- Tesla, Inc. v. Arsus, LLCInstitutedPTAB · Dec 23, 2022 · IPR2022-01216 · APJ Hyun J Jung · IPR · Institution
The Board instituted review of claims 1–21 on all presented grounds, finding a reasonable likelihood of unpatentability based on the Dechamp combinations and Inagaki.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“[a] two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential); see also Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (listing factors (a)–(f) to consider in evaluating the applicability of § 325(d)).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–21 of the ’877 patent on all presented challenges. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that one of ordinary skill in the art “would have had at least a Bachelor’s of Science in mechanical engineering, electrical engineering, or a related technical field pertinent to automotive control or safety systems, along with two or more years of experience working with automotive control or safety systems.” Pet. 14 (citing Ex. 1003 ¶ 21). Patent Owner does not propose a level of ordinary skill and does not dispute Petitioner’s proposal. See generally Prelim. Resp. Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill only to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“At this stage, Petitioner sufficiently shows that claims 1, 8, and 15 do not recite sufficient structure for performing the recited function. See Pet. 14–15 (citing Ex. 1003 ¶ 51), 20 (citing Ex. 1003 ¶¶ 52–53). Based on the preliminary record, we agree with Petitioner that (1) claims 1, 8, and 15 include functional recitations, (2) the phrase “mode that allows” recited by claims 1 and 8 is equivalent to using the means-plus-function language “means for,” and (3) the “apparatus” recited by claim 15 does not provide sufficient structure to avoid interpreting under § 112(f). See id. at 14–15, 20. Without further argument or supporting evidence from the record, the mere recitations of “vehicle,” “steering wheel,” and “rolling wheel” do not show how these recited components, without others, can perform the recited functions of independent claims 1, 8, and 15. See Prelim. Resp. 16–17, 19. would be required to “prevent[] said vehicle from being steered beyond a rollover threshold of said vehicle,” as recited by claim 1. See, e.g., Ex. 1001, Fig. 1. Patent Owner also does not address at this stage why “mode that allows” should not be considered equivalent to means-plus-function language. See Prelim. Resp. 18. At this early stage, Petitioner sufficiently rebuts the presumption that § 112(f) does not apply. See Pet. 14–21. We, therefore, preliminarily adopt Petitioner’s proposed means-plus- function interpretations for claims 1, 8, and 15. In particular, for claim 1, we agree that the recited function is allows a vehicle to be steered within a maximal non-rollover steering range of motion of said vehicle but prevents said vehicle from being steered beyond a rollover threshold of said vehicle at any rollover capable speed of said vehicle regardless of the source of an oversteer rotational load applied to a steering wheel of said vehicle. Pet. 15–16 (citing Ex. 1003 ¶ 51); Ex. 1001, 10:7–12. We also agree that the corresponding structure for the asserted function is the first embodiment of the ’877 patent (“Corresponding Structure #1”). Pet. 17–18 (citing Ex. 1001, 2:35–39, 2:48–52, 2:57–3:18, 5:15–21, 5:29–57, 5:63–65, 6:17– 7:38, 7:45–54, Figs. 1–4B). We further agree that the corresponding structure can also be the fourth embodiment of the ’877 patent (“Corresponding Structure #2”). Id. at 18–19 (citing Ex. 1001, 7:45–54, 8:12–17, 8:25–34, 8:58–10:4, Figs. 5–7A; Ex. 1003 ¶ 54).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,077,877 - PTAB · Dec 20, 2022 · IPR2022-01138 · APJ Richard H Marschall · IPR · Institution
The Board instituted review of claims 1–19 on all petitioned grounds after finding a reasonable likelihood that claims 1 and 7 would have been obvious based on Goss.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Upon consideration of the evidence and arguments in the record, we institute inter partes review of the ’397 patent on all challenges set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We agree with Patent Owner that both House and Goss were at least considered by the Examiner, even if the Examiner never discussed the references or relied on them in any manner. See Ex. 1001, code (56) (listing both House and Goss among the references cited, and identifying Goss as cited by the Examiner). Under these circumstances, we find the first part of the Advanced Bionics framework satisfied because the prior art before the Examiner and the prior art relied on in the Petition include the same prior art references.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“Petitioner provides very little argument or evidence in support of its motivation to combine argument in the Petition. See Pet. 46. We note that Petitioner does not explain why a “PHOSITA would understand that there is a rational underpinning to combine” Goss and House or cite to any declarant support for its argument. See id. Based on the limited argument, evidence, and explanation provided by Petitioner, on the current record, we question whether Petitioner establishes sufficiently that one of ordinary skill in the art would have had a reason to modify Goss with the teachings of House. Even if Petitioner fails to establish adequately a motivation to combine the references, that does not end our analysis. A “patent can be obvious in light of a single prior art reference if it would have been obvious to modify that reference to arrive at the patented invention.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016); see also Game & Tech Co. v. Activision Blizzard Inc., 926 F.3d 1370, 1381 (Fed. Cir. 2019). For the limitations in independent claims 1 and 7, Petitioner does rely on House, but only as an additional reason why the references disclose a limitation in question. See Pet. 46–61 (relying on Goss for every limitation in claims 1, 3–8, 10–16, and 18). Based on our review of the Petition, Petitioner sets forth an analysis based on Goss alone for at least claims 1 and 7, within the context of its second challenge based on Goss and House. See id. Although Petitioner may not need to rely on a combination of Goss and House for the limitations of independent claims 1 and 7, the additional reliance on House may buttress Petitioner’s arguments as to these and other claims. Consequently, the motivation to combine issue may impact whether Petitioner ultimately prevails as to this challenge. The parties may address the motivation to combine issue further during trial.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“adequately that Goss discloses the surface area limitation. We have also reviewed Petitioner’s arguments and evidence as to the remaining limitations of claims 1 and 7. Based on our review of the current record, Petitioner establishes sufficiently that Goss discloses or renders obvious all of the limitations of claims 1 and 7 for the reasons provided by Petitioner. See Pet. 46–51, 53–55. Accordingly, Petitioner establishes a reasonable likelihood that independent claims 1 and 7 would have been obvious based on Goss alone. We have also reviewed Petitioner’s arguments and evidence as to dependent claims 2–6 and 8–19. See Pet. 62–68. Patent Owner does not separately address the dependent claims. Prelim. Resp. 29–36. Because we institute inter partes review as to the independent claims 1 and 7, we also institute inter partes review as to dependent claims 2–6 and 8–19. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Because Petitioner relies on Goss for every limitation in dependent claims 3–6, 8, 10–16, and 18, the Petition sets forth a challenge based on Goss alone for these claims as well as claims 1 and 7. See Pet. 49–61. These challenges, as well as the challenge to claims 1–19 based on a combination of Goss and House set forth in the Petition, are part of the instituted grounds at issue during the trial. See id. at 46–61; SAS, 138 S.Ct. at 1359–60. We note that Petitioner relies exclusively on House for dependent claims 2, 9, 17, and 19, and any deficiency in Petitioner’s showing as to the motivation to combine Goss and House may impact whether Petitioner can establish the obviousness of those claims, apart from whether House discloses the limitations in question. See Pet. 51, 53, 55, 60–61 (relying on House as disclosing the limitations in dependent claims 2, 9, 17 and 19).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,026,397 - PTAB · Dec 15, 2022 · IPR2022-01174 · APJ James A Tartal · IPR · Institution
The Board instituted IPR on claims 1–27 of the ’141 patent, finding a reasonable likelihood that claims 1–16, 20, 21, and 25–27 would be obvious over Olin and ITRC.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner contends that a person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in environmental science or environmental, civil or chemical engineering and 4–5 years of experience working in the field of soil remediation, or an equivalent combination of education and/or experience in related fields.” Pet. 9 (citing Ex. 1065 ¶¶ 24–25).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“C. Claim Construction We apply the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). Under that standard, claim terms “are generally given their ordinary and customary meaning” as would have been understood by a person of ordinary skill in the art at the time of the invention. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips v. AWG Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc)). Extrinsic evidence is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“In support of the asserted combination, according to Petitioner, Olin and ITRC both teach “same physical separation techniques, in the same sequence, using the same well-known equipment for soil washing,” both “recognize variation in contamination sites and describe designing and operating soil washing systems based on site-specific parameters.” Pet. 14– 16 (citing, e.g., Ex. 1004, 3–6, 11–16, 23–56, 58, 62; Ex. 1005, 30, 47–48; ITRC contemplate using soil washing systems in combination with secondary treatment processes, it would have also been obvious to use additional secondary or tertiary remediation technologies because doing so would involve combining known processes and equipment to achieve predictable results,” and that there would have been “a reasonable likelihood of success because it was routine and well within a [person of ordinary skill in the art’s] skill level.” Id. at 17 (citing Ex. 1004, 13; Ex. 1005, 49; Ex. 1065 ¶ 219).” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,399,141 - PTAB · Dec 5, 2022 · IPR2022-01107 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–19, finding a reasonable likelihood that claims 1 and 7 are anticipated by Goss and instituting the remaining asserted grounds as well.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Patent Owner that Goss was at least considered by the Examiner, even if the Examiner never discussed the references or relied on it in any manner. See Ex. 1001, code (56) (listing Goss among the references cited). Under these circumstances, we find the first part of the Advanced Bionics satisfied because the prior art before the Examiner and the prior art relied on in the Petition include the same prior art reference.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Upon consideration of the evidence and arguments in the record, we institute inter partes review of the ’397 patent on all challenges set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. Petitioner proposes constructions for the terms “filler material,” “clump strength,” “clumping agent,” and “wetting agent.” Pet. 17. Patent Owner does not dispute Petitioner’s constructions for these terms, but argues that these constructions are unnecessary to resolve any controversy in this proceeding. Prelim. Resp. 12–13. Based on our review of the current record, we agree with Patent Owner that we need not formally construe any claim terms to determine whether to institute an inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art “would have a bachelor’s degree in chemistry or chemical engineering or an equivalent degree and sufficient work experience in animal litter process development. A bachelor’s degree is not explicitly necessary.” Pet. 4. Petitioner further contends that “[h]ands-on experience in the field of animal litter process development could substitute for possessing a degree if that individual’s experience is in contributing to and/or leading the process development effort rather than following a set of instructions given to them.” Id. at 4–5. Petitioner asserts that such a person “should have familiarity with the process of validating relevant test methods and qualifying analysts as well as familiarity with the composition and chemistry of various clays used in animal litter (including sodium bentonite)” and that such a person “would have gained this familiarity through education, training and/or experience.” Id. Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record, including the prior art. See Prelim. Resp. 12; GPAC Inc., 57 F.3d at 1579. We adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,026,397 - PTAB · Nov 29, 2022 · IPR2022-00864 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–5, 7–36, 40, and 41 on all asserted §103 grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; 5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–16 (PTAB Sept. 6, 2017) (precedential). The General Plastic factors are not dispositive, but part of a balanced assessment of the relevant circumstances in a proceeding, including the merits. Consolidated Trial Practice Guide 58 (Nov. 2019), https://www.uspto.gov/TrialPracticeGuide Consolidated (“TPG”).” slip op. at 10
- Strike new argumentNew argument consideredOther
“Arguments and information that are not presented and developed in the Petition, but instead are incorporated by reference, are not entitled to consideration, as it is improper to incorporate by reference arguments from one document into another document. See 37 C.F.R. § 42.6(a)(3); Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 7–10 (PTAB August 29, 2014) (informative) (discussing incorporation by reference). We note that Patent Owner does not argue that Petitioner has failed to adequately present a reason to combine Zupancich and Bosher in that asserted ground absent the allegedly improperly incorporated discussions in paragraph 413 of the Jobin Declaration. At this stage of the proceeding, we do not view as improper Petitioner’s reliance on that paragraph of the Jobin Declaration as part of its reason to combine analysis. 4. Conclusion For these reasons, these arguments by Patent Owner do not present any bases to deny the Petition in this proceeding.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art would have “had at least a Bachelor’s degree in mechanical or structural engineering, or related fields, and two years’ experience designing structures with comparable mechanical and/or structural elements to the ’855 Patent’s subject matter.” Pet. 10 (citing Jobin Decl. ¶¶ 23–26). Petitioner also states that “[a]dditional experience may compensate for less education.” Id. (citing Jobin Decl. ¶¶ 23–26). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage of the proceeding and based on the current record, we need not construe explicitly any of the claim language discussed in this section or any other claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent 15 “VIPs” refers to vacuum insulated panels. necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).16” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,263,855 - Snap Inc. v. Sanderling Management Ltd.All claims unpatentablePTAB · Oct 31, 2022 · IPR2021-00781 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1, 3, 18, and 20 are unpatentable as obvious over Hogeg; claims 3, 7, 17, 20, 24, and 34 are unpatentable as obvious over Hogeg and Arujunan.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner discusses the term “digital media content processing function” in claims 1 and 18 (Pet. 22–25), but states that “the Board needn’t construe [that term] to determine patentability” (Pet. 25). We did not construe that term in the Decision on Institution (Dec. Inst. 27), and Patent Owner takes the position in the Response that that term still does not need construction (PO Resp. 11). We continue to agree with both parties that “digital media content processing function” need not be construed because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“We agree with Patent Owner, however, that the patentee acted as his own lexicographer with the passage from column 6 discussed by the parties. Indeed, the sentence at issue begins with the exact same term—“distribution rule”—and continues by explaining what that term “is.” See Ex. 1001, 6:13– 14 (“A distribution rule is a rule used in determining how to target a group of end-users . . . .” (emphasis added)); see also Ex. 1001, code (57) (the Abstract, providing that “[a] distribution rule is used to target a group of end-users . . . ”). As argued by Patent Owner, this is sufficiently clear language to express an intent by the patentee to define that term. See PO Sur-reply 6 (citing Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) (stating that “the word ‘is,’ again a term used here in the specification, may ‘signify that a patentee is serving as its own lexicographer’”); see also Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“To act as a lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly express an intent to redefine the term.’” (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Further, we disagree with Petitioner’s assertion that the definition should include the rest of the passage in column 6 (i.e., the language from “for instance” to the end of the sentence). See Pet. Reply 4. By beginning with “for instance,” the express language of that portion of the sentence makes clear that it merely provides examples of “rule[s]” that fall within the definition previously provided in the sentence, as acknowledged by Petitioner and Mr. Parulski. Cf. id. (“The language following that clipped by [Patent Owner] (‘for instance . . . ’) is what provides ‘distribution rules’ examples.”); Parulski Reply Decl. ¶ 15 (“The language following that identified by [Patent Owner] (beginning with ‘for instance, a rule . . . ’) provides examples of what a ‘distribution rule’ may be.”).7 For these reasons, we construe “distribution rule” in elements 1b and 18c in the manner proposed by Patent Owner—“a rule used in determining how to target a group of end-users.”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Elements 1b and 18c require a certain type of “distribution rule”— specifically one “defining a sensor data condition”—which Hogeg teaches for the reasons discussed above, but the claims do not preclude a user initiating the overall process with selection of an image. Stated differently (by Petitioner in the Reply), “whatever initiates Hogeg’s process makes no difference to Hogeg’s ‘distribution rules’” because “Hogeg’s content editing functions are still distributed according to, for example, client terminal location . . . and therefore Hogeg still uses distribution rules that target end users (e.g., users at a particular location).” Pet. Reply 8 (citing Parulski Reply Decl. ¶ 40)).” slip op. at 22
Patent outcomesUS 10,108,986 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,108,986 - Snap Inc. v. Sanderling Management Ltd.All claims unpatentablePTAB · Oct 31, 2022 · IPR2021-00780 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1, 2, 4–6, 8–16, 18, 19, 21–23, and 25–33 are unpatentable as obvious over Hogeg.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“We agree with Patent Owner, however, that the patentee acted as his own lexicographer with the passage from column 6 discussed by the parties. Indeed, the sentence at issue begins with the exact same term—“distribution rule”—and continues by explaining what that term “is.” See Ex. 1001, 6:13– 14 (“A distribution rule is a rule used in determining how to target a group of end-users . . . .” (emphasis added)); see also Ex. 1001, code (57) (the Abstract, providing that “[a] distribution rule is used to target a group of end users . . . ”). As argued by Patent Owner, this is sufficiently clear language to express an intent by the patentee to define that term. See PO Sur-reply 6 (citing Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) (stating that “the word ‘is,’ again a term used here in the specification, may ‘signify that a patentee is serving as its own lexicographer’”); see also Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“To act as a lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly express an intent to redefine the term.’” (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Further, we disagree with Petitioner’s assertion that the definition should include the rest of the passage in column 6 (i.e., the language from “for instance” to the end of the sentence). See Pet. Reply 4. By beginning with “for instance,” the express language of that portion of the sentence makes clear that it merely provides examples of “rule[s]” that fall within the definition previously provided in the sentence, as acknowledged by Petitioner and Mr. Parulski. Cf. id. (“The language following that clipped by [Patent Owner] (‘for instance . . . ’) is what provides ‘distribution rules’ examples.”); Parulski Reply Decl. ¶ 15 (“The language following that identified by [Patent Owner] (beginning with ‘for instance, a rule . . . ’) provides examples of what a ‘distribution rule’ may be.”).6 For these reasons, we construe “distribution rule” in elements 1b and 18c in the manner proposed by Patent Owner—“a rule used in determining how to target a group of end-users.”” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner discusses the term “digital media content processing function” in claims 1 and 18 (Pet. 21–23), but states that “the Board needn’t construe [that term] to determine patentability” (Pet. 23). We did not construe that term in the Decision on Institution (Dec. Inst. 26–27), and Patent Owner takes the position in the Response that that term still does not need construction (PO Resp. 11). We continue to agree with both parties that “digital media content processing function” need not be construed because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art at the time of the alleged invention “would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 19. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Pet. 19–20 (citing Parulski Pet. Decl. ¶¶ 173–174). Prior to institution, Patent Owner did not address or dispute Petitioner’s proposed definition of the level of ordinary skill in the art. In the Decision on Institution, we adopted Petitioner’s proposed definition, stating that it “appear[ed] consistent with the record at th[at] stage of the proceeding, including the prior art.” Dec. Inst. 26. In the Response, Patent Owner also does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See PO Resp 10–11. We maintain the definition of the level of ordinary skill in the art adopted as of institution.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“The record supports Petitioner’s argument that the system in Hogeg “targets a group of end-users” in that it assesses which of the users are, for example, at a specific location and then sends only those users a visual editing function relevant to the users’ location. For example, in a passage cited by Petitioner as to a “conditional selection process to select/distribute a subset of functions” (Pet. 33), Hogeg discloses that “if the positional data is indicative that the visual content was captured in New York, a visual content editing function which provides an overlay of the statue of liberty and/ or a sound overlay of the song New York [N]ew York may be provided.” Ex. 1004 ¶ 58, cited at Pet. 33. This system “target[s] a group of end-users” in New York based on sensor data in that other end-users—such as ones indicated as being in California—do not receive the New York overlay. Patent Owner attempts to distinguish Hogeg’s process in that the content editing functions are sent in response to image selection by the user. See PO Resp. 16 (“Thus, what Hogeg discloses is a process for sending content editing functions ad hoc based on the characteristics of specific pieces of content that are manually identified by a user. Nothing in Hogeg, however, teaches a system or process capable of targeting a group of end-users based on a sensor data condition from their mobile devices.”). This distinction, however, is not supported by the claims. Elements 1b and 18c require a certain type of “distribution rule”— specifically one “defining a sensor data condition”—which Hogeg teaches for the reasons discussed above, but the claims do not preclude a user initiating the overall process with selection of an image. Stated differently (by Petitioner in the Reply), “whatever initiates Hogeg’s process makes no difference to Hogeg’s ‘distribution rules’” because “Hogeg’s content editing functions are still distributed according to, for example, client terminal location . . . and therefore Hogeg still uses distribution rules that target end users (e.g., users at a particular location).” Pet. Reply 8 (citing Parulski Reply Decl. ¶ 40)).” slip op. at 21
Patent outcomesUS 10,108,986 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,108,986 - Snap Inc. v. Sanderling Management Ltd.All claims unpatentablePTAB · Oct 31, 2022 · IPR2021-00779 · APJ Richard H Marschall · IPR · Final written decision
Claims 1–11 are unpatentable: claims 1, 2, and 4–10 as obvious over Hogeg; claim 3 as obvious over Hogeg and Arujunan; and claim 11 as obvious over Hogeg and Svendsen.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 23–24. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Id. (citing Parulski Decl. ¶¶ 186–187). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. PO Resp. 7–8. We find Petitioner’s proposal consistent with the level of skill reflected in the ’866 patent and the prior art of record. See GPAC Inc., 57 F.3d at 1579. We apply Petitioner’s proffered level of ordinary skill in the art in this Decision.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“a network, a Global Positioning System (GPS) location indication from each of a plurality of mobile devices” to mean “an indication, determined by a Global Positioning System (GPS), for the location of each of a plurality of mobile devices at the time of distribution,” as Patent Owner argues. See PO Resp. 11 (emphasis added). Patent Owner’s construction requires receiving a GPS location of a plurality of devices at a specific time—at the time of distribution. This attempt to read in a temporal limitation lacks support for several reasons. First, and most importantly, the claim limitation at issue does not suggest any temporal limitation tied to the generation or receipt of GPS location indications. Instead, the claim requires receiving a GPS “location indication from each of a plurality of mobile devices” without addressing when each device acquires the GPS location indication in any way. Ex. 1001, 23:50–51. Further, the limitation merely requires receiving location indications “from” the devices, not “of” the devices as Patent Owner proposes in its construction. See id. Patent Owner does not adequately address or support this second deviation from the claim language in its proposal. See PO Resp. 9–11.” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“specification with persuasive testimony from the vantage point of one of ordinary skill in the art. See Pet. Reply 3–6; Parulski Reply Decl. ¶¶ 20–30. Mr. Parulski testifies that “other than this order of operations, claim 1 imposes no temporal limitation on when the received GPS location information was actually obtained by the mobile device (before it is sent to the server).” Parulski Reply Decl. ¶ 22. Mr. Parulski also testifies that the ’866 patent specification discloses obtaining location indications prior to any distribution of the processing function. Id. ¶¶ 26–28. We find Mr. Parulski’s testimony credible and persuasive because it finds support in the claim language and ’866 patent specification. Based on the foregoing, we decline to adopt Patent Owner’s proposed construction. Instead, we apply the ordinary meaning of the limitation, which does not require a location indication of each device at the time of distribution.7” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We find, based on the complete record, that Petitioner has demonstrated by a preponderance of the evidence that Hogeg, as modified, satisfies the remaining limitations in claim 1. We also determine that Petitioner has adequately explained why one of ordinary skill in the art would have modified Hogeg and that there would have been a reasonable expectation of success. e. Conclusion as to Claim 1 “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1361 (Fed. Cir. 2017). Above, based on the full record before us, we provide our factual findings regarding (1) the level of ordinary skill in the art, (2) the scope and content of the prior art, (3) any differences between the claimed subject matter and the prior art; and (4) objective indicia of nonobviousness. In particular, we find that (1) Petitioner’s proposed level of ordinary skill in the art is consistent with the art of record; (2) Petitioner establishes sufficiently that Hogeg discloses or renders obvious all the limitations of claim 1 for the reasons provided by Petitioner; and (3) the parties do not introduce or rely upon any objective indicia of nonobviousness. Weighing these underlying factual determinations, Petitioner has shown, by a “any arguments for patentability not raised in the response may be deemed waived”). preponderance of the evidence, that claim 1 of the ’866 patent is unpatentable as obvious over Hogeg.” slip op. at 42
Patent outcomesUS 9,639,866 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,639,866 - Snap Inc. v. Sanderling Management Ltd.All claims unpatentablePTAB · Oct 31, 2022 · IPR2021-00778 · APJ Richard H Marschall · IPR · Final written decision
Claims 1–12 are unpatentable: claims 1, 2, and 4–12 as obvious over Hogeg, and claim 3 as obvious over Hogeg and Arujunan.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “at the time of the alleged invention would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 21. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Id. (citing Parulski Decl. ¶¶ 173–174). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. PO Resp. 8. We find Petitioner’s proposal consistent with the level of skill reflected in the ’412 patent and the prior art of record. See GPAC Inc., 57 F.3d at 1579. We apply Petitioner’s proffered level of ordinary skill in the art in this Decision.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the patentee acted as his own lexicographer with the passage from column 6 discussed by the parties. Indeed, the sentence at issue begins with the exact same term—“distribution rule”—and continues by explaining what that term “is.” See Ex. 1001, 6:3–4 (“A distribution rule is a rule used in determining how to target a group of end-users . . . .” (emphasis added)); see also Ex. 1001, code (57) (the Abstract, providing that “[a] distribution rule is used to target a group of end users . . . ”). As Patent Owner persuasively argues, this language expresses an intent to define the “distribution rule” limitation. See PO Sur-reply 6 (citing Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) (stating that “the word ‘is,’ again a term used here in the specification, may ‘signify that a patentee is serving as its own lexicographer’”); see also Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“To act as a lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly express an intent to redefine the term.’” (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Further, we disagree with Petitioner’s assertion that the definition should include the rest of the passage in column 6 (i.e., the language from “for instance” to the end of the sentence). See Pet. Reply 4. By beginning with “for instance,” the express language of that portion of the sentence makes clear that it merely provides examples of “rule[s]” that fall within the definition previously provided in the sentence, as acknowledged by Petitioner and Mr. Parulski. Cf. id. (“The language following that clipped by [Patent Owner] (‘for instance . . . ’) is what provides ‘distribution rules’ examples.”); Parulski Reply Decl. ¶ 22 (“The language following that identified by [Patent Owner] (beginning with ‘for instance, a rule . . . ’) provides examples of what a ‘distribution rule’ may be.”).6 For these reasons, we construe “distribution rule” in claim 1 in the manner proposed” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“said network, a Global Positioning System (GPS) location indication from each of a plurality of mobile devices” to mean “an indication, determined by a Global Positioning System (GPS), for the location of each of a plurality of mobile devices at the time of distribution,” as Patent Owner argues. See PO Resp. 13 (emphasis added). Patent Owner’s construction requires receiving a GPS location of a plurality of devices at a specific time—at the time of distribution. This attempt to read in a temporal limitation lacks support for several reasons. First, and most importantly, the claim limitation at issue does not suggest any temporal limitation tied to the generation or receipt of GPS location indications. Instead, the claim requires receiving a GPS “location indication from each of a plurality of mobile devices” without addressing when each device acquires the GPS location indication in any way. Ex. 1001, 23:15–17. Further, the limitation merely requires receiving location indications “from” the devices, not “of” the devices as Patent Owner proposes in its construction. See id. Patent Owner does not adequately address or support this second deviation from the claim language in its proposal. See PO Resp. 11–13. Second, none of the other language in the claim addresses when the mobile devices acquire a GPS location indication. Patent Owner relies on later claim language in support of its construction that requires forwarding the processing function to a “mobile device having a GPS location indication which matches said geographic location,” but that limitation does not address when the device acquires the GPS location indication. See Ex. 1001, 23:27–29. The “device having a GPS location indication” refers back to one of the plurality of devices providing a GPS location indication without further modifying that limitation, and the “geographic location” refers back to a “distribution rule defining a geographic location,” which does not refer to when a device acquires a GPS location indication. See id. at 23:13–17, 23:27–29. Third, the specification of the ’412 patent does not require reading the limitation as Patent Owner proposes. As Petitioner points out, the ’412 patent depicts several steps in its process and suggests that the devices may acquire GPS location indications at the time a user captures images, which occurs prior to any time of distribution. See Pet. Reply 6–7 (referring to Ex. 1001, Fig. 7) (citing Parulski Reply Decl. ¶¶ 36–38). This disclosure conflicts with Patent Owner’s construction, and shows that the specification lacks any clear disclosure tying the device GPS location indication to the time of distribution. Patent Owner does not respond to this argument in its Sur-reply. See PO Sur-reply 6–8.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1361 (Fed. Cir. 2017). Above, based on the full record before us, we provide our factual findings regarding (1) the level of ordinary skill in the art, (2) the scope and content of the prior art, (3) any differences between the claimed subject matter and the prior art; and (4) objective indicia of nonobviousness. In particular, we find that (1) Petitioner’s proposed level of ordinary skill in the art is consistent with the art of record; (2) Petitioner establishes sufficiently that Hogeg discloses or renders obvious all the limitations of claim 1 for the reasons provided by Petitioner; and (3) the parties do not introduce or rely upon any objective indicia of nonobviousness. Weighing these underlying factual determinations, Petitioner has shown, by a preponderance of the evidence, that claim 1 of the ’412 patent is unpatentable as obvious over Hogeg.” slip op. at 51
Patent outcomesUS 9,355,412 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,355,412 - Safran Cabin Inc. v. B/E Aerospace, Inc.InstitutedPTAB · Oct 21, 2022 · IPR2022-00749 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–19, finding a reasonable likelihood that claims were obvious over Shibata, Betts, and Bentley; it left the Rezag ground for trial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Ex. 1002, 143. We disagree. This analysis disregards the Board’s previous proceedings and analyses and does not consider the related Federal Circuit cases affirming our decisions. See B/E Aerospace, Inc. v. C & D Zodiac, Inc., 709 F. App’x 687, 698 (Fed. Cir. 2017) (The Court explaining that “neither the Board’s claim constructions nor its obviousness determination was erroneous.”). Also, the explanation in the Office Action, “teach or make obvious,” is not consistent with evaluation of Betts as an anticipation reference. Compare Ex. 1002, 141–142 (assessing Betts and an anticipation reference), with Ex. 1002, 143 (indicating claims allowable as unobvious). patent’s prosecution history, including the stated reasons for allowability of claim 2 above with respect to anticipation. Prelim. Resp. 14–20. We find, on this record, that Petitioner has explained sufficiently and persuasively shown, considering the decisions in the various related Office and Federal Circuit proceedings, that the Office erred in allowing the current claims of the ’862 patent in light of Betts. For example, in IPR2014-00727 the Board determined that claims 1, 3–7, 9, 10, 12–14, 16–19, 21, 22, 24–29, 31, and 33–37 of the ’838 Patent, a parent patent to the ’862 patent, would have been obvious in view of Betts. Ex. 1005, 3. As discussed above, our determination was affirmed by the Federal Circuit. B/E Aerospace, 709 F. App’x 687, 698.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion as to Claim 1 We have considered, and on the record at this point in the proceeding, we find persuasive and accept as our own for purposes of institution, Petitioner’s arguments and evidence as set forth at pages 28–33 of the Petition. Also, at this early stage, the testimony of Petitioner’s declarant, Dr. Meyers, is unrebutted. Accordingly, we determine that Petitioner has shown a reasonable likelihood that Shibata in view of Betts and Bentley renders obvious the limitations of independent claim 1.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ’862 patent “would have had a bachelor’s degree in mechanical engineering, industrial design, or a similar discipline, or the equivalent experience, with at least two years of experience in the field of aircraft interior design.” Pet. 12 (citing Ex. 1003 ¶¶ 32–34). Patent Owner does not expressly address the level of ordinary skill in the art. See generally Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’862 patent and the asserted prior art For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “no claim term requires construction.” Pet. 13. Patent Owner also does not proffer any claim construction. See generally Prelim. Resp. The parties do not dispute the meaning of any particular claim term, and our Decision does not turn on the meaning of any specific claim term. It is unnecessary at this stage to expressly interpret any term beyond any implicit interpretations or clarifications as to the plain and ordinary meaning reflected in our analysis below.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,625,862
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.