial aspect at all. See Ex. 1001, 2:58 (“These end users may access for free . . . .”), 14:11–15 (“Another public-private alliance option is to offer the free use of the NPDP server to such data sponsors in addition to or in lieu of their revenue share.”), 14:41–45 (“[C]ommodity service subscriber end users (customers) can have access to the NPDP at no charge.”), 16:8–12 (“It is also contemplated that other independent public and private data sponsors could be provided with links as part of the NPDP display which end users could access on a free or fee basis.”). Given that the Specification contemplates use of the claimed inventions for free, it is not apparent that the “purpose of the claimed method is to provide data in exchange for money,” as CoreLogic suggests. Pet. 10. At most, CoreLogic has established that the claimed methods could be used to generate revenue in a number of ways, even though the language of the claims does not require any exchange of money or other financially related step. Under these circumstances, we conclude that the “financial prong” has not been met. Numerous Board decisions have taken a similar approach in situations where the Specification refers to potential financial applications for the claimed inventions but the claim language does not expressly indicate a financial context.3 In Qualtrics, LLC v. OpinionLab,” slip op. at 10

  None
  Patents in suitUS 7,092,957

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.