- Freewheel Media, Inc. v. Almondnet, Inc.Institution deniedPTAB · Sep 5, 2024 · IPR2024-00415 · APJ Lynne H Browne · IPR · Institution
The Board denied institution of review of claims 1–7 and 9 under § 314(a), citing the unjustified third parallel petition and the resulting burden on the proceedings.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Our Practice Guide provides guidance on handling situations involving multiple petitions by a single petitioner challenging the same patent claims: Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. . . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Practice Guide 59 (emphasis added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here. For example, a second petition might be justified “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Petitioner does not argue that the number of claims in the parallel litigation is “large.” And while Petitioner does argue that the prior art relied upon on might be antedated, Patent Owner responds by stipulating “that it will not ‘attempt to antedate or disqualify’ the prior art relied upon by Petitioner.” Prelim. Resp. 6–7.” slip op. at 11
Discretionary denialPatents in suitUS 7,979,307 - Freewheel Media, Inc. v. Almondnet, Inc.Institution deniedPTAB · Sep 5, 2024 · IPR2024-00414 · APJ Lynne H Browne · IPR · Institution
The Board denied institution of review of claims 1–7 and 9 under § 314(a), finding no justification for this second parallel petition challenging the same claims.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. . . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Practice Guide 59 (emphasis added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here. For example, a second petition might be justified “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Petitioner does not argue that the number of claims in the parallel litigation is “large.” And while Petitioner does argue that the prior art relied upon on might be antedated, Patent Owner responds by stipulating “that it will not ‘attempt to antedate or disqualify’ the prior art relied upon by Petitioner.” Prelim. Resp. 6–7.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. CONCLUSION For the foregoing reasons, we are not persuaded that the facts presented by Petitioner justify a second petition challenging the same claims of the ’307 patent as the petition in IPR2024-00413. We therefore exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied and inter partes review of claims 1– 7 and 9 of the ’307 patent is not instituted on the grounds asserted in the instant Petition.” slip op. at 12
Discretionary denialPatents in suitUS 7,979,307 - Google LLC / Ecobee, Inc. v. Ecofactor, Inc.All claims unpatentablePTAB · Aug 1, 2024 · IPR2020-01504 · APJ Scott B Howard · IPR · Remand
On remand, the Board held claims 1–20 unpatentable as obvious over Wedekind and Ehlers and denied Petitioner’s motion to exclude Dr. Palmer’s testimony.
RulingsRemand decision- RemandOther
“Circuit held that we erred in construing limitation 1m. According to the Federal Circuit, In sum, both the claim language and the specification support a broader construction than the Board accorded the [1m] limitation. The proper construction of the term must allow for any of the five claimed inputs to potentially be used to calculate another claimed input. We agree, then, with Google’s proposed construction, which simply “require[s] that each of the five inputs be used at some point during the determination of the first time prior to said target time.” Appellant Br. 52 (emphasis and quotation marks omitted). Id. at 1059 (alteration in original). The Federal Circuit further ordered that we “apply this construction on remand.” Id. Following the issuance of the mandate, we held a conference call with the parties. See Paper 51, 2 (Order on Conduct of Proceedings on Remand). As noted in the previous paragraph, the Federal Circuit instructed us to apply Petitioner’s construction for limitation 1m on remand. Google, 92 F.4th at 1059. Because the construction was implicitly argued in the Petition, the parties had notice and opportunity to be heard. Paper 51, 5. Therefore, in accordance with PTAB Standard Operating Procedure 3,4 we “determine[d] that additional briefing [was] not warranted in this proceeding.” Id. at 4.5 We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision on Remand is issued pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we determine that Petitioner has shown by a 4 Available at https://www.uspto.gov/sites/default/files/documents/ptab_ sop_3-2023-oct.pdf. 5 Neither party requested to submit additional evidence or have an oral hearing on remand. Ex. 3002 (Email from the parties to the Board). unpatentable.” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On the one hand, Patent Owner’s formulation is attorney argument without any supporting evidence. See PO Resp. 5–6. Although not cited in the Response, when Dr. Palmer testifies to the level of skill in the art, he opinion: EcoFactor contends that a person of ordinary skill in the arts at the time of the invention would have had a (a) bachelor's degree in engineering, computer science, or a comparable field of study, and (b) at least 2 years of professional experience in electronic thermostats, HVAC controls, building energy management and controls or other similarly relevant industry experience. Additional relevant industry experience may compensate for lack of formal education or vice versa. Ex. 2002 ¶ 22 (emphasis added). It is well settled that mere attorney arguments and conclusory statements that are unsupported by factual evidence are generally entitled to no probative value. See Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorney’s argument is no substitute for evidence.”). On the other hand, Petitioner’s proposal is supported by Mr. Shah’s testimony. See Pet. 26 (citing Ex. 1002 ¶¶ 26–27). Because Mr. Shah’s testimony is based on his years of experience, we give it some weight. See Ex. 1002 ¶¶ 2–10. Accordingly, we are persuaded that Petitioner’s formulation, except for the qualifier “at least,” is correct.9” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“After briefing, we issued an order inviting supplemental briefing regarding the preambles of the challenged claims. Paper 28. In the Order, we proposed that the preamble of each of the challenged claims was not limiting. Id. at 2–3. In supplemental briefing, both Petitioner and Patent Owner agreed with that construction. PO Claim Constr. Br. 1; Pet. Claim Constr. Br. 5. We adopt the parties undisputed construction that the preamble of each of the claims is not limiting. In doing so, we conclude that the preamble is not limiting because it is “only a statement of purpose and intended result” and “[t]he expression does not result in a manipulative difference in the steps of the claim.” Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1375–76 (Fed. Cir. 2001).” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“s) Conclusion Regarding Claim 1 For the reasons set forth above, Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over Wedekind and Ehlers. 4. Analysis of Claims 2–4, 6–20 Petitioner argues that the combination of Wedekind and Ehlers teaches the limitations recited in claims 2–4 and 6–20 and that a person having ordinary skill in the art would have combined the teachings with a reasonable expectation of success. Pet. 61–62, 64–75. Petitioner’s arguments are supported by citations to the prior art and the testimony of Mr. Shah. See id. We have reviewed Petitioner’s arguments and evidence, agree with them, and, therefore, adopt Petitioner’s arguments and evidence as our own.” slip op. at 61
Patent outcomesUS 8,498,753 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,498,753 - PTAB · Jul 24, 2024 · IPR2024-00701 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–23 under the same § 103 grounds as the Meta IPR and granted Samsung’s motion to join that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an IPR may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In its Motion for Joinder, Samsung contends that joinder is appropriate because this proceeding and the Meta IPR are substantively identical (i.e., they involve the same claims, the same patent, the same prior art references, the same expert declaration, and the same arguments and evidence). See Joinder Mot. 1–2; see also Ex. 1020 (comparing Petition and Meta IPR Petition). Stated differently, Samsung asserts that the Petition and supporting evidence filed in this proceeding do not raise any new substantive or procedural issues. See id. Samsung further argues that, because it is willing to work with counsel for Meta (i.e., as an understudy) to consolidate all filings and discovery, joinder will not impact the schedule of the Meta IPR, thereby allowing us to complete a single consolidated proceeding in a timely manner. Id. at 4–9. Samsung also argues that, if it is joined as a party with the Meta IPR, Patent Owner will not suffer any prejudice because granting joinder under these circumstances will not add new issues for consideration by or costs to Patent Owner above and beyond those already presented in the Meta IPR, nor will granting joinder affect the issues, briefing, or discovery in the Meta IPR, as they will remain the same. Id. Given that Patent Owner did not file an opposition to Samsung’s Motion for Joinder, and Samsung agrees to consolidate all filings and discovery with Meta (Joinder Mot. 4–9), Samsung has demonstrated that joinder will not unduly complicate or delay the Meta IPR. See 37 C.F.R. § 42.1(b) (providing for “the just, speedy, and inexpensive resolution of every proceeding” (emphases added)). We, therefore, grant Samsung’s Motion for Joinder and, as a result, join Samsung as a party with the Meta IPR.” slip op. at 5
NonePatents in suitUS 10,715,878 - PTAB · Jul 24, 2024 · IPR2024-00666 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–23 under the same § 103 grounds as the Meta IPR and granted Roku’s motion to join that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We incorporate our previous analysis in our Decision on Institution in IPR2023-01281 regarding the asserted grounds of unpatentability, and conclude that Roku has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’878 patent challenged in the Petition for the same reasons. See Meta IPR Dec. on Inst. 23–24. Accordingly, we determine that Roku has met its burden of showing that joinder is appropriate, and that the Petition warrants institution of inter partes review on all claims and all challenges asserted in the Petition.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“because this proceeding and the Meta IPR are substantively identical (i.e., they involve the same claims, the same patent, the same prior art references, the same expert declaration, and the same arguments and evidence). See Joinder Mot. 4–6. Stated differently, Roku asserts that the Petition and supporting evidence filed in this proceeding do not raise any new substantive or procedural issues. See id. Roku further argues that, because it is willing to work with counsel for Meta (i.e., as an understudy) to consolidate all filings and discovery, joinder will not impact the schedule of the Meta IPR, thereby allowing us to complete a single consolidated proceeding in a timely manner. Id. at 7–9. Roku also argues that, if it is joined as a party with the Meta IPR, Patent Owner will not suffer any prejudice because granting joinder under these circumstances will not add new issues for consideration by or costs to Patent Owner above and beyond those already presented in the Meta IPR, nor will granting joinder affect the issues, briefing, or discovery in the Meta IPR, as they will remain the same. Id. at 9–10. Given that Patent Owner did not file an opposition to Roku’s Motion for Joinder, and Roku agrees to consolidate all filings and discovery with Meta (Joinder Mot. 7–9), Roku has demonstrated that joinder will not unduly complicate or delay the Meta IPR. See 37 C.F.R. § 42.1(b) (providing for “the just, speedy, and inexpensive resolution of every proceeding” (emphases added)). We, therefore, grant Roku’s Motion for Joinder and, as a result, join Roku as a party with the Meta IPR.” slip op. at 5
NonePatents in suitUS 10,715,878 - PTAB · Jun 27, 2024 · IPR2024-00368 · APJ Sharon Fenick · IPR · Institution
The Board instituted inter partes review of claims 1–9 on all asserted grounds: anticipation and obviousness over Horie.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–9 (the “challenged claims”) of the ’564 patent on all grounds of unpatentability presented.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Other
“and evidence that the receipt of the request and the notification of the customer each occurs via a “distinct” transmission channel. See Ex. 1006 ¶¶ 39–41 (details of communication), 44, 54, 76, 78 (sending notification), Fig. 1, Fig. 9; Ex. 1003 ¶¶ 213–215, 221, 223–227. Although Patent Owner shows that Petitioner relies on certain duplicate elements in Petitioner’s identified first and second transmission channels, the transmission channels identified include different elements as well, and thus, on the current record 7 Although Patent Owner argues that “Petitioner incorporates hundreds of paragraphs from a 139-page expert declaration in the Petition, including extensive use of block cites and diagrams,” on this record and without more specific references we do not discern improper incorporation by reference in the Petition. Prelim. Resp. 15–16 (citing 37 C.F.R. § 42.6(a)(1)(i) and (a)(3)); see also Consolidated Trial Practice Guide 40 (“The Board expects that most petitions and motions will rely upon affidavits of experts.”) (The Consolidated Trial Practice Guide is available at https://www.uspto.gov/TrialPracticeGuideConsolidated). and preliminarily, we determine that they are “distinct” as required in limitation 1d. Pet. 27. With respect to Patent Owner’s argument that that Petitioner does not show that the channels are completely separate and that Figure 1 of the ’564 patent and/or other disclosed embodiments in the ’564 patent include completely separate channels (see Prelim. Resp. 4, 10–12), these arguments by Patent Owner are not commensurate with the scope of the claim, which requires that “the second transmission channel [be] distinct from the first transmission channel.” To the extent that Patent Owner argues that a specific claim construction should be accorded to limitation 1d of claim 1 that excludes Horie’s partially overlapping channels, on the present record we discern no evidence or argument regarding such a claim construction. And, to the extent that Patent Owner argues a distinction between Horie and the ’564 patent disclosure (rather than the claim), such arguments are inapposite. With respect to the requirement of limitation 1e that authorization occur without requiring of a response from the customer, on the present record and for the purpose of institution, Petitioner sufficiently shows that Horie discloses this in its disclosure of a pre-authorization notification. See Pet. 29–308; Ex. 1006 ¶ 73 (sending notification during the card authentication process as opposed to after that process is complete); Ex. 8 While Patent Owner argues that Petitioner only argues that Horie “suggests” this embodiment (as opposed to disclosing it, as required for an anticipation ground) (see Prelim. Resp. 7 n.1 (quoting Pet. 29)), even given the appearance of the verb “suggests” in one instance in the Petition, we understand Petitioner’s argument is that Horie discloses a pre-authorization notification. See Pet. 29 (“Horie . . . discloses . . . the [notification] e-mail can also be sent . . . during the card authorization process”), 20 (“Horie discloses each element of claims 1 through 9”). 1003 ¶¶ 232–233. Having considered Patent Owner’s argument that “if Horie notifies a customer prior to authorization, the system requires a response” (Prelim. Resp. 8), for institution, we credit Dr. Akl’s uncontroverted testimony that the embodiment of Horie’s paragraph 73 does not require any affirmative action on the part of the customer to process a transaction but merely discloses the possibility of canceling a transaction rather than disclosing a requirement for a positive response from a recipient to authorize the transaction. Ex. 1006 ¶ 73 (“[T]he e-mail can also be sent . . . during the card authentication process . . . [to make] it possible to issue a transaction cancellation request to the authentication hosts.”); Ex. 1003 ¶ 233. We additionally do not agree with Patent Owner’s allegation that Horie does not enable the disclosure of paragraph 73. Prelim. Resp. 8–9 n.2. While Petitioner asserts that Horie does not disclose the details regarding a transaction cancellation request (Pet. 18), we note that the issuance of a transaction cancellation request is not part of the claimed invention, and determine that on this record, Petitioner’s argument (or admission) in the Petition regarding the disclosure of Horie is not sufficient to cast doubt on the likelihood of Petitioner’s success before us by removing the presumption of enablement. See Impax Labs., Inc. v. Aventis Pharm., Inc., 545 F.3d 1312, 1316 (Fed. Cir. 2008) (establishing a presumption that an anticipating disclosure in a prior art patent is enabling); Apple Inc. v. Corephotonics, Ltd., 861 Fed. Appx. 443, 449 (Fed. Cir. 2021) (adopting this for AIA trial proceedings). For these reasons, upon consideration of the preliminary record, we determine that Petitioner has sufficiently shown a likelihood of success in showing claim 1 to be anticipated by Horie.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successOther
“While Petitioner’s argument with respect to claim 1d is presented as an obviousness argument, we do not discern that Petitioner presents any argument distinct from its analysis for anticipation. Id. at 39–42. While Petitioner cites Dr. Akl’s testimony to support its arguments regarding what Horie discloses, Petitioner does not discuss Dr. Akl’s testimony regarding obviousness or provide any suggestion of what a modification of Horie would be or discuss, e.g., motivation or expectation of success for a modification. Compare Pet. 39–42 with Ex. 1003 ¶ 229 (“[The] differences between the channels described in Horie would have suggested to a person of ordinary skill in the art that separate lines of communication could be employed in Horie’s system.”). Similarly, Petitioner’s arguments with respect to claim 2 do not appear to address obviousness.” slip op. at 25
§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,783,564 - PTAB · Jun 27, 2024 · IPR2024-00367 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1–4 on all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Horie.
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 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) (2024). “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
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Other
“corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014). Moreover, the reference must also “disclose[] within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the 1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102 and 103 that became effective on March 16, 2013. Because the ’310 patent has an application filing date of March 11, 2005, we apply the pre-AIA version of the statutory basis for unpatentability. See Ex. 1001, code (22). 2 Japanese Patent Application 2002-133100, published May 10, 2002 (Ex. 1009). All citations are to the Petitioner-provided English translation. Ex. 1006. claim.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). However, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’310 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue this ground. Those challenges, in our view, are best left for trial after full development of the record.10 10 As guidance to the parties, we note that it is unclear that the Petition, unlike Dr. Akl’s testimony, argues how a person having ordinary skill in the art would have modified Horie. Compare Ex. 1003 ¶ 98 (arguing that the differences between the first and second transmission channels in Horie “would have suggested to a person of ordinary skill in the art that separate and independent lines of communication could be employed in Horie’s system for the sending/receiving of requests and notifications.”), with Pet. 32–33 (not making the argument in Dr. Akl’s testimony). The parties should address in the Response and Reply (1) whether the Petition argues how and why a person having ordinary skill in the art would have modified Horie and (2), if not, whether we can rely on the argument in Dr. Akl’s testimony that is not made in the Petition.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “no claim terms require an express construction.” Pet. 9 (citing Ex. 1003 ¶ 62). 3 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. 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.”). For the purposes of this Decision, we need not expressly construe any claim terms.4, 5 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))).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,357,310 - PTAB · Jun 27, 2024 · IPR2024-00369 · APJ Andreas Baltatzis · IPR · Institution
The Board instituted IPR on claims 1–7 based on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute inter partes review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). We may institute inter partes review when “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.” 35 U.S.C. § 314(a). After considering the Petition and the evidence of record, we institute an inter partes review as to claims 1–7 of the ’706 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“motivated to combine Horie and Kobayashi, specifically to improve Horie’s confirmation option. Pet. 18–21. For example, Petitioner asserts Horie discloses sending a card transaction notification to a user device, with the option to issue a transaction cancellation request. Id. at 19 (citing Ex. 1006 ¶ 73). But, Petitioner notes that Horie does not disclose details on cancelling a transaction. Id. So Petitioner asserts that one of skill in the art would have looked to Kobayashi’s known techniques for preventing fraudulent transactions. Id. (citing Ex. 1003 ¶¶ 72–73). Specifically, Petitioner cites to Kobayashi’s method for verifying user identity, by notifying a user of a transaction using a pre-registered mobile phone number. Id. (citing Ex. 1007 ¶ 57; Ex. 1003 ¶ 74). In response, the user indicates whether or not the card can be used by entering a number determined at the time of card creation and a predetermined operation button. Id. at 19–20 (citing Ex. 1007 ¶¶ 60, 61; Ex. 1003 ¶¶ 73–74). Petitioner contends that implementing Kobayashi’s fraud prevention interface with Horie applies a known technique to improve a similar system in the same way. Id. at 20 (Ex. 1003 ¶¶ 75, 76). Petitioner concludes that, given the similarity between Horie and Kobayashi, one of ordinary skill in the art would have had a reasonable expectation of success in combining the disclosures. Id. at 20–21 (Ex. 1003 ¶¶ 75, 76). On this record and for purposes of institution, we determine that Petitioner has presented sufficient motivation to combine Horie and Kobayashi and reasonable expectation of success in doing so.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“terms require an express construction.” Pet. 8. Instead, Petitioner addresses what it asserts is a typographical error in claim 1, which twice recites the term “merchant’s.” Id. (citing Ex. 1001, 5:54); see also Ex. 1001, 5:56. The possessive term “merchant’s” is not followed by a subject noun. See id. Although not identified by Petitioner, claim 6 also includes the recitation of “merchant’s” without a subject noun. See Ex. 1001, 6:52. Petitioner contends that during prosecution of the parent patent, U.S. Patent No. 7,357,310 B2, “the applicant explained that the ‘secure network and the ‘payment guarantee’ channel are illustrated between the acquirer 8 [sic] and the modem 5 of the merchant’s terminal.’” Id. (citing Ex. 1013, 45). Accordingly, Petitioner asserts that both instances of “merchant’s” should be read as “merchant’s terminal.” Id. We accept Petitioner’s argument at this stage of the proceeding. The parties should address this apparent typographical error in claims 1 and 6 during trial, including (1) whether there is an obvious typographical error and (2) whether we should correct it. See Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003); Pavo Solutions LLC v. Kingston Tech. Co., 35 F.4th 1367 (Fed. Cir. 2022); Beable Education, Inc. v. Achieve3000, Inc., IPR2021-01169, Paper 34, 10–11 (PTAB Jan. 3, 2023) (Final Written Decision). At this stage of the proceeding and based on the current record, we need not construe explicitly any of the claim language discussed in this section or any other claim terms because doing so would not change the outcome of the analysis below.8 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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))).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) at the time the invention was made “would have a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related study, and would have at least one or two years of experience with wired and wireless networks used to securely process requests for authorization of activity such as financial transactions.” Pet. 7–8 (citing Ex. 1003 ¶ 22). Additionally, Petitioner contends that “[l]ess experience is necessary with additional education (e.g., a Master’s degree), and likewise, less education is necessary with additional work experience (e.g., 5–6 years).” Id. Patent Owner does not oppose or comment on Petitioner’s definition of a POSITA. 6 In the present record, neither party presents arguments or evidence relating to secondary considerations. On this record and for the purposes of institution, we determine this level of skill, with the exception of the open-ended phrase “at least,” which we remove from Petitioner’s proposal, comports with the qualifications a person would have needed to understand and implement the teachings of the ’706 patent and the prior art of record.7” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,954,706 - BMW Of North America, LLC / Mercedes-Benz USA, LLC v. Michigan Motor Technologies, LLCAdverse judgmentPTAB · Jun 12, 2024 · IPR2023-01032 · APJ Scott B Howard · IPR · Adverse judgment
The Board denied Patent Owner’s motion to terminate and entered adverse judgment against Patent Owner on claims 1–7 because it disclaimed all claims in the trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“unobjected to. See Mot. 1 (Patent Owner not objecting to entry of adverse judgment); Opp. 2 (Petitioner not opposing entry of adverse judgment). The Board construes an action cancelling or disclaiming claims such that no challenged claims remain in the trial as a request for adverse judgment. 37 C.F.R. § 42.73(b)(2) (“Actions construed to be a request for adverse judgment include: . . . [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.”); see also McAfee, Inc. v. CAP Co., Ltd., IPR2016-00211, Paper 19 (PTAB Apr. 5, 2017) (entering adverse judgment based on motion to amend seeking cancellation of claims remaining in the trial). In this case, the Board instituted trial on claims 1–7 of the ’565 patent, none of which remains in the trial following Patent Owner’s statutory disclaimer. Ex. 2002, 3 (disclaiming claims 1–7). Accordingly, we construe Patent Owner’s disclaimer as a request for adverse judgment, and we grant that request.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“We agree with Petitioner. A motion to terminate is governed by 37 C.F.R. § 42.72 (2023). Under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial without rendering a final written decision, where appropriate, including where the trial is consolidated with another proceeding or pursuant to a joint request under 35 U.S.C. [§] 317(a) or 327(a).” In this case, there is no “consolidat[ion] . . . or . . . a joint request under 35 U.S.C. [§] 317(a) or 327(a),” so the application of § 42.72 here is unclear.” slip op. at 3
NonePatents in suitUS 6,581,565 - BMW Of North America, LLC v. Michigan Motor Technologies, LLCAdverse judgmentPTAB · Jun 11, 2024 · IPR2023-01031 · APJ Scott B Howard · IPR · Adverse judgment
The Board denied Patent Owner’s motion to terminate and entered adverse judgment against it on claims 1, 2, 4–7, and 9–13 because it disclaimed all claims in the trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“However, application of section 42.73 is straightforward and unobjected to. See Paper 23, 3 (Patent Owner not objecting to entry of adverse judgment). The Board construes an action cancelling or disclaiming claims such that no challenged claims remain in the trial as a request for adverse judgment. 37 C.F.R. § 42.73(b)(2) (“Actions construed to be a request for adverse judgment include: . . . [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.”); see also McAfee, Inc. v. CAP Co., Ltd., IPR2016-00211, Paper 19 (PTAB Apr. 5, 2017) (entering adverse judgment based on motion to amend seeking cancellation of claims remaining in the trial). In this case, the Board instituted trial on claims 1, 2, 4–7, and 9–13 of the ’482 patent, none of which remains in the trial following Patent Owner’s statutory disclaimer. Ex. 2005, 5 (disclaiming claims 1, 2, 4–7, and 9–13). Accordingly, we construe Patent Owner’s disclaimer as a request for adverse judgment, and we grant that request.” slip op. at 4
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Patent Owner’s request as a motion to terminate pursuant to 37 C.F.R. § 42.72 (2023). Under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial without rendering a final written decision, where appropriate, including where the trial is consolidated with another proceeding or pursuant to a joint 2 Patent Owner did not state that it met-and-conferred with Petitioner. Nor did Patent Owner request authorization to file a motion to terminate the proceedings. request under 35 U.S.C. 317(a) or 327(a).” In this case, there is no “consolidat[ion] . . . or a joint request under 35 U.S.C. 317(a) or 327(a),” so the application of § 42.72 here is unclear.” slip op. at 3
NonePatents in suitUS 8,909,482
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.