- PTAB · Dec 6, 2017 · IPR2017-01098 · APJ Sharon Fenick · IPR · Rehearing
The Board denied T-Mobile’s rehearing requests, leaving in place the denial of institution for the challenged claims because it found no abuse of discretion in its preliminary construction.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner
“We determined in our preliminary construction that the disclosed structure only supports the use of a single wireless network card. Dec. 12– 14. Although the district court cited column 31, lines 22–24 of the ’306 Patent in its analysis of the disclosed structure for the communication module limitation (Ex. 2001, 34), we determined that that portion of the ’306 Patent specification is not related to the identified function for the communication module limitation. Dec. 12–13.” slip op. at 4
- Skill levelOther
“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (internal quotation omitted). Consistent with Okajima, the level of ordinary skill in this case is reflected not only by the information presented by the parties, but also by the prior art of record. Although both parties proposed definitions for the applicable level of ordinary skill in the art. (Pet. 12; Ex. 1003 ¶¶ 31–36; Prelim. Resp. 12), neither party specifically explained how any proposed level of ordinary skill in the art would impact the analysis presented. See Genzyme Therapeutic Products L.P. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1371–72 (Fed. Cir. 2016). Having considered the arguments with slip op. at 8
Claim constructioncites PhillipsPatents in suitUS 8,559,369 - PTAB · Dec 6, 2017 · IPR2017-01099 · APJ Sharon Fenick · IPR · Rehearing
The Board denied T-Mobile’s rehearing requests, finding no abuse of discretion in its preliminary construction of the communication module limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based 2 See IPR2017-01098, Papers 12, 14; IPR2017-01099, Papers 11 (“Institution Decision” or “Dec.”), 14 (“Req. Reh’g”). Unless otherwise specified, we refer to papers filed in IPR2017-01099 and, with respect to the specification of the patents, to U.S. Pat. No. 9,042,306 (Ex. 1002) (“the ’306 patent”). The written description of U.S. Pat. No. 8,559,369 (the “’369 patent”) is substantively identical. 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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“We determined in our preliminary construction that the disclosed structure only supports the use of a single wireless network card. Dec. 12– 14. Although the district court cited column 31, lines 22–24 of the ’306 Patent in its analysis of the disclosed structure for the communication module limitation (Ex. 2001, 34), we determined that that portion of the ’306 Patent specification is not related to the identified function for the communication module limitation. Dec. 12–13.” slip op. at 4
- Skill levelOther
“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (internal quotation omitted). Consistent with Okajima, the level of ordinary skill in this case is reflected not only by the information presented by the parties, but also by the prior art of record. Although both parties proposed definitions for the applicable level of ordinary skill in the art. (Pet. 12; Ex. 1003 ¶¶ 31–36; Prelim. Resp. 12), neither party specifically explained how any proposed level of ordinary skill in the art would impact the analysis presented. See Genzyme Therapeutic Products L.P. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1371–72 (Fed. Cir. 2016). Having considered the arguments with 3 We dispute Petitioner’s characterization of what was “recognized” in our Institution Decision, which clearly notes that the functionality is disclosed in the ’306 Patent as being performed “using only a single wireless network card” and “using a single Wireless NIC.” Dec. 12, quoting ’306 Patent at 11:47-48, 24:28 (emphases in Dec.). respect to the level of ordinary skill, we do not find them persuasive that our preliminary construction was based on an erroneous conclusion of law, a factual finding was not supported by substantial evidence, or there was an unreasonable judgment in weighing relevant factors. slip op. at 8
Claim constructioncites PhillipsPatents in suitUS 9,042,306 - Composite Materials Technology, Inc. v. Greatbatch, Ltd.Institution deniedPTAB · Dec 4, 2017 · IPR2017-01441 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–18 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Contrary to Petitioner’s arguments, the fact that two references relate to the same general subject matter is not, by itself, sufficient to explain why one of ordinary skill in the art would have sought to modify one reference in view of the other; it demonstrates at most that the two references are in the same field of endeavor. See In re GPAC Inc., 57 F.3d 1573, 1577–78 (Fed. Cir. 1995). Nor is an alleged admission that Fife and Stephenson are prior art to the ’075 patent sufficient to explain why these two references would be combined in a manner necessary to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 389, 418–19 (2007) (“[I]nventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”). In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”). As Petitioner provides insufficient rationale to explain why one of ordinary skill in the art would have combined the disclosures of Fife and Stephenson in a manner necessary to achieve the claimed invention, it has not demonstrated a reasonable likelihood that the subject matter of claim 1 would have been obvious over those references. And, because challenged claims 2–11 and 13–18 each depend from claim 1, and because the deficiencies in Petitioner’s arguments and evidence regarding claim 1 are not remedied by Petitioner’s arguments and evidence regarding claims 2–11 and 13–18, Petitioner has likewise not demonstrated a reasonable likelihood that the subject matter of those claims would have been obvious over Fife and Stephenson.6” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”).” slip op. at 8
§ 103 obviousnessPatents in suitUS 9,312,075 - Tradestation Technologies, Inc. v. Trading Technologies International, Inc.All claims unpatentablePTAB · Nov 17, 2017 · CBM2016-00086 · APJ Sally C Medley · CBM · Final written decision
Claims 1–21 are unpatentable under § 101 because they claim an abstract economic practice without an inventive concept.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“I. INTRODUCTION TradeStation Technologies, Inc., (“Petitioner”)1 filed a Petition requesting a covered business method patent review of claims 1–21 of U.S. Patent No. 7,818,247 B2 (Ex. 1001, “the ’247 patent”) under the transitional program for covered business method patents.2 Paper 2 (“Pet.”). Trading Technologies International, Inc. (“Patent Owner”) did not file a Patent Owner Preliminary Response. Upon consideration of the Petition, we instituted a covered business method patent review of claims 1–21 of the ’247 patent (Paper 8 (“Dec.”)).” slip op. at 2
- BurdenFwd all claims unpatentableUnpatentable
“We have considered Petitioner’s showing and all of Patent Owner’s arguments, and determine, for all of the above reasons, Petitioner has shown sufficiently that claims 1–21 of the ’247 patent are not directed to patent eligible subject matter under 35 U.S.C. § 101. III. CONCLUSION For the foregoing reasons, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1–21 of the ’247 patent are patent-ineligible under 35 U.S.C. § 101. IV. ORDER It is: ORDERED that claims 1–21 of the ’247 patent are patent-ineligible under 35 U.S.C. § 101; and” slip op. at 28
- Skill levelSkill level board ownOther
“B. The Level of Ordinary Skill in the Art Notwithstanding the parties’ submissions of the level of ordinary skill in the art, we find that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“we determine that Petitioner has shown4 that claim 1 is directed to the abstract idea of receiving market information, color-coding graphical areas based on market information, and then updating the display based on newly received market information to assist a trader to make an order, which is a fundamental economic practice. Claim 1, the sole independent claim, recites in the preamble a method for displaying market information corresponding to a commodity being traded at an electronic exchange. The method steps include receiving market data including a quantity of an order at a first price level, displaying a first and second graphical area corresponding to a first and second price level in an axial direction, color-coding the first and second graphical areas with a first and second color respectively, and updating the first and second graphical area such that the first graphical area is color-coded with the second color and the second graphical area is color-coded with the first color. We agree with Petitioner that claim 1 encompasses the abstract idea of displaying financial information in a manner that makes it easier to understand and facilitate trades on an exchange, steps that can be performed using pen and paper, or even in a trader’s mind. Pet. 31–38 (citing CyberSource Corp. v. Retail Decisions, 654 F.3d 1366, 1372 (Fed. Cir. 2011) (unpatentable mental process performed with aid of pen and paper)); Ex.” slip op. at 18
Patent outcomesUS 7,818,247 unpatentable§ 101 eligibilitycites Alice · Mayo · Enfish · Electric PowerPatents in suitUS 7,818,247 - Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentablePTAB · Nov 17, 2017 · CBM2016-00087 · APJ Sally C Medley · CBM · Final written decision
Claims 1–24 are unpatentable under § 101, and claims 2 and 15 are also unpatentable under § 112 ¶ 4.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Tradestation Securities, Inc., (“Petitioner”)1 filed a Petition requesting a review of claims 1–24 of U.S. Patent No. 7,412,416 B2 (Ex. 1001, “the ’416 patent”) under the transitional program for covered business method patents.2 Paper 3 (“Pet.”). Trading Technologies International, Inc. (“Patent Owner”) did not file a Patent Owner Preliminary Response. Upon consideration of the Petition, we instituted a covered business method patent review of claims 1– 24 of the ’416 patent (Paper 11 (“Dec.”)).” slip op. at 2
- Skill levelSkill level board ownOther
“B. The Level of Ordinary Skill in the Art Notwithstanding the parties’ submissions of the level of ordinary skill in the art, we find that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16
- ExcludeDenied
“Kawashima’s deposition (Ex. 1018), and portions of Exhibit 1060 (the cross examination testimony of Mr. Thomas). PO Mot. to Exclude 1. Patent Owner seeks to exclude Exhibits 1015 and 1016 as not relevant under Rules 401 and 402 of the Federal Rules of Evidence (FRE) and because the exhibits have not been authenticated under FRE 901. Id. at 1–4. Patent Owner also seeks to exclude Exhibit 1018 as hearsay, and pages 248, and 263–269 of Exhibit 1060 (the cross examination testimony of Mr. Thomas) as prejudicial and confusing. Id. at 4–13. In rendering our Final Decision, we did not and need not consider Exhibits 1015, 1016, 1018 or pages 248, and 263–269 of Exhibit 1060. We have determined that Petitioner has demonstrated, by a preponderance of the evidence, that the challenged claims are unpatentable, without considering Exhibits 1015, 1016, 1018 or pages 248, and 263–269 of Exhibit 1060. Accordingly, Patent Owner’s Motion to Exclude is dismissed.” slip op. at 32
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Notwithstanding Patent Owner’s arguments, which we address below, we determine that Petitioner has shown3 that claim 1 is directed to the abstract idea of displaying a chart with a vertical price axis and a horizontal time axis, displaying indicators representing historical trading data along those axes, placing an order icon at a particular location of a plurality of locations, and generating and sending the order to an electronic trading system to assist a trader to place an order, which is a fundamental economic practice. The preamble of claim 1 recites a method for facilitating trading and displaying information regarding the buying and selling of a good. The method steps of claim 1 include displaying a chart on a graphical user interface having a vertical axis of price values and a horizontal axis of time, placing an order icon for a quantity of a good at a location along the vertical axis of price levels, and generating and sending the order to an electronic trading system. We agree with Petitioner that claim 1 encompasses the abstract idea of the fundamental economic practice of graphing (or displaying) trading data to assist a trader to place an order, steps that can be performed using pen and paper, or even in a trader’s mind. Pet. 22–25” slip op. at 21
Patent outcomesUS 7,412,416 unpatentable§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Enfish · Electric PowerPatents in suitUS 7,412,416 - Valve Corporation v. Ironburg Inventions Ltd.Rehearing deniedPTAB · Nov 15, 2017 · IPR2016-00949 · APJ Phillip J Kauffman · IPR · Rehearing
The Board dismissed Valve Corporation’s request for rehearing of the final written decision as moot after correcting the requested typographical errors in an errata.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision,” or “Dec.”) in this case. Paper 46 (“Reh’g Req.”). In the request for rehearing, Petitioner seeks correction of certain typographical errors. Reh’g Req. 1–2. Those errors have been corrected in an errata (Paper 47). It is: ORDERED that Petitioner’s Request for Rehearing is dismissed as moot. slip op. at 2
NonePatents in suitUS 9,089,770 - Juniper Networks, Inc. / Brocade Communications Systems, Inc. et al. v. Mobile Telecommunications Technologies, LLCAdverse judgmentPTAB · Oct 31, 2017 · IPR2017-00640 · APJ Meredith C Petravick · IPR · Adverse judgment
Claims 1–5 were cancelled and adverse judgment was entered against Patent Owner after it requested cancellation of all claims at trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Patent Owner requests cancellation of claims 1–5 of U.S. Patent No. 5,659,891 (“the ’891 patent) and entry of adverse judgment against it. Paper 20. Claims 1–5 are all claims of the ’891 patent and all claims at trial. We determine that entry of adverse judgment against Patent Owner is appropriate. Accordingly, it is: ORDERED that claims 1–5 of U.S. Patent No. 5,659,891 are cancelled; ORDERED that adverse judgment is entered under 37 C.F.R. § 42.73(b) against Patent Owner; and FURTHER ORDERED that this Order constitutes a final written decision under 35 U.S.C. § 318(a).” slip op. at 1
NonePatents in suitUS 5,659,891 - PTAB · Oct 26, 2017 · IPR2017-01270 · APJ Timothy J Goodson · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any of its three obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner has not shown that the cited combination teaches an “identifier” that satisfies all of limitations [b], [i], and [j]. The portions of Petit on which Petitioner relies indicate that a crossing ID is included in messages going from the train to the crossing, and that the identity of the train is included in messages going from the crossing to the train. Ex. 1008, claim 7, claim 9, 5:12–14. But Petitioner does not point to any disclosure in Petit that a message from the crossing to the train includes a crossing ID. See Prelim. Resp. 34–35. In other words, Petit teaches including the message’s destination in the message, but does not teach including the message’s source in the message. Because Petit does not teach that the message from the crossing to the train includes the crossing ID, Petitioner has not shown that Petit’s crossing ID satisfies the requirements of an “identifier” as recited in limitation [i].” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the prosecution history of the parent application does not support Petitioner’s argument that the phrase requires direct transmission. In the Response to Office Action on which Petitioner’s argument is based, Patent Owner (at that time, a patent applicant) contested a rejection that certain pending claims were anticipated by U.S. Patent No. 5,950,966 to Hungate. See Ex. 1006, 116. Specifically, Patent Owner asserted that “Hungate discloses a system in which trains communicate with wayside controllers that pass along movement authorities to the train and, in some embodiments, issue incremental movement authorities for the train.” Id. Although Hungate disclosed the ability to accommodate switches, Patent Owner disputed the Examiner’s interpretation that the wayside controllers report the configuration of switches in response to an interrogation message. Id. Patent Owner argued that “the way in which [Hungate’s] system accommodates such switches is by having the switches communicate with the wayside controllers 20 rather than with any system on the train.” Id. Thus, the distinction Patent Owner drew is that in Hungate, “any communication of the status of the switch occurs between the switch and the wayside controllers, not between the train and the switch . . . .” Id. In other words, Patent Owner did not distinguish Hungate on the basis that it disclosed indirect rather than direct communication from the switch to the train. What was absent from Hungate, according to Patent Owner’s remarks during prosecution, was any communication of the status of the switches being sent to the train. Accordingly, for purposes of this Decision, we determine that “transmitting . . . to a configurable device” does not require direct transmission.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“The portions of the intrinsic record that Patent Owner cites support the view that an interrogation message is a request for status information. In particular, the Specification describes that the control module determines when the train is approaching a configurable device and “continuously interrogates the device to determine its status as the train approaches the device.” Ex. 1001, 1:59–60. However, based on the current record, we are not persuaded that the interrogation message must be targeted to a specific device. In this regard, we note the following description in the Specification: In some embodiments, the interrogation includes an identification number associated with the device 180. Since only the device corresponding to the identification number will respond to the interrogation, this identification number is obtained from the map database 130. This avoids contention between multiple devices attempting to respond to the interrogation on the same frequency. Id. at 3:56–62. This description indicates that it is not a necessary or inherent feature of an interrogation message that it is targeted to a specific device, and that an interrogation message that would otherwise trigger responses from multiple devices can be avoided in “some embodiments” by including an identification number. For the purposes of this Decision, we construe “interrogation message” to mean “a request for status information.”” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equipment Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that an ordinarily skilled artisan at the time of the invention of the ’860 patent “would have had an undergraduate degree or the equivalent thereof and at least five (5) years of experience in train operations or train control systems” and “would have had knowledge of train control systems, train safety systems that include wayside systems, and train communication systems, and would have understood how to search available literature for relevant publications.” Pet. 7 (citing Ex. 1002 ¶¶ 42–44). Patent Owner “does not believe that any issue raised in the Petition turns on the level of ordinary skill in the art but reserves the right to address the requisite level of ordinary skill should inter partes review be instituted.” Prelim. Resp. 17. Based on the current record and for purposes of this Decision, we adopt Petitioner’s proposed definition of a person of ordinary skill in the art.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,236,860 - Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentablePTAB · Oct 17, 2017 · CBM2016-00054 · APJ Meredith C Petravick · CBM · Final written decision
Claims 1–23 are unpatentable under § 101 and § 103; the Board found the claims patent-ineligible and found the challenged obviousness grounds established.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Patent Owner’s argument is not persuasive. FRE 106 provides that: If a party introduces all or part of a writing or recorded statement, an adverse party may require the introduction, at that time, of any other part —or any other writing or recorded statement — that in fairness ought to be considered at the same time. As Petitioner points out, “rather than providing a basis for excluding evidence, Fed. R. Evid. 106 is a vehicle for entry of additional evidence.” Here, the two translator’s notes from Patent Owner’s original translation already appear in the record. Ex. 2178, 39–40. FRE 403 provides: The court may exclude relevant evidence if its probative value is substantially outweighed by a danger of one or more of the following: unfair prejudice, confusing the issues, misleading the jury, undue delay, wasting time, or needlessly presenting cumulative evidence. Patent Owner has not met its burden to show Exhibit 1017 should be” slip op. at 75
- Skill levelOther
- Expert testimonyPetitioner expert discountedPatent owner expert discountedDecided for patent owner
“We have considered the evidence to which we are directed, but do not find that evidence (passages from Mr. Kawashima’s original and cross examination) to support Patent Owner’s assertions that Mr. Kawashima is biased. Indeed, when asked if the Tokyo Stock Exchange preferred that vendors like Trading Technologies not have patents on trading screens, Mr. Kawashima testified, that that was “not something I would know.” Ex. 2163, 41:6–12. Lastly, Patent Owner has not demonstrated sufficiently that Mr. Kawashima’s meetings with Petitioner’s attorneys prior to his cross examination is demonstrative of “bias.” PO Resp. 24. Patent Owner has not shown why Mr. Kawashima’s meeting with Petitioner’s counsel prior to his deposition would make him biased. For these reasons, we are not persuaded that Mr. Kawashima is an interested witness.” slip op. at 45
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“2. Abstract Idea “The ‘abstract idea’ step of the inquiry calls upon us to look at the” slip op. at 27
Patent outcomesUS 7,693,768 unpatentable§ 101 eligibility§ 103 obviousnesscites Mayo · Enfish · Electric Power · KSRPatents in suitUS 7,693,768 - PTAB · Oct 6, 2017 · IPR2017-01353 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 6, 8, 11–13, 15, and 18 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and Preliminary Response we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As discussed above, however, Petitioner has not established sufficiently that Satterthwaite discloses adding STMP or any other salt of a condensed phosphate directly to the disclosed mixture of water, gypsum, and mineral wool. This deficiency undermines Petitioner’s argument that a person of ordinary skill in the art would look to Hjelmeland to determine how much STMP to add to Satterthwaite’s composition. Rather, in view of our determination regarding the disclosure of Satterthwaite, the more appropriate inquiry is whether, in view of Hjelmeland, a person of ordinary water mixture of Satterthwaite in the first place. Petitioner, however, does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP or any other condensed phosphate to Satterthwaite’s mixture in view of Hjelmeland’s disclosure. KSR Int’l Co. v. Teleflex Inc., 904 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). As a result, Petitioner has failed to identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’904 patent. Id. (“[I]t can be important to identify 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.”).” slip op. at 19
§ 103 obviousnesscites PhillipsPatents in suitUS 8,500,904
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.