- Hulu, LLC v. Sound View Innovations, LLCRehearing grantedPTAB · Dec 20, 2019 · IPR2018-01039 · APJ Scott R Boalick · IPR · Rehearing
The Board granted rehearing on printed-publication accessibility, finding a reasonable likelihood Dougherty was publicly accessible before the critical date, and remanded for consideration of institution on obviousness.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We grant Petitioner’s request for rehearing. We conclude that, based on the totality of the evidence currently in the record, Petitioner has submitted evidence sufficient to establish a reasonable likelihood that the Dougherty reference was publicly accessible before the critical date of the challenged patent, and, thus Petitioner has established a reasonable likelihood that the reference qualifies as a printed publication. In view of this holding, we remand to the merits panel to determine whether Petitioner has demonstrated a reasonable likelihood that it will prevail with respect to at least 1 of the claims challenged in the Petition. See 35 U.S.C. § 314(a).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“reasonable likelihood that a reference is a printed publication. If trial is instituted, the petitioner will ultimately have the burden to prove that the reference is a printed publication by a preponderance of the evidence. We conclude that, based on the totality of the evidence currently in the record, Petitioner has established a reasonable likelihood that the Dougherty reference is a printed publication that was publicly accessible before the critical date of the challenged patent. V. ORDER It is hereby ORDERED that Request for Rehearing is granted to address the POP review issue; and FURTHER ORDERED that the matter is remanded to the original merits panel for further proceedings consistent with this opinion, including consideration of whether to institute a trial on the merits of the obviousness ground presented in the Petition.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“institution, and based on the totality of the evidence to date, Petitioner has established a reasonable likelihood that Dougherty is a printed publication. The face of Dougherty bears a copyright date of 1990, a printing date of November 1992, and an ISBN date of 8/94. Ex. 1004, 4. In addition, the book is a textbook from an established publisher, O’Reilly, and a well-known book series. See Canon Br. 11–12 (quoting https://www.oreilly.com/about/history.html). As Canon asserts, the cover of Publisher’s Weekly stated (with respect to this series) that “The Internet Was Built With O’Reilly Books.” Id. Altogether, this is sufficient evidence to establish a reasonable likelihood that Dougherty is a printed publication that a publisher made available to the pertinent public prior to the October 1995 critical date.” slip op. at 19
§ 102 anticipationPatents in suitUS 5,806,062 - 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 - PTAB · Nov 20, 2019 · CBM2018-00006 · APJ Frances L Ippolito · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its final written decision that claims 1–12 are unpatentable under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply.”” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“on this particular issue is timely. Patent Owner has argued that “the institution should never have occurred” and that institution should have been denied outright. Id. However, our Decision on Institution (Paper 19, “Dec.”) was entered on June 22, 2018. Any request for rehearing of our determinations regarding the forum selection clause in that Decision should have been filed 14 days from the entry of that decision. 37 C.F.R. § 42.71(d)(1). As we noted in the FWD, after institution of the covered business method patent review (“CBM review”), the parties did not present any additional evidence or arguments regarding the forum selection clause issue. FWD 8 (“In the post-institution briefing, neither party has added arguments or evidence to the record regarding this issue.”). Indeed, the Patent Owner’s Response (Paper 28, “PO Resp.”) and Sur-Reply (Paper 39, “Sur.”) and Petitioner’s Reply (Paper 31, “Reply”) did not discuss forum selection. For completeness and clarity of the record, we reiterated our” slip op. at 3
- BurdenDecided for petitioner
“be instructive, contrary to Patent Owner’s assertion, that decision has not been designated precedential. Moreover, taking into consideration the discussion by the panel in Global Tel*Link, we are not persuaded that our determination misapprehended or overlooked any arguments or evidence in” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“the abstract idea. Nonetheless, we are not persuaded that this is clear error or deprived Patent Owner of the opportunity to defend its position. Indeed, Patent Owner does not explain why the “rules for playing a bonus wagering game” is substantively different from “allowing bonus wagers in a wagering game,” or, more importantly, the basis for Patent Owner’s contention that this is a “fundamental change.” See Reh’g Req. 11.” slip op. at 11
§ 101 eligibilityPatents in suitUS 7,451,987 - Seabed Geosolutions (US), Inc. v. Magseis FF LLCSome claims unpatentablePTAB · Nov 5, 2019 · IPR2018-00961 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–7 and 9–24 are unpatentable under the stated § 103(a) grounds; claim 8 was not shown unpatentable.
RulingsFinal written decision- Expert testimonyPatent owner expert discountedDecided for petitioner
“7. Our Analysis of Claim 1 As we analyze the evidence, Mattaboni’s Figure 4 does not relate to any characteristic of its memories that limits the frequency range of recorded seismic data. Rather, Mattaboni’s Figure 4 is “the product of the manufacturer’s specified response curve for the geophone and the measured transfer function of the preamp and filter blocks of Figure 3.” Ex. 1006, Fig. 4 (caption). Mattaboni discloses that its memories are capable of recording data at 120 times per second, or 60 Hertz, and thus above the 50 Hertz that Patent Owner contends is necessary to record “seismic data.” Regarding Patent Owner’s statements (1) and (2) above, Patent Owner’s declarant does not disclose the underlying facts or data on which these opinions are based, and they are thus entitled to little or no weight. 37 C.F.R. § 42.65(a). Regarding Patent Owner’s statement (3), Mattaboni states that the displacement response peak of its instrument is between 25 and 35 Hertz, which is the most important range for microearthquakes. Ex. 1006, 5. Mattaboni, however, also states the effective frequency band of the disclosed instrument is “from about 2 Hz to somewhat over 50 Hz (Figure 4).” Id. at 5. Thus, Mattaboni’s instrument records signals “somewhat over 50 Hz” which is “at least above 50 Hz” and in the frequency range which Patent Owner’s declarant contends is needed to record “seismic data.” Ex. 2051 ¶ 35; Ex. 1104, 301:5–302:1 (testifying that 8–50 Hz range is minimum for “seismic data” under Patent Owner’s construction).” slip op. at 28
- Skill levelSkill level board ownOther
“Considering the foregoing, we find that a person of ordinary skill in the art of OBS technology would have had: (i) a bachelor’s degree in electrical or mechanical engineering, geophysics, mathematics, general engineering, or equivalent thereof, and five (5) years of experience with the conduct of surveys with geophones, or the equivalent thereof, including two (2) years of work specifically with OBS technologies, or the equivalent thereof; or (ii) a bachelor’s degree and an advanced degree in electrical or mechanical engineering, geophysics, mathematics, general engineering, or equivalent thereof, and four (4) years of experience with the conduct of surveys with geophones, two (2) years of which involve work specifically with OBS technologies, or the equivalent thereof. We adopt these statements as describing the level of ordinary skill in the art pertinent to the 761 Patent in our obviousness analysis.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Petitioner contends there is a “heavy presumption” that claims terms have their ordinary meaning (CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)), and that Patent Owner did not overcome this presumption with a clear and precise definition (In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). Reply 8. Claim terms must be construed, however, in light of the specification. See In re Translogic Tech., Inc., 504 F.3d at 1257. In the Specification, the 761 Patent describes “seismic data” as resulting from an acoustic signal from a seismic energy source that propagates into the earth and is partially reflected at subsurface lithologic or fluid boundaries and is detected and recorded as seismic energy data by seismic receivers. Ex. 1030, 1:12–23. Petitioner argues that this passage of the 761 Patent does not mention “seismic data.” We note, however, that this passage does mention “seismic energy data” which is shortened to “seismic data” when mentioned later in the 761 Patent. See, e.g., Ex. 1030, 2:48–51, 3:17–19, 3:26–30, 3:35–40, 3:61–63, 9:41–63. Petitioner further contends that several publications establish that “seismic data” is not limited to the oil and gas industry, but may be used in other fields such as earthquake monitoring. Reply. 10 (citing Exs. 1112– 1114, 1121). Patent Owner argues that its constructions are consistent with, and supported by, other publications from the oil and gas industry. PO Resp. 33 (citing Ex. 2003; Ex. 2004, 213–232). Collectively, these publications establish that the term “seismic data” is used differently in different fields, but the best source for determining the meaning of a claim term is the patent’s Specification. See, e.g., In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149–50 (Fed. Cir. 2012); In re Suitco Surface, Inc., 603 F.3d 1255, 1260–61 (Fed. Cir. 2010); Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). As the 761 Patent uses the term “seismic data” consistent with the meaning proposed by Patent Owner, and not the more expansive definition proposed by Petitioner, we adopt Patent Owner’s proposed construction as the correct one to use for our analysis in this decision. The plain meanings of claim terms are construed not in a vacuum, but in the context of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d at 1257. Our construction of “seismic data” and “seismic data recorder” is consistent with the 761 Patent’s use of the terms.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We agree that Patent Owner’s failure to re-allege the argument in the Response waives the argument that Schmalfeldt is not a “printed publication.” See In re Nuvasive, 842 F.3d 1376, 1380 (Fed. Cir. 2016) (finding waiver where a patent owner “challenged the public accessibility of the prior art references during the preliminary proceedings of the inter partes review . . . but failed to challenge public accessibility during the trial phase”); SAP Am., Inc. v. Versata Dev. Group, Inc., CBM2012-00001, Paper 81 (Sept. 13, 2013); Paper 12. In any case, Petitioner has demonstrated Schmalfeldt is a printed publication for reasons noted. Dec. Inst. 10–20; see also Reply 4 (citing Ex. 1105). Accordingly, we determine Petitioner has shown Schmalfeldt is a “printed publication” under 35 U.S.C. § 102.” slip op. at 16
Patent outcomesUS 8,228,761 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,228,761 - Lego Systems, Inc. / Warner Bros. Home Entertainment Inc. v. Figurefun LLCSome claims unpatentablePTAB · Sep 26, 2019 · IPR2018-00755 · APJ Hyun J Jung · IPR · Final written decision
Claims 1, 3, 5, 7, 10, and 25 are unpatentable as obvious over each listed reference combination; claim 8 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find Patent Owner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We, therefore, find that a person of ordinary skill in the art “would have at least a Bachelor’s Degree in Computer Science with courses and experience in relevant mathematics and three to five years of experience with designing and developing coin-operated electronic gaming devices with electronic displays (such as slot machines).” Ex. 2001 ¶ 19. Any differences regarding additional experience in the parties’ competing proposals for the level of ordinary skill does not affect our analysis of Petitioner’s challenges.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“action figure.” See, e.g., id. at 10:21–24 (“Here, it is not necessary that the token with built-in IC chip is configured so integrally with the action figure that the action figure may be fixed firmly and cannot be removed from the token.”), 10:24–25 (“The action figure may be configured so as to be detachable from the token, which is disk-shaped.”). As discussed above, the claims require a “token for a gaming machine” that comprises an integrated circuit chip or a storage section being “detachable from a figure.” Id. at 23:58–62, 26:9–13. The Specification also describes figures with integrated tokens with built-in IC chips (id. at 5:49–54), but the claims are directed by their express terms to embodiments of tokens with detachable figures. We, thus, agree with Patent Owner that “token” does not include a “figure.” Thus, the term “token” cannot include within its scope a “figure.” To resolve the parties’ dispute regarding patentability, we need only determine that the term “token” does not include an “figure.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing only those claim terms in controversy and only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). Any further express interpretation is not required for our analysis. Vivid Techs., 200 F.3d at 803. slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As discussed above, we find that Lee teaches that, in the embodiment shown in its Figure 2, “transducer 64 can be attached to a preexisting wrestling figure” so that “a child who has a collection of various action figures can use those figures as part of the activity center.” Ex. 1004, 6:44– 51. Lee, thus, supports Petitioner’s declarant testimony that one of ordinary skill in the art would have modified Levy so that its integrated circuit chip is detachable in the same manner as Lee so that “various action figures can be used with the token.” Ex. 1002 ¶ 88 (citing Ex. 1006, 6:46–51). We also find that modifying Levy as proposed by Petitioner is within ordinary skill. See, e.g., Ex. 1002 ¶ 59. Thus, Petitioner demonstrates that one of ordinary skill in the art would have had a reasonable expectation of success in making the proposed modification.” slip op. at 34
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“G. Objective Evidence of Nonobviousness The parties do not direct us to any objective evidence of nonobviousness. See generally Pet.; PO Resp.; Tr. 72:19–22 (Patent Owner’s counsel stating it did not submit objective evidence of non-obviousness).” slip op. at 64
Patent outcomesUS 7,338,377 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,338,377 - Lego Systems, Inc. / Warner Bros. Home Entertainment Inc. v. Figurefun LLCAll claims unpatentablePTAB · Sep 26, 2019 · IPR2018-00754 · APJ Hyun J Jung · IPR · Final written decision
Claim 9 is unpatentable under § 103 over White and Lee because they teach or suggest every limitation and provide a reason to combine with a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find Patent Owner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We, therefore, find that a person of ordinary skill in the art “would have at least a Bachelor’s Degree in Computer Science with courses and experience in relevant mathematics and three to five years of experience with designing and developing coin-operated electronic gaming devices with electronic displays (such as slot machines).” Ex. 2001 ¶ 19. Any differences regarding additional experience in the parties’ competing proposals for the level of ordinary skill does not affect our analysis of Petitioner’s challenges.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“action figure.” See, e.g., id. at 8:21–25 (“It is desirable for the . . . token with built-in IC chip to be integrally configured with a design of a three-dimensional form . . . (it may be referred to as ‘action figure’ hereinafter.) . . . ”), 8:33–34 (“The action figure may be configured so as to be detachable from the token.”). As discussed above, claim 9 requires that “an action figure is attached to the token with built-in IC chip.” Ex. 1001, 28:23–24. We, thus, agree with Patent Owner that “token” does not include an “action figure.” Thus, the term “token” cannot include within its scope an “action figure.” To resolve the parties’ dispute regarding patentability, we need only determine that the term “token” does not include an “action figure.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing only those claim terms in controversy and only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). Any further express interpretation is not required for our analysis. Vivid Techs., 200 F.3d at 803. slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“attached to an action figure in a detachable manner. PO Resp. 48–49; see also PO Sur-Reply 19 (asserting same argument). We agree that Lee does not teach explicitly that transducer 64 is attached to its figure in a detachable manner; however, Lee suggests such an attachment “so the token can be used with preexisting figures.” Pet. 66. Petitioner’s declarant also testifies that Lee’s transducer is attachable and detachable or “it would have been obvious to make it such, as it would have been attached by friction in the space indicated, or by some sort of adhesive that would not need to be permanent.” Ex. 1002 ¶ 63; see also Pet. 65–66 (arguing that it would have been obvious “to provide the integrated circuit chip of White in a token that is attachable to and detachable from the action figure in view of Lee” so that “various action figures can be used with it”). We credit that testimony because the full record indicates that forming an attachment that is detachable is within the level of ordinary skill in the art. We, thus, determine that one of ordinary skill in the art would have made the proposed modification “so the token can be used with preexisting figures.” Even under Patent Owner’s proposed interpretation of “attached . . . in a detachable manner” to mean “configured to be non-permanently connected to and readily separated from” (PO Resp. 27–28), we would determine that White as modified by Lee would have resulted in an attachment that is “configured to be non-permanently connected to and readily separated from” because Petitioner’s declarant states it could have been formed by “some sort of adhesive that would not need to be permanent” (Ex. 1002 ¶ 63). Thus, based on the full record, a preponderance of the evidence persuades us that White and Lee teach or suggest “an action figure [that] is attached to the token with built-in IC chip in a detachable manner.”” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As discussed above, we find that Lee teaches that, in the embodiment shown in its Figure 2, “transducer 64 can be attached to a preexisting wrestling figure” so that “a child who has a collection of various action figures can use those figures as part of the activity center.” Ex. 1006, 6:44– 51. Lee, thus, supports Petitioner’s declarant testimony that one of ordinary skill in the art would have modified White so that its tag 5 is detachable in the same manner as Lee so that “various action figures can be used with the token.” Ex. 1002 ¶ 150 (citing Ex. 1006, 6:46–51). We also find that modifying White as proposed by Petitioner is within ordinary skill. See, e.g., Ex. 1002 ¶ 63. Thus, Petitioner demonstrates that one of ordinary skill in the art would have had a reasonable expectation of success in making the proposed modification. For the reasons above, we determine that Petitioner shows by a preponderance of the evidence that one of ordinary skill in the art would have modified White in view of Lee to arrive at the subject matter of claim 9.” slip op. at 42
Patent outcomesUS 7,001,276 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,001,276 - Supercell OY v. Gree, Inc.All claims unpatentablePTAB · Sep 23, 2019 · PGR2018-00055 · APJ Lynne H Browne · PGR · Final written decision
Claims 1–12 are unpatentable under § 101; the Board denied the motion to amend because substitute claims 13–24 are also patent ineligible.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“claims provide more detail than the original claims, we do not agree that in this instance such detail renders the proposed substitute claims patent eligible. As explained above in Part II.B.2.a, the original claims are directed to a judicial exception (namely a certain method of organizing human activity), which is patent ineligible. The proposed substitute claims do not remedy this deficiency in the original claims. Rather, the proposed substitute claims merely add more detail to the ineligible subject matter. For example, substitute claim 13 recites “controlling . . . an effect of an attack . . . according to . . . a plurality of attack values, each of the plurality of attack values assigned to each attack of the number of attacks within the predetermined time by any characters in the group.” PO MTA 27. This recitation clearly provides more detail than was provided in original claim 1; however, the additional detail specifies how the video game is conducted (i.e., the rules to be followed) as opposed to a technological improvement. In other words the proposed substitute claims, like the original claims, recite following rules (specifically, rules for a battle game), which is a certain method of organizing human activity that has been found to be patent ineligible. Guidance at 52. For this reason, and the reasons discussed above in Part II.B.2.b regarding the original claims, we determine that the proposed substitute claims are directed to a judicial exception (abstract idea). We also determine that the proposed substitute claims do not integrate the recited abstract idea into a practical application for the reasons discussed above in Part II.B.2.c and that the additional elements beyond the recited abstract idea do not recite an inventive concept for the reasons discussed above in Part II.B.2.d. Accordingly, we find that substitute claims 13–24 are not patent eligible.” slip op. at 52
- BurdenFwd mixedMixed
“We are persuaded that Petitioner is correct because once again Patent Owner relies on the limitations that are encompassed by the judicial exception for the inventive concept. Our analysis under step 2B, like our analysis above under step 2A prong 2, looks to the additional elements beyond the judicial exception. Guidance, 84 Fed. Reg. at 56 (“For example the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element.”). Patent Owner identifies no additional elements beyond the judicial exception as providing an inventive concept and does not argue that the additional elements beyond that judicial exception are not well-known, routine, and conventional. For these reasons, we determine that claims 1–12 do not provide an inventive concept.” slip op. at 27
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Even if Patent Owner’s assertions that the limitations of claim 1 are analogous to the identified limitations in Examples 37 and 38 of the Guidance and do not recite mathematical concepts, this is not dispositive on the issue of whether claim 1 is directed to patent-ineligible subject matter. The Guidance identifies “following rules” such as “rules for conducting a wagering game” as one method of organizing human activity that is patent ineligible. Guidance, 84 Fed. Reg. at 52 (citing In re Smith, 815 F.3d at 818). The preamble to claim 1 recites “[a] method for providing a battle game to each of a plurality of client devices via a network.” Ex. 1001, 7:54– 55. The preamble of Example 37 recites “[a] method of rearranging icons on a graphical user interface (GUI) of a computer system” and the preamble of Example 38 recites “[a] method for providing a digital computer simulation of an analog audio mixer.” USPTO, Subject Matter Eligibility Examples: Abstract Ideas 1 (Jan. 7, 2019), https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_ 20190107.pdf. Neither of the example claims has anything to do with a method of providing a battle game or following rules, and thus, cannot demonstrate by analogy that claim 1 is patent eligible.” slip op. at 22
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“We are persuaded that Petitioner is correct because once again Patent Owner relies on the limitations that are encompassed by the judicial exception for the inventive concept. Our analysis under step 2B, like our analysis above under step 2A prong 2, looks to the additional elements beyond the judicial exception. Guidance, 84 Fed. Reg. at 56 (“For example the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element.”). Patent Owner identifies no additional elements beyond the judicial exception as providing an inventive concept and does not argue that the additional elements beyond that judicial exception are not well-known, routine, and conventional. For these reasons, we determine that claims 1–12 do not provide an inventive concept. e. Conclusion re Subject Matter Eligibility For the reasons set forth in Parts II.B.2.a–d, we are persuaded that Petitioner has met its burden of showing that claims 1–12 are not subject matter eligible.” slip op. at 27
Patent outcomesUS 9,687,744 unpatentableClaim construction§ 101 eligibility§ 112 disclosureDiscretionary denialcites Alice · Mayo · Bilski · NautilusPatents in suitUS 9,687,744 - Snap Inc. v. Vaporstream, Inc.No claims unpatentablePTAB · Aug 1, 2019 · IPR2018-00416 · APJ Stacey G White · IPR · Final written decision
Claims 1, 4–6, 11, 13, 15, and 16 were not shown unpatentable under § 103 because the asserted combinations did not teach the claimed recipient displays.
RulingsFinal written decision- BurdenNot shown unpatentable
“Ultimately, it is Petitioner’s burden to prove unpatentability by a preponderance of the evidence, which includes in this instance proving that a person of ordinary skill in the art would have understood Wren to teach “provid[ing] a second plurality of reduced traceability displays via the recipient user device.” See 35 U.S.C. § 316(e); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ and that burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (emphasis added; citation omitted); see also Magnum Oil, 829 F.3d at 1376 (“Where, as here, the only question presented is whether [claims would have been obvious], no burden shifts from the patent challenger to the patentee,” and “[t]his is especially true” when the issues are “what the prior art discloses, whether there would have been a motivation to combine the prior art, and whether that combination would render the patented claims obvious.”). “Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.” Dynamic Drinkware, 800 F.3d at 1378–79 (quoting Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008)). Petitioner argues that Figures 9A and 9B of Wren constitute “reduced traceability displays” because “New Movie” in Figure 9A is not message content and Wren thus displays header information and message content separately, citing the very limited disclosure of Wren regarding those displays and the testimony of Dr. Chatterjee as to what a person of ordinary skill in the art allegedly would have inferred from that disclosure. In response, Patent Owner provides persuasive evidence to the contrary that a person of ordinary skill in the art would have understood “New Movie” to be sent by the sending device to the recipient device as part of the message, or at the very least, that Wren is ambiguous on the point such that there is no basis to draw the inference advocated by Petitioner. Based on the record presented, we agree with Patent Owner and are not persuaded that there is sufficient evidence to establish that Wren teaches providing a “second plurality of reduced traceability displays via the recipient user device.”” slip op. at 31
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Upon review of all of the evidence, we find that Patent Owner’s declarant, Dr. Almeroth, articulates the more compelling position with respect to “New Movie.” See Ex. 2009 ¶¶ 75–86. Dr. Almeroth points out the speculative nature of Petitioner’s arguments, explains the deficiencies in Petitioner’s reading of Wren’s “one-touch” message disclosure, and explains in detail why Petitioner’s view that “New Movie” is not message content is unfounded, in particular with reference to Figure 9C. See id. We credit Dr. Almeroth’s testimony on this issue and find it more persuasive than the testimony of Dr. Chatterjee, for all of the reasons explained above.” slip op. at 29
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner that presentation of this theory in the Reply is improper because it was not raised adequately in the Petition. See Sur-Reply 17–18. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding . . . patent owner response.” See also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing.”); Trial Practice Guide Update (Aug. 2018), 14–15, available at https://www.uspto.gov/sites/default/files/documents/ 2018_Revised_Trial_Practice_Guide.pdf (“‘[R]espond,’ in the context of § 42.23(b), does not mean embark in a new direction with a new approach as compared to positions taken in a prior filing. 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.”). As explained above, Petitioner in its Petition relies solely on Wren as allegedly teaching the “provid[ing] a second plurality of reduced traceability displays via the recipient user device” limitation of claim 1. See Pet. 33–36 (arguing that the limitation is disclosed by Wren). Petitioner clearly explained its position as follows: Figures 9A and 9B from Wren together qualify as the second “plurality of reduced traceability displays,” under its broadest reasonable interpretation, because they display message content and recipient identifying information separately. As shown, Figure 9A of Wren shows identifying information associated with the message (e.g., sender identification “Jane Doe” and time “9:30AM”), but does not display any of the movie message content. Conversely, Figure 9B shows the movie message content, but does not include any identifying information. Figures 9A and 9B thus disclose “a second plurality of reduced traceability displays.” Pet. 34–35 (emphases and footnotes omitted). Petitioner never mentions Namias when addressing the limitation at pages 33–36 of the Petition. The only portion of the Petition cited by Petitioner in the Reply for the argument is pages 21–22, which pertain to Petitioner’s asserted motivation to combine the cited references. See Reply 12. In that section, Petitioner does not address how the absence of text in Namias would impact Wren. See Pet. 21–23. Moreover, even if Petitioner could now rely on a combination of Wren and Namias for the “second plurality of reduced traceability displays via the recipient user device” limitation, Petitioner never argued in the Petition that the proposed modified system would not support text (with video) in a message. See Sur-Reply 17–18.” slip op. at 33
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“Motion to Amend In its Motion to Amend in IPR2018-00439, Patent Owner proposes substitute claim 50 for claim 13 “only if the Board concludes that claim 13 is unpatentable.” Mot. 1. As explained herein, we do not determine that claim 13 is unpatentable and, therefore, dismiss the Motion to Amend as moot.” slip op. at 36
Patent outcomesUS 9,413,711 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 9,413,711 - L’Oréal USA, Inc. v. Liqwd, Inc.Some claims unpatentablePTAB · Jul 30, 2019 · PGR2018-00025 · APJ Timothy G Majors · PGR · Final written decision
Claims 1–13, 19–23, 29, and 30 are unpatentable as obvious; claims 14–16, 18, and 24–28 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“combination of Pratt and Tanabe teaches or suggests all of claim 1’s limitations, and that the skilled artisan had a sufficient reason to combine the art as proposed with a reasonable expectation of success in arriving at the bleaching method that is claimed. Before reaching a conclusion of obviousness, however, we consider the parties’ argument and evidence related to alleged objective indicia of nonobviousness. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016).” slip op. at 35
- ExcludeMotion to exclude, deniedMixed
“those exhibits) as discussed above in the context for which they were offered (objective indicia of nonobviousness as to alleged unexpected results and industry skepticism). We gave the exhibits little weight on those issues for the reasons explained, and ultimately found in Petitioner’s favor—that objective indicia of nonobviousness did not outweigh the evidence of obviousness on this record. Thus, excluding this evidence would not change the result. Accordingly, we dismiss Petitioner’s motion to exclude Exhibits 2038 and 2041 as moot.” slip op. at 85
Patent outcomesUS 9,668,954 mixed§ 103 obviousnesscites KSRPatents in suitUS 9,668,954 - Dispersive Networks, Inc. v. Nicira, Inc.Rehearing grantedPTAB · Jul 17, 2019 · PGR2018-00063 · APJ Debra K Stephens · PGR · Rehearing
Patent Owner’s rehearing request was granted as to claim 7, which was removed from institution under § 112(b); institution on claims 1–6 and 8–11 remained unchanged.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“We agree. We erroneously instituted review of claim 7 under 35 U.S.C. § 112(b). We modify our Decision to the extent that we do not institute on claim 7 under 35 U.S.C. § 112(b). That is, we institute a post-grant review of claims 1–6 and 8–11 of the ’815 Patent on the challenge that these claims are indefinite and unpatentable under 35 U.S.C. § 112(b).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We agree. We erroneously instituted review of claim 7 under 35 U.S.C. § 112(b). We modify our Decision to the extent that we do not institute on claim 7 under 35 U.S.C. § 112(b). That is, we institute a post-grant review of claims 1–6 and 8–11 of the ’815 Patent on the challenge that these claims are indefinite and unpatentable under 35 U.S.C. § 112(b).” slip op. at 10
NonePatents in suitUS 9,722,815
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.