Takeaway: A patent claim is not proved to have been obvious merely by demonstrating that each of its elements was, independently, taught in different individual prior art references.

In its Decision, the Board denied the Petitions in each of related inter partes review proceeding nos. IPR2015-00277 and IPR2015-00278. The Board was not persuaded that Petitioner had established the existence of a reasonable likelihood that at least one challenged claim could be shown to have been obvious under 35 U.S.C. § 103(a). Thus, the Board did not institute trial with respect to any claim.

Petitioner had challenged claims 1-50 of the ‘361 patent in IPR2015-00277. Also, Petitioner had challenged claims 51-73 of the ‘361 patent in IPR2015-00278. The relied-upon references, the Declaration by Dr. Robert Akl, the exhibits, and the issues before the Board were all essentially the same in the two proceedings.

As characterized by the Board, “[t]he ‘361 patent relates to a method for identifying a person who is a repeat customer when the person enters a brick and mortar establishment.” In this context, a wireless system is used to provide ‘“. . . targeted marketing and sales promotions (up-sell/cross-sell) for individual customers,’ designed to provide increased sales, customer retention, and customer loyalty.” The asserted grounds were all based on obviousness contentions under 35 U.S.C. § 103: The combination of Marshall and Ogasawara was applied to claims 1-18, 20-22, 24-25, 27-36, 38-45, 47-50, 51-53, 56-59, and 61-73; the combination of Roslak and Ogasawara was applied to claims 1, 4-16, 21-22, 24-25, 27, 30-36, 39-40, 43-45, 47, 49, 51-54, 56, 58-65, and 67-70; the combination of Roslak, Ogasawara, and Marshall was applied to claims 2-3, 8, 17-18, 20, 28-29, 38, 41-42, 48, 50, 52, 54, 57, 60, 66, and 71-72; the combination of Marshall, Ogasawara, and Asthana was applied to claims 2, 23, 26, 27, 35, 39, 55, and 57; the combination of Roslak, Ogasawara, and Asthana was applied to claims 2, 23, 26, 27, 35, 39, 55, and 57; the combination of Marshall, Ogasawara, and Sorensen was applied to claims 18, 19, 37, and 46; the combination of Roslak, Ogasawara, and Sorensen was applied to claims 18, 19, 37, and 46; the combination of Marshall, Ogasawara, and Hudda was applied to claims 8 and 9; and the combination of Roslak, Ogasawara, and Hudda was applied to claims 8 and 9.

Patent Owner had asserted that the Petition “must fail” because Petitioner had not identified all of the real parties in interest. After conducting a detailed analysis, the Board disagreed. The Board then provided a discussion on claim construction.

Turning to the proposed obviousness grounds under 35 U.S.C. § 103, the Board found that the Petitions did not identify the differences between the prior art and the challenged claims and did not “provide a substantive analysis of why or how a person of ordinary skill in the art would have modified the prior art to render the claims obvious.” Instead, according to the Board, the Petitions simply quoted the claim limitations and, after each quoted limitation, indicated where that limitation was found in each of the individual references. This led the Board to conclude that “the Petitions do not set forth a meaningful obviousness analysis over the prior art cited because they do not adequately explain the significance of the evidence and do not direct us to persuasive evidence to support a rationale for the particular combination of references identified in the separate patentability challenges.”

Shopkick, Inc. v. Novitaz, Inc., IPR2015-00277, IPR2015-00278
Paper 7: Decision Denying Institution of Inter Partes Review
Dated: May 29, 2015
Patent 7,962,361 B2
Before: Donna M. Praiss, Scott A. Daniels, and Barry L. Grossman
Written by: Grossman
Related Proceedings: Novitaz, Inc. v. shopkick, Inc., Civil Action No. 3:14-cv-05077 (N.D. Cal.); IPR2015-00279