- NHK Seating Of America, Inc. v. Lear CorporationSome claims unpatentablePTAB · Dec 30, 2015 · IPR2014-01026 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 11, 14, and 17–21 are unpatentable; claim 15 was not shown unpatentable because Wiklund does not disclose its required sequential contact portions.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Ex. 1001, 5:9–22 (emphasis added). This passage is consistent with interpreting “first manner and second manner” as meaning “any two different ways.” As described in this quoted passage, if either the forward velocity or the trajectory of the headrest, or both changes, then movement in a first and second manner has occurred. For example, if the headrest were to move forward at one velocity and then merely slow down (or speed up) on the same trajectory, then movement would occur in a first and second manner.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Id. at 8:58–9:5 (emphasis added). The emphasized portion of the quotation establishes that Kage’s headrest moves differently at the beginning and end of its path S2'. Namely, Kage’s headrest moves quickly toward the occupant’s head at the beginning of path S2' and more slowly toward the occupant’s head at the end of path S2'.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“claims 12, 17, 18, and 21 obvious and sets forth the evidence from Wiklund and Humer to support its contentions in detailed claim charts. Pet. 43–46. NHK also proffers Dr. Kent’s testimony to explain the manner in which Wiklund describes the requirements recited in these claims. Ex. 1010¶¶ 60– 69. Claims 12 and 21 depend from claims 10 and 20, respectively, and further recite a “damper connected between the headrest arrangement and the seatback.” Ex. 1001, 13:15–16 (claim 12), 14:26–27 (claim 21). NHK relies upon Humer for its disclosure of a damper as recited in these claims. Pet. 44–46. More specifically, NHK contends that Humer teaches using a damper 118 to improve “energy absorptions” of the Saab SAHR headrest. Pet. 43 (citing Ex. 1007, 7:27–8:4). NHK also contends that Wiklund is directed to the same Saab SAHR headrest. Pet. 43 (citing Ex. 1010 ¶ 60). NHK therefore concludes that an ordinary artisan would have found it obvious to improve Wiklund by adding Humer’s damper between the headrest arrangement and the seatback. Pet. 43–44. NHK contends that an ordinary artisan would have found it obvious to add a damper to Wiklund to “provide ‘some energy absorption to cause more even and controlled contact with the head during impact’ because without the damper 118 ‘the head tends to oscillate after impacting a headrest cushion.’” Id. at 44 (citing Ex. 1007, page 8:1–4; Ex. 1010 ¶¶ 60, 61, and 63).” slip op. at 34
- ExcludeMotion to exclude, deniedDenied
“IV. LEAR’S MOTION TO EXCLUDE We have reviewed Lear’s Motion to Exclude, NHK’s Opposition to the Motion, and Lear’s Reply in support of the Motion. Based on our review, we deny the Motion in all respects for one or both of the following reasons: (1) the Motion is moot because it seeks to exclude evidence not considered or relied upon in rendering this Decision or (2) the Motion addresses issues more appropriate to determining the weight ascribed to the evidence rather than the admissibility of evidence. In rendering this Decision, we determine and ascribe the appropriate weight to all proffered evidence and, when appropriate, comment upon the weight ascribed.” slip op. at 39
Patent outcomesUS 6,655,733 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,655,733 - Seagate Technology (US) Holdings, Inc. / Seagate Technology LLC v. Enova Technology Corp.All claims unpatentablePTAB · Dec 18, 2015 · IPR2014-01449 · APJ Timothy J Goodson · IPR · Final written decision
Claims 40–53 are unpatentable under § 103 over Sullivan and SATA Standard because the combination renders the claimed cryptographic SATA operations obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Decision to Institute did not provide express constructions for any of the terms of the challenged claims, noting that “claim terms need only be construed ‘to the extent necessary to resolve the controversy.’” Dec. to Inst. 6–7 (quoting Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Patent Owner’s Response does not propose any claim constructions, asserting instead that “even under the claim constructions proposed by Petitioner[], the references of record do not render any claims of the ’057 Patent obvious.” PO Resp. 15. The parties’ arguments in this proceeding following the Decision to Institute do not provide any reason to deviate from the claim construction approach in the Decision to Institute. Based on the record before us, we need not provide express constructions for any claim terms.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the field of this invention would have had at least a bachelor’s degree in electrical engineering, computer engineering, or computer science, and two years of experience in a relevant field, or equivalent knowledge and experience. Pet. 4 (citing Ex. 1006 ¶¶ 16–17). Patent Owner’s Response does not address specifically the level of ordinary skill in the art. We note, however, that Patent Owner’s declarant, Dr. Thomas M. Conte, testifies that because the claims of the ’057 patent describe a cryptographic apparatus, which is a computer hardware device, one of ordinary skill in the art should have experience with the hardware of devices and systems. Ex. 2061 ¶ 18. Dr. Conte’s testimony does not persuade us that hardware encryption experience is a prerequisite for the level of ordinary skill, such that persons having a software background or a degree in computer science are excluded from being persons of ordinary skill. See id. Although the Specification of the ’057 patent and the challenged claims disclose a “cryptographic device,” the ’057 patent teaches that “[t]he above-described embodiments may be implemented in hardware and/or software form, as desired.” Ex. 1001, 12:10–11. After considering the evidence of record, we conclude that a person of ordinary skill in the art at the time of the ’057 patent would have had a bachelor’s degree in electrical engineering, computer engineering or computer science, and at least two years of experience.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“adequately for the disclosure in Sullivan that is broader and more general. For example, in the Background section, Sullivan describes that “[a] system is needed whereby transmission of data in a serial channel can be accomplished in-line and in real time, where the data and control information can be treated separately for both encryption purposes and for handling various types of attacks and covert processes embedded in or achieved by the transmitted information.” Ex. 1002 ¶ 6 (emphasis added); see also id. at ¶ 10 (“The control information, which may include commands and status information, can be subjected to filtering and rejecting operations by the encryption unit, to pass through only a predetermined set of commands and/or to reject a predetermined set of commands.”); id. at ¶ 55 (“[T]he filter module 730 may be configured as an information or command pass filter or blocking filter for any control information that may be included in the packet 700, whether or not in the header.”) (emphasis added); id. at claim 9 (“transmitting the encrypted information with the associated control information to the second device, where the associated control information is transmitted in an unencrypted form”). In view of these teachings, we agree with Petitioner that “Sullivan describes making encryption decisions based on the type of data and not simply the location of the data (e.g., in a header or in a payload).” Reply 8. Further, a skilled artisan would not have understood Sullivan’s teaching to strip out the header and encrypt the payload as a prescription for how each individual FIS should be treated when Sullivan is applied to a SATA device, because that encryption strategy would yield a non-functioning SATA device. It is undisputed that implementing Sullivan in a SATA device in this manner would result in a non-functional system, because doing so would result in encryption of payloads that should not be encrypted, thereby rendering the FISes unintelligible to the host or the peripheral device intended to process them. See PO Resp. 25; Reply 9. As summarized above, Patent Owner argues that this non-functionality demonstrates a flaw in Petitioner’s proposed combination. See PO Resp. 25. Yet, we view Patent Owner’s argument regarding non-functionality as detracting from the persuasiveness of Patent Owner’s contentions regarding how a skilled artisan would have understood Sullivan’s disclosure. In particular, it strains credulity that a skilled artisan would apply Sullivan in the manner Patent Owner urges when doing so would result in a non-functioning device. We agree with Petitioner that an artisan having ordinary skill and creativity would not have applied Sullivan’s teachings in such a simplistic and plainly counterproductive fashion. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); see also Reply 9–10 (citing In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985); Scanner Techs. Corp. v. ICOS Vision Sys. Corp., 528 F.3d 1365, 1382 (Fed. Cir. 2008)). We further agree with Petitioner that a skilled artisan would have recognized that “Sullivan teaches a flexible cryptographic device that can be implemented using a variety of data transfer protocols . . . and is designed to ‘accommodate[] whatever standard is used.’” Reply 8–9 (quoting Ex. 1002 ¶ 50).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“However, because Sullivan describes the rejection feature as alternative or additional, we find Dr. Long’s description of how a skilled artisan would have understood these teachings to be more credible. Dr. Long testifies that Sullivan’s paragraph 55 “reminds us there’s a number of ways to do this, look-up table, formula logic, whatever. It discloses the idea of you can pass some subset of commands to the encryption unit, and you can block other set of commands. It’s silent on the intersection of those two sets.” Ex. 2060, 74:3–8. Elaborating further, Dr. Long testifies: 3 Sullivan does not state expressly what becomes of the information that is rejected. Dr. Conte testifies that it is “rejected and filtered out.” Ex. 2061 ¶ 122. Dr. Long appears to be in agreement that information blocked by the rejection feature is not processed further. See Ex. 2060, 74:17–18 (testifying that “[t]here is a set of things that are blocked, which means they don’t go anywhere”). There’s a set of things that are passed to the encryption unit. There is a set of things that are blocked, which means they don’t go anywhere. And a person of ordinary skill in the art would think this through, but there could be things that are in neither set. Id. at 74:16–21. In other words, Sullivan’s description of the filter module leaves open the possibility that some of the information will be neither passed for encryption nor rejected and discarded. Thus, Sullivan’s description of the filter module does not criticize, discredit, or otherwise discourage a skilled artisan from causing certain FISes to bypass the cryptographic engine. Moreover, we agree with Petitioner that passing a PIO Setup FIS without encrypting it would have been obvious to a skilled artisan implementing Sullivan’s teachings in view of SATA Standard. As discussed above in the context of the “associated with” limitation, we agree with Petitioner that Sullivan teaches that control information should not be encrypted or decrypted. For example, Sullivan’s claim 9 describes “transmitting the encrypted data with the associated control information to the second device, where the associated control information is transmitted in an unencrypted form.” Ex. 1002, claim 9. Further, Dr. Long testifies that a skilled artisan would have known that the PIO setup FIS contains control information. Ex. 1006 ¶ 82, 179. Accordingly, we find persuasive Petitioner’s argument that it would have been obvious to pass a PIO Setup FIS from device interface to host interface without encrypting it.” slip op. at 24
Patent outcomesUS 7,900,057 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,900,057 - NHK Seating Of America, Inc. v. Lear CorporationSome claims unpatentablePTAB · Dec 15, 2015 · IPR2014-00925 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1, 3, and 4 are unpatentable as obvious over DE ’017 and DE ’826; claim 2 was not shown unpatentable because the combination lacks the claimed tab.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Not all surfaces guide a path of travel. We imposed this limitation based upon our review of the Specification. The pertinent portion of Figure 5 from the ’818 patent (reproduced at right) illustrates ramp 132 having two cam surfaces 134a and 134b (highlighted in green). These two cam surfaces together comprise cam surface 134. Ex. 1001, 8:65–9:2. Although we agree with Lear that the combination of cam surfaces 134a, 134b “changes the trajectory of travel” of the ends of lower crossbar 120, Lear fails to persuade us that the Specification justifies reading such a limitation into “cam surface.” The Specification specifically counsels against reading such a limitation into the claims by stating: “Those having ordinary skill in the art will appreciate that the ramp 132 can include any number of cam surfaces oriented in any manner toward the upper armature 50 without departing from the scope of the invention.” Ex. 1001, 9:9–13 (emphasis added). Accordingly, either of cam surfaces 134a or 134b is within the “scope of the invention” because either one constitutes “any number of cam surfaces oriented in any manner.” Second, we are not persuaded by Lear’s argument that, by interpreting “cam surface” as meaning “a surface that guides a path of travel,” we render “to slide the transverse bar along the cam surface” superfluous. Resp. 33– 35. We read “to slide the transverse bar along the cam surface” as specifying which “path of travel” the “cam surface” guides, namely, the path of travel of the “transverse bar.” Because we are unpersuaded by Lear’s arguments for altering our preliminary interpretation of “cam surface,” we maintain our interpretation of “cam surface” as meaning “a surface that guides a path of travel.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“would render it inoperable for its intended purpose. First, we determine that both references have the same intended purpose, namely to move the head rest to a supportive position in response to a rear-end collision. Ex. 1004, Abstract, ¶¶ 15, 16, 18; Ex. 1006 ¶¶ 27–30. Second, we determine that DE ’017 and DE ’826 both operate according to principles that efficiently translate the forces applied by the occupant to the seat back during a collision into movement of the head rest. Ex. 1004, Abstract, ¶ 5, claim 1; Ex. 1006 ¶¶ 27–30. Third, we determine that both DE ’017 and DE ’826 do not move the head rest in response to forces encountered in normal, non-collision, conditions. Both systems respond only to forces large enough to overcome biasing forces imparted by springs that hold the head rest in the non-actuated position during normal conditions. Ex. 1004 ¶ 17; Ex. 1006 ¶ 25; Ex. 1012, 25:11–23; Ex. 1013 ¶¶ 27–29. Accordingly, we are not persuaded that NHK’s proposed modification of DE ’017 would render DE ’017 inoperable for its intended purpose.” slip op. at 18
- Expert testimonyPetitioner expert discountedPatent owner expert creditedOther
“annotated figure is not a “tab” but instead an eyebolt. Because DE ’017 never directly describes or discusses this uppermost “tab” structure, Lear supports its argument with testimony from Dr. Viano. Surreply 3 (citing Ex. 2019 ¶¶ 19–22). The only portion of DE ’017 relating to this uppermost structure is a passage stating “At the end of the pivot lever 2d, opposite the pivotal axis 4, the coupling element 6b of the connection device 6 is suspended in an articulate fashion.” Ex. 1004 ¶ 17. Dr. Viano testifies that, because of the way that this uppermost structure is illustrated in Figure 2b and the functional description of the connection between coupling element 6b and lever 2d, a skilled artisan would conclude that this uppermost structure is akin to an eyebolt. Ex. 2019 ¶ 22. Dr. Kent testifies that concluding that the uppermost structure is “drawn as a tab” is a “reasonable inference . . . based on the way it is characterized in the drawing and the mechanical function it performs.” Ex. 2020, 19:6–17. Dr. Kent offers no further explanation for his inference that the uppermost structure is a “tab.” We accept Dr. Viano’s tesimony on how a skilled artisan would view the uppermost structure that NHK identifies in the annotated version of Figure 2b of DE ’017 as being more credible, thorough, and reasoned than Dr. Kent’s. On the record before us, we are persuaded by Lear’s argument and evidence that the uppermost structure does not constitute the claimed “tab.”” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“surface” because slot 17 guides a path of travel for pin 18, which is operatively connected to impact plate 10 of DE ’826. Pet. 25, 31–32. On the record before us, and under our interpretation of “cam surface,” we are persuaded by NHK’s argument. Accordingly, we conclude that NHK has established by a preponderance of evidence that DE ’826 describes the “cam surface” recited in claim 1.” slip op. at 21
Patent outcomesUS 8,434,818 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,434,818 - Ford Motor Company v. Paice LLC & The Abell Foundation, Inc.All claims unpatentablePTAB · Dec 10, 2015 · IPR2014-00904 · APJ Carl M Defranco · IPR · Final written decision
Claims 1, 14, 16, 18, and 24 are unpatentable as obvious over Severinsky, SAE 1996, and Field.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Pet. 27. For that teaching, Ford relies on the common knowledge of skilled artisans at the time of the claimed invention, as documented by SAE and Field. Id. at 18–25, 27–30. Noting that Severinsky discloses only a single electric motor that acts as both a generator and a traction motor, Ford points to the automotive industry’s prior history of “two-motor” hybrid designs for increased efficiency in urban city driving as evidence that equipping Severinsky with a separate generator motor in order to perform “simultaneous dual-motor operability” would have been an obvious design modification in the eyes of skilled artisans. Id. at 21–25; see also Ex. 1005 ¶¶ 168–201 (describing the state-of-the-art of two-motor hybrid architectures). As further evidence, Ford relies on SAE 1996 and Field as teaching expressly the use of dual electric motors in a hybrid vehicle for purposes of providing simultaneous propulsion and charging functions. See Pet. 27–30 (discussing Exs. 1025, 1039). We credit the testimony of Ford’s declarant, Dr. Davis, that a skilled artisan would have known (and been able) to modify the “one motor” hybrid vehicle of Severinsky to add a separate generator motor, either as a matter of design choice or as taught by SAE 1996 and Field, so as to gain the known advantage of increased efficiency and range that two-motor hybrid designs provide in urban city driving. Ex. 1005 ¶¶ 213–220.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“transition” point, not a torque value. PO Resp. 7–10. Citing the specification, Paice urges that “setpoint” must be construed to indicate a point “at which a transition between operating modes may occur.” Id. at 8. Paice’s argument is misplaced. While Paice is correct that sometimes the specification describes the setpoint in terms of a “transition point” (see id. at 9–10), the claim language itself makes clear that setpoint relates simply to a torque value, without requiring that it be a transition point. Indeed, the 8 Paice’s declarant, Mr. Neil Hannemann, agreed that, given the “comparison” being made by this claim language, the “most straightforward” construction is that “setpoint is a torque value.” Ex. 1041, 79:16–80:25. specification acknowledges that the mode of operation does not always transition, or switch, at the setpoint, but instead depends on a number of parameters. For instance, the values of the sensed parameters in response to which the operating mode is selected may vary . . . , so that the operating mode is not repetitively switched simply because one of the sensed parameters fluctuates around a defined setpoint. Ex. 1001, 19:67–20:6 (emphasis added). That disclosure suggests that a transition does not spring simply from the recitation of “setpoint.” As such, we will not import into the meaning of “setpoint” an extraneous limitation that is supported by neither the claim language nor the specification. Moreover, that a “setpoint” does not mean a per se transition between operating modes is reinforced by the fact that only the dependent claims, for example, claims 6 and 19, describe the “setpoint” in terms of a “transition” between operating modes. See id. at 58:41–49, 59:52–55. Where the meaning of a claim term is clear from the context of its use in an independent claim, we will not further limit the meaning of the term by its use in a dependent claim, absent justification for doing so. See Phillips, 415 F.3d at 1315 (“the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim”). Thus, we reject Paice’s attempt to further limit the meaning of setpoint to a transition between operating modes. We also regard as meaningful that nothing in the specification precludes a setpoint from being reset, after it has been set. The specification states that the value of a setpoint may be “reset . . . in response to a repetitive driving pattern.” Ex. 1001, 40:37–59. But, just because a setpoint may be reset under certain circumstances does not foreclose it from being “set,” or “fixed,” at some point in time.9 A setpoint for however short a period of time still is a setpoint. Thus, we construe “setpoint” as a “predetermined torque value that may or may not be reset.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Pet. 27. For that teaching, Ford relies on the common knowledge of skilled artisans at the time of the claimed invention, as documented by SAE and Field. Id. at 18–25, 27–30. Noting that Severinsky discloses only a single electric motor that acts as both a generator and a traction motor, Ford points to the automotive industry’s prior history of “two-motor” hybrid designs for increased efficiency in urban city driving as evidence that equipping Severinsky with a separate generator motor in order to perform “simultaneous dual-motor operability” would have been an obvious design modification in the eyes of skilled artisans. Id. at 21–25; see also Ex. 1005 ¶¶ 168–201 (describing the state-of-the-art of two-motor hybrid architectures). As further evidence, Ford relies on SAE 1996 and Field as teaching expressly the use of dual electric motors in a hybrid vehicle for purposes of providing simultaneous propulsion and charging functions. See Pet. 27–30 (discussing Exs. 1025, 1039). We credit the testimony of Ford’s declarant, Dr. Davis, that a skilled artisan would have known (and been able) to modify the “one motor” hybrid vehicle of Severinsky to add a separate generator motor, either as a matter of design choice or as taught by SAE 1996 and Field, so as to gain the known advantage of increased efficiency and range that two-motor hybrid designs provide in urban city driving. Ex. 1005 ¶¶ 213–220.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“As for Ford’s combination of Severinsky with SAE and Field, Paice argues that “SAE 1996 teaches away from operating the engine efficiently during this battery charging mode such that a POSITA would not combine these references to arrive at claim 18.” PO Resp. 60. But Paice’s argument is premised, incorrectly so, on the exact motor in SAE 1996, i.e., a 6kW motor, being incorporated into Severinsky. That premise, however, is not the basis of Ford’s combination. Rather, Ford relies on SAE 1996 for the simple teaching of modifying Severinsky to include the functionality of a two-motor series-parallel hybrid. See Pet. 27–30. Ford does not argue for modifying Severinsky to use the exact motor described in SAE 1996. Id. To the contrary, a skilled artisan would have understood that motors of various sizes and types would have been used to modify the hybrid vehicle disclosed in Severinsky. Ex. 1044 ¶¶ 31–32. The type and size of motor used would depend on the particular needs of the hybrid system, including the size needed to ensure that the engine would function in its efficient range of 60–90% of MTO. Id. Accordingly, Paice’s argument that the 6kW motor disclosed in SAE 1996 teaches away from the proposed modification of the vehicle described in Severinsky is misplaced.” slip op. at 20
Patent outcomesUS 7,237,634 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,237,634 - Ford Motor Company v. Paice LLC & The Abell Foundation, Inc.Some claims unpatentablePTAB · Dec 10, 2015 · IPR2014-00884 · APJ Carl M Defranco · IPR · Final written decision
Claims 1, 7, and 10 are unpatentable as obvious over Caraceni; the challenge to claim 24 fails, and challenges to claims 21 and 23 are dismissed as estopped.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for patent owner
“written decision on a patent claim in an inter partes review, that petitioner may not maintain a subsequent proceeding with respect to that same claim on a ground that it “reasonably could have raised” in the original proceeding. Specifically, section 315(e)(1) provides: (e) Estoppel.— (1) Proceedings before the office.—The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a) . . . may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review. The prerequisites for applying estoppel are satisfied here because: (1) Ford is the petitioner in the instant proceeding and in the prior -571 and -579 proceedings; and (2) the -571 and -579 proceedings resulted in final written decisions. With those prerequisites in place, our determination of whether to apply estoppel turns on whether Ford could have raised the prior art asserted here—Caraceni against claim 21, and Tabata ’201 and Tabata ’541 against claim 23—in the -571 and/or -579 proceedings. What a petitioner “reasonably could have raised” includes prior art that a skilled advocate would have been expected to discover and proffer in the course of conducting due diligence on the patent at issue. Here, we need not speculate about what reasonably could have been discovered and proffered, because the record demonstrates that Ford must have known of Caraceni, Tabata ’201, and Tabata ’541 at the time of the -571 and -579 Petitions, and if not, such knowledge should be imputed to it. More specifically, with respect to the Tabata references, they were cited during prosecution that led to the ’347 patent and are listed on the face of the patent. Ex. 1201, 3, 4. As such, Ford was on notice of the existence of the Tabata references as potential prior art to the ’347 patent before it filed the -571 and -579 Petitions. In addition, Ford could have raised the Caraceni reference against claim 21 in the -571 and -579 proceedings because it was asserted in a related petition, IPR2014-00570, that Ford filed on the very same day as the -571 and -579 Petitions. Thus, Ford must have known, or should have known, of Caraceni’s potential application to claim 21 before it filed the -571 and -579 Petitions. Under these circumstances, we determine that the Caraceni and Tabata references constitute grounds that Ford reasonably could have asserted against claims 21 and 23 in the original -571 and -579 Petitions. Accordingly, Ford is estopped under 35 U.S.C. § 315(e)(1) from now maintaining those grounds against claims 21 and 23 in the instant proceeding. 2.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“but is found in independent claim 23, as well as dependent claims 7 and 21. Both Ford and Paice agree that “road load” means the instantaneous torque required to propel the vehicle. Pet. 14–15; PO Resp. 7, 17. That proposed construction comports with the specification, which defines “road load” as “the vehicle’s instantaneous torque demands, i.e., that amount of torque required to propel the vehicle at a desired speed.” Ex. 1201, 12:38–42. In further defining road load, the specification notes that “the operator’s depressing the accelerator pedal signifies an increase in desired speed, i.e., an increase in road load, while reducing the pressure on the accelerator or depressing the brake pedal signifies a desired reduction in vehicle speed, indicating that the torque being supplied is to be reduced or should be negative.” Id. at 12:42–51 (emphases added). As such, the specification states that road load “can be positive or negative.” Id. at 12:51–54. Thus, consistent with the specification, we construe “road load” or “RL” as “the amount of instantaneous torque required to propel the vehicle, be it positive or negative.” 2.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“With respect to the controller’s use of a “setpoint” as a basis for starting and operating the engine, we credit Dr. Davis’ testimony that Figure 9 of Caraceni illustrates that the engine is not started until the torque demand exceeds a predetermined torque value. Ex. 1215 ¶¶ 259–287. Figure 9, as annotated by Dr. Davis, is reproduced below. Figure 9 depicts the torque provided by the thermal engine (yellow line) and the electric motor (blue line) in the hybrid mode in response to various phases of torque demand (red line). In region 1, Dr. Davis explains, the engine is off (horizontal black line) and the motor alone is activated to propel the vehicle because the engine operates inefficiently at low torque demands. Ex. 1215 ¶¶ 275–279, Ex. 1248 ¶¶ 8–12, 16–17. However, as driver torque demand increases in the transition from region 1 to region 2, the engine is started and operated to propel the vehicle because the engine can operate more efficiently at higher torque levels. Id. According to Dr. Davis, a skilled artisan would have understood that the point at which the engine takes over for the motor occurs at a predetermined torque level, or “setpoint,” which Dr. Davis indicates with a green line in annotated Figure 9. Id. We credit Dr. Davis’s testimony that the VMU, or controller, in Caraceni does not activate the engine until the torque demand reaches a predetermined torque level. Even Paice’s declarant, Mr. Hannemann, acknowledges that the point at which the engine is started in Caraceni’s Figure 9 “is something that the engineer developing and calibrating the vehicle has to program in to the vehicle . . . [i]t’s something that’s just built in to the calibration of the vehicle.” Ex. 1243, 116:16–117:19. Dr. Davis confirmed this as well. Ex. 1248 ¶¶ 16–17. That the operational point for the efficient production of torque by the engine would have been programmed into the vehicle as part of the calibration process suggests that is predetermined. As such, we conclude that a skilled artisan would have understood Caraceni’s Figure 9 as depicting a “hybrid mode” that starts and operates the engine based on a “setpoint,” as required by claim 1.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“Caraceni then makes clear that, while operating in the “hybrid mode,” activation of the engine is controlled automatically by a Vehicle Management Unit (VMU), not manually by the driver. The hybrid system is managed by a Vehicle Management Unit (VMU) which implements the working strategies of the vehicle and activates the two drive trains through the inverter for the electric motor and the engine electronic control unit respectively. Ex. 1203, 6 (emphasis added). Ford’s declarant, Dr. Davis, explains that the VMU is a controller that receives and transmits commands to an “electromagnetic clutch switch” connected to the engine’s transmission for controlling activation and operation of the engine. Ex. 1215 ¶¶ 205–209, 251–252 (citing Ex. 1203, Fig. 10). Dr. Davis further explains that, in the hybrid mode, the VMU controls operation of the electric motor through an “inverter interface” to act as either a traction motor or a generator. Id. ¶¶ 218–220, 230–237, 269. Based on Dr. Davis’s testimony of a skilled artisan’s understanding of Caraceni, we find that Caraceni teaches a controller that automatically starts and operates the engine in a hybrid mode, as required by claim 1. With respect to the controller’s use of a “setpoint” as a basis for starting and operating the engine, we credit Dr. Davis’ testimony that Figure 9 of Caraceni illustrates that the engine is not started until the torque demand exceeds a predetermined torque value. Ex. 1215 ¶¶ 259–287. Figure 9, as annotated by Dr. Davis, is reproduced below. Figure 9 depicts the torque provided by the thermal engine (yellow” slip op. at 18
Patent outcomesUS 7,104,347 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,104,347 - PTAB · Dec 7, 2015 · IPR2015-01438 · APJ Michael R Zecher · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding before deciding whether to institute review of claims 1–3 and 8–12.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“they have settled their disputes regarding the ’104 patent. Paper 7, 2. The parties further represent that there are numerous related matters in the United States District Court for the Northern District of California that have been dismissed with prejudice or stayed pending final determination of two related inter partes reviews involving U.S. Patent No. 7,550,870 B2 (“the ’870 patent”). Id. at 3. Based on the joint requests filed by the parties in the two proceedings involving the ’870 patent, those cases have been terminated. Avocent Huntsville Corp. v. Cyber Switching Patents, LLC, Cases IPR2015-00690 & IPR2015-00725 (PTAB Dec. 7, 2015) (Paper 33 in each proceeding). Lastly, the parties do not represent that the ’104 patent is involved in any other proceedings before the Office. See generally id. at 2–4. Under these circumstances, we determine that it is appropriate to terminate this proceeding without rendering any further decisions. See 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 7,672,104 - Unified Patents Inc. v. Finnavations LLCInstitution deniedPTAB · Nov 30, 2015 · IPR2015-01209 · APJ Meredith C Petravick · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that any claim was unpatentable under the asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Finnavations LLC (“Patent Owner”) filed a Preliminary Response to the Petition. Paper 11 (“Prelim. Resp.”). 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. Petitioner fails to demonstrate that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. For the reasons described below, we deny institution of inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We are persuaded that the Petition fails to sufficiently establish that it would have been obvious to one of ordinary skill in the art to modify Williams’ authorization display screen depicted in Figure 11 to include a category field configured to accept user input as disclosed in Chancey. Petitioner and its declarant, Dr. Shamos, assert that categorizing the transaction before exporting it to the personal financial management application is a matter of design choice and rely upon Chancey and Wells for support. Pet. 16; Shamos Decl. ¶ 66. Although Chancey and Wells both disclose a category field configured to accept user input, neither Chancey nor Wells teaches including such a category field on a GUI generated prior to the acceptance of an online transaction, like Williams’ authorization display screen depicted in Figure 11. As discussed above, Chancey discloses that the financial transactions are categorized in the process of entering them into a financial account from a financial statement. Wells discloses a user uploading financial transaction data to a server via a text entry window after a transaction concludes and separately discloses uploading transaction data from a vendor without any additional effort on the user’s part. This does not sufficiently establish that it would have been obvious to one of ordinary skill in the art to modify Williams’ authorization display screen depicted in Figure 11, which is generated prior to the acceptance of a transaction, to include a category field configured to accept user input. Neither Petitioner nor its declarant, Dr. Shamos, provide sufficient other rationale as to why providing a category filed configured to accept user input on Williams’ GUI depicted in Figure 11 would merely be a matter of design choice. Upon this record, we determine that Petitioner fails to establish that there is a reasonable likelihood that claims 1, 12, and 19, and claims 2–7, 11, 13–18, and 20, dependent therefrom, are unpatentable under 35 U.S.C. § 103(a) over Williams and Chancey.” slip op. at 12
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,132,720 - Ace Bed Co., Ltd. v. Sealy Technology LLCAll claims unpatentablePTAB · Nov 24, 2015 · IPR2014-01119 · APJ Glenn J Perry · IPR · Final written decision
Claims 1–3, 5–8, and 10–17 were held unpatentable: claims 1–3, 5–8, 10–13, and 17 as anticipated by Ahn, and claims 14–16 as obvious over Ahn, Flesher, and Oakhill.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for petitioner
“proposes a construction of “step” based on an explicit definition in the specification — “non-helical shaped segments of the described coils.” Ex. 1001, 3:8–10. Pet. 12. We adopt this construction.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Ahn’s “contact-preventing ends” appear to be substantially coaxial with the longitudinal axis of the coil bodies that terminate at opposed axial ends which are generally perpendicular to the longitudinal axis of the coil. Linear segments (see base of coil 100 shown in Ahn Fig. 1a) of the coil spring accommodate interconnections by lacing wire (shown in Ahn Fig. 2a and 2b). Id. Transition segments (visible in Ahn Fig. 4d) connect coil ends with the “contact-preventing ends.” Pet. 14. Given these disclosures, we find that Ahn anticipates claim 1.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree with Ace that it would have been obvious to a person of ordinary skill in the art to include a linear segment in the upper end of the coil disclosed in Ahn to facilitate a connection with lacing wire at the upper end of the coil – either in addition to, or in place of the linear segments already present in the Ahn coil. Pet. 43. Coils connected by lacing wires in that location were taught by Flesher to be both stable and “a common practice.” Ex. 1007, 1:13–26. A person of ordinary skill would have been motivated to connect the coils disclosed in Ahn at their ends to improve stability and form a matrix of interconnected coils in accordance with standard practice in the art. Coils so connected are nothing more than a predictable variation of the coils disclosed in Ahn. Accordingly, this limitation would have been obvious in view of Ahn alone, and/or in combination with Flesher. The preponderance of evidence establishes that claim 1 is unpatentable under 35 U.S.C. § 103(a) over Ahn and Flesher.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Claims 14–16 Dependent claim 14 states a range of spring height of 140 mm to 190 mm. Thus, the Oakhill range falls within the claimed range. Claim 15 depends from claim 14 and further requires that the “step” is substantially coaxial with the longitudinal axis of the coil body. As with claim 11, Ace has shown that this limitation is met by Ahn.” slip op. at 19
Patent outcomesUS 7,404,223 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,404,223 - Ford Motor Company v. Paice LLC & The Abell Foundation, Inc.All claims unpatentablePTAB · Nov 23, 2015 · IPR2014-00875 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1–4, 6, 12, and 19 were held unpatentable as obvious under § 103 over the combinations of prior art reviewed.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“1. “road load (RL)” The term “road load” or “RL” is found in independent claims 1 and 19. The specification describes “road load” as “the vehicle’s instantaneous torque demands, i.e., that amount of torque required to propel the vehicle at a desired speed.” Ex. 1001, 12:24–28 (emphasis added). Petitioner and Patent Owner agree that this definition of “road load” is consistent with its plain meaning and as it is commonly understood in the art. See PO Resp. 23–24; Pet. Reply 2. Patent Owner argues “road load” should additionally account for external forces acting on the vehicle. PO Resp. 26–28 (citing Ex. 2003 ¶¶ 76–78); see Ex. 2003 ¶¶ 71, 73. Although external forces may play a role in the amount of torque required to propel the vehicle, we need not address them in order to construe the term “road load.” We see no reason to depart from the ʼ388 patent specification’s express definition of “road load” in terms of an amount of torque, such that “road load” is “the amount of instantaneous torque required to propel the vehicle.” See Ex. 1001, 11:46–48, 12:24–28, 35:14–17, 12:57–13:3, 37:13–15, 37:45–47, 38:5–10.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“above, we have interpreted “road load” to mean “the amount of instantaneous torque required to propel the vehicle.” See Section I.E.1. Vittone discloses the “driveability torque requirement” and the “total traction torque,” and we agree with Petitioner that the plain meaning of “driveability torque requirement” and “total traction torque” is the torque required to propel the vehicle. Pet. Reply 2–3. Although Patent Owner argues that “driveability torque requirement” and “total traction torque” are represented by the accelerator pedal position (PO Resp. 24–26), Patent Owner and Patent Owner’s declarant, Mr. Hannemann, fail to provide any persuasive argument or evidence that the “driveability torque requirement” and the “total traction torque” do not represent the torque required to propel the vehicle. We further credit the testimony of Dr. Stein, who explains that a person with ordinary skill in the art would have understood that the “driveability torque requirement” and the “total traction torque” represent the instantaneous torque required to propel the vehicle. Pet. Reply 2–3 (citing Ex. 1002 ¶ 173); Pet. 22–24. Contrary to Patent Owner’s argument, Dr. Stein explains that, although Vittone discloses the “driveability torque requirement” and the “total traction torque” are based on accelerator pedal position, “driveability torque requirement” and “total traction torque” are based also on other factors, including brake pedal position. Pet. Reply 3–4 (citing Ex. 1028 ¶¶ 20–30); Pet. 22–24. Therefore, the “driveability torque requirement” and the “total traction torque” do not only represent the accelerator position.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We disagree with Patent Owner. Both Ehsani and Vittone are directed towards hybrid vehicles. See Pet. Reply 11 (citing Ex. 1003, 7:25–30; Ex. 1005, 26). Ehsani and Vittone are directed also towards reducing emissions. Id. Ehsani discloses that a controller controls the engine with a predetermined trajectory of speed and power in order to improve efficiency and reduce emissions. Ex. 1003, 7:25–30. Vittone discloses expressly the “steady state” management of the thermal engine in order to reduce emissions. Ex. 1005, 26. We credit the testimony of Dr. Stein, who explains that “implementing a particular control strategy is a simple substitution of (or modification of) an existing control strategy that may not, and likely does not, even require changes to the underlying system architecture.” Ex. 1002 ¶¶ 253–254; Ex. 1028 ¶ 51. A person with ordinary skill in the art would have combined the elements of Ehsani and Vittone, and, therefore, such a reconstruction is not based in hindsight. A person with ordinary skill in the art would have looked to even further reduce the emissions of the Ehsani hybrid vehicle by implementing Vittone’s “steady state” management strategy. Accordingly, we agree with Petitioner that both Ehsani and Vittone are concerned with the same problem of reducing emissions in hybrid vehicles, and a person with ordinary skill in the art would have been motivated to further reduce Ehsani’s emissions by implementing Vittone’s “steady state” management control strategy.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We disagree with Patent Owner. Both Ehsani and Vittone are directed towards hybrid vehicles. See Pet. Reply 11 (citing Ex. 1003, 7:25–30; Ex. 1005, 26). Ehsani and Vittone are directed also towards reducing emissions. Id. Ehsani discloses that a controller controls the engine with a predetermined trajectory of speed and power in order to improve efficiency and reduce emissions. Ex. 1003, 7:25–30. Vittone discloses expressly the “steady state” management of the thermal engine in order to reduce emissions. Ex. 1005, 26. We credit the testimony of Dr. Stein, who explains that “implementing a particular control strategy is a simple substitution of (or modification of) an existing control strategy that may not, and likely does not, even require changes to the underlying system architecture.” Ex. 1002 ¶¶ 253–254; Ex. 1028 ¶ 51. A person with ordinary skill in the art would have combined the elements of Ehsani and Vittone, and, therefore, such a reconstruction is not based in hindsight. A person with ordinary skill in the art would have looked to even further reduce the emissions of the Ehsani hybrid vehicle by implementing Vittone’s “steady state” management strategy. Accordingly, we agree with Petitioner that both Ehsani and Vittone are concerned with the same problem of reducing emissions in hybrid vehicles, and a person with ordinary skill in the art would have been motivated to further reduce Ehsani’s emissions by implementing Vittone’s “steady state” management control strategy.” slip op. at 14
Patent outcomesUS 7,559,388 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 7,559,388 - Carecloud Corporation v. Athenahealth, Inc.All claims unpatentablePTAB · Nov 18, 2015 · CBM2014-00143 · APJ Richard E Rice · CBM · Final written decision
Claims 1–20 are unpatentable under § 101 as directed to ineligible subject matter; obviousness was not shown for claims 1–3, 5, 8, 11–13, 15, 17, 18, and 20.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Neither party proposes any change to the interpretations set forth above, and our review of the evidence does not indicate that any change is necessary. Consequently, we maintain our interpretations. Patent Owner proposes constructions for two additional claim terms— “rule” and “database.” PO Resp. 10. With respect to “rule,” Patent Owner proposes the definition set forth expressly in the Specification, i.e., “a rule is coded logic that evaluates data and then performs an action.” Id. (citing Ex. 1001, 5:59–60). Petitioner does not dispute Patent Owner’s proposed construction of “rule,” and we agree that it is the broadest reasonable interpretation consistent with the Specification. For the claim term “database,” Patent Owner relies on Mr. Goodin’s statement, based on a dictionary definition, that a “database” is a “collection of data with a given structure for accepting, storing, and providing, on demand, data for multiple users.” Id. (citing Ex. 2012 ¶ 44); see Ex. 2015, 21. We note Mr. Goodin’s additional testimony that a POSA “would understand a ‘database’ is a stored collection of data” (Ex. 2012 ¶ 45), and that the Specification “contrasts a database, consisting of stored data, which can be updated on demand, with a set of rules that are hard coded into a software application” (id. ¶ 46, citing Ex. 1001, 6:27–28). Petitioner does not propose a construction for “database” or challenge Mr. Goodin’s testimony, discussed above. Based on the above, we determine that the broadest reasonable interpretation consistent with the Specification of “database” is a stored collection of data that can be updated on demand.” slip op. at 9
- Skill levelSkill level board ownDecided for petitioner
“Petitioner’s Declarant, Dr. Bergeron, provides the following definition of a person of ordinary skill in the art (“POSA”): [A] POSA in the 2000 time frame would have had a Bachelor’s degree in computer science or the equivalent, or commensurate industry experience of at least four to five years of experience with computer programming and general knowledge of database technologies and networking or similar fields. A POS[A] in the 2000 time frame would also have at least two years of experience in the healthcare, or healthcare-related, industry. Ex. 1013 ¶ 16. Patent Owner’s Declarant, Dr. Goodin, agrees with Dr. Bergeron’s definition (Ex. 2012 ¶ 41). We agree with and adopt this definition for the purposes of our Final Written Decision.” slip op. at 8
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“On this record, we are persuaded that claims 1–20 are directed to the broad concept of scrubbing medical claims before submission, i.e., pre- processing medical claims to identify and correct errors. See Pet. 16; Pet. Reply 3. In particular, the patent claims all require automatically interacting with the completed claim submission by the medical practice management server to correct an error in the completed claim submission, wherein the error is resolved by the medical practice client before processing the completed claim submission, by applying one or more rules from a class of rules associated with the payor server, wherein the one or more rules comprises a new rule, an updated rule, or both received from the payor server. Ex. 1001, 20:12–20 (claim 1), 22:24–32 (claim 18), 23:11–19 (claim 20) (emphases added). Further, the concept of scrubbing medical claims before submission is consistent with the ’116 Patent Specification, which explains: “Given the extent of wasted time and money associated with the process [for filing and processing health insurance claims], there exists a need to manage a medical practice in a more efficient manner and [to] provide insurance claims with fewer or no errors.” Id. at 1:64–67. According to the Specification, “[t]he present invention automatically and repeatedly interacts with an insurance company system and/or applies rules to efficiently manage a medical practice and provide insurance claims with a reduced number of errors.” Id. at 2:3–6. In a preferred embodiment, rules engine 60 applies rules to the claim entry form and thereby “scrubs” the claim before submission. Id. at 13:31–59; see Ex. 1001, 13:33–34, Fig. 3F (“The rules engine 60 ‘scrubs’ the claim (step 390), or examines the claim for claim errors.”); Pet. 28 n.2. Given these disclosures, we are unpersuaded that any specific claim limitations need to be added to the above articulated abstract concept, as we discern that they merely provide support to the abstract concept of scrubbing medical claims before submission. Despite Patent Owner’s arguments to the contrary, we see little difference between scrubbing medical claims before submission and the type of fundamental economic practice considered to be an abstract idea by the Supreme Court in Alice.1 As established by the record, scrubbing medical claims before submission is a practice that existed long before the ’116 Patent. See, e.g., Ex. 1001, 1:31–40; Ex. 1012, 2:27–39; Ex. 1013 ¶¶ 33–34; Ex. 1024,2 107–108; Ex. 1029 ¶¶ 10–12, 14, 27. That the claims recite using a database of updated rules, multiple computers, and a claim edit screen, for scrubbing medical claims before submission, does not render the claims any less abstract. See Intellectual Ventures I LLC v. Capital One Bank (US), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (holding that “while the claims recite budgeting using a ‘communication medium’ (broadly including 1 In Alice, the Supreme Court determined that the claims at issue were “drawn to the concept of intermediated settlement,” i.e., the use of a third party to mitigate settlement risk. 134 S. Ct. at 2356. The Supreme Court also determined that “[l]ike the risk hedging in Bilski [Bilski v. Kappos, 561 U.S. 593 (2010)], the concept of intermediated settlement is ‘a fundamental economic practice long prevalent in our system of commerce.’” 134 S. Ct. at 2356 (citations omitted). With respect to the first step of the “Mayo framework,” the Supreme Court concluded in Alice that “there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement” in Alice, and that “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.” Alice., 134 S. Ct. at 2357. 2 Bringing Health Care Online: The Role of Information Technologies, U.S. Congress, Office of Technology Assessment (Sept. 1995). the Internet and telephone networks), that limitation does not render the claims any less abstract”). We conclude, therefore, that Petitioner has demonstrated that the ʼ116 Patent claims, like the claims in Alice, are directed to an abstract idea, namely, scrubbing medical claims before submission.” slip op. at 14
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“For reasons that parallel those articulated by the Federal Circuit in Intellectual Ventures I, we determine, contrary to Patent Owner’s arguments, that claims 1–20 of the ’116 Patent do not incorporate an inventive concept. See Alice, 134 S. Ct. at 2355; Intellectual Ventures I, 792 F.3d at 1368–70. Rather, the steps and limitations in the claims, whether considered individually or as an ordered combination, amount to a mere instruction to implement the abstract idea on a computer. See Alice, 134 S. Ct. at 2358. Like the claims at issue in Alice and Intellectual Ventures I, the ’116 Patent claims all recite generic computer elements (servers, rules, database, interactive screen, etc.) performing generic computer tasks such as storing rules in a database, receiving data, performing automated operations, and transmitting data. See, e.g., Ex. 1001, 20:2–42 (claim 1); see Alice, 134 S. Ct. at 2359; Intellectual Ventures I, 792 F.3d at 1368, 1370; Ex. 1001, 4:27–57 (servers), 5:60–61 (rule), 5:66–6:8 (rules database), 14:62–65 (interactive screen); Ex. 1013 ¶¶ 54, 56, 57, 62; Ex. 1029 ¶¶ 22– 27; Ex. 2011, 158:23–159:5; Ex. 2024, 94:4–17. Patent Owner’s argument, on page 76 of the Response, that the claims” slip op. at 21
Patent outcomesUS 7,617,116 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · KSR · GrahamPatents in suitUS 7,617,116
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.