- 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 Corp. v. Leroy G. HagenbuchAll claims unpatentablePTAB · Dec 5, 2014 · IPR2013-00483 · APJ Jeremy M Plenzler · IPR · Final written decision
Claims 1–3, 5–8, 18–20, and 22–25 are unpatentable as obvious over Aoyanagi and Oishi, and independently over Aoyanagi and Vollmer.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“SUMMARY Petitioner has demonstrated, by a preponderance of the evidence, that claims 1–3, 5–8, 18–20, and 22–25 are unpatentable as obvious over the combination of Aoyanagi and Oishi, and that claims 1–3, 5–8, 18–20, and 22–25 are unpatentable as obvious over the combination of Aoyanagi and Vollmer. This is a final written decision of the Board under 35 U.S.C. § 318(a). IV. ORDER For the reasons given, it is ORDERED that claims 1–3, 5–8, 18–20, and 22–25 of the ’917 patent are unpatentable.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“the vehicle in response to detecting the collision” limitation from claim 1, Petitioner cites Oishi as teaching this limitation. Pet. 10, 14. We have reviewed, and are persuaded by, Petitioner’s contentions regarding the teachings of Oishi. Petitioner reasons that one skilled in the art would have combined the teachings of Oishi with Aoyanagi because both references are directed to an apparatus installed on a vehicle to address collisions (id. at 8), and “Oishi teaches that automatically sending a distress signal upon detection of an accident facilitates the handling of the accident and the treatment of injured persons” (id. at 11 (citing Ex. 1005 (633:2:25–27)). Petitioner further reasons that one skilled in the art would have combined the teachings of the references based on Oishi’s discussion of “significant improvements in emergency response times” and “reduc[ing] traffic jams” based on the automatically generated distress signal being included with an accident detection apparatus. Id. (citing Ex. 1005, 633:2:20–25, 27–29). Patent Owner does not dispute Petitioner’s contentions regarding the teachings of Oishi, which we find persuasive as noted above, but challenges Petitioner’s rationale for combining Oishi’s teachings with Aoyanagi. PO Resp. 32–39. Patent Owner argues that: (1) the references would not have been combined because the references detect accidents in different ways (id.); (2) the references have different functions (id. at 35–36); (3) Oishi is not designed to preserve data (id. at 36); and (4) Petitioner’s reason to combine the references is based solely on Oishi’s distress signal functionality, without any reference to the event data monitoring or storage features of either Aoyanagi or the claims (id. at 36–39). Oishi describes “an apparatus which can automatically notify an automobile accident after obtaining the impact force of the accident.” Ex. 1005, 634:1:3–5. As Petitioner contends (Pet. 8, 11), and Patent Owner acknowledges (PO Resp. 35), both Aoyanagi and Oishi are directed to accident detection, with Oishi providing the additional benefit of automatic accident notification. We are persuaded that one skilled in the art would have combined the automatic distress signal from the accident detection system of Oishi with Aoyanagi’s accident detection system based on the benefits cited by Petitioner, discussed above, regardless of whether the systems of Aoyanagi and Oishi detect accidents in different ways.” slip op. at 11
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Furthermore, Patent Owner has not even attempted to show a nexus between any sales and the merits of the claimed invention. Although Patent Owner references several claim limitations, there is no explanation as to how these limitations are related to the alleged commercial success of the claimed invention other than simply alleging that the limitations are present in Toyota’s 12EDR device. See PO Resp. 40–42. For example, Patent Owner simply alleges that “vehicles equipped with Toyota’s 12EDR system in combination with Safety Connect systems are covered by at least claims 1–3, 5–7, 18–20 and 22–24 of the ‘917 Patent.” Id. at 42 (emphasis added). Patent Owner’s general allegation of “a strong nexus between Toyota’s sales of EDR/ACN-equipped vehicles and the claims of the ’917 Patent” because “[a]bsent infringement of at least claims 18 and 24 of the ’917 Patent, Toyota would be unable to equip its vehicles with both an event data recorder compliant with the EDR Regulations and the automatic collision notification functionality of its Safety Connect system” (id. at 43) is also unpersuasive. Initially, we note that Petitioner disputes Patent Owner’s claim that Toyota infringes claims 18 and 24 of the ’917 patent. Pet. Reply 13. We further note that, in this proceeding, Patent Owner has not established the alleged infringement. Nevertheless, “[e]vidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). To show how commercial success supports nonobviousness, Patent Owner must prove that the sales were a direct result of the unique characteristics of the invention, and not a result of economic and commercial factors unrelated to the quality of the patented subject matter. Applied Materials, 692 F.3d at 1299–1300. Patent Owner, however, fails to provide sufficient proof of such a relationship between any alleged sales and the unique characteristics of the invention. As Petitioner notes, any alleged commercial success could be due to the automatic collision notification feature (Toyota’s “Safety Connect” system), rather than the other limitations recited in the claims. Pet. 13. Patent Owner does not dispute that automatic collision notification systems were known in the art. See PO Resp. 11–13, 39–44. If the feature that created the commercial success was known in the prior art, the success is not pertinent to the issue of obviousness. Galderma Laboratories, L.P. v. Tolmar, Inc., 737 F.3d 731, 740 (Fed. Cir. 2013).” slip op. at 18
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successNot shown unpatentableDecided for petitioner
“Patent Owner simply cites to the sales price of Toyota’s subscription service as commercial success. Id. at 42 (citing Ex. 2050). That does not establish “commercial success” as objective evidence of nonobviousness. Patent Owner does not provide information regarding sales volume or market share information as compared to providers of competing products. Even the number of units sold, without market share information, is only weak evidence, if any, of commercial success. See In re Applied Materials, Inc., 692 F.3d 1289, 1299. (Fed. Cir. 2012). Furthermore, Patent Owner has not even attempted to show a nexus between any sales and the merits of the claimed invention. Although Patent Owner references several claim limitations, there is no explanation as to how these limitations are related to the alleged commercial success of the claimed invention other than simply alleging that the limitations are present in Toyota’s 12EDR device. See PO Resp. 40–42. For example, Patent Owner simply alleges that “vehicles equipped with Toyota’s 12EDR system in combination with Safety Connect systems are covered by at least claims 1–3, 5–7, 18–20 and 22–24 of the ‘917 Patent.” Id. at 42 (emphasis added). Patent Owner’s general allegation of “a strong nexus between Toyota’s sales of EDR/ACN-equipped vehicles and the claims of the ’917 Patent” because “[a]bsent infringement of at least claims 18 and 24 of the ’917 Patent, Toyota would be unable to equip its vehicles with both an event data recorder compliant with the EDR Regulations and the automatic collision notification functionality of its Safety Connect system” (id. at 43) is also unpersuasive. Initially, we note that Petitioner disputes Patent Owner’s claim that Toyota infringes claims 18 and 24 of the ’917 patent. Pet. Reply 13. We further note that, in this proceeding, Patent Owner has not established the alleged infringement. Nevertheless, “[e]vidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). To show how commercial success supports nonobviousness, Patent Owner must prove that the sales were a direct result of the unique characteristics of the invention, and not a result of economic and commercial factors unrelated to the quality of the patented subject matter. Applied Materials, 692 F.3d at 1299–1300. Patent Owner, however, fails to provide sufficient proof of such a relationship between any alleged sales and the unique characteristics of the invention.” slip op. at 17
Patent outcomesUS 8,014,917 unpatentable§ 103 obviousnesscites PhillipsPatents in suitUS 8,014,917 - PTAB · Nov 19, 2014 · IPR2014-00300 · APJ Michael W Kim · IPR · Order
The Board granted the parties’ joint motions and terminated the proceeding after settlement, before a final decision on the merits.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedOther
“Petitioner filed a Petition on December 26, 2013, and Patent Owner filed a Preliminary Response to the petition on April 14, 2014. The Board instituted inter partes review on July 9, 2014. Patent Owner filed a Patent Owner Response on September 10, 2014, but Petitioner has not yet filed a Reply. This proceeding has not resulted in a final decision on the merits.” slip op. at 3
NonePatents in suitUS 7,254,621 - PTAB · Nov 19, 2014 · IPR2014-00299 · APJ Michael W Kim · IPR · Order
The Board granted the parties’ joint motions and terminated the instituted IPR after settlement, before deciding the merits.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The requirement for terminating review with respect to Petitioner is met. Under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” SAP America is the sole petitioner in this review. The Board has discretion to terminate this review with respect to Clouding IP as Patent Owner.” slip op. at 2
NonePatents in suitUS 6,925,481 - Polaris Wireless, Inc. v. Trueposition, Inc.All claims unpatentablePTAB · Nov 3, 2014 · IPR2013-00323 · APJ Michael W Kim · IPR · Final written decision
Claims 111–114 are unpatentable as anticipated by Zell and obvious over Abbadessa and Havinis.
RulingsFinal written decision- Skill levelOther
“Similarly, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). A prima facie case of obviousness is established when the prior art itself would appear to have suggested the claimed subject matter to a person of ordinary skill in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). The level of ordinary skill in the art may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“A. Claim Construction In an inter partes review, claim terms in an unexpired patent are interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). 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 disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“The following procedures are used for location triggering by the Radio Network Monitor (RNM) and/or Link Monitoring System (LMS). A trigger for wireless location consists of a transaction and a filter. If a transaction occurs and the filtering matches, then a location trigger is generated. Each procedure contains the messaging needed for determination if a potential location-triggering event has occurred. The description of each message includes the fields for filtering by the preset rules for positive determination of the occurrence of a location trigger. Ex. 1001, 13:6–15 (emphases added). Any of the above-described three types of triggers can be set to cause (trigger) a location estimation procedure. Ex. 1001, 22:64–66. The Specification then discloses the following concerning the content of a trigger: Advanced triggers allow for radio or network events (corresponding to specific messages or groups of messages detectable by the LMS 11 or RNM 82) to generate high and low accuracy location estimates. A triggering event, one that initiates a location estimation, may be a detection of a particular message or a field within a specific message. Ex. 1001, 26:36–42 (emphases added). Based on the above, we construe “trigger” as “an event, message, message field, or message sequence sufficient to initiate, cause, or task an action related to location-based services.” The “direct” and “but for” requirements in Petitioner’s proposed construction are not necessary to make sense of the claim, and are not required in the context of the Specification. Furthermore, the limiting of “trigger” to “location triggers” is appropriate in view of the fact that “trigger” is disclosed consistently in the Specification as being related to “location,” and does not render superfluous the “initiating” limitation, as a “trigger,” by itself, only need be capable of, but need not actually, “initiate” any action.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
“Ex. 1001, 11:5–27 (emphases added). We discern the following algorithm from the aforementioned portions of claims 113 and 114, and the Specification: (1) passively receive data streams from a set of predefined links such that the operation of said wireless device and said wireless communications system is unaffected; and (2) scan or search the data streams for data of interest, such as particular messages or data fields within messages. Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (the algorithm may be expressed in “any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure” (citations omitted)). Accordingly, we construe the recited “means for monitoring” as corresponding to a computer that implements the aforementioned algorithm.” slip op. at 15
Patent outcomesUS 7,783,299 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,783,299 - PTAB · Oct 16, 2014 · CBM2013-00056 · APJ Michael W Kim · CBM · Order
The Board granted the parties’ joint motion and terminated the proceeding as to all parties without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 327(a), “[a] post-grant review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The requirement for terminating review with respect to Petitioner is met. Under 35 U.S.C. § 327(a), “[i]f no petitioner remains in the post-grant review, the Office may terminate the post-grant review or proceed to a final written decision under section 328(a).” Trulia is the sole petitioner in this review. The Board has discretion to terminate this review with respect to Zillow as Patent Owner.” slip op. at 2
NonePatents in suitUS 7,970,674
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.