- PTAB · Feb 21, 2024 · IPR2023-01287 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood of success on at least one claim based on the obviousness challenges.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“restriction region” should not be limited to an “exclusionary zone” or “an area where the vehicle is excluded from entry,” as asserted by SZ DJI. See Prelim. Resp. 9; Prelim. Sur-reply 2. Upon reviewing the specification of the ’121 patent, it states the following: “[i]n some embodiments, a flight response measure may include allowing the UAV to remain in the flight restriction region, but imposing certain restrictions on the operation of the UAV within the flight restriction region. The UAV may be forced to remain within the flight restriction region.” Ex. 1001, 17:44–49. Construing the claim term “restriction region” in accordance with SZ DJI’s proposed construction as an “exclusionary zone” would exclude these embodiments, which allow the UAV to remain in the flight restriction region, or force the UAV to remain within the flight restriction region. See, e.g., Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (Although a preferred embodiment should not be read into claims as limitations, construction of a claim term that excludes a preferred embodiment “is rarely, if ever, correct and would require highly persuasive evidentiary support.”). In light of these embodiments, which do not comport with SZ DJI’s proposed construction, and lacking persuasive evidentiary support from the specification to support its narrow construction, the proper construction of the claim term “restricted region” is broader than SZ DJI would allow. At this stage of the proceeding, lacking a clear construction for the claim term “restriction region” in the Petition itself, we decline to adopt Textron’s implied construction for this claim term presented for the first time in the Preliminary Reply. See Prelim. Reply 1. Instead, for the purposes of institution, we preliminary construe the claim term “restricted region” in accordance with its plain and ordinary meaning as “any region in which it is possible to limit or affect operation of a ground vehicle.”3 Our preliminary construction finds support in various embodiments disclosed the specification, which include both confinement and exclusion. See, e.g., Ex. 1001, 17:48–49 (“The UAV may be forced to remain within the flight restriction region.”), 22:46–48 (“For instance, if the user is approaching a flight restriction region, the user may be alerted and may change course of the UAV to exit the flight restriction region.”). During trial, if the construction of the claim term “restriction region” remains in dispute, we invite the parties to provide arguments and evidence regarding the plain and ordinary meaning of this claim term. slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION We conclude that the information presented in the Petition demonstrates that there is a reasonable likelihood that Textron would prevail in challenging at least one of claims 1–30 of the ’121 patent as unpatentable. Accordingly, we institute an IPR as to all challenged claims and all the grounds raised in the Petition. See 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims or the construction of any claim term. IV. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), an IPR is hereby instituted as to all of the challenged claims and all of the grounds raised in the Petition; and” slip op. at 54
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Based on our initial review of Humphries, we are persuaded by SZ DJI’s argument that the reference does not disclose, either expressly or inherently, “private property,” such as residential and commercial buildings. See Ex. 1004. It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it, for example, if the prior art necessarily functions in accordance with, or includes, the claimed limitations. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). However, the fact that a certain thing may result from a given set of circumstances is not sufficient for inherent anticipation. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Figure 2 of Humphries does not meet the exacting standard of anticipation because there is nothing within the four corners of this reference indicating that the geofence objects 220 actually encompass the city of Clinton, Mississippi, much less that such a location would be associated with private property, such as residential or commercial buildings. Notwithstanding, we believe that Humphries, together with the general background knowledge of a person of ordinary skill in the art, teaches that the geofence annotated in Textron’s version of Figure 2 would encompass a real-world location, such as the city of Clinton, Mississippi, which at the very least includes “a location associated with a private property.” We address this below when addressing the asserted ground based on obviousness over Humphries. See infra Section II.C.2.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the preliminary record, the purported deficiencies identified by SZ DJI do not undermine Textron’s asserted obviousness ground based on the combined teachings of Humphries and Marcus. For example, it is not dispositive that both Humphries and Marcus relate to systems applicable to airborne vehicles, whereas the challenged claims require a ground vehicle, because Humphries explicitly contemplates that its system also is applicable to a ground vehicle. Ex. 1004, 4:26–31 (disclosing that tracked device 120 may be “associated with a vehicle such an automobile, truck or the like”), 5:44–46 (“The object being tracked as described in the present invention is a vehicle (e.g., cars, boats, trucks, trains).”). Moreover, as we explain in our preliminary claim construction analysis above, we decline to adopt SZ DJI’s narrow view of the claim term “restriction region” as limited to exclusion. Instead, we preliminary construe the claim term “restricted region” in accordance with its plain and ordinary meaning as “any region in which it is possible to limit or affect operation of a ground vehicle.” See supra Section II.A. Lastly, even if the user and roles in Humphries and Marcus are different or there are certain disclosures in Marcus that might create tension with its proposed combination with Humphries, this would not undermine Textron’s rationale to combine the teaching of these two reference. Textron does not seek to bodily incorporate all of Marcus into Humphries, but instead only relies on Marcus to teach specifying a location associated with private property. See Pet. 47–48 (citing Ex. 1005 ¶¶ 14, 17). In summary, Textron has shown a reasonable likelihood that it would” slip op. at 38
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,482,121 - Apple Inc. v. Mozido, Inc.InstitutedPTAB · Jan 4, 2023 · IPR2022-01150 · APJ Kristen L Droesch · IPR · Institution
Instituted IPR on claims 1–21 and all petition grounds; claims 1–3, 6–10, 13–17, 20, and 21 met the institution threshold under § 103 over Easterly and Luz.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For all of the foregoing reasons and based on the record before us, we determine there is a reasonable likelihood Petitioner would prevail in showing that claims 1–3, 6–10, 13–17, 20, and 21 are unpatentable under 35 U.S.C. § 103 over Easterly and Luz. We, however, determine that there is not a reasonable likelihood Petitioner would prevail in showing that claims 4, 5, 11, 12, 18, and 19 are unpatentable under 35 U.S.C. § 103 over Easterly and Luz. In any event, because Petitioner has satisfied the threshold for institution as to at least one claim, we institute inter partes review on all claims and all grounds raised in the Petition. See 37 C.F.R. § 42.108(a). III. CONCLUSION For the foregoing reasons, we determine there is a reasonable likelihood that Petitioner would prevail in showing at least one of the challenged claims of the ’785 Patent is unpatentable. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–21 of the ’785 Patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“For the purposes of institution and based on Petitioner’s citations to Easterly, Luz, and Dr. Houh’s testimony (Ex. 1003), we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art at the time of the invention to include a total payment amount that is to be paid in the embedded payment information of Easterly’s barcode. See Pet. 21–25; KSR, 550 U.S. at 418. Petitioner contends that the combination is an example of combining prior art elements according to known methods to yield predictable results. See Pet. 21 (citing Ex. 1003 ¶ 50). Petitioner also asserts that the combination is explicitly suggested because “Easterly’s barcode ‘contains all of the data required to authenticate, authorize, clear, and settle a transaction’” and “‘incorporate[s] information sufficient to identify the parties to a transaction and all other ¶¶ 18, 20) (emphasis omitted), 22 (quoting Ex. 1005 ¶ 18) (emphasis omitted). According to Petitioner, “because Easterly notes that price is pertinent to the transaction, and that the barcode includes all the data required to process the transaction, or relevant to the transaction, it would have been obvious for the barcode to include the total price.” Id. at 21 (citing Ex. 1003 ¶ 51). Petitioner also asserts that a person of ordinary skill in the art “would have understood that transaction information such as the items subject to the transaction would be important and thus obvious to include within the barcode that is used at point-of-sale terminals.” Id. at 22 (citing Ex. 1003 ¶ 52). Petitioner further contends that Luz provides an explicit example of putting information regarding a product or a service, a cost of the product or the service, a tax amount, and a total price; purchase payment information, merchant information, purchaser information, in a barcode. See Pet. 22 (quoting Ex. 1006 ¶ 40, claim 6; citing Ex. 1006, claim 12; Ex. 1003 ¶ 53). According to Petitioner, [g]iven Easterly’s suggestion that the barcode includes the total price and items subject to a transaction, along with Luz’s explicit teaching of a barcode including such information, a [person of ordinary skill in the art] would have found it obvious for Easterly’s barcode to include price and items of the transaction. Including such information as the total price would have yielded the predictable result of having the barcode include data that is relevant to the transaction.” slip op. at 14
- 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 in August of 2012 would have had a working knowledge of the software arts that are pertinent to the ’785 patent. That person would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of software programming. Lack of work experience can be remedied by additional education, and vice versa. Pet. 12 (citing Ex. 1003 ¶¶ 20–22). Patent Owner offers essentially the same definition of the level of skill in the art as Petitioner, asserting that a person of ordinary skill in the art as of the effective filing date of the ’785 Patent would have had a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development involving network-based monetary transaction systems. . . . Lack of work experience can be remedied by additional education, and vice versa. . . . Appropriate experience could substitute for education. Prelim. Resp. 4–5 (citing Ex. 2001 ¶ 35). For the purposes of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it appears to be consistent with the level of skill reflected by the ’785 Patent Specification and the asserted prior art, and does not materially differ from Patent Owner’s definition.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner contends that there is no disclosure in Easterly that a debit network is selected based on location. See Prelim. Resp. 16 (citing Ex. 2001 ¶ 69), 19 (citing Ex. 2001 ¶ 82), 21 (citing Ex. 2001 ¶ 95). Patent Owner asserts that Easterly discloses in paragraph 24 “that the customer’s the customer, but there is no disclosure that location plays any role at all in selecting a debit network.” Id. at 16 (citing Ex. 2001 ¶ 70). According to Patent Owner, “[e]ven if Easterly discloses that different merchants can have different debit network preferences, there is no disclosure that such a preference is based on the location where the payment is initiated, and certainly no disclosure that any selection is based on location.” Id. (citing Ex. 2001 ¶ 70). We agree with Patent Owner that Easterly does not teach or suggest selecting a debit network based on a merchant’s location or otherwise based on a location where a payment is initiated. See Prelim. Resp. 16. On this record, we are not persuaded by Petitioner’s contentions that Easterly teaches or suggests selecting a debit network based on a location at which the payment is initiated based on Easterly’s disclosure of considering merchant’s preferences in selecting a debit network, and due to the fact that different merchants may be located in different locations. For example, Petitioner does not direct us to, nor can we find, a disclosure in Easterly that a merchant’s preferences will reflect a preference based on the location of the merchant. Accordingly, for purposes of institution and based on the record before us, Petitioner does not establish sufficiently that the subject matter of dependent claims 4, 11, and 18 would have been obvious over the combination of Easterly and Luz.” slip op. at 27
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,189,785 - ADT LLC v. Vivint, Inc.InstitutedPTAB · Feb 15, 2022 · IPR2021-01374 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted review of claims 1–3 and 6–11 on anticipation by Oh and obviousness over Oh, and claims 4, 5, and 12–17 as obvious over Oh, Forbes, and TS23.141.
RulingsInstitution decision- 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 it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- 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 of ordinary skill in the art would have had a bachelor’s degree in computer science, electrical engineering, or computer engineering (or equivalent experience) and two years of experience in monitoring or telecommunications systems. Pet. 6 (citing Ex. 1017 ¶ 25). Patent Owner did not file a preliminary response and, therefore, does not dispute Petitioner’s proposal at this stage of the proceeding. We determine, on the current record, that the level of ordinary skill proposed by Petitioner is consistent with the ’739 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt that level in deciding whether to institute trial.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner proposes constructions for “presentity,” “personal presentity,” “watcher,” and “aggregate presence service.” Pet. 7–10. In particular, Petitioner contends, a person of ordinary skill in the art “would have understood ‘presentity’ to mean an entity that has presence information associated with it, such as information regarding whether a visitor is present at a resident’s door,” and “would have understood ‘personal presentity’ to mean a presentity that is associated with the presence of a person (e.g., a human visitor).” Id. at 7–8 (citing Ex. 1017 ¶¶ 59–63). Petitioner also contends a person of ordinary skill in the art “would have understood ‘watcher’ to mean an entity (person or otherwise) that requests and/or receives presence information regarding a presentity.” Id. at 8–9 (citing Ex. 1017 ¶¶ 64–67). Petitioner further contends a person of ordinary skill in the art “would have understood ‘aggregate presence service’ to mean a service that receives, stores and provides presence-related information.” Id. at 9–10 (citing Ex. 1017 ¶¶ 68–71). Patent Owner did not file a preliminary response and, therefore, does not challenge Petitioner’s proposed constructions at this stage of the proceeding. We determine we need not explicitly construe any claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As discussed above (supra Section III.E.1.c, III.E.1.e), we determine that, for the purposes of institution, Oh teaches or suggests “determining a current location of the watcher” and “storing data related to a current location of the watcher,” as recited in claim 1, and the related limitation in claim 8. We question, however, whether the evidence presented as to these limitations supports Petitioner’s assertion of anticipation of claims 1 and 8. See Net MoneyIN, 545 F.3d at 1369–71. For example, Petitioner’s anticipation ground turns on the construction of “current location,” which has not been fully developed on the current record. Petitioner relies on the IP address of Oh’s wireless communication terminal as being indicative of the physical location of the watcher/user. See Pet. 18–20, 25. Alternatively, Petitioner contends that a person of skill in the art would have recognized that Oh’s home gateway could readily have been modified to store GPS location data associated with the wireless terminal. Id. at 19 (citing Ex. 1017 ¶ 106). We are therefore not persuaded, on the current record, that Oh expressly or inherently discloses the claim limitations related to the watcher/user’s current location and location information. Accordingly, at this stage of the proceeding and without prejudging our ultimate determination with respect to this ground at the conclusion of this proceeding, we determine that Petitioner has not shown a reasonable likelihood of prevailing in establishing that Oh anticipates independent claims 1 and 8, and dependent claims 2, 3, 6, 7, and 9–11 of the ’739 patent.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,956,739
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.