• Square, Inc. v. Unwired Planet, LLCInstitution denied
  PTAB · Dec 23, 2015 · CBM2015-00148 · APJ James B Arpin · CBM · Institution

  Institution of CBM review of claims 1–4 was denied because § 325(e)(1) estopped Square from pursuing grounds it reasonably could have raised in its earlier CBM petition.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDenied

    “(emphasis added). As noted above, we issued a Final Written Decision in CBM2014-00156, determining that claims 1–4 of the ’100 patent are unpatentable under 35 U.S.C. § 101. ’156 Dec. 40. Petitioner here was the petitioner in CBM2014-00156, which resulted in a Final Written Decision with respect to claims 1–4. Thus, pursuant to § 325(e)(1), Petitioner cannot “request or maintain” a proceeding before the Office with respect to these claims “on any ground” that Petitioner “raised or reasonably could have raised” in its Petition in CBM2014-00156.” slip op. at 6

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “discovered Orlen earlier, or foreseen our determination that Petitioner had not shown Vazvan’s public availability, we are not persuaded that Petitioner reasonably could not have raised each of the challenges identified above to claims 1–4 of the ’100 patent, based on 35 U.S.C. § 103(a), in its CBM2014- 00156 Petition. Section 325(e)(1) estops Petitioner from requesting or maintaining a proceeding before the Office with respect to the claims at issue in CBM2015-00148 on “any ground that [Petitioner] raised or reasonably could have raised” in CBM2014-00156. Thus, 35 U.S.C. § 325(e)(1) is applicable to the new challenges to claims 1–4 of the ’100 patent. Consequently, Petitioner is estopped from requesting, e.g., petitioning for institution of, or maintaining a proceeding with respect to claims 1–4 of the ’100 patent on the grounds asserted here. See supra Section I.E. Because Petitioner is estopped from requesting or maintaining a proceeding with respect to claims 1–4 based on any ground it “reasonably could have raised” in its earlier petition, we deny covered business method patent review of claims 1–4 of the ’100 patent in the present proceeding.” slip op. at 10

  Discretionary denial
  Patents in suitUS 7,711,100
• Sensus USA, Inc. v. Certified Measurement, LLCInstitution denied
  PTAB · Dec 11, 2015 · IPR2015-01439 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 43 unpatentable over any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), an inter partes review may be instituted only if “the information presented in the [P]etition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the [P]etition.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record, we are persuaded that Petitioner has not established a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’453 patent. Accordingly, we deny the Petition and decline to institute an inter partes review of the ’453 patent.” slip op. at 2

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Patent Owner contends that Petitioner’s identification of the real parties-in-interest is incomplete, and that the Petition should be denied as failing to comply with 35 U.S.C. § 312(a)(2). Prelim. Resp. 30–31. Patent Owner asserts that in a related litigation involving the ’453 patent, Petitioner identified an insurance company as covering some of the costs of defending the action against Patent Owner. See Ex. 2001. Patent Owner argues: A hallmark of indemnity or insurance agreements that are available to satisfy part or all of a judgment or to reimburse payments of same is an ability for the insurer or indemnitor to control over [sic] aspects of the litigation, including the defense and maintenance of an inter partes review which seek[s] to invalidate the subject patent. Prelim. Resp. 30. Patent Owner’s argument is generic and fails to identify any specific evidence that any parties other than those identified by Petitioner actually is exercising control over or could exercise control over this proceeding.1 Accordingly, we decline to deny the Petition on this basis. D. The References Petitioner relies on the following references: U.S. Patent No. 4,077,005, issued Feb. 28, 1978 (Ex. 1005, “Bishop”); U.S. Patent No. 5,199,068, issued Mar. 30, 1993 (Ex. 1006, “Cox”); U.S. Patent No. 5,689,442, issued Nov. 18, 1997 (Ex. 1007,” slip op. at 3

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Petitioner does not propose a construction for “augmented measurement” aside from stating that it “is described in the individual claims of the patent.” Pet. 17. Nevertheless, Petitioner’s argument suggests that generating an “augmented measurement” requires effecting some combination of the elements recited in the claim—the first signal, the second signal, and the third signal. See Pet. 27 (asserting that Cox disclosing “combining” the previously recited elements of the claim in arguing that Cox teaches “generating an augmented measurement”). Thus, both Petitioner and Patent Owner recognize that generating an augmented measurement requires combining specified elements of the claim. We agree. The parties’ recognition that an augmented measurement requires combining specified elements of the claim is consistent with the specification of the ’453 patent. The ’453 patent explains that an “augmented measurement comprising the cleartext time plus the physical measurement” is created by adding a physical measurement of any physical parameter or event to a time. Ex. 1001, 7:66–8:2.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Petitioner’s argument is not persuasive because Petitioner fails to show that Bishop’s position P signal is formed from two separate signals based at least in part on two physical measurements. Petitioner’s cited portions of Bishop fail to disclose how position P is generated aside from stating that “position P of the ship is determined to an accuracy of + 2 nm . . . by the ship’s navigation equipment 48.” Ex. 1005, 2:63–66. Petitioner, however, has not identified where, if at all, Bishop discloses how the navigation equipment generates the position of the ship. Petitioner’s citations to Bishop’s column 3 refer to Bishop’s disclosure of generating a combined message, which Bishop designates as IS + P + T1, and then enciphers. See, e.g., id. at 3:7–23. Additionally, Petitioner’s reliance on paragraph 40 of the Nielson Declaration fares no better. Dr. Nielson’s testimony includes the same statements as the Petition without providing additional explanation or evidentiary support for us to conclude that Bishop expressly or inherently discloses that its position P signal is formed from two separate signals based at least in part on two physical measurements. See 37 C.F.R. § 42.65(a). Accordingly, on this record, we are not persuaded that Petitioner has established a reasonable likelihood of prevailing on the assertion that Bishop discloses each and every element of claim 43 of the ’453 patent.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,289,453
• Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. et al. v. Imperium (IP) HoldingsInstitution denied
  PTAB · Dec 2, 2015 · IPR2015-01231 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “only if “the information presented in the [P]etition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the [P]etition.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record, we are persuaded that Petitioner has not established a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’884 patent. Accordingly, we deny the Petition and decline to institute an inter partes review of the ’884 patent.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)

    “the setting step of claim 1. Petitioner, however, has not persuaded us, on this record, that Hashimoto likely discloses the claimed adjusting step. First, the citations and parentheticals in Petitioner’s claim charts do not, on their face, teach or suggest this step. Second, even though Petitioner points to Hashimoto’s disclosure of combining photoelectric charge accumulation time changes with gain control, Petitioner does not explain how Hashimoto actually combines these two features. Hashimoto’s discussion of gain control, in the context of Figure 10, suggests that gain is controlled via offsets, specifically offset A or offset B. See, e.g., Ex. 1004, 11:15–20 6 In addition, Petitioner cites to paragraph 74 of the Neikirk Declaration (Pet. 31), which cites to the same portion of Hashimoto but does not provide additional explanation as to how this disclosure teachings the “adjusting” step of claim 1. Ex. 1003 ¶ 74 (citing Ex. 1004, 4:64–5:8; Ex. 1003, footnotes 1–5, 7). (“Accordingly, when the shutter speed is changed from 1/100, the gain is corrected or controlled with the offset, thus obtaining proper brightness control. The offset A is used when the shutter speed is changed from 1/100 to 1/50, and the offset B is used when the shutter speed is changed from 1/100 to a higher speed.”). In Hashimoto’s discussion of gain control, however, Petitioner does not identify, and we are unable to discern, a teaching of “adjusting the overall system gain by adjusting the integration time while maintaining the integration time at an integral multiple of the period of the periodic intensity.”7” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found

    “depend from claim 14. Petitioner relies upon the same teachings of Hashimoto, discussed above with respect to claims 1 and 14, in Petitioner’s challenges to (1) claims 1–6 and 14 as obvious over Hashimoto and Kinugawa; (2) claims 14 and 17–19 as obvious over Hashimoto and the knowledge of a person of ordinary skill in the art; (3) claims 17–19 as obvious over Hashimoto, Nishiyama, and the knowledge of a person of ordinary skill in the art; (4) claims 17–19 as obvious over Hashimoto, Nishiyama, Kinugawa, and the knowledge of a person of ordinary skill in the art; and (5) claims 17–19 as obvious over Hashimoto and the knowledge of a person of ordinary skill in the art. See, e.g., Pet. 31 (referring to Petitioner’s discussion of claim 1), 38 (referring to Petitioner’s discussion of claim 14). Petitioner does not assert that Kinugawa, Nishiyama, or the knowledge of one of ordinary skill in the art9 remedies the deficiencies discussed above with respect to claims 1 and 14, or that the “adjusting” step of claim 1 and the “gain control block” of claim 14 would have been obvious in light of any of these additional references or teachings. Accordingly, for the reasons discussed above with respect to Hashimoto and claims 1 and 14, Petitioner has not established, on the record before us, a reasonable likelihood of prevailing on the assertions that as of 9 For the purposes of this Decision, we need not decide whether Petitioner’s reliance upon the knowledge of a person of ordinary skill in the art violates 35 U.S.C. § 311(b), which limits the grounds under which a petitioner may request cancellation of claims in an inter partes review to “a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications” (emphasis added). the effective filing date of the claimed invention: (1) claims 1–6 and 14 would have been obvious over Hashimoto and Kinugawa; (2) claims 14 and 17–19 would have been obvious over Hashimoto and the knowledge of a person of ordinary skill in the art; (3) claims 17–19 would have been obvious over Hashimoto, Nishiyama, and the knowledge of a person of ordinary skill in the art; (4) claims 17–19 would have been obvious over Hashimoto, Nishiyama, Kinugawa, and the knowledge of a person of ordinary skill in the art; and (5) claims 17–19 would have been obvious over Hashimoto and the knowledge of a person of ordinary skill in the art.” slip op. at 17

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,271,884
• Square, Inc. v. Think Computer CorporationAll claims unpatentable
  PTAB · Nov 27, 2015 · CBM2014-00159 · APJ Michael W Kim · CBM · Final written decision

  Claims 1–7, 9–11, 13–17, and 20–22 are unpatentable under § 103; the motion to amend claims 23–43 is denied.

  RulingsFinal written decision

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

    “Beginning with the claim terms themselves, the word “selectively” is used. We discern that the ordinary and customary usage of this word denotes expressly that a particular account need not function simultaneously as both a merchant account and a purchaser account; a user is permitted expressly to select which account mode is desired at the appropriate point in time. The following disclosure in the Specification is consistent with this understanding: An entity (e.g., a person, business, or other legally recognized entity) preferably creates an account within the payment system. The accounts of the payment system are preferably designed so that an account may selectively function as either a merchant or a purchaser during any particular transaction. In other words, within the scope of all transactions, accounts of the payment system can function as bi-directional transaction accounts. Ex. 1001, 3:15–22. Indeed, here, the Specification discloses expressly that being able to select which account mode is desired is the same as “bi-directional transaction accounts.”” slip op. at 13

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

    “more properly considered a claim construction. PO Resp. 9. And indeed, when considered in conjunction with Petitioner’s proposed construction, the two constructions are similar. As noted by both Patent Owner and Petitioner, the Specification only mentions “line item data,” or similar wording, as follows: Additionally, as one of the main benefits of having merchant product catalogs integrated into the payment system, line item transaction data can be communicated. The line item data is additionally stored as part of the transaction record of the accounts. This itemized information can be very useful, such as in one application where tax forms are automatically completed by aggregating each category of line item transaction data as appropriate. Ex. 1001, 8:6–13. From the aforementioned portion of the Specification, we determine that the key to a proper construction of “line item data” is that it is information that is itemized and capable of categorization. In other words, “line item data” is an itemized part of a larger whole, more specifically, but not limited to, product catalogs, purchase lists, and transactions records, i.e., at a most granular level, individual products involved in a purchase or sale, as advocated by Petitioner. This focus on itemization and categorization of products is supported by other portions of the Specification cited by the parties, for example, column 2, lines 15–17, which recites that “[t]he integration of the payment system and product catalog functions to enable recording and tracking transactions with itemized detail” (emphases added). See also Ex. 1001, 5:51–55 (“the method may additionally store purchase list information as a transaction record for the merchant account and/or the purchaser account, which functions to form an itemized purchase history” (emphasis added)); 4:4–6 (“[t]he product catalog preferably includes a listing of product descriptions and prices for each product contained within the product catalog” (emphases added)); 4:6–13 (“[a]dditional information may be included for a product such as categories for tax purposes and other purposes, product-related IDs for each distributor of the product (e.g., Stock-Keeping Unit or ‘SKU’), images or media files related to the product, inventory related information (the number of items on hand, on order, etc. at each warehouse location), or any other suitable product-related data” (emphases added)); 4:13–16 (“[t]he product catalog may be a database accessed by outside applications, but may additionally or alternatively include a hosted web-based store through which products can be added to a shopping cart (i.e., a purchase list)” (emphases added)). Accordingly, we construe “line item data” as “itemized information from a larger group of information, related to individual products involved in a purchase or sale, that is capable of categorization,” where non-limiting examples of “line item data” may include one or more of “quantity, description, type, cost, product identifier (e.g., stock keeping unit), tax, duty, shipping or other fees.”” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “valid reason for combining Bemmel and Dalzell, because Dr. Sadeh- Koniecpol’s opinions of industry custom are unsupported. We are unpersuaded that Dr. Sadeh-Koniecpol’s opinions are unsupported, and especially unpersuaded that Dr. Sadeh-Koniecpol has not provided adequate support regarding the reasons for combining Bemmel and Dalzell. Dr. Sadeh-Koniecpol includes explicit citations to references, in particular Bemmel and Dalzell, for supporting his conclusions, and we determine that any purported “leaps of logic” taken by Dr. Sadeh-Koniecpol are reasonable given the underlying support. For example, Dr. Sadeh-Koniecpol opines that “one of ordinary skill in the art would have been motivated to combine the mobile payment system of Bemmel with the electronic marketplace of Dalzell.” Ex. 1002 ¶ 136. Of course, this paragraph considered in isolation would be an unsupported opinion. Dr. Sadeh-Koniecpol, however, then goes on to support this opinion with explicit citations to Bemmel and Dalzell. Ex. 1002 ¶¶ 137, 139, 140. Dr. Sadeh-Koniecpol then reaches conclusions that we determine flow logically from those citations. Ex. 1002 ¶¶ 138, 141, 142.” slip op. at 21

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “Patent Owner asserts additionally that the Board should exercise its discretion under 35 U.S.C. § 325(d) and deny the Petition, because similar art was already before the Examiner during prosecution. We note that 35 U.S.C. § 325(d) is normally exercised in a Decision on Institution. Moreover, we have already conducted a full trial in this proceeding subsequent to a Decision on Institution. Furthermore, 35 U.S.C. § 325(d) is discretionary, and insofar as Patent Owner is requesting any vacating of the Decision on Institution, we decline to do so for the reasons set forth above.” slip op. at 28

  Patent outcomesUS 8,396,808 unpatentable
  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,396,808
• L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentable
  PTAB · Nov 23, 2015 · IPR2014-00836 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–5 and 8 are unpatentable as obvious over the cited combinations of the EFA Manual, Thomas, and, where applicable, Greene or Brigham.

  RulingsFinal written decision

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

    “term “anomaly” is “deviation from the normal or common order, form, or rule.” Dec. on Inst. 7 (citing THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, 54 (1975)); Ex. 3001, 54. The examples provided in the ’856 patent for identifying a voltage anomaly are consistent with this definition. Namely, a spike in the electric field or an increase in the electric field above a threshold would indicate a deviation from the normal order. Ex. 1002, col. 17, ll. 12–19, col. 18, ll. 8–9, col. 19, ll. 62–67, col. 21, ll. 4– 7. Therefore, we determined that the broadest reasonable interpretation of the phrase “identify the voltage anomaly in the electric field” in claim 1 of the ’856 patent is “identify a deviation from a normal voltage in the electric field, including by identifying an electric field that exceeds a threshold, or that rises and peaks above a threshold or background and then falls.” Dec. on Inst. 7. We see no reason now to deviate from that construction.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 24–27, 42–45; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1022 ¶¶ 51–55, 65–67. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 52–53; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1022 ¶¶ 104–106; see KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Brigham with the EFA Manual and Thomas because the EFA Manual teaches using the fast Fourier transform to produce electric field strengths, and, thus, one of ordinary skill in the art would have looked to other references, such as Brigham, for well-known ways to implement the fast Fourier transform. Pet. 54–56; Ex. 1004 § 6.3, Annex C; Ex. 1008, 83–87; Ex. 1022 ¶¶ 109–110; see KSR, 550 U.S. at 416.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “c. Teaching Away Patent Owner argues that the EFA Manual teaches away from the combination proposed by Petitioner. PO Resp. 27–30. In particular, Patent Owner argues that the EFA Manual teaches that the electric field sensor disclosed therein must be mounted on a tripod. Id. at 29. According to Patent Owner, requiring the sensor to be mounted on a tripod indicates that the sensor cannot be used while in motion. Id. at 28–30. Patent Owner’s argument is not persuasive. Although the EFA Manual requires that the sensor be “mounted on a tripod and insulated from it” (Ex. 1004 § 3.4.1), Patent Owner does not identify any teaching in the EFA Manual that prohibits the sensor from being used while in motion (Ex. 1024, 108:20– 109:3). Further, as discussed above, Thomas teaches that an electric field sensor can be mounted to an electrically non-conductive support structure on a motor vehicle and used while the vehicle is in motion. Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. Thus, one of ordinary skill in the art reading the EFA Manual and Thomas together would understand that the sensor taught in the EFA Manual could be mounted securely to and insulated from a support structure on a motor vehicle, which would satisfy the conditions for use set forth in the EFA Manual. See Ex. 1022 ¶¶ 52–53.” slip op. at 22

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “could only identify voltage anomalies by making direct contact with each potential hazard using a handheld device. PO Resp. 36. According to Patent Owner, this manual scanning did not scale effectively to large cities because of the geographic footprint and large number of potential hazards. Id. at 36– 37. Patent Owner contends that this demonstrates a long-felt but unmet need “for efficient, scalable, stray voltage detection capable of serving as an alternative to manual testing.” Id. at 37. Although Patent Owner explains generally why the technology existing prior to the ’856 patent may not have been ideal for large cities, that alone does not indicate that utility companies actually had a long-felt but unmet need for a more efficient alternative, rather than, for example, just a lack of interest in the technology.” slip op. at 23

  Patent outcomesUS 8,536,856 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,536,856
• L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentable
  PTAB · Nov 23, 2015 · IPR2014-00839 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–5 and 8 are unpatentable as obvious over the EFA Manual and Thomas, with Greene also applied to claim 3.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “anomaly in the electric field” in claim 1 of the ’864 patent to mean “detect an electric field that rises and peaks above a threshold or background and then falls.” PO Resp. 53. Patent Owner argues that the claims and written description of the ’864 patent indicate that a voltage anomaly is identified as the sensor moves past the anomaly. Id. at 53–55. Therefore, according to Patent Owner, an anomaly is represented by a rise in the electric field as the sensor moves closer to the anomaly, a peak when the sensor is near the anomaly, and a fall when the sensor moves past the anomaly. Id. In the Decision on Institution, we determined that Patent Owner’s proposed construction would improperly limit the claims to just one of the examples disclosed in the Specification, and we see no reason now to deviate from that determination. Dec. on Inst. 6 (citing Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007)). Specifically, the ’864 patent states that an anomaly can be “represented for example by a rise-peak-fall in the alert pitch, a corresponding visual spike in raw voltage plot 1206, a high signal strength value in signal strength display field 1322 or a combination thereof.” Ex. 1001, col. 19, ll. 18–23 (emphasis added). Thus, the ’864 patent indicates that a rise-peak-fall in the audible alert or a visual spike are just examples of ways to identify an anomaly. The ’864 patent states that a voltage anomaly also can be identified by an electric field that exceeds a threshold or a high signal strength value. Id. at col. 16, ll. 36–43, col. 17, ll. 31–32, col. 19, ll. 18–23, col. 20, ll. 27–30.” slip op. at 6

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

    “2. mobile Patent Owner proposes construing the term “mobile” in claim 1 of the ’864 patent to mean “designed to operate while in motion.” Prelim. Resp. 5; PO Resp. 57. Patent Owner argues that the written description of the ’864 patent supports this construction because it states that “the sensor system 100 may detect an energized manhole cover . . . when moving at speeds of up to 10 mph.” Prelim. Resp. 6; Ex. 1001, col. 10, ll. 42–48. We agree that the written description indicates that a mobile apparatus operates while in motion, but Patent Owner does not identify specific evidence showing that a mobile apparatus must be “designed” to operate in motion. Prelim. Resp. 5– 7; PO Resp. 57. Therefore, we determine that the broadest reasonable interpretation of the term “mobile apparatus” in claim 1 of the ’864 patent is “apparatus that operates while in motion.”” slip op. at 8

  • Skill levelOther

    “a. Level of Ordinary Skill in the Art Patent Owner argues that a person of ordinary skill in the art would not have combined the cited teachings of the EFA Manual and Thomas because it was not known at the time of filing of the ’864 patent that an electric field sensor could be used to identify a stray voltage anomaly. PO Resp. 13–16. Patent Owner’s argument is not persuasive. Patent Owner’s declarant, Dr. Fugate, admits that a person of ordinary skill in the art at the time of filing of the ’864 patent would have known that an electric field sensor could be used to identify a stray voltage anomaly. Ex. 1024, 126:10– 127:1; Tr. 61:4–7. Further, as discussed above, Thomas teaches that electric current flowing through an object generates an anomaly in an electric field, and, thus, it would have been obvious to one of ordinary skill in the art reading Thomas that an electric field sensor could be used to identify a stray voltage anomaly. See supra Section II.B.2; Pet. 38–41; Ex. 1005, col. 7, ll. 6–10; Ex. 1021 ¶¶ 75, 76. Patent Owner also argues that “Petitioners’ sole reason for combining the EFA Manual and Thomas relies solely on the false premise that a skilled artisan would have known about the private Sarnoff experiments on stray voltage detection using electric fields,” but “Petitioners failed to show that the skilled artisan would have known about this work.” PO Resp. 16. Patent Owner’s argument is not persuasive. Thomas teaches mounting an electric field sensor on a motor vehicle and using the sensor to identify anomalies in electric fields while the vehicle is in motion. Ex. 1005, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. As such, Thomas itself would have provided one of ordinary skill in the art with a reason to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas and use the sensor to identify anomalies in electric fields while the vehicle is in motion. Pet. 24– 28, 38–41; Ex. 1021 ¶¶ 49–53, 55–58. Therefore, Petitioner’s reason for combining the cited teachings of the EFA Manual and Thomas is not dependent on whether one of ordinary skill in the art would have known about any private Sarnoff experiments.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “4. Reasons for Combinations Petitioner identifies evidence indicating that it would have been obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 24–28, 38–41; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1021 ¶¶ 49–53, 55–58. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 48–49; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1021 ¶¶ 89–91; see KSR, 550 U.S. at 416.” slip op. at 15

  Patent outcomesUS 8,598,864 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,598,864
• L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentable
  PTAB · Nov 23, 2015 · IPR2014-00834 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–5 and 8 are unpatentable as obvious under § 103(a) over the specified combinations of the EFA Manual, Thomas, and, for dependent claims, Greene or Brigham.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner

    “proposed construction is not the broadest reasonable interpretation, and we see no reason now to deviate from that determination. Dec. on Inst. 5–6. Specifically, the word “unexpected” in Petitioner’s proposed construction is not found anywhere in the claims or the written description of the ’274 patent, and we are not persuaded that the word “unexpected” is synonymous with “undesirable” or “dangerous.” Further, Petitioner does not explain how any of the cited portions of the prosecution history show that the “voltage anomaly” recited in claim 1 is an unexpected voltage. Pet. 15–17.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 25–28, 43–45; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1023 ¶¶ 51–55, 64–66. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 53–54; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1023 ¶¶ 100–102; see KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Brigham with the EFA Manual and Thomas because the EFA Manual teaches using the fast Fourier transform to produce electric field strengths, and, thus, one of ordinary skill in the art would have looked to other references, such as Brigham, for well-known ways to implement the fast Fourier transform. Pet. 55–57; Ex. 1004 § 6.3, Annex C; Ex. 1008, 83–87; Ex. 1023 ¶¶ 105–106; see KSR, 550 U.S. at 416.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “c. Teaching Away Patent Owner argues that the EFA Manual teaches away from the combination proposed by Petitioner. PO Resp. 27–30. In particular, Patent Owner argues that the EFA Manual teaches that the electric field sensor disclosed therein must be mounted on a tripod. Id. at 29. According to Patent Owner, requiring the sensor to be mounted on a tripod indicates that the sensor cannot be used while in motion. Id. at 28–30. Patent Owner’s argument is not persuasive. Although the EFA Manual requires that the sensor be “mounted on a tripod and insulated from it” (Ex. 1004 § 3.4.1), Patent Owner does not identify any teaching in the EFA Manual that prohibits the sensor from being used while in motion (Ex. 1024, 108:20– 109:3). Further, as discussed above, Thomas teaches that an electric field sensor can be mounted to an electrically non-conductive support structure on a motor vehicle and used while the vehicle is in motion. Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. Thus, one of ordinary skill in the art reading the EFA Manual and Thomas together would understand that the sensor taught in the EFA Manual could be mounted securely to and insulated from a support structure on a motor vehicle, which would satisfy the conditions for use set forth in the EFA Manual. See Ex. 1023 ¶¶ 52–53.” slip op. at 22

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “could only identify voltage anomalies by making direct contact with each potential hazard using a handheld device. PO Resp. 36. According to Patent Owner, this manual scanning did not scale effectively to large cities because of the geographic footprint and large number of potential hazards. Id. at 36– 37. Patent Owner contends that this demonstrates a long-felt but unmet need “for efficient, scalable, stray voltage detection capable of serving as an alternative to manual testing.” Id. at 37. Although Patent Owner explains generally why the technology existing prior to the ’274 patent may not have been ideal for large cities, that alone does not indicate that utility companies actually had a long-felt but unmet need for a more efficient alternative, rather than, for example, just a lack of interest in the technology.” slip op. at 23

  Patent outcomesUS 8,482,274 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,482,274
• United States Department Of Homeland Security v. Larry GoldenRehearing denied
  PTAB · Nov 17, 2015 · IPR2014-00714 · APJ Kevin W Cherry · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving in place denial of substitute claims 154–156 because they were broader, lacked written description support, and were not shown patentable over the prior art.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The burden of showing [the] decision should be modified lies with the party challenging the decision.” Id. The 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.” Id.” slip op. at 2

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “three independent reasons: (1) substitute claims 154–156 are impermissibly broader than the claims they replaced; (2) Patent Owner failed to show written description support for substitute claims 154–156 as a whole; and (3) Patent Owner failed to show that claims 154–156 were patentable over the prior art of record. Final Dec. 15–21 (improper broadening), 21–22, (written description), 22–31 (prior art of record). Therefore, to succeed on this Rehearing Request, Patent Owner must show that we misapprehended or overlooked matters in reaching each of these determinations. Patent Owner has not done so. We address Patent Owner’s arguments in detail below.” slip op. at 3

  • ScopeDenied

    “In any event, this priority date argument does not contain any reason why our determination that substitute claims 154–156 are broader in scope than cancelled claims 11, 74, and 81 that they seek to replace was in error. Reh’g Req. 4–5. To the extent that Patent Owner does contest our finding that the claims are broader in scope, we do not find it persuasive because Patent Owner does not show amending a claim to replace a particular species with an entire genus would not be broadening. Thus, this argument regarding priority date does not persuade us that we erred in denying Patent Owner’s motion to amend.” slip op. at 4

  • 112 supportDenied

    “B. Lack of Written Description Support Patent Owner argues that we should also excuse Patent Owner’s failure to identify written description support for the entire claim because of the “special circumstances” discussed above. Reh’g Req. 2–3. Without determining whether such an exception exists for the requirement of providing written description support for the entire claim, Patent Owner fails to identify anywhere in the Patent Owner Response or Motion to Amend where this argument was raised. Because the argument was not raised, we could not have misapprehended or overlooked it. Thus, we determine that Patent Owner has failed to show that we erred in our determination that the Motion to Amend failed to show written description support for the claim as a whole.” slip op. at 5

  § 102 anticipation
• PNC Bank, Na / Suntrust Bank v. Parus Holdings, Inc.Institution denied
  PTAB · Nov 9, 2015 · CBM2015-00150 · APJ Bart A Gerstenblith · CBM · Institution

  The Board denied institution for claims 1–18 because Petitioner did not show that the patent was eligible for covered business method review.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “for the creation of a transitional program for reviewing covered business method patents. “The Director may institute a transitional proceeding only for a patent that is a covered business method patent.” Pub. L. No. 112-29, § 18(a)(1)(E), 125 Stat. 284, 330 (Sept. 16, 2011). A “covered business method patent” is a patent that “claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” Id. § 18(d)(1), 125 Stat. at 331; accord 37 C.F.R. § 42.301(a) (providing the same definition of “covered business method patent”). “The petitioner must demonstrate that the patent for which review is sought is a covered business method patent.” 37 C.F.R. § 42.304(a).” slip op. at 9

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied

    “discussed above, a teleconference was held with the parties on November 5, 2015. Petitioner and Patent Owner jointly request authorization to file a motion for termination under 35 U.S.C. § 327, the statute governing termination of instituted post-grant reviews due to settlement, but confirmed during the call that no written settlement agreement currently exists. The parties request that the proceedings terminate without estoppel, such that Petitioner can re-file the petitions upon completion of Federal Circuit review of the District Court’s ineligibility determination, if necessary. Patent Owner limits its agreement to Petitioner re-filing the same petitions. Effectively, the parties request that we stay these proceedings pending Federal Circuit review of the District Court’s decision. We deny the parties’ request. As explained below, the ’120 patent is not eligible for covered business method patent review. Deferring entering such a decision is inconsistent with our policy objective of “secur[ing] the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1. We do not reach, and, thus, express no opinion on, eligibility of the claims of the ’120 patent under 35 U.S.C. § 101.” slip op. at 3

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

    “II. CLAIM CONSTRUCTION Although Petitioner presents constructions for several claim terms, no terms require express construction for purposes of this Decision.” slip op. at 9

  Claim constructionDiscretionary denial
  Patents in suitUS 8,843,120
• PNC Bank, Na / Suntrust Bank v. Parus Holdings, Inc.Institution denied
  PTAB · Nov 9, 2015 · CBM2015-00110 · APJ Bart A Gerstenblith · CBM · Institution

  The Board denied both petitions and did not institute CBM review of claims 1–18 because Petitioner did not show the patent was eligible for CBM review.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “On this record, Petitioner has not introduced persuasive evidence to show that at least one claim of the ’120 patent claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. Accordingly, Petitioner has not met its burden of demonstrating that the ’120 patent is eligible for covered business method patent review.” slip op. at 19

  Discretionary denial
  Patents in suitUS 8,843,120

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.