- W-W Manufacturing Co., Inc. v. Jager Pro, Inc.All claims unpatentablePTAB · Feb 16, 2022 · IPR2020-01471 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–20 are unpatentable as obvious under §103 based on the combinations listed in the decision.
RulingsFinal written decision- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Motion to exclude, deniedDenied
“1 The Supplemental Response updated the following: (1) the exhibit list with a corrected description for Exhibit 2007, (2) the Conclusion (Part 8) of the Response to include a completed signature section, and (3) an updated Certificate of Compliance to confirm the word count of the Response. PO Supp. Resp. 2. 2 A combined oral hearing was held for this proceeding and related proceeding IPR2020-01470. 3 Petitioner served and then filed, at our request, a list of objections to Patent Owner’s demonstrative exhibits. Paper 37; see Tr. 6:3–26 (discussing Petitioner’s objections). As we explained at the oral hearing, “although the demonstratives are a useful aide during the oral hearing, we do not rely on them when rendering a final written decision. We rely on the arguments raised in the briefing and the evidence submitted in each case.” Tr. 6:11–15.” slip op. at 2
- Expert testimonyDecided for petitioner
“by Petitioner. In particular, Petitioner “substitut[es] the triggering mechanism and methodology of Jeong for the tripwire triggering mechanism known from the TexasBoars Combination” and asserts that such substitution “would yield predic[t]able results with a reasonable expectation of success.” Pet. 33–34 (citing Ex. 1002 ¶ 135). The success identified by Petitioner is making the modifications proposed—substituting or adding the teachings of Jeong to TB1/TB2 to create a remotely controlled, monitored/detected corral trap. Nothing about these modifications has anything to do with trap-shyness or conditioning of the animals as Patent Owner contends. Rather, the success has to do with whether one of ordinary skill in the art would have had a reasonable expectation of success in achieving the combination. And, Petitioner’s arguments are supported by Dr. Ditchkoff’s testimony (Ex. 1002 ¶ 135) as well as Jeong itself because Jeong effectively takes a trap and adds the same features (remote control and detection) that Petitioner proposes to add to TB1 and TB2 (see Pet. 20 (relying on Jeong and the stated benefits therein)). Accordingly, we find that Petitioner has established sufficiently that one of ordinary skill in the art would have had a reason with rational underpinning to make the modifications proposed and would have had a reasonable expectation of success in so doing.” slip op. at 63
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“by Petitioner. In particular, Petitioner “substitut[es] the triggering mechanism and methodology of Jeong for the tripwire triggering mechanism known from the TexasBoars Combination” and asserts that such substitution “would yield predic[t]able results with a reasonable expectation of success.” Pet. 33–34 (citing Ex. 1002 ¶ 135). The success identified by Petitioner is making the modifications proposed—substituting or adding the teachings of Jeong to TB1/TB2 to create a remotely controlled, monitored/detected corral trap. Nothing about these modifications has anything to do with trap-shyness or conditioning of the animals as Patent Owner contends. Rather, the success has to do with whether one of ordinary skill in the art would have had a reasonable expectation of success in achieving the combination. And, Petitioner’s arguments are supported by Dr. Ditchkoff’s testimony (Ex. 1002 ¶ 135) as well as Jeong itself because Jeong effectively takes a trap and adds the same features (remote control and detection) that Petitioner proposes to add to TB1 and TB2 (see Pet. 20 (relying on Jeong and the stated benefits therein)). Accordingly, we find that Petitioner has established sufficiently that one of ordinary skill in the art would have had a reason with rational underpinning to make the modifications proposed and would have had a reasonable expectation of success in so doing.” slip op. at 63
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“by new evidence other than deposition transcripts of the cross-examination of any reply witness.”); Consolidated Trial Practice Guide at 74 (Nov. 2019) (available at https://www.uspto.gov/TrialPracticeGuideConsolidated) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” (emphasis added)). Accordingly, the only claim for which we consider the question of nexus is claim 1.58” slip op. at 127
Patent outcomesUS 10,098,339 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,098,339 - W-W Manufacturing Co., Inc. v. Jager Pro, Inc.All claims unpatentablePTAB · Feb 16, 2022 · IPR2020-01470 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–28 are unpatentable as obvious over the listed combinations of TB1, TB2, Jeong, and, where applicable, Vorhies, Silsby, and Kimura.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“1 A combined oral hearing was held for this proceeding and related proceeding IPR2020-01471. 2 Petitioner served and then filed, at our request, a list of objections to Patent Owner’s demonstrative exhibits. Paper 34; see Tr. 6:3–26 (discussing Petitioner’s objections). As we explained at the oral hearing, “although the demonstratives are a useful aide during the oral hearing, we do not rely on them when rendering a final written decision. We rely on the arguments raised in the briefing and the evidence submitted in each case.” Tr. 6:11–15. Thus, we have noted Petitioner’s objections, but we dismiss them as moot because demonstrative exhibits are not evidence and we do not rely on them in rendering this Final Written Decision.” slip op. at 2
- BurdenFwd all claims unpatentableUnpatentable
“Challenged Claims. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Having reviewed the arguments and the supporting evidence, we determine that Petitioner has shown, by a preponderance of the evidence, that the Challenged Claims of the ’228 patent are unpatentable.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“by Petitioner. In particular, Petitioner “substitut[es] the triggering mechanism and methodology of Jeong for the tripwire triggering mechanism known from the TexasBoars Combination” and asserts that such substitution “would yield predic[t]able results with a reasonable expectation of success.” Pet. 28 (citing Ex. 1002 ¶ 110). The success identified by Petitioner is making the modifications proposed—substituting or adding the teachings of Jeong to TB1/TB2 to create a remotely controlled, detected corral trap. Nothing about these modifications has anything to do with trap-shyness or conditioning of the animals as Patent Owner contends. Rather, the success has to do with whether one of ordinary skill in the art would have had a reasonable expectation of success in achieving the combination. And, Petitioner’s arguments are supported by Dr. Ditchkoff’s testimony (Ex. 1002 ¶ 110) as well as Jeong itself because Jeong effectively takes a trap and adds the same features and method (remote control and detection) that Petitioner proposes to add to TB1 and TB2 (see Pet. 32 (relying on Jeong and the stated benefits therein)). Accordingly, we find that Petitioner has established sufficiently that one of ordinary skill in the art would have had a reason with rational underpinning to make the modifications proposed and would have had a reasonable expectation of success in so doing.” slip op. at 70
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“in a new direction with a new approach as compared to the positions taken in a prior filing.” (emphasis added)). Accordingly, the only claim for which we consider the question of nexus is claim 1.59” slip op. at 128
Patent outcomesUS 9,814,228 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,814,228 - Immersion Systems LLC v. Midas Green Technologies, LLCInstitution deniedPTAB · Jan 31, 2022 · PGR2021-00104 · APJ Frederick C Laney · PGR · Institution
The Board denied institution of PGR challenging claims 1, 5, 6, and 10, exercising discretion under § 324(a) based on the Fintiv factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Thus, a jury trial is scheduled to occur in the related district court litigation approximately four months prior to when a final written decision would be statutorily due in this post-grant review, and the district court has indicated that any changes to the schedule, including the trial date, are disfavored. We find these facts weigh in favor of exercising discretion to deny institution under this factor.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundOther
“For example, under Petitioner’s Ground 1, although Petitioner’s and its witness’s (Dr. Mudawar’s) interpretations of the prior art as teaching the claimed subject matter are not unreasonable, the interpretations are not particularly clear or strong. Pet. 14–27. Petitioner pieces together portions from Best, Krajewski, and/or Cray that do not explicitly disclose the claimed subject matter, relying instead on Dr. Mudawar to interpret the references’ disclosures as meeting specific claim limitations. Id. Further, Petitioner, for the most part, asserts that each limitation of, for example, independent claim 1, is individually disclosed by one or more of Best, Krajewski, and/or Cray without clearly explaining how one reference’s disclosed apparatus or system would be specifically modified by the ordinarily skilled artisan in view of the teachings of the others. Id. Moreover, when discussing a motivation to combine Best, Krajewski, and/or Cray, Petitioner relies on the fact that they are directed to analogous art and then, primarily, that the features they teach would achieve the same advantages extolled by the ’446 patent itself for its claimed invention, which is not strong support that the prior art would have been combined or modified absent some improper hindsight. Id. at 30–35. Thus, although Petitioner may have made a sufficient showing for” slip op. at 16
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,820,446 - PTAB · Jan 26, 2022 · IPR2020-00871 · APJ Frederick C Laney · IPR · Rehearing
The Board denied rehearing and left in place its § 314(a) denial of institution for claims 1–68 based on the Fintiv factor analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the District Court held a hearing regarding venue related issues. Ex. 1044, 6:8–15. During the course of that hearing, the District Court set forth procedures that the parties should follow to address some outstanding venue related issues. Id. at 26:1–10. The District Court also stated that, after the parties followed those procedures and reported back, it would “determine whether [the Court] should leave the current schedule in place or whether [the Court] should enter some kind of a temporary stay to facilitate [additional venue-related discovery].” Id. at 26:11–16. Petitioner argues that this comment by the District Court should tip the Fintiv factor 1 in favor of institution. Reh. Req. 8–9. We disagree. Although the December 20th hearing may indicate the District Court’s willingness to consider whether “some kind of a temporary stay” should be entered to resolve the outstanding venue issues, it provides little, if any, actual evidence that the District Court would, in fact, enter a stay. Even if we were to guess that the District Court would enter a stay, we would still have to speculate further about the length of the “temporary” stay because, if it were for only a few days or weeks, it would still not avoid the concerns of inefficiency and duplicative efforts addressed by Fintiv factor 1. Regarding our alleged failure to apprehend or consider fully Petitioner’s proposed stipulation, we again do not agree. In the Decision, we specifically addressed Petitioner’s proposed stipulation and explained its shortcomings. Dec. 15–16. Although Petitioner clearly does not agree with our analysis, mere disagreement with our opinion is not a valid basis for reconsideration.” slip op. at 10
Discretionary denialPatents in suitUS 9,749,829 - PTAB · Jan 26, 2022 · IPR2020-00870 · APJ Frederick C Laney · IPR · Rehearing
The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended facts that changed its Fintiv analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): The burden of showing a decision should be modified lies with the party challenging the decision. The 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. admitted” in connection with a request for rehearing. Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (“CTPG”) (citing Huawei Device Co. v. Optis Cellular Tech., LLC, IPR2018-00816, Paper 19 at 4 (PTAB Jan. 8, 2019) (precedential)). Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the District Court held a hearing regarding venue related issues. Ex. 1044, 6:8–15. During the course of that hearing, the District Court set forth procedures that the parties should follow to address some outstanding venue related issues. Id. at 26:1–10. The District Court also stated that, after the parties followed those procedures and reported back, it would “determine whether [the Court] should leave the current schedule in place or whether [the Court] should enter some kind of a temporary stay to facilitate [additional venue-related discovery].” Id. at 26:11–16. Petitioner argues that this comment by the District Court should tip the Fintiv factor 1 in favor of institution. Reh. Req. 8–9. We disagree. Although the December 20th hearing may indicate the District Court’s willingness to consider whether “some kind of a temporary stay” should be entered to resolve the outstanding venue issues, it provides little, if any, actual evidence that the District Court would, in fact, enter a stay. Even if we were to guess that the District Court would enter a stay, we would still have to speculate further about the length of the “temporary” stay because, if it were for only a few days or weeks, it would still not avoid the concerns of inefficiency and duplicative efforts addressed by Fintiv factor 1. Regarding our alleged failure to apprehend or consider fully Petitioner’s proposed stipulation, we again do not agree. In the Decision, we specifically addressed Petitioner’s proposed stipulation and explained its shortcomings. Dec. 15–16. Although Petitioner clearly does not agree with our analysis, mere disagreement with our opinion is not a valid basis for reconsideration.” slip op. at 10
- Additional discoveryAdditional discovery, grantedAdditional discovery, deniedMixed
“Although Petitioner did bring the District Court’s Orders to our attention in a timely manner, we are not persuaded good cause has been shown to exist for us to consider these Orders. First, the Orders are all from cases that are separate and distinct from the parallel litigation involving the parties before us. Ex. 1040, 1; Ex. 1041, 1; Ex. 1042, 1; Ex. 1043, 1. Second, each Order is limited to cases that are “set for in-person jury trials during December of 2020 and January through February of 2021.” Id. That limitation further diminishes the value of the Orders in this proceeding because the jury trial in the parties’ parallel litigation was scheduled to begin on April 5, 2021 (Ex. 2003, 1). In fact, Petitioner acknowledges that the Orders have “not yet been applied in the underlying litigation.” See Reh. matter to be speculative at best. In the Rehearing Request, Petitioner argues that Exhibits 1040–1043 provide evidence that the parallel litigation may be stayed. Reh. Req. 7. However, in addition to the fact that the Orders in those exhibits do not relate to the parties’ or their parallel litigation, none of the Orders actually stays a case, which diminishes the relevance of the Orders to the first Fintiv factor even further. Petitioner argues additionally that these Orders along with other COVID-related facts demonstrate the uncertainty of the trial date in the parties’ parallel litigation. Nevertheless, Petitioner never argued prior to our Decision that the parallel litigation was uncertain because of COVIDrelated facts. See Pet. 70–71; Pet. Reply 1–5. In other words, Petitioner is not offering this new information to support an argument that was made before the Decision was entered. Petitioner instead offers Exhibits 1040– 1043 to support a new argument introduced for the first time in the Rehearing Request, which is improper and immaterial as to any alleged errors in the Decision. Therefore, we do not find Petitioner has carried its burden of showing good cause exists to justify consideration of those exhibits to evaluate whether we erred by “overlooking or misapprehending” anything in the Decision.” slip op. at 5
Discretionary denialPatents in suitUS 9,749,829 - Immersion Systems LLC v. Midas Green Technologies, LLCInstitution deniedPTAB · Jan 6, 2022 · IPR2021-01176 · APJ Ryan H Flax · IPR · Institution
The Board denied institution of IPR challenging claims 1, 5, 6, 10, 11, and 14, exercising § 314(a) discretion after its holistic Fintiv assessment.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner states: A POSITA as of December 13, 2013 would have had a [sic] either a (a) Bachelor’s degree in mechanical engineering, or an equivalent degree, with five years of liquid cooling systems experience including responsibility for designing such systems, or (b) Master’s Degree in mechanical engineering, or an equivalent degree, including liquid cooling systems research and system design. Ex-1020, ¶75. A POSITA would also have had, through education or experience, familiarity and experience in particular with immersion cooling systems. Additional education could compensate for less practical experience and vice versa. Id. Pet. 10. Other than arguing that the date for defining the ordinarily skilled artisan should be earlier than that used by Petitioner because the ’457 patent is entitled to priority to provisional applications, Patent Owner “does not offer a competing definition for POSITA.” Prelim. Resp. 25. For the purposes of this Decision, we accept, as has Patent Owner, Petitioner’s definition of the ordinarily skilled artisan. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art. (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“CLAIM CONSTRUCTION “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party asserts that any claim term should be expressly construed, and we do not expressly construe any claim language. Pet. 10–11; Prelim. Resp. 25–29; see also Ex. 2006 (district court claim construction order declining to expressly construe and claim language). C.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“litigation approximately three months prior to when a final written decision would be statutorily due in this inter partes review, and the district court has indicated that any changes to the schedule, including the trial date, are disfavored. We find these facts weigh in favor of exercising discretion to deny institution under this factor.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“In our view, some challenges likely satisfy the “reasonable likelihood” threshold standard for instituting trial, and some may not. We would not characterize any challenge as sufficiently strong to override concerns about duplication of effort by the Board and the district court.” slip op. at 18
Claim constructionDiscretionary denialcites KSR · GrahamPatents in suitUS 10,405,457 - Draftkings Inc., A Delaware Corporation v. Interactive Games LLCAll claims unpatentablePTAB · Jan 4, 2022 · IPR2020-01110 · APJ Frederick C Laney · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Wells and Harkham; the Board did not reach the Wells, Harkham, and Johns ground.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Based on this education and experience, we conclude Mr. Farley is qualified as an expert to testify in the form of opinions concerning a POSITA’s knowledge and understanding in relation to the ’967 patent, Wells, Harkham, and the other prior art references at issue in this proceeding. This is because he possesses technical and other specialized knowledge that will help us, as the trier of fact, to understand the evidence and determine facts in issue. See Fed. R. Evid. 702(a). There is “no requirement of a perfect match between the expert’s experience and the relevant field.” CTPG 34 (citing SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010)). In particular, Mr. Farley’s extensive experience in testing mobile gaming systems for compliance with regulatory requirements, including player verification and location verification, are directly pertinent to the issues presented here. This is reflected, in part, by our formulation of a POSITA as having “at least some coursework or other work experience in the wager-based gaming industry.” See supra Section IV. Petitioner instead focuses on another POSITA qualification, “at least two years of experience in the development of location-based applications.” See id. Petitioner is correct that Mr. Farley has no experience in designing and developing location-based applications and services. See, e.g., Ex. 1028, 53:22–54:6, 275:21–25. Nonetheless, his extensive experience testing such systems, in the particular context of mobile gaming devices, provides him with technical and other specialized knowledge that will help us to understand the evidence and determine facts in issue. The minimal gap here between Mr. Farley’s experience and our POSITA formulation does not justify jettisoning the entirety of Mr. Farley’s testimony, as Petitioner urges us to do. We address Mr. Farley’s particular testimony concerning the relevant timing he used when considering the prior art references in the next section of this Decision. The remainder of Petitioner’s attack on Mr. Farley’s qualifications addresses the weight to be given Mr. Farley’s testimony, as opposed to its admissibility. We have considered his testimony, and assigned the appropriate weight to it in view of his background and the information being offered.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“gaming industry experience. See Inst. Dec. 20. We disagreed, and applied Petitioner’s POSITA formulation. See id. at 20–21. Patent Owner opted not to maintain this dispute in the Patent Owner Response. “Once a trial is instituted, the Board may decline to consider arguments set forth in a preliminary response unless they are raised in the patent owner response.” Consolidated Trial Practice Guide (Nov. 2019) (CTPG)2, 52 (citing In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016)). Thus, Petitioner’s POSITA formulation stands unrebutted. We also determine it is consistent with the ’967 patent claims and the prior art of record. We adopt Petitioner’s POSITA formulation in this Decision.” slip op. at 10
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Based on this education and experience, we conclude Mr. Farley is qualified as an expert to testify in the form of opinions concerning a POSITA’s knowledge and understanding in relation to the ’967 patent, Wells, Harkham, and the other prior art references at issue in this proceeding. This is because he possesses technical and other specialized knowledge that will help us, as the trier of fact, to understand the evidence and determine facts in issue. See Fed. R. Evid. 702(a). There is “no requirement of a perfect match between the expert’s experience and the relevant field.” CTPG 34 (citing SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010)). In particular, Mr. Farley’s extensive experience in testing mobile gaming systems for compliance with regulatory requirements, including player verification and location verification, are directly pertinent to the issues presented here. This is reflected, in part, by our formulation of a POSITA as having “at least some coursework or other work experience in the wager-based gaming industry.” See supra Section IV. Petitioner instead focuses on another POSITA qualification, “at least two years of experience in the development of location-based applications.” See id. Petitioner is correct that Mr. Farley has no experience in designing and developing location-based applications and services. See, e.g., Ex. 1028, 53:22–54:6, 275:21–25. Nonetheless, his extensive experience testing such systems, in the particular context of mobile gaming devices, provides him with technical and other specialized knowledge that will help us to understand the evidence and determine facts in issue. The minimal gap here between Mr. Farley’s experience and our POSITA formulation does not justify jettisoning the entirety of Mr. Farley’s testimony, as Petitioner urges us to do. We address Mr. Farley’s particular testimony concerning the relevant timing he used when considering the prior art references in the next section of this Decision. The remainder of Petitioner’s attack on Mr. Farley’s qualifications addresses the weight to be given Mr. Farley’s testimony, as opposed to its admissibility. We have considered his testimony, and assigned the appropriate weight to it in view of his background and the information being offered.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“VI. CLAIM CONSTRUCTION We interpret the ’967 patent claims “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). This “includ[es] construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Petitioner contends “the Board need not expressly construe any claim term because the prior art invalidates the claims under any plausible construction.” Pet. 10. Patent Owner does not address any claim construction issues. Upon consideration of the foregoing, and the entirety of the arguments and evidence presented, we conclude no explicit construction of any claim term is needed to resolve the issues presented by the arguments and evidence of record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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 21
Patent outcomesUS 8,616,967 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,616,967 - Draftkings Inc., A Delaware Corporation v. Interactive Games LLCAll claims unpatentablePTAB · Jan 4, 2022 · IPR2020-01107 · APJ Ken B Barrett · IPR · Final written decision
Claims 1–5, 7–22, and 24–27 are unpatentable: claim 27 over Wells and Bahl; claims 1–5, 7–22, and 26 over Wells, Bahl, and Harkham; claim 4 also over Spirito; claims 24–25 over Joao.
RulingsFinal written decision- ExcludeDenied
“Based on this education and experience, we conclude Mr. Farley is qualified as an expert to testify in the form of opinions concerning a POSITA’s knowledge and understanding in relation to the ’901 patent, Wells, Harkham, and the other prior art references at issue in this proceeding. This is because he possesses technical and other specialized knowledge that will help us, as the trier of fact, to understand the evidence and determine facts in issue. See Fed. R. Evid. 702(a). There is “no requirement of a perfect match between the expert’s experience and the relevant field.” CTPG 34 (citing SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010)). In particular, Mr. Farley’s extensive experience in testing mobile gaming systems for compliance with regulatory requirements, including player verification and location verification, are directly pertinent to the issues presented here. This is reflected, in part, by our formulation of a POSITA as having “at least some coursework or other experience in the wager based gaming industry.” See supra Section II.B. Petitioner instead focuses on another POSITA qualification, “at least two years of experience in the development of location-based services or software applications.” See id. Petitioner is correct that Mr. Farley has no experience in developing location based applications and services. See, e.g., Ex. 1031, 53:22–54:6, 275:21–25. Nonetheless, his extensive experience testing such systems, in the particular context of mobile gaming devices, provides him with technical and other specialized knowledge that will help us to understand the evidence and determine facts in issue. The minimal gap here between Mr. Farley’s experience and our POSITA formulation does not justify jettisoning the entirety of Mr. Farley’s testimony, as Petitioner urges us to do. The remainder of Petitioner’s attack on Mr. Farley’s qualifications addresses the weight to be given Mr. Farley’s testimony, as opposed to its admissibility. We have considered his testimony, and assigned the appropriate weight to it in view of his background and the information being offered.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Response), 2–4. We disagreed with the former, determined that the result of the dispute as to the latter (regarding the fields of the undergraduate degree) would not materially affect our consideration of the issues in the case, and applied Petitioner’s POSITA formulation. See Inst. Dec. 19–21. Patent Owner opted not to maintain this dispute in the Patent Owner Response. “Once a trial is instituted, the Board may decline to consider arguments set forth in a preliminary response unless they are raised in the patent owner response.” Consolidated Trial Practice Guide (Nov. 2019) (CTPG)6, 52 (citing In re NuVasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016)). Thus, Petitioner’s POSITA formulation stands unrebutted. We also determine that it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s formulation of the POSITA.” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“Bahl’s teachings. The purported “adequacy” of Wells does not negate the obviousness of improvements from the perspective of the person of ordinary skill in the art at the time of the invention. We find persuasive Petitioner’s argument, supported by Mr. Williams’ testimony, that the proposed combination would have “enabled more comprehensive compliance with Wells’ stated goal of regulatory compliance by improving the accuracy and reliability of Wells’ position verification process.” Pet. 19 (citing Ex. 1005, 1:66–2:2; Ex. 1003 ¶ 77); see Ex. 1003 ¶¶ 77. Bahl explicitly teaches that “the GPS system is severely limited in an indoor environment,” and explains why that is and why use of a WLAN infrastructure for location detection is an improvement over GPS tracking. Ex. 1005, 1:14–2:2. Patent Owner’s expert, Mr. Farley, testifies that Wells explains that it can accurately monitor location and, based on that, concludes that GPS is sufficient. Ex. 2005 ¶ 53. Mr. Farley cites nothing further as support for this opinion and does not opine as to whether Bahl’s location determination system would be viewed by a person of ordinary skill in the art as more accurate or an improvement. See id. We find to be credible Mr. William’s opinion that a person of ordinary skill in the art would have found a motivation in Bahl’s location determination teachings and would have found it obvious to apply those teachings to Wells’ system to improve accuracy and thereby facilitate better compliance with the gaming regulations. See Ex. 1003 ¶¶ 74, 77.8 8 Patent Owner argues that “Mr. Williams has no experience or understanding of the accuracy required for the location determination system to meet regulatory requirements.” PO Resp. 24 (citing Ex. 2004, 145:4–25, 148:5–149:6). We do not find the cited testimony to support Patent Owner’s proposition. See, e.g., Ex. 2004, 145:22–24 (Mr. Williams, responding, during cross-examination, to the question asking “how precise location” slip op. at 39
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes a construction for “calibration device.” Pet. 9–10. Patent Owner does not dispute Petitioner’s proposed construction or propose a construction for any other term. On this record, we determine that no claim term requires express construction.” slip op. at 26
Patent outcomesUS 9,430,901 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,430,901 - Draftkings Inc., A Delaware Corporation v. Interactive Games LLCAll claims unpatentablePTAB · Jan 4, 2022 · IPR2020-01109 · APJ George R Hoskins · IPR · Final written decision
Claims 1–23 are unpatentable: claims 1–5, 7, and 21–23 as obvious over Nguyen and Lewin; the remaining claims under the listed combinations.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Rule of Evidence 702 imposes a special obligation upon a trial judge to ‘ensure that any and all scientific testimony . . . is not only relevant, but reliable’” (quoting Daubert, 509 U.S. at 589), which is a “basic gatekeeping obligation”). The policy considerations for excluding expert testimony, such as those implemented by Daubert’s gatekeeping framework, are less compelling in bench proceedings such as inter partes reviews than in jury trials because, unlike a lay jury, the Board by statutory definition has competent scientific ability (35 U.S.C. § 6) and has significant experience in evaluating expert testimony. See, e.g., Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received . . . .”). Accordingly, the danger of prejudice in this proceeding is considerably lower than in a lay jury trial.” slip op. at 19
- Skill levelOther
“IV. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends a person having ordinary skill in the art pertaining” slip op. at 8
- Expert testimonyOther
“Rule of Evidence 702 imposes a special obligation upon a trial judge to ‘ensure that any and all scientific testimony . . . is not only relevant, but reliable’” (quoting Daubert, 509 U.S. at 589), which is a “basic gatekeeping obligation”). The policy considerations for excluding expert testimony, such as those implemented by Daubert’s gatekeeping framework, are less compelling in bench proceedings such as inter partes reviews than in jury trials because, unlike a lay jury, the Board by statutory definition has competent scientific ability (35 U.S.C. § 6) and has significant experience in evaluating expert testimony. See, e.g., Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received . . . .”). Accordingly, the danger of prejudice in this proceeding is considerably lower than in a lay jury trial.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
Patent outcomesUS 8,956,231 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,956,231 - Platform Science, Inc. v. XRS CorporationRehearing deniedPTAB · Dec 14, 2021 · IPR2021-00325 · APJ Neil T Powell · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because the Petition did not show a reasonable likelihood that claims 1–24 were unpatentable as obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The 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.” Id. When rehearing a decision on a” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner has not offered persuasive evidence of any suggestion in the prior art that Nehowig’s onboard computer may be used with multiple different engine control modules that communicate data in different languages. Nor has Petitioner offered persuasive evidence of any suggestion in Nehowig that its engine control module uses more than one language. Contrarily, Nehowig suggests that the onboard computer and engine control module are vehicle specific without an indication that either needs to be adaptable for use in multiple different vehicles. . . . Additionally, regardless of whether Nehowig’s ECM uses one or multiple communication protocols, Petitioner does not provide persuasive evidence that it would have been obvious to modify Nehowig’s OBC 204 to meet limitation 1A.1. Fedorchuk discloses a device configured for connecting to and communicating with a diagnostic communication port of any of a variety of vehicles using any of a number of different possible protocols, enabled by interface device 10’s ability to detect the different possible protocols. . . . Petitioner does not provide persuasive evidence that Nehowig’s OBC 204 would be connected to any ECM without OBC 204 and the ECM already configured to communicate specifically with one another using one more predesignated protocols. . . . Petitioner does not provide persuasive evidence that Nehowig’s OBC 204 would not already have dedicated provisions for communicating with the ECM in the specific protocol(s) the ECM uses. Nehowig clearly discloses that OBC 204 already can communicate with Nehowig’s ECM, apparently using whatever protocol(s) the ECM uses. [Ex. 1005] ¶ 23. Accordingly, Petitioner has not shown sufficiently a reason that a person of ordinary skill in the art would have modified Nehowig’s OBC 204 to allow it to communicate with the ECM.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“misapprehended that the Petition identified a particular proposed combination. We acknowledged Petitioner’s proposed combination. See Dec. 25–26 (“Petitioner then describes a scenario, argued ‘[t]o achieve this goal [of not having the official enter the vehicle],’ where the official ‘will provide a cable to the driver to plug into the EOBR’ . . . . Based on this, Petitioner concludes ‘[t]herefore, the combined system of Nehowig and Fedorchuk implementing the DOT regulations discloses transferring the hours of service information from the OBC to a safety assurance officer’s computer via a data cable.’”). And, even had we overlooked or misapprehended it, the outcome would not change. Again, the basis for the Decision is that Petitioner failed to explain adequately and persuasively why a person of ordinary skill in the art would arrange the data flow in this manner. Dec. 27. In view of the foregoing, we are not persuaded of any error in our Decision that the Petition did not demonstrate a reasonable likelihood of establishing obviousness of limitation 1B.1. See Dec. 27–28. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated that we abused our discretion in not instituting an inter partes review of the challenged claims of the ’575 patent.” slip op. at 19
§ 103 obviousnessPatents in suitUS 10,255,575
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.