- PTAB · Dec 21, 2021 · IPR2021-01129 · APJ Trevor M Jefferson · IPR · Institution
The Board instituted IPR on claims 1, 3–7, 10, 17, 21, 22, 28, 33–39, and 43–45 based on a reasonable likelihood of success on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose” slip op. at 2
- PTAB / AIA Trials › Discretionary denialNot reached
“Petitioners provide argument that the Board should not exercise its discretion under Sections 314(a) and 325(d) as addressed in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 3 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”) (see Pet. 85–86) and General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sep. 6, 2017) (precedential as to Section II.B.4.i) (“General Plastic”). See Pet. 95–97; see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 58 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf) (explaining that parties may wish to address the Board’s discretion to institute review in their papers). In addition, Petitioners filed a paper ranking the petitions filed challenging the ’837 patent and supporting the material differences among the petitions. Paper 2. Patent Owner did not file a preliminary response, and, accordingly, we do not reach or address Petitioners’ arguments on these issues.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Decision in IPR2019-01568, Google ’837 IPR at 8–9. See Pet 5 n.3;5 Ex. 1003 ¶¶ 37. Our prior decision in IPR2019-01568 found that A [person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google ’837 IPR at 8. We apply this level of skill in the present case.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioners offer no proposed claim constructions and apply the constructions determined by the Board in the IPR2019-01568 Final Written Decision. Pet. 5. Petitioners assert that the remaining terms are given their “ordinary and customary meaning as understood by a Person of Ordinary Skill in the Art as of the Critical Date . . . and [at] prosecution history.” Id. at 5–6 (citing Ex. 1003 ¶¶ 73–74; 37 C.F.R. §42.100(b)). We adopt the claim constructions determinations in IPR2019-01568 provided in the table below.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,894,837 - PTAB · Dec 21, 2021 · IPR2021-01126 · APJ Trevor M Jefferson · IPR · Institution
The Board instituted IPR on claims 22, 23, and 31–40 because Petitioners showed a reasonable likelihood of prevailing on the asserted § 103 obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denialNot reached
“Petitioners provide argument that the Board should not exercise its discretion under Sections 314(a) and 325(d) as addressed in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 3 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”) and General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sep. 6, 2017) (precedential as to Section II.B.4.i) (“General Plastic”). See Pet. 84–86; see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 58 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf) (explaining that parties may wish to address the Board’s discretion to institute review in their papers). In addition, Petitioners filed a paper ranking the petitions filed challenging the ’870 patent and supporting the material differences among the petitions. Paper 2. Patent Owner did not file a preliminary response, and, accordingly, we do not reach or address Petitioners’ arguments on these issues.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION On this record, we are persuaded that Petitioners demonstrate a reasonable likelihood that they would prevail in showing the unpatentability of at least one of challenged claims 22, 23, and 31–40 of the ’870 patent. We, accordingly, institute an inter partes review of the challenged claims. Our determination in this Decision is not a final determination on either the patentability of any challenged claims or the construction of any claim term and, thus, leaves undecided any remaining fact issues necessary to determine whether sufficient evidence supports Petitioners’ contentions by a preponderance of the evidence in the final written decision. See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (noting that “there is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial”) (quoting 35 U.S.C. § 314(a) and comparing id. § 316(e)).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioners assert the level of skill adopted in the Final Written Decision in IPR2019-01567, Google IPR at 8. See Pet. 9 n.3; Ex. 1003 ¶¶ 37–38. Our prior decision in IPR2019-01567 found that [a person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google IPR at 8. We apply this level of skill in the present case.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioners offer no proposed claim constructions and apply the constructions determined by the Board in the IPR2019-01567 Final Written Decision. Pet. 6–7. We adopt the claim constructions determinations in IPR2019-01567 provided in the table below. Claim Term IPR2019-01567 Construction “a data entry device of a handheld “a handheld terminal capable of terminal” (claim 20) data entry” “network connection” (claim 20) No construction required “graphical symbols” (claim 20)” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,292,870 - PTAB · Dec 21, 2021 · IPR2021-01125 · APJ Trevor M Jefferson · IPR · Institution
The Board instituted inter partes review of claims 2–4, 11–14, 22, 23, and 31–33 based on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denialNot reached
“discretion under Sections 314(a) and 325(d) as addressed in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 3 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”) and General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sep. 6, 2017) (precedential as to Section II.B.4.i) (“General Plastic”). See Pet. 87–90; see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 58 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf) (explaining” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION On this record, we are persuaded that Petitioners demonstrate a reasonable likelihood that they would prevail in showing the unpatentability of at least one of challenged claims 2–4, 11–14, 22, 23, and 31–33 of the ’870 patent. We, accordingly, institute an inter partes review of the challenged claims.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioners assert the level of skill adopted in the Final Written Decision in IPR2019-01567, Google IPR at 8. See Pet. 4 n.2; Ex. 1003 ¶¶ 37–38. Our prior decision in IPR2019-01567 found that [a person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google IPR at 8. We apply this level of skill in the present case.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Prior construction adoptedDecided for petitioner
“Petitioners offer no proposed claim constructions and apply the constructions determined by the Board in the IPR2019-01567 Final Written Decision. Pet. 3–4. Petitioners argue that the remaining terms are given their “ordinary and customary meaning as understood by a Person of Ordinary Skill in the Art as of the Critical Date . . . and the patent’s prosecution history.” Id. at 4 (citing Ex. 1003 ¶ 69; 37 C.F.R. §42.100(b)). We adopt the claim constructions determinations in IPR2019-01567 provided in the table below. Claim Term IPR2019-01567 Construction “a data entry device of a handheld “a handheld terminal capable of terminal” (claim 20) data entry” “network connection” (claim 20) No construction required “graphical symbols” (claim 20)” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,292,870 - PTAB · Dec 21, 2021 · IPR2021-01124 · APJ Trevor M Jefferson · IPR · Institution
The Board instituted IPR on claims 1, 5–10, 17–19, and 36–40, finding a reasonable likelihood that the asserted combinations would render the challenged claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denialNot reached
“Petitioners provide argument that the Board should not exercise its discretion under Sections 314(a) and 325(d) as addressed in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 3 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”) (see Pet. 85–86) and General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sep. 6, 2017) (precedential as to Section II.B.4.i) (“General Plastic”). See Pet. 84–86; see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 58 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf) (explaining that parties may wish to address the Board’s discretion to institute review in their papers). In addition, Petitioners filed a paper ranking the petitions filed challenging the ’870 patent and supporting the material differences among the petitions. Paper 2. Patent Owner did not file a preliminary response, and, accordingly, we do not reach or address Petitioners’ arguments on these issues.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioners assert the level of skill adopted in the Final Written Decision in IPR2019-01567, Google IPR at 8. See Pet. 7 n.2; Ex. 1003 ¶¶ 37–38. Our prior decision in IPR2019-01567 found that [a person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google IPR at 8. We apply this level of skill in the present case.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“We adopt the claim constructions determinations in IPR2019-01567 provided in the table below. Claim Term IPR2019-01567 Construction “a data entry device of a handheld “a handheld terminal capable of terminal” (claim 20) data entry” “network connection” (claim 20) No construction required “graphical symbols” (claim 20)” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION On this record, we are persuaded that Petitioners demonstrate a reasonable likelihood that they would prevail in showing the unpatentability of at least one of challenged claims 5–10, 17–19, and 36–40 of the ’870 patent. We, accordingly, institute an inter partes review of the challenged claims.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,292,870 - Platform Science, Inc. v. XRS CorporationRehearing deniedPTAB · Dec 14, 2021 · IPR2021-00325 · APJ Neil T Powell · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because the Petition did not show a reasonable likelihood that claims 1–24 were unpatentable as obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner has not offered persuasive evidence of any suggestion in the prior art that Nehowig’s onboard computer may be used with multiple different engine control modules that communicate data in different languages. Nor has Petitioner offered persuasive evidence of any suggestion in Nehowig that its engine control module uses more than one language. Contrarily, Nehowig suggests that the onboard computer and engine control module are vehicle specific without an indication that either needs to be adaptable for use in multiple different vehicles. . . . Additionally, regardless of whether Nehowig’s ECM uses one or multiple communication protocols, Petitioner does not provide persuasive evidence that it would have been obvious to modify Nehowig’s OBC 204 to meet limitation 1A.1. Fedorchuk discloses a device configured for connecting to and communicating with a diagnostic communication port of any of a variety of vehicles using any of a number of different possible protocols, enabled by interface device 10’s ability to detect the different possible protocols. . . . Petitioner does not provide persuasive evidence that Nehowig’s OBC 204 would be connected to any ECM without OBC 204 and the ECM already configured to communicate specifically with one another using one more predesignated protocols. . . . Petitioner does not provide persuasive evidence that Nehowig’s OBC 204 would not already have dedicated provisions for communicating with the ECM in the specific protocol(s) the ECM uses. Nehowig clearly discloses that OBC 204 already can communicate with Nehowig’s ECM, apparently using whatever protocol(s) the ECM uses. [Ex. 1005] ¶ 23. Accordingly, Petitioner has not shown sufficiently a reason that a person of ordinary skill in the art would have modified Nehowig’s OBC 204 to allow it to communicate with the ECM.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“misapprehended that the Petition identified a particular proposed combination. We acknowledged Petitioner’s proposed combination. See Dec. 25–26 (“Petitioner then describes a scenario, argued ‘[t]o achieve this goal [of not having the official enter the vehicle],’ where the official ‘will provide a cable to the driver to plug into the EOBR’ . . . . Based on this, Petitioner concludes ‘[t]herefore, the combined system of Nehowig and Fedorchuk implementing the DOT regulations discloses transferring the hours of service information from the OBC to a safety assurance officer’s computer via a data cable.’”). And, even had we overlooked or misapprehended it, the outcome would not change. Again, the basis for the Decision is that Petitioner failed to explain adequately and persuasively why a person of ordinary skill in the art would arrange the data flow in this manner. Dec. 27. In view of the foregoing, we are not persuaded of any error in our Decision that the Petition did not demonstrate a reasonable likelihood of establishing obviousness of limitation 1B.1. See Dec. 27–28. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated that we abused our discretion in not instituting an inter partes review of the challenged claims of the ’575 patent.” slip op. at 19
§ 103 obviousnessPatents in suitUS 10,255,575 - Meta Platforms, Inc. v. Wrinkl, Inc.InstitutedPTAB · Nov 23, 2021 · IPR2021-00883 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–9, 11–20, 22–28, and 30 based on the §103 ground over Ji, Sarafa, and Oh.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and the associated evidence, for the reasons described below, we institute inter partes review of all the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that [a] person of ordinary skill in the art (“POSA”) at the relevant time (early 2017) would have had a bachelor’s degree in computer science or information systems and at least two years’ industry experience in designing and/or implementing user interfaces, or equivalent education and experience. Cockburn Decl. ¶ 31. Alternatively, a skilled artisan could substitute 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16, 2013. Because the application from which the ’192 patent issued was filed after that date, with no benefit claim prior to that date, the AIA version of § 103 applies. 4 Ji et al., Chinese Patent Application Publication No. CN 105553834 A, published May 4, 2016 (Ex. 1005 (original publication), Ex. 1006 (certified English translation), “Ji”). 5 Sarafa et al., Published U.S. Patent Application No. 2018/0159812 A1, published June 7, 2018 (Ex. 1007, “Sarafa”). 6 Oh et al., Published U.S. Patent Application No. 2014/0143684 A1, published May 22, 2014 (Ex. 1008, “Oh”). directly relevant work experience with a higher level of education, e.g., an advanced degree such as a master’s of computer science. Id. Pet. 13. At this stage, Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. We find Petitioner’s proposed definition reasonable and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill set forth above, which also comports with the testimony of Dr. Cockburn (Ex. 1003 ¶ 31).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the reasons explained in Sections II.C and II.D, Petitioner has demonstrated a reasonable likelihood of establishing obviousness of the challenged claims, regardless of which party’s arguments about the meaning of “reference” are more correct. Accordingly, we need not construe expressly any claim language. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). At the same time, we find one aspect of Patent Owner’s arguments regarding the construction of “reference” warrants some discussion. To the extent that Patent Owner views the term “reference” as coextensive with the term “link,” we have reason to believe the scope of the term “reference” may differ from the scope of the term “link.” As Patent Owner observes, the ’192 patent discloses “[b]y ‘reference’ what is meant is that there is a connection between the second message and the first message. The connection may be for example a link.” Ex. 1001, 4:25–27; Prelim. Resp. 14. Even if this disclosure indicates that a link is a type of reference, it does not say that every reference is a link. Indeed, the ’192 patent’s disclosure of “a (reference) object . . . that links or otherwise references a chat message” may suggest the terms “link” and “reference” are not coextensive. Ex. 1001, 3:26–29. For example, this disclosure may suggest that a reference can be but need not be a link. The parties are asked to address this observation during the trial.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Additionally, we find Petitioner has shown sufficiently that a person of ordinary skill in the art would have had motivation and a reasonable expectation of success for modifying Ji’s system to use a reference in the manner disclosed by Sarafa. Pet. 14–18, 20–24, 50–53. Similarly, we find Petitioner has shown sufficiently that a person of ordinary skill in the art would have had motivation and a reasonable expectation of success for combining the cited portions of Oh’s disclosure with the disclosures of Ji and Sarafa. Id. at 18–20, 24–26, 38–44. At this stage, Patent Owner does not dispute that it would have been obvious to combine the cited portions of the disclosures of Ji, Sarafa, and Oh. Furthermore, we find a reasonable likelihood that Petitioner will establish that the allegedly obvious combination of Ji’s, Sarafa’s, and Oh’s disclosures would have resulted in a messaging system implementing a reference in all the ways recited in the challenged claims. At this stage, our review of the record does not reveal an apparent distinction between the challenged claims and a system that would have resulted from combining the disclosures of Ji, Sarafa, and Oh in the manner proposed by Petitioner. Here again, Patent Owner does not address Sarafa, Oh or the proposed combination of their disclosures with Ji; Patent Owner only argues Ji does not disclose a reference. In sum, based on the proposed combination of the references’ teachings, Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness assertions, even if Ji does not disclose a reference.” slip op. at 37
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,728,192 - Meta Platforms, Inc. v. Wrinkl, Inc.InstitutedPTAB · Nov 23, 2021 · IPR2021-00882 · APJ Neil T Powell · IPR · Institution
The Board instituted inter partes review of claims 1–23 on both obviousness grounds: Ji and Sarafa, and Ji, Sarafa, and Oh.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner has demonstrated a reasonable likelihood of establishing that each of the challenged claims would have been obvious over Ji and Sarafa. At this stage, Petitioner has provided sufficient arguments and evidence that (1) a person of ordinary skill in the art would have had motivation and a reasonable expectation of success for the proposed combination of the references’ disclosures and (2) the proposed combination would meet all limitations of each challenged claim.” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that [a] person of ordinary skill in the art (“POSA”) at the relevant time (early 2017) would have had a bachelor’s degree in computer science or information systems and at least two years’ industry experience in designing and/or implementing user interfaces, or equivalent education and experience. Cockburn Decl. ¶ 31. Alternatively, a skilled artisan could substitute directly relevant work experience with a higher level of education, e.g., an advanced degree such as a master’s of computer science. Id. Pet. 12–13. At this stage, Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. We find Petitioner’s proposed definition reasonable and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill set forth above, which also comports with the testimony of Dr. Cockburn (Ex. 1003 ¶ 31).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“For the reasons explained in Sections II.C and II.D, Petitioner has demonstrated a reasonable likelihood of establishing obviousness of the challenged claims, regardless of which party’s proposed construction of “link” is more accurate. Additionally, there is presently no dispute regarding the claim language “changing display of information.” Accordingly, we need not construe expressly any claim language. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner has demonstrated a reasonable likelihood of establishing that each of the challenged claims would have been obvious over Ji and Sarafa. At this stage, Petitioner has provided sufficient arguments and evidence that (1) a person of ordinary skill in the art would have had motivation and a reasonable expectation of success for the proposed combination of the references’ disclosures and (2) the proposed combination would meet all limitations of each challenged claim.” slip op. at 30
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,860,198 - Teradata Corporation v. SAP SENo claims unpatentablePTAB · Nov 22, 2021 · IPR2020-00943 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1–8, 10, 13–26, 28, and 31–37 were not shown unpatentable under the four §103 grounds because the prior art did not establish the required database-query semantic properties.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“In our Institution Decision, we found that Petitioner’s proposal was consistent with the level of ordinary skill in the art reflected by the prior art of record and preliminarily adopted Petitioner’s unopposed position. Inst. Dec. 27 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, we found that the phrase “at least” in Petitioner’s proposal created a vague, open-ended upper bound for the level of ordinary skill in the art, so we did not adopt that aspect of the proposal. Id. Patent Owner’s proposal reflects this finding. As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, and Patent Owner has adopted our finding, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a master’s degree in computer science, would have studied database implementation, and would have had two years’ experience working on database optimizer internals.”” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Accordingly, based upon the claim language and disclosure in the specification, we do not find support in the intrinsic record for Petitioner’s interpretation. We agree with Patent Owner that the “semantic properties of the database query” cannot be met solely by the semantic properties of the subquery within that database query, without consideration of the database query. We, therefore, interpret the “semantic properties of the database subquery is used. This does not exclude the semantic properties of the subquery, but cannot only include the semantic properties of the subquery.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“It is undisputed, and we agree, that Paulley “optimizes each subquery of the QOG independently.” Ex. 1003 ¶ 20 (“[t]he plan generation phase optimizes each subquery in the QOG independently”); e.g., Pet. 33; Pet. Reply 11, 19–20; PO Resp. 37, 39–40. Regarding this optimization, Petitioner’s expert, Dr. Srivastava, testifies that a person of ordinary skill in the art would understand that “in that optimization process for a particular subquery, you do not take the characteristics of other subqueries into account.” Ex. 2030, 88:22–89:3 (referring to Paulley ¶¶ 20–24) (cited in PO Resp. 41)). When asked whether Paulley “would consider other information of another query block, like a higher or lower level query block,” Dr. Srivastava testifies that “[f]rom the word ‘independently,’ no, there would – at least my sense is that they would not.” Id. at 89:16–22 (cited in PO Resp. 41). Dr. Srivastava’s understanding of Paulley’s disclosure is reflected in Petitioner’s analysis, and there is no dispute that Petitioner relies on semantic properties of the subquery to show that Paulley teaches the “semantic properties of the database query,” as recited in limitation 1.c. See Ex. 2030, 81:21–82:3, 83:4–11; Tr. 67:2–15; PO Resp. 41. As discussed above, our interpretation of the “semantic properties of the database query” is dispositive. Because Petitioner relies solely on the semantic properties of the subquery in Paulley to teach this limitation, we find that Petitioner has not shown by a preponderance of the evidence that Paulley teaches “the semantic properties of the database query,” as required in both independent claim 1 and independent claim 23. Accordingly, Petitioner has not shown by a preponderance of the evidence that that any claim of the ’179 patent would have been obvious over the combination of Paulley and Lucent ’144.” slip op. at 22
Patent outcomesUS 7,617,179 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,617,179 - PTAB · Nov 17, 2021 · IPR2021-00838 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–23, finding a reasonable likelihood that Petitioner would prevail on three §103 grounds involving Noda, Ozawa, and Maslyukov.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’977 Patent. Accordingly, we institute an inter partes review of claims 1–23 of the ’977 Patent on the grounds of unpatentability raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in Chemistry, Organic Chemistry, Chemical 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013. Because the challenged patent claims priority to an application filed before March 16, 2013, we refer to the pre-AIA version of § 103. 2 Japanese Unexamined Patent Application Publication No. 2005-23999, published September 8, 2005 (Ex. 1005, “Noda”) (Certified English translation provided as part of exhibit). 3 Japanese Unexamined Patent Application Publication No. 2003-36033, published February 7, 2003 (Ex. 1006, “Ozawa”) (Certified English translation provided as part of exhibit). 4 Soviet Patent No. 765281, published September 23, 1980 (Ex. 1007, “Maslyukov”) (Certified English translation provided as part of exhibit). 5 U.S. Patent No. 5,191,055, issued March 2, 1993 (Ex. 1010, “Kanemura”). 6 European Patent Specification No. EP 1 144 486 B1, published November 3, 2004 (Ex. 1012, “Colton”). Engineering, or an equivalent discipline, and at least three years of experience working with organic dyes in light-filtering applications.” Pet. 8 (citing Ex. 1003 ¶ 22). Patent Owner argues that the Petition should be denied under this level of skill in the art and reserves its right to challenge the same if this proceeding continues. Prelim. Resp. 8. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“need not substantially contain a rare earth metal” of claim 1, Petitioner asserts that this phrase “means that a substantial amount of a rare earth metal is not needed to achieve the ‘sharp absorption satisfying the following conditions (A).’” Pet. 8. Petitioner further asserts that “because the plastic spectacles lens has an organic dye that achieves the desired optical properties, “the lens does not need to have a ‘rare earth metal’ in any substantial amount.” Id. at 9 (citing Ex. 1003 ¶ 36). Petitioner additionally asserts that this would have been the reasonable and normal understanding of persons of ordinary skill in the art in considering the claim limitation in the context of the specification. Id. at 10. As discussed above, Patent Owner does not traverse the constructions proffered by Petitioner at this stage of the proceeding. Prelim. Resp. 8. At this stage of the proceeding, we find that Petitioner’s proposed construction is supported by the ’977 Patent specification, and adopt Petitioner’s proposed meaning of “whereby the plastic spectacles lens need not substantially contain a rare earth metal” for purposes of institution. We further note that, given the construction of the claim limitation as a “negative limitation,” and the stipulation “need not,” it is unclear whether the claim would exclude plastic spectacle lenses with no rare earth metal or composed of a large amount of rare earth metal. Given the disclosures of the references cited by Petitioner, we need not consider these alternative interpretations of the claim limitation.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that it is not necessary to provide an express interpretation of any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,506,977 - Avery Dennison Rfid Company / Avery Dennison Retail Information Services LLC v. Evrythng LimitedInstitution deniedPTAB · Nov 16, 2021 · IPR2021-00865 · APJ Sharon Fenick · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that claims 1–26 were unpatentable over the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. As Petitioner argues, Gentile does discuss the use of a scanner to add “additional information” to a unique record for an object, however, Gentile does not disclose the use of a scanner to read a unique identifier for an object during the creation of an association between the unique identifier and an object as required by the claims. Id. at 23–26; see Ex. 1004 ¶¶ 59–61, 65–72. Gentile discloses that “[a]t the time and “stored in product information database 108.” Ex. 1004 ¶¶ 59, 65. Gentile also discloses that at the time the product record associated with the identifier is stored, additional information can be added that could come from a scanning device. Id. ¶¶ 66–67. However, this “additional information” is disclosed as information in addition to the unique identifier. Id. ¶ 67. It is only after the initial association has been created that a scanner is disclosed in Gentile as being used to scan the unique identification tag on a product. Id. ¶¶ 61, 69–70. The claim requires that a scan be performed to determine an identifier for an object, “and then” that the identifier is used to add the object to the object information service, but this is not disclosed by Gentile’s process of creating an association between a unique product identifier and a database record (as disclosed in Figure 2 of Gentile and related disclosure) or by Gentile’s process of scanning a unique product identifier to access an already extant record (as disclosed in Figure 3 of Gentile and related disclosure). Petitioner’s showing relies on elements from each of these two separate processes, for example relying on Gentile’s disclosures of a device scanning a QR code on an object to obtain the identifier (Pet. 42–44) for step (b) and then on the disclosures relating to the initial association of the identifier with a database record for step (c) (Pet. 45–47).” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“E. Asserted Obviousness of Claims 1–11, 13–18, and 21–26 over Gentile and Massé Petitioner’s arguments regarding the unpatentability of claims 1–11, 13–18, and 21–26 rely on the arguments made with respect to anticipation of claim 1 by Gentile. Pet. 58–62. Therefore, for the same reasons, we determine that Petitioner has not shown a reasonable likelihood of prevailing in showing claims 1–11, 13–18, and 21–26 would have been obvious over Gentile and Massé. F. Asserted Obviousness of Claims 1–11, 13–18, and 20–26 over Gentile and Harris Petitioner’s arguments regarding the unpatentability of claims 1–11, 13–18, and 20–26 rely on the arguments made with respect to anticipation of claim 1 by Gentile. Pet. 62–74. Petitioner does describe Harris as teaching a portion of step (c) of claim 1, however, Petitioner’s argument is that Harris teaches providing “product updates” in order to “update” the records in the ¶¶ 343–345). Petitioner argues that a product ID is included in such updates, and that therefore, “the product updates of Harris include ‘a unique identifier’ and are provided to the ‘product identification database’” via an API. Id. at 69–70. However, Petitioner does not provide any teaching that addresses the deficiency noted in the ground with respect to anticipation over Gentile – and there is no discussion of any teaching of Harris which, alone or in combination with Gentile, would describe the required determination of an identifier for an object that is unique within the information service, which is obtained at a device and then used to add an object to the object information service so as to be accessible using the unique identifier. For this reason, and for the reasons described with respect to the anticipation of claim 1 by Gentile, we determine that Petitioner has not shown a reasonable likelihood of prevailing in showing claims 1–11, 13–18, and 21–26 would have been obvious over Gentile and Harris. G. Asserted Obviousness over Combinations including Boncyk Relying on arguments regarding anticipation by Gentile and obviousness over Gentile and Massé or Gentile and Harris, Petitioner argues that certain claims are unpatentable over a combination of Gentile and Boncyk (claims 1–11, 13–18, and 21–26), Gentile, Massé, and Boncyk (claims 1–11, 13–18, and 20–26), and Gentile, Harris, and Boncyk. Pet. 74– 80. These arguments incorporate by reference the prior arguments, describing a different location for the identification mechanism of step (b) of claim 1. Id. Again, no teaching is identified that addresses the deficiency noted in the grounds upon which these arguments rely. anticipation by Gentile and obviousness over Gentile and Massé or Gentile and Harris, we determine that Petitioner has not shown a reasonable likelihood of prevailing in showing claims 1–11, 13–18, and 21–26 would have been obvious over Gentile and Boncyk, or that claims 1–11, 13–18, and 20–26) would have been obvious over Gentile, Massé, and Boncyk or over Gentile, Harris, and Boncyk. H. Asserted Obviousness over Combinations including Davis Relying on arguments regarding anticipation by Gentile and obviousness over Gentile and Massé or Gentile and Harris, Petitioner argues that claims 1–26 are unpatentable over a combination of Gentile and Boncyk, Gentile, Massé, and Boncyk, and Gentile, Harris, and Boncyk. Pet. 80–85. These arguments incorporate by reference the prior arguments, substituting an online identification mechanism and the generation of new identifiers for objects “on the fly” when identifying an object. Pet. 80–83. No teaching is identified that addresses the deficiency noted in the grounds upon which these arguments rely. Therefore, for the reasons described with respect to the showings of anticipation by Gentile and obviousness over Gentile and Massé or Gentile and Harris, we determine that Petitioner has not shown a reasonable likelihood of prevailing in showing claims 1–26 would have been obvious over Gentile and Davis, over Gentile, Massé, and Davis, or over Gentile, Harris, and Davis.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the time of the effective filing date, a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, electrical engineering, or a related field of study, and at least three years of experience with online web services, database systems, and/or related software applications.” Pet. 21–22 (citing Ex. 1003 at ¶ 127). Petitioner adds, “[t]his is an approximation and additional education (e.g., masters/doctorate degree(s)) could make up for less practical experience (and vice versa). Id. Patent Owner does not present a different proposal for level of skill or comment on Petitioner’s proposal. See Prelim. Resp. For purposes of this Decision on Institution, we adopt Petitioner’s proposed level of ordinary skill in the art. This level of skill comports with the teachings of the ’595 patent and the asserted prior art.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,582,595
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.