- Platform Science, Inc. v. XRS CorporationRehearing deniedPTAB · Dec 14, 2021 · IPR2021-00325 · APJ Neil T Powell · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because the Petition did not show a reasonable likelihood that claims 1–24 were unpatentable as obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner has not offered persuasive evidence of any suggestion in the prior art that Nehowig’s onboard computer may be used with multiple different engine control modules that communicate data in different languages. Nor has Petitioner offered persuasive evidence of any suggestion in Nehowig that its engine control module uses more than one language. Contrarily, Nehowig suggests that the onboard computer and engine control module are vehicle specific without an indication that either needs to be adaptable for use in multiple different vehicles. . . . Additionally, regardless of whether Nehowig’s ECM uses one or multiple communication protocols, Petitioner does not provide persuasive evidence that it would have been obvious to modify Nehowig’s OBC 204 to meet limitation 1A.1. Fedorchuk discloses a device configured for connecting to and communicating with a diagnostic communication port of any of a variety of vehicles using any of a number of different possible protocols, enabled by interface device 10’s ability to detect the different possible protocols. . . . Petitioner does not provide persuasive evidence that Nehowig’s OBC 204 would be connected to any ECM without OBC 204 and the ECM already configured to communicate specifically with one another using one more predesignated protocols. . . . Petitioner does not provide persuasive evidence that Nehowig’s OBC 204 would not already have dedicated provisions for communicating with the ECM in the specific protocol(s) the ECM uses. Nehowig clearly discloses that OBC 204 already can communicate with Nehowig’s ECM, apparently using whatever protocol(s) the ECM uses. [Ex. 1005] ¶ 23. Accordingly, Petitioner has not shown sufficiently a reason that a person of ordinary skill in the art would have modified Nehowig’s OBC 204 to allow it to communicate with the ECM.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“misapprehended that the Petition identified a particular proposed combination. We acknowledged Petitioner’s proposed combination. See Dec. 25–26 (“Petitioner then describes a scenario, argued ‘[t]o achieve this goal [of not having the official enter the vehicle],’ where the official ‘will provide a cable to the driver to plug into the EOBR’ . . . . Based on this, Petitioner concludes ‘[t]herefore, the combined system of Nehowig and Fedorchuk implementing the DOT regulations discloses transferring the hours of service information from the OBC to a safety assurance officer’s computer via a data cable.’”). And, even had we overlooked or misapprehended it, the outcome would not change. Again, the basis for the Decision is that Petitioner failed to explain adequately and persuasively why a person of ordinary skill in the art would arrange the data flow in this manner. Dec. 27. In view of the foregoing, we are not persuaded of any error in our Decision that the Petition did not demonstrate a reasonable likelihood of establishing obviousness of limitation 1B.1. See Dec. 27–28. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated that we abused our discretion in not instituting an inter partes review of the challenged claims of the ’575 patent.” slip op. at 19
§ 103 obviousnessPatents in suitUS 10,255,575 - Intel Corporation v. Health Discovery CorporationInstitution deniedPTAB · Oct 1, 2021 · IPR2021-00555 · APJ Per Curiam · IPR · Institution
The Board denied institution because Intel did not show a reasonable likelihood that claims 1–23 would have been obvious over Mukherjee, Bradley, and Cortes.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“feature values because Mukherjee instead “only computes pattern weights, expressed as 𝛼𝛼s.” Prelim Resp. 27. We agree with Patent Owner that Petitioner has not adequately bridged the gap between the claimed feature values and Mukherjee’s pattern weights5. Although Petitioner’s expert contends that feature weight and pattern weight “are equivalent,” he implicitly concedes they are not in his additional assertion that they are “related and can be derived from one another.” See Ex. 1003, 91 n.12. We are also not persuaded by Petitioner’s argument that “a relationship exists between feature weight vectors, 𝒘𝒘, and pattern weight vectors, 𝜶𝜶, such that one can be mathematically derived and calculated from the other.” Pet. 35. Even if correct, Petitioner’s argument falls short because Petitioner offers no explanation as to why a skilled artisan would have done so. As Patent Owner notes, “a conclusion of obviousness is not dependent upon what a person of ordinary skill in the art could do, but rather what the hypothetical individual would do, and there was no motivation for Mukherjee or any person of ordinary skill in the art to [determine feature weight values].”” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the alleged invention of the ’685 patent (a “POSITA”) would have had “at least a Master’s degree in electrical engineering, computer science, or the equivalent with three years of experience in machine learning and data-analysis techniques.” Pet. 20 (citing Ex. 1003 ¶ 15). Further, “[a]dditional education could substitute for professional experience, and vice versa.” Id. Patent Owner does not contest that a skilled artisan would have this kind of background knowledge and experience; nor does Patent Owner suggest that Petitioner’s proposed level of skill leads to an improper understanding of the” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION We find no claim terms require express construction for us to determine whether or not to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“feature values because Mukherjee instead “only computes pattern weights, expressed as 𝛼𝛼s.” Prelim Resp. 27. We agree with Patent Owner that Petitioner has not adequately bridged the gap between the claimed feature values and Mukherjee’s pattern weights5. Although Petitioner’s expert contends that feature weight and pattern weight “are equivalent,” he implicitly concedes they are not in his additional assertion that they are “related and can be derived from one another.” See Ex. 1003, 91 n.12. We are also not persuaded by Petitioner’s argument that “a relationship exists between feature weight vectors, 𝒘𝒘, and pattern weight vectors, 𝜶𝜶, such that one can be mathematically derived and calculated from the other.” Pet. 35. Even if correct, Petitioner’s argument falls short because Petitioner offers no explanation as to why a skilled artisan would have done so. As Patent Owner notes, “a conclusion of obviousness is not dependent upon what a person of ordinary skill in the art could do, but rather what the hypothetical individual would do, and there was no motivation for Mukherjee or any person of ordinary skill in the art to [determine feature weight values].”” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 10,402,685 - Intel Corporation v. Health Discovery CorporationInstitution deniedPTAB · Sep 14, 2021 · IPR2021-00551 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Intel did not show a reasonable likelihood that claims 1, 5, 6, 10, 12, or 16 were obvious over either asserted reference combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. For the reasons discussed below, we deny the Petition and do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the alleged invention of the ’959 patent (a “POSITA”) would have had “at least a Master’s degree in electrical engineering, computer science, or the equivalent with three years of experience in machine learning and data-analysis techniques.” Pet. 22 (citing Ex. 1003 ¶ 15). Further, “[a]dditional 1 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C. § 103. See Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). As the application that issued as the ’959 patent was filed before the effective date of the relevant amendments, the pre-AIA version of § 103 applies. 2 Mukherjee et al., “Support Vector Machine Classification of Microarray Data,” Technical Report C.B.C.L. Paper No. 182, A.I. Memo No. 1677, M.I.T. (1998) (Ex. 1005, “Mukherjee”). 3 US 6,327,581, Dec. 4, 2001 (Ex. 1006, “Platt”). 4 Kohavi et al., “Wrappers for Feature Subset Selection,” Artificial Intelligence 97, 273-324 (1997) (Ex. 1007, “Kohavi”). education could substitute for professional experience, and vice versa.” Id. Patent Owner does not contest that a skilled artisan would have this kind of background knowledge and experience; nor does Patent Owner suggest that Petitioner’s proposed level of skill leads to an improper understanding of the prior art or an improper patentability analysis. See generally Prelim. Resp. At this stage in the proceeding, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is supported by Dr. Evgeniou’s testimony and appears commensurate with the level of ordinary skill as reflected in the asserted prior art and the ’959 patent.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION We find no claim terms require express construction for us to determine whether or not to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Patent Owner contends that Mukherjee does not teach the claimed feature weights because Mukherjee instead “only computes pattern weights, expressed as 𝛼𝛼s.” Prelim Resp. 23. We agree with Patent Owner that Petitioner has not adequately bridged the gap between the claimed feature weight and Mukherjee’s pattern weight. Although Petitioner’s expert contends that feature weight and pattern weight “are equivalent,” he implicitly concedes they are not in his additional assertion that they are “related and can be derived from one another.” See Ex. 1003, 53 n.13. We are also not persuaded by Petitioner’s argument that “a relationship exists between feature weight vectors, 𝒘𝒘, and pattern weight vectors, 𝜶𝜶, such that one can be mathematically derived and calculated from the other.” Pet. 39. Even if correct, Petitioner’s argument falls short because Petitioner offers no explanation as to why a skilled artisan would have done so. As Patent Owner notes, “a conclusion of obviousness is not dependent upon what a person of ordinary skill in the art could do, but rather what the hypothetical individual would do, and there was no motivation for Mukherjee or any person of ordinary skill in the art to [compute feature weights].” Prelim. Resp. 24. In short, we find that Petitioner has not produced the required “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Therefore, Petitioner has not shown a reasonable likelihood that it would prevail in establishing independent claims 1, 12, or 16 (or claims 5, 6, and 10 that depend from those claims) would have been obvious over the asserted combinations involving Mukherjee and Platt. 2. Petitioner’s Additional Obviousness Grounds Involving Kohavi” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,542,959 - Intel Corp. v. Health Discovery Corp.Institution deniedPTAB · Sep 14, 2021 · IPR2021-00553 · APJ Per Curiam · IPR · Institution
The Board denied institution because Intel did not show a reasonable likelihood that claims 1, 5–7, 13, 18, 22, and 32 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“been obvious over Mukherjee and Platt. Pet. 20–68. As explained below, we find Petitioner has not shown a reasonable likelihood that it would prevail in its obviousness challenge based on Mukherjee and Platt.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons set forth below, we deny institution of inter partes review under 35 U.S.C. § 325(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“feature weights because Mukherjee instead “only computes pattern weights, expressed as 𝛼𝛼s.” Prelim Resp. 25. We agree with Patent Owner that Petitioner has not adequately bridged the gap between the claimed feature weight and Mukherjee’s pattern weight. Although Petitioner’s expert contends that feature weight and pattern weight “are [] equivalent,” he implicitly concedes they are not in his additional assertion that they are “related and can be derived from one another.” See Ex. 1003 ¶ 92 n.14. We are also not persuaded by Petitioner’s argument that “a relationship exists between feature weight vectors, 𝒘𝒘, and pattern weight vectors, 𝜶𝜶, such that one can be mathematically derived and calculated from the other.” Pet. 30. Even if correct, Petitioner’s argument falls short because Petitioner offers no explanation as to why a skilled artisan would have done so. As Patent Owner notes, “a conclusion of obviousness is not dependent upon what a person of ordinary skill in the art could do, but rather what the hypothetical individual would do, and there was no motivation for Mukherjee or any person of ordinary skill in the art to [compute feature weights].” Prelim. Resp. 26. In short, we find that Petitioner has not produced the required “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Therefore, Petitioner has not shown a reasonable likelihood that it would prevail in establishing independent claims 1, 7, 13, 18, 22, or 32 (or claims 5 and 6 which depend from claim 1) would have” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Skill in the Art Petitioner contends a person of ordinary skill in the art at the time of the alleged invention of the ’483 patent (a “POSITA”) would have had “at least a Master’s degree in electrical engineering, computer science, or the equivalent with three years of experience in machine learning and data-analysis techniques.” Pet. 19 (citing Ex. 1003 ¶ 15). Further, Petitioner asserts that “[a]dditional education could substitute for professional experience, and vice versa.” Id. Patent Owner does not contest that a skilled artisan would have this kind of background knowledge and experience; nor does Patent Owner suggest that Petitioner’s proposed level of skill leads to an improper understanding of the prior art or an improper patentability analysis. See generally Prelim. Resp. At this stage in the proceeding, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is supported by Dr. Evgeniou’s testimony and appears commensurate with the level of ordinary skill as reflected in the asserted prior art and the ’483 patent.” slip op. at 8
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,095,483 - Intel Corporation v. Health Discovery CorporationInstitution deniedPTAB · Sep 7, 2021 · IPR2021-00549 · APJ Garth D Baer · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–23 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. For the reasons discussed below, we deny the Petition and do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the alleged invention of the ’188 patent (a “POSITA”) would have had “at least a Master’s degree in electrical engineering, computer science, or the equivalent with three years of experience in machine learning and data- 1 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C. § 103. See Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). As the application that issued as the ’188 patent was filed before the effective date of the relevant amendments, the pre-AIA version of § 103 applies. 2 Mukherjee et al., “Support Vector Machine Classification of Microarray Data,” Technical Report C.B.C.L. Paper No. 182, A.I. Memo No. 1677, M.I.T. (1998) (Ex. 1005, “Mukherjee”). 3 US 6,327,581, Dec. 4, 2001 (Ex. 1006, “Platt”). 4 Kohavi et al., “Wrappers for Feature Subset Selection,” Artificial Intelligence 97, 273-324 (1997) (Ex. 1007, “Kohavi”). 5 Cortes, C., et al, “Support-Vector Networks,” Machine Learning, 20, 273– 297 (1995) (Ex. 1011, “Cortes”). 6 US 6,122,628, Sept. 19, 2000 (Ex. 1012, “Castelli”). analysis techniques.” Pet. 21 (citing Ex. 1003 ¶ 15). Further, “[a]dditional education could substitute for professional experience, and vice versa.” Id. Patent Owner does not contest that a skilled artisan would have this kind of background knowledge and experience; nor does Patent Owner suggest that Petitioner’s proposed level of skill leads to an improper understanding of the prior art or an improper patentability analysis. See generally Prelim. Resp. At this stage in the proceeding, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is supported by Dr. Evgeniou’s testimony and appears commensurate with the level of ordinary skill as reflected in the asserted prior art and the ’188 patent.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION We find no claim terms require express construction for us to determine whether or not to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Independent claims 1, 13, and 19 recite the iterative calculation and use of feature weights. Claim 1, for example, recites “(a) . . . wherein each feature has a corresponding weight . . . c) computing ranking criteria using the optimized plurality of weights; (d) eliminating at least one feature corresponding to the smallest ranking criterion; [and] (e) repeating steps (a) through (d) for a plurality of iterations.” Claims 13 and 19, the other challenged independent claims, have parallel language requiring the iterative calculation and use of feature weights. According to Petitioner, Mukherjee teaches feature weight calculation because “Mukherjee’s decision function includes variables 𝑥 (i.e., training patterns) [and] α (weight value for each pattern).” Pet. 33. (quoting Ex. 1003 ¶ 138). Further, “[i]n comparison to the decision function in primal form, D(𝑥) = 𝒘 ∙ 𝒙 + 𝑏, Mukherjee’s decision function . . . . is presented in ‘dual’ space, where the ‘primal’ space weight vector 𝒘 is replaced by the summation of individual patterns (observations/samples) 𝑥k with corresponding pattern weight values 𝛼k.” Id. at 33. Thus, according to Petitioner, “Mukherjee’s linear SVM therefore either (a) discloses ‘a decision function having a plurality of weights, each” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 7,117,188 - Platform Science, Inc. v. Omnitracs, LLCRehearing grantedPTAB · Sep 3, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board granted rehearing and instituted IPR on all petition grounds for claims 1–4, 6–9, 11, 12, and 15, finding a reasonable likelihood of prevailing.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to claim 1.” slip op. at 44
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6.6 Petitioner 6 As noted above, Petitioner raises a second claim construction issue in its Rehearing Request. See Req. Reh’g 12–15 (asserting that the claims require only one instance of copying information from a formatted message to a response message based on which formatted message was received). Petitioner did not raise this issue in the Petition, Patent Owner has not had an contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“VI. ANALYSIS Legal Standards – Anticipation “[A] claim is anticipated ‘if each and every limitation is found expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference” (alteration in original) (quotation omitted)).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,925,308 - Platform Science, Inc. v. XRS CorporationRehearing deniedPTAB · Aug 26, 2021 · IPR2021-00323 · APJ Ken B Barrett · IPR · Rehearing
The Board denied rehearing of its decision denying institution on claims 1–24, finding no abuse of discretion in its conclusion that the Petition inadequately explained the proposed data flow.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Dec. 13. We determined that “Petitioner does not explain adequately and persuasively why, in such circumstances—where the portable unit could directly transmit the report to the inspector—a person of ordinary skill in the art would see a reason to configure the system in a seemingly awkward way where the report is sent to the onboard system and then sent to the inspector.” Id. at 14.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,626,568 - Keep Truckin, Inc. v. Innovative Global Systems, LLCAll claims unpatentablePTAB · Aug 16, 2021 · IPR2020-00692 · APJ Justin T Arbes · IPR · Final written decision
Claims 1–13 are unpatentable: claims 1, 2, 4–7, 12, and 13 as obvious over Houser and Transportation Regulations; claims 3 and 8–11 as obvious over those references and Murphy.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Decision on Institution, based on the parties’ arguments and record at the time, we adopted Petitioner’s proposed definition and preliminarily found that a person of ordinary skill in the art at the time of the ’277 patent (August 2005) would have had “a bachelor’s degree in electrical engineering, or equivalent, at least two years of experience related to designing and/or developing on-board recording devices for commercial vehicles, and familiarity with the rules and regulations governing logging and reporting of data for drivers of motor carriers.” Dec. on Inst. 9; see Pet. 8–10; Ex. 1002 ¶ 16; Paper 6, 3. The parties agree with that assessment. See PO Resp. 4; Reply 3. Based on the full record developed during trial, art solutions described in the ’277 patent, we adopt the preliminary definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Interpretation We interpret the challenged claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2019). Neither party proposes any interpretations for terms in the challenged claims. See Pet. 9; PO Resp. 4. We have reviewed the parties’ papers and conclude that no terms require express interpretation. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citations omitted)).” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“We find that Patent Owner’s criticisms of Mr. Andrews’s qualifications in this proceeding are unwarranted. As Petitioner has argued, and Patent Owner has not disputed, Mr. Andrews’s advanced degree in recording devices for commercial vehicles demonstrate that he has technical expertise that is particularly relevant to the subject matter of the ’277 patent. See Ex. 1002 ¶¶ 5–11; Ex. 1004, 1–6. For the last 25 years, he has “focused exclusively on the development and management of technologies in support of Intelligent Transportation Systems.” Ex. 1002 ¶ 6. Mr. Andrews has “worked in the field of vehicle status logging since the early 1990’s,” including “systems for logging the location and operational status of vehicles, and providing automated roadside assistance and emergency response based on relaying GPS position and vehicle status to a service center using wireless communications.” Id. ¶ 7; see Ex. 2005, 30:7–19 (Mr. Andrews testifying that he has “done a lot of projects where the objective was to log data from the vehicle”), 58:7–20 (Mr. Andrews testifying that he “developed a lot of systems that are able to calculate and to collect and log the kind of data associated with hours of service”). He has experience “work[ing] on various systems associated with trucking applications,” including systems for “driver hour logging and associated parking reservation systems, and various types of navigation, communications, and dispatching systems,” and has “a strong working knowledge of the various technologies that comprise location-based vehicle status logging and tracking.” Ex. 1002 ¶ 8. With respect to compliance with regulations in particular, Mr. Andrews testified that he worked on a project “to make sure . . . truckers had a known place where they would have room to park so that they could comply with hours-of-service regulations,” and is generally familiar with duty statuses and the concept of hours of service. Ex. 2005, 29:16–30:5, 48:10–21. As such, Mr. Andrews has the level of education and experience of a person of ordinary skill in the art, as defined experience, such that his testimony is relevant to and entitled to consideration in our analysis. See supra Section II.B. Although Patent Owner appears to be correct that Mr. Andrews’s experience does not include working on any specific projects in which logging and recording data was specifically for the purpose of ensuring compliance with an hours of service regulation, we do not find that this absence of first-hand knowledge impacts the weight we should give his testimony. See Ex. 2005, 48:10–49:9 (Mr. Andrews testifying that although he could not recall reading 49 C.F.R. §§ 395.8 or 395.15 in particular prior to being engaged for this proceeding, he is “familiar with the requirements for automatic on-board recording devices”). Mr. Andrews has considerable technical experience related to the “[t]echnical [f]ield” of the ’277 patent, namely logging and reporting driver activity and operation data of a vehicle, which is a focus of the ’277 patent. See Ex. 1001, codes (54), (57), col. 1, ll. 4–7; Ex. 1002 ¶¶ 5–11; Ex. 1004, 1–6; Reply 3–6 (describing Mr. Andrews’s experience as recounted during his deposition). To the extent Patent Owner contends that Mr. Andrews needed to do more to “acquaint himself with the prior art,” Mr. Andrews testified in detail regarding the state of the art, the evolution of logging devices in the art, “federal regulations requiring logging of driver activity and vehicle operational data,” and the Transportation Regulations in particular. See PO Resp. 11–13; Sur-Reply 7–8; Ex. 1002 ¶¶ 28–58, 118–128, 142–151. And regardless, his testimony pertains to what a person of ordinary skill in the art would have been motivated to do, and “[t]he person of ordinary skill is a hypothetical person who is presumed to be aware of all the pertinent prior art.” Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We disagree. As an initial matter, Petitioner’s asserted ground is not premised on periodic input of biometric information while the vehicle is being driven, but rather simply modifying Houser’s system to disable the vehicle if the driver is not logged into the EVL. See Pet. 70–71 (arguing that Murphy teaches biometric verification “to provide access to a vehicle” and disabling the vehicle so that the vehicle cannot be operated); Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (obviousness does not require incorporating all teachings of one reference into another); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1076 (Fed. Cir. 2015) (“A reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect.” (quotation marks and citation omitted)). Further, Murphy does not require periodic biometric verification once a vehicle is in motion in all embodiments. To the contrary, the reference indicates that doing so is merely an option for some embodiments. Murphy states that “[i]n one embodiment, each person who is seated behind the driver’s wheel must present a sample of a biometric indicium” when beginning to operate the vehicle, and “[i]n some embodiments, the vehicle operator is required to present another sample of the biometric indicium at unpredictable times while the vehicle is operated.” Ex. 1007, col. 2, ll. 24–32 (emphasis added); see also id. at col. 8, ll. 15–17 (“In step 45, the system optionally determines whether a new ident indicium or sample is now required. This requirement will recur at unpredictable times.” (emphasis added)), col. 9, ll. 30–32 (same for step 85). Murphy further a selected vehicle, requesting the operator to provide a selected ident indicium, within a selected indicium time interval, for interrogation.” Id. at col. 21, ll. 52–55 (emphasis added). The “at least one” time plainly can be when the driver enters the vehicle and attempts to start it (i.e., before the vehicle starts moving). This is consistent with the language of claim 11, which imposes no requirement on when the disabling take place. The disabling can take place when the driver first attempts to log into the device and start driving; it need not occur while the vehicle is in motion. See Tr. 31:18–32:26 (Patent Owner acknowledging that the disabling in claim 11 can take place at any time).” slip op. at 38
Patent outcomesUS 8,032,277 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,032,277 - Facebook, Inc. v. Thaddeus GabaraInstitution deniedPTAB · May 25, 2021 · IPR2021-00201 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable; the cited combinations did not teach or suggest a stationary map.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’698 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“through 14, Petitioner has not shown sufficiently7 that the map shown Figure 13b is stationary, as recited in claim 1. Petitioner does not rely upon Roussos as teaching the “stationary map” recited in claim 1 or assert that one of ordinary skill in the art would have modified Kim in light of Roussos to satisfy this claim limitation. See, e.g., Pet. 27–30 (relying upon Kim); see also id. at 26 (discussing the proposed combination as including Roussos’s coordinate system). Accordingly, Petitioner has not shown sufficiently that the combination of Kim and Roussos teaches or suggests a stationary map as recited in claim 1.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). At this stage of the proceeding, the parties agree that the claim terms should be given their plain and ordinary meaning. Pet. 13; Prelim. Resp. 28. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,836,698 - Facebook, Inc. v. Thaddeus GabaraInstitution deniedPTAB · May 25, 2021 · IPR2021-00200 · APJ Frederick C Laney · IPR · Institution
Institution was denied on all challenged claims because the petition did not show that Kim, alone or in combination, disclosed or suggested the required stationary map.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the following reasons, we find Patent Owner’s assertions have merit because Petitioner has not carried its burden of showing Kim discloses or suggests a background image of a stationary map, which is a necessary limitation in each of the challenged independent claims. Because this deficiency is dispositive and leads us to the conclusion that the Petition fails to demonstrate a reasonable likelihood Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’545 patent, our discussion below focuses on Petitioner’s contentions regarding Kim’s disclosure of a stationary map.” slip op. at 12
- Other 314aNot reached
“V. 35 U.S.C. § 314(a) Patent Owner contends that we should exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a). Prelim. Resp. 3–12. Petitioner opposes Patent Owner’s argument. See Paper 12 (Decision Denying Petitioner’s Request to File Preliminary Replies to Patent Owner’s Preliminary Responses), 3 (noting that Petitioner requested authorization to file a preliminary reply to respond to Patent Owner’s argument regarding discretionary denial under § 314(a)). Because we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that at least one claim of the ’545 patent is unpatentable, we need not reach the issue of discretionary denial pursuant to § 314(a).” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’545 patent and the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNot reached
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). At this stage of the proceeding, the parties agree that the claim terms should be given their plain and ordinary meaning. Pet. 15; Prelim. Resp. 28. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,620,545
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.