• Quasar Science LLC v. Colt International Clothing, Inc. D/B/A Colt LedNo claims unpatentable
  PTAB · Oct 7, 2024 · IPR2023-00614 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1–3, 6–18, 21–24, and 27–29 were not shown unpatentable under either § 103 ground because the evidence did not establish all limitations or a reason to combine the cited teachings.

  RulingsFinal written decision

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

    “Claim Construction In an inter partes review, we construe a claim term “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b) (2020). Under that standard, the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). The parties agree that, for purposes of this Decision, no claim term needs specific construction beyond its plain and ordinary meaning. Pet. 14; PO Resp. 10. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to expressly construe any claim term.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Here, Petitioner argues that a person of ordinary skill in the art (“POSITA”) would have had “at least a Bachelor of Science degree in electrical engineering, or a closely related field, along with at least two years of experience in the design of entertaining lighting systems, and the design and use of LEDs.” Pet. 14 (citing Ex. 1003 ¶ 32). Patent Owner argues that a POSITA would have had “2 to 4 years’ experience in electrical engineering/design of film and television lighting systems, including the design and use of LED lights, combined with two to three years of work experience as a set lighting technician in television and/or motion picture industry.” PO Resp. 9 (citing Ex. 2047 ¶¶ 16–17; Ex. 2100 ¶¶ 156–161). Patent Owner does not identify any specific instance in which the differences between the parties’ respective descriptions of the level of ordinary skill in the art impacts the analysis or conclusions of either party, or either party’s declarant, in this case. In fact, Patent Owner acknowledges that any differences between the parties’ respective descriptions do not impact the conclusions in this case. Id. (“Regardless of which definition of a POSITA is applied, the conclusion(s) would be the same.”). For purposes of this Decision, and to the extent necessary, we adopt Petitioner’s definition of a POSITA because it is consistent with the prior art’s demonstration of the skill level at the time of the invention.” slip op. at 9

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

    “would have been obvious to combine the cited teachings of Kit and Katzir. Petitioner argues that “Katzir further discloses daylight and tungsten temperature ranges within the claimed temperature ranges.” Pet. 24 (citing Ex. 1006 ¶¶ 53, 54, Figs. 5A, 5B). Petitioner relies on the Holmes Declaration to show that “[a] POSITA would have been motivated to look to Katzir to design an LED array to be retrofit in a fluorescent tube.” Id. at 19 (citing Ex. 1003 ¶ 102). Mr. Holmes testifies that [b]oth Kit and Katzir teach using LEDs of various colors in a fluorescent tube form factor, like a T8 or T12 fluorescent tube. Katzir also discloses various LED array layouts that a POSITA would have a looked to when designing an LED tube lighting like that disclosed in Kit. A POSITA would have had strong motivation to look to Katzir to design an LED array to be retrofit in a fluorescent tube form factor. Ex. 1003 ¶ 102 (internal citations omitted). As discussed above, however, the cited passages of Kit describe a light with LEDs that produces a single, consistent temperature of warm white, commercial white, or cool white. Ex. 1004, 3:28–36, 22:9–25. Neither Petitioner nor Mr. Holmes sufficiently explains why a POSITA would have modified Kit to include Katzir’s particular layout that includes both cool white LEDs and warm white LEDs. See Pet. 19, 24; Ex. 1003 ¶ 102; In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (instructing that we must articulate a reason why a POSITA would combine the prior art references). We identified the aforementioned deficiencies for this asserted challenge in the Decision on Institution. DI 21–23. Petitioner did not address those deficiencies in the Reply. See generally Reply; Tr. 6:16–7:10. Thus, based on the entire record developed at trial, and for the foregoing reasons, Petitioner has not shown that claim 1 would have been obvious over Kit, Ianiro, Ducharme, and Katzir.” slip op. at 13

  • Expert testimonyPetitioner expert discountedOther

    “Petitioner asserts that Mr. Holmes cited Hasnain’s heat dissipation techniques. Reply 10 (citing Ex. 1003 ¶ 490; Ex. 1049 ¶¶ 41–49). Paragraph 490 of Exhibit 1003 relates to Ducharme, not Hasnain, and thus, does not support Petitioner’s argument. Although paragraphs 41 to 49 of Exhibit 1049 span more than seven pages, other than the single citation in the Reply, Petitioner does not discuss any of the testimony presented therein. We, thus, do not consider this portion of the Holmes Supplemental Declaration. See 37 C.F.R. §§ 42.6(a)(3). Furthermore, we would not be persuaded by Mr. Holmes’ testimony even if we considered it. For example, Mr. Holmes testifies that Hasnain’s heat-dissipating structure “a variety of heat dissipating techniques are disclosed by Hasnain, any one of which could readily be used in a T12 form factor LED light, as expressly recognized by Hasnain.” Ex. 1049 ¶ 46. We disagree with Mr. Holmes that Hasnain teaches enclosing its heat-dissipating structure in a fluorescent light tube. Hasnain teaches “a replacement LED light source for fluorescent tube 22 [that] plug[s] into the same connectors and operate[s] from the voltage patterns generated by the ballasts.” Ex. 1008, 3:23–26. Hasnain also teaches that “the replacement LED light source has a plurality of LEDs mounted on a heat-dissipating substrate that has a width that is less than or equal to the diameter of the fluorescent tube that the light source is designed to replace.” Id. at 5:52–56. Thus, Hasnain teaches that its LED light fits into, and connects with, an existing structure that previously held a fluorescent light tube. Id. at 2:50–56, 3:23–26, 4:58–64, 5:52–56, Figs. 1A, 4. As discussed above, however, Hasnain’s heat-dissipating structure is not enclosed in a tubular housing in order to dissipate heat to the surrounding air or via thermal contact with the existing structure that a fluorescent light tube is inserted into. Id. at 2:50–56, 4:23–28, 4:51–64, Figs. 1A, 3, 4.” slip op. at 22

  Patent outcomesUS 10,566,895 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,566,895
• Quasar Science LLC v. Colt International Clothing, Inc. D/B/A Colt LedNo claims unpatentable
  PTAB · Oct 7, 2024 · IPR2023-00613 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–3, 6–14, 16–19, 21–24, and 26–31 were not shown unpatentable over either asserted obviousness combination.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Patent Owner does not identify any specific instance in which the differences between the parties’ respective descriptions of the level of ordinary skill in the art impacts the analysis or conclusions of either party, or either party’s declarant, in this case. See id. In fact, Patent Owner acknowledges that any differences between the parties’ respective descriptions do not impact the conclusions in this case. Id. at 9 (“Regardless of which definition . . . is applied, the conclusion(s) would be the same.”). Therefore, to the extent necessary, we adopt Petitioner’s description, which is supported by the testimony of Petitioner’s declarant, Mr. Fred Holmes, and is consistent with the asserted prior art. Ex. 1003 ¶ 32.” slip op. at 8

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

    “the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 13; PO Resp. 10. We determine that no claim terms require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability. See Sections II.D.1, II.E.1.” slip op. at 8

  • BurdenNot shown unpatentable

    “Thus, Petitioner’s assertion that Hasnain’s LED light emits at least 1000 lumens requires distributing LEDs on a heat-dissipating structure that transfers heat to the surrounding air or via thermal contact with another existing structure. Id. at 4:23–28, 4:51–5:6, Figs. 3, 4; see Ex. 2080 ¶¶ 49, 5 Figure 4 shows heat-dissipating structure 59, not heat-dissipating structure 47. Ex. 1008, Fig. 4. But Hasnain describes those structures similarly. Id. at 4:51–5:6. 66. Petitioner, though, does not explain how Hasnain’s heat-dissipating structure would work when combined with Ducharme’s tubular housing. See Pet. 62–63; Pet. Reply 10; Ex. 1003 ¶ 490; Ex. 1049 ¶¶ 41–49. In particular, Petitioner does not explain how Hasnain’s heat- dissipating structure would dissipate sufficient heat to the surrounding air when enclosed in Ducharme’s tubular housing. See id. Petitioner also does not explain how Hasnain’s heat-dissipating structure would dissipate sufficient heat via thermal contact with another existing structure when enclosed in Ducharme’s tubular housing. See id. Furthermore, Petitioner does not propose combining Ducharme and Hasnain so that Hasnain’s heatdissipating structure is in thermal contact with Ducharme’s tubular housing. See id. Thus, Petitioner does not show sufficiently how the proposed combination of Ducharme and Hasnain was supposed to work. See Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) (“[T]he Board nowhere clearly explained, or cited evidence showing, how the combination of the two references was supposed to work.”).” slip op. at 20

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

    “person of ordinary skill in the art would have had reason to achieve high lumen output, we determine that Petitioner does not show sufficiently that a person of ordinary skill in the art would have had reason to combine the specific cited teachings of Ducharme and Hasnain.” slip op. at 17

  Patent outcomesUS 10,411,582 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,411,582
• Commscope, Inc. v. TQ Delta, LLCNo claims unpatentable
  PTAB · Nov 13, 2023 · IPR2022-01012 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–28 were not shown unpatentable under either § 103 ground because the petitioner did not adequately explain why a skilled artisan would combine the cited references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we preliminarily adopted Petitioner’s unopposed7 proposed level of ordinary skill in the art. Inst. Dec. 12. In the Response, Patent Owner does not challenge Petitioner’s characterization of the level of ordinary skill in the art. Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, we maintain our adoption of Petitioner’s proposed 7 Patent Owner did not challenge the proposed level of ordinary skill in the art in the Preliminary Response. level of ordinary skill in the art, as 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).” slip op. at 9

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

    “ordinary meaning” and “[t]o the extent certain terms are subject to multiple interpretations, those questions do not affect the grounds advanced here.” Pet. 12 (citing Ex. 1003 ¶ 116). Patent Owner “does not believe that the Board[] needs to expressly construe any claim limitation to find that the claims have not been proven unpatentable.” Resp. 13–14. There are no claim terms in dispute, so we need not expressly construe any term for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “header with a sequence number. See Pet. 31; Resp. 20–21. Petitioner asserts that a person of ordinary skill in the art would have been motivated to combine G993.2 with Fukushima “[to] provid[e] improvements” (Pet. 22), but does not further explain what improvement to G993.2’s would result from the combination. Rather, Petitioner describes these improvements as “use of . . . packets with message counts and/or sequence IDs,” (id.), which provides nothing more than a statement of what claim 1 recites and what Fukushima discloses without any explanation as to what improvement is provided to G993.2 or why the use of packets with sequence IDs would improve G993.2. Petitioner’s asserted rationale for combining the references includes additional generic statements, e.g., by referring to “predictable benefits,” “predictable results described above,” and “these predictable, beneficial results” which are never specifically explained. See Pet. 22–23 (emphasis added). For example, Petitioner does not articulate why Fukushima’s sequence numbers would be an improvement or beneficial to G993.2’s “packets.” We recognize that Petitioner does not need to show “improvement” in a “categorical sense,” and need only show that Fukushima’s sequence numbers were a “suitable option,” see Intel Corp. v. process depicted in Figure 9[-]1, that data that flows from that process is in fact the packet.” Tr. 12:9–14. PACT KPP Schwiez AG, 61 F. 4th 1373, 1381 (Fed. Cir. 2023), but in generically relying on “improvement” and “predictable, beneficial results” without further explanation, Petitioner has not established that Fukushima’s sequence numbers were a “suitable option” for G993.2’s “packets.” None of Petitioner’s assertions provide a sufficient reason that would have prompted a person of ordinary skill in the art to combine G993.2 with Fukushima as proposed. See KSR, 550 U.S. at 418 (in an obviousness analysis, one must “determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue”); In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017) (stating that “a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine”). We, therefore, disagree with Petitioner that “Petitioner set forth numerous reasons a [person of ordinary skill in the art] would be motivated to combine” VDSL2, Mitlin, and Fukushima. Reply 20 (citing Ex. 1003 ¶¶ 140–148, 306–310); see also Reply 22–23.” slip op. at 25

  • Strike new argumentNew argument disregardedDecided for patent owner

    “At the hearing, Petitioner also relied on deposition testimony of Mr. McNair that G993.2 inherently discloses a sequence ID (Tr. 16:15–16), but this appears inconsistent with Petitioner’s position in the Reply, where “Petitioner describes the manner in which the ‘Sequence Identifier (SID)’ claim element is disclosed by Fukushima.” Reply 10. However, the testimony from Mr. McNair was cited in the Reply, stating that “VDSL2 ‘implicitly’ uses ‘some numbering of packets,’ such that there ‘has to be some kind of an indicator and the sequence number is one.’” Id. at 13 (citing Ex. 2020, 91:10–22); see also id. at 13–14 (citing Ex. 2020, 91:23–25 (Mr. McNair testifying that “there’s got to be some kind of marker, whether you call it a sequence number or you call it some other kind of marker….”)). This theory of inherency is not argued in the Petition, and is therefore a new theory raised for the first time in Petitioner’s Reply, so we will not consider it. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.”); Consolidated Trial Practice Guide 73-74 (Nov. 2019)12 (explaining that “‘[r]espond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing,”). However, even assuming this is not an improper new argument, Petitioner has not established that G993.2’s “packet” inherently teaches a header field comprises a sequence identifier (SID), or addressed how this might affect the combination with Fukushima. PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1195–1196 (Fed. Cir. 2014) (“A party must . . . meet a high standard in order to rely on inherency . . . —the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.”). That is, we do not find that Mr. McNair’s testimony that “there has to be some kind of an indicator and the sequence number is one” supports that a sequence number is necessarily present in G993.2. Moreover, Petitioner’s inherency theory seems to be in tension with Petitioner’s contentions that the combination with Fukushima provides an improvement or benefit to G993.2.” slip op. at 28

  Patent outcomesUS 10,833,809 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,833,809
• Commscope, Inc. v. TQ Delta, LLCNo claims unpatentable
  PTAB · Nov 13, 2023 · IPR2022-00809 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–4, 6, 7, 9–12, 14, 15, 17–20, 22–24, 26, and 28 were not shown unpatentable under either § 103 ground because Petitioner did not establish motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts a person of ordinary skill in the art would have possessed a Bachelor’s degree in electrical or computer engineering, or the equivalent, and at least 5–6 years of experience; a Master’s degree in electrical or computer engineering, or the equivalent, and at least 2–3 years of experience; or a Doctor of Philosophy (Ph.D.) in electrical or computer engineering, or the equivalent, with at least 1–2 years of experience. Pet. 10 (citing Ex. 1003 ¶¶ 31–33). In our Institution Decision, we preliminarily adopted Petitioner’s unopposed7 proposed level of ordinary skill in the art. Inst. Dec. 13. In the Response, Patent Owner does not challenge Petitioner’s characterization of the level of ordinary skill in the art. Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as 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).” slip op. at 9

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

    “Petitioner asserts that “claim terms should be given their plain and ordinary meaning” and “[t]o the extent certain terms are subject to multiple interpretations, those questions do not affect the grounds advanced here.” Pet. 11 (citing Ex. 1003 ¶¶ 18–24, 116–118). Patent Owner “does not believe that the Board[] needs to expressly construe any claim limitation to find that the claims have not been proven unpatentable.” Resp. 13–14. There are no claim terms in dispute, so we need not expressly construe any term for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “Fukushima in the manner proposed.10 See Resp. 26; Sur-reply 17; see In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)) (“It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.”). Specifically, we determine that Petitioner has not provided sufficient rationale establishing why a person of ordinary skill in the art would have modified G993.2’s “packet”11 with Fukushima’s packet with a header including a sequence number. See KSR, 550 U.S. at 418 (establishing that an invention would have been obvious requires “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”) (emphasis added).” slip op. at 23

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “detail why a [person of ordinary skill in the art] would have recognized the value of modifying VDSL2 by the disclosures of Fukushima.” Reply 19 (Ex. 1003 ¶¶ 140–148, 301–305, 314); see also Reply 28. Mr. McNair’s testimony is not only largely repetitive of the Petition, but similarly does not (1) provide any explanation as to what “improvements,” “predictable benefits,” or “value,” arises from the combination, or (2) even directly address the combination of G993.2’s “packet” with Fukushima’s sequence number. Ex. 1003 ¶¶ 144, 145, 146; see ActiveVideo Networks, Inc. v. Verizon Comms., Inc., 694 F.3d 1312, 1328 (2012) (describing expert testimony that “motivation to combine would be because you wanted to build something better . . . a system that was more efficient, cheaper, or you wanted a system that had more features” as “generic and bears no relation to any specific combination of the prior art elements”).” slip op. at 25

  Patent outcomesUS 9,094,348 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,094,348
• Apple Inc. v. Logantree, LPNo claims unpatentable
  PTAB · Aug 30, 2023 · IPR2022-00037 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–5, 8–11, 20, 25, 30–32, 36, 39–42, 45–51, 61–65, 144, and 147 were not shown unpatentable under the asserted obviousness grounds.

  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 it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 8. In proposing a different level of ordinary skill in the art, Patent Owner does not explain why its proposed skill level is more appropriate.12 PO Resp. 16. In addition, the parties’ proposed definitions are materially similar. 12 Petitioner does not address the level of ordinary skill in the art in its Reply. definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 10

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

    “We determine that we need not expressly construe “movement sensor” to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs, 200 F.3d at 803 (Fed. Cir. 1999)). To the extent the parties raise claim construction issues in addressing the asserted grounds, we address such issues below.” slip op. at 12

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

    “Also, the Petition merely states that “Ono supports instances where the user stops the step-counting mode operation using switch S2 after the processor detects that” the target distance or the target number of steps has been reached and notifies the user by generating an alarm sound. Pet. 53 (emphasis added). In this case, supporting the notion of the user stopping the step-counting mode operation in response to the alarm is not the same as teaching or suggesting the notion to one of ordinary skill in the art. The possibility that a user could stop the step-counting operation in response the alarm is insufficient to render claims 1 and 20 obvious to one of ordinary skill in the art. See In re Facebook, Inc., 743 F. App’x. 998, 1001–02 (Fed Cir. 2018) (deciding that an example in a prior art reference showing that it is possible for image elements to be contiguous is not sufficient to teach a LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Petitioner’s reliance on the Hewlett-Packard and Unwired Planet cases (Pet. 56) is unavailing, as the facts in those cases are distinguishable from the facts of the present proceeding. Namely, both of those cases involved prior art references that disclosed operations that satisfied a claimed feature some, but not all, of the time. Hewlett-Packard, 340 F.3d at 1326; Unwired Planet, 841 F.3d at 1002. Here, Ono does not disclose the user stopping the step-counting mode operation in response to the alarm even some of the time. In view of the above, we determine, based on the full record, that the combination of Ono and Hutchings does not disclose limitations [1f] or [20f]. Accordingly, we are not persuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claims 1 and 20 are unpatentable over the combination of Ono and Hutchings.” slip op. at 28

  • BurdenNot shown unpatentable

    “We have determined incorporated Grounds 1, 2, 3A, 3B, and 4, as well as Ground 5A, deficient for the reasons discussed above. Furthermore, to the extent Petitioner contends that any of these combinations somehow adds something to supplement or strengthen the patentability analysis of the incorporated grounds, we note that neither the Petition nor Dr. Kenny provides sufficient particularity to support such a position. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Accordingly, we are not persuaded on the complete record before us that Petitioner has demonstrated, by a preponderance of the evidence, that: (1) claims 48, 50, and 51 are unpatentable over the combination of Ono, Hutchings, Amano, Conlan, Kaufman, and Hickman (Ground 5B); (2) claims 1–5, 8–11, 20, 25, 30, 31, 36, 39–42, 45–47, 49, and 61–65 are unpatentable over the combination of Ono, Hutchings, Amano, and Conlan (Ground 6A); (3) claims 48, 50, and 51 are unpatentable over the combination of Ono, Hutchings, Amano, Conlan, and Hickman (Ground 6B); (4) claims 1, 3–5, 8–11, 20, 25, 30, 36, 39–42, 61–65, 144, and 147 are unpatentable over the combination of Ono, Hutchings, Amano, and Kaufman (Ground 7); (5) claims 1–5, 8, 10, 20, 25, 30, 31, 39, 41, 42, 45–47, 49, 61–65, 144, and 147 are unpatentable over the combination of Ono, Hutchings, Conlan, and Kaufman (Ground 8A); and (6) claims 48, 50, and 51 are unpatentable over the combination of Ono, Hutchings, Conlan, Kaufman, and Hickman (Ground 8B).” slip op. at 36

  Patent outcomesUS 6,059,576 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,059,576
• Rideco Inc. v. Via Transportation, Inc.No claims unpatentable
  PTAB · Aug 17, 2023 · IPR2022-00740 · APJ Michael L Woods · IPR · Final written decision

  Petitioner failed to prove claims 1–13, 15, and 17–20 unpatentable under the asserted obviousness grounds, chiefly because Lambert did not teach system-selected virtual bus stops.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Having considered the parties’ arguments and evidence of record, we adopt Petitioner’s asserted level of ordinary skill. We find that Petitioner’s level of skill is consistent with the problems identified and solutions provided in the ’411 patent and the prior art. In particular, we agree with Petitioner that the relevant field of art is not limited to the backend artificial intelligence components in a ride-sharing system, as Patent Owner contends. See Pet. Reply 6–7; see also PO Resp. 20–23. We disagree with Patent Owner’s assertions that the ’411 patent is directed towards a complex artificial intelligence system far beyond the scope of traditional navigation systems. See PO Resp. 20–23. Neither Patent Owner nor its expert, Dr. Jacquillat, cites to the patent to explain why the art of the ’411 patent is limited to artificial intelligence components in determining the relevant skill in the art. See id.; see also Ex. 2022 ¶¶ 41–51. As Patent Owner acknowledges, the ’411 patent makes no reference to “artificial intelligence” directly, and Patent Owner instead relies upon declarant testimony to argue that the patent is directed towards an advancement in artificial intelligence. PO Sur-reply 11. Patent Owner claims that “programming a computer to make decisions in the place of humans is a form of artificial intelligence.” Id. Regardless, we need not determine the precise definition of artificial intelligence to determine the relevant skill in the art for a patent that never even uses the term. We agree with Petitioner that a skilled artisan with an understanding of computer programming and navigation systems, as well as two to four years of experience in location-based systems, would understand the “computer-implemented transportation system” of the ’411 patent. In summary, we find that the relevant level of ordinary skill in the art “would have been a person having (i) a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field[;] (ii) a working knowledge of computer programming and navigation systems; and (iii) two to four years of experience with location-based systems, user interfaces and databases.” Pet. 5–6 (citing Ex. 1003 ¶ 37).” slip op. at 14

  • Expert testimonyDecided for petitioner

    “Additionally, we find that Mr. Andrews’s background would qualify him as a person of ordinary skill in the art even if we adopted Patent Owner’s proposed level of ordinary skill in the art. Under Patent Owner’s proposal, a person of ordinary skill in the art would have a “degree in computer science, operations research, industrial engineering, applied mathematics, or a related field with at least two years of experience with optimization modeling, large scale optimization algorithms, or artificial intelligence solutions in the context of ride-sharing systems.” PO Resp. 30 (emphasis added). The record demonstrates that Mr. Andrews meets these qualifications. Mr. Andrews possesses a Bachelor of Science degree in Electrical Engineering and a Master of Science degree in Electronic Engineering, which we find to be in a “related field.” Ex. 1003 ¶ 6. Additionally, Mr. Andrews has significantly more than two years of experience in the fields Patent Owner suggests are relevant as evidenced by, for example, Mr. Andrews’s testimony that he has experience in “locationbased systems,” and “work[ing] in database dispatch systems for fleet management.” Ex. 2023, 44:2–9; 44:15–19. This experience demonstrates that Mr. Andrews had at least two years of experience in “optimization modeling.” The parties agree, however, that Mr. Andrews does not have experience working with ride-sharing systems. Nevertheless, Patent Owner’s definition includes artisans who lack that particular experience. Specifically, Patent Owner’s definition provides that: A person with an advanced degree (a master’s or Ph.D.) in computer science, operations research, industrial engineering, applied mathematics or a related field and a focus on data science, artificial intelligence or operations research would also have been an ordinary artisan in the field of the ’411 patent even if that person lacked two years of specific experience with ride-sharing systems. PO Resp. 20 (emphases added). In other words, even if the first prong of Patent Owner’s definition requires the expert’s experience to be “in the context of ride-sharing systems,” Mr. Andrews would nevertheless satisfy the qualifications of a POSITA under the second prong, which does not require experience with “ride-sharing systems.” See id. This Decision does not turn on the differences between the parties’ characterization of a skilled artisan.” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “The parties are in agreement. Despite the parties’ briefing on this term, the parties do not dispute the construction of “virtual bus stops.” Absent any controversy, we adopt the parties agreed-upon construction of the term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Specifically, we adopt the parties’ construction that “virtual bus stops” means “pickup and dropoff locations selected by the ride-sharing system itself.” Compare PO Resp. 23, with Pet. Reply 4. We further adopt the parties’ construction that the system need not use artificial intelligence—whatever that may mean—to select the virtual bus stops. Compare PO Sur-reply 5, with Pet. Reply 4; see also supra § III.A (“[W]e need not determine the precise definition of artificial intelligence to determine the relevant skill in the art pertaining to a patent that never even uses the term.”).” slip op. at 18

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

    “performs actions (see, e.g., Ex. 1004, 2:49–52; 2:63–67, 3:19–20, 3:34–35), we decline to infer from Lambert’s single sentence (id. at 4:17–23) that Lambert’s server is also programmed to perform the step of “dynamically selecting pickup and dropoff locations” (i.e., virtual bus stops). In other words, if Lambert’s server was programmed to select pickup and dropoff locations, as Petitioner would have us believe, we find that Lambert’s disclosure would have stated so. It does not.” slip op. at 39

  Patent outcomesUS 10,197,411 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,197,411
• Apple Inc. v. Rfcyber Corp.No claims unpatentable
  PTAB · Jul 18, 2023 · IPR2022-00412 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–19 were not shown unpatentable because the Dua, GlobalPlatform, and Philips combination did not establish the claimed emulator personalization.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On the full record before us, we agree with Petitioner that a person of ordinary skill in the art should have some level of experience relating to mobile payment technology. For example, the title of the ’787 patent, “Method and Apparatus for Conducting E-commerce and M-commerce,” provides a strong indication that mobile payments are a key aspect of the disclosed invention. See Ex. 1001, code (54). The ’787 patent describes its technical field as: “The present invention is generally related to commerce over networks. Particularly, the present invention is related to electronic purses that can be advantageously used in portable devices configured for both electronic commerce (a.k.a., e-commerce) and mobile commerce (a.k.a., m-commerce),” which reinforces that mobile payment technology is a key aspect. See id. at 1:17–21. In addition, we credit Mr. Smith’s uncontroverted testimony that mobile payment experience is required, which we find persuasive and supported by evidence. See Ex. 1042 ¶¶ 4–10. On the other hand, we agree with Patent Owner that network security is an important aspect of the ’787 patent’s invention. But to the extent that Patent Owner is asserting that mobile payment technology and computer or network security are distinct concepts such that the proper level of ordinary skill would include experience in one or the other but not both, we disagree. Rather, we view the ’787 patent as relating to methods and apparatuses for 1:17–21) and describing security as being an aspect of the commerce (see id. at code (57) (“[A] mechanism is provided to enable a portable device to conduct transactions over an open network with a payment server without compromising security.”), 2:16–19 (“During a transaction, the security keys are used to establish a secured channel between an embedded e-purse and an SAM (Security Authentication Module) or backend server.”)). For the above reasons, we find Petitioner’s contentions on this issue more persuasive on the full record before us. In order to avoid any doubt that we consider computer or network security to be an element of mobile payment technology, we determine for the purposes of this Decision that one of ordinary skill in the art would have at least a Bachelor’s degree in computer science, computer engineering, electrical engineering or an equivalent, and one year of professional experience relating to mobile payment technology, including computer or network security. In addition, a lack of professional experience could be remedied by additional education, and vice versa.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for patent owner

    “ordinary skill in the art should have some level of experience relating to mobile payment technology. For example, the title of the ’787 patent, “Method and Apparatus for Conducting E-commerce and M-commerce,” provides a strong indication that mobile payments are a key aspect of the disclosed invention. See Ex. 1001, code (54). The ’787 patent describes its technical field as: “The present invention is generally related to commerce over networks. Particularly, the present invention is related to electronic purses that can be advantageously used in portable devices configured for both electronic commerce (a.k.a., e-commerce) and mobile commerce (a.k.a., m-commerce),” which reinforces that mobile payment technology is a key aspect. See id. at 1:17–21. In addition, we credit Mr. Smith’s uncontroverted testimony that mobile payment experience is required, which we find persuasive and supported by evidence. See Ex. 1042 ¶¶ 4–10. On the other hand, we agree with Patent Owner that network security is an important aspect of the ’787 patent’s invention. But to the extent that Patent Owner is asserting that mobile payment technology and computer or network security are distinct concepts such that the proper level of ordinary skill would include experience in one or the other but not both, we disagree. Rather, we view the ’787 patent as relating to methods and apparatuses for 1:17–21) and describing security as being an aspect of the commerce (see id. at code (57) (“[A] mechanism is provided to enable a portable device to conduct transactions over an open network with a payment server without compromising security.”), 2:16–19 (“During a transaction, the security keys are used to establish a secured channel between an embedded e-purse and an SAM (Security Authentication Module) or backend server.”)). For the above reasons, we find Petitioner’s contentions on this issue more persuasive on the full record before us. In order to avoid any doubt that we consider computer or network security to be an element of mobile payment technology, we determine for the purposes of this Decision that one of ordinary skill in the art would have at least a Bachelor’s degree in computer science, computer engineering, electrical engineering or an equivalent, and one year of professional experience relating to mobile payment technology, including computer or network security. In addition, a lack of professional experience could be remedied by additional education, and vice versa. Regarding Petitioner’s assertion that Mr. Gomez’s testimony should be given little to no weight, Patent Owner argues that Mr. Gomez is well qualified under both proposed levels of ordinary skill. Sur-reply 4–5. During the hearing, Petitioner modified its position somewhat, arguing that Mr. Gomez’s “testimony should be accorded little to no weight, particularly where he weighs in on issues specific to financial transactions and smart cards.” Tr. 8:15–18 (emphasis added). Petitioner stated further that “[w]e’re simply asking the Board to take into the account each individual expert’s background knowledge on a per issue basis.” Id. at 59:26–60:2. Based on the full record, we disagree that all of Mr. Gomez’s testimony” slip op. at 12

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

    “Petitioner contends that all claim terms, except “emulator” and “midlet,” should have their plain and ordinary meaning. Pet. 12. As to the claim terms “emulator” and “midlet,” Petitioner contends that the ’787 patent expressly defines those terms “so those definitions are controlling.” Id. (citing Ex. 1001, 4:47–50, 5:20–22). Patent Owner argues that “claim construction is not required to resolve any issues” in this proceeding. PO Resp. 9. We determine that we need not expressly construe any claim term to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent” slip op. at 14

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

  Patent outcomesUS 9,189,787 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,189,787
• Rideco Inc. v. Via Transportation, Inc.No claims unpatentable
  PTAB · Jun 23, 2023 · IPR2022-00286 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because the asserted combinations failed to teach or render obvious system-selected virtual bus stops and a pair of associated stops.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Discussion We have considered the parties’ arguments and evidence of record, and we adopt Petitioner’s asserted level of ordinary skill because it is consistent with the problems identified and solutions provided in the ’824 patent and the prior art. In particular, we agree with Petitioner that the relevant field of art is not limited to backend artificial intelligence components in a ride-sharing system as Patent Owner contends. See Pet. Reply 10–11; see also PO Resp. 31–32. We disagree with Patent Owner’s assertions that the ’824 patent is directed towards a complex artificial intelligence system far beyond the scope of traditional navigation systems. See PO Resp. 31–32. Neither Patent Owner nor its expert, Dr. Jacquillat, cites to the patent in determining the relevant skill in the art to explain why the art of the ’824 patent is limited to artificial intelligence components. See id.; Ex. 2022 ¶¶ 41–51. As Patent Owner acknowledges, the ’824 patent makes no reference to “artificial intelligence” directly, and Patent Owner instead relies upon declarant testimony to argue that the patent is directed towards an advancement in artificial intelligence. PO Sur-reply 11. Patent Owner claims, without support, that “programming a computer to make decisions in the place of humans is a form of artificial intelligence.” Id. Regardless, we need not determine the precise definition of artificial intelligence to determine the relevant skill in the art pertaining to a patent that never uses the term. We agree with Petitioner that an artisan with an understanding of computer programming and navigation systems as well as two to four years of experience in location-based systems would understand the “computer-implemented transportation system” of the ’824 patent. In summary, we find that the relevant level of ordinary skill in the art “would have been a person having (i) a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field[;] (ii) a working knowledge of computer programming and navigation systems; and (iii) two to four years of experience with location-based systems, user interfaces and databases.” Pet. 5–6 (citing Ex. 1003 ¶ 37).” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Having addressed the relevant skill in the art, we address Patent Owner’s contention that Mr. Andrews “is not qualified to offer opinions concerning the artificial intelligence components of a ride-sharing system that are at issue in the ’824 patent.” PO Resp. 37. As discussed previously, we disagree with Patent Owner’s proposed qualifications for a person of ordinary skill in the art, and have adopted Petitioner’s position. Patent Owner does not offer an opinion as to whether Mr. Andrews would be qualified as a person of ordinary skill in the art under Petitioner’s definition. The record reflects that Mr. Andrews possessed an advanced degree in electronic engineering, had a working knowledge of computer programming and navigation systems, and had more than two years of experience with location-based systems, user interfaces, and databases at the time of the ’824 patent. See, e.g., Ex. 1003 ¶¶ 4–19; Ex. 1009. Therefore, we find that Mr. Andrews is qualified to offer opinions as a person of ordinary skill in the art for the ’824 patent under the relevant definition. Additionally, we find that Mr. Andrews’s background would qualify him as a person of ordinary skill in the art even if we adopted Patent Owner’s proposed level of ordinary skill in the art. Under Patent Owner’s proposal, a person of ordinary skill in the art would have a “degree in computer science, operations research, industrial engineering, applied mathematics, or a related field with at least two years of experience with optimization modeling, large scale optimization algorithms, or artificial intelligence solutions in the context of ride-sharing systems.” PO Resp. 30 (emphasis added). The record demonstrates that Mr. Andrews meets these qualifications. Mr. Andrews possesses a Bachelor of Science degree in Electrical Engineering and a Master of Science degree in Electronic Engineering, which we find to be in a “related field.” Ex. 1003 ¶ 6. Additionally, Mr. Andrews has significantly more than two years of experience in the fields Patent Owner suggests are relevant as evidenced by, for example, Mr. Andrews testimony that he has experience in “location-based systems,” and “work[ing] in database dispatch systems for fleet management.” Ex. 2023, 44:2–9; 44:15–19. Furthermore, given Mr. Andrews’s advanced degree, Patent Owner’s definition would allow Mr. Andrews to have less than two years of experience in the pertinent fields. PO Resp. 30; Ex. 1003 ¶ 6.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther

    “Under these circumstances, where the parties now agree that the ordinary meaning should apply to “virtual bus stops” and the district court adopted the same approach, we see no reason to depart from applying the ordinary meaning in this proceeding. We therefore apply the plain and ordinary meaning proposed by the parties, where “virtual bus stops” means “pickup and dropoff locations selected by the ride-sharing system itself.” As to the construction of dependent claim 8, we agree with Patent Owner that we need not formally construe the term to resolve the issues before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). As to Petitioner’s remaining arguments, we do not read artificial intelligence or other limitations into the claims as Petitioner warns against, and Petitioner does not argue for any specific construction in relation to these arguments that would require us to resolve a specific claim construction dispute. See Pet. Reply 4–10.” slip op. at 16

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Ex. 1004, 4:17–23. The Petition does not cite to any declarant support, additional prior art, other embodiments in Lambert, or any obviousness analysis when addressing “virtual bus stops.” See Pet. 25. Although for later aspects of claim 1 the Petition relies on Poykko and an obviousness analysis when arguing that it would have been obvious to configure Lambert’s server to operate in a certain way (e.g., to access memory that includes a database of locations as taught by Poykko), the Petition does not rely on such an analysis when first addressing “virtual bus stops” alone. See id. The combination of Lambert’s statement above with Poykko and other aspects of Lambert, potentially with allegedly obvious modifications of Lambert, may serve as the basis of Petitioner’s arguments for these later limitations involving “virtual bus stops,” but these later allegations do not reach back and redefine Petitioner’s more limited argument with respect to “virtual bus stops” in isolation.8 To the extent Petitioner argues in its Reply that a combination of Lambert and Poykko or other obviousness arguments 8 In our Institution Decision, we noted that Patent Owner, at that stage of the proceeding, failed to properly address Petitioner’s proposed combination of Lambert and Poykko for various “virtual bus stop” limitations. Inst. Dec. 22–23. That said, we do not view the Petition’s arguments and evidence as to “virtual bus stops” limitation in isolation, prior to addressing the “memory” limitation and adding Poykko and obviousness to the analysis, as relying on a combination of Lambert and Poykko or obviousness. See Pet. 25. satisfy the “virtual bus stops” limitation, we agree with Patent Owner that this introduces an improper new theory in the Reply. See PO Sur-reply 20– 22.” slip op. at 29

  Patent outcomesUS 9,816,824 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,816,824
• Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCNo claims unpatentable
  PTAB · Feb 6, 2023 · PGR2021-00103 · APJ Patrick R Scanlon · PGR · Final written decision

  Claims 1–28 were not shown unpatentable on any asserted ground; the Board found the prior art failed to establish key limitations and rejected the enablement and indefiniteness challenges.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In reply, Petitioner argues that the ’764 patent’s control system is not complex as there are no detailed algorithms, logic, or software. Pet. Reply 4. Instead, the control system merely raises or lowers power of the pumps in accordance with the demand HHP of the job design. Id. (citing Ex. 1036, 97:15–98:18, 98:21–99:25, 100:1–101:25, 102:2–7, 115:4–9, 115:24–116:4, 116:17–22; Ex. 1001, 5:2–6, 6:36–7:7, 10:4–64). According to Petitioner, this “rudimentary control concept” does not necessitate the higher skill level proposed by Patent Owner. Id. Petitioner further notes that Dr. Adnan testifies that “a mechanical engineer who has worked in the industry developing programming and control systems could fall within this definition,” and the person of ordinary skill in the art “is ‘just a specifier.’” Id. (quoting Ex. 2003 ¶ 22; Ex. 1036, 161:21–164:18). Based on our review of the record before us, particularly the ’764 patent’s description and Dr. Adnan’s testimony, we agree with Petitioner that the ordinary level of skill in the art does not require the high level of specialized knowledge of control systems suggested by Patent Owner. Moreover, 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. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on the full record, we are not persuaded that Mr. Marscher is unqualified to serve as an expert in this proceeding. As noted above, a person of ordinary skill in the art is not required to have been a fracturing operator. Patent Owner’s proposed definition does not even require experience as a fracturing operator. See PO Resp. 20–21. Furthermore, Mr. Marscher testifies that he has extensive experience developing pumps for fracturing applications. Ex. 2027, 6:24–8:7. Mr. Marscher also testifies that he has experience with control systems relating to pumps and pumps units. Id. at 212:19–23. This testimony, as well as his declaration and curriculum vitae, show that Mr. Marscher has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004. Accordingly, we are not persuaded that Mr. Marscher’s qualifications or experience provide reason to discount the weight associated with Mr. Marscher’s testimony.” slip op. at 10

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

    “In its Reply, Petitioner argues that the maximum power output value is the pump unit’s highest HHP output and one of ordinary skill in the art would have understood this value is the pump unit’s output power in intermittent duty. Pet. Reply 2–3 (citing Ex. 1003 ¶¶ 71–72, 123–124; Pet. 9–10; Ex. 1036, 64:17–67:13, 119:17–120:11, 124:7–24, 198:9–200:9, 221:8–222:15). However, even if Petitioner is correct that the “maximum power output value” is near or equivalent to a pump unit’s output power in intermittent duty, we are still not persuaded that the term “maximum intermittent power” should be tied to the “maximum power output value,” in conflict with the definition provided in the Specification. Petitioner also argues that Patent Owner’s proposed construction is indefinite. Pet. Reply 3. For the reasons discussed below (see supra § II.I.1), we determine that Petitioner has not shown by a preponderance of the evidence that the term “maximum intermittent power,” as defined in the Specification, is indefinite. Thus, based on the complete record before us, we maintain our prior construction of “maximum intermittent power” for this Final Written Decision.” slip op. at 13

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

    “3. Additional Terms We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 13

  Patent outcomesUS 10,815,764 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,815,764
• Bank Of America, N.A. v. Nant Holdings IP, LLCNo claims unpatentable
  PTAB · Feb 2, 2023 · IPR2021-01333 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 18, 26, 27, 29, and 31 were not shown unpatentable because Ogasawara did not disclose claim 18’s determining limitation, and the obviousness grounds did not cure that deficiency.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had a “Bachelor of Science in Electrical Engineering, Computer Science, Computer Engineering, or equivalent, and one to two years of experience 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103. Because the ’252 patent was filed before the effective date of the relevant amendment, the pre-AIA versions of §§ 102, 103 apply. working with image processing, image recognition, or a related field.” Pet. 17 (citing Ex. 1003 ¶ 43). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jeffrey Rodriguez. Ex. 1003 ¶ 43. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. PO Resp. 15. We adopt Petitioner’s description, which is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 5

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

    “C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in federal district court in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2020). Patent Owner proposes construing the term “the image” in all challenged claims to refer to “the same, single image.” PO Resp. 20. Based on this proposed construction, Patent Owner argues that the combination of Ogasawara and Bolle does not teach the limitations of claim 31. Id. at 59–60. As discussed below, for reasons unrelated to the term “the image,” Petitioner does not meet its burden to show that the challenged claims are unpatentable. See Sections II.D–II.F. Therefore, we determine that the term “the image” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability.” slip op. at 6

  • BurdenNot shown unpatentable

    “Petitioner does not show persuasively that Ogasawara expressly or implicitly discloses the determining limitation of claim 18. The portions of Ogasawara cited by Petitioner indicate that Ogasawara’s computing platform invokes its recognition software to analyze image data without first determining if the image contains a recognizable symbol. See Pet. 23–25 (citing Ex. 1005, 18:11–58, 20:41–67, 21:15–20). Ogasawara discloses that the user of its device verifies that an image contains an entire symbol when capturing the image and before transmitting the image data to the computing platform. Ex. 1005, 20:47–51 (“While the consumer is scanning a particular bar code with the digital camera, . . . the consumer can visually verify that the entire image has been captured.”); see also id. at 20:41–47, 22:10–13, 22:59–63 (disclosing that a user captures an image of an item’s bar code by placing it within the image field of the digital camera). As a result, when Ogasawara’s computing platform receives the image data, it simply invokes recognition software to analyze the image data.2 Id. at 18:32–37, 21:17–20. For example, Ogasawara discloses that “[o]nce the bar code image has been captured, the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software.” Id. at 21:17–20; see also id. at 18:32–37 (“Once this information is received . . . , a character 2 In fact, Petitioner appears to acknowledge that Ogasawara’s device operates in this manner. Pet. 24–25 (“[o]nce the bar code image has been captured, the program decodes the bar code image data . . . with pattern recognition software.”). recognition and/or pattern recognition application routine can be invoked . . . to . . . decode the bar code.”). Thus, Ogasawara supports Patent Owner’s position that Ogasawara’s computing platform does not determine if an image contains a recognizable symbol before analyzing the image. Petitioner argues that the term “recognize” in Ogasawara discloses determining if an image contains a recognizable symbol, whereas the term “decode” discloses analyzing the symbol to extract information. Pet. Reply 6 (“capture, recognize and decode captured images.”). We disagree. Ogasawara uses both terms—recognize and decode—to describe analyzing image data to extract information. Ex. 1005, 18:32–37, 21:17–20. For example, Ogasawara discloses that its computing platform invokes recognition software “to either decode the bar code videographic data or to perform pattern recognition functions on a[n] icon-like patter[n].” Id. at 18:32–37 (emphases added); see also id. at 21:17–20 (“the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software”) (emphases added). Thus, Petitioner’s reliance on the term “recognize” does not show that Ogasawara discloses the determining limitation of claim 18. For the reasons discussed above, Petitioner does not show sufficiently” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Petitioner does not show persuasively that Ogasawara expressly or implicitly discloses the determining limitation of claim 18. The portions of Ogasawara cited by Petitioner indicate that Ogasawara’s computing platform invokes its recognition software to analyze image data without first determining if the image contains a recognizable symbol. See Pet. 23–25 (citing Ex. 1005, 18:11–58, 20:41–67, 21:15–20). Ogasawara discloses that the user of its device verifies that an image contains an entire symbol when capturing the image and before transmitting the image data to the computing platform. Ex. 1005, 20:47–51 (“While the consumer is scanning a particular bar code with the digital camera, . . . the consumer can visually verify that the entire image has been captured.”); see also id. at 20:41–47, 22:10–13, 22:59–63 (disclosing that a user captures an image of an item’s bar code by placing it within the image field of the digital camera). As a result, when Ogasawara’s computing platform receives the image data, it simply invokes recognition software to analyze the image data.2 Id. at 18:32–37, 21:17–20. For example, Ogasawara discloses that “[o]nce the bar code image has been captured, the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software.” Id. at 21:17–20; see also id. at 18:32–37 (“Once this information is received . . . , a character 2 In fact, Petitioner appears to acknowledge that Ogasawara’s device operates in this manner. Pet. 24–25 (“[o]nce the bar code image has been captured, the program decodes the bar code image data . . . with pattern recognition software.”). recognition and/or pattern recognition application routine can be invoked . . . to . . . decode the bar code.”). Thus, Ogasawara supports Patent Owner’s position that Ogasawara’s computing platform does not determine if an image contains a recognizable symbol before analyzing the image. Petitioner argues that the term “recognize” in Ogasawara discloses determining if an image contains a recognizable symbol, whereas the term “decode” discloses analyzing the symbol to extract information. Pet. Reply 6 (“capture, recognize and decode captured images.”). We disagree. Ogasawara uses both terms—recognize and decode—to describe analyzing image data to extract information. Ex. 1005, 18:32–37, 21:17–20. For example, Ogasawara discloses that its computing platform invokes recognition software “to either decode the bar code videographic data or to perform pattern recognition functions on a[n] icon-like patter[n].” Id. at 18:32–37 (emphases added); see also id. at 21:17–20 (“the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software”) (emphases added). Thus, Petitioner’s reliance on the term “recognize” does not show that Ogasawara discloses the determining limitation of claim 18. For the reasons discussed above, Petitioner does not show sufficiently” slip op. at 11

  Patent outcomesUS 7,899,252 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,899,252

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.