• Meta Platforms, Inc. v. Almondnet, Inc. And Intent Iq, LLCInstitution denied
  PTAB · Oct 26, 2022 · IPR2022-00929 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Amjadi teaches or suggests the claimed first Internet site, as required by every challenged claim.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We therefore deny institution of inter partes review.” slip op. at 2

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

    “We recognize that the claim recites an “Internet site,” and not a “Web site.” Although the ’586 patent sometimes describes an “Internet site,” see Ex. 1001, 4:48–49, 5:22, 16:7, 17:2, 17:11, the patent more frequently describes an “Internet web site” or “web site,” suggesting the inventors understood “Internet site” and “web site” to be synonymous. See, e.g., id. at 2:6, 2:17, 2:20, 2:32, 2:39, 2:65, 3:31, 3:34, 3:35, 3:36, 3:38. In addition, the specification describes the saturation problem addressed by the ’586 patent as one experienced by Web sites. Id. at 6:4–8 (“A media may reach this saturation level due to pragmatic considerations such as limited physical size or space. In addition, saturation may occur due to a requirement to limit the cost of a producing a Web site, magazine, newspaper or other media application.”) One technical dictionary defines “Web site” as “[a] group of related HTML documents and associated files, scripts, and databases that is served up by an HTTP server on the World Wide Web.” Microsoft Computer Dictionary 564 (2002). Ex. 3001. Another states: “In more common usage [Web site] refers to individual sets of Web pages that can be visited with Web Browsers.” Newton’s Telecom Dictionary 913 (2004). Ex. 3002. Merriam-Webster defines Web site as “a group of World Wide Web pages usually containing hyperlinks to each other and made available online by an individual, company, educational institution, government, or organization.” See https://www.merriam-webster.com/dictionary/web%20site (last accessed Oct. 14, 2022). From these definitions, and consistent with the ’586 patent specification, we determine that an Internet site is a collection of HTML Web pages that can be accessed by users with Web browsers.” slip op. at 17

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

    “We are not persuaded that Petitioner has sufficiently demonstrated that Amjadi’s incentive host server 410 qualifies as an Internet site. As discussed, only two functions of the Incentive Host Server are disclosed by Amjadi: (1) distributing incentive information to incentive network server 420, and (2) registering subscribers discussed supra. See Ex. 1003, 7:40–42. Amjadi does not describe either function as involving HTML Web pages that can be accessed by users with Web browsers. Amjadi describes the user registration process as the server transmitting a registration form to the subscriber. Id. at 8:1–4 (also disclosing that the completed form is then transmitted back to the server); see also Prelim. Resp. 16–18.4 We see no disclosure in Amjadi of incentive host server 410 having a collection of Web pages that can be visited by users, nor is that evident from the described functions of the incentive host server.” slip op. at 18

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,244,586
• Kerr Machine Company v. S.P.M. Oil & Gas, Inc.Instituted
  PTAB · Jul 14, 2022 · IPR2022-00365 · APJ Meredith C Petravick · IPR · Institution

  The Board instituted IPR of claims 1–18 on all five grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “We will not discretionarily deny institution in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. See Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, 3, 7–8.7 Here, Petitioner offers such a stipulation. Prelim. Reply 1, 6 (citing Ex. 1047). Petitioner states: With respect to U.S. Patent No. 10,663,071, Kerr Machine Co. stipulates that if the Patent Trial and Appeal Board institutes a trial in IPR2022‐00365, Kerr will not pursue in the N.D. Texas district court litigation (C.A. No. 4:21‐cv‐01191‐O) any of the grounds raised in its IPR Petition (i.e., Grounds 1–5 as summarized on pages 2–3 of the Petition) against any of the challenged claims as originally issued, or on any other ground 7 available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf that Kerr reasonably could have raised during the IPR under 35 U.S.C. § 311(b) (i.e., a ground raised under §§ 102 or 103 only on the basis of prior art consisting of patents or printed publications). Ex. 1047. We, thus, decline to exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 6

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons discussed below, we determine that Petitioner shows a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we institute inter partes review of U.S. Patent No. 10,663,071 B2.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’071 patent would have had the following education and experience: “a bachelor’s degree in mechanical engineering, and approximately 3–5 years of work experience in the design or manufacture of reciprocating pumps or their components.” Pet. 11 (citing Ex. 1002 ¶ 64). Petitioner adds that “a POSITA with additional relevant education might have fewer years of work experience, e.g., someone with advanced mechanical engineering degrees would also qualify as a POSITA.” Id. At this stage of the proceeding, Patent Owner does not contest Petitioner’s definition of the level of skill or offer its own definition. See generally Prelim. Resp. For purposes of this decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8

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

    “1. “seating surface,” “inner surface,” “tungsten carbide,” “tungsten carbide nickel,” and “tungsten carbide cobalt” Petitioner proposes explicit constructions for the following terms: “seating surface,” “inner surface,” “tungsten carbide,” “tungsten carbide nickel,” and “tungsten carbide cobalt.” Pet. 12–21. Patent Owner responds that we need not explicitly construe any claim term and that these terms should be given their “ordinary and customary meaning in light of the claims, specification, and file history of the ’071 Patent as would have been read by a person of ordinary skill in the art (‘POSITA’) for the purpose of this proceeding.” Prelim. Resp. 13–14. We need not explicitly construe any of these term in order to decide whether to institute inter partes review. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy).” slip op. at 9

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,663,071
• Cradlepoint, Inc. / Dell Inc. et al. v. Sisvel International S.A.All claims unpatentable
  PTAB · Dec 13, 2021 · IPR2020-01070 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 10, 11, 13, 17, and 24 are unpatentable; the revised motion to amend proposing claims 36–40 is denied.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedOther

    “We do not find it necessary to resolve the differences between the contentions of the parties as to the appropriate level of skill in the art. Neither party explicitly applies or relies on its specific proposed level of skill in the art in support of its contentions relating to patentability. At oral argument, Petitioner’s counsel stated that there was no material dispute relating to the level of ordinary skill in the art. Tr. 7:18–23; see also Paper 51, 11 (“The results of the invalidity analysis are the same regardless of [the] definition used.”). In its Reply, Petitioner acknowledged, “[r]egardless of which POSITA definition is adopted, a POSITA’s understanding of the ’698 patent and prior art, reasons for making the combinations, and expectations of success would have been the same.” been the same.” Sur-reply 1. And, Patent Owner’s technical expert, Mr. Bates, acknowledged the differences between the contentions of the parties relating to the level of ordinary skill in the art are insignificant. Ex. 2006 (Bates Decl.) ¶ 22 (“[A]pplying Petitioner’s level of skill would not change my opinions.”). We agree and would make the same factual findings and reach the same ultimate conclusions with respect to both the challenged claims and the revised substitute claims under either of the contentions of the parties. To the extent necessary to conducting our analysis of the arguments and evidence in this proceeding, we adopt Patent Owner’s contention as to the level of ordinary skill in the art. It is the broader of the two and consistent with the level of skill reflected in the Specification and prior art.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner

    “There is no textual basis in the claim language for requiring a GSM or UMTS telecommunications network. Claim 10’s language is not plainly limited to GSM or UMTS telecommunications networks. Patent Owner identifies no disclaimer or explicit definition of “connection rejection message” in the ’698 patent that justifies importing a requirement for a GSM or UMTS telecommunications network. Patent Owner attempts to support its construction with this sentence from the Specification of the ’698 patent: “The invention is applicable in many different cellular telecommunication systems, such as the UMTS system or the GSM system.” Resp. 10 (citing Ex. 1001, 7:41–43). However, this language clearly is permissive, not mandatory. At most, this sentence explains that the cellular telecommunication system can be a UMTS system or GSM system; not that the cellular telecommunication system must be a UMTS system or GSM system.” slip op. at 13

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

    “There is no textual basis in the claims for requiring that the frequency information comprise multiple channels. Patent Owner identifies no disclaimer or explicit definition of “frequency parameter” in the ’698 patent that justifies importing a requirement that the frequency information comprise multiple channels.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Petitioner’s showing with regard to this limitation is well-supported and persuasive. We find Kallin discloses “receiving a connection rejection message” as recited in claim 10.” slip op. at 29

  Patent outcomesUS 7,433,698 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,433,698
• Sotera Wireless, Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · Nov 19, 2021 · IPR2020-01019 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1–25 are unpatentable as obvious over Saidara and Malangi, with claims 3–5, 10–12, 14, 16–17, and 24 also obvious over Saidara, Malangi, and Hickle; Baker-1 grounds were not reached.

  RulingsFinal written decision

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

    “embodiment of the claimed invention includes suspension of an activated alarm and no disclosed embodiment includes parameter-specific pre-alarm delays. Based on the overwhelming and clear disclosure in the Specification of the RE353 patent, we agree with Petitioner that “the correct construction—the construction that most accurately delineates the scope of the claimed invention” requires suspension of an activated alarm, and precludes delays or suspensions that occur before activation of an alarm, i.e., pre-alarm delays. See PPC Broadband, Inc. v. Corning Optical Comm’ns RF, LLC, 815 F.3d 734, 740–42 (Fed. Cir. 2016). We recognize that we do not import limitations from the Specification into the claims. Thorner, 669 F.3d at 1366–67 (“We do not read limitations from the specification into claims.”). It is indisputable, however, that claims must be interpreted in light of the Specification of which they are a part. Phillips, 415 F.3d at 1315–1316. This is because the claims “do not stand alone. Rather, they are part of ‘a fully integrated written instrument,’ consisting principally of a specification that concludes with the claims. For that reason, claims ‘must be read in view of the specification, of which they are a part.’” Id. As the Court of Appeals for the Federal Circuit has stated, “the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d 1576,” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person having ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or biomedical engineering or a related field with at least two years’ experience designing patient monitoring systems,” wherein “[l]ess work experience may be compensated by a higher level of education, and vice versa.” Pet. 13 (citing Ex. 1003 ¶¶ 33–41); see Ex. 1040 ¶ 28. Patent Owner applies the level of ordinary skill in the art identified by Petitioner. PO Resp. 8 n.5 (citing Ex. 2011 ¶¶ 18–19). We adopt Petitioner’s assessment, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 12

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “Sur-reply 4–5. We recognize Mr. Goldberg’s testimony that, “in reading the patent as a whole, I believe that pre-alarm delays are, in fact, disclosed.” Ex. 1042, 118:2–13. When pressed to show support in the Specification, however, Mr. Goldberg pointed, first, to the disclosed “other suspend initiator” and, second, to the disclosed alarm suspend firmware that, he contends, “implies . . . a[n] ability to suspend the alarm other than by the alarm silence [button].” See id. at 118:20–123:4 (pointing to Ex. 1001, 4:60–63, 5:37, Figs. 2, 4). We do not find this testimony or Patent Owner’s argument persuasive. First, that the claimed system could suspend the alarm in a manner other than the described silence button (i.e., with the “other suspend initiator”), does not alter the fact that the Specification only discloses suspending an alarm after it has been activated. Second, the firmware upon which Mr. Goldberg relies is disclosed as “respond[ing] to an alarm silence button press 288.” Ex. 1001, 5:38–41. Accordingly, we give little weight to Mr. Goldberg’s conclusory testimony that pre-alarm delays are disclosed, because this testimony is unsupported by any persuasive cited evidence. See 37 C.F.R. § 42.65(a).” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundNot shown unpatentableMixed

    “The Petition provides limited guidance in this regard. Petitioner contends that it would have been obvious to also monitor blood pressure with Saidara’s device, as taught by Malangi, and provides reasons why such a modification would have been desirable. Pet. 68. Even accepting these reasons, for the sake of argument, the Petition is silent as to how a skilled artisan would have implemented Malangi’s teachings in Saidara. Id. at 67– 69. In its Reply, Petitioner cites testimony that is insufficient to support its contentions. For example, Petitioner relies upon the testimony of its expert, Dr. Bergeron, that a person of ordinary skill in the art “understood how [to] measure blood pressure.” Ex. 1040 ¶ 109; Pet. Reply 23. Petitioner also relies on the testimony of Patent Owner’s expert, Mr. Goldberg, that blood pressure cuffs were prevalent. Ex. 1042, 45:18–46:7; Pet. Reply 23. Both points may well be true. However, neither Petitioner, nor the cited expert testimony, explains persuasively how a skilled artisan would have known how to integrate Malangi’s teaching of monitoring and alarming for blood pressure (whether using a prevalent and well-known blood pressure cuff or any other device) with Saidara’s particular system, nor do they discuss the detriments or benefits of such a modification, e.g., the increased size and complexity of incorporating a blood pressure cuff into Saidara’s device. It is Petitioner’s burden to do so. It is insufficient to merely establish that it was known to use blood pressure cuffs to monitor that parameter.14 For the foregoing reasons, we agree with Patent Owner that Petitioner fails to explain sufficiently how a person of ordinary skill in the art would have modified Saidara to also monitor, alarm, and delay alarms for blood pressure, and leaves it to the Board to piece together the proposed modification. PO Resp. 61–62; but see Pet. Reply 25, and Ex. 1040 ¶¶ 109– 111 (explaining how, apart from blood pressure monitoring, SpO2 monitoring and alarming would have been achieved in the combination).” slip op. at 44

  Patent outcomesUS RE47,353 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
• Sotera Wireless, Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · Nov 19, 2021 · IPR2020-00967 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1–26 are unpatentable, principally as obvious over Saidara and Malangi; the Board did not reach the alternative Baker-1 grounds.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “3. Discussion Contrary to Patent Owner’s assertions, we find that every disclosed embodiment of the claimed invention includes suspension of an activated alarm and no disclosed embodiment includes parameter-specific pre-alarm delays. Based on the overwhelming and clear disclosure in the Specification of the RE244 patent, we agree with Petitioner that “the correct construction—the construction that most accurately delineates the scope of the claimed invention” requires delay or suspension of an activated alarm, and precludes delays or suspensions that occur before activation of an alarm, i.e., pre-alarm delays. See PPC Broadband, Inc. v. Corning Optical Comm’ns RF, LLC, 815 F.3d 734, 740–42 (Fed. Cir. 2016).” slip op. at 24

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

    “Petition does not provide a means-plus-function construction as required by 37 C.F.R. § 42.104(b)(3). Id. Petitioner replies that “the limitation recites sufficient structure” to perform the specified function (i.e., “outputting a signal responsive to a physiological condition of a patient” (Ex. 1001, 10:39–42)). Pet. Reply 27 (citing Ex. 1040 ¶ 117). In the Sur-reply, Patent Owner contends that Petitioner has the burden on this issue. PO Sur-reply 26–27. We credit Dr. Bergeron’s testimony that a person of ordinary skill in the art “would understand that a ‘physiological sensor means’ is just a physiological sensor that provides signals to a processor for measuring physiological parameters.” Ex. 1040 ¶ 117 (cited at Pet. Reply 27). We find that the limitation includes sufficient structure to perform the claimed function, and thus, is not a means-plus-function limitation. See TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–1260 (Fed. Cir. 2008) (the presumption that § 112 ¶ 6 applies is overcome if “the claim recites sufficient structure for performing the described functions in their entirety”)).” slip op. at 58

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person having ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or biomedical engineering or a related field with at least two years’ experience designing patient monitoring systems,” wherein “[l]ess work experience may be compensated by a higher level of education, and vice versa.” Pet. 13 (citing Ex. 1003 ¶¶ 33–41); see Ex. 1040 ¶ 28. Patent Owner applies the level of ordinary skill in the art identified by Petitioner. PO Resp. 8 n.5 (citing Ex. 2011 ¶¶ 18–19). We adopt Petitioner’s assessment, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 12

  • ExcludeMotion to exclude, deniedDenied

    “G. Motion to Exclude Petitioner moves to exclude portions of Exhibits 2017 and 2022. MTE 1, 3, 5. We do not rely upon the identified portions of the exhibits and, as such, dismiss the Motion to Exclude as moot. III. CONCLUSION” slip op. at 62

  Patent outcomesUS RE47,244 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
• Supercell OY v. Gree, Inc.Rehearing denied
  PTAB · Nov 18, 2020 · PGR2020-00041 · APJ Lynne H Browne · PGR · Rehearing

  The Board denied Supercell’s rehearing request, upholding denial of institution based on the Fintiv factors and the risk of duplicated efforts and inconsistent results.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner

    “this factor or that we misapprehended the trial date. At the time of our Decision, trial was scheduled in the parallel proceeding for December 7, 2020, approximately nine months before our final written decision would have been due, if we were to institute trial. Dec. 10–11. As such, this gap in timing created a cognizable risk of inconsistent results and duplication of efforts, which weighed toward denying institution. Id. at 7, 11. Additionally, the Decision notes that some uncertainty exists regarding trial dates, as Petitioner again argues in its Request. Id. at 11; Req. Reh’g 4. However, the Decision goes on to determine that even if trial in the parallel proceeding was delayed by two months, consistent with Petitioner’s prior requested delay, the proximity of the trial date to our final written decision would still favor denying institution. Dec. 12 (citing Ex. 2002, 2). As such, Petitioner has not shown that the Board misapprehended the trial date.” slip op. at 5

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was” slip op. at 8

  • BurdenDecided for patent owner

    “Petitioner was provided an opportunity to respond to this evidence to address any “time-based distinctions in Dr. Claypool’s testimony,” however, Petitioner declined to address this testimony in its Preliminary Reply, despite having the opportunity to do so. Prelim. Reply 5–7. We decline to consider now, on rehearing, arguments that Petitioner failed to make in its pre-institution papers. It is Petitioner’s burden to demonstrate that Mastermind was publicly accessible. As we stated in our Decision, this prior testimony casts serious doubt on Petitioner’s ability to satisfy that burden. Dec. 25. We also decline to consider new testimonial evidence submitted on rehearing on this issue, as Petitioner does not show good cause for admitting this new evidence. See Huawei Device Co. v. Optics Cellular Tech., LLC, IPR2018-00816, Paper 19 (PTAB Jan. 8, 2019) (precedential) (showing of “good cause” required prior to filing a rehearing request or in the request itself for new exhibits to be admitted). We could not have misapprehended or overlooked evidence and arguments that were not made before our Decision.” slip op. at 9

  § 102 anticipationDiscretionary denial
  Patents in suitUS 10,307,677
• Supercell OY v. Gree, Inc.Rehearing denied
  PTAB · Nov 18, 2020 · PGR2020-00039 · APJ Lynne H Browne · PGR · Rehearing

  The Board denied Supercell’s rehearing request, leaving in place denial of institution of PGR challenging claims 1–24 based on the Fintiv factors and parallel litigation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). Additionally, 37 C.F.R. § 42.71(d) further provides that “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” i.e., Petitioner, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “the parties jointly requested a trial delay in the prior proceeding, from December 7, 2020, to March 1, 2021, which the district court granted. Ex. 1024, 1. Even considering these post-Decision developments, this three month delay results in a trial date in the parallel proceeding set six months before our final written decision would be due. Similar to the potential delay discussed in our Decision, a jury trial set to begin six months before a final written decision also weighs in favor of denying institution. Dec. 12; see Prelim. Resp. 11 (identifying three prior PTAB proceedings in which institution was denied where trial was scheduled to occur six months before a final written decision, including the precedential NHK Spring decision). We decline to speculate, absent case-specific evidence, as to any future additional delay of the parallel proceeding’s trial date that may— or may not—be requested by the parties, and that may—or may not— be granted by the district court. See Ex. 1024, 1, 4 (indicating that the trial date “cannot be changed without showing good cause,” which “is not shown merely by indicating that the parties agree that the deadline should be changed”) (emphasis omitted). On the current record, a cognizable risk of inconsistent results exists, due to the scheduled date of trial and the statutory due date of a final written decision.3” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedOther

    “contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was publicly accessible. Dec. 24–25. Specifically, we relied upon Dr. Claypool’s prior testimony that, 4 “Mastermind’s In-Game Builder Idea (with LOADS of pictures!)” (“Mastermind”), available at https://web.archive.org/web/20130915081112/http:/forum.supercell.net:80/s howthread.php/149687-Mastermind-s-In-Game-Builder-Idea-(with-LOADSof-pictures!) (in two parts) (Ex. 1015, “Olesiuk Decl.”). it is my opinion that a diligent, skilled researcher engaged in a reasonable search for prior art would not have found Mastermind as a prior art reference even with the benefit of [Patent Owner’s] infringement contentions before the filing of the Petition for Post-Grant Review. A diligent, skilled researcher would not spend time sifting through the suggestions provided on Internet message boards, as they would normally not include useful or sufficiently detailed suggestions. Ex. 2009 ¶ 164 (emphasis added); Dec. 25.” slip op. at 8

  • Other 314aDecided for patent owner

    “different posture of PGR proceedings as compared to IPR proceedings, when exercising discretion to deny institution. As summarized above, the Decision discusses that common statutory language exists in § 314(a)— directed toward IPR proceedings—and in § 324(a)—directed to post-grant review proceedings. See supra § I.A; Dec. 5–8. The Decision also discusses the common policy justifications implicated when determining whether to institute either an IPR proceeding or a PGR proceeding. Dec. 6–7. The Decision then goes on to recognize and discuss certain differences between PGR proceedings and IPR proceedings. Id. at 7–8. Despite these differences, we determined that the Board’s binding precedent set forth in NHK Spring and Fintiv applies to this PGR proceeding. Id. In doing so, we additionally evaluated certain differences between PGR proceedings and IPR proceedings, when considering the Fintiv Order factors. See, e.g., id. at 12, 15–16, 18–20. Petitioner has not demonstrated that we abused our discretion in doing so.” slip op. at 11

  § 102 anticipationDiscretionary denial
  Patents in suitUS 10,307,676
• Supercell OY v. Gree, Inc.Rehearing denied
  PTAB · Nov 2, 2020 · PGR2020-00038 · APJ Amanda F Wieker · PGR · Rehearing

  The Board denied rehearing of its decision denying institution of PGR on claims 1-30, finding no abuse of discretion in applying the Fintiv factors to the parallel litigation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “B. Request for Rehearing Standards When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). Additionally, 37 C.F.R. § 42.71(d) further provides that “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” i.e., Petitioner, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”” slip op. at 4

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner

    “the parties jointly requested a trial delay in the prior proceeding, from December 7, 2020, to March 1, 2021, which the district court granted. Ex. 1026, 1 (requesting delay); see also Ex. 1029, 1. Even considering these post-Decision developments, this three month delay results in trial in the parallel proceeding occurring six months before our final written decision. Similar to the potential delay discussed in our Decision, a jury trial set to begin six months before a final written decision also weighs in favor of denying institution. Dec. 12; see Prelim. Resp. 10 (identifying three prior PTAB proceedings in which institution was denied where trial was scheduled to occur six months before a final written decision, including the precedential NHK Spring decision). We decline to speculate, absent case-specific evidence, as to any future additional delay of the parallel proceeding’s trial date that may— or may not—be requested by the parties, and that may—or may not— be granted by the district court. See Ex. 1029, 1, 4 (indicating that the trial date “cannot be changed without showing good cause,” which “is not shown merely by indicating that the parties agree that the deadline should be changed”) (emphasis omitted). On the current record, a cognizable risk of inconsistent results exists, due to the scheduled date of trial and the statutory due date of a final written decision.3” slip op. at 6

  • Other 314aDecided for patent owner

    “different posture of PGR proceedings as compared to IPR proceedings, when exercising discretion to deny institution. As summarized above, the Decision discusses that common statutory language exists in § 314(a)— directed toward IPR proceedings—and in § 324(a)—directed to post-grant review proceedings. See supra § I.A; Dec. 5–8. The Decision also discusses the common policy justifications implicated when determining whether to institute either an IPR proceeding or a PGR proceeding. Id. at 7. The Decision then goes on to recognize and discuss certain differences between PGR proceedings and IPR proceedings. Id. at 7–8. Despite these differences, we determined that the Board’s binding precedential case law set forth in NHK Spring and Fintiv applies to this PGR proceeding. Id. In doing so, we additionally evaluated certain differences between PGR proceedings and IPR proceedings, when considering the Fintiv Order factors. See, e.g., id. at 12–13, 15–17, 19–21. Petitioner has not demonstrated that we abused our discretion in doing so.” slip op. at 11

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “Decision, accompanied by a Motion to Excuse Late Filing, which explained that Petitioner attempted to file its Request on October 5, 2020 and contended that good cause exists for excusing the late filing of the Request. Paper 15 (“Mot.”); Paper 16 (“Req. Reh’g”). Petitioner’s Motion demonstrates a lack of prejudice to Patent Owner, who does not oppose the Motion and was served timely with the Request on October 5, 2020, and sufficient good cause in these circumstances. Mot. 1–2, 4. Accordingly, we grant Petitioner’s Motion to Excuse Late Filing.” slip op. at 3

  Discretionary denial
  Patents in suitUS 10,307,675
• Supercell OY v. Gree, Inc.Rehearing denied
  PTAB · Nov 2, 2020 · PGR2020-00034 · APJ Amanda F Wieker · PGR · Rehearing

  The Board denied Supercell’s rehearing request, leaving in place the denial of institution based on the Fintiv factors and the parallel district court proceeding.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner

    “this factor. At the time of our Decision, trial was scheduled in the parallel proceeding for December 7, 2020, approximately nine months before our final written decision would have been due, if we were to institute trial. Dec. 10–11. As such, this gap in timing created a cognizable risk of inconsistent results and duplication of efforts, which weighed toward denying institution. Id. at 6, 11–12. Additionally, the Decision notes that some uncertainty exists regarding trial dates, as Petitioner again argues in its Request. Id. at 11; Req. Reh’g 3–4. However, the Decision goes on to determine that even if trial in the parallel proceeding was delayed by two months, consistent with Petitioner’s prior requested delay, the proximity of the trial date to our final written decision would still favor denying institution. Dec. 12 (citing Ex. 2002, 2). As such, Petitioner has not shown that the Board misapprehended the trial date.” slip op. at 5

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

    “Thus, unlike the Request, the Petition did not contend that a skilled artisan would have found it obvious that “[Cho’s communication] may comprise one player specifying, to the server, information identifying another player to be involved in the game.” Compare id. at 46–47, with Req. Reh’g 6–7 (emphasis added). To the contrary, the Petition simply stated that a skilled artisan would understand that Cho taught transmissions through a server, but did not state that it would have been obvious, in light of Cho’s teachings, for this transmission to include first information. As discussed in our Decision, the Petition’s reliance on GSB to supply the transmission of “first information” fails because Petitioner has not explained persuasively why it would have been obvious to transmit GSB’s first information when Cho already establishes a communication between players and because Petitioner fails to explain “how the additional transmission of identifying information would simplify communications or allow easier connection, over the communication that Cho already establishes.” Dec. 24.” slip op. at 9

  • Other 314aDecided for patent owner

    “different posture of PGR proceedings as compared to IPR proceedings, when exercising discretion to deny institution. As summarized above, the Decision discusses that common statutory language exists in § 314(a)— directed toward IPR proceedings—and in § 324(a)—directed to post-grant review proceedings. See supra § I.A; Dec. 5–7. The Decision also discusses the common policy justifications implicated when determining whether to institute either an IPR proceeding or a PGR proceeding. Id. at 7. The Decision then goes on to recognize and discuss certain differences between PGR proceedings and IPR proceedings. Id. Despite these differences, we determined that the Board’s binding precedential case law set forth in NHK Spring and Fintiv applies to this PGR proceeding. Id. In doing so, we additionally evaluated certain differences between PGR proceedings and IPR proceedings, when considering the Fintiv Order factors. See, e.g., id. at 12, 15–17, 20–21. Petitioner has not demonstrated that we abused our discretion in doing so.” slip op. at 11

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 10,300,385
• Unified Patents Inc. v. S.I.Sv.El. Societa Italiana Per Lo Sviluppo Dell’Elettronica S.P.A.Some claims unpatentable
  PTAB · Jun 25, 2020 · IPR2019-00471 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1, 4, 8, 11–13, and 16–18 are unpatentable as obvious over Easty and Hendricks, and Easty, Hendricks, and Kittaka; claim 10 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelOther

    “that a person of ordinary skill would have had “(i) an undergraduate degree in computer science, computer engineering, or similar technical field; and (ii) one to two years of experience in analysis, design, or development related to recommender systems and collaborative filtering, with additional education substituting for less experience and vice versa.” Pet. 6 (citing Ex. 1003 (Terveen Decl.) ¶¶ 22–24). Patent Owner contends the applicable level of ordinary skill in the art would have had “(i) a B.S. in Computer Science or a closely related field with three or more years of experience in either embedded systems or recommendation systems or (ii) at least an M.S. in Computer Science. Additional education or experience may serve as a substitute for these requirements.” PO Resp. 19 (citing Ex. 2001 (Pazzani Decl.) ¶ 24) (internal citations omitted). Although these contentions differ slightly in the amount of required experience, they are very similar, and neither party contends that these differences are material to any issue in dispute.” slip op. at 9

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

    “We are also guided by the principle that we only construe claim terms if, and to the extent that, it is necessary. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))). In the Petition, Petitioner proposes constructions for “implicit filtering” and “explicit filtering.” Pet. 8–9. Patent Owner does not dispute Petitioner’s proposed constructions. Prelim. Resp. 33. Patent Owner does not dispute Petitioner’s showing that the cited art teaches “implicit filtering” and “explicit filtering” as used in the context of the claims of the ’680 patent. See generally PO Resp. Thus, we do not discern any dispute between the parties regarding these terms. As construction of these terms is not necessary in order to resolve this proceeding, we do not explicitly construe these terms.” slip op. at 11

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

    “We do not agree. First and foremost, the Specification does not provide that this “metaphor” or “pictorial representation” is a limiting contrary. The Specification states: “While the library metaphor is a particularly useful personalized visualization of heterogeneous media, other useful visualizations are possible. Other possible visualizations include, for example, simple nested menus and an office and file drawer metaphor.” Id. at 5:11–15. Patent Owner does not explain, and we do not discern, how the alternative visualizations of “simple nested menus” or “an office and file drawer metaphor” support Patent Owner’s proposed construction. Second, the description of the “virtual library” metaphor in the Specification does not support Patent Owner’s proposed construction. With regard to that portion of Patent Owner’s proposed construction that provides “a personalized collection of information,” the same paragraph Patent Owner cites states, “The types of floors in the virtual library, the types of stacks populating each floor, and the specific media items on each of the stacks preferably are selected based on the user’s profile, although they may also be based on all of the information that is available to the metabrowser when the available information is a relatively small and manageable amount.” Ex. 1001, 3:10–15 (emphasis added). The alternative of displaying “all of the information that is available to the metabrowser,” as opposed to content “selected based on the user’s profile,” does not support limiting “virtual library” to require personalization.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “providing that a disclaimer of claim scope during prosecution must be clear and unmistakable. PO Resp. 5 (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325–26 (Fed. Cir. 2003) (“Although a patent’s prosecution history is relevant to the claim construction analysis, any disclaimer of claim scope based on prosecution history must be ‘clear and unmistakable.’”)). Patent Owner does not argue or explain how or why the passages it quotes from the prosecution history constitute a clear and unmistakable disclaimer. See PO Resp. 21–22. These passages were used by the Applicant in its patentability arguments. See Ex. 1002, 124, 125, 151, 153. In response to these arguments, the Examiner found the Applicant was arguing unclaimed features of the invention. Id. at 177–178. The Examiner wrote: As per Appellant’s argument that a meta-browser is not an obvious variant of a browser, Appellant is arguing matter not explicitly claimed in the claims of the specification. Appellant further argues that the claimed invention involves searching a multitude of sources, where Rapaport[17] teaches searching the single source of the Internet. However, Appellant does not distinguish in claims what that [sic] a multitude of sources are searched in addition to the Internet. Applicant further argues that the meta-browser “preferably monitors for data events even if the user engages in other activities such as…” Appellant continues to argue features not claimed in the claims of the specification. As per Appellant’s argument that the virtual library of the claimed invention searches outside the scope of the Internet and is more than just a text-based search engine, Appellant is arguing features not claimed in the claims of the specification. Id., see also id. at 367. And, on appeal from this rejection, this argument was evaluated and rejected by a predecessor of the Board, the Board of” slip op. at 18

  Patent outcomesUS 7,734,680 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,734,680

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.