- Cxloyalty, Inc. v. Maritz Holdings Inc.All claims unpatentablePTAB · Dec 19, 2019 · CBM2018-00037 · APJ Justin T Arbes · CBM · Final written decision
Claims 1–15 are unpatentable under § 101; the motion to amend is granted for proposed substitute claims 16–23, which were not shown unpatentable.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“does not remove the claim from the realm of abstract ideas. See Pet. 52–53; Reply 12; SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (holding that it “does not matter to [the conclusion that the claim is directed to an abstract idea] whether the information here is information about real investments,” as “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract” (citation omitted)). Further, the last two clauses of claim 1 that recite how the transaction is viewed from the perspectives of the participant and vendor system, respectively, merely express the “non-physical result” of the information transfers and confirm the abstract nature of the claimed subject matter. See Pet. 57. In fact, as to the vendor system clause, the Specification indicates that the vendor system transfers information no differently than it would for any other transaction. See Ex. 1001, col. 7, ll. 15–18 (disclosing that vendor system 208 responds to purchase request 216 “in the same way that it would respond to any other purchase request from a consumer that presents a credit card”).” slip op. at 35
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“Our conclusion also is supported by the ’087 patent’s description of” slip op. at 41
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75
- 101 substituteMixed
“transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75
Patent outcomesUS 7,134,087 unpatentable§ 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · EnfishPatents in suitUS 7,134,087 - Procon Analytics, LLC v. Spireon, Inc.Institution deniedPTAB · Nov 22, 2019 · PGR2019-00051 · APJ John P Pinkerton · PGR · Institution
The Board denied institution of PGR on claims 1–14 because the Petition did not show it was more likely than not that any challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). While the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, the dispositive question is whether one skilled in the art would have reasonably understood or inferred from a prior art reference that every claim element is disclosed in that reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“A patent claim “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367– 68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (for an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”). Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see In re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be supported by a ‘reasoned explanation’” (citation omitted)).” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). While the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, the dispositive question is whether one skilled in the art would have reasonably understood or inferred from a prior art reference that every claim element is disclosed in that reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 17
- Expert testimonyPetitioner expert discountedDecided for patent owner
“is conclusory and not supported by the evidence. Prelim. Resp. 32, 37–40. Petitioner’s argument relies on Dr. Wilhelm’s testimony, Jefferies, and the knowledge of a person of ordinary skill in the art. See Pet. 28. Dr. Wilhelm testifies that “[c]onventional vehicle inventory management systems associate information with a particular identifier; the systems are agnostic as to whether that identifier represents a financial institution or dealer.” Ex. 1029 ¶ 73. Based on this testimony, Petitioner argues “it does not matter whether that identifier represents a bank or dealer.” Pet. 28. Petitioner then argues Jefferies teaches that a location device may be marked as “available/in inventory” to be associated with a vehicle. Id. Finally, Petitioner argues that, in view of these teachings, a person of ordinary skill “would have sought to manage various types of vehicle inventories for several types of owners, including dealers.” Id. As stated, we agree with Patent Owner that Petitioner’s argument that the “ownership” requirement would have been obvious is conclusory and not supported by the evidence of record. Initially, we note that Dr. Wilhelm’s testimony concerning conventional vehicle inventory management systems is conclusory and unsupported by factual evidence. Thus, we give little, if any, weight to Dr. Wilhelm’s opinion testimony that such systems are “agnostic” to whether equipment identifiers are associated with lending institutions or auto dealers. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (noting that “the Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations”). In any event, Dr. Wilhelm’s testimony adds nothing in this regard because, as discussed supra, Boling discloses equipment identifiers, such as UINs, are associated with the ID number of banks and auto dealers. See Ex. 1005, 6:22–26; 6:29–33.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,089,598 - PTAB · Nov 22, 2019 · IPR2019-01111 · APJ Joni Y Chang · IPR · Institution
The Board denied institution on claims 20 and 69 because the petition was time-barred under § 315(b), finding Amazon was in privity with at least one petitioner.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“(b) PATENT OWNER’S ACTION.—An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). “[T]he IPR petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b).” Worlds Inc. v. Bungie, the context of a real party in interest analysis); see also Ventex Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 148 at 4−5 (PTAB Jan. 24, 2019) (precedential) (placing “the burden on IPR petitioners to demonstrate that its petitions are not time-barred under § 315(b) based on a complaint served on a privy more than a year before a petition is filed”). “The Board’s decision under § 315(b) is whether to institute or not. The condition precedent for this decision is whether a time-barred party (a party that has been served with a complaint alleging infringement of the patent more than one year before the IPR was filed) is the petitioner, real party in interest, or privy of the petitioner.” Power Integrations, Inc. v. Semiconductor Components Indus., LLC, 926 F.3d 1306, 1314 (Fed. Cir. 2019) (emphases added). In the Federal Circuit’s view, the language of the statute makes privity and real parties in interest relationships that may arise “before institution relevant to the § 315(b) time-bar analysis.” Id. at 1315 (emphasis added).” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“More importantly, upon consideration of the parties’ contentions and evidence before us, we similarly determine that Amazon is a privy of several Petitioner Entities under the Taylor framework. See Taylor, 553 U.S. at 894−95. Here, at least the second, third, and fifth categories of Taylor support our determination that these Petitioner Entities are in privity with Amazon, a time-barred party. Second Taylor Category As to the second Taylor category, the record shows a pre-existing substantive legal relationship between Amazon and several Petitioner Entities—namely, PayPal, Strava, Valassis, Upwork Global, and RetailMeNot. The evidence of record shows that the relationship between Amazon and these Petitioner Entities went beyond typical transactions between supplier and buyer because there exists a substantive legal relationship between them that is defined by legal obligations and a sufficient degree of commonality of interest.” slip op. at 20
Discretionary denialPatents in suitUS 7,802,310 - PTAB · Nov 21, 2019 · IPR2019-01093 · APJ Denise M Pothier · IPR · Institution
The Board denied institution for challenged claims 46, 48, 52, and 55 because Amazon was a privy of at least one petitioner and its 2011 service made the petition time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDecided for patent owner
“B. Principles of Law Section 315(b) of Title 35 of the United States Code provides: (b) PATENT OWNER’S ACTION.—An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). Petitioner entities “bear[] the ultimate burden of persuasion to show that [their] petitions are not time-barred under § 315(b) based on a complaint served on an alleged [privy of Petitioner entities] more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). “[S]ervice of a pleading asserting a claim alleging infringement triggers the one-year time period for a petitioner to file a petition under 35 U.S.C. § 315(b).” GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 at 6 (PTAB Aug. 23, 2019) (precedential); id. at 24. This one-year trigger under 35 U.S.C. § 315(b) also applies to Petitioner entities’ privies or real parties in interest. See id. at 14 (“[T]he text of § 315(b) clearly and unmistakably considers only the date on which the petitioner, its privy, or a real party in interest was properly served with a complaint.”) (quoting Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1332 (Fed. Cir. 2018) (en banc in part)).” slip op. at 12
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“We recognize that the mere existence of an indemnity agreement might not be enough to find privity. See, e.g., WesternGeco, 889 F.3d at 1321. However, as is clear from the MDL record (summarized above), Amazon performed pursuant to the indemnity agreement and secured summary judgment related to infringement of the ’544 patent in favor of several of Petitioner entities. See, e.g., Ex. 2012, 3 (including the ’544 patent as part of the infringement action), 9 (listing “Category 3” infringement), 14 (“As to the effect of the indemnification agreement, it is undisputed that: . . . (2) sometime following PersonalWeb’s filing of complaints in the customer cases, Amazon agreed to indemnify its customers”), 16 (“Amazon assumed the indemnification of its customers prior to the consolidation of the MDL, and Amazon has not turned away any customer who has asked for indemnification”), 23 (finding that claim preclusion applied because, inter alia, the 2011 Amazon case involved the same parties or privies as the MDL proceeding), 26 (granting the DJ action “with respect to the Category 3 allegations involving use of . . . S3”). Thus, unlike in WesternGeco, in which the existence of an obligation to indemnify was ambiguous and undefined and, therefore, insufficient, 889 F.3d at 1321, Amazon actually assumed control of the lawsuits involving its customers, defended them, and secured relief on their behalf. We find this to be much stronger evidence of a pre-existing legal relationship than that shown in WesternGeco.” slip op. at 18
Discretionary denialPatents in suitUS 7,945,544 - Micron Technology, Inc. v. North Star Innovations Inc.All claims unpatentablePTAB · Oct 24, 2019 · IPR2018-01004 · APJ Garth D Baer · IPR · Final written decision
Claims 1–14 are unpatentable: claims 1–3, 5, 7, 9, 10, and 14 as obvious over Callison; claims 4, 6, 8, 11–13 as obvious over Callison with the respective secondary reference.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that a person of ordinary skill in the art at the time of the ’526 patent would have had “at least a Bachelor of Science or Engineering degree in computer science, computer engineering, electrical engineering, or a closely related field, along with at least 5 years of experience in the field of computer systems and computer memory.” Pet. 20. In addition, according to Petitioner, “[a]n individual with an advanced degree in the above fields would require less (e.g., by 1 to 2 years) experience in the field of computer systems and computer memory.” Id. (citing Ex. 1003 ¶¶ 31–33). Patent Owner does not provide its own formulation of a person of ordinary skill or contest Petitioner’s assertion. PO Resp. 35. We agree with and adopt Petitioner’s proposal because it is consistent with the ’526 patent, as well as the problems and solutions in the prior art of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“2. “memory controller bus operating independent of the system bus” Claim 1 requires a “memory controller bus operating independent of the system bus.” Petitioner proposes we construe this term to mean “a bus for transferring data between two or more memory controllers where said data transfer does not use the system bus.” Pet. 20. As Petitioner explains, the specification and claims support Petitioner’s construction. See id. at 19 (citing Ex. 1001, [57], 2:29–33, 11:42–47). Patent Owner does not challenge Petitioner’s construction. For the reasons stated in the Petition, we agree with Petitioner and construe “memory controller bus operating independent of the system bus” as “a bus for transferring data between two or more memory controllers where said data transfer does not use the system bus.” See Pet. 19–20.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“120 . . . arbitrates requests for the DRAM 116 from the various possible requestors in the DRAM interface 118.” Ex. 1005, 6:28–30; see PO Resp. 26 (quoting Ex. 1005, 6:28–30); id. at 40 (same); id. at 48 (same); Sur-reply 4 (same); id. at 5 (same); id. at 6 (same). But the requests and data that access Callison’s DRAM 116 (second memory) do not originate within DRAM interface 118 (second memory controller). Rather, they originate from host computer 101 (system bus master) and SCSI controllers 112A–E (first memory controllers), as the disputed limitation requires. See Ex. 1005, 2:32–34, 5:35–37, 4:36–51, 6:59–67, 10:4–20; see also Ex. 1040 ¶ 30. In other words, Callison’s host computer 101 and SCSI controllers 112A–E access DRAM 116 even if they use intermediary components in the process to do so. Patent Owner does not dispute Callison teaches host computer 101 (system bus master) initiates write operations to DRAM 116 (second memory) in which data from host computer 101 (system bus master) is written to DRAM 116 (second memory). See PO Resp. 42–43, 44; Sur-reply 8–10; Tr. 30:22–23. Patent Owner also does not dispute Callison discloses moving data from SCSI controllers 112A–E (first memory controllers) to DRAM 116 (second memory). See PO Resp. 46; Sur-reply 12–13. Because Callison further teaches “the DRAM arbiter 120 [arbitration logic] controls all requests to the DRAM 116 [second memory],” Ex. 1005, 6:52–53, we agree with Petitioner that Callison discloses “arbitration logic for arbitrating between the system bus master and the first memory controller for access to the second memory.” See Ex. 1040 ¶¶ 28–30.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“2. Obviousness of Claim 4 Based on Callison and Dipert Petitioner contends claim 4 would have been obvious over Callison and Dipert, in view of a skilled artisan’s knowledge. Pet. 58–61. Claim 4 depends from claim 3 and recites “wherein the first memory type comprises NAND Flash memory.” Petitioner explains that, while Callison does not disclose using NAND Flash memory as the first memory, Dipert “discloses NAND Flash memory and describes its advantages over hard disk drives.” Id. at 58. Petitioner explains, with relevant support from the prior art and its expert, that it would have been obvious to adapt Callison’s data processing system to use Dipert’s NAND Flash memory “because NAND Flash memory was known to have multiple advantages over hard disk drives, such as, for example, lower power consumption, faster read speed, and longer battery life.” Id. at 59 (citing Ex. 1011, 21, 43, 44; Ex. 1003 ¶¶ 122–124). Other than its argument addressing the arbitration logic for claim 1, addressed above, Patent Owner does not separately contest Callison’s and Dipert’s teachings related to claim 4. We agree with Petitioner that Dipert teaches the recited NAND Flash memory. In addition, Petitioner has articulated persuasive reasoning with rational underpinning to support the legal conclusion that its asserted combination of Callison and Dipert would have been obvious to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 3. Obviousness of Claim 6 Based on Callison and Prince Petitioner contends claim 6 would have been obvious over Callison and Prince, in view of a skilled artisan’s knowledge. Pet. 61–64. Claim 6 depends from claim 5 and recites “wherein the second memory type comprises synchronous dynamic random access memory.” Petitioner explains that, although Callison does not disclose using SDRAM as the second memory type, Prince teaches using SDRAM, which “is an improved alternative to, and offers multiple advantages over, conventional DRAM.” Id. at 62. Petitioner explains, with relevant support from the prior art and its expert, that it would have been obvious to modify Callison’s DRAM to use Prince’s SDRAM because “SDRAM was developed as a solution to address the problem of mismatch in speed between asynchronous DRAM and microprocessors,” and offers improved performance over DRAM “by freeing up the processor to do other tasks while the SDRAM is processing requests.” Id. at 62–63 (citing Ex. 1012, 12, 14; Ex. 1003 ¶¶ 137–142). Patent Owner does not separately contest Callison’s and Prince’s teachings related to claim 6. We agree with Petitioner that Prince teaches the recited “the second memory type comprises synchronous dynamic random access memory.” In addition, Petitioner has articulated persuasive reasoning with rational underpinning to support the legal conclusion that its proffered combination of Callison and Prince would have been obvious to one of ordinary skill in the art. See KSR, 550 U.S. at 418. 4. Obviousness of Claim 8 Based on Callison and Yun Petitioner contends claim 8 would have been obvious over Callison and Yun, in view of a skilled artisan’s knowledge. Pet. 64–71. Claim 8 depends from claim 1 and recites “wherein the first memory controller comprises a counter for counting a number of data portions transferred between the first memory and the second memory.” Petitioner explains that, although Callison does not expressly disclose the counter recited in claim 8, Yun “discloses a design of a SCSI controller that includes a transfer counter for counting data transferred through the SCSI controller.” Id. at 65. Petitioner explains, with relevant support from the prior art and its expert, that it would have been obvious to adapt Callison’s SCSI controllers 112A– E to include Yun’s counter because “Yun provides a new design of SCSI controller, which is compatible with a commercial SCSI controller and improves the performance of conventional SCSI controllers.” Id. at 68 (Ex. 1013, 1; Ex. 1003 ¶¶ 149, 150). Specifically, Petitioner notes, “Yun describes that the transfer counter, as part of the control circuit in the SCSI controller, is used to control and facilitate data transfers through the SCSI controller” by “signal[ing] the start and completion of a data transfer operation.” Id. at 70. Patent Owner does not separately contest Callison’s and Yun’s teachings related to claim 8. We agree with Petitioner that Yun teaches the recited “the first memory controller comprises a counter for counting a number of data portions transferred between the first memory and the second memory.” In addition, Petitioner has articulated persuasive reasoning with rational underpinning to support the legal conclusion that its proffered combination of Callison and Yun would have been obvious to one of ordinary skill in the art. See KSR, 550 U.S. at 418.” slip op. at 24
Patent outcomesUS 7,171,526 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,171,526 - Micron Technology, Inc. v. North Star Innovations Inc.All claims unpatentablePTAB · Oct 24, 2019 · IPR2018-01005 · APJ Garth D Baer · IPR · Final written decision
Claims 15–19 are unpatentable: claims 15, 17, and 18 as obvious over Callison, and claims 16 and 19 as obvious over Callison and Shanley.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ’526 patent would have had “at least a Bachelor of Science or Engineering degree in computer science, computer engineering, electrical engineering, or a closely related field, along with at least 5 years of experience in the field of computer systems and computer memory.” Pet. 19. In addition, according to Petitioner, “[a]n individual with an advanced degree in the above fields would require less (e.g., by 1 to 2 years) experience in the field of computer systems and computer memory.” Id. (citing Ex. 1003 ¶¶ 31–33). Patent Owner does not provide its own formulation of a person of ordinary skill or contest Petitioner’s assertion. PO Resp. 34. We agree with and adopt Petitioner’s proposal because it is consistent with the ’526 patent, as well as the problems and solutions in the prior art of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“operating independent of the system bus.” Petitioner proposes we construe this term to mean “a bus for transferring data between two or more memory controllers where said data transfer does not use the system bus.” Pet. 19. As Petitioner explains, the specification and claims support Petitioner’s construction. See id. at 18 (citing Ex. 1001, [57], 2:29–33, 11:42–47). Patent Owner does not challenge Petitioner’s construction. For the reasons stated in the Petition, we agree with Petitioner and construe “memory controller bus operating independent of the system bus” as “a bus for 4 A recent amendment to this rule does not apply here because the Petition was filed before November 13, 2018. See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (codified at 37 C.F.R. pt. 42 (2019)) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018). transferring data between two or more memory controllers where said data transfer does not use the system bus.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Petitioner asserts that it would have been obvious to one skilled in the art to include Shanley’s DMA circuitry coupled to the system bus because “Callison . . . does not provide extensive detail on how to implement an EISA bus and associated components,” whereas “Shanley provides that detailed information, that is, the architecture of an EISA system that includes an EISA bus and other associated components in a computer system.” Id. at 55. Petitioner explains further that one skilled in the art would also have been motivated to use Shanley’s EISA system (including DMA circuitry) for Callison’s host computer to achieve the benefits Shanley describes, including “parallel processing,” which is “extremely efficient” and “a low-cost alternative to intelligent bus master cards.” Id. at 56 (quoting Ex. 1007, 22, 29). Patent Owner does not separately contest Callison’s and Shanley’s teachings related to claim 16. We agree with Petitioner that Shanley teaches both “direct memory access (DMA) circuitry coupled to the system bus” and “a processor coupled to the system bus.” In addition, Petitioner has articulated persuasive reasoning with rational underpinning that supports the legal conclusion that its proffered combination—i.e., adapting Callison’s host computer in view of Shanley’s teachings on EISA systems—would have been obvious to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“120 . . . arbitrates requests for the DRAM 116 from the various possible requestors in the DRAM interface 118.” Ex. 1005, 6:28–30; see PO Resp. 25 (quoting Ex. 1005, 6:28–30); id. at 38 (same); id. at 46 (same); Sur-reply 2 (same); id. at 6 (same); id. at 7 (same). But the requests and data that access Callison’s DRAM 116 (second memory) do not originate within DRAM interface 118 (second memory controller). Rather, they originate from host computer 101 (system bus master) and SCSI controllers 112A–E (first memory controllers), as the disputed limitation requires. See Ex. 1005, 2:32–34, 5:35–37, 4:36–51, 6:59–67, 10:4–20. In other words, Callison’s host computer 101 and SCSI controllers 112A–E access DRAM 116 even if they use intermediary components in the process to do so. Patent Owner does not dispute Callison teaches host computer 101 (system bus master) initiates write operations to DRAM 116 (second memory) in which data is written from host computer 101 (system bus master) to DRAM 116 (second memory). See PO Resp. 40–41, 42; Sur-reply 9–10; Tr. 30:22–23. Patent Owner also does not dispute Callison discloses moving data from SCSI controllers 112A–E (first memory controllers) to DRAM 116 (second memory). See PO Resp. 44; Sur-reply 13–14. Because Callison further teaches “the DRAM arbiter 120 [arbitration logic] controls all requests to the DRAM 116 [second memory],” Ex. 1005, 6:52–53, we agree with Petitioner that Callison discloses “arbitration logic, coupled to the second memory controller, said arbitration logic arbitrating between the system bus master and the first memory controller for access to the second memory.”” slip op. at 16
Patent outcomesUS 7,171,526 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,171,526 - Unified Patents Inc. v. Hailo Technologies, LLC, D/B/A Bring, LLCNo claims unpatentablePTAB · Jan 25, 2019 · IPR2017-01865 · APJ Joseph L Dixon · IPR · Final written decision
Claims 1–7 were not shown unpatentable: the combinations of Penzias, Clagett, and Nimura, with Behr for claims 2–6, did not establish the claimed system for multiple transportation companies.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“flowchart in which a user selects one of the plural companies at step 300. The corresponding disclosure states, “all authorized taxi companies would appear along with other information and/or advertisements.” On the following screen, the user will “Select a Company” 300 which will service the request. See Ex. 1001, 3:58–62. Additionally, the ’619 patent discloses that “[t]he present invention embodies a computerized system which enables customers to select a transportation company, in this example a taxi company, from a menu of all permitted and participating companies.” Id. at 2:26–29. Based on our review of the Specification of the ’619 patent, we determine that the claim term “transportation companies” should be accorded its plain and ordinary meaning. That is, we construe “company” as a “commercial business.” THE OXFORD DESK DICTIONARY AND THESAURUS, 146 (American ed. 1997) Ex. 3001. For a “transportation company,” the commercial business would be transportation services. We further clarify that “transportation companies” requires plural companies.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although there are slight differences between the definitions proffered by Petitioner and Patent Owner, the parties agreed that there is no meaningful distinction between them that would change the analysis in this proceeding. See Tr. 26–27. We agree and also find that both definitions are consistent with the level of ordinary skill in the art reflected by the prior art of record—namely, Penzias. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We adopt Petitioner’s articulation of the level of ordinary skill in the art for purposes of this Decision, but our conclusion would not differ if we were to accept Patent Owner’s articulation. See Pet. 7.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“speculation and conjecture. While Mr. Andrews speculates that the multiple paths “could represent” several transportation companies, Mr. Andrews provides no evidence to support a finding that Penzias teaches or suggests a user interface for the multiple transportation companies. Consequently, we do not credit Mr. Andrews’ testimony in this regard because it is not supported by the disclosure in Penzias. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based in entitled to little or no weight.”). We have reviewed Petitioner’s analysis, which is rebutted by Patent Owner, and we conclude that the First Alternative based upon the teachings of Penzias alone for the claimed multiple “transportation companies” is deficient because Petitioner has not shown that Penzias teaches or suggests multiple “transportation companies,” but merely shows multiple routes by different drivers of multi-passenger vans all controlled by a single transportation company. As a result, Penzias does not teach or suggest “displaying a list of authorized transportation companies for selection by the operator of the computer,” where the user selects a desired company, followed by displaying the proximate fare for the selected location and payment options honored by the selected company, and then initiating a dispatch call for available taxi from the selected company, as required by the method of independent claim 1. We find that Penzias only provides a process for a single “transportation company” and does not provide any teaching or suggestion to expand the user interface and process for multiple “transportation companies.”” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Second, Petitioner showed that, based on the teachings of the applied references, it would have been obvious to combine Penzias, Clagett, and Nimura according to known methods to yield predictable results. Pet., 31–32. The Petition provided adequate reasoning based on rational underpinnings for why one of ordinary skill in the art would have modified the asserted prior art. Pet., 31–32 (citing Ex. 1012, ¶¶ 160–162); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); KSR, 550 U.S. at 418. Accordingly, the Board should reject Patent Owner’s erroneous problem-solution argument about why a POSA would have combined the asserted references. Reply 25–26. Again, we disagree with the Petitioner and find that the proffered combination falls short of merely yielding predictable results. Petitioner has provided insufficient evidence that, at the time of the invention in 1997, it would have been obvious to one of ordinary skill in the art to provide a user interface for multiple transportation companies to deliver instructional messages to the consumer to allow the consumer to select a desired company and provide the relevant claimed information to ultimately dispatch a taxi/transportation vehicle/vehicle for hire from the selected company.” slip op. at 26
Patent outcomesUS 5,973,619 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 5,973,619 - Google LLC v. Spring Ventures Ltd.All claims unpatentablePTAB · Jan 15, 2019 · IPR2017-01653 · APJ Scott E Bain · IPR · Final written decision
Claims 1–16 are unpatentable under § 103 over the specified combinations of Belfiore, Koren, Sotomayor, Osaku, and Breese; the motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“2. Level of Skill in the Art Relying on the testimony of their respective experts, the parties agree that one of ordinary skill in the art would have had at least an undergraduate degree in computer science or software engineering, and two years of experience with interactive software applications such as web-oriented software or browsers. Pet. 13–14 (citing Ex. 1002 ¶ 11); PO Resp. 17 (citing Ex. 2005 ¶ 14). We adopt this assessment and apply it to the obviousness analysis below. Patent Owner further argues that a person whose experience constitutes “merely using” web browsers or search engines has less than the level of ordinary skill. PO Resp. 18. Patent Owner asserts that one of ordinary skill, therefore, necessarily should have experience actually “designing, writing, or implementing web based applications.” Id. Although we agree with Patent Owner’s premise that “merely using” the foregoing tools (e.g., as an Internet user) does not impart a level of ordinary skill in the art (and does not satisfy our finding in the preceding paragraph), we do not agree that Patent Owner’s conclusion follows that premise. As explained below in our discussion of Patent Owner’s Motion to Exclude Petitioner’s expert testimony, there are other ways of acquiring a level of ordinary skill in the art (and “experience” with interactive software applications) besides “designing, writing, or implementing web based applications,” as Patent Owner alleges. We, therefore, decline to adopt Patent Owner’s additional requirements for one of ordinary skill in the art.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“In an obviousness analysis, prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art,” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994), and we “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. A rationale to combine references also may be found within the references themselves. See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1365 (Fed. Cir. 2006). Here, the references themselves provide ample rationale and motivation for the proffered combination. Both Belfiore and EchoSearch (Koren/Sotomayor) are directed to the common objective of text search and website retrieval on the Internet. Koren discloses that it was a “common frustration” in this field that “not every engine will return the same information.” Ex. 1022, 2. To get the best result, Koren explains, “you ha[d] to perform the same search using multiple search engines.” Id. EchoSearch, as Koren explains, solves that problem because it “can search in multiple engines simultaneously.” Id. Accordingly, one of ordinary skill, utilizing the Belfiore enhanced browser, would have recognized the benefits of incorporating the EchoSearch multiple-engine search functionality, as described in Koren and Sotomayor. Moreover, Koren, like Belfiore, expressly teaches the desirability of focusing the number of search results. Koren explains, “[i]f you’ve ever used a search engine on the World Wide Web, you know how frustrating it can be when your search yields numerous hits that don’t have anything to do with the topic or concept you’re searching for . . . EchoSearch 2.0 addresses this problem by limiting the amount of dross you have to wade through.” Ex. 1022, 2 (emphasis added). Thus, Koren teaches the desirability of limiting or focusing search results, not just expanding or diversifying the search area, as Patent Owner argues. Accordingly, we are not persuaded by Patent Owner’s argument (and testimony offered in support of that argument) that Koren teaches away from Belfiore, because the argument is contradicted by Koren itself. Similarly, we are unpersuaded by Patent Owner’s hindsight argument because the prior art references themselves, not the ’094 patent, provided one of ordinary skill in the art a rationale and motivation for combining their respective teachings in the manner asserted by Petitioner. We, therefore, find one of ordinary skill would have been motivated” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Here, the references themselves provide ample rationale and motivation for the proffered combination. Both Belfiore and EchoSearch (Koren/Sotomayor) are directed to the common objective of text search and website retrieval on the Internet. Koren discloses that it was a “common frustration” in this field that “not every engine will return the same information.” Ex. 1022, 2. To get the best result, Koren explains, “you ha[d] to perform the same search using multiple search engines.” Id. EchoSearch, as Koren explains, solves that problem because it “can search in multiple engines simultaneously.” Id. Accordingly, one of ordinary skill, utilizing the Belfiore enhanced browser, would have recognized the benefits of incorporating the EchoSearch multiple-engine search functionality, as described in Koren and Sotomayor. Moreover, Koren, like Belfiore, expressly teaches the desirability of focusing the number of search results. Koren explains, “[i]f you’ve ever used a search engine on the World Wide Web, you know how frustrating it can be when your search yields numerous hits that don’t have anything to do with the topic or concept you’re searching for . . . EchoSearch 2.0 addresses this problem by limiting the amount of dross you have to wade through.” Ex. 1022, 2 (emphasis added). Thus, Koren teaches the desirability of limiting or focusing search results, not just expanding or diversifying the search area, as Patent Owner argues. Accordingly, we are not persuaded by Patent Owner’s argument (and testimony offered in support of that argument) that Koren teaches away from Belfiore, because the argument is contradicted by Koren itself. Similarly, we are unpersuaded by Patent Owner’s hindsight argument because the prior art references themselves, not the ’094 patent, provided one of ordinary skill in the art a rationale and motivation for combining their respective teachings in the manner asserted by Petitioner. We, therefore, find one of ordinary skill would have been motivated to combine the teachings of Belfiore with those of Koren/Sotomayor. One of ordinary skill in the art, for example, would have been motivated to incorporate Belfiore’s “redirect” feature (i.e., directly retrieve the top search result) into EchoSearch because a user would desire a redirect feature for multiple search engine results. Pet. 27 (citing Ex. 1002 ¶ 48). In addition, one of ordinary skill in the art would have been motivated to incorporate the advanced interface of EchoSearch, which utilized multiple search engines, into Belfiore’s “intelligent searching” invention because a user would want to focus its search results, yet at the same time ensure no loss in redirect functionality. Pet. 27 (citing Ex. 1022; Ex. 1002 ¶ 49).” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Here, the references themselves provide ample rationale and motivation for the proffered combination. Both Belfiore and EchoSearch (Koren/Sotomayor) are directed to the common objective of text search and website retrieval on the Internet. Koren discloses that it was a “common frustration” in this field that “not every engine will return the same information.” Ex. 1022, 2. To get the best result, Koren explains, “you ha[d] to perform the same search using multiple search engines.” Id. EchoSearch, as Koren explains, solves that problem because it “can search in multiple engines simultaneously.” Id. Accordingly, one of ordinary skill, utilizing the Belfiore enhanced browser, would have recognized the benefits of incorporating the EchoSearch multiple-engine search functionality, as described in Koren and Sotomayor. Moreover, Koren, like Belfiore, expressly teaches the desirability of focusing the number of search results. Koren explains, “[i]f you’ve ever used a search engine on the World Wide Web, you know how frustrating it can be when your search yields numerous hits that don’t have anything to do with the topic or concept you’re searching for . . . EchoSearch 2.0 addresses this problem by limiting the amount of dross you have to wade through.” Ex. 1022, 2 (emphasis added). Thus, Koren teaches the desirability of limiting or focusing search results, not just expanding or diversifying the search area, as Patent Owner argues. Accordingly, we are not persuaded by Patent Owner’s argument (and testimony offered in support of that argument) that Koren teaches away from Belfiore, because the argument is contradicted by Koren itself. Similarly, we are unpersuaded by Patent Owner’s hindsight argument because the prior art references themselves, not the ’094 patent, provided one of ordinary skill in the art a rationale and motivation for combining their respective teachings in the manner asserted by Petitioner. We, therefore, find one of ordinary skill would have been motivated to combine the teachings of Belfiore with those of Koren/Sotomayor. One of ordinary skill in the art, for example, would have been motivated to incorporate Belfiore’s “redirect” feature (i.e., directly retrieve the top search result) into EchoSearch because a user would desire a redirect feature for multiple search engine results. Pet. 27 (citing Ex. 1002 ¶ 48). In addition, one of ordinary skill in the art would have been motivated to incorporate the advanced interface of EchoSearch, which utilized multiple search engines, into Belfiore’s “intelligent searching” invention because a user would want to focus its search results, yet at the same time ensure no loss in redirect functionality. Pet. 27 (citing Ex. 1022; Ex. 1002 ¶ 49).” slip op. at 31
Patent outcomesUS 8,661,094 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,661,094
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.