• Snap Inc. v. Sanderling Management Ltd.Instituted
  PTAB · Nov 9, 2021 · IPR2021-00780 · APJ Timothy J Goodson · IPR · Institution

  The Board instituted review of claims 1, 2, 4–6, 8–16, 18, 19, 21–23, and 25–33 because Snap showed a reasonable likelihood they would have been obvious over Hogeg.

  RulingsInstitution decision

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

    “Concerning [1b], Petitioner relies on Hogeg’s system 100, which includes network servers, as the claimed “at least one hardware processor,” and the visual content editing functions stored in Hogeg’s repository 104 as the claimed “one or more digital media content processing functions.” Id. at 28–32. Petitioner argues that Hogeg teaches that its visual content editing functions are “associated with at least one distribution rule defining a sensor data condition” as claimed because a subset of functions are selected and distributed based on sensed conditions such as client terminal location. Id. at 33–41. Turning to [1c], Petitioner argues that Hogeg teaches receiving over network 101 sensor data from client terminals 102 that is determined according to outputs of GPS units of client terminals 102. Id. at 42–46. As to [1d], Petitioner argues that Hogeg teaches distributing digital media content processing functions to mobile devices “based on a match between the sensor data condition . . . and the sensor data of the at least one mobile device” as claimed because it describes sending a subset of visual content editing functions to a client terminal based on matching the GPS data from the mobile device with location information related to the visual editing functions stored in system 100. Id. at 46–50. Finally, with respect to [1e], Petitioner asserts that Hogeg teaches that “the at least one digital media content processing function is configured to be used by an application executed on the at least one mobile device” as claimed because Hogeg describes that its visual content editing function is configured to be used by an app, widget, or add-on in client terminal 102. Id. at 50–52. Further, Petitioner asserts that Hogeg’s content editing function “process[es] a digital media content to create an output digital media content” as claimed because it processes an image on a client terminal and creates a new image, which is a modified version of the original image. Id. at 50, 52–55. Based on the current record, we determine that Petitioner has” slip op. at 31

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “because it “allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Because the [district] court decided an issue that does not overlap with those presented in this proceeding, and the [district] court is not likely to address the obviousness issues before our final written decision (if it addresses the issues at all), the [district] court’s ruling has allayed any concerns about inefficiency and duplication of efforts between us and the [district] court. Wyze, Paper 14 at 10. The same reasoning applies here. The district court’s judgment of invalidity under § 101 and Patent Owner’s appeal of that judgment virtually assures that the district court will not be considering the same obviousness issues presented in this Petition during the course of this proceeding.” slip op. at 13

  • Parallel petitionsDecided for petitioner

    “We are satisfied that Petitioner has provided an adequate justification for filing two petitions to challenge the ’986 patent. The Board’s Practice Guide notes that a need to address a large number of claims is one example of a circumstance where more than one petition may be necessary. See Patent Trial and Appeal Board, Consolidated Trial Practice Guide, at 59 (Nov. 2019). Beyond the number of challenged claims, it is reasonable for Petitioner to question how it could effectively challenge in a single petition a claim set that, by itself, fills out 10% of the permissible word count. Finally, Petitioner shows that the two petitions have been structured in a way to minimize the burden on the Board and Patent Owner, by presenting a small number of grounds with consistent arguments that rely on the same art. See, e.g., Google LLC v. Jenam Tech, LLC, IPR2021-00629, Paper 11 at 9 (PTAB Sept. 20, 2021) (finding that Petitioner had provided a satisfactory explanation for filing two petitions against a single patent because “[e]ach petition challenges different claims and presents only one ground against each claim,” as opposed to “a situation where a petitioner is using two petitions to lodge multiple parallel challenges to the same claims”).” slip op. at 19

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

    “Based on our review of the current record, we find that Petitioner has shown that the Examiner erred in failing to reject the claims based on Hogeg. As noted previously, the prosecution history of the ’986 patent includes no analysis or discussion of Hogeg. “[I]f the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive.” Advanced Bionics, Paper 6 at 10. The Examiner’s explanation of why the claims were allowable over the prior art of record focused on “the combination of distribution rule defining a sensor data condition and sensor data.” Ex. 1002, 498. However, Petitioner provides a detailed discussion of why Hogeg discloses those features. See Pet. 28–42, 44–46. In its Preliminary Response, Patent Owner does not contest Petition’s contentions regarding these limitations (or any other aspect of the merits of Petitioner’s challenges). See Prelim. Resp. 1–16. As discussed below, we determine on the current record that Petitioner establishes a reasonable likelihood that Petitioner would prevail in demonstrating that the challenged claims would have been obvious based on Hogeg. We also find Petitioner’s showing sufficient to establish that the Examiner erred. The parties’ reliance on the prosecution of related patents involving allegedly similar claims does not impact the outcome of our analysis. See Pet. 17 (mentioning, without elaboration or citation, the EPO rejection of claims); Prelim. Resp. 14–15 (addressing allowance of claims over Hogeg and other material). Because we find that Petitioner made a sufficient showing of Examiner error without relying on the EPO rejection of allegedly similar claims, we need not assess the probative value of the EPO’s rejection, the details of which are not discussed in this Petition. As to Patent Owner’s reliance on the prosecution history of related claims before different Examiners that considered Hogeg and related materials, those arguments do not undermine Petitioner’s showing of Examiner error. First, Patent Owner acknowledges that although the Examiners considered Hogeg, “neither Examiner specifically discussed Hogeg in allowing claims” that were at issue. Prelim. Resp. 15. Second, even if the claims in the related applications are “similar” to the challenged claims, Patent Owner’s briefing does not provide any detailed analysis of the related claims sufficient to determine how the claims in later applications differ from the challenged claims here, and whether those differences are material. See id. at 14–15. Based on the foregoing, we cannot conclude that the Examiners’ allowance of the claims in other applications over Hogeg amounted to a finding that Hogeg fails to disclose one of the limitations in the challenged claims here. Further, even if we agreed that such an implicit finding was made during later prosecution, Petitioner’s challenge based on Hogeg in the Petition provides more compelling evidence of Examiner error than the prosecution of related claims that lack any direct discussion of Hogeg. 5. Conclusion Based on our review of the current record, we determine that Petitioner has demonstrated that the Examiner erred in a manner material to the patentability of challenged claims. Accordingly, we decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 23

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,108,986
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Dec 15, 2020 · IPR2019-01055 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–8, 10, 12–17, 19, and 20 were not shown unpatentable over Hedderwick, Koning, and Benac because Petitioner did not establish motivation to combine or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedPetitioner expert discountedDecided for patent owner

    “would have had either: (1) a bachelor’s degree plus four years of experience in mechanical engineering, agricultural engineering, or a related field; or (2) a master’s degree plus two years of experience in mechanical engineering, agricultural engineering, or a related field.” Pet. 45 (citing Ex. 1002 ¶¶ 19–20). In the testimony the Petition cites in support of that proposal, Mr. Prairie lists factors that are typically considered in assessing the level of ordinary skill in the art, and then states “[b]ased on these factors as well as my experience and expertise,” his opinion of the level of ordinary skill in the art is the same as Petitioner proposes. Ex. 1002 ¶¶ 19–20. This conclusory testimony is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). slip op. at 12

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

    “We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14

  • Obviousness (§103) › Analogous artNot reached

    “Patent Owner counters that Koning does not qualify as analogous art and, relatedly, that judicial estoppel bars Petitioner from contending otherwise. PO Resp. 7–17. Patent Owner further argues that an ordinarily skilled artisan would not have been motivated to combine Koning’s belt with Hedderwick and Benac, and would not have expected that combination to succeed. Id. at 18–33; Sur-Reply 13–19. Patent Owner also challenges the motivation and reasonable expectation of success for the incorporation of Owner argues that incorporating Benac’s paddle wheel would not yield a “nip” as claimed. PO Resp. 49–61; Sur-Reply 29. Patent Owner also submits evidence of objective indicia of nonobviousness. PO Resp. 61–98; Sur-Reply 2–10. 2. Motivation to Combine and Reasonable Expectation of Success Of the disputed issues summarized in the preceding section, our analysis focuses on whether an ordinarily skilled artisan would have been motivated to combine the references in the manner Petitioner proposes and would have reasonably expected success in doing so. Because those issues are dispositive of Petitioner’s challenge, it is unnecessary for us to resolve the other disputed issues. See, e.g., Adidas AG v. Nike, Inc., 963 F.3d 1355, 1359 (Fed. Cir. 2020) (affirming Board’s determination that claims were not shown to be obvious because the petitioner had not demonstrated that an ordinarily skilled artisan would have been motivated to combine the references); Samsung Electronics Co. v. Elm 3DS Innovations, LLC, 925 F.3d 1373, 1383 (Fed. Cir. 2019) (determining that it is unnecessary to reach other issues when reasonable expectation of success is dispositive).” slip op. at 22

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

    “between the references’ use of a brush belt as an endless member and paddle wheels versus the proposed combination. Moreover, Patent Owner points out problems ordinarily skilled artisans would have encountered in attempting to combine the references as Petitioner proposes. Petitioner does not persuasively explain how those issues could have been overcome, and instead simply asserts, essentially, that ordinarily skilled artisans could have figured it out. See, e.g., Ex. 1135 ¶ 78 (“[A] person of ordinary skill in the art would have determined through no more than routine experimentation how to orient Benac’s paddle wheel so that it could operate with Koning’s brush belt bristles to pinch seeds from the seed meter.”). It is Petitioner’s burden to establish that ordinarily skilled artisans would have been motivated to combine the references in the proposed manner and would have reasonably expected success in doing so. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Petitioner’s arguments and evidence do not carry that burden.” slip op. at 28

  Patent outcomesUS 9,699,955 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,699,955
• SZ Dji Technology Co., Ltd. v. Drone-Control, LLCAll claims unpatentable
  PTAB · May 29, 2019 · IPR2018-00206 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–18 are unpatentable, principally because Thornberg ’983 anticipates them or renders them obvious; the contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have an equivalent of a Bachelor’s degree from an accredited institution in electrical engineering, mechanical engineering, aeronautical or astronautical engineering, robotics, computer science, or any other discipline covering principles of design, operation, and/or control of unmanned aerial vehicles, including remote-controlled vehicles, and would have a working knowledge of the design, development, implementation, or deployment of such technologies. Additional education could substitute for experience, and significant experience could substitute for formal education. Pet. 12 (citing Ex. 1003 ¶ 28). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Tr. 77:1–6; see also Ex. 2005 ¶ 48 (Patent Owner’s declarant adopting this definition of the person of ordinary skill in the art for purposes of declaration testimony).” slip op. at 12

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

    “The only question, then, is whether orientation data can suffice by itself to qualify as “motion data,” as Petitioner contends, or whether data indicating a change in the vehicle’s position is essential, as Patent Owner argues. On that question, we agree with Petitioner that orientation data is sufficient. The Specification describes that motion sensing module 122 generates motion data 124 based on the motion of the aircraft and that motion sensing module 122 includes one or more axes of accelerometers or gyroscopes or other devices that alone, or with further processing by processing module 126, can generate data that represents θ, φ3, and/or other motion parameters such as R, Z, etc., that can be used in transforming the command data 104 to control data 128. Ex. 1001, 5:6–11 (emphases added). This disclosure supports a broad understanding of “motion data” as any data generated by the sensing module that represents a position, orientation, or motion parameter.” slip op. at 17

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on the complete record, we are persuaded by Petitioner’s contention. Although Thornberg ’983 does not state explicitly that the signals transmitted from the control panel to the vehicle are RF signals, we agree that a skilled artisan, considering the context of Thornberg ’983’s disclosure, would have recognized that the transmitted signals could comprise RF signals. “What a reference teaches or suggests must be examined in the context of the knowledge, skill, and reasoning ability of a skilled artisan,” and “is not . . . limited to what a reference specifically ‘talks about’ or what is specifically ‘mentioned’ or ‘written’ in the reference.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005); see also Manual of Patent Examining Procedure (“MPEP”) § 2144.01 (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”) (quoting In re Preda, 401 F.2d 825, 826 (CCPA 1968)). Furthermore, we credit Dr. Hansman’s testimony that an ordinarily skilled artisan would understand Thornberg ’983’s disclosure to mean that the transmitted control signals “are radio frequency (RF) signals, as antennas are most commonly used for.” Ex. 1003 ¶ 295.” slip op. at 25

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

    “We are persuaded by Petitioner’s assertion that Thornberg ’983’s flight control computer 38 corresponds to the claimed processing module. As discussed above (see supra § III.D.1), flight control computer 38 is provided with transformation function 400. Ex. 1006, 5:9–12. Transformation function 400 receives an input of command data (the pitch command and the roll command) from the control panel through antenna 42 and an input of the transformation angle, θ, which is based on the true heading of the vehicle provided by navigation system 36. Id. at 5:19–31, Fig. 6. Transformation function 400 (via pitch axis transformation function 410 and roll axis transformation function 412) transforms the pitch command and the roll command into a transformed pitch stick signal (TPSS) and a transformed roll stick signal (TRSS) using equations that are based on the transformation angle. Id. at 6:17–28. When the system is in the operator reference mode, the TPSS and TRSS (i.e., control data) are in accordance with a second coordinate system that is from a perspective of the vehicle. Id. at 6:8–11 (“In an operator reference mode, the orientation of the operator upon activation of the operator mode is used as the reference axis.”). Patent Owner argues that Thornberg ’983 does not disclose transforming command data into control data based on motion data. PO Resp. 8–13; Sur-Reply 6–8. Patent Owner agrees that, in Thornberg ’983, transformation uses transformation angle θ, which is determined based on the vehicle’s true heading. PO Resp. 8. But Patent Owner contends that transformation angle θ is not “motion data” because it is solely an indication of orientation. Id. (citing Ex. 2005 ¶¶ 74–75). The distinction Patent Owner urges between Thornberg ’983 and the claimed subject matter is based on Patent Owner’s proposed construction of “motion data” as requiring data indicative of a change in position. See id. at 8–9; see also Tr. 103:1–8. For the reasons discussed in Section III.C., we decline to adopt Patent Owner’s proposed construction. Under the construction we have adopted, Thornberg ’983’s transformation angle θ is motion data because, as both parties agree, it indicates the vehicle’s orientation.” slip op. at 28

  Patent outcomesUS 8,649,918 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,649,918
• Abs Global, Inc. v. Cytonome/St, LLCRehearing denied
  PTAB · Dec 14, 2018 · IPR2017-02163 · APJ Timothy J Goodson · IPR · Rehearing

  The Board denied ABS Global’s rehearing request, leaving in place its denial of institution because the Petition did not show that Weigl teaches the claimed focusing regions.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. LEGAL STANDARD In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[t]he request 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 › Institution threshold (reasonable likelihood / more likely than not)Not reached

    “our Decision Denying Institution (Paper 11, “Decision” or “Dec.”). In that Decision, we concluded that Petitioner did not show a reasonable likelihood of prevailing in showing that any of the challenged claims of U.S. Patent No. 7,311,476 B2 (“the ’476 patent”) are unpatentable on any of the asserted grounds. See Dec. 22–27. Petitioner requests rehearing, arguing that we misapprehended or overlooked disclosures in Weigl,1 which was the primary reference Petitioner relied on in the asserted grounds. See Req. Reh’g 1. For the reasons set forth below, Petitioner’s request for rehearing is denied.” slip op. at 2

  • BurdenDecided for patent owner

    “helpful context, but in analyzing whether a petitioner has shown that the cited reference teaches a particular limitation, we look primarily to the section of the petition presenting arguments regarding that limitation. This flows from “the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim,’” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)), as well as the requirement that “the Board must base its decision on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016). See also Sirona Dental Systems GmbH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (“It would . . . not be proper for the Board to deviate from the grounds in the petition and raise its own obviousness theory. . . .”). Here, the Request does not point to, and we do not find, any discussion of a constant-depth configuration in Weigl, in the Petition’s arguments regarding the “primary focusing region” and “secondary focusing region” limitations. See Pet. 39–44. Instead, as noted above, the Petition’s annotated drawings illustrating its contentions regarding these limitations show channel depth increasing, and the center fluid maintaining its dimensions as it flows downstream. The Request also argues that, leaving aside the constant-depth configuration, even a channel with increased depth would still serve to accelerate and narrow the center fluid. Req. 7–10. But here again, Petitioner did not present any such argument in the portion of its Petition arguing the “primary focusing region” and “secondary focusing region” limitations. See Pet. 39–44. The Request points to the summary of Weigl in the “Background of the Technology” section of the Petition. Req. 7–10 (citing Pet. 10–11). As such, we are not persuaded that our Decision overlooked or misapprehended Petitioner’s arguments regarding the “primary focusing region” and “secondary focusing region” limitations.” slip op. at 3

  None
  Patents in suitUS 7,311,476
• Westinghouse Air Brake Technologies Corporation v. Siemens Mobility, Inc.No claims unpatentable
  PTAB · Oct 24, 2018 · IPR2017-01263 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1, 4–6, 14, 16, 17, 19, 28, 32, 35, 42–44, and 48 were not shown unpatentable under either remaining § 103 ground because the combinations did not teach a targeted request for status information.

  RulingsFinal written decision

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

    “B. “transmitting . . . to a configurable device” The phrase “transmitting . . . to a configurable device” appears in each of independent claims 1, 14, 28, and 44. In our Decision on Institution, we determined that this phrase does not require direct transmission. Dec. on Inst. 8. In arriving at that determination, we considered whether the prosecution history of the ’461 patent supports an understanding that the phrase requires direct transmission, but we concluded that it does not. Id. at 6–8. In the parties’ briefing after institution, Patent Owner agreed with the construction in our Decision on Institution, and Petitioner did not address the construction of this phrase. PO Resp. 14; Reply 2. We maintain the construction set forth in our Decision on Institution for the reasons stated therein.” slip op. at 7

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

    “claims 1, 14, 28, and 44, and in several dependent claims. In our Decision on Institution, we construed the term to mean “a request for status information.” Dec. on Inst. 8. After institution, Patent Owner urged, as it had before institution, that we should construe the term as “a targeted request for status information.” PO Resp. 14–19. Patent Owner pointed out that in the Parallel District Court Case, the court’s construction of this term requires that the request is targeted. Id. at 15 n.2 (citing Ex. 2008, 10–12); see also Power Integrations, Inc. v. Lee, 797 F.3d 1318, 3126 (Fed. Cir. 2015) (explaining that although the Board is not generally bound by a previous judicial interpretation of a disputed claim term, the Board should nevertheless assess whether it is consistent with the broadest reasonable construction of the term). In its Reply, Petitioner states that Patent Owner’s “proposed construction is acceptable.” Reply 2; see also Tr. 8:24–9:1 (Petitioner’s counsel confirming that the parties agree on the construction of this term as a targeted request for status information). We will adopt the parties’ agreed-upon construction, which is also consistent with the construction in the Parallel District Court Case. Thus, we interpret “interrogation message” to mean “a targeted request for status information.”” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we adopted Petitioner’s proposal that an ordinarily skilled artisan at the time of the invention of the ’461 patent “would have had an undergraduate degree or the equivalent thereof and at least five (5) years of experience in train operations or train control systems” and “would have had knowledge of train control systems, train safety systems that include wayside systems, and train communication systems, and would have understood how to search available literature for relevant publications.” Dec. on Inst. 10 (quoting Pet. 7–8). Following institution, Patent Owner stated its agreement with this definition of the level of ordinary skill in the art. See PO Resp. 19. We maintain the definition of the level of ordinary skill in the art set forth in our Institution Decision for the reasons stated therein. See Dec. on Inst. 10–11.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable

    “agreed construction that “interrogation message” means “a targeted request for status information.” We agree with Patent Owner that Petitioner has not established that the cited combination teaches a train transmitting a targeted request for status information to a configurable device near the train. Petitioner primarily relies on Petit as disclosing this limitation. Specifically, Petitioner points out that in Petit, the “first message from the train is initiated when the train locomotive passes a beacon, which is preferably a beacon transponder interrogated by locomotive-carried equipment.” Pet. 33 (quoting Ex. 1008, 2:31–34). It is this first message that the train sends to the crossing after passing the beacon that Petitioner points to as the “interrogation message.” Id. Petitioner contends that “this initial message . . . discloses the claimed ‘interrogation message’ because it is a request for status information.” Id. (citing Ex. 1002 ¶ 53). The record does not support Petitioner’s contention that this initial message in Petit is a request for status information from the crossing. The cited portion of Mr. Ditmeyer’s declaration concerns whether the train communicates directly with the crossing, without intervening communication equipment; it does not address whether the message from the train to the crossing includes a request for status information from the crossing. Ex. 1002 ¶ 53. The Petition itself quotes Petit’s description that train’s message to the crossing “giv[es] loco I.D., speed, direction of approach and distance from crossing.” Pet. 33 (quoting Ex. 1008, Fig. 5B). None of those items constitute a request for status information from the crossing, and Petitioner does not point to any disclosure in Petit indicating that this message additionally includes a request for status information.” slip op. at 14

  Patent outcomesUS 6,996,461 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,996,461
• Colas Solutions Inc. v. Blacklidge Emulsions, Inc.No claims unpatentable
  PTAB · Nov 2, 2017 · IPR2016-01031 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1–12, 15–20, 23–28, and 31–33 were not shown unpatentable under § 103 because the cited combination did not establish the claimed softening point.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The Parties’ definitions differ in that under Patent Owner’s proposal, additional work experience can substitute for a science or engineering degree. Patent Owner supports that position by pointing to the backgrounds of Mr. O’Leary and the inventor, Mr. Blacklidge, neither of whom has a bachelor’s degree in engineering or science. PO Resp. 15–16; Ex. 1034, 12:15–13:3; Ex. 2027, App’x A; see also Ex. 2026 ¶¶ 22–23 (discussing the educational background of active workers in the field). Patent Owner also cites Dr. King’s deposition testimony agreeing that Mr. O’Leary was an example of someone who had attained the level of ordinary skill in the art through sufficient work experience without academic credentials beyond high school. Ex. 2025, 376:4–377:14. This evidence supports Patent Owner’s position that relevant work experience can substitute for a bachelor’s degree in science or engineering in this case. Accordingly, we find that a person of ordinary skill in the art at the time of the invention of the ’724 patent would have had a bachelor’s degree in chemistry, civil engineering, chemical engineering, material science, or a related field of science or engineering, plus five years of experience in the field of asphalt paving and/or asphalt emulsion technology. Alternatively, an ordinarily skilled artisan would have had ten years of experience in the field of asphalt paving and/or asphalt emulsion technology.” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Applying that standard for inherency, the evidence does not sufficiently support a finding that a cured tack coat formed from a base asphalt as described in Bardesi would necessarily have “a softening point greater than about 140 ° F. (60 ° C.),” as recited in claim 1. The parties agree that Dr. King’s calculations using the Pfeiffer equation were erroneous and that Dr. Little’s calculations correctly apply the Pfeiffer equation. See PO Resp. 29; Reply 17; Tr. 27:7–28:10, 80:9–10. Even assuming the correctness of the assumptions undergirding Dr. King’s analysis of the softening point limitation — which include the reliability of the Pfeiffer equation to calculate softening point, the range of PI values between -1 and +1 for the asphalts described in Bardesi, and the use of a base asphalt’s softening point as a measure of the softening point for a cured tack coat made from that asphalt — the now agreed-upon data that result from the Pfeiffer equation show that not all 10-pen and 20-pen asphalts have a softening point greater than 60°C. Ex. 2026 ¶¶ 91–93. Indeed, Petitioner and Dr. King seem to concede this point. Reply 18; Tr. 80:8–14; see also Ex. 1030 ¶ 29 (rebuttal declaration of Dr. King stating that “most 10-20 pen paving grade asphalts” would have a softening point in the claimed range).” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached

    “To the extent Petitioner’s arguments in the Reply and at the hearing that the claimed range of softening points is typical or expected are offered as an alternative theory of obviousness in lieu of inherency, those arguments were not adequately developed and presented in the Petition. “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). “Unlike district court litigation— where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Id. The Federal Circuit has applied this rule to bar a petitioner from shifting its theory of obviousness after the patent owner pointed out the flaws of the obviousness case presented in the petition. See Wasica Finance GmbH v. Continental Automotive Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017) (“Rather than explaining how its original petition was correct, Continental’s subsequent arguments amount to an entirely new theory of prima facie obviousness absent from the petition. Shifting arguments in this fashion is foreclosed by statute, our precedent, and Board guidelines.”). Likewise, the Petition in this case relied on inherency for the softening point limitation, and Patent Owner successfully rebutted that theory in its Patent Owner Response. Following that rebuttal, Petitioner is not permitted to abandon inherency to pursue a different theory that it did not present in its Petition. Accordingly, we do not reach the issue of whether the claim is obvious under a different theory than Petitioner advanced in its Petition.” slip op. at 26

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Applying that standard for inherency, the evidence does not sufficiently support a finding that a cured tack coat formed from a base asphalt as described in Bardesi would necessarily have “a softening point greater than about 140 ° F. (60 ° C.),” as recited in claim 1. The parties agree that Dr. King’s calculations using the Pfeiffer equation were erroneous and that Dr. Little’s calculations correctly apply the Pfeiffer equation. See PO Resp. 29; Reply 17; Tr. 27:7–28:10, 80:9–10. Even assuming the correctness of the assumptions undergirding Dr. King’s analysis of the softening point limitation — which include the reliability of the Pfeiffer equation to calculate softening point, the range of PI values between -1 and +1 for the asphalts described in Bardesi, and the use of a base asphalt’s softening point as a measure of the softening point for a cured tack coat made from that asphalt — the now agreed-upon data that result from the Pfeiffer equation show that not all 10-pen and 20-pen asphalts have a softening point greater than 60°C. Ex. 2026 ¶¶ 91–93. Indeed, Petitioner and Dr. King seem to concede this point. Reply 18; Tr. 80:8–14; see also Ex. 1030 ¶ 29 (rebuttal declaration of Dr. King stating that “most 10-20 pen paving grade asphalts” would have a softening point in the claimed range).” slip op. at 21

  Patent outcomesUS 7,503,724 not shown unpatentable
  § 103 obviousnesscites Graham
  Patents in suitUS 7,503,724
• Colas Solutions, Inc. v. Blacklidge Emulsions, Inc.No claims unpatentable
  PTAB · Nov 2, 2017 · IPR2016-01032 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–12, 14–23, and 25 were not shown unpatentable because the cited combination did not establish the claimed softening point limitation.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties’ definitions differ in that under Patent Owner’s proposal, additional work experience can substitute for a science or engineering degree. Patent Owner supports that position by pointing to the backgrounds of Mr. O’Leary and the inventor, Mr. Blacklidge, neither of whom has a bachelor’s degree in engineering or science. PO Resp. 15–16; Ex. 1034, 12:15–13:3; Ex. 2027, App’x A; see also Ex. 2026 ¶¶ 22–23 (discussing the educational background of active workers in the field). Patent Owner also cites Dr. King’s deposition testimony agreeing that Mr. O’Leary was an example of someone who had attained the level of ordinary skill in the art through sufficient work experience without academic credentials beyond high school. Ex. 2025, 376:4–377:14. This evidence supports Patent Owner’s position that relevant work experience can substitute for a bachelor’s degree in science or engineering in this case. Accordingly, we find that a person of ordinary skill in the art at the time of the invention of the ’624 patent would have had a bachelor’s degree in chemistry, civil engineering, chemical engineering, material science, or a related field of science or engineering, plus five years of experience in the field of asphalt paving and/or asphalt emulsion technology. Alternatively, an ordinarily skilled artisan would have had ten years of experience in the field of asphalt paving and/or asphalt emulsion technology.” slip op. at 9

  • Expert testimonyPetitioner expert discountedMixed

    “Applying that standard for inherency, the evidence does not sufficiently support a finding that a cured tack coat formed from a base asphalt as described in Bardesi would necessarily have “a softening point greater than about 140 ° F. (60 ° C.),” as recited in claim 1. The parties are in agreement that Dr. King’s calculations using the Pfeiffer equation were in error and that Dr. Little’s calculations correctly apply the Pfeiffer equation. See PO Resp. 29; Reply 17; Tr. 27:7–28:10, 80:9–10. Even assuming the correctness of the assumptions undergirding Dr. King’s analysis of the softening point limitation — which include the reliability of the Pfeiffer equation to calculate softening point, the range of PI values between -1 and +1 for the asphalts described in Bardesi, and the use of a base asphalt’s softening point as a measure of the softening point for a cured tack coat made from that asphalt — the now agreed-upon data that result from the Pfeiffer equation show that not all 10-pen and 20-pen asphalts have a softening point greater than 60°C. Ex. 2026 ¶¶ 91–93. Indeed, Petitioner and Dr. King seem to concede this point. Reply 18; Tr. 80:8–14; see also Ex. 1030 ¶ 29 (rebuttal declaration of Dr. King stating that “most 10-20 pen paving grade asphalts” would have a softening point in the claimed range).” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “At the hearing, Petitioner suggested that it was abandoning the inherency theory for the softening point limitation, stating that “we are not relying upon inherency with respect to all asphalts will necessarily have that claimed softening point.” See Tr. 80:8–14. The problem for Petitioner, however, is that inherency was the only theory presented in the Petition for why the cited combination teaches or renders obvious the softening point limitation. We have already reviewed above the numerous portions of the Petition in which Petitioner relied on inherency for the softening point limitation. See Pet. 22, 24, 27, 38, 40, 50.6 Petitioner argued at the hearing that inherency “wasn’t an all-or-nothing proposition”—i.e., that its Petition did not rely only on inherency for the softening point limitation. See Tr. 79:4–80:14. Petitioner pointed to its reliance on Dr. King’s experience, Dr. King’s use of the Pfeiffer equation, and the assumptions Dr. King used in applying the Pfeiffer equation. Id. Yet those are all facts that Petitioner relied on to show why the softening point limitation was inherently and necessarily present in Bardesi, not reasons why the softening point limitation would have been obvious separate or independent from inherency. To the extent Petitioner’s arguments in the Reply and at the hearing that the claimed range of softening points is typical or expected are offered as an alternative theory of obviousness in lieu of inherency, those arguments 6 Even in the Reply, Petitioner continued to refer to the softening point limitation as being inherently and necessarily present. See Reply 1 (“The [’]624 patent is invalid because Petitioner shows that this claimed softening point above 60ºC is inherent and ‘typical’ for many 10/20 pen asphalts disclosed in Bardesi.”) (emphasis added); id. at 3 (“any 10-20 pen specification paving grade bitumen purchased in Britain at the time of Bardesi’s publication would have necessarily had a softening point well above 60ºC”) (emphasis added). were not adequately developed and presented in the Petition. “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). “Unlike district court litigation— where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Id. The Federal Circuit has applied this rule to bar a petitioner from shifting its theory of obviousness after the patent owner pointed out the flaws of the obviousness case presented in the petition. See Wasica Finance GmbH v. Continental Automotive Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017) (“Rather than explaining how its original petition was correct, Continental’s subsequent arguments amount to an entirely new theory of prima facie obviousness absent from the petition. Shifting arguments in this fashion is foreclosed by statute, our precedent, and Board guidelines.”). Likewise, the Petition in this case relied on inherency for the softening point limitation, and Patent Owner successfully rebutted that theory in its Patent Owner Response. Following that rebuttal, Petitioner is not permitted to abandon inherency to pursue a different theory that it did not present in its Petition. Accordingly, we do not reach the issue of whether the claim is obvious under a different theory than Petitioner advanced in its Petition.” slip op. at 25

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “For these reasons, we determine that Petitioner did not carry its burden to demonstrate that claim 1 would have been obvious in view of the cited references. 2. Claims 2–12, 14–23, and 25 Independent claims 14 and 25 include substantially the same softening point limitation as in claim 1. See Ex. 1001, 15:8–10; 16:35–37. Petitioner’s evidence and arguments, and Patent Owner’s rebuttal, regarding the softening point limitation in those claims are the same as for claim 1. See Pet. 38, 40, 50; PO Resp. 24–47; Reply 4–6, 17–20. Thus, for the reasons discussed in Section III.D.1, Petitioner has not established by a preponderance of the evidence that claims 14 and 25 would have been obvious in view of the cited combination. By virtue of their dependency, claims 2–12 and 15–23 incorporate the softening point limitation recited in claims 1 and 14. Thus, Petitioner also has not demonstrated the unpatentability of any of those claims. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”).” slip op. at 27

  Patent outcomesUS 7,918,624 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,918,624
• Telebrands Corp. v. Tinnus Enterprises, LLCAll claims unpatentable
  PTAB · Dec 30, 2016 · PGR2015-00018 · APJ Richard E Rice · PGR · Final written decision

  Claims 1–6, 8, and 10–14 are unpatentable as indefinite under § 112(b); the Board did not reach the § 103(a) grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “II. ANALYSIS A. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art (“POSA”) “would have been a person having a general knowledge about and experience with expandable containers, including without limitation balloons, and at least an associate’s degree in science or engineering.” Pet. 15–16 (citing Ex. 1015 ¶¶ 10–13; Ex. 1016 ¶¶ 10–13). Patent Owner responds that “the Board should limit Petitioner’s overly broad definition of a POSA from having an associate’s degree in any science or engineering to having an associate’s degree in mechanical engineering.” See, e.g., PO Resp. 12. According to Patent Owner, “Petitioner’s proposed definition should be limited because the inclusion of persons with an associate’s degree in any science or engineering fails to take into account the scope of the relevant art, which indisputably utilizes mechanical engineering principles.” Id. Upon consideration of the parties’ contentions, we determine that a POSA would have been a person having a general knowledge about and experience with expandable containers, including without limitation balloons, and at least an associate’s degree in mechanical engineering, or the equivalent.” slip op. at 7

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

    “1. “elastic fastener” In our Institution Decision, we preliminarily determined that the broadest reasonable interpretation consistent with the Specification of the claim term “elastic fastener” is an elastic element for attaching things together. Inst. Dec. 7–8. As neither party proposes any change to our interpretation, and our review of the evidence does not indicate that any change is necessary, we maintain that interpretation.” slip op. at 8

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable

    “We determine that the test for indefiniteness that is applied in patent examination and reexamination matters, approved in Packard, should be applied in this post-grant review AIA proceeding, rather than the Nautilus requirement. The different approaches to indefiniteness before the PTO and the courts stem from the distinct roles that the PTO and the courts play in the patent system.12 In AIA proceedings, as in patent examination and reexamination matters, applying the broadest reasonable interpretation standard, coupled with an opportunity to amend the claims, is an approach that is fair to the patent holder and protects the public. See Cuozzo, 136 S. Ct. at 2145–46; Packard, 751 F.3d at 1312–14. This approach serves to ensure precision in patent claims, thereby helping the public to understand the limits of the claims and keeping the rights afforded by patents within their legitimate scope. See Cuozzo, 136 S. Ct. at 2144–45; Packard, 751 F.3d at 1313. Accordingly, among the reasons supporting application of the Packard-approved indefiniteness test in this AIA proceeding are those recognized by the Supreme Court in Cuozzo as supporting use of the broadest reasonable interpretation standard in inter partes review AIA proceedings. See Cuozzo, 136 S. Ct. at 2143–2146. Of these, the most important is the opportunity to amend the claims to correct any ambiguity. See id. at 2145 (“The patent holder may, at least once in the process, make a motion to do just what he would do in the examination process, namely, necessary) that a person of ordinary skill in the art would not consider the claim language unclear.” 12 See Packard, 751 F.3d at 1325 (Plager, J., concurring) (stating that “unlike courts which have a full prosecution record to consider, the prosecution record before the USPTO is in development and not fixed during examination”). amend or narrow the claim.”) (citation omitted); 35 U.S.C. § 326(d); 37 C.F.R. § 42.221. An applicant’s ability to clarify claim language through amendment was a significant reason why the Federal Circuit in Packard approved of the indefiniteness test recited in the MPEP (i.e., a “claim is indefinite when it contains words or phrases whose meaning is unclear”). Packard, 751 F.3d at 1313–14.” slip op. at 18

  • ExcludeMotion to exclude, deniedDenied

    “III. MOTIONS TO EXCUDE In its Motion to Exclude (Paper 57), Patent Owner seeks to exclude Petitioner’s Exhibits 1031 and 1032. Paper 57, 1–3. We deny Patent Owner’s motion, as moot, because we did not consider the referenced exhibits in reaching our decision in this case. In its Motion to Exclude (Paper 59), Petitioner seeks to exclude Patent Owner’s Exhibits 2016–2018, 2020 (¶ 84), 2024, 2025 (¶ 39), 2026 (¶ 39), 2027–2070, 2073, 2074, 2078, and 2085. Paper 59, 1–8. We deny Petitioner’s motion, as moot, because we did not consider the referenced exhibits and paragraphs in reaching our decision in this case.” slip op. at 34

  Patent outcomesUS 9,051,066 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Nautilus
  Patents in suitUS 9,051,066
• Deere & Company v. Richard GrammAll claims unpatentable
  PTAB · Sep 22, 2016 · IPR2015-00898 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–11 and 27–34 are unpatentable as obvious over the three instituted combinations of prior art.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “significantly different, and the differences between their proposed levels of ordinary skill would not affect the outcome of this proceeding.5 In light of our review of the record, including the ’395 patent, the competing expert testimony, and the issues discussed during the oral argument, we agree with different aspects of the parties’ proposals. First, as Petitioner notes in its Reply, a mechanical engineer having familiarity with hydraulic systems and sensors, as Patent Owner proposes, does not have experience necessarily with agricultural equipment or combines. Reply 2, n.1. Thus, Patent Owner’s educational prong is overly broad. Second, Petitioner’s educational prong, on the other hand, is too narrow, requiring “design” of combines or agricultural equipment. Third, we find that Petitioner’s experience prong also is too narrow, because it requires experience specifically in the “design” of agricultural equipment or combines. Accordingly, we find that the level of ordinary skill in the art is “a mechanical engineer having familiarity6 with agricultural equipment, such as combines, and hydraulic systems and 5 Indeed, neither party argues that any difference between the proposed levels of ordinary skill would affect the outcome of this proceeding. 6 The familiarity may have been gained, as proposed by Petitioner, by “approximately three years of experience in combine or agricultural equipment design, including components thereof, such as headers and header height control systems” (Pet. 5 (citation omitted)), but also may have been gained through other experience. sensors” or “a person having 10 or more years of experience7 working with combines.”8” slip op. at 11

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

    “We agree with Petitioner that under either party’s proposed construction, Cleveland’s sensor arm, including spring 38, is flexible. See infra pages 41–42 (Section III.B.5.a.ii.b)2.b.). Accordingly, we need not choose between either party’s proposed constructions. 2. Other Claim Terms The parties propose constructions for several additional claim terms, including “pre-loaded,” “angular deflection sensing means,” “control means,” “biasing means,” “first stop means,” “second stop means,” “guard means,” and “flange.” Pet. 11–15; Resp. 19–23. Although the parties have some disagreement as to the meaning of several of these terms, there is no dispute that the references upon which we instituted review disclose these elements of the claims.4 Accordingly, there is no controversy as to these terms that requires our resolution in order to ascertain whether the claims would have been obvious to one of ordinary skill in the art as of the time of the invention in light of the references and arguments before us.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingMixed

    “a “header” or a “combine” per se; rather, it is a header height control apparatus—an “apparatus for detecting and controlling the height above the soil of an agricultural machine as it traverses a field.” Ex. 1001, 1:11–13. Nonetheless, there is no prohibition on a patentee drafting his or her claim in a manner that further limits the invention if additional structure is recited in the claim. As argued by Patent Owner, the recitation of “a non-cut crop header” and “a combine” in the preamble of claim 1, provide antecedent basis for at least two terms recited in the body of the claim—“the header” and “said combine.” The body of the claim reflects that the patentee chose to claim the header control apparatus in terms not limited to said apparatus standing alone, but rather the apparatus as attached (coupled) to the header of a combine. See, e.g., Ex. 1001, 7:33–34 (“a pre-loaded, generally linear flexible arm coupled to a forward portion of the header” (emphasis added)); 7:44–45 (“control means coupled to said header” (emphasis added)); 7:48– 51 (“wherein said flexible arm and angular deflection sensing means are attached to a head housing disposed on a forward portion of said combine” (emphases added)); 7:54–56 (“wherein said mounting bracket further couples said flexible arm to a forward end of said head housing” (emphasis added)). The prosecution history reflects that the patentee at first desired the recitation of “header” in the claim to be limited to “non-cut crop” headers, in an attempt to distinguish cut crop headers. Ex. 1002, 142 (Amendment filed June 19, 2000). The examiner, however, did not accept such argument (id. at 152–53 (Office Action mailed Aug. 24, 2000)), and the patentee did not reiterate or maintain the argument in amending the claims following the August 24, 2000, final rejection. Id. at 158–63 (Amendment filed Nov. 22, 2000). Nonetheless, the prosecution history is informative on this issue. In light of our discussion above regarding the claim language, specification, and the prosecution history, we do not construe the entire preamble as limiting. In particular, the preamble recites an apparatus for maintaining, and is presented clearly as reciting an intended use. That being said, we agree with the Patent Owner that the phrase “non-cut crop header” limits the terms “the header” and “said header” recited in the body of claim 1 such that “the header” and “said header” recited in the body of claim 1 are the same “non-cut crop header” recited in the preamble of the claim.13” slip op. at 23

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

    “e. Conclusion of Obviousness We have considered Petitioner’s evidence and argument and determine that the combination of DPC, Chmielewski, Cleveland, and DA meets the limitations of claims 1–7, 10, 27, 28, and 34, and that one of ordinary skill in the art would have had reason, with rational underpinning, for combining the teachings of these references. We have considered Patent Owner’s arguments to the contrary and determine that they are unpersuasive. The parties do not introduce or rely on objective indicia of nonobviousness. After weighing the evidence, we conclude that Petitioner has shown, by a preponderance of the evidence, that claims 1–7, 10, 27, 28, and 34 would have been obvious over DPC, Chmielewski, Cleveland, and DA.” slip op. at 61

  Patent outcomesUS 6,202,395 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,202,395
• Care N’ Care Insurance Company, Inc. / Trizetto Corporation v. Integrated Claims Systems, LLCAll claims unpatentable
  PTAB · Jun 21, 2016 · CBM2015-00064 · APJ Timothy J Goodson · CBM · Final written decision

  Claims 81 and 83–88 are unpatentable under § 101 because they are directed to an abstract idea without an inventive concept.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Considering the full record before us, we agree with, and adopt as our own, Petitioners’ explanation of why the challenged claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of receiving information, storing it, and determining which of its parts to enter into a display into a patent-eligible application of that idea. Pet. 34–43. Stated simply, the challenged claims require no more than generic computer components performing generic computer functions and conventional activities. See Alice, 134 S. Ct. at 2359 (noting, in carrying out the second step, that the “the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer”); TLI, 2016 WL 2865693 at *6 (“These steps fall squarely within our precedent finding generic computer components insufficient to add an inventive concept to an otherwise abstract idea.”). For example, claim 81 recites receiving data in fields, storing data in memory, determining which data to enter for display using a generic “logic process,” and displaying data. “[A]ll of these computer functions are ‘wellunderstood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294). The parallels that Petitioner draws between the claims challenged here and those addressed in Content Extraction are compelling. See Pet. 35–36. Patent Owner’s reliance on the use of fields in the challenged claims to satisfy the second step of the Mayo/Alice analysis and to distinguish Content Extraction is unpersuasive in view of Petitioners’ argument and evidence that computer software fields are a generic, well-known concept in data processing, and that using fields to transfer information from a field in one form to a correlated field in another form was routine and conventional. Reply 12; Ex. 1001 ¶¶ 36–37.” slip op. at 24

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

    “We agree with Petitioners. We see no reason why the resolution of the issues before us requires an express construction of this term. Even if we were to construe “field” as a “computer software field,” it would not impact our analysis of claims 81 and 83‒88 under 35 U.S.C. § 101. Accordingly, we do not provide an express construction of “field.” See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 14

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “We agree with Petitioners that the challenged claims are directed to a process of receiving information, storing it, and determining which of its parts to enter into a display. Pet. 29. Claims directed to such a process are analogous to the data processing claims that the Federal Circuit held were directed to an abstract idea in Content Extraction and Cyberfone. In particular, as Petitioners argue, the step in claim 81 “of determining which parts of the information to enter into a graphical display is analogous to the step in [Content Extraction] of ‘recognizing certain data within the collected data set.’” Pet. 33. Further, the steps in claim 81 of receiving information and storing it are similar to the steps in Content Extraction of collecting data and storing the recognized data in a memory. Id. With respect to Cyberfone, we agree with Petitioners that the challenged claims can be “described as directed to methods of ‘obtaining data . . . separating it into component parts, and sending those parts to different destinations’ that the Federal Circuit in Cyberfone held embodied an abstract idea.” Id. at 34 (quoting Cyberfone, 558 F. App’x at 990). We have considered Patent Owner’s arguments that the challenged claims are not directed to an abstract idea, but those arguments are not persuasive for the reasons that follow.” slip op. at 17

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

    “Considering the full record before us, we agree with, and adopt as our own, Petitioners’ explanation of why the challenged claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of receiving information, storing it, and determining which of its parts to enter into a display into a patent-eligible application of that idea. Pet. 34–43. Stated simply, the challenged claims require no more than generic computer components performing generic computer functions and conventional activities. See Alice, 134 S. Ct. at 2359 (noting, in carrying out the second step, that the “the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer”); TLI, 2016 WL 2865693 at *6 (“These steps fall squarely within our precedent finding generic computer components insufficient to add an inventive concept to an otherwise abstract idea.”). For example, claim 81 recites receiving data in fields, storing data in memory, determining which data to enter for display using a generic “logic process,” and displaying data. “[A]ll of these computer functions are ‘wellunderstood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294). The parallels that Petitioner draws between the claims challenged here and those addressed in Content Extraction are compelling. See Pet. 35–36. Patent Owner’s reliance on the use of fields in the challenged claims to satisfy the second step of the Mayo/Alice analysis and to distinguish Content Extraction is unpersuasive in view of Petitioners’ argument and evidence that computer software fields are a generic, well-known concept in data processing, and that using fields to transfer information from a field in one form to a correlated field in another form was routine and conventional. Reply 12; Ex. 1001 ¶¶ 36–37. We also agree with Petitioners that the challenged claims fail the machine-or-transformation test because the claims “are not tied to any particular novel machine or apparatus, only a general purpose computer,” and “adding a computer to otherwise conventional steps does not make an invention patent-eligible.” Ultramercial, 772 F.3d at 716–17. We discern nothing in the challenged claims requiring a novel machine or apparatus. Indeed, as noted above, Patent Owner concedes that “the hardware components recited by the Challenged Claims were known at the time the application leading to the ’609 Patent was filed.” Prelim. Resp. 19; PO Resp. 20. Turning to the transformation prong of the test, “[a]ny transformation from the use of computers or the transfer of content between computers is merely what computers do and does not change the analysis.” Ultramercial, 772 F.3d at 717. Moreover, as the Federal Circuit explained in CyberSource, the “mere collection and organization of data regarding credit card numbers and Internet addresses is insufficient to meet the transformation prong of the test.” 654 F.3d at 1370. Here, claim 81 recites receiving an electronic communication that includes digital data in fields, some of which include insurance transaction data and at least one of which includes attachment data, storing the electronic communication, and processing the electronic communication by determining which of the received data to display and displaying the selected data and the attachment on a GUI. Ex. 1003, 50:20–43. We agree with Petitioners that the claimed method merely collects and organizes data, which is insufficient to meet the transformation prong of the machine-or-transformation test. Dependent claims 83–88 also do not recite more than the mere collection and organization of data.” slip op. at 24

  Patent outcomesUS 8,676,609 unpatentable
  Claim construction§ 101 eligibilitycites Mayo
  Patents in suitUS 8,676,609

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.