- Interactive Communications International, Inc. v. Blackhawk Network Inc.All claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00465 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1–10 and 12–24 as obvious over Szrek and Llach, and claim 11 as obvious over Szrek, Llach, and Gilmore.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Pet. 2–3 (citing Ex. 1003 ¶¶ 13–14).9 Patent Owner states that, “[f]or the purpose of this proceeding, Patent Owner adopts the Petition’s proposed definition of the level of ordinary skill in the art.” PO Resp. 19 (citing Pet. 2–3). We find that the parties’ agreed-upon level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’451 patent and the prior art of record. See Inst. Dec. 14; see Okajima v. 9 Petitioner proposes the same level of ordinary skill in the art that the Board adopted in PGR2020-00084 (Pet. 2–3 (citing Ex. 1008, 11)), and IPR2023- 01235 (see IPR2023-01235, Paper 34 at 12–13). 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). Therefore, we adopt the parties’ agreed-upon level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We need not construe “transaction processor” expressly because its meaning is not in dispute and its construction is not necessary to resolve the controversy before us.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“On balance, we find that even with the alleged disadvantages identified by Patent Owner, one of ordinary skill in the art would have been motivated to modify Szrek with Llach’s third-party transaction processor because the advantage of having a “centralized intermediary” allows Szrek’s system to support different game providers, such as different lottery companies, which would reduce some implementation costs and allow the system to be more easily and cheaply extended. Pet. 47 (citing Ex. 1003 ¶ 181); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)); see also Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795 (Fed. Cir. 2021) (stating the same). We acknowledge that the combination comes with some disadvantages, including “add[ed] delay, reduce[d] efficiency, and . . . implementation complexities by converting a simple, direct communication exchange into an exchange that traverses multiple systems.” PO Resp. 52 (citing Ex. 2052 ¶ 163). But, “[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner, 202 F.3d at 1349 n.8. Here, Szrek expressly teaches indirect communication as a possible implementation of its system and Petitioner’s combination—employing Llach’s third-party transaction processor as part of the indirect communication channel—offers the attractive benefit of allowing Szrek’s system to support different game providers, which would reduce some implementation costs even if it might increase other costs, e.g., by having to program certain components (e.g., the cash registers) differently. Specifically, we find that the ability to expand Szrek’s system to support different game providers provides advantages that outweigh the disadvantages discussed above in the circumstance where one desires a more robust and comprehensive system. See Pet. Reply 23 (noting three advantages of the combination— (1) “allow[ing] Szrek’s system to use ‘a centralized system for activating lottery tickets from different retailers and different locations,’” (2) “allow[ing] support for different game providers, such as different lottery companies,” “reduc[ing] implementation costs,” and (3) “allow[ing] Szrek’s system to ‘communicate with individual card” slip op. at 37
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“On balance, we find that even with the alleged disadvantages identified by Patent Owner, one of ordinary skill in the art would have been motivated to modify Szrek with Llach’s third-party transaction processor because the advantage of having a “centralized intermediary” allows Szrek’s system to support different game providers, such as different lottery companies, which would reduce some implementation costs and allow the system to be more easily and cheaply extended. Pet. 47 (citing Ex. 1003 ¶ 181); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)); see also Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795 (Fed. Cir. 2021) (stating the same). We acknowledge that the combination comes with some disadvantages, including “add[ed] delay, reduce[d] efficiency, and . . . implementation complexities by converting a simple, direct communication exchange into an exchange that traverses multiple systems.” PO Resp. 52 (citing Ex. 2052 ¶ 163). But, “[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner, 202 F.3d at 1349 n.8. Here, Szrek expressly teaches indirect communication as a possible implementation of its system and Petitioner’s combination—employing Llach’s third-party transaction processor as part of the indirect communication channel—offers the attractive benefit of allowing Szrek’s system to support different game providers, which would reduce some implementation costs even if it might increase other costs, e.g., by having to program certain components (e.g., the cash registers) differently. Specifically, we find that the ability to expand Szrek’s system to support different game providers provides advantages that outweigh the disadvantages discussed above in the circumstance where one desires a more robust and comprehensive system. See Pet. Reply 23 (noting three advantages of the combination— (1) “allow[ing] Szrek’s system to use ‘a centralized system for activating lottery tickets from different retailers and different locations,’” (2) “allow[ing] support for different game providers, such as different lottery companies,” “reduc[ing] implementation costs,” and (3) “allow[ing] Szrek’s system to ‘communicate with individual card” slip op. at 37
Patent outcomesUS 11,488,451 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,488,451 - Google LLC v. Ipa Technologies Inc.All claims unpatentablePTAB · Jun 1, 2023 · IPR2019-00731 · APJ Trevor M Jefferson · IPR · Remand
Claim 28 is unpatentable under § 103(a) over Martin and Farley; Martin qualifies as prior art because Dr. Moran’s contribution made him a joint inventor of the relied-on disclosure.
RulingsRemand decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’560 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 19:14–19:62. In addition, Patent Owner admits that “large portions of the ’560 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id.” slip op. at 21
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“With respect to Dr. Moran’s contribution to the Martin reference, we find Dr. Moran’s testimony credible over that of Mr. Cheyer and Mr. Martin, because, as the Federal Circuit noted, because the latter testimony conflicts with other evidence of record. Google, 34 F.4th at 1088. Cheyer’s and Martin’s testimony that Dr. Moran’s role was administrative and non-technical with respect to the core infrastructure of OAA is belied by a separate article describing OAA that includes the facilitator and lists Dr. Moran as the lead author. Ex. 1174, 1–2, 4. Indeed, the OAA article lists Dr. Moran and Mr. Cheyer as authors but excludes Mr. Martin. Id. Although Mr. Cheyer disagrees with the article’s description of the origins of OAA and the facilitator (Ex. 2037, 78:23–79:12 (Mr. Cheyer asserting that he “would not agree in the characterization of Open Agent Architecture grew out of [earlier] works” as described in the article)), Mr. Cheyer admits patent]” (id. at 1088), “which is a continuation-in-part of the application that resulted in the ’115 patent” (id. at 1086). in his deposition that Dr. Moran was extremely technical, and probably made technical contributions to OAA (id. at 34:1–20, 64:16–20, 102:2–4). Similarly, Mr. Martin’s testimony also supports that Dr. Moran “may have made contributions to the technological development of either interfaces for use with OAA, agents used with OAA, or systems based on OAA.” Ex. 2038, 116:2–8, 117:7–119:10. When viewed in light of Dr. Moran’s status as a joint inventor on the closely related ’931 patent (Ex. 2002, code (75)) and as a lead author of the substantive paper that discusses OAA’s early development, we find Mr. Martin’s and Mr. Cheyer’s admissions—that Dr. Moran made technical contributions to OAA—undermine their testimony that Dr. Moran’s inclusion as an author on the Martin reference was a matter of administrative respect and not a result of a technical contribution. See PO Remand 11; PO Resp. 50–51. Indeed, we find Cheyer and Martin’s general description of Dr. Moran—as an administrator without technical contributions to the Martin reference—is not supported by the full record, which instead supports Dr. Moran’s contributions to technical work that involves the Martin reference, such as contemporary papers and the ’931 patent. See, e.g., Ex. 1174, 2002. In sum, the testimony and contemporary evidence supports Dr. Moran’s testimony that his conception and contribution to the Martin reference, the facilitator, was technical and not merely administrative. Ex. 1007 ¶ 39.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We disagree with Patent Owner’s contention. Rather, we find that the Petition persuasively explains how Martin discloses a facilitator agent arranged to coordinate cooperative task completion within a distributed computing environment having autonomous service-providing electronic agents. Pet. 39; Ex. 1002 ¶ 100. Further, Petitioner persuasively demonstrates that Farley discloses how agent functionality can be distributed across multiple processes. Pet. 39–40; Ex. 1002 ¶¶ 101–102. Finally, Petitioner also provides persuasive reasons as to why one of ordinary skill in the art would have been motivated to combine Martin and Farley, including reasons expressly provided by Farley. Pet. 40; Ex. 1002 ¶¶ 103–104.” slip op. at 28
- ExcludeMotion to exclude, deniedMixed
“III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 26–30. We maintain these determinations on remand.” slip op. at 29
Patent outcomesUS 7,069,560 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,069,560 - Google LLC v. Ipa Technologies Inc.All claims unpatentablePTAB · Jun 1, 2023 · IPR2019-00728 · APJ Trevor M Jefferson · IPR · Remand
On remand, the Board held claim 63 unpatentable under § 103(a) over Martin and Kohn, finding Martin was prior art because Moran was a joint inventor.
RulingsRemand decision- RemandDecided for petitioner
“Petitioner relies upon is sufficient to establish the degree to which the reliedon portions of the Martin reference were conceived by Dr. Moran, and the significance of those contributions to the overall anticipating disclosure of the Martin reference. See Google, 34 F.4th at 1086–88; Duncan Parking, 914 F.3d at 1358. Contrary to Patent Owner’s contentions, Petitioner is not merely relying on Dr. Moran’s authorship to establish inventorship. PO Remand 8 (citing In re Katz, 687 F.2d 450, 455 (C.C.P.A. 1982)). Instead, Dr. Moran’s testimony establishes how his background led to his contributions to the multiple facilitator architectures disclosed in Martin and in the ’115 patent specification. Google, 34 F.4th at 1087; Ex. 1007 ¶¶ 23– 34 (OAA project), 35–39 (OAA paper). In view of Dr. Moran’s testimony, we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’115 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 18:56–19:36. In addition, Patent Owner admits that “large portions of the ’115 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id. Based on the record, the Federal Circuit’s remand squarely asks whether Dr. Moran’s stated contributions to the conception of the facilitator should be credited over Cheyer and Martin’s conflicting testimony regarding his lack of technical contribution. Google, 34 F.4th at 1088 (stating that “[t]he testimony of Dr. Moran, if credited, might well establish that he was a co-inventor of the particular portions of the Martin reference relied on by Google in, and relevant to, the challenge to particular claims”). When Dr. Moran’s testimony is viewed in combination with the supporting evidence,7 we find that incorporation of the facilitator in general, which is also found in the specification and claims, persuasively supports Dr. Moran’s testimony regarding his inventive contribution to the Martin reference. Specifically, we find Dr. Moran’s testimony persuasively supported and credible over the conflicting testimony and evidence offered by Mr. Cheyer and Mr. Martin. See Pet. Reply 12–13; Ex. 2038, 116:2–8, 117:7–119:10 (Cheyer admission that Dr. Moran made technical contributions to OAA); Ex. 2037, 34:1–20, 64:16–20, 102:2–4.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Upon weighing the parties’ testimony and evidence, we agree with Petitioner that sufficient evidence supports the technical contributions of Dr. Moran to OAA, including admissions by Mr. Martin that Dr. Moran made such contributions (see Ex. 2038, 116:2–116:8, 117:7–119:10; see also id. at 73:3–73:15); contemporaneous papers showing Dr. Moran’s contribution to the OAA including a facilitator (see Ex. 1170; Ex. 1174, 1– 2), and the ’931 patent (Ex. 2002). See Pet. Reply 5–7, 8, 12–13; Pet. Remand 11. In particular, Dr. Moran’s testimony establishes that he contributed to Section 4.5, the facilitator that plays an essential role in the OAA, that differs from prior art agents, and that is found in the ’115 specification. We find Dr. Moran’s contributions to be significant when measured against the full anticipating Martin reference, and to render him a joint inventor of the Martin reference. Google, 34 F.4th at 1085 (quoting Duncan Parking, 914 F.3d at 1358). 5. Conclusion Based on the full record, we find that Petitioner has provided persuasive evidence by a preponderance of the evidence that Dr. Moran is an inventive entity to the Martin reference. Accordingly, we find that Petitioner has established that Martin is “by another” and is prior art under § 102(a) to the ’115 patent. We next turn to the sole remaining ground based on the Martin reference to determine the patentability of the remaining challenged claim.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“combination of Martin and Kohn. Petitioner’s expert, Dr. Olsen, provides persuasive testimony and evidence that Martin teaches compound goals and a skilled artisan would have been motivated in view of Kohn to modify Martin’s facilitator agent to interpret a compound goal that includes both local and global constraints. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. Dr. Olsen’s testimony does not evince hindsight, but instead supports the finding that an ordinarily skilled artisan could use compound goals required in Martin and apply the type of constraints (global and local) disclosed in Kohn. Ex. 2024, 159:4–160:16. In addition, Dr. Olsen testified, the proposed implementation “would have been a mere combination of known components and technologies . . . , according to known methods, to produce predictable results.” Ex. 1002 ¶ 87. We do not agree that this case presents the same technical issues raised in G.B.T. Inc. v. Walletex Microelectronics Ltd., IPR2018-00326, Paper 60 at 16–17 (PTAB June 25, 2019), where the petitioner’s declarant failed to show how the combination would have achieved desired results and features from the combination of the circuits. Here, Dr. Olsen identified known compound goals in Martin to which Kohn’s local and global constraints are applicable. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. In view of the level of skill in the art and the testimony of Dr. Olsen (Ex. 1002 ¶¶ 49, 77–88; Ex. 2024, 159:4–160:16), we find that Petitioner establishes persuasive motivation to combine the software teachings of Kohn’s constraints into the goals of Martin and how the references would have been combined by a preponderance of the evidence.” slip op. at 29
- ExcludeMotion to exclude, deniedMotion to exclude, grantedMixed
“III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 25–28. We maintain these determinations on remand.” slip op. at 30
Patent outcomesUS 6,851,115 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,851,115 - Meta Platforms, Inc. v. Wrinkl, Inc.All claims unpatentablePTAB · Nov 23, 2022 · IPR2021-00882 · APJ Neil T Powell · IPR · Final written decision
Claims 1–23 are unpatentable as obvious over Ji and Sarafa; the Board did not reach the Ji, Sarafa, and Oh ground.
RulingsFinal written decision- Strike new argumentNew argument consideredMixed
“We do not agree with Patent Owner that the arguments in sub-section 2 on pages 8–9 of Petitioner’s Reply are improper new arguments. Rather, we find these arguments properly elaborate on the Petition, in response to the proposed construction of “link” in Patent Owner’s Response. Although we agree with Patent Owner that the Petition does not include the phrase “quoted message identifier,” Sarafa explains that the quoted message cited in the Petition and the “quoted message identifier” are part of the same message package. E.g., Ex. 1007 ¶ 83. Patent Owner contends that Petitioner’s citation of the quoted message in the Petition and then the quoted message identifier in the Reply is like if I have a patent to some kind of car and someone points to a Porsche and says, look, the Porsche has an engine, and then we argue about an engine, and then they come back and say, well, we're referring to the turbo charger in the engine in their reply, even though they never mention turbo charger, and said that's the key, it's like, well, we weren't on notice of that. Tr. 71:2–9. We find this unpersuasive. Patent Owner does not explain why a reply that cites a subcomponent of an item cited in the petition would necessarily go beyond properly elaborating on the arguments in the petition.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find Petitioner’s proposed definition reasonable and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill identified by Petitioner. Additionally, we agree with Patent Owner that the level of skill it identifies differs very little from Petitioner’s proposed level of skill, and our analysis below would be the same under either party’s identified level of skill.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In order to resolve the parties’ patentability dispute, we only need to resolve whether the correct construction of “link” requires using an address specifically (rather than data generally) to “point to” a message. We find the record lacks persuasive support for such a construction. Looking to the ’198 patent itself first, neither the claims nor the Specification says anything about “point[ing] to” a message or another resource. See generally Ex. 1001. The ’198 patent mentions “address” only once, and that passage refers to a person’s address, not a message’s address. Id. at 12:29–33. Additionally, Patent Owner does not cite any other intrinsic evidence, such as the prosecution history of the ’198 patent, supporting a construction of “link” requiring a message’s address. See, e.g., PO Resp. 10–12; PO Sur-reply 2–7.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Weighing the parties’ arguments and evidence, we find that Petitioner demonstrates by a preponderance of the evidence that a person of ordinary skill in the art would have been motivated to combine the teachings of Ji and Sarafa. As explained below, Petitioner persuades us that a person of ordinary skill in the art would have understood that Ji teaches automatic scrolling, and that Sarafa’s automatic scrolling would have beneficially complemented Ji’s. Pet. 21–22; Pet. Reply 14–17; Ex. 1003 ¶¶ 75–77; Ex. 1018 ¶ 47. Additionally, regardless of whether Ji teaches automatic scrolling in paragraph 92, Petitioner persuades us that Ji and Sarafa address similar problems related to tracking and understanding convoluted conversations in messaging systems. See Pet. 16–21; Ex. 1003 ¶¶ 64, 65, 70, 73, 74. As Dr. Cockburn testifies, Ji emphasizes the problem that users cannot quickly find and understand messages in complicated message streams. Ex. 1003 ¶ 64 (citing Ex. 1006 ¶ 2); Pet. 16. Petitioner also persuades us that Sarafa addresses such problems, at least in part, by expressly teaching certain advantages of its scroll-back feature, such that a person of ordinary skill in the art would have considered it advantageous to add Sarafa’s scroll-back feature to Ji’s system. See Pet. 18–19; 21–23; Ex. 1003 ¶¶ 70, 74. For example, addressing the same problems discussed in Ji, Sarafa explains that its scroll back feature would facilitate a user’s ability to understand a complicated conversation because “[m]aking available the context of a quoted message may benefit a user in understanding a quoted message by providing messages that were displayed before and/or after the quoted message so as to play the quoted message in context.” Ex. 1007 ¶ 90; Pet. 19; Ex. 1003 ¶ 70. Similarly, Sarafa explains that its scroll back feature “provid[es] additional context to users . . . , improving the user experience of quoted messages for its users.” Ex. 1007 ¶ 23; Pet. 19; Ex. 1003 ¶ 70. We find that these disclosed benefits would have provided compelling motivation for a person of ordinary skill in the art to add Sarafa’s scroll back feature to Ji’s messaging system. Pet. 19–23; Ex. 1003 ¶¶ 71, 73–77. Indeed, as Dr. Cockburn explains, “[s]ince Ji also quotes the original message in the reply, Sarafa would therefore be a natural complement to Ji.” Ex. 1003 ¶ 77.” slip op. at 42
Patent outcomesUS 9,860,198 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,860,198 - Netflix, Inc. / Hulu, LLC v. Divx, LLCAll claims unpatentablePTAB · Jan 26, 2022 · IPR2020-00614 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1–6, 9, 10, and 13–19 are unpatentable as obvious over Ueno, Fetkovich, and Demos.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“function” as recited in claim 1 to teach or suggest the “frame decryption function” recited in claim 14. See, e.g., Pet. 76. This reliance is due, in part, to the fact that the cited “references teach using symmetric algorithms,” which use the same key for encrypting and “decrypting the selected portions of encrypted frames in accordance with the frame decryption information.” Id. at 78 (citing Ex. 1004, 1:16–20; Ex. 1005, 6:52–56; Ex. 1006, 27:65– 28:1; Pet. §§ VI.A.1, VI.A.5 (claim 4); Ex. 1003 ¶ 257). Accordingly and as we determined in our Institution Decision, “the encryption parameters are the same for encryption and decryption” in Petitioner’s challenge. Inst. Dec. 8.” slip op. at 11
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“that Patent Owner “is not entitled to a presumption of nexus when the claimed features constitute a small part of the claimed product and are far from coextensive.” Id. Patent Owner asserts and Dr. Nielsen testifies that “DivX implemented its inventive partial encryption [method or approach] into DivX’s Digital Right Management Systems” and each cite to Exhibit 2020, a claim chart comparing challenged claims 1, 2, 4, 5, 10, 14, and 17–19 of the ’673 patent to features of DivX’s Decoder Software Development Kit (SDK). PO Resp. 11; Ex. 2008 ¶ 61. Patent Owner does not assert or explain that it is arguing secondary considerations of non-obviousness, does not attempt to establish a nexus between the claimed features and Patent Owner’s commercial product, and does not discuss or explain Exhibit 2020 in any level of detail. See generally PO Resp.; see also Pet. Reply 26 n.15 (citing Ex. 1029, 131:25–132:20) (Petitioner arguing that “Exhibit 2020 was not prepared by an expert witness or discussed in briefing”). For these reasons, we determine that a presumption of nexus is inappropriate here––Patent Owner does not provide an analysis demonstrating that its product(s) are coextensive (or nearly coextensive) with the challenged claim. See Lectrosonics, Paper 33 at 33. As such, we proceed to the second step of the analysis under Fox Factory.” slip op. at 52
- ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed
“Exhibits 2004, 2005, 2006, 2010, and 2020 for not being authenticated (Fed. R. Evid. 901(a)), containing inadmissible hearsay (Fed. R. Evid. 801(c), 802; 37 C.F.R. § 42.53), improper opinions (Fed. R. Evid. 701, 602), and lacking relevance (Fed. R. Evid. 402). Mot. Ex. 6–10. Petitioner’s Motion to Exclude is dismissed as moot with respect to Exhibit 2020 because our decision would not be affected by the admission or exclusion of that exhibit—we do not rely on it in reaching our conclusion as to the patentability of the challenged claims.” slip op. at 77
Patent outcomesUS 7,295,673 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,295,673 - Walmart Inc. / Z-Shade Co., Ltd. et al. v. Caravan Canopy International, Inc.All claims unpatentablePTAB · Nov 22, 2021 · IPR2021-00449 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1–3 are unpatentable as obvious over Yang and Lynch because the combination teaches the claimed elements and increased headroom supplied a reason to combine with a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“invention of the ’040 patent would have had (1) a bachelor’s degree in the mechanical arts, including but not limited to mechanical engineering and industrial design, (2) at least two years of experience in the design or analysis of mechanical devices, fabricated frames, and/or kinematic linkages, and (3) at least a basic understanding of ergonomics. As to part (1), although the parties outline generally similar requirements as to formal schooling, Patent Owner’s proposal provides enhanced clarity as to the identity of the related disciplines, which we view as supported by the record. See, e.g., Klopp Pet. Decl. ¶ 1, Ex. A; Rake Decl. ¶¶ 4, 7–9, 19. As to part (2), the parties again outline similar requirements as to work experience, but Petitioner’s proposal provides added detail on experience in relevant design features, which we view as supported by the record. See Exs. 1004–1007. As to part (3), given the nature of the technology at issue, we view a basic understanding of ergonomics as relevant to one of ordinary skill in the art. See, e.g., Ex. 1001, 3:12–49 (discussing operation of the invention by a person); Rake Decl. ¶ 31, cited at PO Resp. 4. This is the same level of ordinary skill adopted in the Decision on Institution. See Dec. Inst. 32–34.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“centrally-disposed, long, slender object.” Pet. 28–32. Patent Owner responds that the District Court rejected this proposal and held that the phrase should be given its “plain and ordinary meaning.” PO Resp. 5–6; see also Ex. 1018 at 6–10 (the District Court declining to construe “center pole”). We do not discern a need to construe explicitly this phrase because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“applicant acted as a lexicographer as to the term “stretching.” We determine that the Specification supports an understanding of the plain and ordinary meaning as extending or spreading out rather than as “make taut” or in “tension.” As argued by Petitioner, “[t]here is no description requiring that a roof be made taut or placed under tension” and, “[t]o the contrary, the specification consistently uses the word ‘stretch’ to describe extending or spreading out.” Pet. Reply 11. For example, in the eleven instances the Specification uses some form of the word “stretch” (aside from in claim 1), six instances relate to “stretching” the frame (or some component of the frame), rather than the roof. See, e.g., Ex. 1001, 3:4–6 (discussing how “the collapsible tent frame of this invention is easily and quickly stretchable or collapsible, thus allowing a user to easily and quickly pitch or strike a tent” (emphasis added)), 3:15–19 (“When it is necessary to pitch the tent, the four side poles 10 are pushed outwardly at the same time, thus stretching the tent frame. When the side poles 10 are pushed outwardly as described above, the sliders 70 move upward along the side poles 10 while stretching the two 14 Under the same logic, Patent Owner’s construction of “stretching” as “make taut” should be rejected because it would render superfluous the “sustaining” requirement in that any “center pole” that makes taut a tent’s roof would also sustain it. Cf. PO Sur-reply 5. types of ribs 20 and 30.” (emphasis added)), 3:23–24 (discussing how “the center pole ribs 30 are fully stretched by the support links 40” (emphasis added)), 3:29–30 (discussing “[w]hen the tent is pitched with the frame being fully stretched as described above” (emphasis added)), 4:12–14 (“When the frame is stretched so as to pitch a tent, the center pole is fully moved upwardly along with the center pole ribs.” (emphasis added)). These instances do not align with Patent Owner’s proposed construction of “stretching” as in “tension” or “make taut.” We find particularly supportive of the above-determined construction that in one of those six instances, the Specification directly contrasts—using a disjunctive “or”—“stretchable” with “collapsible.” See Ex. 1001, 3:4–6 (discussing how “the collapsible tent frame of this invention is easily and quickly stretchable or collapsible, thus allowing a user to easily and quickly pitch or strike a tent” (emphasis added)).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“On the full record developed at trial, we determine that the increased total ceiling height—i.e., “headroom” as used in the Petition—provides adequate “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” based on the proposed modification. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. Here, the unmodified version of Yang is most similar to the middle example in Petitioner’s graphic above, as it has no structure underneath the tent roof (as roof support bars 7 and groove joints 6 are essentially at the height of the canopy itself). Compare Pet. Reply 20, with Ex. 1004, Fig. 4. The modified device—Yang modified with apex portion 50 of Lynch—is most similar to the rightmost example in Petitioner’s graphic, as the height of the canopy has been increased at least somewhat as compared to the middle example. See Pet. Reply 20; see also PO Resp. 24 (acknowledging that the proposed modification would “increase the height of the roof (the ceiling height)”). The record supports that this increased total ceiling height—even if only for certain locations where a person might stand—would have motivated one of ordinary skill in the art to modify Yang based on Lynch as proposed. This determination is supported by the testimony of Dr. Klopp, who states that “[i]ncreased headroom in some places under a tent is desirable for stationary users, especially for users of above average height.” Klopp Reply Decl. ¶ 113, cited at Pet. Reply 19.” slip op. at 45
Patent outcomesUS 5,944,040 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 5,944,040 - Walmart Inc. / Z-Shade Co., Ltd. et al. v. Caravan Canopy International, Inc.All claims unpatentablePTAB · Nov 22, 2021 · IPR2020-01026 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1–3 are unpatentable as obvious over Yang and Lynch; the Board did not reach the alternative grounds.
RulingsFinal written decision- Skill levelSkill level board ownOther
“We determine that one of ordinary skill in the art at the time of the invention of the ’040 patent would have had (1) a bachelor’s degree in the mechanical arts, including but not limited to mechanical engineering and industrial design, (2) at least two years of experience in the design or analysis of mechanical devices, fabricated frames, and/or kinematic linkages, and (3) at least a basic understanding of ergonomics. As to part (1), although the parties outline generally similar requirements as to formal schooling, Patent Owner’s proposal provides enhanced clarity as to the identity of the related disciplines, which we view as supported by the record. See, e.g., Klopp Pet. Decl. ¶ 1, Ex. A; Rake Decl. ¶¶ 4, 7–9, 19. As to part (2), the parties again outline similar requirements as to work experience, but Petitioner’s proposal provides added detail on experience in relevant design features, which we view as supported by the record. See Exs. 1004–1007. As to part (3), given the nature of the technology at issue, we view a basic understanding of ergonomics as relevant to one of ordinary skill in the art. See, e.g., Ex. 1001, 3:12–49 (discussing operation of the invention by a person); Rake Decl. ¶ 31, cited at PO Resp. 4. This is the same level of ordinary skill adopted in the Decision on Institution. See Dec. Inst. 32–34.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “Center Pole” Petitioner proposes to construe “center pole” in element 1A as a “centrally-disposed, long, slender object.” Pet. 28–32. Patent Owner responds that the District Court rejected this proposal and held that the phrase should be given its “plain and ordinary meaning.” PO Resp. 5–6; see also Ex. 1018 at 6–10 (the District Court declining to construe “center pole”). We do not discern a need to construe explicitly this phrase because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
“Under the claim construction standard applied in this proceeding, “[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1313). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). For the reasons below, we view the plain and ordinary meaning of “stretching” on the complete record here as extending or spreading out, in line with portions of Petitioner’s proposed construction.” slip op. at 13
- Strike new argumentNew argument disregardedDecided for patent owner
“the context of its own invention, “constructed for stretching and sustaining a tent’s roof when a tent is pitched with the tent frame,” it is important to note that the Figure 3 embodiment in Lynch includes Velcro fasteners 35 that secure side panel 18 of canopy covering 12 to corner support member 22. See id. at 6:60–64 (“As is shown in phantom in FIG. 3, canopy covering 12 has a side panel 18 which is additionally secured to a top portion of corner support member 22 by means of corresponding hook and loop fasteners, such as Velcro fasteners 35.”). The issue here is whether the “center pole” in the context of the modified device (which does not include Velcro fasteners configured as in Lynch) is “constructed for stretching and sustaining a tent’s roof when a tent is pitched with the tent frame.”20 We determine that Petitioner has demonstrated that this requirement would be satisfied in the context of the modified device, even without Velcro fasteners. We first address whether the “center pole” in the modified device is “constructed for . . . sustaining a tent’s roof when a tent is pitched with the tent frame.” Petitioner states that after modifying roof bearing beam 8 in Yang to include apex portion 50 from Lynch, the “center pole” would “heighten and hold up the fabric tent roof” from Yang. Pet. 40 (citing Klopp Pet. Decl. ¶¶ 74–79). According to Petitioner, the proposed modification “would further push up the tent’s rooftop ‘to increase space for activities’ as well as creating more tension in the rooftop to reduce the risk of the rooftop ‘collapsing, bending, or leaking rainwater when raining.’” Id. (citing Ex. 1004 at 6–7; Klopp Pet. Decl. ¶¶ 77–79). We agree that the apex of the roof in Yang as modified by Lynch’s teachings would be higher than the 20 In the Reply, Petitioner seeks to rely on Lynch’s disclosure of using Velcro to attach the roof to the tent frame. See Pet. Reply 17 (bottom paragraph). As argued by Patent Owner, this is a new argument provided for the first time in reply. See PO Sur-reply 12–13; see also Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (“We see no error in the Board’s rejection of [a petitioner’s] reliance, in its Reply submissions, on previously unidentified portions of a prior-art reference to make a meaningfully distinct contention.”); Consolidated Trial Practice Guide 73 (Nov. 2019), https://www.uspto.gov/TrialPracticeGuide Consolidated (“TPG”) (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.”). We do not consider Velcro fasteners as part of the modified device.” slip op. at 36
Patent outcomesUS 5,944,040 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 5,944,040 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Cellect, LLCAll claims unpatentablePTAB · Aug 17, 2021 · IPR2020-00512 · APJ John R Kenny · IPR · Final written decision
Claim 2 is unpatentable as obvious over Swift, Ricquier, and Suzuki; the Board did not reach the alternative ground involving Larson.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Neither party identifies any material differences between a skill level corresponding to approximately two years of professional experience in the field of imaging devices and approximately three years of professional experience in the field of visible optical imaging devices, or any difference in the field of imaging devices and the field of visible optical imaging devices. On this record, there is none. We determine that the level of ordinary skill in the art is at the level of one who would have had a Bachelor’s degree in Electrical Engineering, Physics, or a related field, and approximately two to three years of professional experience in the field of visible optical imaging devices.6 This definition is consistent with the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). 6 We do not adopt Petitioner’s inclusion of the qualifier “minimum,” to keep the specified level of skill more definite.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We also are guided by the principle that we only construe claim terms if, and to the extent that, it is necessary for this proceeding. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party requests the construction of any claim term. Pet. 13; PO Resp. 12. Further, we do not find that any claim term requires express construction. III.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“Dr. Neikirk’s testimony is rational, and we credit his testimony over the testimony of Patent Owner’s inventor, who provides no explanation as to why it was purportedly unexpected that, as compared to CCD devices, a CMOS imager with remotely located processing circuitry requires no RFI shielding. For the foregoing reasons, Patent Owner has not established that the alleged unexpected result would have been unexpected to an ordinarily skilled artisan. Further, even assuming the alleged unexpected result truly would have been unexpected to an ordinarily skilled artisan, Patent Owner has not shown sufficient nexus between the unexpected result and the claimed invention.” slip op. at 20
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusNot shown unpatentable
“Accordingly, there is no presumption of nexus, and Patent Owner has not separately proved the required nexus for the alleged licensing and commercial success. Thus, there is not a legally and factually sufficient connection between the evidence of licensing and the patented invention.” slip op. at 14
Patent outcomesUS 9,186,052 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,186,052 - Daimler AG / Daimler North America Corporation et al. v. Stragent, LLCAll claims unpatentablePTAB · Jun 13, 2018 · IPR2017-00458 · APJ Carl L Silverman · IPR · Final written decision
Claims 1–7 and 20 are unpatentable under § 103 over Miesterfeld, Stewart, and Wense; claims 1, 3–7, and 20 are also unpatentable over Posadas, Stewart, and Wense.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner proposes that the term, “sharing the information,” should be construed according to its plain and ordinary meaning, which Patent Owner argues is “completing delivery to a destination” as information is not “shared” until the information has completed delivery to a destination. PO Resp. 15–16. Patent Owner contends the claim language and the specification describe the actual delivery of information to the local bulletin board. Id. (citing Ex. 1001, 6:27–31, 12:33–35). Petitioner contends Patent Owner’s proposed meaning is unreasonably narrow and proposes, instead, that the term “should be construed as ‘making the information available to another process,’ consistent with its plain meaning.” Reply 7 (citing Ex. 1036 ¶ 29). Petitioner observes the challenged claims do not recite delivery into a second process, and 7 Petitioner refers to the ’843 patent; in context, it is clear the reference is intended to be to the ’705 patent. additionally notes claim 1 of the related ’843 patent merely requires “sharing the information” and it is not until dependent claim 16 of the ’843 patent that “sharing” further includes “providing the information.” Id. Petitioner contends the doctrine of claim differentiation further supports its proposed claim construction. Id. Petitioner contends this claim construction is consistent with the Specification in which information is shared by placing the information on a bulletin board. Id. at 8 (citing Ex. 1036 ¶ 32). We agree with Petitioner’s claim construction analysis and agree that the broadest reasonable interpretation of “sharing the information” is “making the information available to another process.”” slip op. at 10
- Skill levelSkill level patent owner adoptedDecided for patent owner
“ordinary skill in the art “would have at least an undergraduate degree in Computer Engineering, Computer Science, or equivalent degree, and at least two years relevant experience in industry.” Ex. 1004 ¶ 48. Patent Owner’s Declarant, Jeffrey A. Miller, Ph.D, asserts that a person of ordinary skill in the art would have at least the qualifications of or equivalent to either a master’s degree in electrical engineering, computer science, or computer engineering with course work or research in embedded networking technologies or an undergraduate degree in electrical engineering, computer science, or computer engineering with at least two years of relevant work experience in industry. Ex. 2004 ¶ 12. Based upon our review of the ’705 patent and the prior art of record, we find Dr. Miller’s statement of the level of ordinary skill in the art reasonable, and adopt it for this Final Written Decision.” slip op. at 13
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We agree that Stewart’s memory management techniques are fundamental techniques applicable to shared memory environments and Petitioner’s reasoning is thus supported by sufficient rational underpinning. See KSR, 550 U.S. at 418. In particular, we credit Dr. Koopman’s testimony as being more persuasive than Dr. Miller’s testimony. See Ex. 1036 ¶¶ 59– 62; Ex. 1004 ¶¶ 97, 98; Ex. 2004 ¶¶ 30–39.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner contends there is no basis for combining Posadas and Stewart to arrive at the invention of claim 1. PO Resp. 27–30 (citing Ex. 2004 ¶¶ 30, 33). According to Patent Owner, Petitioner provides no explanation why a skilled artisan would have combined Posadas’s blackboard system with Stewart’s non-blackboard system. Id. (citing Ex. 2004 ¶¶ 34– 39). Petitioner contends a blackboard is simply a specific type of shared memory and the operations described by Stewart are fundamental features that could apply to any shared memory environment, e.g., determining whether memory is available before writing is a basic process that is not specific to any memory architecture. Reply 19 (citing Ex. 1037 ¶¶ 57–60). According to Petitioner, Stewart’s spin locks were well–known, simple tools to access shared memory and application to Posadas would have been straightforward. Id. at 20 (citing Ex. 1036 ¶¶ 57–59; Ex. 1004 ¶¶ 97–99). We agree that Stewart’s memory management techniques are fundamental techniques applicable to shared memory environments and Petitioner’s reasoning is thus supported by sufficient rational underpinning. See KSR, 550 U.S. at 418. In particular, we credit Dr. Koopman’s testimony as being more persuasive than Dr. Miller’s testimony. See Ex. 1036 ¶¶ 59– 62; Ex. 1004 ¶¶ 97, 98; Ex. 2004 ¶¶ 30–39.” slip op. at 29
Patent outcomesUS 8,209,705 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,209,705 - Bose Corporation v. Freebit AsAll claims unpatentablePTAB · Apr 18, 2018 · IPR2017-00130 · APJ David C Mckone · IPR · Final written decision
Claims 1–5 and 7–13 are unpatentable as obvious over Berg, Varming, and Aber; claim 6 is unpatentable as obvious over those references and Marshall.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“Patent Owner disagrees with Petitioner and argues that a skilled artisan would have had “a bachelor’s degree or master’s degree in audiology or hearing science and at least three years of experience with developing earphone and hearing instrument products.” PO Resp. 26. We do not discern a meaningful difference between the parties’ proposals, and the parties do not contend that any such difference has an impact on this proceeding. In any case, our findings and conclusions are the same under either party’s proposed level of skill.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner’s theory of obviousness, however, is that the prior art renders the challenged claims obvious even under Patent Owner’s narrower constructions. Pet. 37–39; Reply 4. For example, Petitioner argues: What they are saying is that the curvature, this new curvature that they have put into that C-shaped pad has to itself engage and fit closely, in other words touch the concha of the ear. We think that this is a narrow interpretation. When you look at the claim language, we are not really seeing support, Your Honor, for that particular narrow construction. And yet, what we are saying is that nonetheless, if we were to adopt that narrow construction, the prior art renders it obvious. Tr. 7:8–15. Petitioner does not have a theory of obviousness under broader constructions, should we find that the challenged claims are not rendered obvious under Patent Owner’s proposed constructions. Reply 4; Tr. 7:16– 9:2. Accordingly, we evaluate Petitioner’s allegations under Patent Owner’s proposed constructions, and need not determine whether the proper constructions should be broader to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“one problem with each of Mauney, Feldman, and Berg, “Varming does not identify the protrusion intended to penetrate into the ‘void or cavity’ of a user’s ear as a drawback of any one of these three devices.” Reply 6–7. We agree with Petitioner. As to Mauney and Feldman, Varming identifies protrusions that enter the ear canal as problematic because they block ambient sound and perspiration. Ex. 1005, 1:23–27, 2:1–6. As to Berg, Varming states that Berg’s large C-shaped pad interferes with the crus of helix, at least for those users with “a distinct and emphasized Crus of Helix,” causing discomfort or preventing the device from staying fixed in the ear. Id. at 2:20–23. Contrary to Patent Owner’s arguments, Varming does not identify interference with the crus of helix at the front of the ear as a problem in any of the three references it discusses in its background. Petitioner also points out that “Varming teaches quite the opposite, because its own device ‘penetrates’ into the void or cavity at the front of a user’s ear.” Reply 9–10 (citing Ex. 1005, 3:8–12 (“a first one of the pads being shaped and positioned to fit into the area of the Cymba Concha by penetration from the area below the Inferior Crux of the Antihelix and above the Crus of Helix”), 8:23–25 (“The pads are formed as one penetrating the area in the Cymba Concha from the area below the inferior Crux of the Antihelix and above the Crus of Helix.”)). After considering Varming’s background discussion and the description of its own invention, we are not persuaded that Varming’s discussion of Berg’s interference with the crus of helix refers to interference at the front of the ear. Rather, Varming clearly describes a device that protrudes into the void or cavity at the front of the ear, a fact that undermines Patent Owner’s argument and the testimony of Dr. Staab.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“As noted in the Institution Decision, however, Petitioner does not propose simply incorporating groove 18 from Aber into Berg’s C-shaped earpiece. Dec. 22. Cf. In re Mouttet, 686 F. 3d 1322, 1332 (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). Rather, Petitioner argues that a skilled artisan would have modified Berg’s C-shaped earpiece by adding a groove at the location of the gap specified in Varming. Pet. 31–32. As Dr. Casali observes, “Aber teaches a known alternative feature for accommodating ridges of the outer ear, which include the extension of the crus of helix.” Ex. 1003 ¶ 70. According to Dr. Casali, “as a result of this modification, the concha-facing contact surface of earpiece 10 would substantially conform to the concha and enable the ear unit to fit closely against the concha when the ear unit is positioned into the ear.” Id. ¶ 71. We find Dr. Casali’s testimony credible and persuasive. As Dr. Casali notes (Ex. 1003 ¶ 71), Berg states that groove 18 partially embracing the crus of helix “assist[s] in firmly retaining the audiophone in place in the ear” and provides “a much greater area of contact between the cap 14 and the ear than is commonly found in devices of this kind, which results in less strain on the ear.” Ex. 1006, 1:75–83. We find that Aber provides a teaching that a groove embracing a ridge of the ear helps hold a device in place in the ear and find that this teaching would have been applicable to Berg’s earpiece. Because the extension of the crus of helix at the location of Varming’s gap is less pronounced than the crus of helix at the front of the ear, a groove at Varming’s gap providing the benefits expressly specified by Aber would be correspondingly less pronounced. Ex. 1003 ¶ 71; Ex. 1015 ¶¶ 22–23.” slip op. at 34
Patent outcomesUS 8,976,995 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,976,995
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.