- PTAB · Jan 3, 2023 · IPR2022-00971 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–7, 9, 13, and 19 on all petitioned grounds, finding a reasonable likelihood that Gelvin anticipates at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” Upon consideration of the arguments and evidence presented by Petitioner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“record, and does not expressly dispute Petitioner’s definition of a person of ordinary skill in the art. See gen. Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’771 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioner argues that even though the Board construed these terms under the broadest reasonable standard in the Motorola IPR, “[f]or purposes of this Petition, the Phillips standard does not require any different construction, and Petitioner’s proffered grounds are consistent with the above constructions.” Id. at 11. Patent Owner does not provide any express claim constructions nor dispute Petitioner’s proposed constructions from the Motorola IPR. At this preliminary stage of the proceeding, at least for the sake of consistency at institution, we rely on the Board’s earlier constructions in the Motorola IPR. We acknowledge that Patent Owner has not yet provided any substantive claim construction in its Preliminary Response, however Patent Owner has the opportunity to address this matter in its Patent Owner’s Response should it desire to do so.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted
“We consider Patent Owner’s argument, and agree to an extent, that Gelvin describes the PDA in Figure 5 as “coupl[ing] to the Internet 599 through a service provider that specializes in low-rate communications,” rather than through WINS network architecture 500. Ex. 1005, 9:48–50. But read in context, Gelvin does not appear limited to this embodiment. For example, after describing the three ways that Gelvin’s WINS network architecture 500 can couple to the internet, Gelvin broadly describes that “[t]he WINS vehicle internetwork of an embodiment includes functionality that enables convenient and secure coupling of diverse networks and devices.” Id. at 9:58–60. Also, Gelvin explains other ways in which the vehicle network connects with the Internet. Gelvin for instance, describes with respect to Figure 6 that “[i]n operation, the vehicular network 602 tries to select the most cost-effective communication alternative that provides the desired level of service.” Id. at 10:20–22. When connecting to an external ISP (Internet Service Provider), Gelvin explains that one option is “the ISP uses the vehicle’s cellular phone number to attempt to establish a coupling over the telephone network, and tunnel the packet through. While the cell associated cost, and thus the reason for attempting other means of communication.” Id. at 10:35–40. Gelvin’s disclosure does not, on the record at this stage of the proceeding, appear limited to the PDA communicating via the internet on its own network. Particularly, where Gelvin provides various embodiments and communication methods and explains that given the WINS architecture, “[p]otentially, any number of available methods of communication can be attempted.” Id. at 10:40–41.” slip op. at 20
Claim construction§ 102 anticipationPatents in suitUS 7,382,771 - PTAB · Nov 3, 2022 · IPR2022-00921 · APJ Mitchell G Weatherly · IPR · Institution
Instituted IPR on all challenged claims and grounds after finding a reasonable likelihood that claim 1 would be unpatentable as obvious over Heller and Flaherty.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(Paper 5, “Pet.”) to institute an inter partes review of claims 1, 5, 7, 8, 66, 67, 89, and 91 (the “challenged claims”) of U.S. Patent No. 10,993,642 B2 (Ex. 1001, “the ’642 patent”). 35 U.S.C. § 311. DexCom, Inc. (“Patent Owner”) timely filed a Preliminary Response. Paper 11 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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). Based on our review of the record, we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- BurdenDecided for petitioner
“(1) Heller does not expressly describe “prior calibration information generated before insertion” that “comprises prior sensitivity information,” Prelim. Resp. 19–22; (2) Dr. Smith’s testimony regarding what an ordinarily skilled artisan would have “recognized” about Heller’s “factory-determined calibration measurements” impermissibly modifies Heller without identifying differences between Heller and the other prior art cited by Dr. Smith and fails to demonstrate any motivation for modifying Heller, id. at 23–25; and (3) Petitioner fails to prove that an ordinarily skilled artisan would have had a reasonable expectation of succeeding in modifying Heller, id. at 25–26. None of Patent Owner’s arguments are persuasive on the record before us.” slip op. at 18
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Second, claim 1 does not expressly recite “means” and is thus presumed not to be subject to interpretation as a means-plus-function limitation. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). The Federal Circuit explained the procedure for rebutting the presumption against interpreting a claim term that does not recite “means” as a means-plus-function limitation as follows:” slip op. at 9
- Strike new argumentNot reached
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,993,642 - PTAB · Nov 2, 2022 · IPR2022-00909 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–5, 12, 19, and 23 on all asserted grounds after finding a reasonable likelihood that claim 1 would be obvious over the Guide, alone or with Harper.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not expressly dispute Petitioner’s asserted level of ordinary skill in the art asserting that “the Petition fails even if Petitioner’s POSA definition is adopted.” Prelim. Resp. 8. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’215 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The claim limitations which Patent Owner desires Petitioner to construe read clearly and unambiguously. Limitation 1[b] recites the step: evaluating sensor data using a second function to determine whether a parameter indicative of glucose value meets one or more non user settable second criteria; Ex. 1001, 48:39–41. The plain and ordinary meaning of this phrase is that the claimed “second function,” “determine[s] whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Id. At this stage of the proceeding neither party has indicated that this phrase or any specific terms in the phrase cannot be understood by a person of ordinary skill in the art, nor has either party provided an express claim construction for the Board to consider. Patent Owner contends that [i]n its claim construction briefing in the related litigation, DexCom explained that “second function” should be construed as a “function that provides a predictive alert/alarm” in part because the specification’s statement that “the present systems and methods relate to providing accurate predictive alarms” (Ex[1001], 1:30–33) limits the scope of the invention. Prelim. Resp. 14 (citing Ex. 1024, 15) (emphasis added). Patent Owner’s argument is that the Board should read the term “predictive” from the specification into the meaning of the “second function,” although neither independent claim recites the word “predictive.” Id. What is not clear at this point in the proceeding is why we should read the term “predictive” into claim 1. Patent Owner argues, for example, that Petitioner’s “[g]round 1 reads the ‘second function’ onto an alleged Guide function that does the same thing the alleged first function does – it compares a real-time glucose value against a threshold.” This characterization of the plain meaning of the claim language and the first and second functions is not entirely accurate however. The “second function” in claim 1 is determined based on “non user settable second criteria,” and is readily distinguishable from the “first function” determined based on “user settable second criteria.” See Ex. 1001, 48:36–41. On the evidence and arguments at this stage of the proceeding, we find persuasive Petitioner’s position that the Guide discloses a “first function” that alerts the user as to low and high glucose levels based on user settable thresholds. See Ex. 1004, 54 (“One of the benefits of the DexCom™ STS™ System is your ability to select high and low glucose alerts that will tell you when your glucose values are out of your target range.”). Also, we are persuaded that the Guide teaches a “second function,” “[w]hen the STS Sensor detects a glucose level below 55 mg/dL (3.1 mmol/L) your STS Receiver will vibrate to notify you of a very low glucose value by displaying the following screen:” Ex. 1004, 56. The Guide states that “[y]ou cannot change or turn off the Low Glucose Alarm.” Id.” slip op. at 25
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“unavailable as of October 2006, instead Patent Owner disputes that the Petition “allege[s] facts sufficient to establish the Guide was a printed publication.” Prelim. Resp. 10 (citing Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018)). Petitioner however, expressly describes the archived Guide scraped by the Wayback Machine and refers the reader to the declarations of Hall and Hall-Ellis for supporting testimonial evidence as to the asserted public availability of the archived Guide. Pet 11 (citing Ex. 1010; Ex. 1011; Ex. 1014; Ex. 1015). LKQ has made a sufficient evidentiary showing for purposes of institution that the Guide qualifies as prior art under § 102. See Ex. 1010 ¶¶ 7–8, see also Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039 (PTAB Dec. 20, 2019) (Paper 29) (holding that under 35 U.S.C. § 311(b), for purposes of institution, a petitioner must show a reasonable likelihood that an asserted reference qualifies as a printed publication) (Precedential), see also, Sandoz Inc. v. Abbvie Biotechnology Ltd., No. IPR2018-00156, 2018 WL 2735468, *4-5 (P.T.A.B. June 5, 2018) (finding Wayback Machine screenshot and expert testimony adequate evidence to establish FDA website as a prior art printed publication). In addition, Petitioner provides corroborating exhibits, including U.S. Food & Drug Administration Premarket Approval Order indicating, consistent with the Internet Archive records, that DexCom STS Continuous Monitors received pre-market approval on March 24, 2006. Ex. 1014. Also, consistent with both the Internet Archives evidence and the FDA Approval Order, Petitioner provides a June 2006 JP Morgan research paper discussing the American Diabetes Association scientific session in Washington, DC stating that “[h]ighlights included the results of two studies using Abbotts FreeStyle Navigator and two more from Dexcom involving its recently approved STS device.” Ex. 1015, 1. Overall, we determine that Petitioner has shown a reasonable likelihood that the Guide was publicly available more than one year before, October 30, 2012, the filing date of the earliest filed application in the priority chain for the ’215 patent. Patent Owner is in the best position to show when and to whom the Guide was available and may present additional arguments, evidence, and testimony to support its position during trial.” slip op. at 23
Claim construction§ 102 anticipationPatents in suitUS 10,702,215 - PTAB · Oct 12, 2022 · IPR2022-00708 · APJ Matthew S Meyers · IPR · Institution
The Board instituted IPR on claims 1–20 over all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“[W]here the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) 4–5 (“Interim Procedures”).9 Further, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we agree with Petitioner that “[t]he petition presents ‘compelling evidence of unpatentability.’” Pet. Reply 1 (citing Interim Procedures 1). As Petitioner notes, “despite the centrality of the merits to the Fintiv analysis, the POPR is silent on the substance of the petition.” Id. For the reasons below in our analysis, we determine that the merits of Petitioner’s anticipation grounds based on Fernandez appear to be particularly strong for the independent claims and for the dependent claims for this ground. See infra § III.G (explaining that, on the current record, slip op. at 7
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“were co-defendants in the District Court litigation and were accused of infringing the [challenged] patent based on HTC’s VIVE devices that incorporate technology licensed from Valve.” Id. By contrast, here Petitioner asserts that it “has no control over the [429] IPR, did not participate or provide input into the [429] IPR, and had no knowledge of the [429] IPR until after it was filed.” Pet. 15; see also Pet. Reply 2. Although we agree with Patent Owner that Unified’s subscription fees provide an incentive to challenge patents asserted against its members, and recognize that Unified has challenged at least eight patents asserted against Petitioner in the past (Prelim. Resp. 25–27), that alone does not create the type of “significant relationship” that was found in Valve to favor denying institution.10 Moreover, the Director recently initiated a sua sponte Director review “to clarify the application of General Plastic.” IPR2022-00861, Paper 18 at 3 (PTAB Aug. 23, 2022). There, the Director determined that “factors 1–3 only weigh in favor of discretionary denial when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.” Id. at 5. The Director stated that “‘road-mapping’ concerns are minimized when, as in this case, a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those in the previously-filed petition and the later petition is not refined based on lessons learned from 10 See, e.g., Netflix Inc. and Hulu, LLC v. DivX, LLC, IPR2020-00052, Paper 42 at 8–11 (PTAB May 14, 2020); Mercedes-Benz USA, LLC v. Carucel Investments, L.P., IPR2019-01404, Paper 12 at 12–13 (PTAB Jan. 22, 2020) (finding petitioner’s membership in Unified did not amount to a relationship that justifies discretionary denial in light of other General Plastic factors); Apple, Inc. v. Uniloc 2017 LLC, IPR2019-01667, Paper 7 at 7–8 (PTAB Apr. 21, 2020). later developments.” Id. Here, road-mapping is minimized because the present Petition was filed less than two months after the petition in the 429 IPR, no patent owner preliminary response was filed at that time, and no decision to institute was issued to refine the later petition. See Pet. 16. This is further evident from our below discussion of General Plastic factors 2 and 3.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “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 [one] of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one of claims 1–20. Accordingly, we institute an inter partes review of all challenged claims on all asserted grounds pursuant to 35 U.S.C. § 314. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–1360 (2018) (requiring institution on all claims, if any); see also Patent Trial and Appeal Board” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Having considered Petitioner’s unrebutted position, we conclude that, at this stage of the proceeding, Petitioner has shown a reasonable likelihood that it would prevail in challenging the patentability of independent claim 1. 3. Dependent Claims 2 and 4–7 Petitioner contends that the additional limitations of dependent claims 2 and 4–7 are disclosed by Flick. Pet. 27–32. Patent Owner does not specifically dispute Petitioner’s contentions for dependent claims 2 and 4–7 at this time. See generally Prelim. Resp. Petitioner has made a sufficient showing that Flick discloses the limitations of these dependent claims by providing an analysis of each limitation and a comparison of the limitations to the disclosure of Flick. See Pet. 27–32. We have reviewed Petitioner’s cited evidence and explanation regarding why Flick anticipates claims 2 and 4–7, and find it sufficient at this stage. For example, claim 2 requires that “the information about the vehicle comprises one or more of a location of the vehicle, a time that the vehicle was at a location, or a speed of the vehicle.” Ex. 1001, 10:59–62. Flick discloses (“‘vehicle speed and location that the speeding started and how long speeding accrued’ (Detected from GPS).”) Ex. 1005 ¶ 147. On this record, we determine that Petitioner has shown a reasonable likelihood of success that Flick anticipates claims 2 and 4–7.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,291,475 - PTAB · May 26, 2022 · IPR2022-00163 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–8, 10–13, and 15–25 on all petitioned grounds, finding a reasonable likelihood that at least one claim is obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board Consolidated Trial Practice Guide 58 & n.2 (Nov. 2019) (“Trial Practice Guide”), available at https://www.uspto.gov/TrialPracticeGuideConsolidated. We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5–6. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims. slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Owner argues that “[s]imply stating that the combination is the mere application of a known technique to a known system, without explaining why a POSITA [(person of ordinary skill in the art)] would have been motivated to seek out that particular technique to achieve the purported result, does not satisfy Petitioner’s burden.” Id. at 30 (citing Ancestry.com DNA, LLC v. DNA Genotek Inc., IPR2016-01152, Paper 11 at 10 (PTAB Nov. 23, 2016)).” slip op. at 32
- Skill levelSkill level petitioner adoptedOther
“Pet. 7 (citing Ex. 1004 ¶ 49). Patent Owner agrees with, and reiterates this level of ordinary skill. Prelim. Resp. 6–7. On this record, the level of ordinary skill in the art is not disputed and is consistent with our review of the technology and descriptions in the ’647 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention”). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,243,647 - Unified Patents, LLC v. Mcom IP, LLCInstitutedPTAB · Mar 7, 2022 · IPR2022-00055 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1, 3–7, 9–13, 15, 16, and 18–20 on all asserted obviousness grounds.
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) (2021) (“The Board institutes the trial on behalf of the Director.”). Section 314(a) of Title 35 of the United States Code 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.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner
“For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner. That definition is supported by the cited testimony of Mr. Jestice, which provides additional background on the “basis for [his] familiarity with the level of ordinary skill,” and which we find persuasive on this issue. See Pet. 14–15 (citing Jestice Decl. ¶¶ 31– 32). Petitioner’s proposed definition of the level of ordinary skill in the art also appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. In contrast, Patent Owner’s assertion does not identify supporting testimony from Mr. Landers. See Prelim. Resp. 4. In a paragraph not cited in the Preliminary Response, however, Mr. Landers repeats Patent Owner’s statement (shown in the block quotation above) as to the qualifications that “[a] person of ordinary skill in the art is defined as having . . . .” Landers Decl. ¶ 20 (emphasis added); compare id., with Prelim. Resp. 4. Because Mr. Landers does not adequately explain who or what provided that definition, we view that position as entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We note that Patent Owner does not argue, at this stage of the proceeding, that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would understand either the ’508 patent or the prior art.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner argues that the claimed “computer system configured with at least one control console” should be limited to either a marketing computer system or an operation computer system. Id. Although the Specification describes an embodiment with a “marketing computer system” and an “operations computer system”—as shown in Figure 1 (see also, e.g., Ex. 1001, 3:42–44)—it is generally improper to read limitations from specific embodiments into the claims. See Cadence Pharms. Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015) (“[E]ven if all of the embodiments discussed in the patent included a specific limitation, it would not be proper to import from the patent’s written description limitations that are not found in the claims themselves.” (internal quotations omitted)). Thus, contrary to Patent Owner’s argument, we do not limit the recited “computer system” to a marketing computer system or operations computer system.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“extrinsic evidence defining “session” as “a meeting or series of meetings of a body for the transaction of business.” Prelim. Resp. 8. Regardless, this definition is not applicable to the invention at issue here as it relates to meetings between a group or groups of people in a deliberative body of some type. See Ex. 3003 (The American Heritage Dictionary of the English Language (2016) (via Credo Reference), https://search.credoreference.com/ content/entry/hmdictenglang/session/0 (last visited Feb. 16, 2022) (Definition 1.a – “A meeting of a legislative or judicial body for the purpose of transacting business.”). Instead, we view as more applicable alternative definitions of “session” as a period of time for a certain activity, such as communication between a user and a system. See id. (Definition 3 – “A period of time devoted to a specific activity: a recording session at a music studio; a login session that was disrupted by a power outage.”); Ex. 3004 at 11 (IEEE 100: The Authoritative Dictionary of IEEE Standard Terms, available at https://ieeexplore.ieee.org/document/4116787) (Definition 1 – “The period of time during which a user of a terminal can communicate with an interactive system, usually equal to elapsed time between logon and logoff.”). This understanding of a “session” as a period of time for certain activity is supported by references in the Specification to a “session” being “initiated” and “ended.” See, e.g., Ex. 1001, 4:56 (discussing how “a customer interaction session is initiated”), 5:41–42 (discussing how a “transaction session is determined . . . to have ended”). Although we need not expressly define “session” at this stage of the proceeding, the parties may wish to develop this issue at trial. Further, even if we were to agree with Patent Owner and view an “active session” as characterized by the nature of the activity taking place— rather than a period of time during which that activity takes place—we do not agree that an “active session” must include “feedback from the touch point.” Prelim. Resp. 8. The passages in the Specification highlighted by Patent Owner refer to a “customer’s interactions” with the touch point (see Ex. 1001, 4:46–55, cited at Prelim. Resp. 8) but do not mention any feedback or response by the touch point. To the extent Patent Owner implicitly contends that one of ordinary skill in the art would have understood the terms “interacts” and “interactions” (see Ex. 1001, 4:49, 4:53) as requiring reciprocal activity, the record at this stage does not support that understanding by one of ordinary skill in the art. See Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (rejecting attorney argument as to the alleged understanding of one of skill in the art on an issue when no evidence was presented). Moreover, even if “interactions” would have been understood as both input from a customer and response from the system, the passages cited discuss the capabilities of the system and do not define an “active session” as requiring a response from the system. See Ex. 1001, 4:46–55, 5:39–42. The Landers Declaration largely tracks the Preliminary Response and does not add to the discussion on this issue. Compare Prelim. Resp. 8, with Landers Decl. ¶¶ 27–28. For these reasons, we are not persuaded to adopt Patent Owner’s proposed construction of “active session” at this stage of the proceeding.” slip op. at 20
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,862,508 - Platform Science, Inc. v. Omnitracs, LLCRehearing grantedPTAB · Sep 3, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board granted rehearing and instituted IPR on all petition grounds for claims 1–4, 6–9, 11, 12, and 15, finding a reasonable likelihood of prevailing.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“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 petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to claim 1.” slip op. at 44
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6.6 Petitioner 6 As noted above, Petitioner raises a second claim construction issue in its Rehearing Request. See Req. Reh’g 12–15 (asserting that the claims require only one instance of copying information from a formatted message to a response message based on which formatted message was received). Petitioner did not raise this issue in the Petition, Patent Owner has not had an contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“VI. ANALYSIS Legal Standards – Anticipation “[A] claim is anticipated ‘if each and every limitation is found expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference” (alteration in original) (quotation omitted)).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,925,308
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.