• Haag-Streit AG v. Eidolon Optical, LLCNo claims unpatentable
  PTAB · Dec 19, 2019 · IPR2018-01311 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1, 5, 6, 8–10, 14–16, and 19 were not shown unpatentable because the cited references did not disclose an LED itself generating blue light energy.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating that it “appear[ed] consistent with the record at th[at] stage of the proceeding.” Dec. Inst. 6. Patent Owner does not address or dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See generally PO Resp.; Sur-reply. Petitioner did not further address this issue in the Reply. See generally Pet. Reply. We continue to apply Petitioner’s proposed level of ordinary skill in the art in the analysis below.” slip op. at 7

  • ExcludeOther

    “As discussed above (see supra § II.C.3.a), to resolve the dispute between the parties here, we need not make a determination one way or the other regarding Patent Owner’s assertion as to the specific amount of power necessary to cause sodium fluorescein to fluoresce. Instead, the outcome here follows from the determination that Petitioner (who has the overall burden of persuasion as to unpatentability) has not persuasively established the existence, as of February 5, 1992, of a blue LED having sufficient power output to cause sodium fluorescein to fluoresce. Accordingly, we dismiss Petitioner’s motion as to Exhibit 2014 as moot because we need not rely on that exhibit (or the specific statement highlighted by Petitioner) in this Decision. See TPG 79–80.” slip op. at 43

  • Strike new argumentNew argument disregardedDecided for patent owner

    “commercially available by CREE, Inc. in 1992” and asserts that “Patent Owner’s arguments are wrong in that blue LEDs having sufficient output power to cause sodium fluorescein to fluoresce existed in 1992 at the time of Longobardi.” Pet. Reply 28, 32. When asked, during the oral hearing, for evidentiary support for these statements, Petitioner attempted to rely on Exhibit 2024. See Tr. 13:14–14:18 (counsel for Petitioner generally discussing Exhibit 2024 as potential support). That exhibit, however, was not discussed or relied on in either of Petitioner’s briefs. Id. at 38:22–39:20 (counsel for Petitioner discussing Exhibit 2024, but also acknowledging that it was not cited in either brief). We will not further consider Petitioner’s untimely argument as to Exhibit 2024. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was obligated to dismiss [the petitioner’s] untimely argument . . . raised for the first time during oral argument”); Patent Trial and Appeal Board Consolidated Trial Practice Guide (“TPG”) 85–86 (Nov. 2019) (discussing how, at the oral hearing, a party “may only present arguments relied upon in the papers previously submitted”), available at https://www.uspto.gov/sites/default/ files/documents/tpgnov.pdf. Petitioner did not identify any other record support for the two assertions as to the alleged state of the art in 1992.” slip op. at 30

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “one of ordinary skill in the art would have understood Longobardi as implicitly disclosing the presence of a blue LED is that, as argued by Patent Owner, none of the declaration testimony of Dr. Jiao supports that position. See PO Sur-reply 5 (“Petitioner lacks evidence that Longobardi implicitly or inherently teaches an LED sufficient to generate blue light energy itself as required by claim 1. Petitioner’s expert does not testify as to this fact.” (emphasis added)), 7 (“Petitioner fails to provide any expert testimony . . . that Longobardi teaches a blue light energy created by the LED.”). Indeed, in the entire section of the Reply Brief discussing why Longobardi allegedly implicitly discloses a blue LED, Petitioner never cites to Dr. Jiao’s testimony as evidence of how one of ordinary skill in the art would have understood the highlighted passages. See Pet. Reply 18–22; see also PO Sur-reply 14 (“Petitioner’s attorney arguments that Longobardi implicitly discloses the limitation of at least one LED sufficient to generate blue light energy itself as required by claim 1 are unreasonable.”). “Attorney argument is not evidence.” Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017); see also Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (citing this aspect of Icon Health in the context of an appeal from an inter partes review). In addition, the testimony in Dr. Jiao’s Reply Declaration that is cited in Petitioner’s Reply (in the part discussing the state of the art of blue LEDs “[i]n 1992” (Pet. Reply 26)) does not actually support Petitioner on the ultimate factual issue here. See Pet. Reply 26–32 (citing Jiao Reply. Decl. ¶¶ 11–21). Instead, most of Dr. Jiao’s testimony in these paragraphs summarizes and addresses Dr. Lebby’s position on the 1-milliwatt issue (discussing Exhibits 1021 and 1022). See Jiao Reply Decl. ¶¶ 11–20. After that discussion, Dr. Jiao concludes with a paragraph taking the position that one of ordinary skill in the art “at the time of the invention would have found that Longobardi teaches and suggests the use of a blue LED having sufficient power to cause sodium fluorescein to fluoresce.” Id. ¶ 21. None of Dr. Jiao’s testimony, however, actually addresses the state of the art of blue LEDs in 1992, which, as acknowledged by Petitioner, is the relevant point in time to assess the alleged implicit disclosures in Longobardi.” slip op. at 27

  Patent outcomesUS 6,547,394 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,547,394
• Microsoft Corporation v. Ipa Technologies Inc.Institution denied
  PTAB · Nov 7, 2019 · IPR2019-00838 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution of IPR on claims 1, 13–18, 22, and 33–38 under § 325(d) because the same or substantially the same prior art had been presented to the Office.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “In evaluating whether to deny institution on the basis of § 325(d) because the same or substantially the same prior art or arguments previously were presented to the Office, the Board considers the following non-exclusive factors: (1) the similarities and material differences between the asserted art and the prior art involved during examination; (2) the cumulative nature of the asserted art and the prior art evaluated during examination; (3) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (4) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (5) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (6) the extent to which additional evidence and facts presented in the” slip op. at 13

  Discretionary denial
  Patents in suitUS 7,036,128
• Apple Inc. v. Universal Secure Registry, LLCNo claims unpatentable
  PTAB · Nov 5, 2019 · IPR2018-00812 · APJ Jason W Melvin · IPR · Final written decision

  The Board found claims 1–3, 16, 21–24, 37, and 38 not shown unpatentable over Reber and Franklin because the combination did not establish the claimed access restrictions and information handling.

  RulingsFinal written decision

  • Skill levelOther

    “invention for the ’539 patent “would have a Bachelor’s Degree in electrical engineering, computer science, or a related scientific field, and approximately two years of work experience in the computer science field including, for example, operating systems, database management, encryption, security algorithms, and secure transaction systems, though additional education can substitute for less work experience and vice versa.” Pet. 10 (citing Ex. 1102 ¶¶ 61–62). Patent Owner submits that the level of skill would involve “a Bachelor of Science degree in electrical engineering and/or computer science, and three years of work or research experience in the fields of secure transactions and encryption, or a Master’s degree in electrical engineering and/or computer science and two years of work or research experience in related fields.” PO Resp. 17 (citing Ex. 2018 ¶¶ 16– 20). Patent Owner agrees that its “description of the level of ordinary skill in the art is essentially the same as that of the Petitioner, except that Petitioner’s description requires two years of work or research experience (as compared to three years).” Id. at 17–18. We do not understand any of the parties’ disputes to turn on a precise definition of the level of skill in the art and apply the level of skill as defined by the parties.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “To support our analysis of the disputed issues below, we construe “account identifying information” and “third party.” We conclude that there is no need to construe any other term to resolve the issues in this decision. 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).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We agree the claim language supports that the separately recited “third party” must be different from the claimed “provider” and “entity.” As to the secure registry itself, we agree further with Patent Owner that the claim language mandates that the “third party” cannot be the secure registry system. The claims recite that the secure-registry processor is configured such that “account identifying information is provided to a third party.” By using “provided,” the claim instructs that the secure registry must send account-identifying information somewhere, not simply perform an additional operation on the information.5 Patent Owner further focuses on the party at issue. According to Patent Owner, the “third party” should be “a party other than one of these other parties already recited in the claims.” PO Resp. 24. Although the claims recite the “secure registry” as a system, as opposed to the “provider” and “entity,” which it recites as “parties,” we agree with Patent Owner that for a third party to be distinct from the secure registry, it should be distinct from whomever operates the secure registry. See id. at 24–25, 47–48 n.8; infra at 21. Accordingly, we construe “third party” as “a party that is not the secure registry, the entity, or the provider.”” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “The Petition states that it would have been obvious to perform merchant validation at the processor and database, but gives no reason for making that change. See Pet. 37. Instead, the Petition states a skilled artisan “would have applied the known techniques of Franklin to improve the security of the Reber system” and that doing so would have reduced fraud by merchants. Id. (citing Ex. 1102 ¶ 114). As explained, “the known techniques of Franklin” were to perform merchant validation at the merchant’s bank, not at the secure registry. Ex. 1132, 11:43–46 (“The acquiring bank validates the authorization request by verifying that the merchant is a valid merchant and that the credit card number represents a valid number.”). Thus, a reason to use Franklin’s techniques does not further justify modifying Franklin’s teaching to perform validation at the secure registry as claimed. Petitioner attempts to justify the combination in the Reply, arguing that, in Franklin, “it would have been obvious simply to perform the merchant validation procedure at the issuing bank, depending on the needs of a particular implementation (for example, where the issuing bank and the acquiring bank are the same).” Pet. Reply 12–13. Petitioner reasons that “organizing the system in this way would . . . increase efficiency by reducing the overall number of computations (e.g., conducting only one validation/compliance operation and not two separate operations at two separate places).” Id. at 13. Those statements serve to highlight the deficiency of the Petition. Petitioner’s arguments in the Reply do not respond to Patent Owner, other than attempting to fill in a gap in the we conclude Petitioner’s showing regarding access restrictions at the secure registry is inadequate regardless of the construction of “access restrictions for the provider to secure data for the entity.” Petition. We agree with Patent Owner that Petitioner’s Reply arguments go too far beyond those of the Petition. See PO Sur-reply 15–16; 37 C.F.R. § 42.23(b) (2017); Trial Practice Guide Update 14–15 (Aug. 2018), https://go.usa.gov/xU7GP (“[A] reply . . . that raises a new issue or belatedly presents evidence may not be considered. . . . Examples of new issues are new theories or arguments necessary to make out petitioner’s case-in-chief . . . , such as a newly raised rationale to combine . . . that was not expressed in the petition.”); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (holding that the Board did not err in excluding a reply as improper under 37 C.F.R. § 42.23(b) because Petitioner relied on a new rationale to combine). Petitioner failed to make an adequate showing in the Petition regarding a plain requirement of the claims. The Petition identifies no prior-art disclosure that taught or suggested to skilled artisans to implement access restrictions at the secure registry, and provides insufficient reasons why a skilled artisan would have had reason to do so. Thus, Petitioner fails to show that challenged claims 1, 22, or 37” slip op. at 13

  Patent outcomesUS 8,856,539 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,856,539
• BMW Of North America, LLC v. Carrum Technologies, LLCInstitution denied
  PTAB · Nov 5, 2019 · IPR2019-00928 · APJ Lynne H Browne · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, relying on Winner’s existing methods for detecting turns.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless 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.”” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “6. Analysis We agree with Patent Owner. As Winner discloses methods for identifying when a vehicle has entered a curve (measuring transverse acceleration and using the forward facing radar), it is not evident why one of ordinary skill in the art would have looked to Fukada to obtain additional Petitioner is relying on alleged AAPA7 to provide reasoning in support of the proposed combination, we note that identification of a problem “is not an admission that this problem was known or appreciated by others.” Endo Pharm. Inc. v. Actavis LLC, 922 F.3d 1365, 1376 (Fed. Cir. 2019) (quoting Innogenics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008))). Thus, we are not persuaded by Petitioner’s argument.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “In view of our analysis discussed below, we do not discern a need to construe explicitly any claim term of the ’416 patent, because construing these terms is not necessary for us to assess the asserted grounds of unpatentability. 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.”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 9

  • Skill levelSkill level petitioner adoptedOther

    “A person of ordinary skill in the art (“POSITA”) at the time the ’416 patent was filed would have a bachelor’s degree in electrical engineering, computer engineering, or a related engineering discipline and two to three years of industry experience in the field of automotive control systems or automotive engineering, or equivalent experience, education, or both.” Pet. 9 (citing Ex. 1004 ¶ 22). Petitioner asserts further that “[t]he person would also have knowledge or familiarity with in-vehicle computing.” Id. Patent Owner “does not dispute Petitioner’s definition of a POSA.” Prelim. Resp. 2 (citing Pet. 9). Accordingly, for the purposes of this Decision, we 6 We note that at this time no objective evidence of nonobviousness has been presented by Patent Owner. consistent with the evidence at this stage of the proceeding, including the ’416 patent and the asserted prior art.” slip op. at 7

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,925,416
• Google LLC v. Ipa Technologies Inc.Institution denied
  PTAB · Oct 16, 2019 · IPR2019-00736 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that the asserted combinations taught the claimed conversational protocol.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’128 patent is unpatentable. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • BurdenDenied

    “event types” as recited in claim 1. See Pet. 12–13. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim. Petitioner’s evidence and argument fails to persuasively and adequately explain how the speech acts or performatives as described in Nodine are the events recited in the challenged claims. Although both Finin and Bayardo define and disclose performatives (Ex. 1016, 297; Ex. 1017, 197), Petitioner does not discuss these disclosures or explain sufficiently how the speech acts/performatives in Nodine, Finin, and Bayardo alone or combination teach the “layer of conversational protocol defined by event types and parameter lists associated with one or more events, and wherein the parameter lists further refine the one or more events” limitation of claim 22 and 45. Petitioner asserts that “Nodine in combination with Steiner and Finin discloses or suggests this limitation” of claim 45 (Pet. 49), but Petitioner does not identify adequately any reliance on Steiner for this limitation (id. at 28–33, 49). slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “in the art at the time of the invention of the ’128 patent would have had at least a Bachelor’s degree in computer science, electrical engineering, or a similar discipline, and one to two years of work experience in networked computer systems or a related area. Ex. 1002 ¶ 14; Pet. 4. At this stage of the proceeding, Patent Owner does not dispute Dr. Olsen’s assessment of the level of ordinary skill in the art. Prelim. Resp. 6.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “The parties do not propose a construction for any claim term. Petitioner avers that no express constructions are required. Pet. 12–13. Patent Owner argues that Petitioner’s failure to set forth its construction of any term is reason to deny the Petition, and Patent Owner does not propose a construction for any term. Prelim. Resp. 6. On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,036,128
• Google LLC v. Ipa Technologies Inc.Institution denied
  PTAB · Oct 16, 2019 · IPR2019-00735 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that the asserted combinations rendered claim 1 and its dependent claims obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “event types” as recited in claim 1. See Pet. 13–14. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim. slip op. at 14

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “35 U.S.C. § 325(d) because (1) it relies on similar art that applicant overcame during prosecution of the parent ’115 patent, and (2) it is duplicative of the co-pending petition in IPR2019-00733. Prelim. Resp. 48– 61. Because, for reasons discussed below, we deny the Petition on other grounds, we need not determine whether it also would be appropriate to deny the Petition pursuant to our discretion under § 325(d).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “The parties do not propose a construction for any claim term. Petitioner avers that no express constructions are required. Pet. 14. Patent Owner argues that Petitioner’s failure to set forth its construction of any term is reason to deny the Petition, and Patent Owner does not propose a construction for any term. Prelim. Resp. 6. On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Pet. 25. Petitioner’s arguments offer conclusory statements that equate Nodine’s speech act/performative types to “event types” recited in the challenged claims, and the parameters associated with Nodine’s speech act/performatives with “one or more of the events” recited in the challenged claims. See id. Petitioner argues that Nodine thus discloses the conversational protocols defined by events. Id.; see Ex. 1002 ¶¶ 106–107. In sum, Petitioner maps Nodine’s “speech acts” or “performatives” to the “events” recited in claim 1. We note that Petitioner does not offer a construction for “event” or “event types” as recited in claim 1. See Pet. 13–14. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim.” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,036,128
• United Fire Protection Corp. v. Engineered Corrosion Solutions, LLCRehearing denied
  PTAB · Oct 10, 2019 · IPR2018-00991 · APJ Patrick R Scanlon · IPR · Rehearing

  The Board denied rehearing and left in place its discretionary denial of institution under § 314(a), concluding that the General Plastic factors supported denial.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for patent owner

    “between Petitioner and the Prior Petitioners. Unlike the Valve case, however, the majority opinion did not find that the first factor favors denying institution. Rather, the majority opinion determined that the first factor weighs against exercising discretion to deny institution, but only moderately because of the complete overlap in the challenged claims between the Petition and the petition in the 136 IPR, as well as the overlap of many issues and arguments raised by the Petition and the 136 IPR petition. Dec. 12–13. Petitioner’s arguments do not establish that we overlooked or misapprehended anything, or used unreasonable judgment, in determining that the first factor weighs only moderately against exercising discretion to deny institution. Furthermore, even if we were to determine that the first factor heavily weighs against exercising discretion to deny institution, as advocated by Petitioner, this determination would not alter our overall weighing of the General Plastic factors.” slip op. at 8

  Discretionary denial
  Patents in suitUS 9,144,700
• Apple Inc. / Visa Inc. et al. v. Universal Secure Registry, LLCNo claims unpatentable
  PTAB · Oct 7, 2019 · IPR2018-00810 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26, 27, 30, 31, and 34 were not shown unpatentable under § 103 over Maritzen, Jakobsson, and Niwa.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factual indicators of the level of ordinary skill in the art include “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros., Inc. v. United States, 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). The parties’ respective proposals are substantially similar such that there is no apparent dispute between the parties. Also, based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Thus, for the purposes of this Decision, we adopt Petitioner’s definition. We note, however, that our findings in this proceeding would not differ under Patent Owner’s proposed definition.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We agree with Petitioner that the Specification identifies fingerprint, voice print, signature, iris or facial scan, DNA analysis, and possibly a picture of a person as examples of biometric information. Furthermore, we credit Dr. Shoup’s testimony that biometric information falls into the category of “things a person is.” See Ex. 1002 ¶ 33. Therefore, in the context of the claims and the Specification of the ’826 patent, we construe the term “biometric information” to mean “information about a user’s physical characteristics, such as fingerprint, voice print, signature, iris or facial scan, DNA analysis, or personal photograph.”” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree Maritzen does not disclose expressly that PTD 100 is a handheld device. The only disclosure from Maritzen cited in the Petition, ¶ 63, describes the architecture for PTD 100 but makes no mention that PTD 100 is a handheld device. Ex. 1004 ¶ 63. The Petition does not direct us to any other disclosure in Maritzen that explicitly describes any of the disclosed PTD embodiments as being handheld, and we are not aware of any such disclosure. Furthermore, the testimony of Dr. Shoup cited by Petitioner merely repeats the same assertion that Maritzen’s PTD 100 is the first handheld device without providing any support or explanation for this assertion, other than citing the same ¶ 63 of Maritzen. Ex. 1002 ¶ 49.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “We agree with Patent Owner. Maritzen discloses that clearing house 130 verifies that the biometric key (transmitted by PTD 100) is valid by comparing the biometric key to a known biometric key maintained within the clearing house. Ex. 1004 ¶ 48; see also id. at 81 (“Clearing house 130 also validates biometric key 350 against pre-established biometric key 950.”). Maritzen also discloses that “[p]rivacy card 110 only transmits the biometric key. The biometric information identifying the user is not transmitted at any time.” Id. ¶ 44. This disclosure indicates that the biometric key does not contain biometric information. In other words, the biometric key is something different than biometric information, which we have construed to mean “information about a user’s physical characteristics, such as fingerprint, voice print, signature, iris or facial scan, DNA analysis, or personal photograph.” See supra § III.C. Thus, we find that one of ordinary skill in the art would not consider replacing the known biometric key in clearing house 103 with second biometric information as taught by Jakobsson because comparing the biometric key to biometric information, rather than the known biometric key, would not be effective to verify the biometric key. In other words, because the biometric key does not contain biometric information, it could not be compared meaningfully to the second biometric information.” slip op. at 23

  Patent outcomesUS 9,100,826 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,100,826
• Garmin International, Inc. / Garmin USA, Inc. v. Logantree, LPNo claims unpatentable
  PTAB · Aug 28, 2019 · IPR2018-00565 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1, 2, 4, 5, 7–14, 56–58, 140, 144, and 146 were not shown unpatentable under § 103 over the instituted combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ respective proposals are substantially similar such that there is no apparent dispute between the parties. Also, based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Thus, for the purposes of this Decision, we adopt Petitioner’s definition. We note, however, that our findings in this proceeding would not differ under Patent Owner’s proposed definition.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “The ’576 patent does not include an explicit definition for “interpreting.” See generally Ex. 1001. We note, however, that claims 1 and 13 recite “a “microprocessor capable of . . . interpreting . . . said movement data.” With this language in mind, the ’576 patent discloses that the device “employs a user-programmable microprocessor which receives, interprets, stores and responds to the movement data.” Id. at 2:13–15; see also id. at Abstract (making substantially similar statement). These disclosures indicate that “interpreting” is distinct from receiving, storing, and responding to the data, and are consistent with claims 1 and 13, which recite “interpreting” distinctly from receiving, storing, and responding. Furthermore, the ’576 patent discloses that microprocessor 32 “receives the signals generated by the movement sensor 30 for analysis and subsequent processing” and “analyzes and responds to the movement data signals from the sensor 30.” Id. at 4:52–57 (emphases added). Therefore, in the context of the claims and the Specification of the ’576 patent, we determine that the ordinary and customary meaning of the phrase “interpreting . . . said movement data” is “analyzing the movement data.”” slip op. at 11

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “We note, however, that Federal Circuit has recently held that “the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.” Celgene Corp. v. Peter, No. 2018-1167, 2019 WL 3418549, at *16 (Fed. Cir. July 30, 2019). The Federal Circuit addressed arguments made under both the due process and takings clauses of the Fifth Amendment in so holding. Id. at *11–16. We discern no other argument from Patent Owner in this case other than those expressly rejected by the Federal Circuit. Thus, in view of Celgene, we find Patent Owner’s argument unpersuasive.” slip op. at 13

  • BurdenNot shown unpatentable

    “On balance, we are not persuaded on the full record that Stewart discloses that processor 52 controls the comparing function. Accordingly, we determine that Petitioner has not met its burden of establishing that Stewart’s processor 52 interprets movement data. Regarding the limitation of the microprocessor being capable of “detecting a first user-defined event based on the movement data and at least one of the user-defined operational parameters regarding the movement data,” Petitioner asserts that Stewart discloses a processor detecting an event, such as a spearing movement in football, based on acceleration data and a defined/predetermined threshold. Pet. 25 (citing Ex. 1004, 5:4–7, 14:6–11). Petitioner also asserts that it would have been obvious to one of ordinary skill in the art to modify Stewart’s system to enable user adjustment of the predetermined threshold to accommodate different users as taught by Rush. Id. at 25 (citing Ex. 1010 ¶¶ 59). As an initial point, we note that Petitioner relies on the same disclosures from Stewart (i.e., Ex. 1004, 5:4–7, 14:6–11) for disclosing both interpreting data and detecting an event, but does not provide a sufficient explanation of how these same disclosures teach two different claim limitations. Moreover, we disagree that Stewart expressly discloses that processor 52 detects an event such as spearing. Stewart merely discloses that it may be “possible to determine if a football player is improperly using his helmet (e.g., illegal spearing)” without specifying that such determination is performed by processor 52. See Ex. 1004, 14:4–14). As discussed above, Stewart’s disclosure with respect to the accelerometer responses exceeding a predetermined threshold indicates that this processing is accomplished by a receiver remote from the self-contained helmet system and, thus, is not performed by the processor. See id. at 14:6–9 (disclosing that when correlating accelerometer responses “with desirable punches exceeding a predetermined threshold,” the responses are “processed and scored at a ringside receiver”). For these reasons, we determine that Petitioner has not shown that the combination of Stewart and Rush teaches or suggests the detecting limitation of claim 1.” slip op. at 21

  Patent outcomesUS 6,059,576 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,059,576
• Garmin International, Inc. / Garmin USA, Inc. v. Logantree, LPNo claims unpatentable
  PTAB · Aug 28, 2019 · IPR2018-00564 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 20–26, 29, 104–107, 110, 113–122, 126–128, 134–138, and 175 were not shown unpatentable because the asserted combinations failed to teach claim 20’s interpreting and detecting limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factual indicators of the level of ordinary skill in the art include “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros., Inc. v. U.S., 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). The parties’ respective proposals are substantially similar such that there is no apparent dispute between the parties. Also, based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Thus, for the purposes of this Decision, we adopt Petitioner’s definition. We note, however, that our findings in this proceeding would not differ under Patent Owner’s proposed definition.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “The ’576 patent does not include an explicit definition for “interpreting.” See generally Ex. 1001. We note, however, that claim 20 recites “interpreting, using a microprocessor.” With this language in mind, the ’576 patent discloses that the device “employs a user-programmable microprocessor which receives, interprets, stores and responds to the movement data.” Id. at 2:13–15; see also id. at Abstract (making substantially similar statement). These disclosures indicate that “interpreting” is distinct from receiving, storing, and responding to the data. Furthermore, the ’576 patent discloses that microprocessor 32 “receives the signals generated by the movement sensor 30 for analysis and subsequent processing” and “analyzes and responds to the movement data signals from the sensor 30.” Id. at 4:52–57 (emphases added). Therefore, in the context of the Specification of the ’576 patent, we determine that the ordinary and customary meaning of the phrase “interpreting . . . said physical movement data” is “analyzing the physical movement data.”” slip op. at 11

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “In general, “administrative agencies do not have jurisdiction to decide the constitutionality of congressional enactments,” and “[a] finding that the agency lacks jurisdiction to decide constitutional questions is especially likely when the constitutional claim asks the agency to act contrary to its statutory charter.” Riggin v. Office of Senate Fair Emp’t Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (“[T]he Board has no authority . . . to declare provisions of the Trademark Act unconstitutional.”), rev’d on other grounds, 284 F. Supp. 2d 96 (D.D.C. 2003). But see Am. Express Co. v. Lunenfeld, Case CBM2014-00050, slip op. at 9–10 (PTAB May 22, 2015) (Paper 51) (“[F]or the reasons articulated in Patlex [Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985)], we conclude that covered business method patent reviews, like reexamination proceedings, comply with the Seventh Amendment.”). We note, however, that Federal Circuit has recently held that “the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.” Celgene Corp. v. Peter, No. 2018-1167, 2019 WL 3418549, at *16 (Fed. Cir. July 30, 2019). The Federal Circuit addressed arguments made under both the due process and takings clauses of the Fifth Amendment in so holding. Id. at *11–16. We discern no other argument from Patent Owner in this case other than those expressly rejected by the Federal Circuit. Thus, in view of Celgene, we find Patent Owner’s argument unpersuasive.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “detecting limitation”), Petitioner asserts that Stewart discloses a processor detecting an event, such as a spearing movement in football, based on acceleration data and a predetermined threshold. Pet. 22–23 (citing Ex. 1004, 5:4–7, 14:6–11). Noting that Stewart does not disclose expressly that the predetermined threshold is set by user commands, Petitioner argues that Rush discloses a monitoring device that detects axial loads, such as a spearing movement, in which the threshold value for detecting the spearing movement can be adjustable to accommodate users of different ages and sizes. Id. at 23 (citing Ex. 1006, 3:13–18, 9:48–50, 9:54–58). Thus, according to Petitioner, it would have been obvious to one of ordinary skill in the art to modify Stewart’s system to enable user adjustment of the predetermined threshold to accommodate different users as taught by Rush. Id. at 23–24 (citing Ex. 1010 ¶¶ 61, 62). In this analysis, Petitioner maps Stewart’s predetermined threshold to the recited user-defined operational parameters. This claim limitation, however, recites at least one of the user-defined operational parameters. In other words, the detection of a first user-defined event must be based on at least one of the same user-defined operational parameters upon which the interpretation of the movement data was based. But, as discussed above, Petitioner maps the user-defined operational parameters of the interpreting limitation to Stewart’s user-defined time commands that cause the processor to start and stop the recording of movement data. Pet. 20. By inconsistently relying on different parameters in Stewart to satisfy the claimed user-defined operational parameters, Petitioner has not met its burden of establishing that the combination of Stewart and Rush meets the subject matter of claim 20. In addition, we disagree that Stewart expressly discloses that processor 52 detects an event such as spearing. Stewart merely discloses that it may be “possible to determine if a football player is improperly using his helmet (e.g., illegal spearing)” without specifying that such determination is performed by processor 52. See Ex. 1004, 14:4–14. Furthermore, as discussed above, Stewart’s disclosure with respect to the accelerometer responses exceeding a predetermined threshold indicates that this processing is accomplished by a receiver remote from the self-contained helmet system and, thus, is not performed by the processor. See id. at 14:6– 9 (disclosing that when correlating accelerometer responses “with desirable punches exceeding a predetermined threshold,” the responses are “processed and scored at a ringside receiver”). For these reasons, we determine that Petitioner has not shown that Stewart teaches or suggests the detecting limitation of claim 20.” slip op. at 23

  Patent outcomesUS 6,059,576 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,059,576

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.