- Askeladden L.L.C. v. Liberty Peak Ventures LLCAll claims unpatentablePTAB · May 29, 2024 · IPR2023-00421 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–17 are unpatentable as obvious over Gopinathan and Hirka; the Board did not reach anticipation over Gopinathan.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on these and other disclosures in Hirka, Mr. Zatkovich testifies, and we agree, that Hirka discloses the debit card aspect of the authentication limitation. Ex. 1003 ¶¶ 170, 188–189.7 For example, Mr. Zatkovich states that Hirka “demonstrate[s] that a debit card used in the transaction . . . is associated with both a demand deposit account (e.g., a ‘cash account’) and an overdraft account.” Id. ¶ 188. Mr. Zatkovich’s opinions are well-supported by record evidence, including the citations to Hirka we discuss above. Patent Owner does not address these disclosures in Hirka and does not rebut Mr. Zatkovich’s testimony with expert testimony of its own. See PO Resp. 15–16. Patent Owner’s assertion that “the combination suggests only authenticating a transaction against an available credit limit” entirely overlooks Hirka’s disclosure regarding debit cards and demand deposit 6 No line numbers are provided on Hirka’s first page. 7 Mr. Zatkovich also relies on the teachings of Hirka ’404 (Ex. 1007), which was cited by the Examiner during prosecution. E.g., Ex. 1003 ¶¶ 170, 188. Although Hirka ’404 further supports Mr. Zatkovich’s findings, we view Mr. Zatkovich’s testimony sufficiently supported by the combined teachings of Gopinathan and Hirka. accounts. See id. at 16. Patent Owner’s argument therefore fails to undermine Petitioner’s persuasive arguments and supporting evidence.” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“a POSITA [person of ordinary skill in the art] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with payment processing systems, credit card and debit card payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 11–12 (citing Ex. 1003 ¶¶ 159–161). Patent Owner does not submit a contrary skill definition. See PO Resp. We are persuaded that Petitioner’s proposal is generally consistent with the problems and solutions in the ’100 patent and prior art of record. We note, however, that the open-ended language “at least” expands the range of experience indefinitely with no upper bound. We adopt Petitioner’s definition of the level of skill with the exception of the language “at least.”” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner proposes constructions for the “authenticating” step of claim 1 as well as for the terms “demand deposit account” and “overdraft account.” PO Resp. 6–7. Petitioner does not dispute these constructions, and Patent Owner does not appear to rely on them in its arguments. See Reply; PO Resp. Accordingly, we determine that no claim terms require construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree with Petitioner, as supported by the testimony of Mr. Zatkovich, that one of ordinary skill in the art would have been motivated to combine Gopinathan and Hirka at least “because doing so would have protected cardholders and card issuing systems from fraud associated with debit cards with overdraft protection.” Pet. 32 (citing Ex. 1003 ¶ 191). In other words, in the combination, Hirka’s debit cards with overdraft protection would benefit from Gopinathan’s fraud protection disclosure. See id. And conversely, Gopinathan’s system would benefit from Hirka’s overdraft protection. See id. Patent Owner does not squarely address Petitioner’s rationales to combine. In asserting that “the teachings of Hirka add nothing to the teachings already present in Gopinathan,” Patent Owner overlooks that Hirka would provide the benefit of overdraft protection to Gopinathan’s fraud detection system. See PO Resp. 15; Reply 17 (arguing that “a POSITA would have been motivated to combine Gopinathan with Hirka to protect cardholders from fraud ‘associated with debit cards’ and ‘overdraft protection’”); Ex. 1003 ¶ 191. We further agree with Petitioner that Hirka would have provided the benefit of debit cards to Gopinathan’s fraud detection system. Reply 19 (“[I]t would have been obvious (and a POSITA would have been motivated to) to modify Gopinathan with the ‘debit card’ system as taught in Hirka in order to expand the reach and applicability of the fraud detection system taught.” (citing Ex. 1014 ¶¶ 654–662)). And vice versa, Gopinathan would have provided the benefit of fraud protection to Hirka’s debit card and overdraft accounts. Reply 17 (citing Ex. 1003 ¶ 171); Pet. 24.” slip op. at 16
Patent outcomesUS 7,837,100 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,837,100 - Xu Peicheng (Hong Kong) Optoelectronic Technology Co., Limited v. Semisilicon Technology Corp.InstitutedPTAB · May 20, 2024 · IPR2024-00156 · APJ Elizabeth J Reagan · IPR · Institution
The Board instituted IPR on claims 1–6 and 8 under all asserted grounds after finding a reasonable likelihood that petitioner would prevail on at least claim 1 over Kuang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is statutorily authorized when “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) (2018). We determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’546 patent. Accordingly, we institute an inter partes review of claims 1–6 and 8 of the ’546 patent.” slip op. at 2
- BurdenDecided for petitioner
“denied because of the Petition’s improper reliance on the general knowledge of a person of ordinary skill in the art (i.e., contentions (1), (2), and (3) above), we have considered these arguments. However, we preliminarily determine, as discussed below, that certain of the cited prior art teaches all limitations of at least some of the claims. Therefore, reliance on the knowledge of a person of ordinary skill in the art is not required to supply any missing claim limitation(s) in at least one of the grounds. Accordingly, we need not expressly address these contentions of Patent Owner at this stage for purposes of our decision to institute trial. However, we invite the parties to provide further briefing on these issues during the course of the trial. With regard to Patent Owner’s contention that the Petition should be denied because the Schubert Declaration entirely repeats the Petition, and the Petition and Schubert Declaration include only conclusory statements of obviousness (contention (4) above), see Prelim. Resp. 20–24, we note that “[v]erbatim duplication between a brief and a declaration does not require giving the declarant’s testimony ‘little or no weight’ under Xerox,” provided that the testimony itself is sufficiently supported. Netflix, Inc. v. GoTV Streaming, LLC, IPR2023-00757, Paper 11 at 67 (PTAB Nov. 7, 2023) (emphasis added) (discussing Xerox Corp. v. Bytemark, Inc., IPR2022- 00624, Paper 9 at 15 (PTAB Aug. 24, 2022)) (precedential); Hum Indus. Tech., Inc. v. Amsted Rail Co., IPR2023-00540, Paper 10 at 37 (PTAB Aug. 11, 2023) (“If declaration testimony is supported sufficiently and, in turn, supports contentions in the Petition, we do not give it little to no weight simply because it is repeated in the Petition”). Here, we agree with Patent Owner that Dr. Schubert’s testimony closely mirrors the language in the Petition. Nevertheless, on the record before us, we find that the support, including, for example, prior art citations and/or technical reasoning, provided in the declaration and repeated in the Petition is sufficient for demonstrating a reasonable likelihood that Petitioner would prevail in its challenge to at least one of the claims under at least one of the grounds. While expert testimony that mirrors the language of the petition, without more, may provide little help to the Board, we have evaluated the Schubert Declaration to determine the amount of weight attributable to the testimony therein at this stage of the proceeding, based on the support provided for the testimony. 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.”).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the Schubert Declaration, Petitioner proposes that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and 6 years of practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or “[a]lternatively . . . would have had a master’s degree and four years of experience, or a Ph.D. degree and two years of experience.” Pet. 5 (citing Ex. 1003 ¶ 31). At this stage of the proceeding, Patent Owner does not contest Petitioner’s proposed definition of the ordinarily skilled artisan. See generally Prelim. Resp.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe terms in controversy only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For purposes of this Decision, and based on the current record, we determine that no claim term requires express construction at this stage of the proceeding, with the exception of the term “synchronous signals” in limitation 1[D], which requires interpretation to the extent necessary to assess the merits of the parties’ assertions. The Specification does not expressly define “synchronous signals.” See generally Ex. 1001. Petitioner proposes a definition of “synchronous signals” based on how “a POSITA would have understood the term,” as: “signals that are sent to the slave nodes to control their corresponding LED strings at the same time.” Pet. 16–17. Patent Owner argues that there is no support for Petitioner’s definition of “synchronous signals,” but Patent Owner does not propose an express construction of the term. See Prelim. Resp. 21–23, 25–26. In the discussion on the merits below, we discuss the interpretation of the term “synchronous signals.” See infra Sec. III.D.2.a.v. As noted below, we invite the parties to present briefing on the interpretation of this term during trial.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,884,546 - Xu Peicheng (Hong Kong) Optoelectronic Technology Co., Limited v. Semisilicon Technology Corp.Institution deniedPTAB · May 20, 2024 · IPR2024-00157 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, including the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“§ 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, Preliminary Response, and all supporting evidence, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art as of the filing date of the application for the ’988 patent “would have had a bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and 6 years of practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or “[a]lternatively . . . would have had a master’s degree and four years of experience, or a Ph.D. degree and two years of experience.” Pet. 5 (citing Ex. 1003 ¶ 32). Patent Owner does not contest Petitioner’s contention with regard to the level of skill. See generally Prelim. Resp. To the extent necessary for purposes of this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner as it appears consistent with the prior art before us in this proceeding.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“this limitation. Nonetheless, we find a close question as to whether Petitioner has made a sufficient showing with respect to this limitation, as the only evidence Petitioner cites in support of its argument that “[t]he term GND is often used interchangeably with the term VSS, which refers to negative voltage” (Pet. 8) is an identical, unsupported assertion in Dr. Schubert’s Declaration (Ex. 1003 ¶ 38) to which we accord little or no 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.”). Because we determine below that Petitioner has not made a sufficient showing with regard to limitations 1[E] and 1[H] (see infra” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Having considered the parties’ respective arguments and the evidence of record, we agree with Patent Owner that Petitioner has failed to make a sufficient showing with respect to limitations 1[E] and 1[H]. As Patent Owner points out, the Petition effectively concedes that there is a structural difference between pins, as disclosed by Lai, and pads, as recited in claim 1, and Petitioner does not reconcile this difference or explain why a person of ordinary skill in the art would have been motivated to modify Lai’s disclosure and use pads rather than the pins Lai discloses. Prelim. Resp. 31. Even if pins and pads may both be types of terminals, claim 1 specifically recites pads, not terminals, and Petitioner has not persuasively shown that a person of ordinary skill in the art would regard pins and pads as interchangeable or that pads would otherwise be suggested by Lai’s disclosure of pins. Further, as Patent Owner also points out, Petitioner’s inclusion of “general knowledge of a POSITA” in the asserted ground is unavailing knowledge” is to be brought to bear on the combination and has instead “left it to Patent Owner and the Board to speculate on which of the features of the asserted art differs from the claims and how the asserted art or its teaching would have been modified.” Prelim. Resp. 13–14. Although general knowledge of a person of ordinary skill in the art may, under certain circumstances, be relied upon to supply a missing claim limitation (see, e.g., Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1337–38 (Fed. Cir. 2020)), such reliance is improper where, as here, it is based merely upon “conclusory statements and unspecific expert testimony” (id. (quoting Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1366 (Fed. Cir. 2016))).” slip op. at 19
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,124,988 - PTAB · May 10, 2024 · IPR2024-00200 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–16 on all asserted grounds, finding a reasonable likelihood of prevailing based on the Hays obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We use the following two-part framework in determining whether to exercise our discretion under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. 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 the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we institute an inter partes review of all challenged claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had an undergraduate degree in game design or development, computer science, computer engineering, or a related field, with at least two years of experience working with computer gaming systems or software application development.” Pet. 2 (citing Ex. 1003 ¶¶ 65–69). Petitioner also contends that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Pet. 2–3 (citing Ex. 1003 ¶¶ 65–69). Patent Owner does not comment on the level of ordinary skill in the Preliminary Response. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, which appears consistent with the ’056 patent and the asserted prior art, except that we change qualifier “at least” to “about” to avoid including experience levels that exceed the 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
“D. Claim Construction Neither party proposes any claim terms for construction. On this record, we determine that no terms need express construction to determine whether we should institute. 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” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,117,056 - PTAB · May 10, 2024 · IPR2024-00171 · APJ Daniel J Galligan · IPR · Institution
The Board instituted inter partes review of claims 1–14 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“proceeding if the challenge to the patent is based on matters previously presented to the Office. 35 U.S.C. § 325(d) states, in pertinent part, “[i]n determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We use the following two-part framework in determining whether to exercise our discretion under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons discussed above and based on Petitioner’s contentions and evidence, summarized above, we are persuaded, on this record, that claim 1 is unpatentable as obvious over the teachings of Hays.7” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). Patent Owner argues that “Hays is only a ‘printed publication’ under § 311(b) as of the date it became available to the public—i.e., its publication date, which notably, is after the June 26, 2007 priority date of the ’958 Patent,” and, therefore, that Hays is “ineligible to be prior art in an IPR.” Prelim. Resp. 41–44. We disagree with Patent Owner’s statutory interpretation. Hays is a printed publication, having been published on May 1, 2008, as Patent Owner acknowledges. See Ex. 1005, code (43); see also Prelim. Resp. 41 (acknowledging publication date). On this record, we are persuaded by Petitioner’s contention that Hays is prior art under pre-AIA 35 U.S.C. § 102(e), having been filed “by another . . . in the United States before the invention by the applicant for patent.” See Pet. 8. Thus, Petitioner asserts a permissible ground of unpatentability by arguing that claims 1–14 are unpatentable under 35 U.S.C. § 103(a) “on the basis of prior art consisting of patents or printed publications” (35 U.S.C. § 311(b)), specifically based on Hays, which is prior art and a printed publication.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction Neither party proposes any claim terms for construction. On this record, we determine that no terms need express construction to determine whether we should institute. 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))). Nevertheless, we note two issues of claim interpretation for the parties to consider. First, the parties may wish to address the interpretation of the phrase “pre-selected in-game advertising” during the trial for the reasons discussed below in §§ II.E.2 and II.F.1. Second, the parties may wish to address the interpretation of the subject matter of dependent claims 5 and 12 reciting “wherein the message is pre-selected by the server based on a model type associated with the mobile communication device, a service subscription associated with the mobile communication device, or a service provider for the service subscription associated with the mobile communication device.” In particular, the parties may wish to address what it means to be “pre-selected” in this context.” slip op. at 8
Claim construction§ 102 anticipationDiscretionary denialcites KSRPatents in suitUS 10,617,958 - PTAB · May 10, 2024 · IPR2024-00209 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1–20 on all asserted grounds, finding a reasonable likelihood that PLR would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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) (2018). “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.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“focuses on a high-level comparison of the references. See Prelim. Resp. 14– 19. Such high-levels of similarity are to be expected as all of the references involve advertising in computer game programs. But such high-level similarity is not sufficient. Instead, Patent Owner must demonstrate that the references relied on in the Petition are substantially the same in all material respects to the prior art the Examiner actually relied on. See Juniper Networks, Inc. v. Swarm Tech. LLC, IPR2021-01445, Paper 15 at 16 (PTAB March 2, 2022) (Institution Decision) (“The issue is not just whether the same elements can be found in each of the references, but whether the elements function the same way. That is, even though Leong and Bates have the same elements, that does not mean that the elements interact with each other the same way or perform the same functions as recited in the claims.”); see also Advanced Bionics, IPR2019-01469, Paper 6 at 15 (holding that prior art is substantially the same if “Petitioner relies on [the new art] in substantially the same manner as the Examiner cited [the previous art] during prosecution such that [the new art] discloses substantially the same information as [the previous art] in relevant part.”).” slip op. at 16
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“We disagree with Patent Owner’s statutory interpretation. Ho is a printed publication, having been published in January 2008, as Patent Owner acknowledges. See Ex. 1004, code (43) (publication date of January 17, 2008); see also Prelim. Resp. 45 (acknowledging publication date). On this record, we are persuaded by Petitioner’s contentions that Ho is prior art under 35 U.S.C. § 102(e), having been filed “by another . . . in the United States before the invention by the applicant for patent.”11 See Pet. 7 (“For purposes of this Petition, Petitioner uses a June 26, 2007 priority date” for the ’662 patent); see also Ex. 1004, code (22) (filing date of July 12, 2006). Thus, Petitioner asserts a permissible ground of unpatentability” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“claim 115 and that a person having ordinary skill in the art would combine the relevant teachings of Ho and Aoki. See Pet. 17–26, 30. With the exception of “hot spot” and “hot spot information,” which we discussed above in Section II.G.3(a), at the present time Patent Owner does not dispute that Ho teaches those limitations. See Prelim. Resp. 26–35. After reviewing Petitioner’s arguments and information regarding the limitations identified above, including the Zagal Declaration, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that Ho teaches limitations 1(pre), 1(a), (1)(b)(1), 1(d), and 1(e) and that a person having” slip op. at 39
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,427,662 - Wiz, Inc. v. Orca Security LtdInstitution deniedPTAB · May 9, 2024 · IPR2024-00220 · APJ Richard M Lebovitz · IPR · Institution
The Board denied institution because the Patent Owner disclaimed all challenged claims, leaving no claims eligible for inter partes review.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“Under 37 C.F.R. § 42.107(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent,” and “[n]o inter partes review will be instituted based on disclaimed claims.” A statutory disclaimer is “considered as part of the original patent” as of the date on which it is “recorded” in the Office. 35 U.S.C. § 253(a). “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996). See also Raytheon Technologies Corporation v. General Electric Company, 993 F.3d 1374, n.4 (Fed. Cir. 2021) (“Disclaimed claims are treated as if they never existed.”)” slip op. at 2
NonePatents in suitUS 11,431,735 - PTAB · May 8, 2024 · IPR2024-00175 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–17 and all petition grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 preliminary 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.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Biswas and Kumar. Patent Owner focuses on specific details of the packet classification system of Kumar, whereas Petitioner relies on the combination of Biswas and Kumar. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). “The test for obviousness is not whether the 6 “Minoli Decl.” refers to the Declaration of Daniel Minoli, filed by Patent Owner in support of its Preliminary Response. Ex. 2001. features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d at 425; In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). At this stage, we are persuaded by Petitioner’s declarant’s testimony that one of ordinary skill would have known to use the masking techniques exemplified by Kumar to implement the disclosed operation in Biswas of edge routers providing hosts with port number ranges. Bhattacharjee Decl. ¶¶ 77, 97–101. Accordingly, for purposes of this Decision, we accept Partitioner’s proffered combination of Biswas and Kumar.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In regard to the reexamination proceedings that Patent Owner relies on, however, the current record presents circumstances not well suited for the Becton Dickinson factors. Here, the reexamination is in its early stages, and no office action has issued. It is premature to characterize the reexamination grounds as “previously presented,” or to evaluate whether the Office erred in a manner material to the patentability of challenged claims. See, e.g., Mueller Sys., LLC v. Rein Tech, Inc., IPR2020-00099, Paper 9, 10– 14 (PTAB May 12, 2020) (holding that §325(d) did not apply to prior art submitted in pending reexamination that had not yet resulted in an office action). Moreover, the Examiner’s determination in the January 18, 2024 grant of the reexamination request is consistent with Petitioner’s arguments here, in that it found substantial new questions of patentability with respect to both a Biswas patent asserted to be similar to the Biswas patent asserted here, and Fangman, also asserted here. Ex. 2008, 20. Therefore, there is little basis to predict that, in the further course of the reexamination proceedings, the Office will have erred in a manner material to the patentability of challenged claims. Also, the finding of substantial new questions of patentability supports a determination that the Office was not “previously” presented with the same art or arguments as in the Petition because the Examiner determined that arguably similar (the reexamination Biswas patent) and identical (the Fangman patent) references presented new questions of patentability. See Mueller, IPR2020-00100, Paper 9, 10. We note that the Office has advised that “[t]he Board . . . may deny institution under 35 U.S.C. [§] 325(d) of a requested AIA trial proceeding if a parallel Office proceeding, for example, is in a more advanced stage and involves overlapping issues with the proposed AIA trial proceeding.” Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding, 84 Fed. Reg. 16,654, 16,657 (Apr. 22, 2019). The Examiner in the reexamination proceeding at issue here has found that the art presented there is “substantially the same prior art” as Petitioner asserted in this IPR. Ex. 2008, 20. As stated above, both proceedings rely on Fangman, and the two Biswas references are similar. The early stage of the reexamination proceeding, however, weighs against denying institution. See Mueller, IPR2020-00100, Paper 9, 13. In addition, unlike this proceeding, the reexamination does not involve consideration of the teachings of Kumar, which as discussed above is critical to the question of obviousness of using a mask to define a range of port numbers. After weighing all the considerations discussed above, we determine” slip op. at 27
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“Patent Owner also argues that the fact that Unified Patents submitted the reexamination request presents a real party in interest issue that is an additional reason to deny institution. Prelim. Resp. 46–48. However, the present record does not present facts that would support this argument.” slip op. at 29
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,693,369 - PTAB · Apr 30, 2024 · IPR2024-00132 · APJ David C Mckone · IPR · Institution
The Board instituted inter partes review of claims 1–9 on all asserted grounds, finding a reasonable likelihood that PLR would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim of the ’202 patent. Our factual findings, conclusions of law, and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. This is not a final decision as to the patentability of claims for which inter partes review is instituted. Our final decision will be based on the record as fully developed during trial. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review is instituted as to claims 1–9 of the ’202 patent on all of the grounds set forth in the Petition; and” slip op. at 34
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Petitioner. The prior Board decision observed that Willis discloses sending advertising content based on physical geographic location but does not teach “checking what updated video-game content to send based on one of the factors including a type of the mobile 3 Patent Owner argues that Petitioner’s reply arguments are improper new arguments, beyond the scope of the Petition, and should not be considered. Prelim. Sur-reply 1, 3. We disagree, as Petitioner’s reply arguments are responsive to Patent Owner’s Preliminary Response. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding . . . patent owner preliminary response . . . .”). Furthermore, we expressly authorized Petitioner to file a reply addressing Patent Owner’s Section 325(d) arguments. communication device, a telecom service associated with the mobile communication device, and a service provider of the telecom service.” Ex. 1002, 41–42. As explained in detail below, Petitioner shows persuasively, at least on the current record, that both Hays and Levkovitz teach the limitation the prior Board decision found missing from Willis. Patent Owner does not contend that Willis includes disclosure similar to the disclosure Petitioner cites to in Hays or Levkovitz for this limitation. Accordingly, we conclude that the same or substantially the same art and arguments were not previously presented to the Office, and, accordingly, the first part of Advanced Bionics is not satisfied. We need not reach the second part. We are not persuaded that we should exercise our discretion to deny the Petition under Section 325(d).” slip op. at 14
- Strike new argumentNew argument consideredDecided for petitioner
“3 Patent Owner argues that Petitioner’s reply arguments are improper new arguments, beyond the scope of the Petition, and should not be considered. Prelim. Sur-reply 1, 3. We disagree, as Petitioner’s reply arguments are responsive to Patent Owner’s Preliminary Response. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding . . . patent owner preliminary response . . . .”). Furthermore, we expressly authorized Petitioner to file a reply addressing Patent Owner’s Section 325(d) arguments. communication device, a telecom service associated with the mobile communication device, and a service provider of the telecom service.” Ex. 1002, 41–42. As explained in detail below, Petitioner shows persuasively, at least on the current record, that both Hays and Levkovitz teach the limitation the prior Board decision found missing from Willis. Patent Owner does not contend that Willis includes disclosure similar to the disclosure Petitioner cites to in Hays or Levkovitz for this limitation. Accordingly, we conclude that the same or substantially the same art and arguments were not previously presented to the Office, and, accordingly, the first part of Advanced Bionics is not satisfied. We need not reach the second part. We are not persuaded that we should exercise our discretion to deny the Petition under Section 325(d).” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“1 Patent Owner contends that Dr. Zagal’s Declaration “simply parrots the Petition” and, thus, should not be entitled to any weight. Prelim. Resp. 28– 33. The testimony quoted by Patent Owner (Prelim. Resp. 30–32) includes citations to the prior art to support the opinions set forth and, thus, “disclose[s] the underlying facts or data on which the opinion is based” (37 C.F.R. § 42.65(a)). See Ex. 1003 ¶¶ 95, 103, 118, 165–166 (citing Ex. 1005 ¶¶ 25, 51; Ex. 1008 ¶¶ 5, 6, 123, 127). We decline, at this stage of the proceeding, to discount Dr. Zagal’s testimony in its entirety and will give that testimony the appropriate weight on the points for which it is offered.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,731,202 - PLR Worldwide Sales Ltd. v. Flip Phone Games Inc.Institution deniedPTAB · Apr 29, 2024 · IPR2024-00133 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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) (2018). “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.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe 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))). To the extent necessary, we address the parties’ implicit claim constructions in the context of the arguments on the merits of the Petition.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art at the time of the invention would have had “an undergraduate degree in game design, computer science, computer engineering, or a related field, with at least two years of experience working with computer gaming systems or software application development,” and that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Pet. 12 (citing Ex. 1003 ¶¶ 67–72). Petitioner’s recitation of the level of ordinary is consistent with the invention disclosed in the ’089 patent. It is also not disputed by Patent Owner at this time. See Prelim. Resp. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art, with the exception of the open-ended phrase “at least” which we change to “about.”” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Figure 3 above is an example of the embodiment of Ho showing a wings button, a car, and a hamburger monster in the foreground. Ex. 1004, 5:1–5, Fig. 3. Ho describes how the various interactive information elements are used for game play. See id. at 5:11–38. For example, hamburger monster 56 may be engaged when character 52 fights and successfully slays the hamburger monster, car 58 may be engaged when character 52 enters the car, and “wings” button 54 may be engaged (for example when character 52 wishes to fly) by clicking on icon 54 using a pointer, or by using an enclosure moving between different icons to highlight icon 54 to engage the icon. Id. Because Petitioner has not shown persuasive evidence that a user would not have expected those objects to be ones that the user could interact with, Petitioner has not shown them to be background objects. Petitioner also argues that Ho teaches that activating the interactive information elements “does not disrupt gameplay” and is therefore “outside the primary focus of game play.” Pet. 31–32 (quoting 5:36–38). We do not find that argument persuasive for two reasons. First, we do not see how the fact that activating an element without disrupting game play means the element is in the background. Petitioner and its expert simply make a statement without any explanation. See id.; Ex. 1003 ¶ 122. Such conclusory statements are not persuasive. Second, the language in Ho Petitioner relies on is not about the interactive information element, which Petitioner maps to the hotspot. Instead, Ho describes a sub-screen that appears after the user interacts with one of the interactive information elements, namely when the user slays the hamburger monster: “Similarly, making the character 52 slay the hamburger monster 56 may generate a sub-screen showing an advertisement of a chain of fast food restaurants. The sub-screen may also be overlain on the game environment and may not be disruptive to gameplay.” Ex. 1004, 5:35–38. Petitioner does not persuasively explain how a nondisruptive sub-screen that appears after an interaction with an object makes the object a background object.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,688,089
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.