- Groupon, Inc. v. Blue Calypso, LLCAll claims unpatentablePTAB · Dec 17, 2014 · CBM2013-00034 · APJ Barbara A Benoit · CBM · Final written decision
Claims 1–5 are unpatentable as anticipated by Paul; the Board rejected the Ratsimor anticipation and obviousness grounds because Ratsimor was not proven publicly accessible.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“1. “subsidy” Independent claim 1 recites “recognizing a subsidy, according to the subsidy program, for the subscriber.” The ’670 patent does not set forth a special definition for “subsidy.” Accordingly, we look to the ordinary meaning of the term “subsidy”—financial assistance given by one to another.5 The ’670 patent’s use of “subsidy” is consistent with its ordinary meaning. Specifically, the ’670 patent describes an advertiser setting up a subsidy program to subsidize communication fees, offer product discounts, generate and accumulate “reward points” for subscribers, or mitigate or defer other expenses of the subscriber. Ex. 1001, col. 3, ll. 39-45 (referring to Fig. 2). These examples are financial in nature. Product discounts reduce the monetary cost of a financial transaction, reward points are a form of currency, and mitigating or deferring expenses reduces the monetary cost of a financial transaction or postpones the monetary cost of a financial transaction, respectively. Also, the ’670 describes, as part of a subscriber setup process, an intermediary presenting, to a subscriber for selection, “subsidy programs available, including the criteria for continued subsidy and levels of subsidy.” Ex. 1001, col. 4, ll. 59-65 (referring to Fig. 3); see id. at col. 4, ll. 16-17. In an example of a bi-directional endorsement process, the ’670 patent further describes an advertiser calculating the amount to” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“We agree the preamble is limiting. In general, a preamble is construed as a limitation “if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). When the limitations in the body of the claim “rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). Notably, the preamble of independent claim 1 requires “a source communication device possessed by a subscriber,” “a destination communication device possessed by a recipient,” and “an advertisement.” The body of claim 1 recites “the source communication device,” “the subscriber,” “the destination communication device,” and “the 17 advertisement,” all of which rely on and derive antecedent basis from the preamble of claim 1. Accordingly, we conclude that the preamble of independent claim 1 is entitled to patentable weight.” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable
“Having reviewed the parties’ arguments and supporting evidence, we do not find sufficient evidence that the Ratsimor paper was accessible publicly and, therefore, we conclude the Ratsimor paper is not a printed publication under 35 U.S.C. § 102(b). Section 102 states: “A person shall be entitled to a patent unless . . . (b) the invention was . . . described in a printed publication . . . more than one year prior to the date of the application for patent . . . .” 35 U.S.C. § 102(b) (2011). “The statutory phrase ‘printed publication’ has been interpreted to give effect to ongoing advances in the technologies of data storage, retrieval, and dissemination.” In re Hall, 781 F.2d 897, 898 (Fed. Cir. 1986). As such, a printed publication under 35 U.S.C. § 102(b) may be an electronic publication, such as the Ratsimor paper is purported to be. See In re Wyer, 655 F.2d 221, 226 (CCPA 1981) (holding that an electronic publication is considered to be a “printed publication” “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation”).” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371; see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“The [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.”). Although the elements must be arranged 30 or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior art reference is read from the perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”).” slip op. at 30
Patent outcomesUS 8,457,670 unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 8,457,670 - Groupon, Inc. v. Blue Calypso, LLCSome claims unpatentablePTAB · Dec 17, 2014 · CBM2013-00046 · APJ Michael W Kim · CBM · Final written decision
Claims 1, 4–6, 10, and 14 are unpatentable as anticipated by Paul; claims 7–9 and 11 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“we determine the meaning of the claims for purposes of this decision. In a covered business method patent review, a claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.300(b). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We construe the terms below in accordance with these principles.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“subscriber according to the incentive program.” Petitioner contends that the express definitions of terms set forth in the “Definitions” section of the ’055 patent are the proper constructions of those terms. Pet. 10. We agree. Accordingly, we accept those definitions as proper constructions of “incentive” and “incentive program.” Furthermore, through their assertions concerning standing, Petitioner asserts that “incentive” and “incentive program” are financial in nature. We agree. Pet. 6–7. The ’055 patent repeatedly, and almost exclusively, discloses “incentive” and “incentive program” in a financial context. For example, the ’055 patent discloses that cash incentives are provided on debit cards or as cash distributions. Ex. 1001, 2:28–29. In another example, incentives are disclosed as “payments,” “payouts,” and “distributions.” Ex. 1001, 2:51, 6:34–45, 7:31–34, 8:3–6. In a further example, incentive programs are disclosed as having financial budgets and accounts that are debited until depletion. Ex. 1001, 6:41–45, 7:18–20, 8:50–56. Accordingly, we construe “incentive” and “incentive program” as being financial in nature.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable
“do not find sufficient evidence that the Ratsimor paper was accessible publicly and, therefore, we conclude that Petitioner has failed to show that the Ratsimor paper is a printed publication under 35 U.S.C. § 102(b). Section 102 states: “A person shall be entitled to a patent unless . . . (b) the invention was . . . described in a printed publication . . . more than one year prior to the date of the application for patent . . . .” 35 U.S.C. § 102(b) (2011). “The statutory phrase ‘printed publication’ has been interpreted to give effect to ongoing advances in the technologies of data storage, retrieval, and dissemination.” In re Hall, 781 F.2d 897, 898 (Fed. Cir. 1986). As such, a printed publication under 35 U.S.C. § 102(b) may be an electronic publication, such as the Ratsimor paper is purported to be. See In re Wyer, 655 F.2d 221, 226 (CCPA 1981) (holding that an electronic publication is considered to be a “printed publication” “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation”). The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009).” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“1. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371. Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior art reference is read from the perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”).” slip op. at 19
Patent outcomesUS 8,438,055 mixedClaim construction§ 102 anticipationPatents in suitUS 8,438,055 - Groupon, Inc. v. Blue Calypso, LLCSome claims unpatentablePTAB · Dec 17, 2014 · CBM2013-00035 · APJ Michael W Kim · CBM · Final written decision
Claims 1–25 and 29 are unpatentable: claims 2–15, 20–23, and 29 over Paul; claims 1–19, 23–25, and 29 for lack of written description. Claims 26–27 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownPreamble limitingDecided for patent owner
“Accordingly, we look to the ordinary meaning of the term “subsidy”— financial assistance given by one to another.5 The ’516 patent’s use of “subsidy” is consistent with its ordinary meaning. Specifically, the ’516 patent describes an advertiser setting up a subsidy program to subsidize communication fees, offer product discounts, generate and accumulate “reward points” for subscribers, or mitigate or defer other expenses of the subscriber. Ex. 1001, 3:21–27 (referring to Fig. 2). These examples are financial in nature. Product discounts reduce the monetary cost of a financial transaction, reward points are a form of currency, and mitigating or deferring expenses reduces the monetary cost of a financial transaction or postpones the monetary cost of a financial transaction, respectively. Also, the ’516 patent describes, as part of a subscriber setup process, an intermediary presenting, to a subscriber for selection, “subsidy programs 5 AMERICAN HERITAGE DICTIONARY 896 (3d ed. 1992) (defining “subsidy” as “1. Monetary assistance granted by a government to a person or group in support of an enterprise regarded as being in the public interest. 2. Financial assistance given by one person or government to another.”). available, including the criteria for continued subsidy and levels of subsidy.” Ex. 1001, 4:41–43 (referring to Fig. 3). For these reasons, in the Decision to Institute, the Board construed “subsidy” as “financial assistance given by one to another.” Dec. 7–9. Neither party challenges this construction. Having considered whether the construction set forth in the Decision to Institute should be changed in light of evidence introduced during trial, we are not persuaded any modification is necessary. Therefore, we maintain the construction of “subsidy” as “financial assistance given by one to another.”” slip op. at 7
- BurdenNot shown unpatentable
“The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). 1. Whether the Ratsimor Paper Was Publicly Accessible in November 2003 Although Petitioner does provide some evidence to support its position, after considering all of the evidence regarding the facts and the circumstances surrounding the public accessibility of the Ratsimor paper, in view of the relevant case law, we determine that Petitioner has not met its burden of showing that the Ratsimor paper was publicly accessible in November 2003.” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable
“The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). 1. Whether the Ratsimor Paper Was Publicly Accessible in November 2003 Although Petitioner does provide some evidence to support its position, after considering all of the evidence regarding the facts and the circumstances surrounding the public accessibility of the Ratsimor paper, in view of the relevant case law, we determine that Petitioner has not met its burden of showing that the Ratsimor paper was publicly accessible in November 2003.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“1. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371. Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior art reference is read from the perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”).” slip op. at 24
Patent outcomesUS 7,664,516 mixedClaim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 7,664,516 - Groupon, Inc. v. Blue Calypso, LLCNo claims unpatentablePTAB · Dec 17, 2014 · CBM2013-00044 · APJ Barbara A Benoit · CBM · Final written decision
Claims 4-9 were not shown unpatentable because Ratsimor was not established as prior art; cancellation of claims 1-3 and 10-13 was granted.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We construe the terms “incentive program,” “incentive,” and “incentivizing” in accordance with these principles.” slip op. at 9
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“C. Patent Owner’s Motion to Amend Patent Owner’s Motion to Amend (Paper 18) is before us for consideration. In the motion, Patent Owner requests cancellation of claims 1-3 and 10-13 of the ’646 patent. The cancellation of these claims is not based on any contingency. There is no indication, for example, that claims 1-3 and 10-13 should be cancelled only if the claims are determined unpatentable. Rather, the Motion to Amend leaves no doubt that Patent Owner unequivocally requests cancellation of claims 1-3 and 10-13. For these reasons, we grant Patent Owner’s request to cancel claims 1-3 and 10-13 of the ’646 patent. Because Patent Owner requested cancellation of claims 1-3 and 10-13, not based on any contingency, Patent Owner has waived any issues with respect to claims 1-3 and 10-13, and, therefore, we need not address the patentability of those claims.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable
“prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009).” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“3. The Ratsimor Paper Is Not Prior Art For the foregoing reasons, we determine that Petitioner has not demonstrated, by a preponderance of the evidence, that the Ratsimor paper is a printed publication within the meaning of 35 U.S.C. § 102(b) and, therefore, the Ratsimor paper is not prior art to the claims of the ’646 patent. Therefore, Petitioner may not rely upon the Ratsimor paper for its asserted grounds of patentability under 35 U.S.C. § 103(a). Accordingly, we conclude that Petitioner has not demonstrated that (i) claims 4 and 5 would have been obvious over the Ratsimor paper and Paul, (ii) claims 6-8 would have been obvious over the Ratsimor paper, Paul, and Kitaura, or (iii) claim 9 would have been obvious over the Ratsimor paper, Paul, Hall, and MacEachren.” slip op. at 23
Patent outcomesUS 8,452,646 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,452,646 - Groupon, Inc. v. Blue Calypso, LLCSome claims unpatentablePTAB · Dec 17, 2014 · CBM2013-00033 · APJ Barbara A Benoit · CBM · Final written decision
Claims 7-16 and 23-27 are unpatentable as anticipated by Paul; claims 1-6 and 17-22 were not shown unpatentable because Ratsimor was not a publicly accessible printed publication.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“endorsement.” In proffering constructions, neither party provides sufficient evidence of the ordinary meaning of “bi-lateral” or “endorsement.” We determine the ordinary meaning of the terms “bi-,”7 “lateral,”8 and “endorsement”9 collectively mean “both sides giving approval.” The use of “bi-lateral endorsement” in independent claims 7 and 23 indicate that an endorsement occurs between two parties, a subscriber and an advertiser, which is consistent with its ordinary meaning of “both sides giving 7 AMERICAN HERITAGE DICTIONARY 181 (3d ed. 1992) (defining “bi-” as “1. a. Two . . . b. Both . . . c. Both sides, parts, or directions”). 8 AMERICAN HERITAGE DICTIONARY 1017 (3d ed. 1992) (defining “lateral” as “1. Of, relating to, or situated at or on the side”). 9 AMERICAN HERITAGE DICTIONARY 608 (3d ed. 1992) (defining “endorse” as “4. To give approval of or support to, especially by public statement”); id. (defining “endorsement” as “1. The act of endorsing”). 11 approval.” The ’679 patent provides an example of a bi-lateral endorsement in Figure 7a, which describes a bi-directional endorsement process between the subscriber and the advertiser, via an intermediary, during the enrollment process. Ex. 1001, col. 7, ll. 56-58. As part of an enrollment process, the advertiser decides whether to endorse a particular subscriber. Id. at col. 8, ll. 47-48. The bi-lateral endorsement is completed after the subscriber chooses at least one plan and one advertiser for endorsement. Id. at col. 8, l. 66 – col. 9, l. 3. The ’679 patent also describes examples of endorsement by an advertiser of a subscriber and endorsement by a subscriber of one or more advertisers. See id. at col. 3, ll. 39-65, col. 4, ll. 59-65. The use of bilateral endorsement in the ’679 patent is consistent with its ordinary meaning of “both sides giving approval.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“We agree. In general, a preamble is construed as a limitation “if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). When the limitations in the body of the claim “rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). Notably, the preamble of independent claim 7 requires “a source communication device possessed by a subscriber,” “a destination communication device possessed by a recipient,” and “an advertisement.” The body of claim 7 recites “the source communication device,” “the subscriber,” “the destination communication device,” and “the 18 advertisement,” all of which rely on and derive antecedent basis from the preamble of claim 7. Similarly, the preamble of independent claim 23 recites “a first communication device,” “a second communication device,” and “a set of advertisers.” The body of claim 23 recites “the first communication device,” “the second communication device,” and “the set of advertisers.” Accordingly, we conclude that the preambles of independent claims 7 and 23 are entitled to patentable weight.” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable
“As an initial matter, we note that there are gaps in Petitioner’s proffered evidence—foremost is Dr. Joshi’s lack of indication that the Ratsimor paper was downloaded or otherwise disseminated, or how persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, could locate the Ratsimor paper on the Departmental website or otherwise locate an issued Technical Report in November 2003. 25” slip op. at 25
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the above disclosures of Paul, we find that the direct e-mail campaign and a “refer-a-friend” campaign are not different methods, but are different tool options provided by the campaign manager computer program in the e-mail communications system disclosed by Paul. Accordingly, as different tool options of the campaign manager in the e-mail communications system, one of ordinary skill in the art would understand that the direct e-mail campaign tool option was to be used in conjunction with the “refer-a-friend” campaign tool option to send “refer-a-friend” e-mail message incentives to a subset of the members based on member demographic characteristics. To determine otherwise would require a finding that one of ordinary skill in the art, when reading Paul, would come to the conclusion that the only option would be to send a “refer-a-friend” e-mail to all members. We do not find that one of ordinary skill in the art would have understood Paul to be so restrictive. Rather, Paul’s disclosure of the campaign manager computer program having multiple tool options to develop marketing campaigns is analogous to a reference disclosing two functions of a word processing program—creating a document and saving a document. One skilled in the art would understand the word processing program reference to disclose how to use those functions together to create and save a document.14 Cf. Transcript 67:9 – 68:11.” slip op. at 37
Patent outcomesUS 8,155,679 mixedClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 8,155,679 - Toyota Motor Corporation v. American Vehicular Sciences LLCAll claims unpatentablePTAB · Dec 5, 2014 · IPR2013-00416 · APJ Barbara A Parvis · IPR · Final written decision
Claims 1, 4–10, 17, and 18 are unpatentable as anticipated by Probst and obvious over Scholl and Probst.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“AVS’s arguments are based in part on an improper limiting of the term “patterns” to exclude trends. We construe the term “pattern” to aid in the evaluation of the arguments presented by AVS regarding Scholl. The specification of the ’501 patent uses the term “pattern” in its description of pattern-recognition technology. In particular, according to the ’501 patent specification, detection of patterns is performed on time series data emitted by the sensors. Ex. 1001, 16:18–24. The ’501 patent specification describes various patterns that pattern recognition technology detects. For example, the ’501 patent specification states “[i]n some cases, the frequencies present in a set of data are a better predictor of component failures than the data itself.” Ex. 1001, 16:54–55 (emphasis added). Additionally, according to the ’501 patent specification, “[i]t is worth emphasizing that in many cases, it is the rate that a parameter is changing that can be as or more important that the actual value in predicting when a component is likely to fail.” Id. at 14:34–37 (emphasis added). Furthermore, the ’501 specification states: “[t]he pattern recognition algorithm thereby detects trends or patterns in the time series received from the sensors.” Ex. 1001, 18:29–30 (emphasis added). As used in the ’501 patent specification, therefore, “pattern” is a frequency of occurrences of certain data present in a set of data, a rate of change of data, or a trend of data. For the reasons discussed above, we construe “pattern” as a frequency of occurrences of certain data present in a set of data, a rate of change of data, or a trend of data. 3.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“AVS’s contention is inconsistent with the specification of the ’501 patent. In particular, the ’501 patent contemplates that prediction of a failure of one of the components or subsystems encompasses failures due to the manner in which the operator is operating the vehicle, or driver error. Ex. 1001, 15:38–40. One example provided in the ’501 patent is predicting accelerated failure due to a driver driving at a speed higher than appropriate for a low gear. Id. at 15:38–44. As an additional example, the ’501 patent specification describes predicting a rollover due to high speed. Id. at 26:21– 25. The ’501 patent describes a further exemplary failure that occurs because of how an operator operates a vehicle, by stating “a failure mode can be designed into the mechanism [to enable a restorable system] . . . when the tire goes flat as, for example, when a nail [] punctures the tire.” Id. at 76:19–23. A nail puncturing a tire is often due to a driver driving over a nail. AVS’s contention also is inconsistent with other language recited in claim 1. In particular, claim 1 recites, “whereby a breakdown of the vehicle that might occur if the predicted failure of the component were to occur is thereby avoided” (emphasis added). According to claim 1, breakdown of a vehicle is a possibility, but not a certainty when a component fails. AVS does not describe persuasively how one of ordinary skill in the art would understand what types of functions are “normal” in the context of the claim and the ’501 patent specification. The exemplary failures described in the ’501 patent specification, such as a vehicle rollover or a flat tire, are simply states of inability of a component, a wheel or a tire, respectively, to perform a function that the component was designed to do.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Whether Probst Meets the Limitations of Claims 1, 6–8, 17, and 18 Toyota’s claim charts persuasively read all elements of each of claims 1, 6–8, 17, and 18 onto the disclosure of Probst. Pet. 27–34 (citing Ex. 1003, Abstract, 1:10–29, 1:45–54, 1:67–2:29, 2:42–48, 3:9–15, 4:25–68, 5:30–37, 6:6–15, Fig. 1). For instance, claim 1 recites a method for predicting impending failures. As Toyota correctly asserts, Probst is directed to a process for determining the operating condition of a vehicle, including “imminent critical operating conditions.” Pet. 25-26 (citing Ex. 1003, Abstract). Additionally, claim 1 requires analyzing detected patterns in obtained sensor data to create a prediction of an impending failure of one of the components or subsystems. Toyota correctly notes that Probst’s diagnostic process entails generating a pattern based on sensor signals and comparing this pattern with preset patterns to determine when the limit pattern for a critical operating condition is approached. Id. at 26 (citing Ex. 1003, Abstract; col. 1, ll. 36-54; col. 2, ll. 24-30; col. 4, ll. 62-68; col. 5, ll. 22-59; col. 6, ll. 19-29). Exemplary sensor data that is monitored includes a pressure sensor that determines loading of a chassis spring of the motor vehicle. Id. at 28 (citing Ex. 1003, 1:67–2:7). Regarding recitation in claim 1 of informing the user about the predicted failure, Toyota also correctly notes that Probst describes warning a user of the vehicle. Pet. 26, 31-32 (citing Ex. 1003, col. 1, ll. 24-29; col. 2, ll. 42-46; col. 4, ll. 62-68).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Whether Toyota Has Satisfied the Requirements for Combining Scholl and Probst As indicated above, we determine that Toyota has articulated sufficient reasoning with a rational underpinning as to why one of ordinary skill in the art would combine the technique of directing predicted failure information through a satellite transceiver, as described in Scholl, into the failure prediction system of Probst. See KSR, 550 U.S. at 398. Additionally, in light of the contentions and evidence presented by Toyota, we find that modifying Probst’s disclosure of indicating to the user of the vehicle when the vehicle approaches a critical condition with Scholl’s disclosure of transmitting indications of faults to a remote location is no more than a predictable use of familiar prior-art elements according to their established functions, therefore rendering the recited invention obvious. See KSR, 550 U.S. at 417. In particular, Toyota relies on the declaration of its expert, Mr. Andrews, who states that one of ordinary skill in the art at the time of the invention would have been motivated to use Scholl’s satellite transceiver with Probst’s failure prediction system. Pet. 42 (citing Ex. 1007 ¶¶ 121–24). Mr. Andrews states that Scholl explains that transmissions to dealers, manufacturers, and owners allow for maintenance, generation of repair instructions, or the development of future diagnostics and prognostics by a vehicle manufacturer. Ex. 1007 ¶ 122 (citing Ex. 1002, 1:12–18, 2:58–68, 6:55–60). Mr. Andrews also states that one of ordinary skill in the art would have understood in June 1995 that Probst’s warning measures could extend to transmission of information relating to predicted failures to remote entities. Id. ¶ 124. We find that the testimony of Toyota’s expert is consistent with the disclosure of Scholl and Probst. For example, Mr. Andrew’s testimony regarding Scholl’s explanation of benefits for transmitting to dealers, manufacturers, and owners is consistent with the disclosure of Scholl. See, e.g., Ex. 1002, 6:56–60 (“[T]he present invention provides a method for relaying information between a vehicle and a remote location . . . [that] is used to perform diagnostics and prognostics, to generate repair instructions, and in the development of future diagnostics and prognostics.”). Additionally, we credit Mr. Andrews’s testimony (Ex. 1007 ¶ 124) because modifying Probst’s disclosure of warning measures (Ex. 1003, 4:62–68) with Scholl’s disclosure of transmitting indications of faults to a remote location (Ex. 1002, 4:8–26) is no more than a predictable use of familiar prior art elements according to their established functions, therefore rendering the recited invention obvious. See KSR, 550 U.S. at 417.” slip op. at 22
Patent outcomesUS 8,019,501 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,019,501 - Toyota Motor Corporation v. American Vehicular Sciences LLCAll claims unpatentablePTAB · Nov 12, 2014 · IPR2013-00415 · APJ Barbara A Parvis · IPR · Final written decision
Claims 1, 2, 5, 7, 9, 13, 15, and 18 are unpatentable: claims 1, 2, 5, 7, 9, 13, and 15 as anticipated by Asano; claims 1, 2, 5, 13, and 15 by Scholl; claim …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“acted as his own lexicographer and coined a new meaning for the term “automatically” different from the ordinary and customary meaning as would be understood by one with ordinary skill in the art. Regarding the portion of the ’210 patent specification cited by AVS, as an initial matter, AVS misquoted the text of the ’210 patent specification at column 112, lines 24 through 31. See Ex. 1001, 112:24–31. Nevertheless, AVS’s quoted ’210 patent language, both as quoted by AVS and as it is in the ’210 patent, does not appear to be in the form of a definition. Rather, the text is a portion of the description of preferred embodiments. AVS contends that AVS’s construction is consistent with the purpose of the invention of the ’210 patent, which is to notify the dealer so that corrective action may be taken to prevent vehicle breakdown. PO Resp. 16– 17. However, “[t]he name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Stated objectives and preferred embodiments are not read automatically into claims.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Despite AVS’s argument, we are not persuaded that the disclosure Toyota points to in Asano (Pet. 21–23 (citing Ex. 1003, 2:12–15, 2:25–30, 3:10–11, 5:41–46, 6:14–47, 8:65–9:14, Figs. 1, 6)) is not disclosure of a determination of whether any component “is operating non-optimally, is expected to fail, or has failed,” as recited in claim 1. Asano describes that CPU 7 of vehicle mounted computer 105 “carries out computations based on the above mentioned operating condition signals in accordance with multiple programs stored in ROM 21.” Ex. 1003, 6:43–47. The operating condition signals referred to by Asano are received from sensors, which sense “engine operating conditions.” Id. at 6:20–21. Asano describes exemplary sensors that sense operating conditions of the engine and other components of a vehicle including “engine cooling water temperature (TWS) 32,” “air/fuel ratio (O2S) 34,” “[b]attery voltage,” and “throttle valve opening and rotation speed.” Id. at 6:20–24; see also id. at 2:25–30 (“the vehicle mounted station detected operating conditions are performed . . . to detect at least one of water temperature, air flow ratio air fuel quantity, battery voltage, throttle valve opening angle, engine speed, transmission gear position and suspension setting.”). AVS does not focus on that part of Asano’s disclosure, identified and explained in the Petition, which describes a basic diagnosis performed onboard a vehicle using engine operating conditions such as the temperature of the engine cooling water, the ratio of air to fuel, the battery voltage, and the rotation speed of the engine. Pet. 21–23 (citing Ex. 1003, 2:12–15, 2:25–30, 3:10–11, 5:41–46, 6:14–47, 8:65–9:14, Figs. 1, 6). Rather, AVS acknowledges that Asano discloses a “basic abnormal diagnosis” and “abnormal codes” and then AVS discusses what these “could be” (PO Resp. 21–22) in absence of Asano’s description of performing computations using engine operating conditions (Ex. 1003, 6:14–47). Nonetheless, even if AVS is correct that Asano’s engine operating conditions could be considered to be parameters and Asano’s computations are to see if these parameters are outside a preset range, determining that a parameter, such as one of those disclosed in Asano relating to engine operating conditions, is outside of a preset normal range is at least a determination of whether any of the components is operating non-optimally, as recited in claim 1. AVS cites to the Declaration of Mr. Lawrence Kennedy (Ex. 2002). Mr. Kennedy states that Asano’s basic abnormal diagnosis “could mean that the sensor is picking up some abnormality in the system that it is sensing.” Id. ¶ 67. Mr. Kennedy further states, for example, if a vehicle hits ice and its wheels spin faster, the vehicle speed sensor may detect an abnormal speed. Id. ¶ 68. Mr. Kennedy, however, does not explain persuasively why in his example he concludes that determining that the wheels of a vehicle are spinning abnormally fast is not an indication that the wheels are operating non-optimally. Mr. Kennedy also does not explain persuasively how he arrives at his opinion in light of the computations performed by CPU 7 based on the engine operating condition signals disclosed in Asano (Ex. 1003, 6:14–47). Notwithstanding the counter-arguments in AVS’s Patent Owner Response, which we have considered fully, we are persuaded that Toyota has shown, by a preponderance of the evidence, that Asano discloses, “a diagnostic system arranged on the vehicle to determine whether any of said components is operating non-optimally, is expected to fail or has failed and generate an output indicative or representative of the determination of the non-optimal operation, expected failure or actual failure of any of said components,” as recited in claim 1. We additionally are persuaded that Toyota has shown, by a preponderance of the evidence, that claim 1 is unpatentable as anticipated by Asano.” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“2. Assertion of Scholl as Prior Art Under 35 U.S.C. § 102(a) or, Alternatively, Under 35 U.S.C. § 102(e) Regarding Toyota’s assertion of Scholl as prior art under 35 U.S.C. § 102(a) or, alternatively, under 35 U.S.C. § 102(e), on the face of Scholl is an issue date of March 21, 1995. Ex. 1002. Scholl also indicates that the patent was granted from an application that was filed in the United States on December 22, 1992. Id. AVS claims a priority date of June 7, 1995 for the ’210 patent. Prelim. Resp. 2. AVS has not submitted evidence of conception earlier than June 7, 1995. Based on this record, Toyota has established by a preponderance of the evidence that Scholl issued in the United States before the invention by AVS and, therefore, is prior art under 35 U.S.C. § 102(a). Additionally, based on this record, Toyota has established by a preponderance of the evidence that Scholl was granted on an application filed in the United States before the invention by AVS and, therefore, is prior art under 35 U.S.C. § 102(e).” slip op. at 25
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Toyota’s statement that nothing in Corwin states that the connection is uni-directional is not sufficient to show that Corwin discloses the limitation of claim 18. Additionally, the description of the “AFRS fault warn output,” which Toyota and Toyota’s expert rely on, does not describe displaying the AFRS output or sending it to EICAS 21 or another display. Toyota argues that the EICAS display is “intended to provide information to the pilot and crew” and depriving the crew of this information would be “silly.” Reply 14. Toyota and Toyota’s expert, however, acknowledge two possibilities: displaying information and relaying it to the crew by warning lights and aural warnings. Id.; Ex. 1011 ¶ 109. Toyota has not shown that the AFRS fault output necessarily would be displayed on a display in the vehicle in a position to be visible from the passenger compartment, as recited in claim 18. Toyota states that AVS presents a convoluted argument regarding Figure 3 of Corwin. Reply 14. The statements of AVS’s expert, however, are consistent with Corwin’s description of the benefits of transmitting data to the ground. For instance, Corwin describes the invention as follows, “[t]he invention relates to fault reporting and, more particularly to an aircraft maintenance scheduling system by which fault-related data onboard an operational aircraft is processed through a communications channel to a ground terminal.” Ex. 1006, 1:4–8; see also id. at 5:40–45 (“Purpose of Equipment” is to “suppl[y] fault outputs when failures are detected to the ACARS for transmission to ground-based maintenance operations.”). In light of the Declaration by AVS’s expert, Dr. Young, we cannot determine that Toyota has shown by a preponderance of the evidence that Figure 3 of Corwin illustrates bi-directional communication including transmission from AFRS to EICAS for display. Toyota’s expert does not specifically refer to Figure 3. Toyota’s expert, additionally, does not explain sufficiently his evidentiary basis for saying one of ordinary skill in the art would have understood that the AFRS fault output would have been displayed, in light of the disclosure of Corwin. See 37 C.F.R. § 42.65(a). We, therefore, conclude that Toyota has not provided sufficient evidence showing that Corwin describes “arranging a display in the vehicle in a position to be visible from the passenger compartment; and displaying the output indicative or representative of the failure or expected failure of any of the components on the display,” as recited in claim 18. For the foregoing reasons, Toyota has not established by a preponderance of the evidence that claim 18 is anticipated by Corwin.” slip op. at 33
Patent outcomesUS 7,650,210 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,650,210 - PTAB · Oct 8, 2014 · IPR2014-00284 · APJ Barbara A Benoit · IPR · Adverse judgment
The Board granted Lifeport Sciences’ request for adverse judgment after it disclaimed claims 1-3, 9-18, 23, 27-31, and 33-35.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“The Board construes disclaimer of all claims at issue in a trial as a request for adverse judgment. 37 C.F.R. § 42.73(b)(2). Because Lifeport Sciences has disclaimed all claims at issue in this proceeding, entry of judgment against it is appropriate. Accordingly, it is ORDERED that Lifeport Sciences’ request for judgment against itself with respect to claims 1-3, 9-18, 23, 27-31, and 33-35 of U.S. Patent No. 5,562,728 is granted;” slip op. at 2
NonePatents in suitUS 5,562,728 - PTAB · Aug 11, 2014 · IPR2014-00760 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties have requested that these trial proceedings be terminated pursuant to a settlement. On August 6, 2014, the Board authorized2 the parties to file a Joint Motion to Terminate these proceedings along with a true copy of any and all settlement agreements between them related to the patent at issue. The parties filed in each case a Joint Motion to Terminate3 in accordance with 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72. The parties also filed in each case a Joint Motion to Treat the Parties’ Settlement Agreement as Business Confidential4 pursuant to 35 U.S.C. § 317(b) and Rule 42.74. The settlement agreement5 purports to settle matters between the parties with respect to each of the patents at issue in this inter partes review. Each of the captioned inter partes reviews is in its preliminary stage. A decision on the respective Petitions6 has not yet been rendered. The parties have identified the following USPTO proceedings that are pending.” slip op. at 2
NonePatents in suitUS 8,048,032 - PTAB · Aug 11, 2014 · IPR2014-00763 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties under the settlement, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“ORDER It is, therefore, ORDERED that the joint motions to terminate these proceedings are GRANTED and the proceedings are hereby terminated as to all parties including, Petitioners and Patent Owner; and FURTHER ORDERED that the parties’ joint requests that the settlement agreement, as filed in each case, be treated as business confidential information and kept separate from the file of the involved patent under the provisions of to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are GRANTED.” slip op. at 4
NonePatents in suitUS 8,292,850
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.