- Anheuser-Busch Inbev S.A. And Anheuser-Busch, LLC v. Heineken Supply Chain B.V. (F.K.A. Heineken Technical Services B.V.)Institution deniedPTAB · Dec 12, 2019 · IPR2019-01151 · APJ John E Schneider · IPR · Institution
The Board denied institution for claims 1, 3, 7, and 10 because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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 considering the Petition and the Preliminary Response, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we deny the Petition and decline to institute an inter partes review for that reason.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have at least a Master’s degree in mechanical engineering or product design and/or four years of relevant experience designing fluid dispensing systems. Pet. 14. Patent Owner disputes this definition of the level or ordinary skill in the art but does not offer its own definition. Prelim Resp. 22 n.4. For purposes of this decision, we adopt Petitioner’s description of the level of ordinary skill in the art.” slip op. at 6
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Though Dr. Slocum contends that the shoulders of the valves depicted in Figures 17–20 and 21–24 are rigid because they are strong enough to resist fluid flow (see Ex. 1002 ¶¶ 134 and 132, respectively), Dr. Slocum does not provide adequate reasoning or evidence to support this opinion that one of ordinary skill in the art would consider shoulders that deform in the same manner as a flexible tube, and that are depicted as being integral with and made of the same material as the flexible tube, to nevertheless be rigid. For example, Dr. Slocum does not cite any extrinsic or intrinsic evidence that one of skill in the art would equate the ability to resist fluid flow with rigidity. Nor does Dr. Slocum or Petitioner propose any construction of the claim term “rigid” that would adequately distinguish the admittedly flexible pinch valves of Jeans.2 On the current record, and for the reasons discussed above, we find that Dr. Slocum’s testimony that the valve depicted in Jeans’s Figures 17–24 is made of a rigid material is not adequately supported. Accordingly, and based on the entire record presently before us, we determine that Petitioner has failed to demonstrate a reasonable likelihood of prevailing on its obviousness challenge based on the combination of Timmermans and Figures 17–24 of Jeans.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Both the ball valve and slit valve configurations shown in Figures 17– 24 of Jeans operate by pinching the valve to open it. Ex. 1005, 18–20; Ex. 1002 ¶¶ 132–135; Ex. 2020, 1180. As discussed above, Patent Owner argues that the ability to be opened by a pinching indicates that the valves disclosed in Figures 17–24 of Jeans are made of a flexible material and do not meet the limitation of being composed on a rigid material. Prelim. Resp. 34–35. We note that this assertion is consistent with the position of Petitioner and its declarant, Dr. Slocum, that pinch valves like those shown in Timmermans and Van Der Meer are not rigid. See Pet. 26–27, 33; Ex. 1002 ¶¶ 99, 120. Jeans explicitly states that Figures 17–20 and 21–24 depict two different embodiments in which “the flexible tube of the container” is “designed to act as a valve which is open and closed between pinched and unpinched conditions, or vice versa.” Ex. 1005, 18 (emphasis added).” slip op. at 12
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,188,751 - Parrot S.A. / Parrot Drones, S.A.S. et al. v. Qfo Labs, Inc.Rehearing deniedPTAB · Jun 12, 2019 · IPR2018-01690 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of IPR on claims 1–10 and 13–17 unchanged because no overlooked or misapprehended matter was shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. 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.” slip op. at 2
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“patent for which review is sought is available for inter partes review and that the petitioner is not barred or estopped from requesting an inter partes review challenging the patent claims on the grounds identified in the petition.” As noted by Patent Owner, Petitioners certified that they were not barred or estopped from requesting inter partes review of the ’292 patent. Pet. 96; Prelim. Resp. 11; Reh’g Req. 8–9. Our rule 104(a) only requires a certification and does not require explanation, argument, or evidence to support the certification. Patent Owner properly raised the issue of standing in its Preliminary Response. Prelim. Resp. 10–18. The Decision, thus, analyzed and reviewed the record to determine if Petitioners are barred under § 315(a)(1) from requesting inter partes review of the ’292 patent for the reasons raised by Patent Owner. Dec. to Inst. 8–13. We determined that, as applied to the circumstances of this proceeding, 35 U.S.C. § 315(a)(1) does not bar Petitioners from challenging the ’292 patent. Id.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“First, Patent Owner does not identify where this argument previously was made, and our review of the Preliminary Response indicates only arguments based on § 315(a)(1) or case law regarding § 315(b) were presented. See, e.g., Prelim. Resp. 10–17. Patent Owner did not argue we should exercise our discretion under 35 U.S.C. § 325(d) (see Prelim. Resp. passim), and because this argument was not previously made, we could not have misapprehended or overlooked it (see 37 C.F.R. § 42.71(d)). Even if arguments based on § 325(d) had been previously presented, we would not have exercised our discretion under § 325(d) based on our previous Decision for Case IPR2016-01550 which determined that certain claims of the challenged patent were shown to be unpatentable and because the ’292 patent is subject to a terminal disclaimer in view of the patent challenged in IPR2016-01550. See Ex. 1002, 92–96 (terminal disclaimer filed and approved in the prosecution history file of the ’292 patent).” slip op. at 11
Discretionary denialPatents in suitUS 9,904,292 - Syrinix, Inc. v. Blacoh Fluid Control, Inc.Some claims unpatentablePTAB · May 22, 2019 · IPR2018-00414 · APJ Frederick C Laney · IPR · Final written decision
Claims 1–6, 10, 12, and 14 are unpatentable; the motion to amend is granted for substitute claims 22 and 24.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundDecided for patent owner
“We find the above remarks made during prosecution of the ’553 patent by the applicant to be an unmistakable disavowal of pressure fluctuations caused by a leak in a pipe from the scope of “dynamic transient pressure.” Accordingly, we agree with Patent Owner that the applicant narrowed the scope of “dynamic transient pressure” to exclude transient pressures caused by pipeline leaks.” slip op. at 18
- Skill levelSkill level board ownOther
“formulation regarding the level of ordinary skill in the art, and instead found the cited references to be representative of the level of ordinary skill in the art. Inst. Dec. 9–10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves)). The parties have not expressed any disagreement with this finding, nor have they suggested a more definitive characterization of the level of ordinary skill in the art is necessary to resolve a disputed issue. Accordingly, for purposes of this Decision we again treat the cited references as being representative of the level of skill in the art. However, the factual findings and legal conclusions set forth herein would” slip op. at 9
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“claims, “the burden of persuasion ordinarily will lie with the petitioner to show that any proposed substitute claims are unpatentable by a preponderance of the evidence.” Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, slip op. at 4 (PTAB Feb. 25, 2019) (Paper 15) (precedential). Before we evaluate the patentability of Patent Owner’s proposed substitute claims, we first must consider whether the proposed claims satisfy the threshold statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.221. Id. at 4–10. Accordingly, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent; (3) the amendment proposes a reasonable number of substitute claims; and (4) the amendment does not introduce new subject matter and has written description support in the original disclosure. Id.” slip op. at 74
Patent outcomesUS 7,219,553 mixedClaim constructioncites KSR · GrahamPatents in suitUS 7,219,553 - Telesign Corporation v. Twilio Inc.All claims unpatentablePTAB · Mar 6, 2019 · IPR2017-01977 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–3, 5, 14, 16, 17, and 19 are unpatentable as obvious over Maes and Ransom, alone or with Jiang; the ETSI-based grounds were not proven.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in computer science with at least two years of experience in application development.” Pet. 8 (citing Ex. 1009 ¶¶ 49–50). Patent Owner argues that a person of ordinary skill in the art would have had “the equivalent of a four-year degree from an accredited institution in computer science, computer engineering, electrical engineering, software engineering, or the equivalent, and approximately 1–2 years of professional experience with or exposure to computer networking, telephony networking protocols, and various APIs,” but “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” PO Resp. 10 (citing Ex. 2010 ¶ 32).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“transfer (REST) API” to mean “an application programming interface that complies with Representational State Transfer (REST) interface constraints, which are: identification of resources; manipulation of resources through representations; self-descriptive messages; and, hypermedia as the engine of application state.” PO Resp. 10. Petitioner does not propose an express construction for the term “representational state transfer (REST) API,” but acknowledged at the oral hearing that Patent Owner’s proposed construction “simply makes express what [Petitioner] implies.” Tr. 32:24–33:13. Patent Owner’s proposed construction is supported by the specification of the ’376 patent and the extrinsic evidence. Specifically, the ’376 patent indicates that the term “REST” has its ordinary meaning in the art (Ex. 1001, 2:15–16, 8:12–14), and Patent Owner’s declarant, Dr. Negus, explains that a person of ordinary skill in the art would understand the term “REST API” to refer to the interface constraints set forth in Patent Owner’s proposed construction (Ex. 2010 ¶¶ 163–166). Patent Owner’s proposed construction also is consistent with the construction that was adopted by the District Court in a related case. Ex. 2005, 16–22. Therefore, the term “representational state transfer (REST) API” is construed to mean “an application programming interface that complies with Representational State Transfer (REST) interface constraints, which are: identification of resources; manipulation of resources through representations; self-descriptive messages; and hypermedia as the engine of application state.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successAnalogous artMotivation foundUnpatentable
“had reason to combine the cited teachings of Maes and Ransom. Pet. 12, 14, 22–24, 27–29 (citing Ex. 1009 ¶¶ 51–58, 62–75, 80–82, 88). We agree with and adopt Petitioner’s reasoning. Specifically, Maes and Ransom relate to the same field of endeavor as the ’376 patent, namely, web services. Pet. 12, 14; Ex. 1001, 1:66–2:10, 15:51–61; Ex. 1003, 3:52–65; Ex. 1004 ¶¶ 5, 42, 46, 57–58, 69–70, 78; Ex. 1009 ¶¶ 51–58. It would have been obvious to combine the cited teachings of Maes and Ransom because Ransom’s REST API is a common web service model that provides similar functionality and has several design advantages over Maes’s SOAP API, such as increased interface flexibility and lower bandwidth requirements. Pet. 22–24, 27–29; Ex. 1004 ¶ 163; Ex. 1009 ¶¶ 62–75, 80–82. It also would have been obvious to combine the cited teachings of Maes and Ransom because the teachings of Maes and Ransom are interrelated. Pet. 24, 28–29; Ex. 1009 ¶ 88; see KSR, 550 U.S. at 418 (“Often, it will be necessary . . . to look to interrelated teachings of multiple patents.”). Namely, Maes teaches using a web service (Ex. 1003, 3:52–65, 15:66–16:4; Ex. 1009 ¶ 88), and Ransom explains that REST is one of two common web service models (Ex. 1004 ¶ 163; Ex. 1009 ¶ 88).” slip op. at 24
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusObjective indicia outweighedMixed
“Therefore, because the evidence of record indicates that Petitioner had access to some of Patent Owner’s technology, but does not show specifically that Petitioner copied the invention claimed in the ’376 patent, the objective indicia of copying at best only weighs slightly in favor of non-obviousness.” slip op. at 31
Patent outcomesUS 8,755,376 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,755,376 - Telesign Corporation v. Twilio Inc.All claims unpatentablePTAB · Mar 6, 2019 · IPR2017-01976 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–6, 9, and 13 are unpatentable as obvious over Maes and Ransom; the Board did not find the claims unpatentable on the ETSI-based grounds.
RulingsFinal written decision- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Patent Owner’s argument is not persuasive. “The Supreme Court’s decision in KSR . . . directs us to construe the scope of analogous art broadly.” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). As such, “[t]he field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016). Here, the ’465 patent is directed to “making telephony application development as easy as web programming” by using “the familiar web site visitor model” that allows developers to “reuse their existing tools and techniques.” Ex. 1001, 1:66–2:10; Ex. 1010 ¶ 54. Ransom is directed to transporting data between a mix of secure and unsecure networks in an electric power distribution system using “a communication network” that “is a publicly accessible data network such as the Internet or other network or combination of sub-networks that transmit data utilizing the transmission control protocol/internet protocol (‘TCP/IP’) protocol suite.” Ex. 1004 ¶¶ 5, 58; Ex. 1010 ¶¶ 57–58. Thus, both the ’465 patent and Ransom are directed to the field of web services, with the ’465 patent focusing on telephony applications and Ransom focusing on electric power distribution applications. See Unwired Planet, 841 F.3d at 1001 (“Here, both Galitz and the ’205 patent are in the field of interface design, with Galitz focusing on graphical user interfaces and the ’205 patent focuses on interfaces for location-based services.”).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner’s arguments are not persuasive. Petitioner presents factual support from the prior art and also from Petitioner’s declarant, Dr. Nielson, that combining the cited teachings of Maes and Ransom would have been nothing more than using Ransom’s URI according to its established function of identifying a message recipient to yield the predictable result of sending a message to the identified recipient. Ex. 1004 ¶¶ 162–163; Ex. 1010 ¶ 62. Petitioner also presents factual support from the prior art and from Dr. Nielson that it would have been obvious to combine Maes and Ransom based on their interrelated teachings. Ex. 1003, 3:52–65, 15:66–16:4; Ex. 1004 ¶¶ 162–163; Ex. 1010 ¶ 58. Because these reasons for combining Maes and Ransom are sufficient, Petitioner need not show a deficiency in Maes, a teaching, suggestion, or motivation in Maes or Ransom, or a market or design demand for the combination. See KSR, 550 U.S. at 416, 418.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“Patent Owner’s arguments are not persuasive. Petitioner presents factual support from the prior art and also from Petitioner’s declarant, Dr. Nielson, that combining the cited teachings of Maes and Ransom would have been nothing more than using Ransom’s URI according to its established function of identifying a message recipient to yield the predictable result of sending a message to the identified recipient. Ex. 1004 ¶¶ 162–163; Ex. 1010 ¶ 62. Petitioner also presents factual support from the prior art and from Dr. Nielson that it would have been obvious to combine Maes and Ransom based on their interrelated teachings. Ex. 1003, 3:52–65, 15:66–16:4; Ex. 1004 ¶¶ 162–163; Ex. 1010 ¶ 58. Because these reasons for combining Maes and Ransom are sufficient, Petitioner need not show a deficiency in Maes, a teaching, suggestion, or motivation in Maes or Ransom, or a market or design demand for the combination. See KSR, 550 U.S. at 416, 418.” slip op. at 24
- Obviousness (§103) › Objective indicia / secondary considerations › CopyingDecided for patent owner
“and launch schedule,” “technical architecture plans,” “programming model,” “Application Programming Interfaces (API),” “marketing plan,” “business and/or financial projections,” and “clients.” Ex. 2041, 3. But Patent Owner does not explain how the NDA shows that Petitioner had access to and copied the specific Programmable Voice product. See PO Resp. 55–56; Tr. 75:16–76:7, 77:20–78:4; Ex. 2041, 1–3. Similarly, Patent Owner does not explain how the accounts created by Petitioner’s co-founder show that Petitioner had access to and copied the specific Programmable Voice product. See PO Resp. 55–56; Tr. 75:16–76:7, 77:20–78:4; Exs. 2047–2054, 2063–2066. Further, Patent Owner’s copying allegation focuses on Petitioner’s change from a SOAP-based product to a REST-based product. PO Resp. 55–56. However, Patent Owner acknowledged at the oral hearing that the challenged claims of the ’465 patent do not mention REST. Tr. 45:2–3 (“[T]he ’465 patent itself doesn’t have anything about REST or SOAP in the claims.”). Patent Owner similarly acknowledged at the oral hearing that REST is not the point of novelty of the ’465 patent. Id. at 45:4–7 (“REST and SOAP are just implementation methods . . . that’s not what the point of novelty of these patents is at all.”), 57:13–15 (“SOAP and REST are just languages, API, they’re formats. There’s nothing special about either of them.”). As a result, even if Petitioner changed from a SOAP-based product to a REST-based product, that would not show that Petitioner copied the technology claimed in the ’465 patent. Therefore, because the evidence of record indicates that Petitioner had access to some of Patent Owner’s technology, but does not show specifically that Petitioner copied the invention claimed in the ’465 patent, the objective indicia of copying at best only weighs slightly in favor of non-obviousness.” slip op. at 28
Patent outcomesUS 8,837,465 unpatentable§ 103 obviousnesscites KSRPatents in suitUS 8,837,465
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.