• Foursquare Labs, Inc. v. Boardactive CorporationAll claims unpatentable
  PTAB · Nov 27, 2024 · IPR2023-00918 · APJ Robert J Silverman · IPR · Final written decision

  Claims 1–29 are unpatentable: claims 1–27 under the Adharapurapu (Alcatel) and Kerr obviousness ground, and claims 28–29 under the Adharapurapu (Alcatel) anticipation ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Our Institution Decision addressed the matter of the appropriate level of ordinary skill, in view of the Petition and the Preliminary Response, as follows: The parties’ descriptions of the level of ordinary skill at the time of the invention do not appear to differ in any material way that would affect this Decision. However, at this stage of the proceeding, it is unclear whether it would be proper to require Patent Owner’s proposed requirement of “three years of experience working with digital advertising and geofencing.” Prelim. Resp. 10–11. Accordingly, for the purposes of this [Institution] Decision, we adopt Petitioner’s description of the relevant level of skill in the art, because it appears to be consistent with the level of skill reflected in the ’620 patent and asserted prior art. Inst. Dec. 16. Patent Owner’s Response endorses the determination presented in the Institution Decision. PO Resp. 2. Petitioner does not address our initial determination in its Reply. See generally Pet. Reply. Accordingly, consistent with our Institution Decision, in this Final Written Decision, we employ Petitioner’s description of the relevant level of skill in the art. C. Claim Interpretation” slip op. at 12

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

    “The Specification of the ’620 patent supports the understanding that a “consumer” is “a user or person,” per Patent Owner’s proposal (PO Resp. 11). See Ex. 1001, 8:36–38 (“The AdDrop™ may require the consumer to be one of the first few people to input an answer to a question to win the promotion.”) However, Patent Owner’s further proposed requirement — i.e., that a “consumer” be someone “to whom an advertisement may be sent” — would cloud, rather than clarify, the term’s meaning. PO Resp. 11 (emphasis added). For instance, under Patent Owner’s construction, it is not clear if “consumers” require access to the cellular network or Internet in order to be sent advertisements. Further, Patent Owner’s proposed construction would not assist in resolving any issue in this proceeding, contrary to our ambition to construe claim terms “only to the extent necessary to resolve the controversy.” Vivid Techs., 200 F.3d at 803. Moreover, the role of the term “consumer,” in the ’620 patent’s claims, is based upon the relationship of the “consumer” to particular actions and instrumentalities, e.g., associated “media content,” “profile data,” or a “device.” See, e.g., Ex. 1001, 37:57, 66–67, 38:15. In view of the foregoing, we do not adopt Patent Owner’s proposed construction that requires a “consumer” to be a person “to whom an advertisement may be sent.” See PO Resp. 11 (emphasis added). D. Prior Art References” slip op. at 15

  • Strike new argumentNew argument disregardedDecided for petitioner

    “As an initial matter, such a new argument that is introduced in a Sur- reply is improper. See 37 C.F.R. § 42.23(b) (“A sur-reply may only respond to arguments raised in the corresponding reply.”); Consolidated Trial Practice Guide10 74 (Nov. 2019) (“While replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered. The Board is not required to attempt to sort proper from improper portions of the reply or surreply.”); Hulu, LLC v. SITO Mobile R&D IP, LLC, IPR2021-00158, Paper 34 at 55 (PTAB Apr. 15, 2022). In addition, Patent Owner’s new “geolocation” argument is founded on attorney argument, without adequate support in record evidence, and is contradicted by the unchallenged testimony of Dr. Goldberg. See Ex. 2002 ¶¶ 29–66 (discussing terrestrial location technologies), 175–195 (discussing the disclosure of “geolocation” features in the Adharapurapu (Alcatel) reference).” slip op. at 22

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

    “Yet, Patent Owner does not address Petitioner’s stated reasons (quoted above) for combining teachings of Adharapurapu (Alcatel) and Kerr, regarding the “registering asset data” features of limitation 1(a) (including its subparts) — reasons that are supported by the unchallenged testimony of Dr. Goldberg. See Pet. 50–51 (citing Ex. 1002 ¶¶ 196–197). Still further, Patent Owner does not address Petitioner’s other reasons for combining teachings of Adharapurapu (Alcatel) and Kerr, concerning the recited “content interaction layer” and “consumer tracking layer” features of limitation 1(b) (including its subparts): , POSITA would have found it obvious to incorporate Kerr’s user content interaction features into Alcatel to provide user subjective information/feedback for improving the accuracy, reducing noise, and enhancing efficiency in tailored communications. Pet. 43–44. Petitioner’s discussion of these reasons for combining the references’ teachings is supported by additional unrebutted testimony of Dr. Goldberg. Ex. 1002 ¶ 180. Having considered the parties’ arguments and the evidence of record (including the unchallenged testimony of Dr. Goldberg), we determine that Petitioner has sufficiently shown that the combination of Adharapurapu (Alcatel) and Kerr teach or suggest limitation 1(a) (including all subparts).” slip op. at 23

  Patent outcomesUS 10,621,620 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,621,620
• Foursquare Labs, Inc. v. Boardactive CorporationAll claims unpatentable
  PTAB · Nov 27, 2024 · IPR2023-00919 · APJ Michael L Woods · IPR · Final written decision

  Claims 1–23 are unpatentable: claims 13–19 were anticipated by Felt, and claims 1–23 would have been obvious over Adharapurapu and Felt.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Accordingly, we deny Petitioner’s motion to exclude in its entirety. IV. PATENT OWNER’s MOTION TO EXCLUDE Patent Owner moves to exclude Exhibits 1002 and 1009—the” slip op. at 84

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

    “Accordingly, the Petition fails to establish that Felt satisfies” slip op. at 34

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

    “uncontroverted testimony of Dr. Goldberg, and the reasoning to combine the references, Petitioner has shown by a preponderance of the evidence that claims 1–23 would have been obvious over the combination of Adharapurapu and Felt (Ground 6). Petitioner has also shown, by a preponderance of the evidence, that Felt anticipates claims 13–19 (Ground 1), renders obvious claims 13–19 (Ground 2), and that claims 1–19 would have been obvious over Felt in view of Creemer or Scofield (Ground 4).” slip op. at 86

  Patent outcomesUS 10,692,108 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,692,108
• Hum Industrial Technology, Inc. v. Amsted Rail Company, Inc.All claims unpatentable
  PTAB · Aug 6, 2024 · IPR2023-00540 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 21–30, 36, and 37 are unpatentable as obvious; the Revised Motion to Amend is denied, and the Motion to Exclude is dismissed as moot.

  RulingsFinal written decision

  • Skill levelDecided for petitioner

    “G. Level of Ordinary Skill in the Art We consider the asserted grounds of unpatentability in view of the” slip op. at 10

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

    “B. Other Claim Terms The parties do not dispute the construction of any other claim terms and we find that no other terms require express construction to resolve the controversy between the parties. Accordingly, we do not construe any other claim terms expressly. See Realtime Data, 912 F.3d at 1375 (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., 200 F.3d at 803).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Accordingly, we find that Petitioner has shown sufficiently that a person of ordinary skill in the art would have been motivated to combine the teachings of Armitage and Barone in the manner suggested. ix. Summary as to Claim 1 We find that Petitioner has shown sufficiently that the combination accounts for the limitations of claim 1, and that a person of ordinary skill would have been motivated to combine Armitage and Barone with a reasonable expectation of success. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that claim 1 would have been obvious over Armitage and Barone.” slip op. at 35

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “include selection of data along certain axes or combinations of axes measured by the accelerometer and ignoring unselected data, well-supported and entitled to substantial weight. See Ex. 1025 ¶¶ 4–6. We find Dr. Shamos’s testimony to the contrary, Ex. 2006 ¶¶ 40–42, inconsistent with the disclosure of the challenged patent, and entitled to little weight. Patent Owner argues that Armitage does not monitor all of the axes, like the ’915 patent. See Sur-reply 1–3. However, the ’915 patent, just like in Armitage, isolates the data from a single axis for further analysis. See Ex. 1001, 13:17–24. Thus, we do not find Patent Owner’s distinction to be persuasive. Accordingly, we find that Petitioner has shown that Armitage accounts for this limitation.” slip op. at 24

  Patent outcomesUS 10,137,915 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,137,915
• Hum Industrial Technology, Inc. v. Amsted Rail Company, Inc.All claims unpatentable
  PTAB · Jul 18, 2024 · IPR2023-00539 · APJ James P Calve · IPR · Final written decision

  The Board held original claims 1–18 and 20–22 unpatentable over the asserted obviousness grounds, denied the revised motion to amend, and held substitute claims 23–43 ineligible and unpatentable.

  RulingsFinal written decision

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

    “f. Conclusion We determine that Petitioner has established by a preponderance of” slip op. at 27

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

    “2. Motivation to combine a. Petitioner’s contentions Petitioner contends that a skilled artisan would have combined the teachings of LeFebvre and Barone to monitor the condition of railcar wheels and bearings using sensors connected over a wireless mesh network and to analyze collected data to determine if a wheel bearing failure is imminent and issue an alert to the locomotive or central station. Pet. 42–43 (citing Ex. 1007, code (57), Abstr., ¶¶ 45, 86, 201–220; Ex. 1003 ¶¶ 157–162). b. Patent Owner’s arguments Patent Owner does not contest these assertions regarding a motivation to combine LeFebvre and Barone. See generally PO Resp.; Sur-reply. c. Conclusion We determine a skilled artisan would have combined the teachings of” slip op. at 51

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “(4) Conclusion We determine that Patent Owner has demonstrated that the inventors” slip op. at 59

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

    “(4) Conclusion We determine that the above-described lack of clarity in the meaning” slip op. at 72

  Patent outcomesUS 9,981,673 unpatentable
  § 101 eligibility§ 102 anticipation§ 103 obviousnesscites Enfish · Electric Power · Phillips · KSR · Graham
  Patents in suitUS 9,981,673
• Yita LLC / Jinrong (SH) Automotive Accessory Industrial Development Co. Ltd. v. Macneil IP LLCAll claims unpatentable
  PTAB · Jun 6, 2024 · IPR2023-00173 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–6 are unpatentable as obvious: claims 1–2 over Stanesic, Rothkop, and Cicotte; claims 3–6 over that combination with Lee, Fisker, Gruenwald, or Fu, respectively.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would” slip op. at 12

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

    “tray is “deeply concave” but fails to direct us to any part of the Specification using the term “deeply concave” let alone a clearly stated definition of “deeply concave” in the context of a vehicle floor tray. The response to office action, cited by Patent Owner, refers to the tray as concave not deeply concave and thus, does not support Patent Owner’s proposed construction. Ex. 2097, 11. For these reasons, to the extent that Patent Owner relies on the prosecution history as a disclaimer of the full scope of claims, we find that the cited response to the office action does not constitute “a clear and unmistakable disclaimer of claim scope.” Uship, 714 F. 3d at 1315.” slip op. at 18

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

    “As explained below in our conclusion on motivation to combine, we” slip op. at 56

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “argument that Fu is not analogous art. PO Resp. 51. Dr. Kurfess first testifies that an ordinarily skilled artisan “never would have looked to Fu, or anything related to those fields, let alone micro-devices such as hearing aid shells to solve problems related to the automotive industry.” Ex. 2023 ¶ 144. Dr. Kurfess then testifies that “Fu is a disclosure for a hearing aid shell . . . and a [person of ordinary skill in the art] . . . would not consider the art of medical devices when trying to solve problems with vehicle floor mats.” Id. ¶ 188. Lastly, Dr. Kurfess testifies that “I completely disagree with Mr. Perreault’s conclusion that ‘a [person of ordinary skill in the art]” slip op. at 97

  Patent outcomesUS 9,138,917 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,138,917
• Yita LLC / Jinrong (SH) Automotive Accessory Industrial Development Co. Ltd. v. Macneil IP LLCAll claims unpatentable
  PTAB · Jun 6, 2024 · IPR2023-00172 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–6 are unpatentable as obvious over the stated combinations of Stanesic, Rothkop, and the respective additional references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering, industrial design, or a closely related field, or equivalent formal training, education, or practical experience in a field relating to product design, CAD, or manufacturing.” Pet. 13 (citing Ex. 1003 ¶¶ 27–28). Petitioner further contends that the person of ordinary skill in the art “would also have a minimum of three to five years of experience in plastics engineering, CAD, manufacturing, plastic product design, or a related industry,” but that “a higher level of training or practical experience might make up for less education, and vice-versa.” Id. Patent Owner contends that a person of ordinary skill in the art would have “a Bachelor of Science in mechanical engineering, industrial design, or a closely related field, or equivalent formal training education or practical experience in a field relating to product design, CAD, or manufacturing.” PO Resp. 9. Patent Owner further contends that such an ordinarily skilled artisan “would also have two or more years of manufacturing/industrial experience in the automotive aftermarket art.” Id. Petitioner replies that its “level of skill is more appropriate given the claims’ focus on three-dimensional scanning and modeling (which apply to many industries).” Pet. Reply 9 (citing Ex. 1001, claim 1; Ex. 1055 ¶¶ 7– 13). According to Petitioner, however, “the claims would have been obvious even under [Patent Owner]’s proposed skill level.” Id. (citing Ex. 1055 ¶ 13). Petitioner refers to Dr. Kurfess’s declaration testimony as admitting that three-dimensional scanning and modeling are pertinent to the ’655 patent. Id. at 10 (citing Ex. 2023 ¶ 18). In the Sur-reply, Patent Owner contends that Petitioner’s definition of” slip op. at 12

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

    “[A] conclusion of obviousness requires a reasonable expectation of success.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1365 (Fed. Cir. 2016) (citing KSR, 550 U.S. at 421). Further, “the ‘predictable result’ discussed in KSR refers not only to the expectation that prior art elements are capable of being physically combined, but also that the combination would have worked for its intended purpose.” DePuy Spine, 567 F.3d at 1326 (citations omitted). “Obviousness does not require absolute predictability of success . . . all that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–904 (Fed. Cir. 1988) (citations omitted). With these principles in mind, we evaluate the parties’ respective contentions. Patent Owner’s argument that there is no reasonable expectation of success in the proposed combination revolve around the scanning of a vehicle footwell. The ’655 patent describes that “points on the vehicle foot well for which the floor tray is to be manufactured are digitally measured and captured. Preferably this step uses a coordinate measuring machine (CMM).” Ex. 1001, 16:41–44. Further, the “FARO® Arm has been efficacious in obtaining these data using a contact method.” Id. at 16:47–48. The company manufacturing the FARO Arm was “[f]ounded in 1982 to provide portable CMMs in the medical industry” and “transitioned to the worldwide industrial market in 1993.” Ex. 1003 ¶ 49. Patent Owner does slip op. at 49

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “argument that Fu is not analogous art. PO Resp. 51. Dr. Kurfess first testifies that an ordinarily skilled artisan “never would have looked to Fu, or anything related to those fields, let alone micro-devices such as hearing aid shells to solve problems related to the automotive industry.” Ex. 2023 ¶ 144. Dr. Kurfess then testifies that “Fu is a disclosure for a hearing aid shell . . . and a [person of ordinary skill in the art] . . . would not consider the art of medical devices when trying to solve problems with vehicle floor mats.” Id. ¶ 188. Lastly, Dr. Kurfess testifies that “I completely disagree with Mr. Perreault’s conclusion that ‘a [person of ordinary skill in the art] would have been motivated to turn to Fu as an effective way to implement Stanesic’s reservoir’” and “[c]ommon sense dictates that a prior art disclosure for a custom hearing-aid would not inform a [person of ordinary” slip op. at 98

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Collateral estoppel precludes a party from relitigating an issue when: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in the prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party.” slip op. at 109

  Patent outcomesUS 8,899,655 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,899,655
• Unified Patents, LLC v. Virtual Creative Artists, LLCAll claims unpatentable
  PTAB · Feb 9, 2024 · IPR2022-01263 · APJ Michael L Woods · IPR · Final written decision

  Claims 1, 2, 4–7, 10–12, 15, 16, 21, and 22 are unpatentable as obvious over Ziff, Saito, and Ferrel.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner submits that a POSITA would have had, as of May 5, 2000, (1) at least an undergraduate degree in electrical engineering, computer science, a closely related scientific field, or similar advanced post-graduate education in this area; (2) a working knowledge of electronic content distribution systems; and (3) at least two years of experience with such systems. Pet. 10 (citing Ex. 1003 ¶¶ 71–74). Petitioner further submits that “[a]dditional education may substitute for lesser work experience and viceversa.” Id.” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We find Petitioner’s expert, Dr. Neuman, to be a person of ordinary skill in the art at the time of the invention. See Ex. 1003 ¶¶ 5–13 (testifying as to Dr. Neuman’s qualifications). Dr. Neuman received his S.B., M.S., and Ph.D. in Computer Science by 1992 (see Ex. 1003 ¶ 6) and has been an Associate Professor of Computer Science Practice at the University of Southern California since that same year (see id. ¶ 7). We find his testimony to be well-reasoned with extensive citations to the record evidence. In particular, we credit Dr. Neuman’s testimony that a “POSITA would have also understood that the allocations in Saito can be specifically determined by a user, particularly given that . . . distributed computing was well-known which specifically included ‘the concept of using multiple processes for receiving, storing, and editing submissions, content, or data files on separate computer components to facilitate distribution.’” Ex. 1020 ¶ 23 (quoting and citing Ex. 1003 ¶¶ 41–66) (emphasis added). Indeed, a POSITA would have been motivated to modify Ziff so that submitter 32 (“media submissions server subsystem”), writer 34 (“multimedia creator server subsystem”), and publisher 38 (“release subsystem”) utilize separate processors, as doing so would improve Ziff’s system by allowing it to “complete stories faster.” See, e.g., Pet. Reply 4 (citing Ex. 1020 ¶¶ 8, 9; Ex. 1004, 2:33–41). Moreover, we disagree with Mr. Zatkovich’s testimony that “a POSITA would view the teachings of Ziff and Saita [sic] as incompatible, and not find it obvious to combine them.” Ex. 2001 ¶ 67. Rather, we credit Dr. Neuman’s competing testimony. As compared to Mr. Zatkovich’s testimony, we find Dr. Neuman’s testimony to be more credible as it provides clear explanations of the evidence as it relates to the proposed combination. Specifically, we credit Dr. Neuman’s testimony that “a POSITA would have recognized that Ziff teaches a system for cooperatively executing various software applications, and would have been motivated to utilize the well-known benefits of a distributed processing architecture to implement Ziff’s subsystems, given the express teachings of Ziff.” Ex. 1003 ¶ 106. Notably, Ziff teaches the desirability of increased processing speed. See, e.g., Ex. 1004, 2:54–57 (describing the desirability of “increased speed with which a story is prepared”). Ziff further teaches that its “system may be easily integrated into a corporate Intranet computer network.” Id. at 3:4– 6. We further credit Dr. Neuman’s testimony that a “POSITA would have understood that integration into a network (including previously existing corporate Intranet networks) would have motivated a POSITA to use more than one processor, as proposed by Petitioner’s Ziff-Saito combination.” Ex. 2020 ¶ 10. We further credit Dr. Neuman’s testimony that “[o]ne processor would not be sufficient for a large corporation in this context” (id.) and that a “POSITA would have understood that Ziff’s disclosures related to corporate intranet integration would further support executing Petitioner’s proposed Ziff-Saito combination on a distributed, LAN system, which as explained above would work efficiently even at larger scales” (id. ¶ 11). Ex. 1020 ¶¶ 10, 11; see also Pet. Reply 4 (arguing the same).” slip op. at 25

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Klein, 647 F.3d at 1348 (quoting In re Bigio, 381 F.3d at 1325). As to Ziff, we agree with Petitioner that Ziff is within the field of endeavor of and reasonably pertinent to problems addressed by the ’576 Patent. Pet. 16 (citing Ex. 1003 ¶ 81); see also supra §§ I.C, II.D.1. The ’576 patent and Ziff both relate to a process for creating media. See, e.g., Ex. 1001, 1:22–23; see also Ex. 1004, 4:66–6:43; see also Pet. 16–17 (citing the same). Furthermore, we agree with Petitioner and credit Dr. Neuman’s testimony that “like the ’576 Patent, Ziff addresses problems related to improving the speed of the processes which allow users to search for and develop media for publication.” Ex. 1003 ¶ 81; see also Ex. 1001, 3:1–15; see also Ex. 1004, 2:45–49, 9:18–19, 13:21–26; see also Pet. 17 (contending the same). Accordingly, Ziff and the invention claimed in the ’576 patent are analogous to one another. As to Saito, Saito is within the field of endeavor and reasonably pertinent to the problems addressed by the ’576 Patent. Compare supra § I.C., with id. § II.D.2. We agree with Petitioner and credit the testimony of Dr. Neuman that “[l]ike the ’576 Patent, Saito addresses the implementation and utilization of a distributed processing system to execute coordinated software routines.” Ex. 1003 ¶ 92; see also Pet. 19. Accordingly, Saito is also analogous to the claimed invention of the ’576 Patent.” slip op. at 19

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

    “We further disagree with Patent Owner’s assertion that Petitioner failed to provide a motivation to combine Ziff with Saito. See PO Resp. 13; see also PO Sur-Reply 13–17 (arguing that Petitioner’s “Reply Fails to Support the Original Motivation to Combine Ziff and Saito, and Offers New and Still Deficient Motivations”). As set forth above (see supra § II.D.4), Petitioner reasons, with substantial citations to the record and testimonial support of its expert, Dr. Neuman, that a skilled artisan “would have understood that utilizing Saito’s distributed processor system to execute Ziff’s software subsystems would have allowed each subsystem to operate independently in a manner that increases parallelism, speed, and efficiency.” See, e.g., Pet. 25 (citing Ex. 1003 ¶¶ 104–114) (emphasis added). Based on the record, we find that increasing speed and efficiency are valid reasons for modifying Ziff’s system.” slip op. at 22

  Patent outcomesUS 10,339,576 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,339,576
• Popsockets LLC v. Flygrip, Inc.All claims unpatentable
  PTAB · Oct 30, 2023 · IPR2022-00938 · APJ Hyun J Jung · IPR · Final written decision

  Claims 2 and 8 are unpatentable as obvious over Nakai and Grinfas; the Board did not reach the Zoller–Grinfas or Damon–Grinfas grounds.

  RulingsFinal written decision

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

    “Turning to extrinsic evidence, definitions for “cone” include “a solid bounded by a circular or other closed plane base and the surface formed by line segments joining every point of the boundary of the base to a common vertex” (Ex. 1039) and “[i]n a right circular cone, the directrix is a circle” but “need not be a circle” (Ex. 1042). See also Ex. 1043; Ex. 1044. The extrinsic evidence indicates that “cone,” and thus the related word “conical,” would not exclude pyramidal shapes. While we would agree with Patent Owner that “conical” means “that it pertains to the shape of a cone” (PO Resp. 6; Ex. 2014 ¶ 76), that interpretation does not help us resolve the parties’ dispute regarding whether Grinfas teaches or suggests a “conical” structure. We agree with Petitioner that we “do[] not need to explicitly define ‘conical’” and “only need[] to determine whether ‘conical’ is limited to structures with a circular base/cross-section, or whether it includes bases of other shapes” to resolve the parties’ dispute. Pet. Reply 2 In view of the above, based on the full record, we determine that one of ordinary skill in the art would understand that the term “conical” does not exclude cones with a pyramidal shape. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms. . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 19

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

    “We do not need to interpret expressly “telescoping” to resolve the parties’ dispute because, as discussed below, Petitioner shows that its proposed combinations teach or suggest “telescoping,” even under Patent Owner’s view that “telescopic systems . . . have sections of material that “material to flex and fold over itself.” Realtime Data, 912 F.3d at 1375.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Because Petitioner contends that one of ordinary skill in the art would have had “a bachelor’s degree in Mechanical Engineering and one year or more of experience in mechanical product design” (Pet. 8 citing Ex. 1032 would have had a “bachelor’s degree in a technical field and at least 1 year of experience with product development” (PO Resp. 11–12 (citing Ex. 2014 ¶ 17)), the parties substantially agree with respect to these aspects of their proposals for the level of ordinary skill. Petitioner contends, in the alternative, that the ordinarily skilled artisan would have had “five years or more of experience in mechanical product design,” but Patent Owner alternatively contends that the ordinarily skilled artisan would have had “a college degree in a non-technical field and at least 3 years of experience in product development.” Pet. 8; PO Resp. 12 (emphases added). Petitioner’s alternate person of ordinary skill in the art requires more years of experience than Patent Owner’s alternate person of ordinary skill in the art. See Pet. 8; PO Resp. 12. In view of the above, we see no reason to disturb our preliminary determination regarding the level of ordinary skill in the art. Thus, we maintain and reaffirm that one of ordinary skill in the art would have had “would have had either five years or more of experience in mechanical product design, or a bachelor’s degree in Mechanical Engineering and one year or more of experience in mechanical product design.” Pet. 8 (citing Ex. 1032 ¶¶ 26–27). Based on the full record and for the reasons below, even if we adopted Patent Owner’s proposed level of ordinary skill, our determination would be the same.” slip op. at 12

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner does not identify sufficiently why Exhibits 1005, 1006, 1013–1023 and 1025–1031 are not authentic. Paper 23, 1–2. Patent Owner also does not argue sufficiently why these exhibits must be shown to be accessible to the interested public. Id. at 2–4. None of these exhibits are asserted to be a prior art publication or part of Petitioner’s grounds for challenging the claims. See Pet. 9–11. Moreover, Petitioner’s declarant considered Exhibits 1005, 1006, 1013–1023 and 1025–1031, along with others, for the declaration filed with the Petition. Ex. 1025 ¶ 5. These exhibits show the basis for the testimony in the declaration, and an expert may rely on hearsay in forming an opinion under Federal Rules of Evidence 703. To the extent they are hearsay, we would limit their purpose to showing the basis for testimony. Also, dictionary definitions are routinely considered extrinsic evidence that may shed light on the plain and ordinary meaning of a claim term. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc) (“Within the class of extrinsic evidence, the court has observed that dictionaries . . . can be useful in claim construction.”) (citation omitted). For the reasons explained by Petitioner (Paper 24, 6), the definitions were not offered for the truth of the matter asserted, and, thus, we do not consider these exhibits hearsay. proof to establish that it is entitled to the requested relief.” 37 C.F.R. § 42.20(c). We also do not rely on any of Exhibits 1005, 1006, 1013–1023 and 1025–1031 to reach our determination. In view of the above, Patent Owner’s Motion to Exclude Exhibits 1005, 1006, 1013–1023 and 1025– 1031 is denied.” slip op. at 10

  Patent outcomesUS 10,800,024 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,800,024
• Popsockets LLC v. Flygrip, Inc.All claims unpatentable
  PTAB · Oct 30, 2023 · IPR2022-00937 · APJ Hyun J Jung · IPR · Final written decision

  Claims 2 and 8 are unpatentable under § 103 over the ’476 Publication and Hobbs because that combination teaches all limitations and has a supported motivation to combine.

  RulingsFinal written decision

  • Strike new argumentDenied

    “evidence with its Sur-reply, “other than deposition transcripts of the cross-examination of any reply witness,” but Petitioner does not explain adequately why these exhibits constitute “new evidence” to Petitioner, when they are, or should have been, the bases of its analysis regarding the asserted priority date of the challenged claims. See Pet. 17–41 (analyzing the asserted priority documents, the chain of priority to the Provisional Application, and the prosecution history of the ’024 patent). Some of the exhibits, such as Exhibits 2027 and 2028 (the as-filed grandparent and parent applications), should have already been included in the record. Patent Owner also violates our Rule 42.6(d), which states that “[a] document already in the record of the proceeding must not be filed again, not even as an exhibit or an appendix, without express Board authorization.” If we granted Petitioner’s motion, then Patent Owner’s citations to some documents already of record, and filed by Petitioner, would become meaningless and would deprive us of the ability to analyze documents already properly filed in view of the parties’ arguments. For the reasons above and on the facts of this proceeding, Petitioner does not satisfy its “burden of proof to establish that it is entitled to the requested relief.” 37 C.F.R. § 42.20(c). We, therefore, deny Petitioner’s Motion to Strike.” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “1012–1019, along with others, for the declaration filed with the Petition. Ex. 1025 ¶ 5. These exhibits show the basis for the testimony in the declaration, and an expert may rely on hearsay in forming an opinion under Federal Rules of Evidence 703. To the extent they are hearsay, we would limit their purpose to showing the basis for testimony. Also, dictionary definitions are routinely considered extrinsic evidence that may shed light on the plain and ordinary meaning of a claim term. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc) (“Within the class of extrinsic evidence, the court has observed that dictionaries . . . can be useful in claim construction.”) (citation omitted). For the reasons explained by Petitioner (Paper 24, 6), the definitions were not offered for the truth of the matter asserted, and, thus, we do not consider these exhibits hearsay. For the reasons above, Patent Owner does not satisfy its “burden of proof to establish that it is entitled to the requested relief.” 37 C.F.R. § 42.20(c). We also do not rely on any of Exhibits 1004–1008 and 1012– 1019 to reach our determination. In view of the above, Patent Owner’s Motion to Exclude Exhibits 1004–1008 and 1012–1019 is denied.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had “a bachelor’s degree in Mechanical Engineering and one year or more of experience in mechanical product design” (Pet. 11) and Patent Owner contends that one of ordinary skill in the art would have had a “bachelor’s degree in a technical field and at least 1 year of experience with product development” (PO Resp. 14), the parties substantially agree with respect to these aspects of their proposals for the level of ordinary skill. Petitioner contends, in the alternative, that the ordinarily skilled artisan would have had “five years or more of experience in mechanical product design,” but Patent Owner alternatively contends that the ordinarily skilled artisan has “a college degree in a non-technical field and at least 3 years of experience in product development.” Pet. 11; PO Resp. 14 requires more years of experience than Patent Owner’s alternate person of ordinary skill in the art. See Pet. 11; PO Resp. 14. In view of the above, we see no reason to disturb our preliminary determination regarding the level of ordinary skill in the art. Thus, we maintain and reaffirm that one of ordinary skill in the art “would have had either (1) five years or more of experience in mechanical product design, or (2) a bachelor’s degree in Mechanical Engineering and one year or more of experience in mechanical product design.” Pet. 11 (citing Ex. 1025 ¶¶ 25– 27). Based on the full record and for the reasons below, even if we adopted Patent Owner’s proposed level of ordinary skill, our determination would be the same.” slip op. at 13

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

    “We agree with Petitioner that, in this proceeding, “conical” does not require an express interpretation to resolve the parties’ disputes. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In the related proceeding, we determined that one of ordinary skill in the art would understand that the term “conical” does not exclude cones with a pyramidal shape. PopSockets LLC v. Flygrip, Inc., IPR2022-00938, Paper 29 at 19 (PTAB Oct. 30, 2023). To the extent any issue in this proceeding would implicate the interpretation of “conical,” we apply the same determination.” slip op. at 15

  Patent outcomesUS 10,800,024 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 10,800,024
• Painteq, LLC v. Orthocision, Inc.All claims unpatentable
  PTAB · May 24, 2023 · IPR2022-00335 · APJ Michael L Woods · IPR · Final written decision

  Claims 26–28 and 31 are unpatentable; proposed substitute claims 32–35 are also unpatentable, so the revised motion to amend is denied.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “Accordingly, even in the absence of any argument from Patent Owner,” slip op. at 16

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

    “2. Claim 26 Claim 26 recites “[a] method for repairing a sacroiliac joint.” Ex.” slip op. at 13

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

    “2. Combination of Stark and Stoffman In presenting this alternative challenge and combining Stark with” slip op. at 38

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

    “Accordingly, Petitioner has shown, by a preponderance of the” slip op. at 87

  Patent outcomesUS 10,426,539 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,426,539

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.