• Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing granted
  PTAB · Oct 26, 2020 · IPR2018-01014 · APJ Patrick M Boucher · IPR · Rehearing

  Granted petitioner’s rehearing request and held claims 1–3, 5, 7, 8, 11–13, 15, 17, and 18 unpatentable over the listed prior-art grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.” See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’ ‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”). In doing so, Petitioner points us to specific portions of its Petition that we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 3 is met by the Digital River Publications.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.” See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’ ‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”). In doing so, Petitioner points us to specific portions of its Petition that we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 3 is met by the Digital River Publications.” slip op. at 5

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 8,515,825
• Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing granted
  PTAB · Oct 26, 2020 · IPR2018-01012 · APJ Patrick M Boucher · IPR · Rehearing

  Granted Petitioner’s rehearing request and held claims 1–3, 5, 7–8, 11–13, 15, 17, and 18 unpatentable, including claims 4, 5, 12, and 13 over the Digital River Publications.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.”” slip op. at 5

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 105 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 23; Ex. 1002 ¶ 105. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 105 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’228 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 4 is met by the Digital River Publications.” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 105 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 23; Ex. 1002 ¶ 105. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 105 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’228 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 9,043,228
• Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing granted
  PTAB · Oct 26, 2020 · IPR2018-01011 · APJ Patrick M Boucher · IPR · Rehearing

  Petitioner’s rehearing request was granted; claims 1–3, 5, 7, 8, 11–13, 15, 17, and 18 were held unpatentable over the listed grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “II. LEGAL STANDARD A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2

  • Expert testimonyPetitioner expert creditedOther

    “we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 107 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 25; Ex. 1002 ¶ 107. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 107 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’876 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies” slip op. at 5

  § 103 obviousness
  Patents in suitUS 9,639,876
• Samsung Electronics Co., Ltd v. Uusi, LLC D/B/A NartronSome claims unpatentable
  PTAB · Sep 17, 2020 · IPR2016-00908 · APJ Kamran Jivani · IPR · Remand

  Claims 40, 41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 are unpatentable as obvious; claims 37–39 were not shown unpatentable.

  RulingsRemand decision

  • RemandOther

    “Appeals for the Federal Circuit, which vacated our Decision and remanded the matter to us. Samsung Elecs. Co. v. UUSI, LLC, 775 F. App’x 692 (Fed. Cir. 2019). As to the earlier instituted claims, the Court instructed that we should consider “whether Samsung has shown that there would have been a reasonable expectation of success in combining the teaching of Gerpheide with the teachings of Ingraham [I]/Caldwell to arrive at the claimed invention.” Id. at 697. The Court further instructed us to “consider the patentability of claims 37, 38, and 39” (id.) because, on April 24, 2018, the Supreme Court of the United States held that a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). Pursuant to the Federal Circuit’s instruction in this case and in light of SAS Inst., Inc., we modified our Decision on Institution to institute review of claims 37–39 of the ’183 patent as obvious over Ingraham I, Caldwell, and Gerpheide. Paper 40. We further held a teleconference on August 15, 2019, with respective counsel for the parties, to hear their proposals on how to proceed with this trial. Paper 41, 2. Having considered the parties’ proposals, we authorized the parties to submit concurrent briefs and subsequent responses addressing the following issues (id. at 6):” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “contends that a person having ordinary skill in the art at the time of the invention would have had a minimum of: (1) a bachelor’s degree in electrical engineering, or equivalent thereof; and (2) “two to three years of experience in the relevant field, which includes touch systems technology.” Pet. 3 (citing Ex. 1002 ¶ 19). Patent Owner’s witness, Dr. Cairns, opines that a person of ordinary skill “in the art of capacitive touch sensors would have had at least a bachelor’s degree in physics or electrical engineering or equivalent industry experience in the field.” Ex. 2002 ¶ 14. In our Final Written Decision, we noted that the levels of ordinary skill proposed by the parties do not differ significantly, but adopted Petitioner’s proposed definition as more representative, indicating that our analysis would be the same under either definition. Paper 35, 9–10. On remand, neither party disputes the definition adopted in the Final Written Decision. Furthermore, no argument presented by the parties on remand would be affected by adopting one of the proposed definitions over the other. We maintain here the definition adopted in the Final Written Decision.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “transition term[s]” should be considered in determining the meaning of a claim term, but asserts without further support that the presence of a semicolon after “supply voltage” and the use of the transition term “wherein” do not compel the preliminary construction. Id. As we addressed in denying Petitioner’s Request for Rehearing, claim 37 employs the open-ended transition term “comprising” followed by a colon to indicate that a list elements follows, and employs semicolons to separate the elements of that list. Paper 17, 5. The first element of the list, element 37a, describes an oscillator and includes the supply voltage limitation preceded by a comma and the transition term “wherein.” Id. Element 37a then ends with a semicolon and the claim proceeds to element 37b, which recites a microcontroller. Id. Petitioner thus nominally acknowledges consideration of punctuation, but advances a construction that asks us to disregard punctuation affirmatively recited in the claim. To do so would be “inconsistent with the punctuation [patentee] chose for this claim.” In re Pelz, 379 F. App’x 975, 978 (Fed. Cir. 2010). Likewise, as to Petitioner’s assertion that we read an additional limitation into the claim (Pet. Br. 10), we observe that, if the claim is limited to a particular exemplary embodiment, such a limitation results from the claim being drafted to cover only that embodiment. While we confirmed in the Decision on Institution that the use of the term supply voltage is consistent with its use in the Specification (Dec. on Inst. 9), the limitation of the claim to the oscillator is based on the language of the claim, not on definition or disavowal. Therefore, even accepting, for the sake of argument, that there is no disavowal or definition in the Specification of “supply voltage,” the term refers in independent claim 37 to supply voltage of the oscillator.” slip op. at 18

  • Expert testimonyOther

    “We disagree with Patent Owner’s arguments because they are not responsive to the combination of teachings at issue in the references before us. Patent Owner focuses on particular features of Gerpheide that it alleges either “would not work . . . in the proposed Caldwell-Ingraham system” or “can only work” in the presence of a component Patent Owner argues that “neither Ingraham nor Caldwell uses.” PO Br. 1–2, 12–13. These arguments are based on a mistaken premise that one or more components or physical configurations of Gerpheide must be incorporated into the combination of Ingraham I and Caldwell in order to show a reasonable likelihood of success. Under the Federal Circuit’s construction of the “selectively providing” limitation, the combination of Ingraham I, Caldwell, and Gerpheide need not incorporate the specific features of Gerpheide identified by Patent Owner. Petitioner asserts, supported by evidence from Dr. Subramanian, that the Ingraham I-Caldwell combination would have been modified based on Gerpheide “to provide features that adjust[] the oscillator signal frequency provided to the input portions 13 to negate the effect of interference on the input portions 13 and touch sensing circuits.” Pet. 26–27. This modification would not require any of the particular components or configurations of Gerpheide highlighted by Patent Owner. Thus, even if one or more of Patent Owner’s arguments as to the infeasibility of incorporating particular aspects of Gerpheide were correct, Patent Owner’s arguments do not address Gerpheide’s particular teaching of adjusting oscillator signal frequency to negate the effect of interference, and therefore, Patent Owner’s arguments are not responsive to the proposed combination and evidence relied upon by Petitioner. In view of the above, we find that Petitioner has shown that the skilled artisan would have combined Gerpheide with Ingraham/Caldwell as proposed with a reasonable expectation of success in achieving the claimed subject matter.” slip op. at 26

  Patent outcomesUS 5,796,183 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 5,796,183
• Supercell OY v. Gree, Inc.All claims unpatentable
  PTAB · Jun 2, 2020 · PGR2019-00018 · APJ Lynne H Browne · PGR · Final written decision

  Claims 1–20 are unpatentable under § 101 as directed to an abstract idea without a practical application or inventive concept; the § 112(b) and § 112(d) challenges were not shown.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'IneligibleStep1 directed to exceptionDecided for petitioner

    “We agree with Petitioner that “the holding in In re Smith does not require that the claims be directed to rules for playing a ‘particular’ game.” Pet. Reply 5. Rather, the Federal Circuit held that “claims, describing a set of rules for a game, are drawn to an abstract idea.” In re Smith, 815 F.3d at 819. Notably, the Federal Circuit did not require that such rules only be applicable to a particular game. Id. Further, we agree that the claims at issue are similar to those in Planet Bingo as explained by Petitioner in its Reply. See Pet. Reply 6–8; see also Ex. 1009, 11.” slip op. at 14

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptDecided for petitioner

    “We agree with Petitioner that the challenged claims do not integrate the judicial exception into a practical application. Pet. Reply 9. The claimed “input face” is simply not claimed in sufficient detail to require the type of specific user interface found to transform the claims into a practical application in Core Wireless, DDR Holdings, and other similar cases. Rather, as admitted by Patent Owner’s expert, the claims recite a generic “input face.” See Ex. 1005, 52:16–20, 78:22–79:1, 79:13–18, 108:11–109:8.” slip op. at 25

  • Skill levelSkill level board ownOther

    “2. Level of Ordinary Skill in the Art In the Petition, Petitioner does not proffer a definition of the level of ordinary skill in the art. See generally Pet. In its Response, Patent Owner does not provide a definition either. See generally PO Resp. In its Reply, Petitioner relies on the testimony of Patent Owner’s expert, Dr. Shamos, that a person of ordinary skill in the art has “two years of experience implementing interactive software having touchscreen user interfaces.” Pet. Reply 2 (citing Ex. 2001 ¶ 38). In its Sur-Reply. Patent Owner essentially agrees with Petitioner’s definition, but asserts that this definition does not require such a person to have personally written code for touchscreen user interfaces. See PO Sur-Reply 5. Having reviewed the entire record in this proceeding, we agree with both Petitioner and Patent Owner that a person of ordinary skill in the art would have had “two years of experience implementing interactive software having touchscreen user interfaces” as this is consistent with the level of ordinary skill reflected in the ’799 patent and evidence of record. Pet. Reply 2; PO Sur-Reply 5. We further agree with Patent Owner that such a person need not have personally written code for such implementation for the same reasons.” slip op. at 37

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “We find unpersuasive Petitioner’s contentions regarding the claim terms “direction” and “direction operation,” as well as the limitation “moving . . . one or more of the plurality of associated objects as a group.” Dec. 24. Specifically, we credit Dr. Shamos’s testimony that the terms “direction” and “direction operation” is not indefinite and that, although the limitation “moving . . . one or more of the plurality of associated objects as a group” may be broad, it is not indefinite. Id. Having considered the entire record in this proceeding, Petitioner has not demonstrated that claims 1–20 are indefinite. 4. Conclusion Regarding 35 U.S.C. § 112(b) For the reasons discussed above, we are not persuaded that Petitioner has demonstrated that claims 1–20 fail to comply with 35 U.S.C. § 112(b).” slip op. at 41

  Patent outcomesUS 9,891,799 unpatentable
  § 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Nautilus
  Patents in suitUS 9,891,799
• Bedra Inc. / Berkenhoff GmbH et al. v. Ki-Chul SeongRehearing denied
  PTAB · Mar 27, 2020 · IPR2018-01415 · APJ Ryan H Flax · IPR · Rehearing

  The Board denied the Patent Owner’s rehearing request, leaving in place its final decision that claims 1–13 and 15 were unpatentable as obvious based on Tomalin.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Final Decision 49. Although Dr. Medlin’s testimony on such issues was rife with equivocation (“probably”), we are not persuaded that what he otherwise testified to is not a certainty, i.e., that the starting materials and processing steps of Tomalin’s Example 1 would necessarily result in an EDM wire with a cracked surface with grains of α, γ, and ε brass materials, as claimed. See supra cites to Final Decision and evidence of record. Patent Owner has presented no arguments or facts in its Request for Rehearing that persuade us that we have misapprehended or overlooked any evidence, or misapplied any law, or that our Final Decision is otherwise incorrect. For the reasons set forth above, Patent Owner’s Request for Rehearing is denied.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
  § 103 obviousness
  Patents in suitUS 8,822,872
• T-Max (Hangzhou) Technology Co., Ltd. / T-Max Industrial (H.K.) Co. Ltd. v. Lund Motion Products, Inc.No claims unpatentable
  PTAB · Mar 12, 2020 · IPR2018-01636 · APJ Alyssa A Finamore · IPR · Final written decision

  Claims 1–13 were not shown unpatentable because Petitioner did not adequately explain why a skilled artisan would combine Matthews and Dean to produce the claimed straddling segment.

  RulingsFinal written decision

  • Skill levelOther

    “possessed at least a Bachelor’s degree in mechanical engineering and at least one year of mechanical design experience in the area of mechanisms and linkages.” Pet. 18 (citing Ex. 1002 ¶ 29). Patent Owner similarly argues a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering or other similar type of engineering degree, combined with at least one year of experience in the field of mechanical design or relevant product design experience.” PO Resp. 13 (citing Ex. 2001 ¶¶ 25–27). Patent Owner further argues the difference between Petitioner’s proposed level of ordinary skill and that of Patent Owner “is immaterial to deciding the issues raised by the Petition.” Id. Upon consideration of the record, including Matthews, Dean, and Norton, we agree with Patent Owner that the difference between Petitioner’s and Patent Owner’s respective explanations of the level of ordinary skill in the art is inconsequential to considering Petitioner’s asserted grounds of unpatentability. Our assessment of the merits of this proceeding would be the same under both of the proffered explanations, and, therefore, it is unnecessary to adopt one explanation of the level of ordinary skill in the art over the other.” slip op. at 17

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “Petitioner points to both intrinsic and extrinsic evidence in support of its proposed constructions of the noted terms. Pet. 18–23. In that respect, 5 Exhibit 1010 is an excerpt from Merriam-Webster’s Collegiate Dictionary (10th ed. 1993). The exhibit itself does not include page numbering separate from the original page numbering of the dictionary, and the citation to this exhibit refers to the page of the dictionary. Petitioner relies on specific content of the Specification of the ’751 patent as well as the testimony of Dr. Delson. Id. We conclude that Petitioner’s proposed constructions have ample support in the record, and note that Patent Owner does not justify the basis for its disagreement of those constructions. We, therefore, adopt Petitioner’s constructions for the terms “flange” and “retain and straddle.”” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “These similarities, however, do not explain why a person would have combined the teachings of Matthews and Dean as Petitioner proposes. Petitioner confirms in its Reply that it is proposing to modify Matthews’s disclosure so that each of cranked members 7 is attached to the outside of each pair of links 8, 9. Reply 16–17, 19; see also Tr. 12:1–3 (“[T]he linkage that extends as element 7 could be on the outside of the other linkages 8 and 9 which is really the crux of the straddling segment. Instead of being on the inside, it’s on the outside.”). In order for the step resulting from Petitioner’s proposed combination of Matthews and Dean to retain and straddle at least one of links 8, 9, in accordance with Petitioner’s construction of “retain and straddle” as “connect on both sides to” (Pet. 21), Petitioner proposes to modify Matthews’s cranked members 7 to attach to the outside of pair of links 8 and pair of links 9 so that cranked members 7, collectively as a pair, attach to both sides of pair links 8 and pair of links 9. Petitioner is correct that Matthews and Dean teach retractable steps having similar four-bar linkages. In particular, Matthews’s cranked member 7 and Dean’s arm 100 appear to be corresponding components in the linkages that differ in how they attach to the other components of the linkage. Matthews’s cranked member 7 is attached to only one side of each link 8, 9, whereas Dean’s arm 100 straddles each link 116, 120. Ex. 1006, Figs. 1, 3; Ex. 1007, Fig. 4. Yet, Petitioner is not proposing to simply substitute Matthews’s cranked member 7 with Dean’s arm 100, or to modify Matthews’s disclosed step so that each cranked member 7 straddles each link 8, 9. Instead, Petitioner proposes to combine the teachings of Matthews and Dean so that Matthews’s cranked members 7, as a pair, straddle the two pairs of links 8, 9. Neither Petitioner nor Dr. Delson explains adequately why the similarities between Matthews’s step and Dean’s step convey that a person of ordinary skill in the art would have combined the teachings of Matthews and Dean as Petitioner proposes. Mere similarity of prior art structures is not a substitute for “articulated reasoning with some rational underpinning” that is necessary “to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).” slip op. at 25

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “§ 103(a), and asserts the subject matter of these claims would have been obvious over the combined teachings of Matthews and Dean. Pet. 26–63; Reply 7–12, 15–25. Patent Owner disagrees with Petitioner’s contentions, and argues secondary considerations of nonobviousness confirm the claimed subject matter would not have been obvious. PO Resp. 19–50, 56–67; Sur-Reply 5–14, 17–24.” slip op. at 20

  Patent outcomesUS 9,561,751 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,561,751
• T-Max (Hangzhou) Technology Co., Ltd. / T-Max Industrial (H.K.) Co. Ltd. v. Lund Motion Products, Inc.All claims unpatentable
  PTAB · Mar 12, 2020 · IPR2018-01637 · APJ Alyssa A Finamore · IPR · Final written decision

  Claims 1–21 are unpatentable because Petitioner showed by a preponderance of the evidence that Fratta renders them obvious under § 103(a).

  RulingsFinal written decision

  • Skill levelOther

    “Patent Owner similarly argues a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering or other similar type of engineering degree, combined with at least one year of experience in the field of mechanical design or relevant product design experience.” PO Resp. 7. Patent Owner further contends that “[f]or individuals with different educational backgrounds, a person could still be of ordinary skill in the art provided that person’s additional experience compensates for any differences in that person’s education as stated above.” Id. Patent Owner also acknowledges that the difference between Petitioner’s proposed level of ordinary skill and that of Patent Owner “is immaterial to deciding the issues raised by the Petition.” Id. Upon consideration of the record, including Fratta, we agree with Patent Owner that the difference between Petitioner’s and Patent Owner’s respective explanations of the level of ordinary skill in the art is inconsequential to considering Petitioner’s asserted ground of unpatentability. Our assessment of the merits of this proceeding would be the same under both of the proffered explanations, and, therefore, it is unnecessary to adopt one explanation of the level of ordinary skill in the art over the other.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner proposes a construction for the claim term “translate.” Pet. 17–18; Reply 21. Patent Owner disagrees with Petitioner’s construction, but asserts that it is not necessary to address it. PO Resp. 8. We agree with Patent Owner that the term “translate” does not require an express construction to determine whether Petitioner has shown the challenged claims to be unpatentable.” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner is correct that, for each claim limitation, Petitioner makes the general statement that Fratta discloses the claim limitation or renders it obvious. Nonetheless, as we observe above, for limitations [1.C.1], [1.D.1], and [1.E], Petitioner provides an obviousness analysis, including a reason why a person of ordinary skill in the art would have modified Fratta to result in the claimed subject matter. See Pet. 29–31, 34 (providing an obviousness analysis in regard to limitations [1.C.1], [1.D.1], and [1.E]). Moreover, Petitioner’s reasoning is based on Dr. Delson’s testimony. Dr. Delson’s testimony does not simply parrot Petitioner’s general statement that Fratta discloses the claim limitation or renders it obvious. Rather, Dr. Delson explains why a person of ordinary skill in the art would have modified Fratta to result in the claimed subject matter. Ex. 1002 ¶¶ 288, 293–296, 301. We conclude that the above-noted testimony of Dr. Delson is adequately supported by the record, and we credit that testimony.” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “We agree with Patent Owner that Fratta’s written description does not expressly disclose the lengths of arms 3 and rods 7. Even so, Petitioner has demonstrated persuasively that Fratta discloses linkage arms with different lengths. In Hockerson-Halberstadt, our reviewing court explained that “it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” 222 F.3d at 956. In Hockerson-Halberstadt, however, the Federal Circuit did not contemplate whether a party may rely on a figure in a prior art reference to disclose relative dimensions when the reference is otherwise silent regarding the dimensions. The court instead considered whether a patentee may rely on its patent drawings to show error in a disavowal of claim scope made during prosecution. Id. Specifically, the court held that a reasonable competitor, being aware that figures in a patent are not drawn to scale unless otherwise indicated, would understand the argument in the prosecution history as clearly disclaiming a particular width relationship, regardless of the fact that the patent includes figures showing that width relationship. Id. The precedent more squarely on point confirms that drawings can be relied upon for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 914 (CCPA 1979); see also In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (“[W]e did not mean that things patent drawings show clearly are to be disregarded.”). In Fratta’s Figure 2, the length of arms 3 appears greater than the length of rods 7. Dr. Delson acknowledges Fratta’s Figures 1 and 2 are perspective views, and explains why Figure 2 would have suggested to a person of ordinary skill in the art that the length of arms 3 is greater than the length of rods 7. Pet. 33–34; Reply 12–14; Ex. 1002 ¶ 300. Apart from relying on Fratta’s figures for disclosing arms with different lengths, Dr. Delson also testifies that Fratta discloses arms 3 and rods 7 have differing lengths because the different lengths are necessary to rotate platform 5 between the open and closed positions and to align orifices 5c and 3c to receive pin 10 therethrough and lock the footboard in the open and closed positions. Pet. 34–35; Reply 8; Ex. 1002 ¶ 302. Dr. Delson testified: In the case of Fratta, Fratta was motivated to invent a retractable footboard that, inter alia, “is locked absolutely in the open and closed positions.” EX1005 at 1:16-18. To do so, Fratta configured the retractable footboard to have connecting rods 7 and arms 3 be of differing lengths and pivotably connected to the framework 1 and the platform uprights 5b and 5a at certain distances apart in order to (1) rotate the platform 5 between open position (Fig. 1) and closed position (Fig. 2) and (2) expose orifices 5c and 3a so that pin 10 can be inserted for locking the retractable footboard in the open and closed positions. EX1005 at 1:38-2:6; Figs. 1-2. Ex. 1002 ¶ 302. Dr. Delson’s testimony is unrebutted and finds support in Fratta. Petitioner, therefore, has shown persuasively that a person of ordinary skill in the art would have understood Fratta discloses “wherein one of said pair of linkage arms is longer than another of said pair of linkage arms,” as recited in independent claim 1.” slip op. at 20

  Patent outcomesUS 9,302,626 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,302,626
• Baker Hughes, A GE Company, LLC / Baker Hughes Oilfield Operations, LLC v. Packers Plus Energy Services, Inc.Rehearing denied
  PTAB · Mar 11, 2020 · IPR2016-00650 · APJ Carl M Defranco Jr · IPR · Rehearing

  The Board denied Baker Hughes’s rehearing request, leaving intact its decision that claims 14 and 17–26 were not shown unpatentable as obvious over the Thomson-Echols grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing of a Board decision has the burden to show that the decision should be modified. Pursuant to 37 C.F.R. § 42.71(d), the rehearing request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “version of Thomson’s Figure 3 (Ex. 1002, 10) to show how Thomson’s configuration of sliding sleeves and packers meets the limitations of the challenged claims. See, e.g., Pet. 25–26, 26, 34, 39 (depicting various annotations of Thomson’s Figure 3). Importantly, each of Baker Hughes’s annotations of Figure 3 depicts a cement casing as part of its proposed modification of the Thomson system. See id. Elsewhere, Baker Hughes relies expressly on Thomson’s cement casing in mapping “Thomson’s retrievable packers” to the claimed set of packers—“Compression of the packing elements causes them to extrude out to fill and seal the annulus between the tubing string and the casing, as in the above excerpt of Figure 3.” Id. at 39 (emphasis added); see also Ex. 1006 ¶ 71 (Baker Hughes’s expert testifying that “[a]s the packing elements [of Thomson] compress, they extrude outward to fill the annulus between the tubing string and the casing to seal against fluid flow past the packer”) (emphasis added). But, while repeatedly relying on Thomson’s Figure 3 in support of its obviousness theories, Baker Hughes fails to explain why a skilled artisan would have removed or ignored the casing shown in Thomson’s Figure 3 in favor of using an open wellbore. That clear and unequivocal omission by Baker Hughes was critical to our finding of a lack of a reason to combine Thomson and Echols. Thus, we are not persuaded that we misapprehended Baker Hughes’s obviousness contentions, which relied expressly on Thompson’s casing as shown in Thomson’s Figure 3.” slip op. at 3

  • Strike new argumentNew argument disregardedNot reached

    “now modifes its reason for why a skilled artisan would have added injection points to Thomson’s system—“getting stimulation fluid into the annulus in a longer zone takes less time when there are more openings through which fluid can be injected into the annulus . . . a longer zone of like diameter has a greater volume, which plainly can be filled more quickly with more injection points.” Reh’g Req. 6 (emphasis added). This argument, advanced by Baker Hughes for the first time as a reason to add Echol’s sleeves to Thomson’s system, is directed to improving the efficiency by which Thomson’s system operates. That Baker Hughes’s argument is new is shown by the simple fact that Baker Hughes fails to identify the place where this argument was previously made in its Petition or Reply. See id. Indeed, as expressed in the Petition and Reply, the reason given for adding injection points to Thomson’s system was “to provide additional fractures . . . to improve porosity and thus production from the formation.” Pet. 33 (citing Ex. 1006 ¶ 79); Reply 1 (same). Nowhere in either of those papers does Baker Hughes mention efficiency in filling the annulus as a reason to modify Thomson. Thus, we could not have misunderstood or overlooked an argument not previously made, nor must we consider this new argument on rehearing. See 37 C.F.R. § 42.71(d) (“The request must specifically identify . . . the place where each matter was previously addressed in a motion, an opposition, or a reply.”).” slip op. at 6

  § 103 obviousness
  Patents in suitUS 6,907,936
• T-Max (Hangzhou) Technology Co., Ltd. / T-Max Industrial (H.K.) Co. Ltd. v. Lund Motion Products, Inc.No claims unpatentable
  PTAB · Mar 10, 2020 · IPR2018-01638 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–15 were not shown unpatentable: Falardi does not meet claim 1’s initial downward movement limitation, and DePaula does not cure that deficiency for claim 3.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “Petitioner, however, does not point to any evidentiary support for the above-reproduced argument other than the testimony of Dr. Delson at paragraph 80 of his Declaration (Ex. 1002). That testimony is identical to Petitioner’s argument and includes no citation to the record. In its Reply, Petitioner submits that Dr. Delson’s testimony is offered on the premise that the meaning of “initial” is not “not limited to only being the ‘immediate’ or ‘instantaneous’ motion of the arms when the step retracts from the deployed position.” Pet. Reply 7. Thus, we understand Petitioner to advocate that Dr. Delson’s testimony is offered with an understanding of the meaning of “initially” that is not limited to the first or beginning motion of the arms. As noted above, however, we reject that construction of “initially.”” slip op. at 18

  • Skill levelSkill level board ownOther

    “We do not discern any meaningful difference in the parties’ respective evaluations of the level of ordinary skill in the art. We also concur with Patent Owner’s assessment that to the extent there are any differences in those evaluations, such differences do not affect the issues raised in the Petition. In that respect, we conclude that the assessment of the merits of this proceeding are the same under both of the parties’ evaluations of the level of ordinary skill in the art. To that end, we conclude that it is unnecessary to formally adopt one evaluation over the other in deciding the 8 Exhibit 2008 is a Declaration of John Pratt, Ph.D. issues at hand. We further note that the cited prior art references further reflect the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Furthermore, we also are not persuaded that Patent Owner’s declarant, Dr. Pratt, “did not provide any explanation or analyses to support his testimony,” as is argued by Petitioner. See Pet. Reply 4. Indeed, his testimony that “[a]s used in the specification, the ‘initial motion’ is only the first, or beginning movement toward a position such as the retracted or deployed positions” of step member 922 finds direct support from the abovediscussed portions of the Specification of the ’277 patent. In light of the record before us, including the disclosure of the ’277 patent, the meaning of “initial” or “initially” as understood from multiple dictionaries (Exs. 2002–2007)10, and the credible testimony of Dr. Pratt, we” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “persuaded that, in the context of the ’277 patent, Petitioner provides adequate evidence or explanation that its construction of “initially” as meaning “of or relating to the beginning; incipient” is the correct one. It is apparent from the entirety of the record, including Petitioner’s proposed grounds of unpatentability, that its construction is offered in an attempt to sweep into the meaning of “initial[] move[ment]” of the arms a movement that is not the first or beginning one. Petitioner seemingly bases that construction on the premise that a sole dictionary definition of “initial” as generally meaning “relating to the beginning” provides sufficient basis for its position. Petitioner, however, does not provide sufficient reasoning why the movement “relating to the beginning” should be read so broadly as to encompass movement of a component that is not the first occurring movement. Patent Owner’s construction, on the other hand, draws ample and logical support from the record as a whole, including both intrinsic and extrinsic evidence. Even assuming that the use of “initial” in the Specification is directed to movement that is not necessarily the downward motion of components, there is nothing therein that conveys that the meaning of “initial” should be expanded to include movement that is not at the beginning of a component’s act of motion. For instance, the portion of the disclosure at column 31, lines 46–53, of the ’277 patent pertains to Figure 22 and describes upward motion of step member 922 and stepping deck 924. That portion explains that “initial” movement of step member 922 is upward “after which the step member 922 and upper stepping surface 924c travel generally downward” to a deployed position. Ex. 1001, 31:46– 53. Thus, that portion of the disclosure describes exemplary “initial” upward movement of step member 922 followed by downward movement. There is nothing in that disclosure that conveys that the “initial” upward movement of step member 922 includes movement that is not viewed as being in an upward direction at the very beginning point that step member 922 starts to move. We also do not discern that the prosecution history of the application that became the ’277 patent (Ex. 1013) suggests any meaning of “initial” movement of a component that is not the first movement of the component.” slip op. at 12

  Patent outcomesUS 8,157,277 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,157,277

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.