- Platform Science, Inc. v. Omnitracs, LLCRehearing grantedPTAB · Sep 3, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board granted rehearing and instituted IPR on all petition grounds for claims 1–4, 6–9, 11, 12, and 15, finding a reasonable likelihood of prevailing.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The 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. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to claim 1.” slip op. at 44
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6.6 Petitioner 6 As noted above, Petitioner raises a second claim construction issue in its Rehearing Request. See Req. Reh’g 12–15 (asserting that the claims require only one instance of copying information from a formatted message to a response message based on which formatted message was received). Petitioner did not raise this issue in the Petition, Patent Owner has not had an contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“VI. ANALYSIS Legal Standards – Anticipation “[A] claim is anticipated ‘if each and every limitation is found expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference” (alteration in original) (quotation omitted)).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,925,308 - Axonics Modulation Technologies, Inc. v. Medtronic, Inc.Rehearing grantedPTAB · May 14, 2021 · IPR2020-00712 · APJ James A Tartal · IPR · Rehearing
The Board granted Patent Owner leave to file Dr. Mihran’s cross-examination testimony as an exhibit, finding it could not have been obtained earlier and that the interests of justice supported admission.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“To the extent Patent Owner’s request for leave did not specifically encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
- Additional discoveryAdditional discovery, grantedGranted
“encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
NonePatents in suitUS 8,738,148 - Axonics Modulation Technologies, Inc. v. Medtronic, Inc.Rehearing grantedPTAB · May 14, 2021 · IPR2020-00680 · APJ James A Tartal · IPR · Rehearing
The Board granted Patent Owner leave to file Dr. Mihran’s cross-examination testimony as an exhibit, finding it could not have been obtained earlier and admission served the interests of justice.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
- Additional discoveryAdditional discovery, grantedGranted
“encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
- Strike new argumentNot reached
“allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
NonePatents in suitUS 8,457,758 - Axonics Modulation Technologies, Inc. v. Medtronic, Inc.Rehearing grantedPTAB · May 14, 2021 · IPR2020-00678 · APJ James A Tartal · IPR · Rehearing
The Board granted Patent Owner leave to file Dr. Mihran’s cross-examination testimony as an exhibit in each proceeding, finding that it could not have been obtained earlier and that admission served the interests of justice.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“To the extent Patent Owner’s request for leave did not specifically encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
- Additional discoveryAdditional discovery, grantedGranted
“encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
NonePatents in suitUS 7,774,069 - PTAB · Jun 16, 2020 · IPR2019-01393 · APJ Ryan H Flax · IPR · Rehearing
Granted Sand Revolution II, LLC’s rehearing request and instituted IPR of claims 1, 2, 4, 6–14, and 16–20 on two obviousness grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“As noted in Fintiv, we consider six factors when taking “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. For the reasons discussed above, the Fintiv factors weigh against invoking our discretion to deny institution. Considering the Fintiv factors as part of a holistic analysis, we are not persuaded that the interests of the efficiency and integrity of the system would be best served by invoking our authority under 35 U.S.C. § 314(a) to deny institution of a potentially meritorious Petition. For the reasons discussed above, we modify our initial decision denying institution. On rehearing, after considering the factors outlined in the precedential order in Fintiv, we decline to deny institution under § 314(a). Accordingly, we grant Petitioner’s Request for Rehearing. We consider the merits of the Petition with respect to the threshold for institution below.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“demonstrating a reasonable likelihood that it would prevail in showing that claims of the ’740 patent are unpatentable. At this preliminary stage of the proceeding and on the record before us, Petitioner’s case is strong on most challenged claims. Fintiv, Paper 11 at 14–15 (“[I]f the merits of a ground raised in the petition seem particularly strong on the preliminary record, this fact has favored institution.”). Although we recognize the record can change during trial, as discussed in detail below, Petitioner has made a sufficiently persuasive showing, on the record presently before us, that the prior art references cited in the Petition teach or suggest all limitations of most challenged claims. We determine, on this preliminary record, that Petitioner has set forth a reasonably strong case for the obviousness of most challenged claims. Thus, this factor weighs in favor of not exercising discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“system” would have been readily understandable to the skilled artisan on its face, and the combination of these words into the recited phrase does not introduce any different meaning or ambiguity. The fact that the mobile storage module comprises the “integrated actuating system,” as well as the inclusion of the word “integrated” in this disputed term, each supports that such a system is a part of the module; in other words, it is built into the module as proposed by Petitioner. Because the fact that the actuating system is built into the mobile storage module is evident from the claim language itself, defining the claim term expressly to include this concept is unnecessary, as it would be redundant of the term’s plain meaning as understood by the skilled artisan. Nothing in the intrinsic record, or other evidence submitted by Petitioner, is inconsistent with this conclusion. Furthermore, regarding the proposed self-deployment concept, we also conclude it is unnecessary to add this concept to define the claim term in view of the plain meaning of “integrated actuating system.” Per the plain language of the claim term, the system that actuates the mobile storage module, i.e., moves it between a lowered and raised position, is integrated into the mobile storage module. The mobile storage module’s integrated components move, or actuate, the mobile storage module, per the plain meaning of the claim language. Thus, the system that is expressly recited as being a part of the module (integrated), actuates the module; the module actuates itself. Therefore, adding “self-deploying” to specially define the term “integrated actuating system” is unnecessary. Nothing in the intrinsic record is inconsistent with this conclusion. See Ex. 1002, 83–91 (arguing the characteristic of “self-deploying” invokes the inclusion of “an integrated actuating system,” but not the converse). Because Petitioner’s proposed construction of “integrated actuating system” would add unnecessary and undesirable redundancy to the claims, we determine that it is unnecessary to expressly construe this claim term at this stage of the proceedings.” slip op. at 32
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION Petitioner demonstrates a reasonable likelihood of prevailing at trial in demonstrating that claims 1, 2, 4, 6–10, 12–14, and 16–20 of the ’740 patent would have been obvious over the prior art combinations set forth in Grounds 1 and 2. Our decision at this stage derives from our review of the preliminary record before us. This decision does not reflect a final determination on the patentability of the claims. ORDER Accordingly, it is hereby: ORDERED that, Petitioner’s Request for Reconsideration is granted; FURTHER ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review of claims 1, 2, 4, 6–14, and 16–20 of the ’740 patent, in accordance with Grounds 1 and 2 in the Petition, is hereby instituted; and” slip op. at 56
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 8,944,740 - Square, Inc. v. Think Computer CorporationRehearing grantedPTAB · Feb 9, 2016 · CBM2014-00159 · APJ Michael W Kim · CBM · Rehearing
The Board granted Patent Owner’s rehearing request insofar as it addressed the assertions in the decision, but denied it in all other respects; the prior analysis remained unchanged.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“A request for rehearing can only point out that which the Board misapprehended or overlooked, and will be reviewed for abuse of discretion. 37 C.F.R. § 42.71(d). Moreover, as the moving party, the burden of persuasion falls on Patent Owner. 37 C.F.R. § 42.20(c). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and where each matter was previously addressed in a motion, an opposition, or a reply. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).” slip op. at 1
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“are unpersuaded that they would alter our construction. For example, Patent Owner asserts that the claim limitation “any particular transaction” requires that “bidirectional account” be construed as allowing an account to function simultaneously as both a merchant account and a purchaser account under all transactions. We disagree, primarily because we are unclear as to what Patent Owner means by “under all transactions.” The relevant limitation of independent claim 1 reads “wherein the first account and the second account are adapted to selectively function as either a merchant or a purchaser account during any particular transaction.” We find that “[a]ny particular transaction” means any specific transaction, and is not necessarily limited to all transactions going forward, and find further that, logically, an account need only function in “merchant mode” or “purchaser mode” for that particular transaction; otherwise the account would be in the awkward position of performing a transaction with itself. Moreover, we are unclear as to why the same account cannot function as both, depending on the transaction, as an account is merely a repository within which funds are held, and whether the account is in “merchant mode” (i.e., the ability to send funds from the account) or “purchaser mode” (i.e., the ability to send funds to the account) does not alter the fundamental repository nature of the account itself. A similar analysis of the cited portions of the prosecution history and Specification yields similar conclusions. For example, Patent Owner’s discussion of the prosecution history on pages 4 and 5 of the Request for Rehearing do not amount to Patent Owner providing an explicit definition of “selectively function,” “during any particular transition,” or any other claim term as meaning “simultaneously”; nor do Patent Owner’s statements rise to the level of a clear and unmistakable disclaimer with respect to the meaning of the claim terms.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“2. whether Dalzell fails to meet the claims’ requirements Based on Patent Owner’s proposed claim construction of “bidirectional accounts,” Patent Owner asserts that Dalzell does not disclose “bidirectional accounts.” Req. 7‒10. As we are unpersuaded, however, that the Board misapprehended or overlooked the items identified by Patent Owner in construing “bidirectional accounts,” we are unpersuaded that our analysis of Dalzell and “bidirectional accounts” set forth on pages 28 to 29 of the Final Written Decision should be modified in any way. See Dec. 29 (“[W]e find that a more logical reading of paragraph 59 of Dalzell is that a buyer, from a particular account, can add a seller feature to that particular account, without the need to create a whole new account. Such a finding is supported by extensive analysis and testimony by Dr. Sadeh-Koniecpol, with explicit citations to Dalzell, which we find credible, reasonable, and persuasive. Ex. 1002 ¶¶ 147-164 (citing Ex. 1006 ¶¶ 9, 27, 49, 57, 61, 82, 85, 87, 132, 163, Figs. 1A, 1B).”)” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 8,396,808
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.