- CMS Cepcor Ltd. / CMS Cepcor Americas LLC v. Sandvik Intellectual Property ABNo claims unpatentablePTAB · Apr 16, 2026 · IPR2024-01381 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–14 were not shown unpatentable because Polinski and Piepho do not teach the claimed tapered region extending from the shaft’s second end, and Petitioner did not establish adequate motivation to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“Petitioner argues that a person of ordinary skill in the art (“POSITA”) relating to the ’090 patent would have had “a bachelor’s degree in mechanical engineering or a related field, and at least 2 years of experience with industrial equipment design and development.” Pet. 3 (citing Ex. 1002 ¶ 29). Petitioner further contends that one of ordinary skill “may also have a combination of more formal education and less work experience or a combination of less/different formal education and more work experience.” Id. In the Patent Owner Response, Patent Owner states that it “does not object to the defined level of skill in the art.” PO Resp. 12 (citing Pet. 3). appears consistent with the problems addressed in the ’090 patent and the prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“challenge, the crux of the parties’ dispute revolves around the limitation in claim 1 of “an axial region of the shaft body extending from the second end and being tapered relative to a longitudinal axis of the shaft.” We agree with for the tapered axial region and that starting point would be the extremity of the shaft not an undefined point in the “end region.” Because Patent Owner proposes a construction of “end” that would have general application to all claim terms including the first end of the shaft, the second end of the shaft, and the sleeve end, and that construction has no bearing on the issues we address below, we do not reach Patent Owner’s proposed general construction of “end” by itself. We determine that no other claim terms require express construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As discussed above in our claim construction analysis, apart from the issue of the general construction of “end,” we determine that this limitation uppermost extremity of the shaft. Because neither Polinski nor Piepho disclose a tapered axial region starting at the uppermost extremity of the shaft, we find that Petitioner has not shown that the combination of Polinksi and Piepho discloses this limitation.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“This paragraph discusses “accurate alignment” in connection with joint 21, not tapered end 25. Ex. 1018, 3:23–35. The paragraph subsequently states that both joint 21 and end 25 are tapered but that shaft end 25 may alternatively be cylindrical. Id. We also find nothing in this paragraph supporting Petitioner’s assertion that alignment “is notoriously more difficult with purely cylindrical shafting” (Pet. 16–17). In order to support its position, Petitioner improperly conflates separate statements in this paragraph of Piepho, i.e., joint 21 provides accurate alignment, joint 21 is tapered, and end 25 is tapered. Petitioner makes an unsupported logical leap that the result of these three statements is that tapered end 25 provides accurate alignment. However, Petitioner fails to reconcile this argument with the final sentence in this paragraph that shaft end 25 may also be cylindrical as shown in Figure 4. Figure 4 “is an external view of another embodiment of” Piepho’s shaft. Ex. 1018, 2:49–50. In Figure 4, joint 21 has the same tapered configuration as shown in Figure 3 but end 25 is not tapered. Based on our review of Piepho’s Figures 3 and 4, we find that Piepho’s reference to “accurate alignment” refers to joint 21 and not to tapered end 25 as Petitioner alleges. Because Mr. Smith’s testimony (Ex. 1002, 59) essentially parrots the Petition on this point and is inconsistent with our finding, his testimony is entitled to little, if any, weight. For the foregoing reasons, we find that Petitioner has not established that a person of ordinary skill in the art would have been motivated to would teach this claim limitation.8 Because Petitioner has not shown that the combination of Polinski and Piepho teaches limitation 1b or an adequate motivation to combine, Petitioner has not shown by a preponderance of the evidence that claim 1 is obvious over Polinski, Piepho, and Harless.” slip op. at 27
Patent outcomesUS 11,014,090 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,014,090 - PTAB · Mar 25, 2026 · IPR2024-01380 · APJ Arthur M Peslak · IPR · Final written decision
The Board cancelled original claims 1–10 and granted substitute claims 11–19 because Petitioner did not prove claim 11 obvious over Torrence and Piepho.
RulingsFinal written decision- 112 supportGranted
“relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)). “[T]he hallmark of written description is disclosure.” Id. “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. “In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.” Yingbin-Nature (Guangdong) Wood Ind. Co., Ltd. v/ Int’l Trade Com’n, 535 F.3d 1322, 1334 (Fed. Cir. 2008). “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Ariad, 598 F.3d at 1351 (citing Capon v. Eshhar, 418 F.3d 1349, 1357–58 (Fed. Cir. 2005)). “This inquiry . . . is a question of fact.” Id. (citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)). Further, inventions in the mechanical and electrical-based arts usually involve predictable factors and can be more predictable than other fields, such as chemistry and biology. See In re Fisher, 427 F.2d 833, 839 (CCPA 1970);” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction We determine that no express construction of any claim term is necessary for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“[c]ombin[e] the tapered region of Piepho with the shaft of Torrence, the tapered region would extend from an uppermost extremity of the shaft.” RMTA Opp. 9. But, Petitioner concedes that neither reference discloses a tapered region extending from the uppermost extremity. Petitioner argues that Torrence’s shaft is straight (Amended RMTA Sur-reply 9) and that “[t]he tapered region of Piepho does not extend to the extreme end of the shaft.” RMTA Opp. 11 (emphasis added). Because neither Torrence nor Piepho discloses a shaft with a tapered region that “extends from an uppermost extremity of the shaft,” we find that the combination of Torrence and Piepho does not teach limitation 11[a]. We now analyze whether Petitioner provides reasoning with a rational underpinning why a person of ordinary skill in the art would have been motivated to modify Torrence with Piepho to extend Torrence’s taper from the upper extremity of its shaft. slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,827,568 - PTAB · Mar 18, 2025 · IPR2024-01381 · APJ Richard H Marschall · IPR · Institution
The Board instituted review of claims 1–14 based on a reasonable likelihood that the Polinski, Piepho, and Harless combination renders claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 314. Under § 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 challenged claims in the petition.” 35 U.S.C. § 314(a). Because we determine that Petitioner demonstrates a reasonable likelihood that at least one challenged claim is unpatentable, we institute an inter partes review of all claims as challenged in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art (“POSITA”) relating to the ’090 patent would have had “a bachelor’s degree in mechanical engineering or a related field, and at least 2 years of experience with industrial equipment design and development.” Pet. 3 (citing Ex. 1002 ¶ 29). Petitioner also contends that one of ordinary skill “may also have a combination of more formal education and less work experience or a combination of less/different formal education and more work experience.” Id. Patent Owner states that, for purposes of its Preliminary Response, it “does not object to Petitioner’s position on the level of ordinary skill in the art.” Prelim. Resp. 21 (citing Ex. 2001 ¶ 27). At this stage, and based on Petitioner’s undisputed contentions, we view Petitioner’s definition as consistent with the problems and solutions disclosed in the ’090 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Pursuant to 37 C.F.R. § 42.100(b), we apply the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under that standard, we give the words of a claim their plain and ordinary meaning as would have been understood by one skilled in the art at the time of the invention and in the context of the entire patent disclosure. Id. at 1312–13. Only terms in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner argues that “[n]o terms need construction because the claims read on the prior art identified below under any construction consistent with Phillips.” Pet. 10–11. Patent Owner “submits that the Board need not construe any claim terms as the claims are patentable under any reasonable construction.” Prelim. Resp. 20. Based on the record before us, we need not expressly construe any claim terms to resolve the issues presented at this stage of the proceeding.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner does not contest Petitioner’s combination of Polinski and Piepho, but instead argues that no motivation to combine exists because Harless “would render both Polinski and Piepho inoperable for their intended purpose of preventing shaft failure.” Prelim. Resp. 22–31 (citing, inter alia, Ex. 2001 ¶¶ 48–59). When addressing intended purpose, Patent Owner argues that “Polinski mitigates shaft fatigue failure . . . specifically by omitting threads that are typically cut into gyratory shafts to attach a crusher mantle.” Id. at 23 (citing Ex. 1017, 1:61–67). Patent Owner asserts that Polinski instead teaches that shaft stress can be reduced “by cutting threads into a bearing sleeve.” Id. at 24 (citing Ex. 1017, 1:1–67). Piepho, according to Patent Owner, seeks a similar goal: “to prevent fretting wear and corresponding fatigue,” by “coating a portion of the shaft fit into a yoke bushing (which Petitioner alleges is a sleeve) with a ceramic coating.” Id. at 24 (citing Ex. 1007, 2:15–25; Ex. 2001 ¶¶ 42–43). Patent Owner argues that introducing Harless’s groove onto the main shaft would undermine the purposes of Piepho and Polinski because these would “introduce stress concentrations,” “lead to increased fretting wear,” and “increase the likelihood of fatigue failure.” Id. at 24–29. Patent Owner also argues that Petitioner’s approach relies on impermissible hindsight because one of ordinary skill would not seek to rely on Harless’s grooved shaft for use in “mounting of gears and similar components” rather than “for crushing applications, much less in a gyratory crusher, as claimed.” Id. at 30. According to Patent Owner, Harless fails to disclose “that its shaft is subjected to the same substantial stresses generated by the cyclic loading as the shafts disclosed by Polinski and Piepho.” Id. As to Petitioner’s argument that a POSITA would be motivated to make the combination to simplify the equipment and process for interference fits, Patent Owner contends that “Petitioner impermissibly picks and chooses aspects of the three references” and ignores what they teach to a POSITA, namely that “Polinski and Piepho are both directed to mitigating shaft fatigue” and adding Harless’s oil groove introduces several problems, as noted above. Id. at 31 (citing Ex. 2001 ¶¶ 48–59). Based on the current record, Petitioner sufficiently establishes for the purposes of institution that one of ordinary skill in the art would have been motivated to combine Piepho, Polinski, and Harless in the manner Petitioner proposes. Notably, Patent Owner does not directly contest Petitioner’s stated reasons why a POSITA would be motivated to make the proposed combination, i.e., that the combination would save money and simplify the equipment and process for making and breaking interference fits. See Pet. 19–21; Prelim. Resp. 22–31. Patent Owner instead suggests that Petitioner improperly ignores disadvantages when adding Harless’s groove to Polinski and Piepho, which at best suggests a weighing between the advantages Petitioner contends the addition of Harless’s groove provides and the alleged disadvantages. See Prelim. Resp. 22–31. While Patent Owner’s arguments may ultimately prevail, given the highly factual nature of the competing expert testimony and the weighing necessary to resolve this issue, we view the issues as best resolved after further development during trial and after Petitioner has the opportunity to respond to Patent Owner’s arguments and evidence. On this record and at this stage of the proceeding, Petitioner’s arguments and supportive declarant testimony adequately establishes a motivation to combine the references.” slip op. at 17
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,014,090 - PTAB · Jan 28, 2025 · IPR2024-01083 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted inter partes review of claims 1–3, 7, 9, 10, and 101 on the asserted §103 ground over Ahn, Chaudhri, and Hinckley.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and 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.” For the reasons that follow, we institute an inter partes review as to claims 1–3, 7, 9, 10, and 101 of the ’413 patent on the ground of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“through industry employment, and additional years of experience could substitute for the advanced-level degree.” Ex. 1003 ¶ 30. Patent Owner notes that it does not agree with Petitioner’s proposed level of ordinary skill, “but does not believe that resolving the level is necessary to resolve the issues raised in this preliminary response.” Prelim. Resp. 6. As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision. Also, the level of ordinary skill in the art can be evidenced by the references cited, and we find it commensurate with the cited references in this proceeding. 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).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. 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”). Petitioner and Patent Owner contend that no claims need to be construed in order to resolve a controversy. Pet. 4– 5; Prelim. Resp. 6–7. We agree with the parties that no terms need to be construed expressly for this Decision. We discuss claim interpretation to the extent necessary in the context of analyzing the asserted grounds to determine whether to institute trial. We highlight that for the term “a magnitude of the blurring,” Patent Owner contends that “the amount of surface area that a translucent menu is displayed over a screen is not a magnitude of the blurring,” but provides no further construction of the term, other than a statement that even under Petitioner’s interpretation of “blurring,” the grounds are deficient. Prelim. Resp. 32–33 & n.4. On the present record, Petitioner’s proposed construction appears correct, and for purposes of institution, we apply this proposed construction of “a magnitude of the blurring” as discussed below in our analysis of limitation [1.d.ii]; the construction of this term may be addressed by the parties as this inter partes review proceeds.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“For purposes of this Decision, we find Petitioner cites sufficient evidence to support its contention that a person of ordinary skill in the art would have had a reason to combine the teachings of Ahn and Chaudhri.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,642,413 - A&A Global Imports, Inc. v. Lerman Container CorporationInstitution deniedPTAB · Jan 22, 2025 · IPR2024-01138 · APJ Jennifer S Bisk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that the single claim would have been obvious over any of the four asserted reference combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the parties’ arguments and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in challenging the patentability of the ’151 patent’s claim. Thus, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner submits that a designer of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in Industrial Design, Mechanical Engineering, or related field and approximately 5 years of professional experience in the field designing consumer products.” Pet. 42 (citing Fletcher Decl. ¶ 48). Petitioner adds that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner does not dispute this proposed definition. Prelim. Resp. 19. For purposes of this Decision, we adopt Petitioner’s uncontested proposal regarding a designer of ordinary skill in the art. See Fletcher Decl. ¶ 48; Rake Decl. ¶ 29.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“and Petitioner’s failure to persuasively explain why the particular proportion depicted in the ’151 patent is preferable to any other, Petitioner has not sufficiently shown that this proportion is primarily functional and should not be considered as part of the ornamental design. See, e.g., LA Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993) (“When there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose.”). Moreover, we agree with Patent Owner that the differences in proportion between Neutrogena and the claimed design contribute significantly to the overall visual impression of the design. See Prelim. Resp. 28 (“[T]he two designs considered as a whole present dramatically different visual appearances.”), 33–36 (“To get from the Neutrogena jar design . . . to the design of the D ‘151 patent would require entirely changing the proportions of the jar—from a short neck with a tall base to a tall neck with a short base . . . .”). For example, Patent Owner creates an image showing that simply changing the height of the Neutrogena jar neck to have the same neck-height to base-height ratio as the ’151 patent without changing the other dimensions of the jar would yield a “ridiculous result.” Id. at 37. We agree that the two images, reproduced below, do not convey the same overall visual impression. This figure contains two images side by side. On the left is a side view drawing of the claimed jar. On the right is a front side image of the Neutrogena jar with the image manipulated to show a neck to base proportion equivalent to that of the claimed jar drawing. Prelim. Resp. 38. The images above show a figure from the ’151 patent, above left, and Patent Owner’s created image of Neutrogena, above right, with only the neck height modified to match the proportion of neck to base height shown in the ’151 patent. Although we do not necessarily agree with Patent Owner’s assertion that the created Neutrogena image represents the proposed combination asserted in the Petition, or that the modified image created by Patent Owner is accurate, we do agree with Patent Owner that the image of the modified Neutrogena jar illustrates that the proportion of neck height to base height contributes to ornamental aspects of the claimed jar and significantly affects the overall visual impression.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We find these aspects of the design significantly affect the overall visual impression of an otherwise simple design, particularly in an otherwise crowded art. Petitioner addresses these differences by stating that a designer of ordinary skill in the art “would have understood that different degrees of radius for the concave bottom surface would be a design choice for volume and accessibility to the contents, especially together with the radiused transition between the sidewall and bottom surface.” Pet. 56 (citing Fletcher Decl. ¶ 98). However, the present record does not support a finding that, even though other interior compartment shapes and depths are available, functionality dictates a certain shape and depth. Petitioner cites no other prior art that shows an interior compartment with a shape and depth equivalent to that shown in the ’151 patent. See Pet. 28–29 (showing annotated versions of Huang’s drawings, which do not clearly show the shape or depth of the interior compartment), 63 (proposing to modify Huang’s two chamber interior compartment with that of Canamasas Puigbo), 85–88 (showing the McKernan Jar drawings, which do not indicate the shape or depth of the interior compartment); Ex. 2002, 13 (explaining that the interior of Zamberlan is different in shape and depth than the claimed design). We are not persuaded to the contrary by Petitioner’s expert testimony. Mr. Fletcher testifies that Canamasas Puigbo “explicitly discloses a concave bottom surface in an article having more visually similar design, which would provide ample motivation to incorporate the feature.” Fletcher Decl. ¶ 98 (emphasis added). Thus, Mr. Fletcher appears to agree that the shape of the Canamasas Puigbo’s internal compartment is noticeably different than that of the ’151 patent. Mr. Fletcher does not address why a designer of ordinary skill in the art would have overlooked these differences or found them so minimal as to not affect the overall impression of the resulting modified jar. For example, Mr. Fletcher does not support this conclusion with any objective evidence, such as pointing to other prior art with an interior compartment the same shape and depth as that of the ’151 patent. Nor does Mr. Fletcher otherwise explain why a designer of ordinary skill in the art would have chosen to use the particular shape and depth claimed by the ’151 patent as opposed to all other possible configurations. See, id. ¶¶ 83–101. Moreover, as noted above, “expert testimony cannot take the place of disclosure from patents or printed publications.” 2019 Trial Practice Guide at 36. Accordingly, even after combining the visual features of Neutrogena and Canamasas Puigbo as proposed by Petitioner, the record evidence does not support Petitioner’s assertion that a designer of ordinary skill in the art would have found it obvious to modify Neutrogena such that its internal compartment is the same shape and depth as claimed by the ’151 patent.” slip op. at 32
§ 103 obviousnesscites Graham - PTAB · Jan 14, 2025 · IPR2024-01087 · APJ Barbara A Benoit · IPR · Institution
The Board instituted IPR on claims 1–13, 15–35, and 37–43 on all asserted grounds, finding a reasonable likelihood that Apple would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We determine Petitioner’s showing discussed above regarding Limitations [1.i–1.l] to be sufficient for institution. Petitioner’s showing in large measure relies on Hackborn’s straightforward description of changing the appearance of grass displayed in “live” wallpaper in response to a finger swipe in combination with Westerman’s disclosures of interpreting user input on touch screens as swipes. See, e.g., Pet. 22–23; Ex. 1004 ¶¶ 28, 33; Ex. 1005 ¶¶ 18–19. With regard to the contested Limitations [1.i and 1.k], we note particularly that Petitioner’s combination relies on Westerman’s disclosure of interpreting user inputs that exceed various thresholds as “a swipe event.” This showing is sufficient for institution to show the threshold determination required by Limitation [1.j]. See, e.g., Ex. 1005 ¶¶ 19; Pet. 22 (citing Ex. 1005 ¶ 19). Petitioner’s combination relies on Hackborn’s animation of the grass on the wallpaper “that makes the grass blades look as if the finger is actually contacting them as it drags across the screen of the device.” Ex. 1004 ¶ 33; see Pet. 23 (quoting Ex. 1004 ¶ 33). On this preliminary record, Petitioner’s position that “the farther the swipe, the more extreme the grass movement expected from Hackborn” naturally follows from Hackborn’s description. Pet. 23. As such, we determine Petitioner’s showing that the proposed combination of Hackborn and Westerman changes the grass appearance based at least in part of the magnitude of the swipe to be sufficient for institution for Limitation [1.k].” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a related field, and would have had at least two years of relevant work experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof.” Pet. 9 n.2 (citing Ex. 1003 ¶ 26); Ex. 1003 ¶ 26. Dr. Cockburn also indicates that “[l]ess work experience may be compensated by a higher level of education and vice versa.” Ex. 1003 ¶ 26.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we agree with the parties that no terms need to be construed expressly. We discuss claim interpretation to the extent necessary in the context of analyzing the asserted grounds.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Hackborn’s mobile device with a touch screen able to display “live” wallpaper and Westerman’s techniques for interpreting swipe gesture inputs, including distinguishing between tap and swipe gestures using predetermined thresholds. Pet. 9–11, 12–13; see Pet. 9–14 (describing Petitioner’s “Hackborn-Westerman Combination”). Petitioner contends that “[a] POSITA reviewing Hackborn would have naturally looked to Westerman to better understand how to implement Hackborn’s teachings, for example, how to discern between different user inputs (e.g., tap or swipe).” Pet. 12–13 (citing Ex. 1003 ¶ 52). Petitioner contends that one of ordinary skill would have had a reasonable expectation of success in combining the references in the manner Petitioner proposes. Pet. 13–14. Specifically, Petitioner asserts that, because “recognizing predetermined touch inputs was known, and Hackborn and Westerman both describe the use of touchscreen devices and would have reasonably understood the combination of Hackborn and Westerman to be successful with no unexpected results.” Pet. 14 (citing Ex. 1003 ¶ 53; Ex. 1004 ¶ 28, Ex. 1005 ¶¶ 18, 19, 25, 41, 59, 61–64).” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,656,755 - Viking Drill & Tool, Inc. v. Hongjia WangAll claims unpatentablePTAB · Jul 5, 2024 · IPR2023-00474 · APJ William V Saindon · IPR · Final written decision
Claims 1, 2, 5, 7, 8, 12–15, 18, 19, and 22 are unpatentable as obvious over Zhou, Bannister, Gentry, and Durfee; the Board did not reach the additional Welty-based grounds.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“known that a spiral flute helps to lift swarf away from the cutting surface. Pet. 67 (citing Ex. 1004 ¶¶ 201–202). The testimony of Petitioner’s expert states that a person of ordinary skill in the art would have known that “the spiral shape of the flute side walls was desirable since it helps to lift chips, or swarf, away from the cutting surface and evacuate it from the hole being cut.” Ex. 1004 ¶ 202. This makes intuitive sense, as a wall perpendicular to the surface would push accumulated chips along, whereas the wedge shape of the spiral will lift them away from the cutting surface. According to Petitioner, a person of ordinary skill in the art would have been motivated to modify Zhou’s flute to arrange the cutting edges such that they, as a whole, have a spiral shape in order to achieve these chip-lifting benefits. Thus, we find that a person of ordinary skill in the art at the time of the invention had a reason to include the known feature of cutting tips that spiraled around the cone portion, in order to achieve the benefit of providing better chip removal.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A [person of ordinary skill in the art (POSA)] with respect to the ’583 patent would have been an individual educated in mechanical engineering with a bachelor’s degree and at least one or two years of experience in the development of drill bits, or an associate’s degree and at least five years of experience in the development of drill bits. A POSA would typically work in a team with machinists and would be aware of developments in the field of machine tools, particularly drill bits, for example by attending trade shows, and by reading patents and trade journals.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“formed sequentially and spirally on a cone portion exterior” of the twist drill. The parties agreed to construe the cutting blade groups being “formed spirally” as meaning that the cutting blade groups are slanted with respect to the rotational axis, i.e., are not perpendicular to the rotational axis. The parties have agreed that being “formed spirally” is met by axial relief. Pet. 23; Tr. 77:9–12. We adopted this construction. slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. Construction of Remaining Terms We determine that no further terms require construction. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 19
Patent outcomesUS 11,007,583 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,007,583 - Viking Drill & Tool, Inc. v. Hongjia WangAll claims unpatentablePTAB · Jul 5, 2024 · IPR2023-00473 · APJ William V Saindon · IPR · Final written decision
Claims 1, 2, 5, 7, 8, 12–15, 18, 19, and 22 are unpatentable as obvious over the asserted prior art.
RulingsFinal written decision- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“(noting the header). Petitioner argues that Patent Owner specifically cites to this document as evidence of beliefs held by a third party (different from Astro). Mot. Excl. 7. Patent Owner asserts that these are “observations of testing.” Opp. Mot. Excl. 10. We note that this document was produced by Astro, a party with ties to Patent Owner. Notwithstanding, Patent Owner attempts to attribute the statements in this document to another third party (not Astro). We agree with Petitioner that Patent Owner is attempting to use these statements for the truth of the matter asserted. See, e.g., Resp. 50–51 (alleging that the third party “was [] impressed with their performance” and citing to Exhibit 2059 as evidence of “initial testing documents”). Accordingly, Patent Owner is not only attempting to use these documents for the truth of the matter asserted, but Patent Owner is attempting to attribute them to a party different from the party that made the statements. We do not find any exceptions to the hearsay rule to be applicable here. In addition, Exhibit 2059, as offered, is misleading and confusing. We exclude Exhibit 2059. 5. Exhibit 2060 Exhibit 2060 appears to contain a series of slides and notes, as would be used in a presentation. The document appears to be that of a third party. Patent Owner asserts that the content in this exhibit demonstrates the third party’s “strong desire to copy” the claimed invention. See, e.g., Resp. 51, 59. Assuming they are what they are alleged to be, then these are out-of- court statements by a third party being used to prove the truth of the matter asserted—that an employee of the third party thought highly of Patent Owner’s licensed drill bits. We are not persuaded by Patent Owner’s passing arguments that these represent “real-time observations, impressions of, and reactions to” the claimed invention. Opp. Mot. Excl. 9–10. We exclude Exhibit 2060.” slip op. at 77
- Skill levelOther
“B. Level of Ordinary Skill in the Art Petitioner asserts the following level of ordinary skill in the art: A [person of ordinary skill in the art (POSA)] with respect to the ’583 patent would have been an individual educated in mechanical engineering with a bachelor’s degree and at least one or two years of experience in the development of drill bits, or an associate’s degree and at least five years of experience in the development of drill bits. A POSA would typically work in a team with machinists and would be aware of developments in the field of machine tools, particularly drill bits, for example by attending trade shows, and by reading patents and trade journals. Pet. 25; see also Ex. 1004 ¶ 14. Patent Owner does not appear to challenge this proposed level of skill or offer its own. We adopt Petitioner’s definition for purposes of this Decision, which appears consistent with the ’583 patent and prior art.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“which are easy to be removed.” Ex. 1001, 9:19–22 (emphasis added). Another portion of the specification discusses chip size in terms of the size of an individual composite cutting blade group. Id. at 3:5–25. Accordingly, we find that Petitioner’s proposed construction is consistent with the specification of the ’583 patent. We construe the “finer chips” limitation as reciting a natural consequence of having a plurality of cutting surfaces, relative to having one large cutting surface. 3. Construction of Remaining Terms We determine that no further terms require construction. Realtime” slip op. at 21
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusNot shown unpatentable
“3. Objective Indicia of Non-Obviousness Patent Owner asserts that objective indicia of non-obviousness overcomes any prima facie obviousness case. Resp. 44–60; Sur-reply 15– 26. Patent Owner first asserts that there is a nexus between the challenged claims and its alleged objective indicia. Resp. 46–49; Sur-reply 15–19. Patent Owner also alleges that its evidence shows copying (Resp. 49–55; Sur-reply 20–21), industry praise (Resp. 55–56; Sur-reply 21–22), commercial success (Resp. 56–58; Sur-reply 22–26), and satisfaction of a long-felt need (Resp. 58–60). Petitioner disputes these allegations. Reply 18–28. a) Nexus Patent Owner bears the burden of establishing nexus. WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). A presumption of nexus is only appropriate if “the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (cleaned up). The coextensiveness requirement is not met simply by showing that “the patent claims broadly cover the product that is the subject of the evidence of secondary considerations.” Id. at 1377. Coextensiveness can be thought of as “the degree of correspondence between a product and a patent claim.” Id. at 1374. “[T]he existence of one or more unclaimed features, standing alone,” does not necessarily defeat coextensiveness. Id. Instead, “the concept of unclaimed features is best viewed as part of a spectrum.” Teva Phrama. Int’l GmbH v. Eli Lilly and Co., 8 F.4th 1349, 1361 (Fed. Cir. 2021). “The presumption analysis requires the fact finder to consider the unclaimed features of the stated products to determine their level of significance and their impact on the correspondence between the claim and the products.” Id. (citing Fox Factory, 944 F.3d at 1375). The nexus analysis should focus on and consider the difference between the prior art and the claimed invention, and the extent to which the objective indicia speaks to these gaps. Campbell Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268, 1278 (Fed. Cir. 2021) (“[T]o establish a nexus, [the patent owner] needed to present evidence that the commercial success and praise of the [product] derived from those ‘unique characteristics.’”) (citing Fox Factory, 944 F.3d at 1373–74). Simply providing evidence tied to features already present in the prior art does not satisfy the inquiry. Id. (“objective indicia must be linked to a [] patent claim’s unique characteristics”); Fox Factory, 944 F.3d at 1378 (stating that for patents claiming combinations of prior art features, a patentee must show that the secondary considerations evidence is “attributable to the claimed combination of [prior art features], as opposed to, for example, prior art features in isolation or unclaimed features”). Patent Owner’s assertions regarding nexus are conclusory and extensively incorporate by reference other documents. See generally Resp. 46–49; Sur-reply 15–19. Patent Owner begins by citing to sixteen claim charts. Resp. 46 (citing Exs. 2074–2089). Patent Owner then alleges that the products it has licensed “are coextensive with the patented invention” because all of them are drill bits. Id. at 47. Patent Owner asserts that there are no unclaimed features, but in support of that allegation merely cites to its expert, who in turn says the same words without providing any support for his opinion. Id. at 47–48 (citing Ex. 2034 ¶ 150). We acknowledge that the claims of the ’583 patent are directed to a” slip op. at 56
Patent outcomesUS 11,007,583 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,007,583 - Toast, Inc. v. Gratuity, LLCInstitutedPTAB · Mar 27, 2024 · IPR2023-01408 · APJ Cynthia L Murphy · IPR · Institution
Instituted IPR of claims 1–13 on all asserted grounds; the Board found a reasonable likelihood that claim 1 is unpatentable over Marshall.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. In particular, we determine that factors 2– 4 weigh against denial of institution and factor 5, which is the lone factor favoring denial of institution, does not outweigh factors 2–4. Factor 1 is neutral. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Marshall (alone and with Phillips and Webb) when addressing the claims added during prosecution that ultimately issued as the Challenged Claims.” Pet. 68. As pointed out by Petitioner, “Marshall was never considered by the Examiner” against the claims that ultimately issued as claims 1–13 of the ‘050 Patent. Pet. 67, see also Ex. 1008, 263–289, 323–353. As also pointed out by Petitioner, “even when the Examiner considered Marshall” against claims that were subsequently cancelled, “he considered Marshall only as a secondary reference.” Pet. 67, see also Ex. 1008, 203–236, 263–289, 323–353. Patent Owner argues that Petitioner “fails to provide an adequate explanation as to how the examiner erred.” Prelim. Resp. 22. Patent Owner contends that Petitioner’s explanation “makes no sense,” and is “both conclusory and uncompelling.” Id. We disagree with Patent Owner’s characterization of the Petitioner’s position, especially because it is supported by prosecution history of the ’050 Patent. (See Ex. 1008, 203–236, 263–289, 323–353.) Patent Owner also argues that the prosecution history of the ‘050 Patent “establishes that the Examiner reviewed Marshall thoroughly and applied it against the claims, some of which he rejected and other he later allowed.” Id. at 21. To support this argument, Patent Owner points to findings made by the Examiner during prosecution of the ‘050 Patent. See id. at 20. These findings, however, related to the Examiner’s rejections against claims that were subsequently cancelled. See Ex. 1008, 203–224. And these findings were made in conjunction with Marshall being applied as a secondary reference to reject those claims. See id. The Examiner rejected those claims over a combination of three prior art references (Kessler, Delany, and Tidwell), and added Marshall, in lieu of using official notice, to show that it was known in the art to configure a processor to execute computer executable instruction stored in a memory. See id. at 211–214. Thus, these findings do not contradict Petitioner’s position that overlooking Marshall as primary obviousness reference in connection with the Challenged Claims was a material error. The prosecution history does not sufficiently show that the Examiner considered Marshall, Philips, Web, or the combinations of these references asserted in the Petition, with respect to the claims that issued as the ’050 Patent. In particular, the Examiner asserted as Reasons for Allowance that the prior art did not teach” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Patent Owner argues that “Marshall fails to disclose a cloud-based computing system remote from a plurality of client business systems” as recited in independent claim 1. Prelim. Resp. 22. Per Patent Owner, the cited-by-Petitioner paragraphs in Marshall (Ex. 1004) say “nothing about ‘cloud computing,’ only data transmission.” Id. at 22–23. And, per Patent Owner, the cited-by-Petitioner paragraphs from a declaration (Ex. 1002), do not provide “any additional evidence” beyond Marshall’s cited paragraphs. Id. at 22. We disagree with Patent Owner’s characterization of the evidence presented by Petitioner. The cited paragraphs of Marshall talk not only about data transmission, but also data transmission to remote locations via the Internet. See Ex. 1004, ¶¶ 25, 110. Also, one of these paragraphs talks about data transmission to a remote location being performed “via uploading and downloading via HyperText Transfer Protocol (‘HTTP’), Extensible Markup Language (‘XML’), and/or HTML as is known in the art.” Id. ¶ 110. The 9 The ’050 Patent says that “[i]n some embodiments, [a] point of sale system 110 and/or [an] employee records system 112 may be implemented in cloud computing systems reducing the burden on businesses to host these systems using local computing resources.” Ex. 2002, 4:65–5:2. If so, “[t]he gratuity management system 100 may be similarly implemented in a cloud computing system that interfaced with cloud-based point of sale and/or employee record systems.” Id. at 5:2–5. The gratuity management system “is contemplated to operate in conjunction with both local and cloud-based point to sale and/or employee record systems.” Id. at 4:8–11. cited paragraphs from the declaration provide additional evidence that these “communication protocols describe by Marshall (HTTP, XML, HTML) support a cloud-based infrastructure” and that “cloud computing solutions were well known and commonly used in the art by 2012.” Ex. 1002, ¶ 148. Thus, collectively, Petitioner’s evidence adequately establishes for the purposes of institution that Marshall indicates to POSITA that Marshall’s gratuity management system would be a cloud computing system remote from the plurality of client business systems.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Patent Owner argues that “Marshall fails to disclose a cloud-based computing system remote from a plurality of client business systems” as recited in independent claim 1. Prelim. Resp. 22. Per Patent Owner, the cited-by-Petitioner paragraphs in Marshall (Ex. 1004) say “nothing about ‘cloud computing,’ only data transmission.” Id. at 22–23. And, per Patent Owner, the cited-by-Petitioner paragraphs from a declaration (Ex. 1002), do not provide “any additional evidence” beyond Marshall’s cited paragraphs. Id. at 22. We disagree with Patent Owner’s characterization of the evidence presented by Petitioner. The cited paragraphs of Marshall talk not only about data transmission, but also data transmission to remote locations via the Internet. See Ex. 1004, ¶¶ 25, 110. Also, one of these paragraphs talks about data transmission to a remote location being performed “via uploading and downloading via HyperText Transfer Protocol (‘HTTP’), Extensible Markup Language (‘XML’), and/or HTML as is known in the art.” Id. ¶ 110. The 9 The ’050 Patent says that “[i]n some embodiments, [a] point of sale system 110 and/or [an] employee records system 112 may be implemented in cloud computing systems reducing the burden on businesses to host these systems using local computing resources.” Ex. 2002, 4:65–5:2. If so, “[t]he gratuity management system 100 may be similarly implemented in a cloud computing system that interfaced with cloud-based point of sale and/or employee record systems.” Id. at 5:2–5. The gratuity management system “is contemplated to operate in conjunction with both local and cloud-based point to sale and/or employee record systems.” Id. at 4:8–11. cited paragraphs from the declaration provide additional evidence that these “communication protocols describe by Marshall (HTTP, XML, HTML) support a cloud-based infrastructure” and that “cloud computing solutions were well known and commonly used in the art by 2012.” Ex. 1002, ¶ 148. Thus, collectively, Petitioner’s evidence adequately establishes for the purposes of institution that Marshall indicates to POSITA that Marshall’s gratuity management system would be a cloud computing system remote from the plurality of client business systems.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,741,050 - Apple Inc. v. Ald Social LLCInstitutedPTAB · Mar 18, 2024 · IPR2023-01399 · APJ Phillip A Bennett · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that Wolfe renders claim 1 obvious under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“factors, 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). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The asserted prior art, like the challenged patent, presents high-level schematics and functional descriptions of various system components used in monitoring events and crowd behavior using location-based services. These system components largely include servers, websites, and mobile telephones utilizing wireless technologies, such as Wi-Fi, cellular, and global positioning system (GPS) to communicate and generate location data regarding mobile devices, as well as the use of databases to store historical information related to location-based services. The prior art and the patent provide description of monitoring crowd behavior by tracking the location of groups of mobile devices. Neither the challenged patent nor the asserted” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“we agree with Petitioner that “[t]he specification does not provide any explicit definition.” Pet. 14. The written description, however, indicates “[a] viral event is defined as occurring when one or more predefined parameter thresholds have been surpassed, as determined in the exemplary embodiment in the Network Monitor 302.” Ex. 1001, 4:45–48. As Petitioner notes, the written description also provides examples of predefined parameter thresholds used by Network Monitor 302 “to determine if the monitored network indicates that a viral event may be occurring or impending.” Ex. 1001, 5:14–16; Pet. 14 (citing Ex. 1001, 5:16–20). Examples of predefined parameter thresholds include an excessive number of wireless devices in an area, excessive use of wireless devices in an area, two highly dense clusters of wireless devices converging at a significant rate of speed, and the difference in the number of wireless devices in an area exceeds a threshold over consecutive time periods. Ex. 1001, 5:15–20, 5:31–35, 5:41–42 (“to assess the number . . . of wireless devices”), 5:55–57; see Pet. 15 (citing Ex. 1001, 5:31–36, 5:51–57). As such, the written description describes parameter thresholds related to number, use, and movement of wireless devices being used to determine whether a viral event may be occurring.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“institution. On this preliminary record, Petitioner has sufficiently shown that responsive to the network monitor observing a significant aggregation of devices in a particular area, application 322 functions as a crowd risk determinant because the application 322 assesses the needs arising from the aggregation of devices in that area. Ex. 1004, ¶¶ 46. Additionally, although the example provided in Wolfe relates to determining the number of pizza slices needed based on how many devices are in particular location, on this preliminary record, we agree with Petitioner that a person of ordinary skill in the art would have found it obvious to implement a similar risk analysis to determine that police patrols would be needed in a particular area, as taught by Wolfe, based on the determination of crowd’s location, activity, and movement. Id. at 14.” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,402,158
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.