- Sony Interactive Entertainment LLC v. Quantum Imaging LLCSome claims unpatentablePTAB · Dec 6, 2024 · IPR2023-00954 · APJ James J Mayberry · IPR · Final written decision
Claims 1, 3, 4, and 7–9 are unpatentable over Angles under §103; claims 5 and 6 were not shown unpatentable over Angles.
RulingsFinal written decision- Expert testimonyOther
“prosecution history and the amendment changing “held at” to “accessible at,” testimony upon which Patent Owner relies to support its position. Specifically, Dr. Medvidović testifies that a person having ordinary skill in the art would have understood the two phrases to be synonymous because, 1) the amendment was not made to overcome a prior art reference, 2) the applicant did not make a statement disclaiming that “being accessible at” does not encompass “being held at,” and 3) the examiner did not object to the amendment as exceeding the scope of the Specification. See Ex. 2005 ¶ 34. We find that Dr. Medvidović’s conclusion is not supported by his reasoning. First, an amendment made not to overcome a prior art reference does not mean an amendment that does not change the scope of a claim. An applicant is free to amend a claim at any time during prosecution, even an amendment that may expand the scope of a claim (one made not to overcome a prior art rejection). Second, whether “being accessible at” encompasses “being held at” is not the issue—because the scope of one term encompasses the scope of another term does not make the two terms” slip op. at 26
- ExcludeDenied
“III. MOTION TO EXCLUDE EVIDENCE Patent Owner moves to exclude Exhibits 1017–1020, 1026, and 1027,” slip op. at 83
- Skill levelOther
“B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Accordingly, we conclude that the plain and ordinary meaning of the” slip op. at 27
Patent outcomesUS 8,458,028 mixedClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,458,028 - Hum Industrial Technology, Inc. v. Amsted Rail Company, Inc.Some claims unpatentablePTAB · Aug 7, 2024 · IPR2023-00538 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1, 5–10, 13–18, 20–22, 24, 31, and 32 are unpatentable; claims 2–4, 23, and 25–30 were not shown unpatentable. The revised motion to amend was granted in part and denied in part.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“d. Summary For the above reasons, we determine that Patent Owner has not shown” slip op. at 100
- ExcludeMotion to exclude, deniedOther
“IV. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner seeks to exclude Exhibit 1034 and page 10 of the Reply” slip op. at 86
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“A. “housing” Patent Owner proposes that we construe the term “housing” to mean” slip op. at 15
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“suggested to one skilled in the art, objective evidence of non-obviousness (“secondary considerations”) may lead to a conclusion that the challenged claims would not have been obvious. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Objective evidence of non-obviousness “may often be the most probative and cogent evidence in the record” and “may often establish that an invention appearing to have been obvious in light of the prior art was not.” Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (citation omitted). For us to give substantial weight to objective evidence of nonobviousness, a proponent must establish a nexus between the evidence and the merits of the claimed invention. ClassCo, Inc., v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). Nexus is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining non-” slip op. at 21
Patent outcomesUS 9,365,223 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,365,223 - Ebates Performance Marketing, Inc., D/B/A Rakuten Rewards v. International Business Machines Corp.Some claims unpatentablePTAB · May 24, 2023 · IPR2022-00133 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1, 3–6, 13, and 15–18 are unpatentable as obvious; claims 2, 7–12, and 14 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“consistently’ characterizes a claim term in a particular way, it is proper to construe the claim term in accordance with that characterization.” GPNE, 830 F.3d at 1370. It is also true that “[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction.” Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (internal quotation marks and alteration in original); see also Verizon, 503 F.3d at 1302–03 (“The mere fact that the specification’s examples of translation may involve a change in protocol from a higher to a lower level protocol does not establish that such a limitation should be imported into the claims.”). Thus, the mere fact that the examples in what the Specification clearly identifies as “preferred” embodiments (Ex. 1001, Abstract, 5:1–3, 5:55–59, 6:6–8, 6:67–7:4, 7:23–25) cannot, by themselves, limit the scope of the claims. See Phillips, 415 F.3d at 1323 (noting “we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment”).” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have at least a bachelor’s degree in computer science or a related field, plus at least two years of experience in the design and implementation of graphical user interfaces, and would have familiarity with portal design and portlet technology. Additional education in the fields of computer science and/or human factors, such as a masters or doctorate degree, may serve as a substitute for experience in the field.” Pet. 10 (citing Ex. 1003 ¶ 32). Patent Owner applies Petitioner’s level of ordinary skill in the art for purposes of this proceeding. See PO Resp. 15. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the level of skill reflected by the Specification and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Figure 3 illustrates a plurality of portlets relative to a first sub-tab and Gridsphere2’s Figure 2 illustrates a single portlet relative to a first sub-tab, and that other sub-tabs are illustrated in Gridsphere1 and Gridsphere2, which would include one or more portlets. Ex. 1003 ¶ 141. As Dr. Bederson explains, these tabs define “two or more stacks of portlets.” Id. Dr. Bederson illustrates this with an annotated version of Figure 2 from Gridsphere2 reproduced below. An annotated version of Figure 2 of Gridsphere2 showing a first stack of portlets currently presented and second stack of portlets not currently presented. Ex. 1003 ¶ 141. Dr. Bederson explains that Figure 2 shows “the Administration main tab includes a first stack of portlets, having at least one portlet in the Portlets, Users, and Groups sub-tabs, respectively (highlighted in red).” Id. Dr. Bederson testifies that It is also obvious to a [person of ordinary skill in the art] that the Welcome main tab (highlighted in green) (or the JSR Portlets tab) would also have a plurality of sub-tabs, each with at least one portlet. This defines a second stack of portlets, which second stack of portlets is not currently displayed. Id. We find Dr. Bederson’s testimony to be rational, well-reasoned, and give it substantial weight. Dr. Bederson further persuasively testifies, “[t]o render the portal in” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundMixed
“The motivation-to-combine analysis is a flexible one. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1379 (Fed. Cir. 2023). A motivation to combine may be found “explicitly or implicitly in market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.” ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1371 (Fed. Cir. 2018) (quoting Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)). “[T]he motivation-to-combine 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.’” PACT XPP, 61 F.4th 1380 (citing KSR, 550 U.S. at 418). We find that Petitioner has shown by a preponderance of the evidence that a person of ordinary skill in the art would have been motivated to combine Rose with the GridLab references. See Pet. 64–67; Ex. 1003 ¶¶ 216–223. In particular, we agree with Petitioner and Dr. Bederson that applying Rose’s technique to the GridLab References would have been within the level of skill in the art, and that a person of ordinary skill in the art “would find it beneficial to index the new portlet [being suggested to be added by GridLab], as per Rose, and compare those indexing results to the existing portlets of the user’s portal, and suggest a tab or sub-tab for the new portlet in the user’s portal, or automatically place the portlet in a content-relevant tab or sub-tab in the user’s portal, as per Rose.” Ex. 1003 ¶ 222 (citing Ex. 1004 § 10.1.6 (40); Ex. 1012, 262–64, 267–68). We address Patent Owner’s arguments below.” slip op. at 49
Patent outcomesUS 7,543,234 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,543,234 - Zillow Group, Inc. / Zillow, Inc. et al. v. International Business Machines Corp.Some claims unpatentablePTAB · Mar 3, 2022 · IPR2021-00757 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–3 are unpatentable as anticipated by Linden; Petitioner did not show claims 4–7, 9–17, 19, and 20 unpatentable on the asserted anticipation grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a skilled artisan “would have possessed at least three years of experience in the field of information systems, e-commerce, or Internet marketing,” and “would have had a working knowledge about how to create useful software programs, including familiarity with network database systems.” Pet. 9 (citing Ex. 1005 ¶¶ 18, 21) (Hochman Decl.). Patent Owner agrees with Petitioner’s definition of the level of ordinary skill in the art. PO Resp. 10 We adopt Petitioner’s proposed level of ordinary skill in the art because it appears consistent with the problems addressed in the ’443 patent and the prior art of record.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Petitioner contends that it “analyzed the claims using their plain and ordinary meaning.” Pet. 9. As a result, Petitioner contends that we “need not explicitly construe the terms here.” Id. Patent Owner adopts our “application of the plain and ordinary meaning to the claim terms.” PO Resp. 10. Because there is no dispute that the claims should be analyzed using the plain and ordinary meaning thereof, we apply the plain and ordinary meaning. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1015 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner must show that Bull searches a repository using at least one search result item identified in step 1[a]. For the search result item in step 1[a], Petitioner relies on Bull’s disclosure of a list of data sources located by a search of DataStore 220 disclosed at column 9, lines 11 to 15. See Pet. 50. DataStore 220 contains an index of “[a] theme or definition of a class of information (e.g., central California travel and tourism or new automobiles)” screened for relevance, quality of information and appropriateness. Ex. 1004, 7:10–14. For step 1[b], Petitioner refers to column 4 lines 27–37 where Bull discloses using, inter alia, a user’s looking pattern to search for associated product advertisements. Petitioner relies on Mr. Hochman’s testimony that the user’s looking pattern “may include what the user looked at on the search results page and the content of any search results page selected, and does not consist merely of the search terms used to obtain them.” Pet. 52 (citing Ex. 1005 ¶ 213). The question raised by Patent Owner, based on Dr. Schmidt’s testimony, is whether a skilled artisan would understand that Bull’s user’s looking pattern encompasses the results of a search. See Ex. 2003 ¶ 213 (“The Petition does not explain how a ‘user’s looking pattern’ means ‘search result items.’”); Ex. 1015 274:1–275:3. Mr. Hochman does not cite to any part of Bull to support his testimony that the user’s looking pattern encompasses search result items. See Ex. 1005 ¶ 213. In the Petitioner Reply, Petitioner points to several portions of Bull to support its contention that the user’s looking pattern comprises many things. Pet. Reply 15. The first two citations describe prior art patents not Bull’s system and, thus, are of limited relevance to the scope of Bull’s user looking patterns. Ex. 1004, 2:38–41, 3:1. The citations to column 4 lines 10–11 and 21–22 of Bull relate to information provided to the user but do not specifically address user looking patterns. The final citation to column 5 lines 61–63 is parsed out of context by Petitioner and relates to user queries “unmet” when content is retrieved. In any event, none of the citations to Bull provided by Petitioner in the Reply are directly related to the scope of Bull’s user looking patterns and do not support Petitioner’s argument concerning the scope of Bull’s user looking patterns. Our own review of Bull discloses that Bull specifically describes user” slip op. at 46
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“A claim is anticipated under 35 U.S.C. § 102 “only if each and every element as set forth in the claims is found either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). However, this is not an ipsissimis verbis test, i.e., identity of terminology is not required. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We analyze the asserted grounds based on anticipation in accordance with the above-stated principles.” slip op. at 6
Patent outcomesUS 7,076,443 mixedClaim construction§ 102 anticipationPatents in suitUS 7,076,443 - Zillow Group, Inc. / Zillow, Inc. et al. v. International Business Machines Corp.Some claims unpatentablePTAB · Mar 3, 2022 · IPR2020-01655 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–3 are unpatentable as anticipated by Linden; Petitioner did not show claims 4–7, 9–17, 19, and 20 unpatentable on the asserted anticipation grounds.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“1 Chewy, Inc. filed a Petition seeking review of the same claims challenged in Zillow’s Petition and also a Motion for Joinder with this proceeding. Paper 25, 2. We granted Chewy Inc.’s Petition and Motion for Joinder. Id. at 25.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner agrees with Petitioner’s definition of the level of ordinary skill in the art. PO Resp. 10 We adopt Petitioner’s proposed level of ordinary skill in the art because it appears consistent with the problems addressed in the ’443 patent and the prior art of record.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Patent Owner adopts our “application of the plain and ordinary meaning to the claim terms.” PO Resp. 10. Because there is no dispute that the claims should be analyzed using the plain and ordinary meaning thereof, we apply the plain and ordinary meaning. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1015 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“disclose this limitation, i.e., Linden does not perform word matching, is likewise unavailing because it is premised on an ipsissimis verbis test. We turn to Linden’s disclosure relied on by Petitioner. Linden discloses that “[t]he similar items table 60 could also reflect non-collaborative type item similarities including content-based similarities derived by comparing item contents or descriptions.” Ex. 1003, 9:12–15 (emphasis added). Linden also discloses “if the user is currently searching for books on a particular topic and has added several such books to the shopping cart, this method will more likely produce other books that involve the same or similar topics.” Id. at 3:52–55 (emphasis added). Linden also discloses “the current and/or past contents of a shopping cart can be used to generate recommendations in a system in which mappings of items to lists of similar items are generated from a computer-based comparison of item contents.” Id. at 16:52–56. Linden, thus, explicitly discloses generating recommendations by comparing item contents or descriptions and provides a specific example of matching books involving the same or similar topics. We find this disclosure corresponds to the requirement of step 1[c] of “identifying . . . at least one advertisement . . . having at least one word that matches said . . . search result item.” After considering the evidence cited by Petitioner in light of Patent Owner’s contentions, we find Petitioner establishes that Linden discloses this limitation.” slip op. at 17
Patent outcomesUS 7,076,443 mixedClaim construction§ 102 anticipationPatents in suitUS 7,076,443 - Nested Bean, Inc. v. Big Beings USA Pty Ltd And LB Online & Export Pty Ltd D/B/A Love To Dream Online And ExportsSome claims unpatentablePTAB · Jan 24, 2022 · IPR2020-01234 · APJ Kevin W Cherry · IPR · Final written decision
Claims 2–16 are unpatentable; claims 1, 17, and 18 were not shown unpatentable, principally because the cited combinations did not establish claim 1’s arm-retention limitation.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Generally, a preamble is not limiting.” Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1292 (Fed. Cir. 2015). Whether a preamble is limiting is “determined on the facts of each case in light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history.” Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572–73 (Fed. Cir. 1996). A preamble limits the claimed invention if it recites essential structure or steps, or if it is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). A preamble is not limiting, for example, if the patentee “defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). And, a preamble is generally not limiting unless there is “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art.” Id. A preamble can be limiting if it recites “additional structure or steps underscored as important by the specification,” is “essential to understand limitations or terms in the claim body,” or provides necessary structure absent from the claim body. Id. at 808–09. We agree with Petitioner that the preamble is not a limitation. The term “swaddling suit” is merely a descriptive name for the apparatus that is covered by the claims. IMS Tech, Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000) (Terms in the preamble are not limiting if they “merely give[] a descriptive name to the set of limitations in the body of the claim that completely set forth the invention.”). It is well-established that “[a]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir 1990). For example, in Cochlear Bone Anchored Solutions AB v. Oticon Med. AB, the Federal Circuit held that a statement of intended purpose in the preamble—“for rehabilitation of unilateral hearing loss”—was not limiting, because the claimed apparatus was fully structurally claimed in the body of the claim, and its structure would allow it to function identically whether or not used for its stated intended purpose. See 958 F.3d 1348, 1355 (Fed. Cir. 2020). We find that this is the case here. The bodies of claims 1 and 2 recite structurally complete inventions, which would function identically whether or not they are used for its stated intended purpose. Indeed, if the term “swaddling suit” were replaced by the word “garment,” it would not change the nature of the claim. This interpretation is consistent with the Specification that The invention has been developed primarily for use as a means for swaddling infants for safe sleeping. However, it will be appreciated that the invention is not restricted to this particular use. Ex. 1001, 1:7–10; see also id. at 11:6–11 (the alleged invention “is not restricted to these particular fields of use and it is not limited to particular embodiments or applications described herein”). slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“meaning. But we further agree with Patent Owner that the plain and ordinary meaning for that term is simply “to hold or to keep.” See Ex. 2022. Petitioner’s argument that the Specification uses “retain” to mean that the wing portions are closed, as opposed to having open ends like sleeves reads retain out of context. The portion of the Specification identified by Petitioner states The ends of the wing portions 140 may be open, allowing the hands to extend through the opening end as shown in FIG. 5E. Alternatively, the ends of the wing portions 140 may be closed so that the hands are retained within the wing portions 140 as shown in FIGs. 5C and D. Ex. 1001, 10:3–7 (emphasis added). We do not read this passage as creating a special meaning for “retained,” as Petitioner suggests. Reply 7–8. Petitioner focuses on the portion of this statement that “the ends of the wing portions . . . may be closed so that the hands are retained. . .” to argue that the Specification uses the term “retained” to mean “closed.” However, this argument ignores the end of the sentence that “the ends of the wing portions . . . may be closed so that the hands are retained within the wing portions.” When considered in its full context, we agree with Patent Owner that this passage is consistent with Patent Owner’s construction. See Sur-Reply 11. Indeed, the passage simply uses “retained” in its ordinary sense—i.e., “the ends of the wing portions 140 are closed so that the hands are [held or kept] within the wing portions.” Accordingly, we determine that “retain” has its plain and ordinary meaning, i.e., “to hold or retain.”” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill would have had either formal or informal training in fashion or clothing design with at least 1 year of experience. A person of ordinary skill in the art would likely have had experience designing, producing, or working with clothing for infants, either in a formal or informal setting, including as a new parent or expected parent. Pet. 22–23. Patent Owner does not dispute this definition of a person of ordinary skill. See generally PO Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). E. OVERVIEW OF THE PRIOR ART” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“limitations of claims 1 and 2, including: (a) “a swaddling suit,” (of limitations [1P] and [2P] above), (b) “wing portions extending laterally from a bodice portion” (limitations [1E] and [2E] above), (c) “wing portions” that have “a wing tip at an uppermost portion of each of the wing portions that is positioned above a level of the neck hole of said suit” (limitations [1F] and [2F]), and (d) “wing portions” that “retain an infant’s arm and hand in a hand-raised and elbow-bent position” (limitation [1G]) and “wing portions” that “retain an infant’s arm” (limitation [2G]). PO Resp. 14–29. On the full record and as we explain in detail below, we agree with Patent Owner that Parks fails to disclose “wing portions” that “retain an infant’s arm and hand in a hand-raised and elbow-bent position” (limitation [1G]). iii. Undisputed Limitations With respect to the undisputed limitations, we have reviewed the record and determine that Petitioner has shown by a preponderance of the evidence that Parks discloses limitations [1A]–[1D], [1H], [2A]–[2D], and [2H]. We consider the arguments regarding the disputed limitations below.” slip op. at 28
Patent outcomesUS 9,179,711 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,179,711 - Ykk Corporation v. 3M Innovative Properties Co.Some claims unpatentablePTAB · Sep 13, 2021 · IPR2020-00699 · APJ Matthew S Meyers · IPR · Final written decision
Claims 1–11 and 13–20 are unpatentable as obvious; claim 12 was not shown unpatentable. The revised contingent motion to amend proposing claims 28–30 was denied.
RulingsFinal written decision- BurdenFwd mixedMixed
“Written Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. As explained below, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1–11 and 13–20 of the ’833 patent are unpatentable, but has not shown that claim 12 of the ’833 patent is unpatentable. We also determine that Petitioner has met the burden to show, by a preponderance of the evidence on this trial record that, all the proposed claims in the revised motion to amend, including independent claim 28 and dependent claims 29 and 30, as set forth in Patent Owner’s Revised Contingent Motion to Amend, are unpatentable. Accordingly, for the reasons given below, we conclude that claims 1–11 and 13–20 are unpatentable and should be canceled. Petitioner has also shown by a preponderance of the evidence that all of the proposed substitute claims that are the subject of Patent Owner’s Revised Contingent Motion to Amend are unpatentable.” slip op. at 3
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“RMTA Opp. 2 (emphasis omitted). In fact, the ’833 patent itself provides additional evidence that other differences may affect the resulting shear strength. More particularly, the ’833 patent discloses that “shear performance is unexpectedly improved upon stretching the thermoplastic backing and decreasing its thickness even though the density of the upstanding elements is reduced by half.” Ex. 1001, 16:17–21. For these reasons, and the reasons discussed above in Section II.D.2., we find there is no credible evidence that the alleged unexpected results are attributable to the claimed combination.” slip op. at 112
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In response to Dr. Cakmak’s conclusion that the data in the ’833” slip op. at 39
- Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsObjective indicia no nexusDecided for petitioner
“whether Mr. Kline accounted for how other mechanical fastener parameters13 would affect resulting shear strength, Mr. Kline testified that he either: (1) did not consider the parameter (see, e.g., Ex. 1024, 115:4–8), or (2) considered the parameter but did not discuss it in his declaration (see, e.g., Ex. 1024, 115:9–120:13). We find Mr. Kline’s conclusion regarding “a correlation—or surprising lack thereof” to be conclusory, given that it fails to consider other parameters that may affect shear strength, and as such, insufficient to support Patent Owner’s position. See, e.g., In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (“This court has said previously that mere lawyers’ arguments unsupported by factual evidence are insufficient to establish unexpected results. . . . Likewise, mere conclusory statements in” slip op. at 40
Patent outcomesUS 10,165,833 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,165,833 - Arrows Up, LLC v. Oren Technologies, LLCSome claims unpatentablePTAB · Jan 10, 2020 · IPR2018-01231 · APJ Michael L Woods · IPR · Final written decision
Claims 1, 2, and 4–6 are unpatentable as obvious over Sheesley, with or without Mintz; claim 3 was not shown unpatentable because Sheesley lacks a required conveying-to-a-source limitation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We adopt Petitioner’s proposed level of ordinary skill in the art “because it is consistent with the problems and solutions in the prior art of record.” See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (“Factors that may be considered in determining level of ordinary 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the ’066 patent has an effective filing date before March 16, 2013, the pre-AIA version of § 103 applies. skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.”).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In our decision to institute, we determined that “a broad, but reasonable construction of the claimed ‘second different end surface’ limitation requires that this surface is structurally different from the ‘first end surface.’” Paper 7, 9. Petitioner does not dispute our construction. See generally Pet. Reply. Patent Owner agreed with our construction. PO Resp. 10 (“The evidence shows the Board’s construction is correct and should be maintained.”). Upon reviewing the claim language in light of the Specification, we maintain our interpretation that a reasonable construction of the claimed “second different end surface” limitation requires that this surface be structurally different from the “first end surface,” for the reasons given in our decision to institute. See Paper 7, 8–9.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“2. Other Claim Terms We determine that no other claim limitation requires express construction for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (internal citation omitted)).” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“A reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment.” In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012). When read in its entirety, Sheesley teaches the claimed limitation. To illustrate this point, we begin by reproducing Sheesley’s Figure 5, below: Figure 5 depicts empty containers being filled with proppant after being placed on a rail car for transport. Although Figure 5 depicts the empty containers placed on a rail car, rather than on a road vehicle, as required by the claim, Sheesley’s disclosure is not limited to rail cars, as Patent Owner contends. Specifically, Sheesley discloses that rail is merely one of many modes of transportation, including trucks. Ex. 1005 ¶ 78 (“Modified cargo containers 270 can be loaded on a ship 272, barge 274, rail 276, or a flatbed truck trailer 278”). For the reasons discussed above, and after having weighed the competing testimony of Petitioner’s expert (Mr. Robert Schaaf (Ex. 1002)) and Patent Owner’s expert (Mr. Fred P. Smith (Ex. 2009)), we credit Mr. Schaaf’s testimony that Sheesley discloses this limitation. Ex. 1002 ¶¶ 71–78; see id. ¶ 78 (“[I]t is my opinion that Sheesley discloses ‘positioning a plurality of empty proppant containers, each removably positioned on a trailer of a respective proppant transporting road vehicle.’”). Accordingly, Petitioner has shown that Sheesley discloses “positioning a plurality of empty proppant containers . . . on a trailer of . . . proppant transporting road vehicle.” slip op. at 14
Patent outcomesUS 9,617,066 mixedClaim construction§ 103 obviousnessPatents in suitUS 9,617,066 - Seabed Geosolutions (US), Inc. v. Magseis FF LLCSome claims unpatentablePTAB · Nov 5, 2019 · IPR2018-00961 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–7 and 9–24 are unpatentable under the stated § 103(a) grounds; claim 8 was not shown unpatentable.
RulingsFinal written decision- Expert testimonyPatent owner expert discountedDecided for petitioner
“7. Our Analysis of Claim 1 As we analyze the evidence, Mattaboni’s Figure 4 does not relate to any characteristic of its memories that limits the frequency range of recorded seismic data. Rather, Mattaboni’s Figure 4 is “the product of the manufacturer’s specified response curve for the geophone and the measured transfer function of the preamp and filter blocks of Figure 3.” Ex. 1006, Fig. 4 (caption). Mattaboni discloses that its memories are capable of recording data at 120 times per second, or 60 Hertz, and thus above the 50 Hertz that Patent Owner contends is necessary to record “seismic data.” Regarding Patent Owner’s statements (1) and (2) above, Patent Owner’s declarant does not disclose the underlying facts or data on which these opinions are based, and they are thus entitled to little or no weight. 37 C.F.R. § 42.65(a). Regarding Patent Owner’s statement (3), Mattaboni states that the displacement response peak of its instrument is between 25 and 35 Hertz, which is the most important range for microearthquakes. Ex. 1006, 5. Mattaboni, however, also states the effective frequency band of the disclosed instrument is “from about 2 Hz to somewhat over 50 Hz (Figure 4).” Id. at 5. Thus, Mattaboni’s instrument records signals “somewhat over 50 Hz” which is “at least above 50 Hz” and in the frequency range which Patent Owner’s declarant contends is needed to record “seismic data.” Ex. 2051 ¶ 35; Ex. 1104, 301:5–302:1 (testifying that 8–50 Hz range is minimum for “seismic data” under Patent Owner’s construction).” slip op. at 28
- Skill levelSkill level board ownOther
“Considering the foregoing, we find that a person of ordinary skill in the art of OBS technology would have had: (i) a bachelor’s degree in electrical or mechanical engineering, geophysics, mathematics, general engineering, or equivalent thereof, and five (5) years of experience with the conduct of surveys with geophones, or the equivalent thereof, including two (2) years of work specifically with OBS technologies, or the equivalent thereof; or (ii) a bachelor’s degree and an advanced degree in electrical or mechanical engineering, geophysics, mathematics, general engineering, or equivalent thereof, and four (4) years of experience with the conduct of surveys with geophones, two (2) years of which involve work specifically with OBS technologies, or the equivalent thereof. We adopt these statements as describing the level of ordinary skill in the art pertinent to the 761 Patent in our obviousness analysis.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Petitioner contends there is a “heavy presumption” that claims terms have their ordinary meaning (CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)), and that Patent Owner did not overcome this presumption with a clear and precise definition (In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). Reply 8. Claim terms must be construed, however, in light of the specification. See In re Translogic Tech., Inc., 504 F.3d at 1257. In the Specification, the 761 Patent describes “seismic data” as resulting from an acoustic signal from a seismic energy source that propagates into the earth and is partially reflected at subsurface lithologic or fluid boundaries and is detected and recorded as seismic energy data by seismic receivers. Ex. 1030, 1:12–23. Petitioner argues that this passage of the 761 Patent does not mention “seismic data.” We note, however, that this passage does mention “seismic energy data” which is shortened to “seismic data” when mentioned later in the 761 Patent. See, e.g., Ex. 1030, 2:48–51, 3:17–19, 3:26–30, 3:35–40, 3:61–63, 9:41–63. Petitioner further contends that several publications establish that “seismic data” is not limited to the oil and gas industry, but may be used in other fields such as earthquake monitoring. Reply. 10 (citing Exs. 1112– 1114, 1121). Patent Owner argues that its constructions are consistent with, and supported by, other publications from the oil and gas industry. PO Resp. 33 (citing Ex. 2003; Ex. 2004, 213–232). Collectively, these publications establish that the term “seismic data” is used differently in different fields, but the best source for determining the meaning of a claim term is the patent’s Specification. See, e.g., In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149–50 (Fed. Cir. 2012); In re Suitco Surface, Inc., 603 F.3d 1255, 1260–61 (Fed. Cir. 2010); Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). As the 761 Patent uses the term “seismic data” consistent with the meaning proposed by Patent Owner, and not the more expansive definition proposed by Petitioner, we adopt Patent Owner’s proposed construction as the correct one to use for our analysis in this decision. The plain meanings of claim terms are construed not in a vacuum, but in the context of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d at 1257. Our construction of “seismic data” and “seismic data recorder” is consistent with the 761 Patent’s use of the terms.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We agree that Patent Owner’s failure to re-allege the argument in the Response waives the argument that Schmalfeldt is not a “printed publication.” See In re Nuvasive, 842 F.3d 1376, 1380 (Fed. Cir. 2016) (finding waiver where a patent owner “challenged the public accessibility of the prior art references during the preliminary proceedings of the inter partes review . . . but failed to challenge public accessibility during the trial phase”); SAP Am., Inc. v. Versata Dev. Group, Inc., CBM2012-00001, Paper 81 (Sept. 13, 2013); Paper 12. In any case, Petitioner has demonstrated Schmalfeldt is a printed publication for reasons noted. Dec. Inst. 10–20; see also Reply 4 (citing Ex. 1105). Accordingly, we determine Petitioner has shown Schmalfeldt is a “printed publication” under 35 U.S.C. § 102.” slip op. at 16
Patent outcomesUS 8,228,761 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,228,761 - Lego Systems, Inc. / Warner Bros. Home Entertainment Inc. v. Figurefun LLCSome claims unpatentablePTAB · Sep 26, 2019 · IPR2018-00755 · APJ Hyun J Jung · IPR · Final written decision
Claims 1, 3, 5, 7, 10, and 25 are unpatentable as obvious over each listed reference combination; claim 8 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find Patent Owner’s proposal consistent with the level of ordinary skill in the art 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). We, therefore, find that a person of ordinary skill in the art “would have at least a Bachelor’s Degree in Computer Science with courses and experience in relevant mathematics and three to five years of experience with designing and developing coin-operated electronic gaming devices with electronic displays (such as slot machines).” Ex. 2001 ¶ 19. Any differences regarding additional experience in the parties’ competing proposals for the level of ordinary skill does not affect our analysis of Petitioner’s challenges.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“action figure.” See, e.g., id. at 10:21–24 (“Here, it is not necessary that the token with built-in IC chip is configured so integrally with the action figure that the action figure may be fixed firmly and cannot be removed from the token.”), 10:24–25 (“The action figure may be configured so as to be detachable from the token, which is disk-shaped.”). As discussed above, the claims require a “token for a gaming machine” that comprises an integrated circuit chip or a storage section being “detachable from a figure.” Id. at 23:58–62, 26:9–13. The Specification also describes figures with integrated tokens with built-in IC chips (id. at 5:49–54), but the claims are directed by their express terms to embodiments of tokens with detachable figures. We, thus, agree with Patent Owner that “token” does not include a “figure.” Thus, the term “token” cannot include within its scope a “figure.” To resolve the parties’ dispute regarding patentability, we need only determine that the term “token” does not include an “figure.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing only those claim terms in controversy and only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). Any further express interpretation is not required for our analysis. Vivid Techs., 200 F.3d at 803. slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As discussed above, we find that Lee teaches that, in the embodiment shown in its Figure 2, “transducer 64 can be attached to a preexisting wrestling figure” so that “a child who has a collection of various action figures can use those figures as part of the activity center.” Ex. 1004, 6:44– 51. Lee, thus, supports Petitioner’s declarant testimony that one of ordinary skill in the art would have modified Levy so that its integrated circuit chip is detachable in the same manner as Lee so that “various action figures can be used with the token.” Ex. 1002 ¶ 88 (citing Ex. 1006, 6:46–51). We also find that modifying Levy as proposed by Petitioner is within ordinary skill. See, e.g., Ex. 1002 ¶ 59. Thus, Petitioner demonstrates that one of ordinary skill in the art would have had a reasonable expectation of success in making the proposed modification.” slip op. at 34
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“G. Objective Evidence of Nonobviousness The parties do not direct us to any objective evidence of nonobviousness. See generally Pet.; PO Resp.; Tr. 72:19–22 (Patent Owner’s counsel stating it did not submit objective evidence of non-obviousness).” slip op. at 64
Patent outcomesUS 7,338,377 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,338,377
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.