• Supercell OY v. Gree, Inc.All claims unpatentable
  PTAB · Aug 14, 2019 · PGR2018-00029 · APJ Michael W Kim · PGR · Final written decision

  Claims 1–15 are unpatentable: the Board found them ineligible under § 101 and also found claims 1–15 unpatentable under § 112(a).

  RulingsFinal written decision

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

    “division” to “way of managing a game and playing a game” does not alter our analysis, because “displaying a panel selection in a division” is no more than identifying high level details of a game that are substantively analogous to how “wagering game,” “dice game,” and “bingo game” are identified in the aforementioned cases. Accordingly, we find that independent claim 1 recites “managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions),” which, under the Guidance, is one of certain methods of organizing human activity and, thus, an abstract idea.” slip op. at 26

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

    “way of managing a game and playing a game involving displaying a panel selection in a division.” Accordingly, Petitioner is not required to account for any limitations within this characterization, at least for the purposes of determining whether a claim limitation is “well-understood, routine, conventional.” And when this framework is applied properly, we see how most of Patent Owner’s assertions fall away. First, Patent Owner argues that Petitioner has provided no evidence that the claimed use of panels is well-understood, routine, or conventional. PO Resp. 32–39 (citing Ex. 1001, 6:36–38, 6:42–46, 7:27, 7:36, 7:44–53. 7:55–56; Ex. 2002, ¶¶ 22–30). More specifically, Patent Owner asserts that the panels disclosed in the ’583 patent may “display a still image,” “display a movie when the panels are emphasized and displayed,” “zoom in,” and may have portions of frames, in which the panels are disposed, that “display the texts showing the sound effect and/or an effect display portion.” PO Resp. 32–33 (citing Ex. 1001, 7:27, 7:36, 7:44–53, 7:55–56). Patent Owner asserts that these elements provide an interactive and dynamic format using panels that was unique and unconventional. PO Resp. 34. However, Petitioner is not required to show that those properties of the panels described in the ’583 patent, whether in an interactive and dynamic format or otherwise, are well-understood, routine, and conventional, because these elements are not recited in any of the independent claims.11 Relatedly, Petitioner is not slip op. at 45

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “2. Analysis Petitioner asserts that the Specification of the ’583 patent fails to provide adequate written description support for the following limitations of representative claim 1:” slip op. at 58

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “Pet. Reply 25; see also Tr. 37:3–11 (continuing line of argument). Here, once again, Petitioner mistakes breadth, which is permitted, for indefiniteness. See In re Miller, 441 F.2d at 693. As admitted by Patent Owner, the limitation and, in particular the term “allowed,” is certainly broad. See Tr. 73:15–74:2. But as stated by Mr. Crane, a person of ordinary skill would have understood that “one character would not be allowed to dispose a panel . . . into a division that is occupied by a panel belonging to another character,” or if “an attempt is being made to dispose a panel into a space where the panel will not fit, it will also not be allowed to be disposed.” PO Sur-Reply 22–23 (citing Ex. 2002 ¶ 44; Ex. 1009, 107:24–108:4). Petitioner has not provided sufficient evidence or analysis to show that such an example from the ’583 patent is insufficient guidance to one of ordinary skill and compels a determination of indefiniteness.17 For these reasons, we are not persuaded that Petitioner has met its burden of showing that claims 1–15 are indefinite under 35 U.S.C. § 112(b).” slip op. at 69

  Patent outcomesUS 9,636,583 unpatentable
  § 101 eligibility§ 112 disclosurecites Alice · Enfish · Electric Power · Nautilus
  Patents in suitUS 9,636,583
• DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.All claims unpatentable
  PTAB · Jul 25, 2018 · CBM2017-00032 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 1–4, 6–7, 16–19, 23–24, 26–28, 32–36, and 41 are unpatentable under § 101; the petitioner did not show claims 17, 18, 23, 24, and 28 unpatentable under § 112.

  RulingsFinal written decision

  • BurdenOther

    “Considering each claim limitation, as well as each explicit citation to the specification expressly set forth in the Petition, we are persuaded that Petitioner has met its burden of showing, via analysis and evidence explicitly set forth on pages 6–7 of the Petition, that independent claim 1, as a whole, does not recite a technological feature that is novel or unobvious.” slip op. at 22

  • Adverse judgmentOther

    “Response (Paper 24, “PO Resp.”) and disclaimed claims 5, 25, 39, and 43 (Ex. 2006). Petitioner filed a Reply to the Patent Owner’s Response (Paper 38, “Pet. Reply”). Patent Owner filed a Sur-Reply (Paper 40, “PO Sur”), and Petitioner filed a Response to the Sur-Reply (Paper 41, “Pet. Sur”).” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “II. ANALYSIS A. Claim Construction Petitioner and Patent Owner dispute the construction of certain claim terms. Pet. 23–28; PO Resp. 34–46. We apply the constructions of those terms set forth in Paper 49 in this decision.” slip op. at 7

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

    “We agree. The preambles of independent claims 1, 19, and 33 expressly state as much. In particular, the preamble of claims 1 and 33 provide: “A system for providing targeted advertising to a multimedia content end user” (claim 1) or “a plurality of multimedia content end users” (claim 33). Ex. 1003, 46:13–14, 49:59–60. Likewise, claim 19’s preamble refers to “[a] device for providing targeted advertising to an end user.” Id. at 48:20–21. Taking claim 1 as a representative example, the remainder of the claim recites certain tangible components, namely a “storage device” and specifically, an “addressable and reserved storage space”; a “processor”; and “software implemented by” the processor. Id. at 46:13–28. The claim further requires the following functionalities: the processor “reserv[ing]” the storage space; the processor “select[ing] particular advertising data suitable for targeting to at least one end user based upon predefined criteria data”; the storage space “storing digital advertising data” and specifically, the “particular advertising data”; and the “particular advertising data” being “accessible to” the user. Id. Thus, we are persuaded that claim 1, taken as a whole, is focused on the concept of providing targeted advertising to a user. Further, the claims merely invoke computers as a tool to implement the concept of targeted advertising, and are not directed to any improvement in computer functionality. See Pet. 34; Ex. 1008 ¶¶ 944–945. The claims recite generic components and functionality. For example, in claim 1, the required components, outlined above—a storage device and specifically, a storage space, a processor, and software— are conventional. The recited functionalities—reserving the storage space for advertising data, selecting advertising data targeted to a user, storing that data, and making that data accessible to the user—are likewise basic and routine. As Petitioner points out, the specification expressly acknowledges that some of the tangible components of the recited system were known. See Pet. 7–8, 33–34, 40–75; Ex. 1008 ¶ 949. For instance, the specification refers to storage device 14 as “any medium known in the art for storing electronic data” and similarly, “any storage device for audio/video information known in the art.” Ex. 1003, 13:22–28, 15:1–5, 24:66–25:7; see id. at [57], 5:3–6, 21:42–22:2. The testimony of Petitioner’s declarant, Dr. Negus, also persuade us that each recited component and functionality was generic, conventional, and known. Ex. 1008 ¶¶ 945, 949–954; see id. ¶¶ 955–987.” slip op. at 26

  Patent outcomesUS 9,053,494 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Mayo · Enfish
  Patents in suitUS 9,053,494
• Smart Microwave Sensors GmbH v. Wavetronix LLCAll claims unpatentable
  PTAB · Jul 17, 2017 · IPR2016-00488 · APJ Daniel N Fishman · IPR · Final written decision

  Claims 9, 10, 12, 13, 22, 23, and 25 are unpatentable, including as anticipated by Boles or Farmer and obvious over combinations including Boles, Farmer, Herman, and others.

  RulingsFinal written decision

  • ExcludeMotion to exclude, grantedGranted

    “1. Exhibits 1002, 1008, 1009, and 1012 Patent Owner argues the date printed on each of Exhibits 1002, 1008, 1009, and 1012, is inadmissible hearsay under FRE 801 and 802 as out of court statement offered to prove that truth of the matter asserted—that each document was a printed publication as of the date printed on that document (i.e., that it was sufficiently publicly accessible). Paper 45, 2–3 (citing Standard Innovation Corp. v. Lelo, Inc., Case IPR2014-00148, Paper 41 (PTAB April 23, 2015)). As discussed supra, we agree with Patent Owner that the dates printed on these Exhibits are hearsay with no applicable exception. Thus, we grant Patent Owner’s motion requesting that we exclude the copyright notice date from each of Exhibits 1008, 1009, and 1012, and exclude the date of the EuMC conference on Exhibit 1002. However, we note that the documents per se are not excluded from the record as hearsay—only the date imprinted on each as proof of the printed publication status of each document. The underlying documents of these Exhibits are offered not to prove the publication dates thereof but, instead, are statements offered to demonstrate the knowledge of persons of ordinary skill in the art. Petitioner may rely on other evidence to establish the date of public accessibility of each of these documents, the analysis of which we have set forth supra. See Section II.B.1–4.” slip op. at 54

  • Skill levelNot reached
  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “data about multiple vehicles on a particular section of roadway (PO Resp. 7– 8), Petitioner counters by identifying references in the field of traffic engineering that use mobile sensors (i.e., not at a fixed location) for acquiring “traffic data.” Pet. Reply 2 (citing Ex. 1031 ¶¶ 6, 22, 181–183). Referring to pages 7–13 of Exhibit 1031 (Texas Highway Operations Manual discussing “Vehicle-based Equipment”), Patent Owner’s expert testified, on cross-examination, as follows: Q In view of the paragraph, would it be accurate to note that one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of the traffic stream? A It says that a vehicle-mounted radar unit can be used to measure the timing speed of other vehicles in the traffic stream. It does not say it is used to measure the traffic stream. Q I said measure the speed of the traffic. A Yes. This says it is measuring the speed of vehicles in the traffic stream. Q So one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of vehicles in a traffic stream? A That is how it’s worded, the speed of other vehicles in the traffic stream. Ex. 1036, 98:21–99:13. In light of that testimony, we determine that Patent Owner’s expert testimony in support of their assertion is not credible.” slip op. at 14

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

    “Id. at 49:19–50:10. Given, at best, significant ambiguity as to whether the Specification and other evidence requires that “traffic data” must refer to “all or substantially all vehicles,” we are persuaded that such a requirement would not be proper under a broadest reasonable construction. Regarding Patent Owner’s assertion that “traffic data” is limited to data about multiple vehicles on a particular section of roadway (PO Resp. 7– 8), Petitioner counters by identifying references in the field of traffic engineering that use mobile sensors (i.e., not at a fixed location) for acquiring “traffic data.” Pet. Reply 2 (citing Ex. 1031 ¶¶ 6, 22, 181–183). Referring to pages 7–13 of Exhibit 1031 (Texas Highway Operations Manual discussing “Vehicle-based Equipment”), Patent Owner’s expert testified, on cross-examination, as follows: Q In view of the paragraph, would it be accurate to note that one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of the traffic stream? A It says that a vehicle-mounted radar unit can be used to measure the timing speed of other vehicles in the traffic stream. It does not say it is used to measure the traffic stream. Q I said measure the speed of the traffic. A Yes. This says it is measuring the speed of vehicles in the traffic stream. Q So one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of vehicles in a traffic stream? A That is how it’s worded, the speed of other vehicles in the traffic stream.” slip op. at 14

  Patent outcomesUS 6,693,557 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,693,557
• American Simmental Association v. Leachman Cattle Of Colorado, LLCAll claims unpatentable
  PTAB · Jun 13, 2016 · PGR2015-00003 · APJ Michael W Kim · PGR · Final written decision

  Claims 1–20 are unpatentable under § 101; the obviousness grounds were not proven because the Angus system was not established as prior art and Wang alone did not disclose the online scorecard.

  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.” slip op. at 7

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

    “implicitly asserting that “market value of any other market group” only makes sense if it is the “national market average value.” PO Resp. 55–56. We disagree. The claim limitation itself reads “relative market value,” and does not include either the “national” or “average,” and the aforementioned portion of the ’888 7 Divorced from surrounding claim language, we construe “relative market value” as “the market value of something as compared to the market value of any other market group.” patent discloses expressly that “relative market value may be expressed in various ways,” providing a non-limiting example of at least “the market value of a sale group that represents the average progeny of all registered bulls in the country or market region.” Also through their assertions concerning the prior art, Patent Owner appears to be implicitly asserting that by including the phrase “any other market group,” any values used to calculate the “relative market value” must be of a format that is standardized to allow comparisons across all other market groups, for example, across different breeds. PO Resp. 52–56. We disagree. Neither the express claim language nor the aforementioned portion of the ’888 patent requires that any values used to calculate the recited “relative market value,” or even the “relative market value” itself, be comparable across all market groups. Certainly calculating a value of one breed that is of a format that allows direct comparisons to a value of any other breed would appear to be more useful. The claim language itself, however, does not require such a result. For example, even if any values are only applicable to one specific breed, so long as there are two different market groups of that specific breed that are compared using that format, the value resulting from that comparison would still meet the recited “relative market value.” To eliminate any such confusion, we modify the aforementioned construction of “relative market value,” in the context of the aforementioned surrounding claim language, as follows: “the market value of a sale group as compared to the market value of at least one other market group.”” slip op. at 9

  • BurdenNot shown unpatentable

    “determine that its corroborative value is compromised by a variety of factors, to the point where we determine that it does not provide sufficient corroboration for Ms. Kurtz’s testimony that the document and the information it contains was available online at least as early as June 8, 2011. As an initial matter, we find that Exhibit 1014 was generated after every possible priority date. Ex. 2033, 57:7–58:6 (Ms. Kurtz testified, concerning Exhibit 1014, that “[i]t was actually printed last year is when I sent those to counsel.”) We find further that in attempting to make sense of the dates of the various documents, Ms. Kurtz had to consult the “IS department,” which also weighs against her testimony that she was personally aware that “[t]he revision date is the date on which Angus, through AngusSource, began providing electronic marketing documents to the public which have the same form, layout, and data as shown in Angus 2.” Ex. 1011 ¶ 6; Ex. 2033, 27:14– 28:2. We find additionally that changes were made at various times to the website on which Exhibit 1014 resides, and there is no definitive evidence presented in this proceeding as to which changes were made at which time. Ex. 2033, 28:8–31:6, 45:14–17, 46:1–47:7. To be sure, we find Ms. Kurtz to be credible, in that after reviewing all of the deposition testimony, we find that she was honest and sincere in trying to provide the most accurate information possible. The problem, however, is that her statement in the Declaration at paragraph 6, that she was personally aware that Exhibit 1014 existed in its exact form prior to every effective date, is in conflict with her testimony on cross-examination that she had to consult the IS department concerning the mechanics of the dates printed in Exhibit 1014, and that the format of Exhibit 1014 may have been altered between every possible priority date and the time that Exhibit 1014 was printed. Accordingly, given the weak corroborative value of Exhibit 1013, and the now-discounted corroborative value of Exhibit 1014, we conclude that Exhibits 1013 and 1014, collectively, do not constitute sufficient evidence to corroborate the Declaration of Ms. Kurtz that the Angus system is prior art.” slip op. at 20

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

    “Wang and the Angus system as corresponding to the recited “online genetic merit scorecard.” Pet. 56–58, 61–65, 68–71; see also Pet. Reply 20–21. As set forth above, we determined that Petitioner has not met its burden of showing that the Angus system is prior art. Accordingly, Petitioner must rely on Wang alone for the “online genetic merit scorecard.” Aside from the Angus system, Petitioner relies on paragraphs 11, 14, and 72 of Wang (Ex. 1004) for disclosing an “online genetic merit scorecard.” Pet. 57–58. We have considered paragraphs 11, 14, and 72 of Wang, and find that while they do provide disclosure that corresponds properly to “genetic merit scorecard,” construed above as “visual display of genetic merit information,” Petitioner has not pointed to any disclosure or provided any analysis, unrelated to the Angus system, concerning the “online” aspect of “online genetic merit scorecard.” To be sure, at a high level, the fact that the “genetic merit scorecard” may be “online” seems like a relatively minor distinction, especially given that the ’888 patent has an earliest possible priority date of April 13, 2013. Furthermore, it is unclear how much weight should be given to “online,” in that it is possible that any computer output, in a sense, can be considered capable of being placed “online.” Additionally, Wang does provide some disclosure that a computer is connected to databases, and that the computer is used to “generate the output rankings and individual animal estimated breeding values” (Ex. 1004 ¶ 11, 14), which could, perhaps, be enough to be considered “online.” Petitioner, however, has not advanced any of the above assertions, nor provided evidence in support thereof. See 35 U.S.C. § 326(e) (“In a post-grant review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”) Absent such assertions or evidence, we determine that Petitioner has not met its burden of showing, by a preponderance of the evidence, that the “online” aspect of “online genetic merit scorecard,” as recited in each of independent claims 1, 9, and 16, is obvious in view of Wang alone.10” slip op. at 22

  Patent outcomesUS 8,660,888 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Phillips
  Patents in suitUS 8,660,888
• Vmware, Inc. v. Clouding CorporationAll claims unpatentable
  PTAB · Jan 7, 2016 · IPR2014-01305 · APJ Joni Y Chang · IPR · Final written decision

  Claims 1–3 are unpatentable as anticipated by Aziz, and claims 11–18 are unpatentable as obvious over Aziz and Sanchez-Frank; Patterson anticipation was not shown.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “to the benefit of the filing date of a provisional application. Id. at 1378–82. Specifically, in an inter partes review, the petitioner has the ultimate burden of persuasion to prove “unpatentability by a preponderance of the evidence,” and this burden never shifts to the patent owner. Id. at 1378–79 (citing 35 U.S.C. § 316(e); Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008)). Also, the petitioner has the initial burden of production—a burden of going forward with evidence. Id. at 1379–80. Further, the Federal Circuit clarified that there is no presumption that a reference patent is necessarily entitled to the benefit of the filing date of a provisional application, or an earlier-filed nonprovisional application if the reference patent was issued from a continuation-in-part application. Id. at 1380 (“[B]ecause the PTO does not examine priority claims unless necessary, the Board has no basis to presume that a reference patent is necessarily entitled to the filing date of its provisional application.”); PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008) (“When neither the PTO nor the board has previously considered priority, there is simply no reason to presume that claims in a [continuationin-part] application are entitled to the effective filing date of an earlier filed application.”). “A reference patent is only entitled [under § 119(e)(1)] to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Dynamic Drinkware, 800 F.3d at 1381 (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)) (emphasis” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “A reference patent is only entitled [under § 119(e)(1)] to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Dynamic Drinkware, 800 F.3d at 1381 (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)) (emphasis 12 added). Also, a reference patent is entitled under § 120 to the benefit of the filing date of an earlier-filed nonprovisional application if the disclosure of that application provides adequate written description for the claims in the reference patent in compliance with § 112, ¶ 1. Wertheim, 646 F.2d at 537. slip op. at 12

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior art

    “§ 102(e)(2) because the Patterson provisional application provides adequate written description support for the disclosures of the Patterson patent. Pet. 17–18 (citing Ex. 1006 ¶¶ 52–55); Reply 17–19. To support its contention, VMware explains how the Aziz patent and the Patterson provisional application, which incorporates the Aziz nonprovisional application by reference, disclose the subject matter recited in the claims of the ’708 patent. See, e.g., Pet. 17–18, 30–34; Reply 17–22. VMware, however, does not explain how the Patterson provisional application or the Aziz nonprovisional application provides adequate written description support for the claims of the Patterson patent in compliance with § 112, ¶ 1. See generally Pet.; Reply. Therefore, VMware fails to demonstrate that the Patterson patent is entitled to the benefit of the filing date of the Patterson provisional application or the Aziz nonprovisional application. Consequently, VMware has not established that the Patterson patent is prior art to the ’708 patent.” slip op. at 15

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

    “We are not persuaded by Clouding’s arguments, as they narrowly focus on an optional feature and fail to consider Aziz’s disclosure as a whole. Clouding acknowledges that Aziz discloses a server separated from the Control Plane, and that server provides a set of web pages, enabling users to create a customized VSF by specifying the computing elements, hardware, and software for the VSF. PO Resp. 4–5; Ex. 1002, 15:31–51 (“a set of Web pages are served by the Control Plane machine, or by a separate server”). There is no dispute that the users enter their specifications for a VSF using the web pages on this user-interface web server. PO Resp. 4–5; Ex. 1002, 15:31–51 (“The Web pages enable a customer to create a custom VSF, by specifying a number of tiers, the number of computing elements . . . .”). Therefore, VMware has shown by a preponderance of the evidence that Aziz’s disclosure of a user-interface web server describes a “configuration/access” server, as required by the claims at issue. Additionally, as VMware points out, Aziz’s Control Plane comprises one or more servers that are interconnected in a network or by other means. Pet. 25–26; Ex. 1002, 4:64–67. In response to receiving a user specification for a customized VSF, the Control Plane allocates the computing elements and other resources to execute and implement the VSF. Ex. 1002, 3:28–32 18 (“By physically constructing the computing grid once, and securely and dynamically allocating portions of the computing grid to various organizations on demand, economies of scale are achieved that are difficult to achieve when doing a custom build of each site”); 9:15–10:15 (“Assume that the Control Plane is asked to construct a VSF l . . . . In response, the Control Plane assigns or allocates CPU . . .”). Accordingly, VMware has shown by a preponderance of the evidence that Aziz’s disclosure of a Control Plane describes an “infrastructure server,” as required by the claims. As VMware explains also, the user-interface web server must communicate the user specification to the Control Plane because the Control Plane is the server that constructs the requested VSFs from those specifications. Pet. 25; Ex. 1002, 5:9–20, 5:29–38; 10:16–24. Contrary to Clouding’s assertion that human managers “are in place to examine any requested orders and approve same before they are passed to the control plane for implementation” (PO Resp. 6), the sentence relied upon by Clouding describes merely an optional feature—“Orders may be reviewed by human managers to ensure that they are appropriate.” Ex. 1002, 15:54– 55. It does not necessarily imply that the user-interface web server is a standalone server without any communication with the Control Plane, as alleged by Clouding. In fact, the sentence before the passage relied upon by Clouding explicitly states that “[a]fter the customer or user enters such provisioning information, the Control Plane parses and evaluates the order and queues it for execution.” Id. at 15:52–54 (emphasis added). In order for the Control Plane to accomplish those specific tasks, the user specification” slip op. at 18

  Patent outcomesUS 7,272,708 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,272,708
• Vmware, Inc. v. Clouding CorporationAll claims unpatentable
  PTAB · Jan 7, 2016 · IPR2014-01304 · APJ Joni Y Chang · IPR · Final written decision

  Claims 1–4 and 6–9 are unpatentable as obvious over Aziz and Sanchez-Frank; VMware did not show those claims anticipated by Patterson.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “Specifically, in an inter partes review, the petitioner has the ultimate burden of persuasion to prove “unpatentability by a preponderance of the evidence,” and this burden never shifts to the patent owner. Id. at 1378–79 (citing 35 U.S.C. § 316(e); Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008)). Also, the petitioner has the initial burden of production—a burden of going forward with evidence. Id. at 1379–80. Further, the Federal Circuit clarified that there is no presumption that a reference patent is necessarily entitled to the benefit of the filing date of a provisional application, or an earlier-filed nonprovisional application if the reference patent was issued from a continuation-in-part application. Id. at 1380 (“[B]ecause the PTO does not examine priority claims unless necessary, the Board has no basis to presume that a reference patent is necessarily entitled to the filing date of its provisional application.”); PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008) (“When neither the PTO nor the board has previously considered priority, there is simply no reason to presume that claims in a [continuation-in-part] application are entitled to the effective filing date of an earlier filed application.”). “A reference patent is only entitled [under § 119(e)(1)] to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Dynamic Drinkware, 800 F.3d at 1381 (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)) (emphasis added). Also, a reference patent is entitled under § 120 to the benefit of the” slip op. at 11

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artNot shown unpatentable

    “A reference patent is only entitled [under § 119(e)(1)] to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Dynamic Drinkware, 800 F.3d at 1381 (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)) (emphasis added). Also, a reference patent is entitled under § 120 to the benefit of the 11 filing date of an earlier-filed nonprovisional application if the disclosure of that application provides adequate written description for the claims in the reference patent in compliance with § 112, ¶ 1. Wertheim, 646 F.2d at 537. slip op. at 11

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

    “are not persuaded by Clouding’s arguments. In an obviousness analysis, we must consider the combination of references, as a whole, in light of the general knowledge of an ordinarily skilled artisan. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). At the outset, we observe that the claims at issue do not require a user interface that enables the user to create a copy of a device configuration, as is evidently alleged by Clouding. Rather, the claim language requires a user interface that is configured to enable “the user to request a copy [of] a device configuration.” Ex. 1001, 7:66–67 (emphasis added). The claim language also does not require the user to make or save the copy of the device configuration, as alleged by Clouding, but instead requires that “the system is configured to make the copy of the device configuration and save [it] in storage.” Id. at 8:1–3 (emphasis added).” slip op. at 19

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

    “At the outset, we observe that the claims at issue do not require a user interface that enables the user to create a copy of a device configuration, as is evidently alleged by Clouding. Rather, the claim language requires a user interface that is configured to enable “the user to request a copy [of] a device configuration.” Ex. 1001, 7:66–67 (emphasis added). The claim language also does not require the user to make or save the copy of the device configuration, as alleged by Clouding, but instead requires that “the system is configured to make the copy of the device configuration and save [it] in storage.” Id. at 8:1–3 (emphasis added). As Dr. Fortes explains, Aziz discloses situations in which a user requests a copy of a device configuration and the system makes a copy of 19 that configuration and saves it to storage. Ex. 1016 ¶ 12. For instance, Aziz discloses a user interface (a set of web pages) that allows users to create and modify a customized VSF, “by specifying . . . the hardware and software platform used for each element, and things such as what kind of Web server, application server, or database server software should be preconfigured on these computing elements.” Ex. 1002, 15:31–16:22. As Clouding acknowledges, “Aziz teaches a solution in which a user is permitted to select from a set of pre-defined logical blueprints in order to assign various computing elements of a VSF different roles (e.g., Web server, application server, database server, etc.).” PO Resp. 6; Ex. 1002, 8:1–12. There is no dispute that Aziz’s system is configured to make and save a copy of the customized VSF, which includes a copy of the pre-defined logical blueprint selected by the user, because Aziz’s system allows the user subsequently to change the parameters of the customized VSF, by adding or removing a processor or other computing elements. Id. at 9:15–10:37, 16:1–11, Figs 5A–6; see also id. at 10:21–24 (“[T]he organization that owns or operates the VSF wants another server, and has added it through an administrative mechanism, such as a privileged web page which allows it to add more servers to its VSF.”); 16:12–15 (“Through the privileged access mechanism the customer can . . . adjust the characteristics of a VSF based on the real-time information.”). Also, Dr. Fortes testifies that one with ordinary skill in the art would have understood that “at least some of the blueprints used to boot computing elements may be created by users,” and those” slip op. at 19

  Patent outcomesUS 7,065,637 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,065,637
• Carecloud Corporation v. Athenahealth, Inc.All claims unpatentable
  PTAB · Nov 18, 2015 · CBM2014-00143 · APJ Richard E Rice · CBM · Final written decision

  Claims 1–20 are unpatentable under § 101 as directed to ineligible subject matter; obviousness was not shown for claims 1–3, 5, 8, 11–13, 15, 17, 18, and 20.

  RulingsFinal written decision

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

    “Neither party proposes any change to the interpretations set forth above, and our review of the evidence does not indicate that any change is necessary. Consequently, we maintain our interpretations. Patent Owner proposes constructions for two additional claim terms— “rule” and “database.” PO Resp. 10. With respect to “rule,” Patent Owner proposes the definition set forth expressly in the Specification, i.e., “a rule is coded logic that evaluates data and then performs an action.” Id. (citing Ex. 1001, 5:59–60). Petitioner does not dispute Patent Owner’s proposed construction of “rule,” and we agree that it is the broadest reasonable interpretation consistent with the Specification. For the claim term “database,” Patent Owner relies on Mr. Goodin’s statement, based on a dictionary definition, that a “database” is a “collection of data with a given structure for accepting, storing, and providing, on demand, data for multiple users.” Id. (citing Ex. 2012 ¶ 44); see Ex. 2015, 21. We note Mr. Goodin’s additional testimony that a POSA “would understand a ‘database’ is a stored collection of data” (Ex. 2012 ¶ 45), and that the Specification “contrasts a database, consisting of stored data, which can be updated on demand, with a set of rules that are hard coded into a software application” (id. ¶ 46, citing Ex. 1001, 6:27–28). Petitioner does not propose a construction for “database” or challenge Mr. Goodin’s testimony, discussed above. Based on the above, we determine that the broadest reasonable interpretation consistent with the Specification of “database” is a stored collection of data that can be updated on demand.” slip op. at 9

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner’s Declarant, Dr. Bergeron, provides the following definition of a person of ordinary skill in the art (“POSA”): [A] POSA in the 2000 time frame would have had a Bachelor’s degree in computer science or the equivalent, or commensurate industry experience of at least four to five years of experience with computer programming and general knowledge of database technologies and networking or similar fields. A POS[A] in the 2000 time frame would also have at least two years of experience in the healthcare, or healthcare-related, industry. Ex. 1013 ¶ 16. Patent Owner’s Declarant, Dr. Goodin, agrees with Dr. Bergeron’s definition (Ex. 2012 ¶ 41). We agree with and adopt this definition for the purposes of our Final Written Decision.” slip op. at 8

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

    “On this record, we are persuaded that claims 1–20 are directed to the broad concept of scrubbing medical claims before submission, i.e., pre- processing medical claims to identify and correct errors. See Pet. 16; Pet. Reply 3. In particular, the patent claims all require automatically interacting with the completed claim submission by the medical practice management server to correct an error in the completed claim submission, wherein the error is resolved by the medical practice client before processing the completed claim submission, by applying one or more rules from a class of rules associated with the payor server, wherein the one or more rules comprises a new rule, an updated rule, or both received from the payor server. Ex. 1001, 20:12–20 (claim 1), 22:24–32 (claim 18), 23:11–19 (claim 20) (emphases added). Further, the concept of scrubbing medical claims before submission is consistent with the ’116 Patent Specification, which explains: “Given the extent of wasted time and money associated with the process [for filing and processing health insurance claims], there exists a need to manage a medical practice in a more efficient manner and [to] provide insurance claims with fewer or no errors.” Id. at 1:64–67. According to the Specification, “[t]he present invention automatically and repeatedly interacts with an insurance company system and/or applies rules to efficiently manage a medical practice and provide insurance claims with a reduced number of errors.” Id. at 2:3–6. In a preferred embodiment, rules engine 60 applies rules to the claim entry form and thereby “scrubs” the claim before submission. Id. at 13:31–59; see Ex. 1001, 13:33–34, Fig. 3F (“The rules engine 60 ‘scrubs’ the claim (step 390), or examines the claim for claim errors.”); Pet. 28 n.2. Given these disclosures, we are unpersuaded that any specific claim limitations need to be added to the above articulated abstract concept, as we discern that they merely provide support to the abstract concept of scrubbing medical claims before submission. Despite Patent Owner’s arguments to the contrary, we see little difference between scrubbing medical claims before submission and the type of fundamental economic practice considered to be an abstract idea by the Supreme Court in Alice.1 As established by the record, scrubbing medical claims before submission is a practice that existed long before the ’116 Patent. See, e.g., Ex. 1001, 1:31–40; Ex. 1012, 2:27–39; Ex. 1013 ¶¶ 33–34; Ex. 1024,2 107–108; Ex. 1029 ¶¶ 10–12, 14, 27. That the claims recite using a database of updated rules, multiple computers, and a claim edit screen, for scrubbing medical claims before submission, does not render the claims any less abstract. See Intellectual Ventures I LLC v. Capital One Bank (US), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (holding that “while the claims recite budgeting using a ‘communication medium’ (broadly including 1 In Alice, the Supreme Court determined that the claims at issue were “drawn to the concept of intermediated settlement,” i.e., the use of a third party to mitigate settlement risk. 134 S. Ct. at 2356. The Supreme Court also determined that “[l]ike the risk hedging in Bilski [Bilski v. Kappos, 561 U.S. 593 (2010)], the concept of intermediated settlement is ‘a fundamental economic practice long prevalent in our system of commerce.’” 134 S. Ct. at 2356 (citations omitted). With respect to the first step of the “Mayo framework,” the Supreme Court concluded in Alice that “there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement” in Alice, and that “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.” Alice., 134 S. Ct. at 2357. 2 Bringing Health Care Online: The Role of Information Technologies, U.S. Congress, Office of Technology Assessment (Sept. 1995). the Internet and telephone networks), that limitation does not render the claims any less abstract”). We conclude, therefore, that Petitioner has demonstrated that the ʼ116 Patent claims, like the claims in Alice, are directed to an abstract idea, namely, scrubbing medical claims before submission.” slip op. at 14

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

    “For reasons that parallel those articulated by the Federal Circuit in Intellectual Ventures I, we determine, contrary to Patent Owner’s arguments, that claims 1–20 of the ’116 Patent do not incorporate an inventive concept. See Alice, 134 S. Ct. at 2355; Intellectual Ventures I, 792 F.3d at 1368–70. Rather, the steps and limitations in the claims, whether considered individually or as an ordered combination, amount to a mere instruction to implement the abstract idea on a computer. See Alice, 134 S. Ct. at 2358. Like the claims at issue in Alice and Intellectual Ventures I, the ’116 Patent claims all recite generic computer elements (servers, rules, database, interactive screen, etc.) performing generic computer tasks such as storing rules in a database, receiving data, performing automated operations, and transmitting data. See, e.g., Ex. 1001, 20:2–42 (claim 1); see Alice, 134 S. Ct. at 2359; Intellectual Ventures I, 792 F.3d at 1368, 1370; Ex. 1001, 4:27–57 (servers), 5:60–61 (rule), 5:66–6:8 (rules database), 14:62–65 (interactive screen); Ex. 1013 ¶¶ 54, 56, 57, 62; Ex. 1029 ¶¶ 22– 27; Ex. 2011, 158:23–159:5; Ex. 2024, 94:4–17. Patent Owner’s argument, on page 76 of the Response, that the claims” slip op. at 21

  Patent outcomesUS 7,617,116 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · KSR · Graham
  Patents in suitUS 7,617,116
• Square, Inc. v. Unwired Planet LLCAll claims unpatentable
  PTAB · Oct 30, 2015 · IPR2014-01165 · APJ Michael W Kim · IPR · Final written decision

  Claims 8–12, 14, 15, 17, 25–29, 31, 32, 34, and 35 are unpatentable as obvious over Othmer and Goldberg; anticipation by Manz was not shown.

  RulingsFinal written decision

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

    “the wireless device to determine its current location data and reporting the current location data of the wireless device . . . in accordance with a set of location update instructions,” the express language does not assist us definitively in deciding whether “set of location update instructions” must influence the recited “determine.” Although under a most natural reading, it appears that “set of location update instructions” is applicable to the entire claim limitation, which would include the “determine” operation, it is plausible that under a broadest reasonable construction, the recited “set of location update instructions” is only required to influence the immediately adjacent “reporting” operation. When we consult the Specification, however, we conclude that the broadest reasonable construction, in view of the Specification, is that “set of location update instructions” must influence the recited “determine” operation. For example, the Specification in the “Brief Summary of the Invention” section discloses that “[l]ocation data for the wireless device is obtained in accordance with the set of instructions. The location data is provided to a notification server.” Ex. 1001, 3:28–30. As the second sentence corresponds to the recited “reporting” operation, the set of instructions in the first sentence would only apply to what would correspond to the recited “determining” operation. In another example, the Specification discloses that “[a]t step 320, the mobile device executes the algorithm to determine its location by a location determination method indicated in the algorithm and provides the corresponding location data to the notification server.” Ex. 1001, 9:3–6. In the Decision on Institution, we preliminarily determined that “set of location update instructions” is broader than, and thus encompasses, algorithms, and after reconsidering anew the basis for our preliminary construction, we determine that our previous determination was correct. Dec. 7–9. Here, the exemplary algorithm clearly applies to the location determination method, with the “reporting” operation only performed subsequently. See Ex. 1001, 3:16–20; 5:1–10. Indeed, we are unable to identify any portion of the Specification where any set of instructions or algorithm is shown definitively as not influencing the “determine” operation. Accordingly, we interpret the claims to require that the “set of location update instructions” must influence the recited “determine” operation.” slip op. at 7

  • Skill levelSkill level board ownOther

    “the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007). The parties agree that a person of ordinary skill in the art would have had “a Bachelor of Science degree in Electrical/Computer Engineering or Computer Science (or related subjects) plus relevant academic or professional experience.” See PO Resp. 11 (citing Ex. 2013 ¶ 22; Ex. 2011, 24:17–25:15). Based on the record presented, including our review of the ’359 patent and the types of problems and solutions described in the ’359 patent and cited prior art, we concur with the parties’ assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 12

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “improper because Goldberg is non-analogous art to the ’359 patent. Specifically, Patent Owner asserts that the claimed invention is directed to providing notifications to a wireless device, while Goldberg is a communication link that merely transmits location data. We disagree with Patent Owner. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). To that end, the preambles of independent claims 1 and 8 recite that they are directed to notifying wireless devices of an event. Furthermore, contrary to Patent Owner’s assertion that Goldberg is a communication link that merely transmits location data, Goldberg expressly discloses transmitting commands from a base station to a watson device. Ex. 1006, 4:34–40, 13:26–35. We are persuaded that Goldberg is analogous art to the claimed invention under either prong. Moreover, as discussed at oral hearing, location determination is unquestionably a major part of the claimed invention, for example, by express recitations in the independent claims of “current location data” and “location update instructions.” Patent Owner agrees that Goldberg is directed to location determination. See Tr. 50:11–52:14. At a minimum, we determine that this satisfies the second prong of the analogous arts analysis, namely, that both the claimed invention and Goldberg are directed to problems associated with location determination.” slip op. at 14

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

    “A person of ordinary skill in the art would have been motivated to combine Othmer with Goldberg to result in an improved mobile communications device that reports its location according to configuration provided by a remote server. (Ex. 1011, ¶ 156–157, 158–159). Each reference is directed to a system for determining, communicating, and storing the locations of mobile communications devices in a network of devices, so the references are in the same field of endeavor and the problems encountered by designers of such devices would overlap. (Ex. 1011, ¶ 160). Goldberg discusses a device and protocol for communicating the information necessary to track mobile devices in the network, while Othmer focuses on an application that is achievable with such a configuration (displaying location-based content in a “ticker” on the mobile device). (Ex. 1011, ¶ 161–164). Both disclosures teach tracking the location of mobile devices, so the incorporation of Goldberg’s infrastructure techniques (including its discussion of altering the reporting frequency of the mobile devices) into Othmer’s practical application (mobile location-aware tickers) would predictably result in an improved wireless device, with each reference contributing its known properties and advantages. (Ex. 1011, ¶ 165). Othmer contains an express teaching that “positioning techniques known in the art,” including the techniques described in Goldberg, can be used in its system. (Ex. 1005, ¶ 51, Ex. 1011, ¶ 166). Moreover, Goldberg expressly discloses that its “watson” device can use a location determination in the form of GPS system and a communication means in the form of a cellular telephone (Ex. 1006, 3:53-56, 4:8-11), which are precisely the examples given in Othmer as the hardware to implement its ticker system. (Ex. 1005, ¶ 33, 30, Ex. 1011, ¶ 167). Accordingly, the hardware building blocks of the two systems are the same, further evidencing that Othmer’s system could be readily be adapted to incorporate Goldberg’s hardware considerations without substantial modification. (Ex. 1011, ¶ 168, 170). A person of ordinary skill could have used Goldberg’s location transmission techniques in Othmer’s ticker system to provide an enhanced alert distribution system, with an expectation of success. (Ex. 1011, ¶ 169, 171). Accordingly, the combination of Othmer and Goldberg is proper.” slip op. at 12

  Patent outcomesUS 8,275,359 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,275,359
• Google Inc. v. Unwired Planet, LLCAll claims unpatentable
  PTAB · Apr 6, 2015 · CBM2014-00004 · APJ Jennifer S Bisk · CBM · Final written decision

  Claims 21 and 22 are unpatentable under § 101 because they claim an abstract idea implemented using generic, conventional technology.

  RulingsFinal written decision

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

    “term “SRC.” The ’151 patent does, however, give some context from which to discern the meaning of the term. For example, the ’151 patent states that “[t]he term ‘SRC technology,’ as used herein, may include any short-range radio communications technology now existing or yet to be developed, including, for example, radio frequency identification (‘RFID’), IEEE 802.15 (‘Bluetooth’), and IEEE 802.11 (‘WiFi’), among others.” Id. at 2:60–65; see also id. at 2:9–18 (describing “SRC device[s]” and “SRC-enabled mobile terminals” as including RFID, Bluetooth, and WiFi related devices). Moreover, the ’151 patent describes several embodiments of the invention. The first embodiment involves an RFID system. Id. at 3:7–8. The second embodiment is described as a “hybrid system” using “Bluetooth, WiFi, WiMAX, or any other wireless protocol” to connect with an RFID reader. Id. at 4:19–34. Based on this disclosure, it is clear that “SRC,” as used in the ’151 patent, encompasses communications at a range used by the technologies named in the specification—RFID, Bluetooth, and WiFi—and other short-range radio communication technologies. The question is whether the” slip op. at 7

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “extrinsic evidence, including testimony from Dr. Georgios B. Giannakis. Ex. 2001 ¶¶ 21–25. Dr. Giannakis testifies that SRC has a well-understood meaning in the art of “a nominal range of 100 meters or less, such as used by practical systems performing typical applications of RFID, Bluetooth, and Wi-Fi communications.” Id. ¶ 22. Moreover, Dr. Giannakis testifies that all three examples of SRC technologies listed by the ’151 patent have “a practical upper range in a typical deployment that is nominally 100 meters or less.” Id. ¶ 24. An expert’s opinion, however, is only as good as the facts upon which it is based. Dr. Giannakis points to no factual support for his specific numeric conclusions on this issue. See id. ¶¶ 22–24. We, therefore, give very little weight to Dr. Giannakis’s testimony concluding that the term SRC, as used in the ’151 patent, includes a specific upper bound of 100 meters. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations . . . may render the testimony of little probative value in a validity determination.”).” slip op. at 8

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “Although a term may be relative, it is not necessarily indefinite. Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (“That some claim language may not be precise, however, does not automatically render a claim invalid.”). We are persuaded a person of ordinary skill in the art would understand that short-range communication covers a communication range “shorter” than the range covered by mobile networks. See Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1372 (Fed. Cir. 2013) (affirming the district court’s finding not indefinite the term “short-range communication protocol,” which was construed to mean “a set of procedures required to initiate and maintain short-range communication between two or more devices” where short-range communications similarly included Bluetooth and WiFi technologies, but did not include a numeric upper bound on range), cert. granted in-part on other grounds, 135 S.Ct. 752 (U.S. Dec. 5, 2014) (No. 13-896). The ’151 patent expressly describes mobile networks as including “cellular networks such as Global System for Mobile Communications (‘GSM’), Time Division Multiple Access (‘TDMA’), Code Division Multiple Access (‘CDMA’), and Personal Communications Service (‘PCS’) networks.” Ex. 1001, 2:53–58; see PO Resp. 19. It also describes interoperability between the various systems, contrasting them by size. For example, in describing the problems encountered when locating mobile terminals, the Specification describes “cell sizes [that] have grown to cover up to 20 km in diameter or even wider.” Ex. 1001, 1:67–2:4. A solution to this problem is employing “at least one SRC device.” Id. at 2:9–11. The ’151 patent also describes employing the “at least one SRC device . . . within a mobile network.” Id. at 2:11–17 (emphasis added). Thus, the specification makes reasonably clear to the person of ordinary skill the range of SRC in comparison to the range of mobile networks—and in turn the scope of SRC as used in claims 21 and 22. See Young v. Lumenis, Inc., 492 F.3d 1336, 1346 (Fed. Cir. 2007) (holding the term “near” not indefinite where the specification makes reasonably clear that the term means “very close to or at the edge of”).” slip op. at 12

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

    “We agree with Petitioner that the claimed invention is directed to an abstract idea, specifically, the abstract idea of receiving information and providing services or advertisements based on that information. The preambles and all claim limitations of both claims support this abstract idea, and the ’151 patent repeatedly discloses that the invention is directed to providing services or advertisements. See, e.g., Ex. 1001, 1:7–15, 25–27. Patent Owner has not identified any portion of the ’151 patent inconsistent with this abstract idea, and we are persuaded that the identified abstract idea is a fundamental building block of economics, similar in nature to the abstract idea of hedging claimed in Bilski and intermediated settlement claimed in Alice. Patent Owner does not direct us to any authority for its assertion that an idea is not abstract if it includes specific recitation regarding the type of information transmitted, how that information is acquired, and whether it is used for authentication. Here, the claims are generally directed to a method of (i) receiving information over a network, (ii) authenticating that information, and (iii) providing a service to a mobile terminal or receiving an advertisement over the network, all of which inform the aforementioned abstract idea. See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Assoc., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (characterizing the claimed abstract idea as “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory” despite claim’s recitation of specific limitations, like scanner). This combination of steps recites an abstraction because it has “no particular concrete or tangible form” and is “devoid of a concrete or tangible application.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). The details emphasized by Patent Owner do not remove the claimed methods from the realm of the abstract. These details are characteristic of the invention’s implementation, rather than its general idea. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354–55 (Fed. Cir. 2014) (describing the claim’s abstract idea without including the claim’s “computer network” limitation); see also Ultramercial 772 F.3d at 715 (stating that more detailed limitations may “add a degree of particularity,” but do not convert the concept embodied by the majority of the limitations into something concrete).” slip op. at 16

  Patent outcomesUS 7,463,151 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Nautilus
  Patents in suitUS 7,463,151
• Google Inc. v. Unwired Planet, LLCAll claims unpatentable
  PTAB · Apr 6, 2015 · CBM2014-00006 · APJ Jennifer S Bisk · CBM · Final written decision

  Claims 25–29 are unpatentable under § 101; claim 25 is also unpatentable as obvious over Havinis ’931 and Leonhardt, and Landgren and Leonhardt.

  RulingsFinal written decision

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

    “reasoning with rational underpinning to combine Havinis ’931 and Leonhardt. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). For instance, Petitioner states: [a] person of ordinary skill would have found it obvious to modify the system of Havinis ’931 to include Leonhardt’s location access policies, in order to further Havinis ’931’s goals of managing positioning requests sent by Location Applications such that location services can be tailored individually to meet the needs of the mobile device user. Pet. 59 (citing Ex. 1004, 3:33–40). Relying on Dr. Cox, Petitioner adds that this modification “would have been nothing more than the application of a known method of privacy management to achieve a predictable result.” Ex. 1002 ¶ 76. As explained in our Decision to Institute, we are persuaded the rationale set forth by Petitioner and Dr. Cox is reasonable. See Dec. 24–25. Subsequent to our preliminary finding, Patent Owner has provided no evidence or argument to the contrary. Thus, after once again evaluating Petitioner’s arguments and supporting evidence, we conclude that Petitioner has shown by a preponderance of the evidence that it would have been obvious to combine the relied upon teachings of Havinis ’931 and Leonhardt. We conclude that Petitioner has shown by a preponderance of the evidence that claim 25 of the ’752 Patent would have been obvious over Havinis ’931 and Leonhardt.” slip op. at 13

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “We are not persuaded that Petitioner has shown by a preponderance of the evidence that the ’752 patent fails to provide sufficient written description support for the notifying limitation. Petitioner’s only evidence that the notifying limitation is not sufficiently supported is its argument that the ’752 patent fails to explicitly describe notifying the wireless device that access to the location information was denied. Pet. 44–45. Petitioner proffers testimony from Dr. Cox parroting, almost word for word, the argument in Petitioner’s brief. Ex. 1002 ¶¶ 24–36. This argument and testimony, however, does not speak to the correct standard—whether the ’752 specification “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Moreover, “the disclosure as originally filed does not . . . have to provide in haec verba support for the claimed subject matter at issue,” nor must it describe “every conceivable and possible future embodiment of [the] invention.” Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003) (internal quotation marks omitted). We agree with Patent Owner, that the ’752 patent broadly describes notifying the wireless device at any time during the described process. See, e.g., Ex. 1001, 9:26–29 (“the system described herein is for a subscriber to receive a notification on their wireless communications device whenever a location request is made by any client application”). Moreover, as pointed out by Petitioner, the ’752 patent describes sending “denied access” messages to client applications. See Pet. 44 (citing Ex. 1001, 11:40–42). Based on these disclosures, we are persuaded that the ’752 patent provides broad support for providing notifications of various messages to different elements of the system at multiple points in the described process. Petitioner has not pointed to anything in the ’752 patent specification that clearly limits what messages can be sent to the various elements or when they can be sent. In fact, as Patent Owner points out, the Provisional Application explicitly contemplates “initiat[ing] a dialogue with the subscriber regarding permission for a location request.” Ex. 1020, 22. Although Petitioner complains that this disclosure does not describe how a dialogue would occur or how messages are relayed (Reply 5), we are not persuaded that a person of ordinary skill in the art would disbelieve, based on the entirety of the ’752 patent disclosure, that the inventor had possession of sending an access denied message to the wireless device at the appropriate time during the process. Thus, we are persuaded that the ’752 patent “provides ample support for the breadth” of the notifying limitation and does not “unambiguously limit” its meaning to a narrower embodiment (e.g., notifying the wireless device only when a request has been made). Cordis, 339 F.3d at 1365. Petitioner has not shown by a preponderance of the evidence that the ’752 patent fails to support the notifying limitation.” slip op. at 20

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

    “We agree with Petitioner that the claimed invention is directed to an abstract idea, specifically, the abstract idea of controlling access to location information using a subscriber profile. The preambles and all claim limitations of both claims support this abstract idea, and the ’752 patent repeatedly discloses that the invention is directed to controlling access to location information. See, e.g., Ex. 1001, 1:14–19, 1:60–2:7. Patent Owner has not identified any portion of the ’752 patent inconsistent with this abstract idea, and we are persuaded that the identified abstract idea is similar to the kind of “organizing human activity” at issue in Bilski and Alice. See, e.g., Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005, 1008 (Fed. Cir. 2014) (comparing “methods and systems for managing a game of Bingo” to the kind of “organizing human activity” at issue in Bilski and Alice).” slip op. at 24

  Patent outcomesUS 7,203,752 unpatentable
  § 101 eligibility§ 103 obviousness§ 112 disclosurecites Alice · KSR
  Patents in suitUS 7,203,752

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.