iTakeaway: If a petitioner is making an obviousness showing based upon the same art as an anticipation showing, the petitioner must do more than provide a conclusory statement that the claims would have been obvious based on the disclosure discussed in the anticipation section and the testimony of its expert regarding anticipation. A petitioner must include a meaningful discussion on obviousness.
In its Decision, the Board found that Petitioner had not shown a reasonable likelihood that it would prevail as to the unpatentability of any of the challenged claims (1 and 19-25) of the ’830 Patent. Therefore, it denied the Petition. The ’830 Patent is directed to incentive programs (such as scratch-and-win games, sweepstakes games, treasure hunt games, or computer games) and fulfillment of prizes (awards) won in incentive programs.
The Board began with claim construction, noting that the claims are construed in the broadest reasonable interpretation in light of the specification. Although the parties proposed constructions for several terms, the Board determined that the only term requiring express construction for the purposes of the decision is “inventory management system.” Petitioner proposed that “inventory management system” should be construed as “a system to manage award units.” Patent Owner argued that Petitioner’s construction is inconsistent with the claims and the specification because it reads out the word “inventory,” and the Board agreed. Therefore, the Board construed “inventory management system” as requiring a system that manages the available quantity (i.e., inventory) of an item.
The Board then turned to the contention that claims 1 and 19-22 are anticipated by Barnett. The Board first found that Barnett does not disclose a system that manages the available quantity of an item, as required by the Board’s construction of “inventory management system.” The Board also found that Barnett does not disclose imposing a geographic location limitation on where the coupons can be fulfilled, as required by the claims.
The Board next examined the contention that claims 1 and 19-25 are anticipated by Narasimhan. The Board again found that Narasimhan does not disclose a vendor database providing inventory information associated with providers or their products; therefore, it does not disclose an “inventory management system.” The Board also found that although Narasimhan discloses promotions that are “location sensitive,” there is no description of what this means and Petitioner’s expert’s explanation was not persuasive because it provided no support for the opinion. Therefore, the Board found that Narasimhan does not disclose the required “sponsor-selected geographic location for fulfillment.”
Then, the Board reviewed the contention that claims 1 and 19-25 are anticipated by Scroggie. The Board again found that Scroggie did not disclose a storage device containing or managing information regarding the quantity of offers available; therefore, it does not disclose the claimed “inventory management system.” Further, the Board found that the system in Scroggie does not select the fulfillment location for the offers, therefore, does not disclose “sponsor-selected geographic location for fulfillment.”
Regarding Petitioner’s obviousness challenges, the Board found that the challenges were conclusory and the expert declaration did not provide any meaningful evidence or analysis of obviousness. Petitioner stated that “[f]or obviousness grounds, Petitioners evaluate the scope and content of the prior art, any differences between the art and the claims, and the knowledge of ordinary skill in the art” and “provide a rational underpinning to support the references’ combination.” However, the Board found no such analysis was actually provided. For example, Petitioner simply stated that even if Barnett does not directly anticipate claims 1 and 19-22, they are obvious based on the disclosure of Barnett as combined with the expert’s confirmations. However, the expert declaration only addressed anticipation, not obviousness, except to the extent it contained a conclusory statement that the claims would have been obvious.
Safeway, Inc. and The Kroger Co. v. Kroy IP Holdings, LLC, IPR2014-00685
Paper 11: Decision Denying Institution of Inter Partes Review
Dated: September 11, 2014
Patent: 7,054,830 B1
Before: Michael J. Fitzpatrick, Barry L. Grossman, and Jeremy M. Plenzler
Written by: Plenzler
Related Proceedings: Kroy IP Holdings, LLC v. Safeway, Inc., No. 2:12-cv-800 (E.D. Tex.); Kroy IP Holdings, LLC v. The Kroger Co., No. 2:13-cv-141 (E.D. Tex.);Kroy IP Holdings, LLC v. AutoZone, Inc., No. 2:13-cv-888 (E.D. Tex.); Kroy IP Holdings, LLC v. BJ’s Rests., Inc., No. 2:13-cv-889 (E.D. Tex.); Kroy IP Holdings, LLC v. Genghis Grill Franchise Concepts, LP, No. 2:13-cv-890 (E.D. Tex.); Kroy IP Holdings, LLC v. Panera Bread Co., No. 2: 13-cv-891 (E.D. Tex.); Kroy IP Holdings v. TGI Friday’s, Inc., No. 2:13-cv-862 (E.D. Tex.); Kroy IP Holdings, LLC v. Hallmark Cards, Inc., No. 2:13-cv-933 (E.D. Tex.); Kroy IP Holdings, LLC v. The Men’s Warehouse, Inc., No. 2:13-cv-934 (E.D. Tex.); Kroy IP Holdings, LLC v. Ms. Fields Famous Brands, LLC, No. 2:13-cv-935 (E.D. Tex.); and Kroy IP Holdings, LLC v. Starbucks Corp., No. 2:13-cv-936 (E.D. Tex.)
