- PTAB · Jul 25, 2024 · IPR2024-00478 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on anticipation by Rosenberg-I.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In view of the above, we determine that this factor strongly weighs against the exercise of discretionary denial. 2. Factor 2: proximity of the court’s trial date to the Board’s projected” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Skill levelOther
“would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry or graduate level experience with software engineering, haptics programming, and/or human-computer interaction, including experience with user-interfaces and applications involving touchscreens, touchpads, and related technologies.” Pet. 8 (citing Ex. 1003 ¶¶ 37–43). Patent Owner contends that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction (HCI), including implementation of computer-based systems and software for providing haptic feedback effects to a user,” and adds that a person having ordinary skill in the art “could have qualified . . . with more formal education and less practical or industry experience, or vice versa.” Prelim. Resp. 9 (citing Ex. 2001 ¶ 32). Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition. slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,430,042 - PTAB · Jul 24, 2024 · IPR2024-00477 · APJ Patrick R Scanlon · IPR · Institution
Instituted IPR of claims 1–7 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“does not provide any authority supporting its position that failure to provide a Sotera stipulation “neutralizes” or “undercuts” the impact of a stay. We also disagree with Patent Owner’s suggestion that a district court stay can make discretionary denial inappropriate only when coupled with a Sotera stipulation. See Prelim. Resp. 59. Again, Patent Owner does not provide any authority supporting this position. Id. Contrary to Patent Owner’s positions, Fintiv indicates a district court stay “has strongly weighed against exercise of the authority to deny institution” independent of whether a Sotera stipulation—or any other type of stipulation—has been submitted. Fintiv at 6.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other
“time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We do not discern a need to construe explicitly any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 7,336,260 - Apple Inc. v. Ald Social, LLCAdverse judgmentPTAB · Jul 23, 2024 · IPR2023-01399 · APJ Barbara A Benoit · IPR · Adverse judgment
The Board entered adverse judgment against ALD Social, LLC on claims 1–16 of the ’158 patent and terminated IPR2023-01399 after finding Patent Owner unequivocally abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“judgment against itself at any time during a proceeding, and abandonment of the contest is construed by the Board to be a request for adverse judgment. See IPR2023-01398, Paper 8, 3 (citing 37 C.F.R. § 42.73(b)); IPR2023-01399, Paper 7, 3 (citing 37 C.F.R. § 42.73(b)). Our orders also stated: Under the specific circumstances of this case, we determine Patent Owner’s failure to file long-overdue mandatory notices required by 37 C.F.R. § 42.8(a)(2) to demonstrate Patent Owner’s abandonment of the contest. Under 37 C.F.R. § 42.5(c), in the particular circumstances of this case, and in the interests of justice, we set a deadline for Patent Owner to file mandatory notices pursuant to 37 C.F.R. § 42.8(a)(2) no later than June 10, 2024. IPR2023-01398, Paper 8, 4 (emphasis in original); IPR2023-01399, Paper 7, 4 (emphasis in original). Our orders further explained that we “would view, in the particular circumstances of this case, Patent Owner’s filing of mandatory notices by the deadline as an indication that Patent Owner had not abandoned the contest.” IPR2023-01398, Paper 8, 4; IPR2023-01399, Paper 7, 4.” slip op. at 5
NonePatents in suitUS 9,402,158 - Apple Inc. v. Ald Social, LLCAdverse judgmentPTAB · Jul 23, 2024 · IPR2023-01398 · APJ Barbara A Benoit · IPR · Adverse judgment
The Board entered adverse judgment against ALD Social, LLC on claims 1–14 of the ’054 patent and terminated IPR2023-01398 after finding unequivocal abandonment.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“judgment against itself at any time during a proceeding, and abandonment of the contest is construed by the Board to be a request for adverse judgment. See IPR2023-01398, Paper 8, 3 (citing 37 C.F.R. § 42.73(b)); IPR2023-01399, Paper 7, 3 (citing 37 C.F.R. § 42.73(b)). Our orders also stated: Under the specific circumstances of this case, we determine Patent Owner’s failure to file long-overdue mandatory notices required by 37 C.F.R. § 42.8(a)(2) to demonstrate Patent Owner’s abandonment of the contest. Under 37 C.F.R. § 42.5(c), in the particular circumstances of this case, and in the interests of justice, we set a deadline for Patent Owner to file mandatory notices pursuant to 37 C.F.R. § 42.8(a)(2) no later than June 10, 2024. IPR2023-01398, Paper 8, 4 (emphasis in original); IPR2023-01399, Paper 7, 4 (emphasis in original). Our orders further explained that we “would view, in the particular circumstances of this case, Patent Owner’s filing of mandatory notices by the deadline as an indication that Patent Owner had not abandoned the contest.” IPR2023-01398, Paper 8, 4; IPR2023-01399, Paper 7, 4.” slip op. at 5
NonePatents in suitUS 9,198,054 - Jeisys Medical Inc. v. Serendia, LLCInstitutedPTAB · Jul 22, 2024 · IPR2024-00386 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR on claims 1–29, finding a reasonable likelihood that claims 1–29 are unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“D. Analysis The Director’s recent Videndum decision provides that where no “significant relationship [exists] under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” See Videndum, Paper 12 at 6. Moreover, the Director’s decision in Ford clarified that “court-ordered” coordination alone between parties having different accused products does not establish a significant relationship absent “other relevant or extenuating facts or circumstances” that might evidence a significant relationship, such as “interactions or agreements regarding the implementation of the accused [technology] into their respective accused products.” Ford, Paper 28 at 10–11. We do not find a significant relationship exists between the prior and current petitioners so as to warrant discretionary denial under General Plastic. First, like the parties in Ford, the prior and current petitioners are competitors selling different products, and there is no evidence of agreements regarding the implementation of the claimed technology into their respective accused products. See Ford, Paper 28 at 10; cf. Valve, Paper 11 at 10 (“Valve represented that ‘HTC’s VIVE devices incorporate certain Valve technologies under a technology license from Valve,’ and that ‘Valve employees did provide HTC with technical assistance during the development of the accused VIVE devices.’”). Second, and also like in Ford, the “Ground Rules” for the ITC Investigation required that “[p]arties with similar interests should coordinate and consolidate motion practice to the extent practicable” (Ex. 1041 § 2) and “must coordinate and consolidate depositions and all other discovery” (id. § 3.1). Indeed, we understand that all fourteen co-respondents in the ITC Investigation submitted the joint expert report of Dr. Jean Woloszko. See Ex. 2004, 1; see also Ford, Paper 28 at 3. Third, we do not find the current Petitioner’s mere knowledge of litigation—either in the ITC or district court—against competitors in RF microneedling to establish a significant relationship with those competitors. Cf. Ford, Paper 17 at 3 (noting that where the patent at issue had been asserted against multiple competitors regarding their respective accused products, “merely engag[ing] in court-ordered pretrial coordination” is by itself insufficient to establish a “significant relationship” between the parties). Fourth, we do not find the current Petitioner to have engaged in improper gamesmanship through “tactical delay.” As Petitioner explains, the Prior Petition was filed in response to a district court action filed by Patent Owner against the prior petitioners, but not Petitioner, while the current Petition was filed in response to an ITC Investigation initiated after the denial of the Prior Petition. Patent Owner’s remaining arguments are directed to other factors in the General Plastic analysis and do not evidence a significant relationship between the prior and current Petitioners. Accordingly, we do not exercise our discretion to deny institution under General Plastic.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have 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). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’836 patent. Accordingly, we institute an inter partes review of claims 1–29 of the ’836 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level board ownOther
“IV. ANALYSIS A. Level of Ordinary Skill in the Art The parties agree that a person of ordinary skill in the relevant art (“POSITA”) would have had (1) 7–10 years of experience with developing and/or using treatment systems for delivery of electromagnetic radiation energy to skin or other tissues, and (2) a related graduate engineering degree or M.D. and may have worked as part of a multidisciplinary team and drawn upon not only his or her own skills, but also would have taken advantage of certain specialized skills of others on the team when solving a technical problem. Ex. 1028, 14–15; see also Pet. 9 (citing Ex. 1028, 15; Ex. 1003 ¶¶ 50, 51); see also Prelim. Resp. 29. For purposes of this Decision, we adopt the parties’ assessment of the level of ordinary skill in the art, as it is consistent with the prior art of record and the ’836 patent.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner expressly construe any term. See Pet. 9; see also Prelim. Resp. 30. For purposes of this Decision, we need not and do not formally construe any claim term. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,480,836 - Hum Industrial Technology, Inc. v. Amsted Rail Company, Inc.All claims unpatentablePTAB · Jul 18, 2024 · IPR2023-00539 · APJ James P Calve · IPR · Final written decision
The Board held original claims 1–18 and 20–22 unpatentable over the asserted obviousness grounds, denied the revised motion to amend, and held substitute claims 23–43 ineligible and unpatentable.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“f. Conclusion We determine that Petitioner has established by a preponderance of” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“2. Motivation to combine a. Petitioner’s contentions Petitioner contends that a skilled artisan would have combined the teachings of LeFebvre and Barone to monitor the condition of railcar wheels and bearings using sensors connected over a wireless mesh network and to analyze collected data to determine if a wheel bearing failure is imminent and issue an alert to the locomotive or central station. Pet. 42–43 (citing Ex. 1007, code (57), Abstr., ¶¶ 45, 86, 201–220; Ex. 1003 ¶¶ 157–162). b. Patent Owner’s arguments Patent Owner does not contest these assertions regarding a motivation to combine LeFebvre and Barone. See generally PO Resp.; Sur-reply. c. Conclusion We determine a skilled artisan would have combined the teachings of” slip op. at 51
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“(4) Conclusion We determine that Patent Owner has demonstrated that the inventors” slip op. at 59
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“(4) Conclusion We determine that the above-described lack of clarity in the meaning” slip op. at 72
Patent outcomesUS 9,981,673 unpatentable§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Enfish · Electric Power · Phillips · KSR · GrahamPatents in suitUS 9,981,673 - Hunter’S Manufacturing Company, Inc. D/B/A Tenpoint Crossbow Technologies v. Ravin Crossbows, LLCAll claims unpatentablePTAB · Jul 9, 2024 · IPR2023-00407 · APJ Robert J Silverman · IPR · Final written decision
Claim 1 is unpatentable as anticipated by Stanziale ’771; the Board did not reach the alternative grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As an initial matter, the recited expression “mounted to” is broad. The Federal Circuit has explained that words in a claim “will ordinarily be given their full meaning,” without imposing narrowing modifications on the claim language. Johnson Worldwide, 175 F.3d at 989, see also Virginia Panel, 133 F.3d at 865–66. As to whether the “mounted to” connection may be an indirect connection, the parties agree that an indirect connection is permitted — a view that is amply supported by the intrinsic record, as discussed above. With regard to the types of movement that may occur between a “string guide” and a corresponding “limb,” the intrinsic record shows that that various types of movements (including no movement at all) are characterized as “mounted to.” Slight variations of “mounted to,” occurring in the intrinsic record, are helpful in understanding the claim language — particularly because the ’015 patent itself uses such a variant (“mounted . . . on”) to describe the very connection (between a “string guide” and a “limb”) that is elsewhere, and in claim 1, is described as “mounted to.” See Ex. 1001, 5:23–26.” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner’ sole argument — i.e., that Stanziale ’771 fails to teach the “mounted to” limitation — is based upon its construction of the “mounted to” limitation, which permits the “string guide” to be rotatable relative the corresponding “limb,” but permits no other type of relative motion. See PO Resp. 4, 13–14. As discussed above, we do not accept Patent Owner’s construction of the “mounted to” limitation. In Stanziale ’771, first and second pulleys 145, 146, and interconnecting pivot 147 (all three of which Petitioner maps to claim 1’s “string guide[s]”) are pivotally connected to a number of intermediate members (e.g., lever arms or pushing arms 32, connecting elements 27, and constraining member 29) which are, in turn, pivotally connected to elastic members 10 (which Petitioner maps to claim 1’s “limb[s]”). See Pet. 41–42 (citing Ex. 1012 7:9–17, 8:26–8:13, 11:8–9, 14:18–15:22, 16:24–25, 16:29, 17:2, 17:15–17, 17:24–27, 19:12–30, 20:32–21:16, Figs. 1–7; Ex. 1016 ¶¶ 177–179); see also Ex. 1012 11:3–7, 11:34–12:4, 12:10–17, 16:29–18:3, 18:22–19:30, Figs. 8, 9, 10a, 10b. Therefore, Stanziale ’771, in Petitioner’s mapping, teaches the “string guide[s]” connected indirectly to the “limb[s].” Per the construction of the “mounted to” limitation employed herein (“connected to, either directly or indirectly”), Petitioner establishes, by a preponderance of the evidence, that Stanziale ’771 teaches the “string guide[s]” “mounted to” the “limb[s],” as recited in claim 1 of the ’015 patent. Contrary to Patent Owner’s concerns (see Paper 47, 1), the indirect connection between Stanziale ’771’s “string guide[s]” and “limb[s]” is not “unbounded.” Rather, the connection disclosed by Stanziale ’771 is the type of indirect connection supported by the intrinsic record. See supra § II.B. Patent Owner’s contention that “a POSA would be disinclined to rely on [Stanziale ’771] as a reference for the improved crossbow design disclosed in Claim 1” is not persuasive. See PO Resp. 38 (citing Ex. 2029 ¶ 46). The test for anticipation is whether a prior art reference discloses each and every element recited in the claim, not whether one of ordinary skill in the art would have been inclined to rely on the reference. See Net MoneyIN, Inc., 545 F.3d at 1369.” slip op. at 32
- ExcludeMotion to exclude, deniedMixed
“Motions to exclude evidence are authorized under 35 C.F.R. § 42.64. Rule 42.64(b)(1) states: “Once a trial has been instituted, any objection [to evidence] must be filed within five business days of service of evidence to which the objection is directed.” Further, “[t]he objection must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence.” 35 C.F.R. § 42.64(b)(1). “A motion to exclude evidence must be filed to preserve any objection.” 35 C.F.R. § 42.64(c).” slip op. at 40
- Expert testimonyPatent owner expert creditedDecided for patent owner
“In the present proceeding, Petitioner proposed — and Patent Owner does not dispute (see PO Resp. 3) — the following definition of a person of ordinary skill in the art: A hypothetical POSA to which the ’015 Patent pertains would be a technical person who has at least some experience working in the field of archery, reviewing crossbows or engineering related to bows and/or crossbows, and is generally familiar with prior art crossbows. (Ex. 1016 ¶17.) Such a person would likely have at least a bachelor’s degree in mechanical engineering or, alternatively, would have several years of experience in the field of archery or engineering related to bows and/or crossbows. (Id.) Pet. 28. As discussed above, we adopt Petitioner’s description of a person of ordinary skill for the purposes of this Decision. See supra § II.A. Petitioner alleges various deficiencies in Mr. Teater’s background, education, and knowledge. Paper 39, 4–8. Nevertheless, Mr. Teater satisfies the definition, of a person of ordinary skill in the art, that Petitioner advanced. Specifically, Mr. Teater has reviewed crossbows for 14 years, encompassing the relevant priority date for the ’015 patent, during which time he wrote evaluations of various bows and crossbows, developed and published testing standards for crossbows, and served on the Archery Trade Association’s technical committee for standards and guidelines. Paper 41, 4 (citing Ex. 2029 ¶¶ 3, 4, 7). Accordingly, Mr. Teater satisfies Petitioner’s definition of “a technical person who has at least some experience working in the field of archery, reviewing crossbows or engineering related to bows and/or crossbows, and is generally familiar with prior art crossbows.” Pet. 28. Petitioner emphasizes that Mr. Teater “does not have a degree in mechanical engineering.” Paper 39, 4 (citing Ex. 2034, 1; Ex. 1034, 43:20–44:5). However, no degree of any kind is mandatory for satisfying Petitioner’s definition of a person of ordinary skill in the art. Indeed, Petitioner’s definition states that “[s]uch a person would likely have at least a bachelor’s degree in mechanical engineering or, alternatively, would have several years of experience in the field of archery or engineering related to bows and/or crossbows.” Pet. 28 (emphasis added). There is no dispute that Mr. Teater meets this standard. Petitioner raises various other issues that form no part of the definition that Petitioner advanced — for example, whether Mr. Teater has taught courses related to crossbows, whether he is named as an inventor on a” slip op. at 36
Patent outcomesUS 9,354,015 unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 9,354,015 - Intuit Inc. v. Samesurf, Inc.All claims unpatentablePTAB · Jun 25, 2024 · IPR2023-00342 · APJ Phillip A Bennett · IPR · Final written decision
Claims 1–18 are unpatentable as obvious over Lebrun and Wang and over Prajapat and Wang; the contingent motion to amend is denied.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“3. May Not Enlarge the Claim Scope An amendment may not seek to enlarge the scope of the claims of the” slip op. at 87
- Strike new argumentDenied
“comprise briefs filed by Petitioner in support of a motion to dismiss for lack of patent eligibility under 35 U.S.C. § 101 in the parallel district court litigation involving the challenged patents. The exhibits were submitted together with Patent Owner’s Sur-reply (Paper 33). We have not relied on Exhibit 2006 or Exhibit 2007 in our analysis. Accordingly, we deny the motion as moot.” slip op. at 9
- ExcludeMotion to exclude, deniedDenied
“Accordingly, we deny Petitioner’s Motion to Exclude Exhibits 2005–” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“one of ordinary skill would have had a reasonable expectation of success in combining compatible embodiments, and we credit Dr. Lieberman’s testimony because he supports his testimony with a passage from Lebrun that is consistent with his conclusion. Id. (stating “Lebrun describes several ‘variations on the group-surfing session,’ which includes a subsection of ‘multiple group surfing channels.’ Ex. 1005, 37:19, 43:5 (emphasis in original).”). Consistent with Lebrun’s description, Dr. Lieberman opines, and we agree, that “[a] POSITA would understand ‘multiple group surfing channels’ would be one example/scenario of the ‘variations on the group-surfing session,’ and the latter encompasses the former and the two embodiments are compatible and combinable.” Ex. 1034 ¶ 18.” slip op. at 42
Patent outcomesUS 8,527,591 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,527,591 - Intuit Inc. v. Samesurf, Inc.No claims unpatentablePTAB · Jun 25, 2024 · IPR2023-00341 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1–16 were not shown unpatentable over Lebrun and Wang or over Prajapat and Wang because the combinations did not teach key invitation and webpage retrieval limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“of the parties, we found that a person of ordinary skill in the art (“POSITA”) “would have had (1) at least a bachelor’s degree in computer science, 7 Patent Owner has not offered objective evidence of non-obviousness. See generally PO Resp.; PO Sur-reply; see also Pet. 21 (indicating Petitioner is not aware of any evidence of secondary considerations). least two years of work experience in software development and/or web-based software,” which reflected Petitioner’s proposal. Dec. 12; see Dec. 10–12 (discussing the respective proposals and level of ordinary skill reflected in the challenged patent and asserted prior art). Patent Owner accepts this level of ordinary skill in the art. PO Resp. 37. Accordingly, we apply this determination of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petitioner’s citations in this regard to Dr. Lieberman’s declaration do not adequately support Petitioner’s “forwarding” contention. Pet. Reply 8 (citing Ex. 1003 ¶¶ 37, 149); Ex. 1003 ¶ 37 (indicating the challenged patent describes the invitation as being sent by email, instant message, or social network communication); Ex. 1003 ¶ 149 (describing the group-surfing server receiving the session-creation message, creating the group-surfing session, and “inform[ing] the participants in the group-surfing session”). Petitioner does not identify any testimony from Dr. Lieberman that supports Petitioner’s Reply position that Lebrun’s group-surfing server “forwards” the session-creation message to the group-surfing session participants, nor are we aware of any such testimony. See, e.g., Ex. 1003 ¶ 149 (The group-surfing server “responds to the group session request ‘by (1) creating a group-surfing session, and (2) informing the participants [web clients] in the group-surfing session.”); see generally Ex. 1034. Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 29
- Strike new argumentNew argument disregardedGranted in part
“surfing server as forwarding the session-creation message to the invited web client. PO Sur-reply 12. Although Lebrun describes the group-surfing server as “informing the participants in the group-surfing server session” after receiving the session-creation message and creating the group-surfing session, Lebrun does not describe forwarding or otherwise sending the session-creation message to the participants. Ex. 1005, 32:26–28, 44:12–14. Petitioner’s citations in this regard to Dr. Lieberman’s declaration do not adequately support Petitioner’s “forwarding” contention. Pet. Reply 8 (citing Ex. 1003 ¶¶ 37, 149); Ex. 1003 ¶ 37 (indicating the challenged patent describes the invitation as being sent by email, instant message, or social network communication); Ex. 1003 ¶ 149 (describing the group-surfing server receiving the session-creation message, creating the group-surfing session, and “inform[ing] the participants in the group-surfing session”). Petitioner does not identify any testimony from Dr. Lieberman that supports Petitioner’s Reply position that Lebrun’s group-surfing server “forwards” the session-creation message to the group-surfing session participants, nor are we aware of any such testimony. See, e.g., Ex. 1003 ¶ 149 (The group-surfing server “responds to the group session request ‘by (1) creating a group-surfing session, and (2) informing the participants [web clients] in the group-surfing session.”); see generally Ex. 1034. Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 29
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“receive webpage content from the website server in particular ways as identified in limitations [1e] and [1g]. Similarly, claim 1 requires the invitee device to retrieve data from the website server in response to receiving “the information related to the shared web browsing interaction from the synchronization server” (limitation [1f.iii]). For the reasons discussed above, Petitioner has not shown by a preponderance of the evidence its combination of Lebrun and Wang does so. For the required website server interaction, in its Petition, Petitioner relies on Lebrun’s description of an alternative embodiment applicable only when no cookies or other identity information are involved (Ex. 1005, 35:17–19). See, e.g., Pet. 30 (citing Ex. 1005, 35:17–19). As Patent Owner indicates, this alternative is not relevant to the subject matter recited in claim 1 which requires identity information. PO Resp. 45. Petitioner does not address this shortcoming in its Reply. See generally Pet. Reply. Rather, in its Reply, for website server interaction, Petitioner relies on Lebrun’s functionality of sending a web page from the web server to the web client as shown in Lebrun’s Figure 1. See, e.g., Pet. Reply 11 (citing Ex. 1005, 32:21–24, 31:27–30, Fig. 1). Specifically, Petitioner contends that Lebrun discloses that (i) a URL for the initial web page is included in session-creation message 151 (Ex. 1005, 32:21–24), (ii) the web site sends a web page directly to the web client (Fig. 1), and (iii) the web site delivers information 132 to web clients or the group-surfing server 140 “in response Pet. Reply 11. Although this shows the web site sending a web page directly to a web client, the prior art of Lebrun does not do so in the manner required by the claims (limitations [1e], [1f.i], [1f.iii], [1g]).” slip op. at 46
Patent outcomesUS 9,483,448 not shown unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,483,448 - Intuit Inc. v. Samesurf, Inc.All claims unpatentablePTAB · Jun 25, 2024 · IPR2023-00339 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1–18 are unpatentable as obvious over Lebrun and Wang; the Board did not reach the separate Prajapat and Wang challenge.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the parties, we found that a person of ordinary skill in the art (“POSITA”) “would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, or a similar field, and (2) at least two years of work experience in software development and/or web-based software,” which reflected Petitioner’s proposal. Dec. 11–12; see Dec. 9–12 (discussing the respective proposals and level of ordinary skill reflected in the challenged patent and asserted prior art). Patent Owner accepts this level of ordinary skill in the art. PO Resp. 42. Accordingly, we apply this determination of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“information related to a shared web browsing interaction” is interchangeable with “web browsing interaction data” and, as a result, this portion of the specification should limit the claim term. PO Resp. 18–19 (quoting Ex. 2004 ¶ 40). The quoted portion of Mr. Friedman’s testimony, however, addresses other terms in the specification and not “information related to a shared web browsing interaction.” PO Resp. 18–19 (quoting Ex. 2004 ¶ 40). As such, the testimony cited by Patent Owner does not support Patent Owner’s position. Accordingly, we determine that the patentee has not acted as a lexicographer to set forth a definition of “web browsing interaction data” in the written description. c. Plain and Ordinary Meaning Because the patentee has not acted as a lexicographer to set forth a definition of “web browsing interaction data,” we look to the plain and ordinary meaning of the term. See Edwards Lifesciences LLC v. Cook Inc., from the ordinary meaning will be adopted “when the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history” (internal quotation marks omitted)); Pet. Reply 5 (Petitioner arguing that “web browsing interaction data” should be afforded its plain and ordinary meaning) (citing Ex. 1034 ¶ 13). Notably, both Dr. Lieberman and Mr. Friedman agree that the plain and ordinary meaning of “web browsing interaction data” is sufficient to inform how one of ordinary skill would have understood the term. Ex. 1034 ¶ 13 (Dr. Lieberman testifying: “The plain meaning of ‘web browsing interaction data’ is data related to web browsing interactions. No additional definition or limitation is required in my opinion, nor is there any special or specific meaning given to the term in the specification of the ’145 patent.”); Ex. 1033, 171:5–16 (Patent Owner’s expert, Mr. Friedman, testifying that “the plain and ordinary meaning is sufficient.”). According to Petitioner, the plain and ordinary meaning is “data related to web browsing interactions.” Pet. Reply 5 (citing Ex. 1034 ¶ 13); Ex. 1034 ¶ 13 (“The plain meaning of ‘web browsing interaction data’ is data related to web browsing interactions.”). Patent Owner’s expert declined to opine on what the plain and ordinary meaning of “web browsing interaction data” other than it excludes webpages and partially filled webpages related to a web browsing interaction. See Ex. 1033, 171:5–16. slip op. at 27
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Accordingly, we conclude that the plain language of the claims does not require “web browsing interaction data” to be limited to data describing interaction performed on a website by a host device. We turn to the specification because the meaning of “web browsing interaction data” is informed “not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. The written description does not provide a definition or clear meaning for “web browsing interaction data.” Patent Owner acknowledges the term is not expressly used in the written description. PO Resp. 17. Patent Owner, however, identifies “information related to a shared web browsing interaction” as a term that is interchangeable with “web browsing interaction data.” PO Resp. 18, 29. We recognize the specification term “information related to a shared web browsing interaction” is substantially similar10 to Petitioner’s proposed plain and ordinary meaning of “web browsing interaction data” as “data related to web browsing interactions.” 11 Patent Owner identifies three passages that each describe the present invention as receiving information related to a shared web browsing interaction performed by a host device and performing the shared web browsing interaction based on the received information. PO Resp. 17–18 (block quoting Ex. 1001, Abstract, 3:10–24). The identified passages, however, do not show intention to manifestly limit “web browsing interaction data” to data describing interactions” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“forth by Petitioner (Pet. 22–34) discloses or suggests all limitations recited by claim 1, we consider Petitioner’s conclusion that it would have been obvious to combine Lebrun and Wang in the manner proposed to arrive at the claimed invention. See Pet. 19–22. (i) Articulated Reasoning To demonstrate obviousness, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. Petitioner contends that one of ordinary skill would have been motivated to combine Wang’s activating a session invitation with Lebrun’s invitation to join a group-surfing session. Pet. 28. Specifically, Petitioner contends that “activating an invitation via a designated URL address would further enable” Lebrun’s group-surfing server “to coordinate and manage the group-surfing session, which would further Lebrun’s objective of providing an ‘improved technique for group access to web sites.’” Pet. 28 (citing Ex. 1005, 7:1). We agree with Petitioner that activating an invitation via a designated URL address would be a technique that helps coordinate a group-surfing session and would enable multiple related users being able to access “substantially the same” slip op. at 63
Patent outcomesUS 9,185,145 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,185,145
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.