• Crusoe Energy Systems, LLC v. Upstream Data Inc.Some claims unpatentable
  PTAB · Jan 21, 2025 · PGR2023-00039 · APJ Matthew S Meyers · PGR · Final written decision

  Claims 1 and 24 are unpatentable under § 101 as directed to an abstract idea without an inventive concept; the petitioner did not prove the remaining challenged claims unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (citations omitted). “The patent’s purpose can also be informative.” Id. (citation omitted). Petitioner asserts that one of ordinary skill in the art (“POSITA”) would have had “a degree in chemical engineering, petroleum engineering, process engineering, mechanical engineering, or a similar field with 1–2 years of experience in designing power generation systems, Blockchain mining systems, or other comparable hands-on experience.” Pet. 7 (citing Ex. 1003 ¶ 19). Petitioner adds that “[a]lternatively, a person having 3–5 years of experience in the Blockchain mining industry would also qualify as a POSITA” and “[a]dditional education could substitute for professional experience, or vice versa.” Id. at 7–8 (citing Ex. 1003 ¶ 19).” slip op. at 10

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

    “We apply the same claim construction standard used in district court actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.200(b) (2024). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).” slip op. at 11

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

    “To address that “the mining processors are connected to the network interface and adapted to mine transactions associated with the blockchain database and to communicate with the blockchain database,” as recited by limitation [1c_iii], Petitioner asserts that CryptoKube’s system includes “Bitcoin miners such as spondooliestech SP35 servers.” Pet. 25 (citing Ex. 1006, 1–4). And, relying on the declaration testimony of Mr. Kasdorf, Petitioner concludes that one of ordinary skill in the art would have understood that to mine Bitcoin, the mining processors need to be connected to a network interface and adapted to mine transactions associated with the blockchain database and to communicate with the blockchain database, which is implemented as a public ledger distributed among many peer-to-peer devices connected to the Internet. Id. (citing Ex. 1004 ¶¶ 108–109; Ex. 1010 ¶ 419). Mr. Kasdorf’s declaration testimony is nearly verbatim to the Petition and similarly provides no indication as to what in CryptoKube constitutes a “mining processor” other than his conclusory opinion that one of ordinary skill in the art “would have understood that to mine bitcoin, the mining processors need to be connected to a network interface and adapted to mine transactions associated with the 19 We note that Mr. Kasdorf’s reliance on Kheterpal is limited to Kheterpal’s background discussion regarding the Bitcoin protocol inasmuch as it “defines a system in which the creation and distribution of the bitcoin cryptocurrency is governed by consensus among a peer-to-peer network” and includes “a public ledger in which new transactions are verified and recorded by members of the network via cryptography.” Ex. 1010 ¶ 4. Ex. 1004 ¶ 108 (citing Ex. 1010 ¶ 4). Thus, we agree with Patent Owner that in the Petition, neither Petitioner nor Mr. Kasdorf explains or “cite[s] any evidence regarding which component is the ‘necessarily’ present mining processor (limitation 1[c_i]) or how this unspecified mining processor is ‘connected to the network interface and adapted to . . . communicate with the blockchain database’ (limitation 1[c_iii]).” PO Resp. 42–43 (citing Ex. 1004 ¶¶ 104–105, 108–109).” slip op. at 21

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s contention that “a combination of an ASIC chip and a controller would meet the ‘mining processor’ limitation” (Pet. Reply 11 (citing Ex. 1036 ¶ 21)) is an improper new argument. In determining whether an argument is a proper argument in reply, we look to see if the Reply argument is responsive to an argument from Patent Owner and expands on a position in the Petition. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1384 (Fed. Cir. 2023) (“[W]e have held that a reply may be proper if it is responsive and simply expands on previously raised arguments.”). Or, if Petitioner relies on previously unidentified disclosure “to make a meaningfully distinct contention.” Id. at 1383 (“[W]e held that a petitioner who asserted in its reply previously unidentified prior-art disclosures ‘to make a meaningfully distinct contention’ was impermissibly raising a new theory of unpatentability.”). We find that Petitioner’s argument in reply is closer to the later situation. Here Petitioner does not expand on a position from the Petition that Patent Owner criticizes based on the merits of the contentions. Rather, Petitioner supplements its conclusory assertion that a “mining processor” is necessarily present in CryptoKube’s spondooliestech SP35 servers (Pet. 23, 25 (citing Ex. 1006, 1–4)) with its new assertion that that “a combination of an ASIC chip and a controller would meet the ‘mining processor’ limitation.” Pet. Reply 11. Petitioner does not purport to have presented this theory in the Petition. Id. Instead, Petitioner argues that this theory was properly raised in response to what Petitioner alleges to be an admission by” slip op. at 27

  Patent outcomesUS 11,574,372 mixed
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Electric Power · Phillips · KSR · Graham
  Patents in suitUS 11,574,372
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Resonant Systems, Inc.Some claims unpatentable
  PTAB · Jan 8, 2025 · IPR2023-00993 · APJ Michael T Cygan · IPR · Final written decision

  Claims 1, 2, 7, 8, 11, 15–17, and 20 are unpatentable under § 103; claims 3–6, 9, 14, and 19 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art [“POSITA”] at the critical time “would have had a bachelor’s degree in electrical engineering, mechanical engineering, computer science, or a similar field and two years of experience related to electronic consumer product design [and the] POSITA could have also obtained similar knowledge and experience through other means.” Pet. 6 (citing Ex. 1003 ¶ 31). Patent Owner states that it would require experience with electro-mechanical control systems rather than electronic consumer product design. PO Resp. 3. Because Petitioner provides for “similar knowledge and experience through other means,” we do not discern any meaningful distinction. Thus, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’830 patent and the prior art of record.” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “Determining whether a limitation that does not use the term “means” invokes § 112, paragraph 6, involves a three-part inquiry: (1) there is a generic placeholder that substitutes for the term “means”; (2) the generic placeholder is modified by functional language; and (3) the limitation does not include the structure, material, or acts necessary to perform the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015); Tri-Med, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008); Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1303–04 (Fed. Cir. 2015) (the court must “determine whether the claim nevertheless recites sufficient structure for performing the . . . function to take it outside the bounds of” § 112, paragraph 6).” slip op. at 8

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

    “Limitation [1b] With respect to limitation [1b], a “moveable component,” Petitioner argues that it should be construed as a means (component) having a function (moveable) that corresponds to a structure (a moving weight). Pet. 7. Petitioner argues that “essentially any physical component can perform the function of being moved,” references different types of structure as the moving components in the ’830 patent, and concludes that therefore the term has no definite structure. Pet. Reply 2 (citing Ex. 1001, Figs. 4A–4G, 14, 15–17). Patent Owner argues for a non-means-plus-function construction of a component that “is capable of being moved.” PO Resp. 7–8 (citing Ex. 2008 ¶ 55). Patent Owner argues, and Petitioner agrees, that “there is likely no material difference between” the parties’ proffered constructions such that construction is necessary. Id. at 8; Pet. Reply 7. We agree, because Petitioner has shown, and Patent Owner does not contest, that the prior art teaches such a component under either construction. Infra § II(D)(2)(a). Because Petitioner’s assertions and our determination would be unaffected by its proposed construction, we need not construe this term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting 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))).” slip op. at 9

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

    “We agree with Patent Owner that a showing of motivation is required. Whether a proposed combination rests on “combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful.” In re Stepan Co., 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). The General Electric decision cited by Petitioner does not hold otherwise. In General Electric, the Federal Circuit considered an obviousness challenge based on combining disclosures from multiple references. See Gen. Elec., 983 F.3d at 1339–40, 1344–52. The Federal Circuit criticized the Board for dissecting an embodiment disclosed in the primary reference into a collection of “individual elements” and requiring the patent challenger to “re-do the work already done” regarding that embodiment in the primary reference. Id. at 1351–52. The Federal Circuit did not consider an obviousness challenge based on combining multiple embodiments from a single reference. See id. at 1344–52. Therefore, we do not agree with Petitioner that no motivation to combine the Figure 3 and Figure 83 embodiments of Fukumoto need be shown.” slip op. at 29

  Patent outcomesUS 9,941,830 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,941,830
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Resonant Systems, Inc.Some claims unpatentable
  PTAB · Jan 8, 2025 · IPR2023-00992 · APJ Steven M Amundson · IPR · Final written decision

  Claims 1, 2, 7, 8, 11, and 17 are unpatentable; claims 3–6, 9, and 14 are not shown unpatentable, and claims 15 and 16 were disclaimed.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have had a bachelor’s degree in electrical engineering, mechanical engineering, computer science, or a similar field and two years of experience related to electronic consumer product design.” 3 The parties do not provide evidence or argument regarding objective indicia of nonobviousness. See, e.g., Pet. 9–93; Resp. 18–66. Pet. 6. Petitioner also asserts that an ordinarily skilled artisan “could have also obtained similar knowledge and experience through other means.” Id. Dr. Wolfe’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶ 30. Patent Owner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience.” Resp. 3. Patent Owner also asserts that “[a]dditional relevant industry experience may compensate for lack of formal education or vice versa.” Id. Dr. Goossen’s testimony supports Patent Owner’s assertions. See Ex. 2008 ¶ 16.” slip op. at 15

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

    “10. SUMMARY “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Above, we discussed issues concerning the “component” limitations in claims 1, 3, and 4 and an ambiguity in claim 4. See supra §§ III.C.4(c), III.C.5(c), III.C.6(c), III.C.7(c), III.C.8(c), III.C.9. We determine that no other claim language requires a discussion of scope or an explicit construction to decide whether Petitioner satisfies the “preponderance of the evidence” standard for proving unpatentability. D. Alleged Obviousness over Fukumoto: Claims 1–3, 7–9, and 17 Petitioner contends that claims 1–3, 7–9, and 17 are unpatentable under § 103(a) because the claims would have been obvious over Fukumoto. See Pet. 9–35; Reply 16–22. Patent Owner disputes Petitioner’s contentions. See Resp. 18–27; Sur-reply 7–14. Below, we provide an overview of Fukumoto. Then, we consider the obviousness issues. For the reasons explained below, we agree with Petitioner that claims 1, 2, 7, and 17 are unpatentable under § 103(a) because the claims would have been obvious over Fukumoto but disagree that claims 3, 8, and 9 are unpatentable based on Fukumoto.” slip op. at 44

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner

    “2. MEANS-PLUS-FUNCTION CLAIMING The patent statute provides that “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112 ¶ 6 (2006). The absence of the word “means” in a claim limitation creates a rebuttable presumption that § 112’s means-plus-function provision does not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). When a claim limitation lacks the word “means,” a party may rebut the presumption that § 112’s means-plus-function provision does not apply by demonstrating that “the claim term fails to ‘recite[] sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Williamson, 792 F.3d at 1348 (alteration by the court) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). Construing a means-plus-function limitation involves two steps: first, identify the claimed function or functions; and second, determine what structure, if any, disclosed in the patent’s specification corresponds to the claimed function or functions. Williamson, 792 F.3d at 1351; see Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). For the second step, a person of ordinary skill in the art must “recognize the structure in the specification and associate it with the corresponding function in the claim.” All-Voice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1241 (Fed. Cir. 2007). The “duty to link or associate structure to function is the quid pro quo for the convenience” of using means-plus-function claiming. B. Braun Med., Inc., v. Abbott Lab’ys, 124 F.3d 1419, 1424 (Fed. Cir. 1997). When a limitation recites two or more functions, the specification” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Conclusion About Obviousness/Nonobviousness For the reasons discussed above, Fukumoto teaches claim 1’s subject” slip op. at 64

  Patent outcomesUS 9,369,081 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,369,081
• Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentable
  PTAB · Jan 6, 2025 · IPR2023-01169 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1, 2, and 4–20 are unpatentable over Thomas; claim 3 is not shown unpatentable. Substitute claims 22–36 are unpatentable, and substitute claim 21 is not reached.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “g) Conclusion—Claim 1 Based on the arguments and evidence of record, we determine that” slip op. at 28

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “g) Conclusion—Claim 1 Based on the arguments and evidence of record, we determine that” slip op. at 28

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “with the computer program 110.” Ex. 1005, 3:54–55. Thomas describes that (1) the “collected data is then stored in the database 130,” (2) the collected “data is stored in a data structure, generally referred to as a user’s profile,” and (3) the collected “data is logically linked to an event, or situation, that initiated the user’s input.” Id. at 3:56–61. Thomas describes creating or establishing a user profile by simulator 120 recording “the user’s decision/input” and storing “the user’s input in the field or sub-profile associated with the particular situation and/or event.” Id. at 4:67–5:5, Fig. 6. Patent Owner does not dispute Petitioner’s showing for element [1.3]. Also, contrary to Patent Owner’s arguments, we must consider what Thomas discloses rather than whether Thomas uses the exact claim term “instruction sets.” Cf. Gleave, 560 F.3d at 1334 (a reference does not have to satisfy an ipsis verbis test to disclose a claimed element). For these reasons, we are not persuaded by Patent Owner’s argument that Thomas does not “mention instruction sets” or “anything related to an instruction set.” PO Resp. 36–37; PO Sur-reply 17.” slip op. at 42

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “C. Indefiniteness Petitioner argues that proposed substitute claims 22–36 are indefinite.” slip op. at 72

  Patent outcomesUS 10,607,134 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,607,134
• Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentable
  PTAB · Jan 3, 2025 · IPR2023-01172 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–9, 11–14, 16–24, 26, 28, 29, and 31–34 are unpatentable as anticipated by Grotmol; claim 15 was not shown unpatentable because Grotmol does not disclose its required sequence.

  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 “(1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning.” Pet. 3–4 (citing Ex. 1003 ¶ 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jason Janet. Ex. 1003 ¶ 41. Patent Owner “adopts” Petitioner’s description of the level of ordinary skill in the art. PO Resp. 4–5. We also adopt Petitioner’s description for the purposes of this Decision.” slip op. at 5

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

    “The parties appear to agree that the term “connection” refers to a relationship, but dispute whether it includes a link. PO Resp. 7; Pet. Reply 23. We need not resolve this claim construction issue in order to resolve the parties’ disputes about the asserted ground of unpatentability. Specifically, as discussed below, even if we assume for the purposes of this Decision that the term “connection” means a “relationship that includes a link,” the asserted prior art still discloses the disputed claim limitation. See Section II.D.23.” slip op. at 6

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

    “We agree with Patent Owner that claim 15 requires modifying the first instruction set before determining the modified first instruction set based on an at least partial match between the new digital picture and the first digital picture. Claim 15 recites “modifying: the first one or more instruction sets” and “determining the modified the first one or more instruction sets . . . based on the at least partial match between the new one or more digital pictures and the first one or more digital pictures.” Ex. 1001, 162:65–163:15 (emphasis added). The phrase “the modified . . . instruction sets” in the determining limitation indicates an order because it refers back to the instruction sets modified in the modifying limitation. Id. Further, the phrase “based on the at least partial match” indicates that a partial match between the new picture and the first picture returns the modified first instruction set. Id. In order for a partial match to return the modified first instruction set, it is logical that the first instruction set previously was modified and correlated to the first picture. Id. Thus, claim 15 indicates that the modifying limitation is performed before the determining limitation. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003) (“First, we look to the claim language to determine if, as a matter of logic or grammar, [the recited steps] must be performed in the order written.”).” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “3. Means-plus-function limitations Petitioner contends that the corresponding structure for the “means for receiving or generating a first one or more digital pictures,” the “means for receiving or generating a first one or more instruction sets for operating the first device,” and the “means for learning the first one or more digital pictures correlated with the first one or more instruction sets for operating the first device” in claim 34 is “one or more processor circuits.” Pet. 4 (citing Ex. 1001, 16:8–60). Patent Owner does not dispute Petitioner’s proposed construction. PO Resp. 11. We adopt Petitioner’s proposed construction for purposes of this Decision. D. Anticipation of Claims 1–9, 11–24, 26, 28, 29, and 31–34 by Grotmol Petitioner argues that claims 1–9, 11–24, 26, 28, 29, and 31–34 are” slip op. at 10

  Patent outcomesUS 11,055,583 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 11,055,583
• Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentable
  PTAB · Dec 12, 2024 · IPR2023-01054 · APJ Russell E Cass · IPR · Final written decision

  Claims 4 and 11 are unpatentable over Grotmol and Hickman; claims 5 and 7 are not shown unpatentable. Substitute claims 21 and 24–26 are unpatentable; claims 22 and 23 are not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art, 3 Patent Owner does not present objective evidence of nonobviousness in this proceeding. would have [had] at least: (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning. Pet. 4 (citing Ex. 1002 ¶¶ 40–42). Patent Owner adopts Petitioner’s definition of a person of ordinary skill in the art. PO Resp. 6. Considering the subject matter of the ’974 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for the person of ordinary skill in the art, except we decline to adopt “at least,” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’974 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, except as noted above, we adopt Petitioner’s assessment” slip op. at 11

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

    “1. “connection” Claim 7 recites, in pertinent part, that “a first connection is generated” slip op. at 14

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

    “c) Conclusion—Claim 7 After consideration of the contentions and the evidence of record, we” slip op. at 52

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “7 We recognize that our conclusion here differs from the preliminary determination made in our Preliminary Guidance. After considering the full trial record, including Patent Owner’s MTA Reply, Petitioner’s MTA Sur-reply, Patent Owner’s Sur-sur-reply, and the arguments made at the oral hearing, we find that Petitioner has satisfied its burden of showing that this claim limitation would have been obvious over the Grotmol-Hickman combination. When issuing our Preliminary Guidance, we emphasized that the views expressed therein were “preliminary,” “subject to change upon consideration of the complete record,” and “not binding on the Board when reaching a final written decision.” See Prelim. Guid. 3.” slip op. at 99

  Patent outcomesUS 10,452,974 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,452,974
• Sony Interactive Entertainment LLC v. Quantum Imaging LLCSome claims unpatentable
  PTAB · Dec 6, 2024 · IPR2023-00954 · APJ James J Mayberry · IPR · Final written decision

  Claims 1, 3, 4, and 7–9 are unpatentable over Angles under §103; claims 5 and 6 were not shown unpatentable over Angles.

  RulingsFinal written decision

  • Expert testimonyOther

    “prosecution history and the amendment changing “held at” to “accessible at,” testimony upon which Patent Owner relies to support its position. Specifically, Dr. Medvidović testifies that a person having ordinary skill in the art would have understood the two phrases to be synonymous because, 1) the amendment was not made to overcome a prior art reference, 2) the applicant did not make a statement disclaiming that “being accessible at” does not encompass “being held at,” and 3) the examiner did not object to the amendment as exceeding the scope of the Specification. See Ex. 2005 ¶ 34. We find that Dr. Medvidović’s conclusion is not supported by his reasoning. First, an amendment made not to overcome a prior art reference does not mean an amendment that does not change the scope of a claim. An applicant is free to amend a claim at any time during prosecution, even an amendment that may expand the scope of a claim (one made not to overcome a prior art rejection). Second, whether “being accessible at” encompasses “being held at” is not the issue—because the scope of one term encompasses the scope of another term does not make the two terms” slip op. at 26

  • ExcludeDenied

    “III. MOTION TO EXCLUDE EVIDENCE Patent Owner moves to exclude Exhibits 1017–1020, 1026, and 1027,” slip op. at 83

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Accordingly, we conclude that the plain and ordinary meaning of the” slip op. at 27

  Patent outcomesUS 8,458,028 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,458,028
• Wirtgen America, Inc. v. Caterpillar Inc.Some claims unpatentable
  PTAB · Mar 12, 2024 · IPR2022-01397 · APJ Matthew S Meyers · IPR · Final written decision

  Claims 1–12 are unpatentable under § 103 over Willis and Xing, with claim 8 also unpatentable over Willis, Xing, and Laux; claim 13 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the arguments presented and the cited references, we find Petitioner’s unopposed definition of the level of ordinary skill reasonable, supported by the prior art evidence, the Specification, and Dr. Stein’s Declaration testimony (Ex. 1003 ¶¶ 21–24), and, for purposes of this Decision, adopt it as our own.” slip op. at 21

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

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). slip op. at 22

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Petitioner asserts that “it was known that implementing a variable transmission in a milling machine could improve fuel efficiency” (id. at 33–34), and relying on the declaration testimony of Dr. Stein, reasons that one of ordinary skill in the art “would have recognized that using a hydromechanical CVT permitted controlling an engine to a speed that minimizes fuel consumption for a given load while controlling transmission gear ratios to achieve desired transmission output speeds that maximize machine performance.” Id. at 34 (citing Ex. 1003 ¶ 66). Petitioner further asserts that Xing taught a method of controllably adjusting a CVT to further improve fuel efficiency without impacting machine performance. Supra [Pet. 18–24]. Thus, implementing a CVT and control method like that taught by Xing in Willis’s milling machine would have been a matter of combining prior art elements according to known methods to yield predictable results. Id. (citing Ex. 1003 ¶ 66). Relying on the declaration testimony of Dr. Stein, Petitioner takes the position that one of ordinary skill in the art “would have expected to successfully incorporate Xing’s teachings, including those related to CVTs, engines, transmission control algorithms, and associated sensors, into Willis’s milling machine” because it would have been no more that the combination of “prior art elements according to known methods to yield predictable results.” Pet. 34 (citing Ex. 1003 ¶¶ 65–66); see also id. at 34–35 (“This combination would further apply a known technique and hardware to a known device that was ready for improvement, predictably yielding the result of the expected improvement.”). Petitioner concludes that one of ordinary skill in the art “would have expected that such a combination would improve the fuel consumption and energy efficiency of Willis’s milling machine, while maintaining desired rotor speed during operation.” Id. at 35. We find, on the complete trial record, that a person having ordinary” slip op. at 28

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Owner’s counterarguments and find, on the complete trial record, that Petitioner demonstrates, by a preponderance of the evidence, that the combination of Willis and Xing teaches or suggests “determining an engine load of the engine” and “adjusting an engine speed of the engine based on the engine load” as recited by limitation 1[b], and recited in part by limitation 1[c]. Petitioner explains that Xing’s controller 116 “receive[s] signals from sensors communicatively coupled to the controller, such as torque sensor 122 and engine speed sensor 124” (Pet. 45 (citing Ex. 1006, 8:16–40)), and [b]ased on those signals, the controller in Xing evaluated power losses from the transmission and other power consuming components at different candidate operating speeds, measured engine load to determine the work output demanded of the machine, and independently set engine speeds and transmission ratios to minimize fuel consumption while achieving desired performance. Id. at 46 (citing Ex. 1006, 8:67–9:3, 9:9–17). We find Petitioner’s explanation to be consistent with Xing’s disclosure that the current load power requirement for the work vehicle may be determined indirectly by calculating the current engine power (Pengine) and the current power loss (Ploss) for the work vehicle 10. For example, as indicated above, the controller 116 may be configured to continuously monitor the engine speed and the engine torque (via sensors 122, 124), thereby allowing for the current engine power to be calculated by the controller 116. Ex. 1006, 9:37–44; see also id at 9:27–31 (“The relationship between the load power requirement and the power produced by the engine 22 of the work vehicle 10 is provided” by Equation 1: “Pengine = Pload + Ploss.”).” slip op. at 34

  Patent outcomesUS 9,975,538 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,975,538
• Wirtgen America, Inc. v. Caterpillar Inc.Some claims unpatentable
  PTAB · Mar 5, 2024 · IPR2022-01395 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–15, 17–33, 35–42, and 44 are unpatentable under § 103; claims 45–61 and 63 were not shown unpatentable because the petition failed to identify corresponding structure for means-plus-function limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends “[a] POSITA in the field of the ’995 patent (mobile construction machines) would have had knowledge of the literature concerning machine design, including hydraulic systems and their use to steer and position wheels/tracks, before July 2004.” Pet. 15–16 (citing Ex. 1003 ¶¶ 27–28). Petitioner further contends that a person having ordinary skill in the art would have had: (i) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on mobile construction machine design (or in a similar field); or (ii) seven years of experience working on mobile construction machine design (or in a similar field). Id. at 16 (citing Ex. 1003 ¶¶ 27–28). Patent Owner does not address the level of ordinary skill in the art in its Response. Dr. Klopp states that “[w]hile I do not opine on the correctness of [Petitioner’s] description [of the level of ordinary skill], I apply [Petitioner’s] description of a person of ordinary skill in the art for the purposes of my declaration.” Ex. 2004 ¶ 26. Based on the prior art, the sophistication of the technology at issue, and Mr. Orr’s Declaration testimony, we adopt Petitioner’s undisputed definition of the level of ordinary skill. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’995 patent. Ex. 1003 ¶¶ 27–28; Ex. 1001 (describing a mobile construction machine); Exs. 1005–1015 (disclosing aspects of mobile construction machine design).” slip op. at 27

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “1. Means-plus-function terms Independent claim 45 uses “means-plus-function” language, reciting several such clauses. Ex. 1001, 14:31–50; see 35 U.S.C. § 112 ¶ 6 (we cite to the pre-AIA version of the statute applicable to the challenged claims). Means-plus-function claiming occurs when a claim term is drafted in a manner that invokes 35 U.S.C. § 112 ¶ 6, which states: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. See 35 U.S.C. § 112 ¶ 6; Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc). “Determining the claimed function and the corresponding structure for a claim limitation written in means-plus-function format are both matters of claim construction.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1347 (Fed. Cir. 1999) On the complete record, we have not been directed to any dispute between the parties whether § 112 ¶ 6 applies to the recited means-plus-function clauses in the Challenged Claims. Pet. 17; PO Resp. 9.” slip op. at 28

  • BurdenNot shown unpatentable

    “Our Rules require that, “[w]here the claim to be construed contains a means-plus-function [limitation] . . ., the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3); cf. Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (“[A] challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.”).” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “and find, on the complete trial record, that Petitioner demonstrates, by a preponderance of the evidence, that a person of ordinary skill in the art would have had reason to modify the Bitelli to allow for rear wheel steering. First, we find that the complete record support’s Petitioner’s basis that Bitelli would have a rear wheel scraping problem. See Pet. 37. Bitelli ’037 expressly states that “[o]ne limitation shown by the machine described in the aforementioned patent is that when the rear wheels or tracks are set in their retracted position inside the frame, when turning they scrape the ground with considerable resistance.” Ex. 1014 ¶ 12. The exhibit makes clear that the “aforementioned patent” is a patent application with the number VI98U000098. Id. ¶ 11. The trial record also makes clear that Bitelli, a published European patent application, claims priority to that patent application. See Ex. 1011, code (30) (claiming priority to Italian application VI980098 U). As such, the machine in Bitelli is the machine with the wheel scraping problem identified in Bitelli ’037. See also Pet. Reply 9 (showing images from Ex. 1011 and Ex. 104211 (the Italian application referenced in Ex. 1014 depicting the same machine). Accordingly, we do not find an evidentiary gap in Petitioner’s contentions. Cf. PO Resp. 19–20; PO Sur-reply 11–12.” slip op. at 41

  Patent outcomesUS 7,523,995 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,523,995
• Wirtgen America, Inc. v. Caterpillar Inc.Some claims unpatentable
  PTAB · Mar 5, 2024 · IPR2022-01394 · APJ James J Mayberry · IPR · Final written decision

  Claims 18, 21–29, and 31–35 are unpatentable over the stated § 103 grounds; claims 30, 45, and 49–63 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having ordinary skill in the art “in the technical field of the ’995 patent (mobile construction machines) would have had knowledge of the technical literature concerning machine design, including hydraulic and mechanical systems and their use to steer and position wheels or tracks, before July 2004.” Pet. 15 (referencing Ex. 1003 ¶¶ 35–36). Petitioner further contends that a person having ordinary skill in the art would typically have had: (i) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on mobile construction machine design (or in a similar field); or (ii) seven years of experience working on mobile construction machine design (or in a similar field). Id. (referencing Ex. 1003 ¶¶ 35–36). Patent Owner does not address the level of ordinary skill in the art in its Response. Dr. Klopp states that “[w]hile I do not opine on the correctness of [Petitioner’s] description [of the level of ordinary skill], I apply [Petitioner’s] description of a person of ordinary skill in the art for the purposes of my declaration.” Ex. 2004 ¶ 26. Based on the prior art, the sophistication of the technology at issue, and Mr. Orr’s Declaration testimony, we adopt Petitioner’s undisputed definition of the level of ordinary skill. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’995 patent. Ex. 1003 ¶¶ 35–36; Ex. 1001 (describing a mobile construction machine); Exs. 1005–1015 (disclosing aspects of mobile construction machine design).” slip op. at 24

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Independent claim 45 uses “means-plus-function” language, reciting several such clauses. Ex. 1001, 14:31–50; see 35 U.S.C. § 112 ¶ 6.10 10 We cite to the pre-AIA version of the statute applicable to the Challenged Claims. Means-plus-function claiming occurs when a claim term is drafted in a manner that invokes 35 U.S.C. § 112 ¶ 6, which states: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. See 35 U.S.C. § 112 ¶ 6; Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc). The parties do not dispute that § 112 ¶ 6 applies to the recited means-plus-function clauses in the Challenged Claims. See Pet. 16–20; PO Resp. 5–6 (implying that § 112 ¶ 6 applies in arguing that Petitioner did not satisfy the requirements for construing certain means-plus-function terms).” slip op. at 25

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for petitioner

    “Turning to the corresponding structure, the Specification of the ’995 patent identifies only one structure that performs the recited function— actuator 44. The Specification states that “second actuator 44 is associated with the support device 40 and is adapted to maintain the same rotational direction of the one ground engaging unit 20 in each of the projecting and retracted positions.” Ex. 1001, 4:44–47; see id. at 4:56–60 (“[S]econd actuator 44 is connected to the lifting column 46 and is adapted to cause at least a portion of the lifting column 46 to rotate about a lifting column axis 48 that is oriented generally vertically relative to the work machine.”). The Specification at least suggests that actuator 44 does not need to be a rotary actuator, or, at least, that a linear actuator is an equivalent structure to a rotary actuator. For example, in describing “one of the preferred embodiments,” the Specification describes that “at least one of the first and second actuators 42, 44 is a rotary actuator,” suggesting that actuator 44 is not necessarily a rotary actuator. Ex. 1001, 4:61–62; see also id. at 5:17–21 (“These embodiments may be advantageously combined by employing a rotary actuator as described above as either or both of the first and second actuators 42, 44, and by positioning these actuators at the specified longitudinally spaced apart locations.”), 5:21–24 (“[I]t may also be preferable that at least the second actuator 44 be implemented using the rotary actuator construction and placed at the upper portion of the lifting column 46.” (emphasis added)); but see id. at Fig. 3 (depicting actuator 42 as a linear actuator). Accordingly, we find that the corresponding structure identified in the Specification for the recited function is a rotary or linear actuator. As such, we do not agree with Petitioner’s construction limiting the actuator to a rotary actuator. We also do not agree with Petitioner that the second actuator must be at the top portion of the lifting column. The Specification clearly identifies that the second actuator may be located “on the lifting column” “spaced apart from the first actuator 42,” and that locating the second actuator at the upper portion of the lifting column is merely a preferred location. See Ex. 1001, 5:8–24.” slip op. at 29

  • Strike new argumentNew argument disregardedDecided for patent owner

    “evidence, that a person having ordinary skill in the art would have modified Piccoli’s teachings to connect the second end of the first actuator to the swing arm as required by claim 30. In the Petition, the only evidence to support its modification is conclusory testimony from Mr. Orr. This testimony is accorded no weight. See Xerox Corp., IPR2022-00624, Paper 9. With respect to Petitioner’s reliance on Dubay as state-of-the-art evidence (for the first time in the Reply), we agree with Patent Owner that this argument is an improper new argument. In determining whether an argument is a proper argument in reply, we look to see if the Reply argument is responsive to an argument from Patent Owner and expands on a position in the Petition. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1384 (Fed. Cir. 2023) (“[W]e have held that a reply may be proper if it is responsive and simply expands on previously raised arguments.”). Or, if Petitioner relies on previously unidentified disclosure “to make a meaningfully distinct contention.” Id. at 1383 (“[W]e held that a petitioner who asserted in its reply previously unidentified prior-art disclosures ‘to make a meaningfully distinct contention’ was impermissibly raising a new theory of unpatentability.”). We find that Petitioner’s argument in reply is closer to the later situation. Here Petitioner does not expand on a position from the Petition that Patent Owner criticizes based on the merits of the contentions. Instead, Petitioner supplements it contentions by arguing that the linear actuator does not have to be attached to the lifting column to retract and extend Volpe’s leg assembly, and by citing to Dubay when Patent Owner argues that Petitioner provides no supporting evidence for its contentions. These responses are the type of “meaningfully distinct contention[s]” that signal that Petitioner is augmenting deficient contentions in the Petition with new arguments.” slip op. at 61

  Patent outcomesUS 7,523,995 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,523,995

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.