- Flir Systems, Inc. / Flir Maritime US, Inc. (F/K/A Raymarine, Inc.) v. Garmin Switzerland GmbHSome claims unpatentablePTAB · Jul 10, 2018 · IPR2017-00946 · APJ Scott B Howard · IPR · Final written decision
Claims 28, 29, and 45 were held unpatentable; claims 1–7, 12–23, 25–27, and 41–44 were not shown unpatentable. Substitute claims 73 and 74 were allowed.
RulingsFinal written decision- BurdenFwd mixedMixed
“C. Legal Principles 1. Anticipation A patent claim is unpatentable under 35 U.S.C. § 102 if “the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)). Moreover, the reference must also “disclose[] within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). However, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). We analyze the ground based on anticipation in accordance with the above-stated principles.” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“and agree with Patent Owner that the terms “re-routing the course” and “re-route the course” mean “to change at least a portion of the route of the course relative to a previous routing.” That is, there must be a first routing of a course and that routing must be changed by performance of the marine route calculation algorithm to avoid preselected conditions by identifying one or more non-user selected waypoints. The construction is consistent with the words of the claims. The claims do not merely require routing a course, but “re-routing the course.” The ordinary meaning of the prefix “re” is that something is being done again. See Tr. 18 (Petitioner agreeing that “if you put R-E in front of a word, normally that means it’s occurring a second time”). Although the claims do not explicitly recite both an original “routing” of a course that is changed by “re-routing the course,” the original “routing” is implicitly required by the use of the prefix “re.” See Tr. 34 (Patent Owner agreeing that although the claims do not explicitly require an initial routing, the initial routing is implicit in the use of “re-routing”), 44–45 (Petitioner agreeing that “re-routing” ordinarily implies an initial routing).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“proposed construction of “course” as “the path of intended travel of a craft with respect to the earth.” Instead, we need only focus on the words recited in the claim. Claim 1, which is representative, recites that performing the marine route calculation algorithm to “route a course between a first location and the potential waypoint avoiding the preselected conditions,” where such performance includes “identifying one or more non-user selected waypoints.” Ex. 1001, claim 1. The other independent claims recite similar limitations. See Ex. 1001, claims 12, 20, 27. Based on the limitation recited in the claim, the broadest reasonable interpretation of routing a “course” encompasses the identification of one or more non-user selected waypoints between a first location and a potential waypoint. No further construction is necessary for purposes of this Decision.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are persuaded by Petitioner’s argument that the person of ordinary skill in the art need not have first-hand experience with marine navigation devices and systems. Pet. Reply 25–26. The ’703 patent explicitly defines “marine navigation” broadly, noting that “the use of the word ‘marine’ in the embodiments of the present invention (including the claims) could be replaced with the phrase ‘non-street based.’” Ex. 1001, 1:57–67 (emphasis added). Such non-street based navigation is broad enough to encompass avionic navigation. See Pet. Reply 25–26; cf. Ex. 1003, 4–7 (demonstrating Dr. Braasch’s experience in avionic navigation). We find that Petitioner’s definition is supported by the testimony of its expert, Dr. Braasch, and, for the reasons stated above, we are not persuaded that the person of ordinary skill in the art necessarily would have had first-hand experience in marine—as opposed to non-street based— navigation. We, therefore, determine, based on the complete record, that Petitioner’s proposed definition correctly states the level of ordinary skill in the art, and we apply it for purposes of this Decision.7, 8” slip op. at 24
Patent outcomesUS 7,268,703 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,268,703 - Unified Patents Inc. v. Textile Computer Systems, Inc.No claims unpatentablePTAB · Mar 23, 2018 · IPR2017-00296 · APJ Scott B Howard · IPR · Final written decision
Claims 1, 3, 6–9, 11, 13, and 16–19 were not shown unpatentable because Johnson’s merchant-provided payment token did not meet the construed key-string limitation.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed patent owner constructionDisclaimer foundDecided for patent owner
“Our reviewing court has found disavowal or disclaimer of claim scope based on clear and unmistakable statements by the patentee that limit the claims, such as “the present invention includes . . .” or “the present invention is . . .” or “all embodiments of the present invention are . . . .” See, e.g., Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013); Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1316–19 (Fed. Cir. 2006); SciMed, 242 F.3d at 1343–44. Similarly, our reviewing court also has limited a claim element to a feature of the preferred embodiment when the specification described that feature as a “very important feature . . . in an aspect of the present invention,” or as a “critical aspect of the present invention.” Inpro II Licensing, S.A.R.L. v. T-Mobile USA Inc., 450 F.3d 1350, 1354–55 (Fed. Cir. 2006); Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1379–80 (Fed. Cir. 2006); see also Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1367–68 (Fed. Cir. 2007) (limiting the scope of all of the claims based on a “critical element” described in the specification); Izumi Prods. Co. v. Koninklijke Philips Elecs. N.V., 140 F. App’x 236, 243–44 (Fed. Cir. 2005) (non-precedential) (limiting the scope of the claims based on the specification “defining a critical aspect of the invention itself”). Based on the ’079 patent’s discussion of the “critical aspect” of “the present invention,” we are persuaded by Patent Owner’s argument and further limit the “key string” in the server limitation (claim 1) and the determining step (claim 11) to one that does not reveal a common identifier of the secured resource to the service client. Notably, the ’079 patent describes this need to prevent the discovery of a common identifier of the secured resource as the only “critical aspect” of “the present invention.” According, we conclude that the patentee has disavowed or disclaimed claim scope based on clear and unmistakable statements describing the critical aspect of the present invention.” slip op. at 15
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Prelim Resp. 20–21 (citing Ex. 2003 ¶ 41). Petitioner proposes a nearly identical level of ordinary skill in the art, differing only in the language—but not the substance—of the amount of experience. Pet. 12–13 (citing Ex. 1007 ¶ 60). In the Decision, we adopted Patent Owner’s definition of the level of ordinary skill in the art. Dec. 14. Neither Patent Owner nor Petitioner address the level of skill in their post-institution papers. Based on the complete record, we see no reason to modify our preliminary determination of the level of ordinary skill in the art.11” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“shown by a preponderance of the evidence that Johnson teaches or suggests a key string as recited in claims 1 and 11. Specifically, Petitioner maps Johnson’s payment token to the key string recited in claims 1 and 11. See Pet. 41–44 (mapping the Johnson payment token to the recited “key string” limitation); Reply 4 (stating that Petitioner mapped the Johnson payment token to the recited “key string” limitation). The Johnson payment token is provided to the merchant. E.g., Ex. 1004, Fig. 3 (payment token provided to 14 System claim 1 and method claim 11 recite similar limitations. Petitioner relies on the evidence and arguments presented for claim 1 to show that the prior art teaches the various limitations of claim 11. Pet. 59–60. 15 Because the “key string” limitation is case dispositive, we focus our analysis on that limitation, and need not address other limitations argued by Patent Owner in its Response. client in step 325, payment token provided to service provider in step 335), ¶ 61 (“The end-user computer 110 may then forward the payment token to the merchant 140 (step 335).”). As discussed in the claim construction section above, see supra Section III.B.1, the disclaimer limits the system of claim 1 and the method of claim 11 to ones in which the key string, which is adapted to provide a basis for authenticating the identity of the requester (user/purchaser), does not reveal a common identifier of the secured resource to the unauthorized service client (merchant). Because the payment token is provided to the merchant/unauthorized service client in Johnson, the payment token does not satisfy all of the requirements of the “key string” limitation.” slip op. at 25
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“ANALYSIS A. Constitutionality of Inter Partes Review Proceedings As a preliminary matter, Patent Owner argues that inter partes review proceedings are unconstitutional. PO Resp. 51–55. As Petitioner points out, however, and as Patent Owner admits, “current binding Federal Circuit precedent holds that inter partes reviews are not unconstitutional.” Reply 26 (citing MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284 (Fed. Cir. 2015)); see PO Resp. 52.” slip op. at 8
Patent outcomesUS 8,505,079 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,505,079 - Activision Blizzard, Inc. / Riot Games, Inc. v. Game And Technology Co., Ltd.All claims unpatentablePTAB · Mar 14, 2018 · IPR2016-01885 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–11 are unpatentable as obvious over the Diablo II Manual alone and over the Diablo II Manual combined with Rogers; the DAoC Manual grounds were not separately assessed.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the evidence of record, including the testimony of Petitioner’s declarant, the subject matter at issue, and the prior art of record, we determine that Petitioner’s proposed skill level is the appropriate lens through which to evaluate obviousness in this proceeding. In particular, we find persuasive Petitioner’s argument that a person of ordinary skill in the art may have professional experience as a video game designer/developer in lieu of a formal degree, and we also agree with Petitioner that a person of ordinary skill in the art would have had a working understanding of computer programming. Pet. 13–14; Ex. 1002 ¶ 20. In Patent Owner’s proposal, it is not clear whether “a working understanding of online computer gaming” requires experience with the design and development of video games or merely experience playing video games. Based on the foregoing, we determine that the skill level of a person of ordinary skill in the art would have been that of a person having (1) at least a four-year Bachelor of Science degree in computer science, computer engineering, electrical engineering, or a related field OR at least 5 years of professional experience as a video game designer/developer; and (2) a working understanding of computer programming, either through education or experience of the equivalent thereof. Ex. 1002 ¶ 20. However, we note that our analysis would be the same if we adopted either party’s proposed level of ordinary skill.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“game.” Pet. 13 (citing Ex. 1001, 2:27–28; Ex. 1002 ¶¶ 48–49); PO Resp. 9 (citing Ex. 1001, 1:37–48;4 Ex. 2003, 15:11–25). Although an avatar may represent a user in a game, the ’743 patent indicates that an avatar may represent a user more broadly, such as “in cyber space.” Ex. 1001, 2:27–28 (“In internet gaming, however, avatar has come to indicate a 2D or 3D character that represents a user in cyber space.”). We see no reason to import the qualification “in a game” into the definition of an avatar. We determine that the term “avatar” does not require further construction.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
- Obviousness (§103) › Objective indicia / secondary considerationsOther
“5) Conclusion as to claim 1 For the reasons explained above, we find the Diablo II Manual teaches all of the limitations of claim 1. Patent Owner does not present any objective evidence of nonobviousness as to any of the challenged claims. Based on these findings, we conclude, therefore, that the subject matter of claim 1 would have been obvious to a person of ordinary skill in the art over the teachings of the Diablo II Manual.” slip op. at 41
Patent outcomesUS 8,253,743 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,253,743
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.