• Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentable
  PTAB · Jan 26, 2023 · IPR2017-01928 · APJ Mitchell G Weatherly · IPR · Remand

  Claims 1, 2, 9, 11–17, and 21–24 are unpatentable over Burns with Uy or AlphaGrip; claim 10 was not shown unpatentable because Burns does not teach detachable paddles.

  RulingsRemand decision

  • RemandOther

    “rendered claims 3–8 and 18–20 unpatentable. Valve, 8 F.4th at 1381. The Federal Circuit reversed our determination that Burns was not prior art. Id. at 1381. The Federal Circuit also vacated our determination that Valve had failed to prove that collectively claims 1, 2, 9–17, and 21–24 were unpatentable as obvious in view of Burns in combination with either Uy or AlphaGrip. Id. Accordingly, the Federal Circuit remanded the case to us to consider Valve’s challenges to the patentability of claims 1, 2, 9–17, and 21–24 of the ’229 patent as obvious based on the combinations of prior art listed in the table below. Claims6 35 U.S.C. § References 1, 2, 9, 10, 14–17, 21–24 103 Burns, Uy 1, 2, 9–17, 21, 22 103 Burns, AlphaGrip Id. C. Remand Background On remand, we authorized the parties to concurrently file an opening brief and then concurrently file responsive reply briefs. Paper 44, 4. The parties agreed, and we concurred, that no new evidence would be submitted during the remand proceeding. Id. at 3. Accordingly, we decide the issues on remand based on the record that was submitted during the original trial.” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Valve contends that the ordinarily skilled artisan would have: a bachelor’s degree in an industrial design or engineering field, and approximately two years of relevant experience, for example. Alternatively, the same or an equivalent level of skill in the art could be obtained by end users or hobbyists who have substantial experience modifying or creating customized game controllers that include features to better suit their needs, even without any college education. Pet. 10 (citing Ex. 1009 ¶ 11). Ironburg, without expressly defining the level of ordinary skill, contends that a college degree of the type identified by Valve is not required. See Supp. PO Resp. 4–6. Ironburg notes that the level of ordinary skill is “relatively low” and the technology involved “is simple and straightforward.” Id. at 4 (citing Ex. 2016 ¶ 21). Ironburg’s contentions regarding the level of ordinary skill are consistent with Valve’s position, id. at 6, which we apply in our analysis. D. Whether AlphaGrip Is a Prior Art Printed Publication” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We find Ironburg’s critique of Mr. Willner’s testimony unavailing. Valve persuasively responds that Mr. Willner testifies that he personally recalls reviewing AlphaGrip on the internet during 2006, which significantly predates the filing of the oldest application in the priority chain of the ’229 patent, May 22, 2013, by at least six years. Compare Ex. 1009 ¶ 3 (testifying that online publication of AlphaGrip happened in 2006), with Ex. 1001, code (60) (identifying provisional application filed May 22, 2013, as earliest-filed priority application). Mr. Willner testifies that he is the inventor and designer of the controller that is reviewed in AlphaGrip, which we find to qualify him as an ordinarily skilled artisan. Ex. 1009 ¶¶ 1–3. Besides expressly testifying that he viewed AlphaGrip online during 2006, Mr. Willner also testifies in some detail about his recollection of his interactions with the author of AlphaGrip, Ryan Paul, and the events surrounding the publication of Mr. Paul’s review on Arstechnica’s website. Id. ¶¶ 4–5. Mr. Willner also reviews the version of AlphaGrip that Valve submitted as prior art and testifies that it is a true and correct copy of the review that he remembers seeing online during 2006. Id. ¶¶ 6–7. We find Mr. Willner’s testimony to be reliable in part because he recalls being “delighted” by the praise Mr. Paul lavished on the AlphaGrip controller. Id. ¶ 8. The publication of AlphaGrip marked an important event for Mr. Willner’s company. Mr. Willner states that he immediately posted a link on his own company’s website to Arstechnica’s AlphaGrip review in 2006, and his company maintains the link to Arstechnica’s review of AlphaGrip “to this day.” Id. We find that all these facts increase the probative value of Mr. Willner’s testimony on the issue of whether AlphaGrip was published and could easily have been found by interested persons during 2006. Although Mr. Willner may not have been a webpage manager for Arstechnica or be able to testify about precisely how many people accessed AlphaGrip in 2006, we find his testimony, as one of skill in the art himself to be compelling. Not only has Ironburg failed to refute any of Mr. Willner’s testimony with countervailing evidence, Ironburg did not cross-examine Mr. Willner to test his memory of the specific events set forth in his testimony. See PO Resp. 16–18 (failing to provide countervailing evidence or cite cross examination testimony).” slip op. at 12

  • ExcludeMotion to exclude, deniedMixed

    “We also disagree with Ironburg that we should exclude as hearsay or irrelevant Dr. Rempel’s testimony on how flexible the Burns’ paddles were or the extensive body of objective evidence cited and relied upon by him to support his testimony.9 Mot. 12–13. To the contrary, we agree with Valve that Dr. Rempel may properly rely upon the cited exhibits even if they would otherwise be inadmissible hearsay because they constitute the types of information upon which an expert would reasonably rely under Fed. R. Evid. 703. Opp. 10. Accordingly, we deny-in-part the Motion to the extent that it seeks to strike or exclude testimony in Dr. Rempel’s second declaration or Exhibits 1020, 1025, 1026, 1031, 1036, 1042 cited by Dr. Rempel in support of his analysis.” slip op. at 18

  Patent outcomesUS 9,352,229 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,352,229
• Ralph Lauren Corporation v. Lexos Media IP, LLCSome claims unpatentable
  PTAB · Mar 25, 2020 · IPR2018-01755 · APJ Sharon Fenick · IPR · Final written decision

  Claims 27, 33, 40, 41, 72, 81, and 82 are unpatentable under § 103; the remaining challenged claims are not determined unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Decision issues under 35 U.S.C. § 318(a). Having considered the evidence of record, and for the reasons discussed below, Petitioner has demonstrated by a preponderance of the evidence that claims 27, 33, 40, 41, 72, 81 and 82 of the ’449 patent are unpatentable under 35 U.S.C. § 103(a), but has not demonstrated by a preponderance of the evidence that claims 1–3, 5–7, 12– 15, 28, 29, 31, 32, 38, 39, 53–56, 58–63, 73–75, and 77–80 of the ’449 patent are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art would have had “at least a master’s degree in Computer Science, Computer Engineering, or a related field, or hold a bachelor’s degree in Computer 4 The record contains no evidence relating to secondary considerations. Science, Computer Engineering, or equivalent and have at least two years of relevant work experience in the fields of UI [(user interface)] design and OSs.” Pet. 10–11. In the Institution Decision, we preliminary adopted Petitioner’s proposed definition, noting that the prior art in this case demonstrated the level of ordinary skill in the art at the time of the invention. Inst. Dec. 10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Patent Owner does not comment on or dispute Petitioner’s proposal, and instead cites Okajima’s holding regarding the level of skill in the prior art without raising any issues regarding whether the prior art here reflects a level of ordinary skill different from that proposed by Petitioner. PO Resp. 10 (citing Okajima, 261 F.3d at 1355). We adopt Petitioner’s definition as consistent with the ’449 patent and the asserted prior art.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). The Petitioner proposed construction of several claim terms in the Petition. Pet. 12–18. However, none of these claim terms require construction to resolve the controversy. Petitioner also argued for a construction of an additional term (“wherein said specified content information further comprises information to be displayed on said display of said user’s terminal”) in its Reply. Pet. Reply 13. Patent Owner contends that this argument is a new argument raised improperly for the first time in the Reply. PO Sur-Reply 10–11. We agree. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding ... patent owner response.” See also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (concluding that the Board did not abuse its discretion in refusing to consider portions of a reply declaration “rais[ing] a new obviousness argument for [a claim] limitation that could have been made in the petition” but was not); Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369–1370 (Fed. Cir. 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)). Therefore, we will not address the new construction proposed for this claim term.” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “A petitioner must choose which grounds of invalidity to assert in the petition and “the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Intelligent Bio- Sys., 821 F.3d at 1369 (Fed. Cir. 2016); Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Circ. 2017) (a petitioner is foreclosed from “shifting” in post-petition arguments to a new theory of prima facie obviousness based on a different passage of a prior art reference than was used in the petition); see PTAB Consolidated Trial Practice Guide November 2019,5 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie 5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated case of unpatentability.”); Trial Practice Guide Update August 2018,6 14 (same). Therefore, we evaluate Petitioner’s arguments with respect to limitation [c.i] relying upon Malamud’s message relating to a preview cursor in Malamud to teach the “specified content information.” Patent Owner does not make any arguments relating to whether Malamud’s message, in view of the teachings of Anthias, teaches limitation [c.i] of claim 1. See, e.g., PO Resp. 9–18.” slip op. at 19

  Patent outcomesUS 6,118,449 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,118,449
• Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentable
  PTAB · Sep 22, 2017 · IPR2016-00949 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 1–12 and 15–18, and 20 are unpatentable: claims 1, 3–12, 15–17, 19, and 20 as anticipated by Tosaki; claims 1–12, 15–18, and 20 as obvious over Enright and Tosaki.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “This Motion has no meaningful distinction from the Motion filed in IPR2016-00948, and we incorporate that analysis here. Consequently, we deny Patent Owner’s Motion.” slip op. at 4

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

    “Patent Owner’s argument is that the ’770 patent expresses a clear intent to disavow controllers having a recessed portion that does not receive a user’s fingers. See PO Resp. 17–22. Stated in a positive sense, Patent Owner argues that the ’770 patent expresses a clear intent to cover only recessed portions that receive a user’s fingers. Patent Owner does not identify, nor do we discern, any explicit disclosure in the ’770 patent that the invention includes only recessed portions that receive a user’s fingers. The description that “preferably” each elongate member is mounted in a recess such that a user’s fingers may be received in the recess is an exemplary disclosure of a preferred embodiment. See Ex. 1011, 1:62–67. Likewise, the disclosures that the elongate members (e.g., paddles 11) are mounted within recesses so that a user may engage the elongate members with the tips of the fingers are exemplary. See Ex. 1011, 2:21–25, 3:39–44, Fig. 3. Consequently, the ’770 patent does not express a clear intent to limit the claimed invention to recessed portions that receive a user’s fingers. See e.g., SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed.Cir. 2001); see also Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed.Cir. 1988) (“Although the specification may aid the court in interpreting the meaning of disputed claim language, particular embodiments and examples appearing in the specification will not generally be read into the claims.”). In light of the disclosures above, the ordinary meaning that a recessed portion is an indentation is consistent with the Specification.” slip op. at 11

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

    “We agree with Petitioner (Pet. Reply 9–10) that nothing in claim 1 precludes the back of Tosaki’s steering wheel 14 from corresponding to the back of the controller as claimed. Claim 1 is an open-ended claim, so that additional components like base casing 10 with its bottom plate 11 are not precluded. Patent Owner’s assertion is not persuasive because it is not commensurate in scope with the claims. c) Conclusion Petitioner has demonstrated by a preponderance of the evidence that Tosaki anticipates independent claim 1.” slip op. at 23

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We accept Patent Owner’s uncontested assertions regarding the education level of the inventors; however, this information provides an incomplete picture because other factors are involved. See e.g. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating a non-exhaustive list of six factors that are a guide to determining the level of skill in the art). For example, one concern is the type of problems encountered in the art, and the problem solved by the ’770 patent is but one type of problem encountered. Tosaki describes that removing a hand from the controller to manipulate switches makes prompt reaction difficult and degrades usability, and describing that repositioning the user’s hands can affect comfort. Ex. 1002, 1:54–67, 2:19–23. Tosaki describes an apparatus that permits manipulation of a plurality of switches while holding the controller. Id. at 3:20–23. Tosaki’s solution also includes switches on the back of the controller (shift levers) that are accessible to a user’s fingers. Id. at 3:36–4:8. Enright describes that controller had become more complex in that the number of functions and user input devices increased to the point that user’s had difficulty moving a finger to a desired button. Ex. 1003 ¶ 2. Enright describes that movement between input devices can be difficult. Id. at ¶¶ 3–4. As a solution, Enright disclosed a device that permits selection of discrete button commands without looking at or moving fingers from buttons. Id. ¶ 5. Enright’s solution includes switches (mode switches 32, 34) added to the underside (back) of the controller to reside near a user’s fingers for easy operation. Id. at ¶ 32. Enright also discloses that these switches may be located elsewhere is ergonomically desired. Id. In light of this, the prior art of record demonstrates that switch position on the controller, usability, and comfort were known problems in the art. Further, prior solutions included placing switches to be easily accessible to a user’s finger or thumb, and placing switches so that those switches are accessible without removing a finger or thumb from another switch. In particular, these solutions placed controls on the back of the controller to be accessible to a user’s fingers. The technology involved was placement of switches in ergonomically desired locations that permit usability.” slip op. at 37

  Patent outcomesUS 9,089,770 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,089,770
• Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentable
  PTAB · Sep 22, 2017 · IPR2016-00948 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 1, 6, 13, 14, 16, 17, 19, and 20 are unpatentable: Tosaki anticipates them, and Enright with Tosaki also renders claim 20 obvious.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “In our Decision to Institute, we explained that a preliminary response cannot serve as an effective objection for two reasons.2 Dec. 4–5 (entered on September 27, 2016). First, objections must be made after institution of trial. See 37 C.F.R. § 42.64(b)(1) (objections are due ten days from institution of trial). Second, an objection and a preliminary response may not be combined into a single document. See 37 C.F.R. § 42.6(a)(3) (prohibiting combined documents).” slip op. at 5

  • Strike new argumentNew argument consideredDecided for petitioner

    “The Petition fails to address a claimed characteristic of the elongate members (flexibility). See PO Resp. 39–41 (arguing that Enright does not disclose elongate members that are flexible as claimed). This cannot be corrected in Petitioner’s Reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (Aug. 14, 2012) (a reply may not raise a new issue or belatedly present evidence); 35 U.S.C. § 312 (a)(3) (requiring petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”); 37 C.F.R. § 42.104(b)(4) (a petition for inter partes review must identify how the construed claim is unpatentable under the statutory grounds on which the petitioner challenges the claim and must specify where each element of the claim is found in the prior art patents or printed publications relied upon); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015); see also Paper 39, 2 (pointing out that Petitioner is making a new argument).20 Petitioner has not demonstrated by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over Enright and Tosaki. The same is true of claims 2–11, 13, 16, and 17 by virtue of their dependence from claim 1. 20 Petitioner argues that Patent Owner’s contention could not have been addressed earlier because the Board did not explicitly construe this claim limitation. Petitioner’s burden is not alleviated by the lack of a claim construction by the Board.” slip op. at 38

  • Expert testimonyPetitioner expert discountedMixed

    “In our Institution Decision, we observed that the Petition does not explain persuasively how observations from a UK patent examiner, which presumably are based on UK law and not United States law, are of use in our proceeding. Dec. 4. Petitioner asserts that Mr. Donohoe must be a person of ordinary skill because the level of ordinary skill is low, and because the UK Intellectual Property Office employed Mr. Donohoe to examine the video game controller art. Pet. Reply 16–17. Petitioner chose not to address our concern regarding the distinctions between United States and UK law. Because of those distinctions, Petitioner’s assertions and evidence with regard to Mr. Donohoe are entitled to little or no weight. This shortcoming is not fatal to this ground of unpatentability because, as explained below, the prior art of record is reflective of the level of skill in the art.” slip op. at 39

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner contends that the level of skill in the art is relatively low and that “less than a year of experience or other training in controller assembly or tooling is required.” PO Resp. 34; Ex. 2002 ¶ 30 (Patent Owner’s expert opining that the level of skill is “no more than a year of experience or other training in controller assembly or tooling”). Patent Owner bases this level of skill on the education level of the inventor and the type of problems encountered in the art. PO Resp. 35. Regarding the education level of the inventors, Patent Owner provides evidence that the named inventors have degrees in unrelated fields. Id. (citing Ex. 2008, 3; Ex. 2009, 4). Patent Owner asserts the problem solved was that users of conventional game controllers were at risk of hand strain or injury from having to operate many different controls on the front of the controller with only a user’s thumbs. Id. at 35–36 (citing Ex. 2012 ¶ 10; Ex. 1001, 1:33–40, 3:56–61). Petitioner does not contest the education level of the inventors or the problem solved by the ’525 patent. Pet. Reply 15–16. Rather, Petitioner asserts that Patent Owner has taken the illogical position that the qualifications of a person of ordinary skill in the art are maximum levels of experience or training rather than minimums. Id. To the extent that Patent Owner’s assertion suggests that the level of skill may not exceed a year of experience or other training in controller assembly or tooling, we disagree. Patent Owner does not cite, nor are we aware, of any legal precedent supporting the assertion that education and experience levels are maximums that must not be exceeded. Regarding the problem solved by the ’525 patent, the portions cited by” slip op. at 40

  Patent outcomesUS 8,641,525 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,641,525
• Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.Some claims unpatentable
  PTAB · May 23, 2017 · IPR2016-00259 · APJ Richard E Rice · IPR · Final written decision

  Claims 1, 2, and 4–9 are unpatentable as obvious over Dietzen I and II, Ciaffone, Laster, Pneumatic Conveying, and Toth; claim 3 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not agree with Patent Owner that Petitioner’s definition of the person of ordinary skill in the art is unreasonably high, and we adopt Petitioner’s definition for purposes of our Final Written Decision. While Petitioner’s definition requires five years of design experience at the bachelor’s degree level of education, Patent Owner’s definition does not require any design experience at all. We agree with Petitioner that a person of ordinary skill in the art designs devices, and, thus, actively monitors the relevant technical literature, rather than is merely familiar with devices (e.g., an operator or a manufacturer), as proposed by Patent Owner. See Ex. 1034 ¶ 28; Ex. 1005, 2:62–64 (indicating that those skilled in the art would understand “that the critical cone angle will vary depending upon the material being conveyed”). Accordingly, we adopt Petitioner’s proposed level of ordinary skill.” slip op. at 12

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

    “We do not agree with Patent Owner’s proposal to construe “non-free flowing drill cuttings” as drill cuttings that do not generally flow freely by gravitational force. There is insufficient support in the Specification for that proposal. The Specification does not distinguish between different types of screened drill cuttings, for example, screened drill cuttings that generally flow freely by gravitational force and those that do not. While the Specification describes screened drill cuttings in various ways, it is always referring to the same material. For example, the Specification refers explicitly to “thick, heavy pastes which are normally difficult to move and 12 See Ex 1005, 1:37–39 (calling drilling fluid a special type of oil used as a lubricant.) handle” (Ex. 1005, 1:31–32), “[screened] cuttings . . . transported ashore in the form of a very thick heavy paste” (id. at 1:44–48), “thick heavy paste material (e.g., drill cuttings)” (id. at 1:66–67), “a thick heavy paste” (id. at 2:3), “a non-free flowing paste” (id. at 2:9–10), “[t]he non-free flowing paste may be a thick and/or heavy paste or clay like material, e.g. oil rig drill cuttings” (id. at 2:13–14), and “a thick heavy paste” (id. at 3:10–11). As such, the Specification characterizes screened drill cuttings as a thick heavy paste as well as a non-free flowing paste and, thus, considers a thick heavy paste to be a non-free flowing paste. We determine that the broadest reasonable interpretation consistent with the Specification of “non-free flowing drill cuttings” is “screened drill cuttings, i.e., screened material, generated by the drilling of an oil well, including a mixture of earth and drilling fluid or oil.”” slip op. at 10

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

    “Patent Owner’s arguments do not respond adequately to Petitioner’s persuasive obviousness rationale that a POSITA would have substituted a positive-pressure conveyance system in place of the negative-pressure conveyance system of Dietzen I and II because negative pressure systems are generally limited to shorter distances and lower material volumes than positive systems. Further, Patent Owner’s arguments do not address sufficiently Ciaffone’s teaching that a positive-pressure vessel with a conical bottom section can be used to convey materials without the need for bins, hoppers, hydraulic rams, screw feeders, conveyor belts, and the like. See Ex. 1006, 1:70–2:6. As explained by Petitioner, Dietzen II uses an auger to augment use of negative pressure for moving settled materials horizontally from the bottom of a vessel. Pet. Reply 15; Ex. 2021 ¶¶ 154:6–155:5. In contrast with Dietzen II’s relatively low-pressure vacuum system, a positive- pressure system such as taught by Ciaffone, with an operating pressure of up to 6.89 bar, blows materials out of the conical bottom section of the vessel. See supra Section II.C.1.b. Patent Owner further argues that a “POSITA would have discounted positive pressure given th[at] non-free flowing drill cuttings cannot be fragmented.” PO Resp. 22 (citing Ex. 2057 ¶¶ 44, 150). We find this argument unpersuasive because Ciaffone’s blow vessel does not require fragmentation of the material to be conveyed. Rather, Ciaffone teaches compaction of the material in a tightly knit unit that can be acted upon by the full force of the pressurized air, in contrast with dispersion of the waste such that air is diffused among the separated particles resulting in diminution in the applied air pressure conveying the total charge. Ex. 1006, 3:11–19. Further, Pneumatic Conveying teaches that “small capacity blow vessels are designed on the basis of conveying material as a series of discrete plugs rather than as a continuous stream.” Ex. 1009, 282, Fig. 7.32. Pneumatic Conveying further explains: “As such, the capacity of the vessel is selected such that on discharge a plug is formed which is just long enough to prevent blocking [of the conveying line].” Id. Pneumatic Conveying discloses that “[i]f the material to be conveyed is unusually cohesive, a plug forming system will yield good results” and, “[a]s the plugs are relatively impermeable, they remain separated even over long conveying distances.” Id. at 346. Based on these teachings, a POSITA would not have understood that it was necessary to fragment non-free flowing drill cuttings, contrary to Patent Owner’s argument. For the reasons given, Petitioner has provided a sufficient reason with rational underpinning for combining Dietzen I and II, Ciaffone, Laster, and Pneumatic Conveying. See KSR, 550 U.S. at 418 (“‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 23

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Pneumatic Conveying does not provide information on “anything close to ‘non-free flowing [oil well drill/drill] cuttings’ or a ‘thick, heavy paste,’” and, thus, a POSITA “would not look to designs presented in Pneumatic Conveying.” Ex. 2057 ¶ 185. We give little weight to this testimony because, as discussed above, we credit Dr. Carson’s testimony that Pneumatic Conveying identifies hundreds of materials, including paste and cohesive material. See supra Section II.C.1.e(2). We also credit Dr. Carson’s testimony that Pneumatic Conveying explains that pressure vessels increasingly were being used to convey materials with “bad” flow properties, and that “Pneumatic Conveying would have also shown those of ordinary skill in the art that pneumatic conveying with a positive pressure system would be an effective way to transport non-free flowing drill cuttings, including in the form of a paste or sludge.” Ex. 1034 ¶ 124. Dr. Brown also testifies that the information in Pneumatic Conveying with respect to mass flow concerns granular solids. Ex. 2057 ¶ 185 (citing Ex. 1009, 411). He further testifies that because “the flow behavior of nonfree flowing [oil well drill/drill] cuttings is distinct from that of granular solids . . . a person of ordinary skill in the art would gain no insight in designing a vessel for paste to produce mass flow from a vessel designed to contain granular solids.” Id. We give little weight to this testimony because Dr. Brown does not address all of the information in Pneumatic Conveying that is relevant to mass flow, as discussed further below. In contrast with Dr. Brown, Dr. Carson testifies: “As explained in Pneumatic Conveying, those of ordinary skill in the art knew that the cone angle is an important variable to adjust in order to achieve mass flow.” Ex. 1034 ¶ 144 (citing Ex. 1009, 280–282, 410–420; Ex. 1046, 68–74, 147– 151). Consistent with Dr. Carson’s testimony, the ’018 Patent discloses that “[i]t is well known that the critical cone angle [to achieve mass flow] will vary depending upon the material being conveyed [and] as such would be well understood by those skilled in the art.” Ex. 1005, 2:61–63. We credit the testimony of Dr. Carson over the conflicting testimony of Dr. Brown because Dr. Carson’s testimony addresses the full Pneumatic Conveying disclosure, and is consistent with that disclosure, while Dr. Brown’s testimony does not address the full Pneumatic Conveying disclosure, and is not completely consistent with that disclosure. For example, under the subheading “Factors influencing blow vessel performance,” Pneumatic Conveying teaches that “[t]he increased use of blow vessels for feeding materials with ‘bad’ flow properties necessitates the selection of a suitable cone angle.” Ex. 1009, 279. Pneumatic Conveying further explains that “[v]essels with incorrectly designed cone angles will result in either ‘ratholing’ or ‘bridging’ problems.” Id. at 279, Fig. 7.30. These teachings of Pneumatic Conveying are not limited to granular solids, contrary to Dr. Brown’s testimony.” slip op. at 32

  Patent outcomesUS 7,544,018 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,544,018
• Costco Wholesale Corp. v. Robert Bosch LLCAll claims unpatentable
  PTAB · Mar 30, 2017 · IPR2016-00039 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 1, 12, and 14 are unpatentable as obvious over Prohaska combined with either Kotlarski or Merkel.

  RulingsFinal written decision

  • Strike new argumentNew argument consideredDecided for petitioner

    “Patent Owner contends that Petitioner’s argument is improper because it goes to an artisan’s expectation of success in making the claimed combination, and should have been in the Petition. Paper 57, 2 (referring to Pet. Reply 6:16–20). Petitioner’s argument properly responds to Patent Owner’s argument as required by 37 C.F.R. § 42.23(b). Further, we agree with Petitioner that Petitioner could not have reasonably anticipated that Patent Owner would make such argument when it is contradicted by the disclosure of the ’588 patent itself. Paper 59, 2. For that reason, Petitioner’s counter argument in the Reply was not required to be in the Petition.” slip op. at 15

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

    “In light of this, Patent Owner has not persuaded us that Pylon had opportunity and motive to develop Mr. Merkel’s testimony through cross-examination as Petitioner would have here. See United States v. Kennard, 472 F.3d 851, 856 (11th Cir. 2006) (citation omitted); United States v. Omar, 104 F.3d 519, 522 (1st Cir. 1997) (“And, the evidence in question being hearsay, it was the defendants’ burden to prove each element of the [804(b)(1)] exception they invoked.”). Accordingly, Patent Owner has not demonstrated that the exception of Fed. R. Evid. 804(b)(1) applies. The analysis in IPR2016-00038 of whether Mr. Merkel’s testimony qualifies for the residual hearsay exception is applicable here. Petitioner has demonstrated that Mr. Merkel’s testimony from the Pylon litigation (Ex. 2005, 210–264) is inadmissible hearsay, and with respect to this evidence, Petitioner’s Motion is granted. b) Mr. Kashnowski’s testimony Our analysis in IPR2016-00038 is applicable here, and consequently, with respect to this evidence (Ex. 2007 ¶ 6, second, third, and fourth sentences) Petitioner’s Motion to Exclude is denied. c) Related Portions of Patent Owner’s Response We do not exclude any portion of Patent Owner’s Response, but will not consider any citations to the excluded portion of Exhibit 2005.” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “CREDIBILITY OF DR. DAVIS There is no meaningful distinction between the argument on this issue here and that in IPR2016-00038. See PO Resp. 18–22; Pet. Reply. 20–21. Here, as in IPR2016-00038, the factors discussed detract slightly from Dr. Davis’s testimony, but not so much to warrant that we give his testimony overall little or no weight. Our analysis below reflects this determination.” slip op. at 11

  • Skill levelOther

    “LEVEL OF SKILL We do not discern a meaningful difference between the argument on this issue here and that in IPR2016-00038. See PO Resp. 1–2; Pet. Reply 1– 4. Here, as in IPR2016-00038, the prior art of record is reflective of the level of skill in the art. We address what was known in the art in our analysis below.” slip op. at 11

  Patent outcomesUS 7,228,588 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,228,588
• Maxlinear, Inc. v. Cresta Technology Corp. And CF Crespe LLCSome claims unpatentable
  PTAB · Aug 15, 2016 · IPR2015-00594 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 1–17 and 24–29 are unpatentable; claims 18–23 were not shown unpatentable because the § 103(c) safe haven bars the obviousness grounds against them.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “We agree with Patent Owner that the burden of persuasion to establish unpatentability is Petitioner’s burden and that burden never shifts to Patent Owner. See PO Resp. 3–4; 35 U.S.C. § 316(e); Nike, Inc. v. Adidias AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). Patent Owner argues that Petitioner has not met the burden of establishing that Favrat is “by another” as required by § 102(e). PO Resp. 4–25. Petitioner responds that Patent Owner is incorrect in that the burden of production has shifted to Patent Owner. Pet. Reply 2–3 (citing Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378–79 (Fed. Cir. 2015)). The shifting burden of production is not applicable to our analysis under § 102(e). See In re Magnum Oil Tools Int’l, Ltd., 2016 WL 3974202, No. 2015-1300, slip op. at 13–18 (Fed. Cir. 2016). Patent Owner here, like the patent owner in Magnum Oil Tools, seeks to disprove Petitioner’s contention. Magnum Oil Tools, slip op. at 16. The inquiry before us is whether Petitioner has shown by a preponderance of the evidence that Favrat is “by another” as required by § 102(e).” slip op. at 14

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

    “Mr. Mombers, a Group B inventor, testified to the ITC that he conceived of the signal processor of claim 1, the sole independent claim of the ’792 patent, and thus conceived of every claim of the ’792 patent. All of the evidence presented to the ITC that was submitted and argued here is consistent with Mr. Mombers’s assertion. Patent Owner corroborated this testimony by stating that Favrat is prior art under § 102(e), meaning it is “by another.” Considering the entire admissible record, we determine that a 19 In re Land, 368 F.2d 866 (Fed. Cir. 1966), is also distinguishable because the patents were related. preponderance of the evidence demonstrates that Favrat is “by another” as required by § 102(e).” slip op. at 23

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

    “Consequently, with regard to claims 3, 6–10, and 12–17, Patent Owner has failed to carry its burden of establishing when the ’792 patent “was made.” As a result, the safe haven of § 103(c) does not apply, and we need not reach the question of common ownership or obligation of assignment as of the filing date of the ’792 patent. b) Claims 18–23 The evidence provided by Petitioner does not address claims 18–23. See Ex. 1212, 5–6. That is, Patent Owner did not assert these claims were conceived and reduced to practice at an earlier date. Given the absence of evidence to the contrary, the presumption that the ’792 patent “was made” as of its filing date applies. Our inquiry is then whether as of that date, Favrat and the ’792 patent were “owned by the same person or subject to an obligation of assignment to the same person.” See 35 U.S.C. § 103(c)(1). As explained above, Patent Owner asserts, with supporting evidence, that Favrat and the ’792 patent were commonly owned as of the filing date of the ’792 patent. Petitioner provides no evidence to the contrary regarding 23 Petitioner contends, without supporting evidence, that because the references asserted against Patent Owner in the ITC proceeding predated even the May 2001 date, Patent Owner changed to rely upon the filing date of the ’792 patent as the priority date. Pet. Reply 19 n.9. common ownership or evidence of assignment as of the filing date of the ’792 patent. Rather, Petitioner provides argument and evidence regarding common ownership and obligation of assignment for dates prior to the filing date of the ’792 patent. See Pet. Reply 17–24. We need not consider this argument and evidence as it does not pertain to the date at issue (i.e., the filing date of the ’792 patent, which is the date that claims 18–23 were made). In light of this, Patent Owner has demonstrated that claims 18–23 are subject to the safe haven of § 103(c). Consequently a ground of unpatentability based on obviousness may not be asserted against Patent Owner for these claims.” slip op. at 27

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Not reached

    “because it is in response to Patent Owner’s argument in the Response that Favrat is not prior art under § 102(a). See PO Resp. 22 n.2; Paper 71, 1. However, this does not end our inquiry. If the assertion that Favrat is prior art under § 102(a) was required to be in the Petition, then the fact that the issue was raised in Patent Owner’s Response does not cure that oversight. As the Federal Circuit recently emphasized, 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.” 35 U.S.C. § 312(a)(3). Intelligent Bio-Systems, 821 F.3d 1359, 1367–68 (Fed. Cir. 2016); see also 37 C.F.R. § 42.104(b)(2) (requiring a petition to specify the specific statutory grounds under 35 U.S.C. § 102). Prior to filing of the instant Petition, Petitioner knew from Patent Owner’s contentions in the ITC proceeding that the safe haven of § 103(c) was a potential issue. See Ex. 1207, 3. Even armed with this knowledge, Petitioner chose not to assert in the Petition that Favrat is prior art under § 102(a). If Petitioner had asserted both § 102(a) and § 102(e), perhaps Patent Owner would have chosen a different response and the evidence in this proceeding would have developed differently. In the particular circumstances of this case, adding consideration of § 102(a) at this late date would deprive Patent Owner of due process. Consequently, we do not consider Petitioner’s contention that Favrat is prior art under § 102(a).” slip op. at 29

  Patent outcomesUS 7,265,792 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 7,265,792
• American Simmental Association v. Leachman Cattle Of Colorado, LLCAll claims unpatentable
  PTAB · Jun 13, 2016 · PGR2015-00005 · APJ Michael W Kim · PGR · Final written decision

  Claims 1–20 are held unpatentable under § 101; claims 1–4, 8–12, and 14–19 are also obvious over Wang alone. The motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Ultimately, we discern that Petitioner and Patent Owner are not very far apart. On education, we agree with Petitioner that evaluating genetic quality is sufficiently complex that it would require, at a minimum, a Master’s Degree in the field. On work experience, we agree with both parties that several years of experience in the field is necessary, with the optimum for a Master’s Degree being five years, and commensurately less for an individual possessing a PhD. We agree with Patent Owner that some understanding of economics and software is required, but agree with Petitioner that such understanding need only be a basic one that can be readily acquired through work experience in the field, with no formal education in that field being necessary. Finally, we disagree with Patent Owner that formal training or experience specific to the feeder calf market needs to be addressed separately, as, for the reasons set forth below, we are unpersuaded that evaluating feeder calves as a subgroup differs materially from evaluation of cattle overall, and that one of ordinary skill in evaluating of genetic quality of cattle generally would not have been familiar with feeder calves specifically, especially when the overwhelming goal of cattle production is to sell beef, of which the primary type sold is feeder calves. Perhaps more importantly, the significance of the level of ordinary skill in the art here is the role it plays in an obviousness analysis, and Patent Owner has not explained in a sufficiently persuasive manner how the disparate definitions impact dispositively the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). Accordingly, unless expressly indicated otherwise, we determine that a specific finding on the level of skill in the art is not required, because the prior art itself reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 6

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

    “3. “genetic merit scorecard” Each of independent claims 1, 8, and 14 recite “genetic merit scorecard.” Petitioner asserts that “genetic merit scorecard” should be construed as “visual display of genetic merit information.” Pet. 17–18 (citing Ex. 1001). Patent Owner does not dispute this construction. PO Resp. 23–26. After considering all evidence and assertions concerning this claim construction, we agree with Petitioner that “genetic merit scorecard” should be construed as “visual display of genetic merit information.”” slip op. at 11

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

    “Owner are rooted sufficiently in the express claim language, and in any case, are peripheral to the above-identified fundamental concept, in that while they may represent variations of the fundamental concept, we are unpersuaded that they alter materially the fundamental concept itself. For example, being “dynamic,” while perhaps placing some temporal aspects on “determining an animal’s relative economic value based on its genetic and physical traits,” does not alter the fact that independent claim 1 is fundamentally directed to “determining an animal’s relative economic value based on its genetic and physical traits.” A similar analysis is applicable to “sale group of feeder calves,” “disparate sources,” and “transforming.” The Specification further supports Petitioner’s argument. The “Field of the Invention” section set forth in the ’557 patent reads as follows: Embodiments of the present invention relate generally to the field of genetic quality and relative market value of livestock. More specifically, embodiments of the present invention facilitate an owner or potential buyer of one or more sale groups of livestock to evaluate the relative market value of the sale groups based on predictions derived from genetic merit estimates of the herd. Ex. 1001, 1:23–29. The “Description of Related Art” section that follows delves heavily into problems associated with determining what the actual value of the livestock is, and more specifically what premium or discount the livestock should command based on these desired genetic merits. Ex. 1001, 1:47–49. The first three sentences of the “Summary” section then read as follows: The Applicants recognize the importance of determining relative market value of a sale group or a group of animals offered for sale from a livestock operation. Various embodiments of methods and apparatus for determining relative market value of a sale group are provided herein. Exemplary embodiments of the present invention include an online genetic merit scorecard system. Ex. 1001, 2:6–12. Based on the above cited portions of the ’557 patent, we determine that the Specification supports heavily Petitioner’s proposed fundamental concept. The unambiguous disclosure in the Specification as to the nature of the invention indicates to us that Petitioner has not over-generalized here.” slip op. at 16

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

    “PO Resp. 66. However, we are unpersuaded that (a) valuing a group of animals is “significantly more” than valuing a single animal, (b) tailoring a price to a user is “significantly more,” and (c) comparison shopping is “significantly more,” whether taken in succession or as a whole. Indeed, these requirements appear to be routine parts of commerce involving the fundamental concept of “determining an animal’s relative economic value based on its genetic and physical traits.” Patent Owner asserts additionally that the claimed invention does not merely recite the alleged abstract idea and say “apply it” on computer components, because the recited computer components are an integral part of rooting the invention in computer technology. Specifically, Patent Owner asserts that the claimed invention involves novel technical software that “transforms genetic and performance information associated with the sale group into a dynamically-generated scorecard available to users on-demand.” PO Resp. 67. We disagree, as the recitation of software in the claim, if any at all, is at a highly abstract level, in that the claims recite no more than taking in and outputting data, with no detail as to how that data is manipulated between input and output.5 Absent such detail, we are unpersuaded that the claims are reciting any more than “applying to software” the fundamental concept of “determining an animal’s relative economic value based on its genetic and physical traits,” which is not “significantly more.” As for “dynamically-generated scorecard available to users on-demand,” our analysis of the same in the abstract idea prong of Alice is equally applicable here, namely, that 5 “MR. COHN: Your Honor, the little calculator that’s in Windows is a dynamic calculator. It’s been there for 25, 30 years. You pull it up. You type in five times two and you hit equals and it spits the answer back to you on demand right there.” Tr. 85:24–86:2. we are unpersuaded that “dynamic” and “on-demand” are sufficiently related to the claims. Patent Owner cites DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) in support of their position, but it is precisely because of the instructive nature of the problem-solution approach in that case that we arrive at our conclusion here. Specifically, DDR Holdings held that the “problem of retaining website visitors” involves a “claimed solution [that] is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR Holdings, LLC, 773 F.3d at 1257. Such is not the case here, where the problem, as clearly articulated above in the aforementioned portions of the Specification, is “determining an animal’s relative economic value based on its genetic and physical traits.” We are unpersuaded that this problem, or its solution, involves or requires anything computer-related. 4. Conclusion For the foregoing reasons, we conclude that Petitioner has shown, by a” slip op. at 20

  Patent outcomesUS 8,725,557 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo
  Patents in suitUS 8,725,557
• Viglink, Inc. / Skimlinks, Inc. et al. v. Linkgine, Inc.All claims unpatentable
  PTAB · Mar 16, 2016 · CBM2014-00184 · APJ Kristina M Kalan · CBM · Final written decision

  Claims 1–6 are unpatentable under § 101 and § 102(a) over Landau; claim 7 is unpatentable under § 101 but not shown anticipated by Landau.

  RulingsFinal written decision

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

    “The Board interprets claims in an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1277–79 (Fed. Cir. 2015) (“We conclude that Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning in view of the specification, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Claim terms generally are given their ordinary and customary meaning, unless it appears from the specification or the file history that they were used differently by the inventor, in a clear, deliberate, and precise manner. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In instituting trial, we expressly construed the terms “automatic/automatically” to mean “without human intervention.” Dec. 7–8. Neither party specifically addresses or contests this claim construction. Accordingly, we maintain our construction of the terms “automatic/automatically” to mean “without human intervention.”” slip op. at 7

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

    “We note that the fundamental issue at hand, allocating commissions, can be performed by humans, or with the aid of pencil and paper. See, e.g., Mortgage Grader, Inc. v. First Choice Loan Servs., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (noting that the steps of the claims could be performed by a human without the use of a computer in concluding that the claims at issue were drawn to an abstract idea); Tr. 17:16–21. Although we have considered Patent Owner’s arguments to the contrary, we see little difference between replacing one character set with another character set to denote the recipient of a commission and the type of fundamental economic practices considered to be abstract ideas in Alice Corp. and Bilski.2 As established by the record, the concept of commissions, as well as the practice of allocating commissions, existed long before the internet. See, e.g., Pet. 8–9 (citing Ex. 1004, 128, 132, 356–57).” slip op. at 11

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

    “Patent Owner’s argument that the claims are meaningfully limited because they recite steps performed by an intermediate computer is unavailing. PO Resp. 22–23. We are not convinced that reciting a standard computer performing a standard computer operation imposes meaningful limitations on the abstract idea. We agree with Petitioner that the disclosures regarding the technical details of the “intermediary computer” are sparse, and do not make the intermediary computer specialized. Claims do not become patent-eligible under § 101 simply for reciting a known, general purpose computer. Benson, 409 U.S. at 67 (invalidating as patent-ineligible claimed processes that “can be carried out in existing computers long in use, no new machinery being necessary,” or “can also be performed without a computer”). The Supreme Court rejected a similar argument, determining that “the claims at issue amount to ‘nothing significantly more’ than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer.” Alice Corp., 134 S. Ct. at 2360 (quoting Mayo, 132 S. Ct. at 1298).” slip op. at 15

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

    “Based on Petitioner’s argument and the record before us, we are persuaded that Landau discloses a preferred affiliate code. Landau’s lookup operation determines that the existing affiliate code (Landau’s source Webmaster ID) is present, but recognizes that it is not the preferred affiliate code to complete the transaction. The existing affiliate code (Landau’s source Webmaster ID) is swapped out for the preferred affiliate code (Landau’s target Webmaster ID). The target Webmaster ID is the preferred affiliate code used by Landau to complete the transaction. Use of the word “preferred” to modify the term “affiliate code” indicates that the preferred affiliate code is a different element than existing affiliate code, and is preferred to the existing affiliate code within the affiliate manipulation system. We have not been directed by Patent Owner to any portion of the specification that persuasively indicates otherwise.3 Thus, Landau’s identification of the target Webmaster ID as the preferred alternative affiliate code to the existing affiliate code meets this limitation of the claims.” slip op. at 19

  Patent outcomesUS 7,818,214 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipationcites Alice · Mayo
  Patents in suitUS 7,818,214
• Viglink, Inc. / Skimlinks, Inc. et al. v. Linkgine, Inc.All claims unpatentable
  PTAB · Mar 16, 2016 · CBM2015-00087 · APJ Kristina M Kalan · CBM · Final written decision

  Claims 1–8 are unpatentable: claims 1–7 are anticipated by Landau, and claims 1–8 are anticipated by Priest.

  RulingsFinal written decision

  • Skill levelOther
  • ExcludeMotion to exclude, deniedDenied

    “which Patent Owner responded (Paper 34) and on which Petitioner filed a Reply (Paper 35). Petitioner’s motion seeks to exclude Exhibits 2003 and 2004 as irrelevant. Mot. to Excl. 1–4. The moving party has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). Patent Owner does not cite to Exhibits 2003 and 2004 in its Response, and we do not rely upon Exhibits 2003 and 2004 in our present determination. The Motion to Exclude, therefore, need not be decided as to these Exhibits. Accordingly, the Motion to Exclude is dismissed as to Exhibits 2003 and 2004.” slip op. at 33

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

    “In instituting trial, we expressly construed the terms “automatic/automatically” to mean “without human intervention.” Dec. 7–8. Neither party specifically addresses or contests this claim construction. Accordingly, we maintain our construction of the terms “automatic/automatically” to mean “without human intervention.” B. Patentability of Claims 1–8 Under 35 U.S.C. § 101” slip op. at 8

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

    “We note that the fundamental issue at hand, allocating commissions, can be performed by humans, or with the aid of pencil and paper. See, e.g., Mortgage Grader, Inc. v. First Choice Loan Servs., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (noting that the steps of the claims could be performed by a human without the use of a computer in concluding that the claims at issue were drawn to an abstract idea); Tr. 17:16–21. Although we have considered Patent Owner’s arguments to the contrary, we see little difference between replacing one character set with another character set to denote the recipient of a commission and the type of fundamental economic practices considered to be abstract ideas in Alice Corp. and Bilski.2 As established by the record, the concept of commissions, as well as the practice of allocating commissions, existed long before the internet. See, e.g., Pet. 8–9 (citing Ex. 1004, 128, 132, 356–57).” slip op. at 11

  Patent outcomesUS 8,027,883 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipationcites Alice · Mayo
  Patents in suitUS 8,027,883

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.