- Volkswagen Group Of America, Inc. v. Stratosaudio, Inc.Institution deniedPTAB · Nov 12, 2021 · IPR2021-00717 · APJ Kevin C Trock · IPR · Institution
The Board denied institution on all challenged claims: Grounds 1–3, 6, and 7 failed the institution threshold, and Grounds 4 and 5 were denied under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“the list of cited references of the ’203 Patent. Ex. 1001, 2; Ex. 1002, 430. Because the same reference was cited during prosecution, there is no material difference between Christensen and the prior art involved during examination. Given these facts, we need not further evaluate factor (b), whether Christensen is cumulative, nor factor (d), the extent of overlap in arguments regarding Christensen. Thus, we find that the same reference was previously presented to the Office, and we move on to the second part of the Advanced Bionics framework.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account Patent Owner’s Preliminary Response, we conclude that the Petition does not establish there is a reasonable likelihood Petitioner would prevail in establishing at least one of Challenged Claims of the ’203 Patent as unpatentable under certain grounds presented in the Petition, and that the remaining asserted grounds should be denied pursuant to our delegated discretion under 35 U.S.C. § 325(d). Accordingly, we do not institute an inter partes review as to any of the challenged claims of the ’203 Patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that “[a] person of ordinary skill in the art (‘POSITA’) would have had at least a B.S. in computer science, electrical engineering, or a related field, and three years of experience working in the communications- or Internet-related industries” and that “[m]ore education or skill might make up for less experience, and vice-versa.” C. Pet. 5 (citing Ex. 1003 ¶ 43). Patent Owner does not dispute this level of skill. See generally Prelim. Resp. Petitioner’s description of the level of ordinary skill appears to be generally consistent with the subject matter of the ’203 Patent. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We are not persuaded by Petitioner that the recited database system should be given no patentable weight. The Federal Circuit explains that [p]roduct-by-process claims are not specifically discussed in the patent statute. The practice and governing law have developed in response to the need to enable an applicant to claim an otherwise patentable product that resists definition by other than the process by which it is made. For this reason, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). With respect to patentability, “[i]f the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Id. The Federal Circuit has clearly stated that “[i]n determining validity of a product-by-process claim, the focus is on the product and not the process of making it.” Purdue Pharma, 811 F.3d at 1354 (quoting Greenliant Sys., Inc. v. Xicor LLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012)). “That is because of the . . . longstanding rule that an old product is not patentable even if it is made by a new process.” Id. Generally, therefore, the recited process steps in a product-by-process claim are not accorded patentable weight. See In re Nordt Development Co., LLC, 881 F.3d 1371, 1375 (Fed. Cir. 2018) (“[T]he Board typically will not accord patentable weight to a process limitation in a product-by-process claim.”) (citing Thorpe, 777 F.2d at 697).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,200,203 - Volkswagen Group Of America, Inc. v. Stratosaudio, Inc.Institution deniedPTAB · Oct 25, 2021 · IPR2021-00718 · APJ Hyun J Jung · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of success on the Levy grounds and § 325(d) warranted denial of the Christensen ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied 325dInstitution denied
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response and for the reasons explained below, we do not institute an inter partes review of claims 10, 11, 13, and 15 of the ’843 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he [Office] is permitted, but never compelled, to institute an [inter partes review] proceeding.”). Pursuant to 35 U.S.C. § 325(d), in determining whether to institute an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” In evaluating the exercise of discretion to deny institution under § 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged GmbH, IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential). In applying the two-part framework, we consider several non- exclusive factors, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (“Becton, Dickinson”). Factors (a), (b), and (d) of the Becton, Dickinson factors relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“Based on our review of Petitioner’s relied-upon portions of Levy, Levy uses an extracted identifier, such as a broadcaster ID, and “context information” to identify an audio object. Ex. 1005 ¶¶ 15, 56. Thus, if we accepted Petitioner’s position that obtaining Levy’s “object identifier” discloses “acquir[ing] encoded third party data associated with the reception of the specific instance of the media segment in the electronic transmission,” Petitioner does not explain sufficiently how context information that is extracted and forwarded with the broadcaster ID to obtain the “object identifier” can disclose “generat[ing] data that enables the unique identification of the specific instance of acquisition of the encoded third party data.” See Pet. 57–60; Ex. 1003 ¶¶ 181–194. Petitioner does not identifier” can be acquired and generated in the manner argued by Petitioner. See Pet. 57–60; Ex. 1003 ¶¶ 181–194; see also Prelim. Resp. 36–37 (contending that Petitioner’s anticipation challenges lack particularity). As argued by Patent Owner, claim 10 requires that “generat[ing] data that enables the unique identification of the specific instance of acquisition of the encoded third party data” occur either after or at the same time as “acquir[ing] encoded third party data associated with the reception of the specific instance of the media segment in the electronic transmission.” Ex. 1001, 36:28–33. Claim 10 recites a “specific instance of acquisition of the encoded third party data” that apparently refers to the earlier-recited “acquire encoded third party data associated with the reception of the specific instance of the media segment in the electronic transmission,” and Petitioner does not address the interpretation of “acquisition” in view of the previously recited “acquire.” See Pet. 9–10, 57–60. Additionally, Petitioner’s declarant testimony does not explain further the arguments or evidence presented in the Petition and does not provide additional evidence beyond that cited in the Petition. See Ex. 1003 ¶¶ 181–194. Thus, for the reasons above, Petitioner fails to show that Levy discloses all the limitations of independent claim 10. 3. Dependent Claims 11, 13, and 15 Petitioner argues that Levy anticipates dependent claims 11, 13, and 15 with citations to the record. Pet. 65–69. Petitioner’s arguments and relied upon evidence for these claims do not remedy the deficiencies discussed above for independent claim 10. that Levy discloses all the limitations of dependent claims 11, 13, and 15 and, therefore, fails to show that Levy anticipates these claims.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“4. Asserted Obviousness in view of Levy and Finley Petitioner argues that: [t]o the extent . . . that Levy does not anticipate the Challenged Claims because Levy does not disclose the complete details of the claimed database (in other words, that the difference between each claim as a whole and the prior art as a whole is the explicit recitation of the claimed database), it would have been obvious to store the object ID lookup information or purchase transaction tracking information. Pet. 69 (citing Ex. 1003 ¶ 227); see also id. (contending that Levy teaches storing a transaction log in a log file of a database). Petitioner’s arguments that Levy and Finley would have rendered obvious claims 10, 11, 13, and 15 do not further address the limitations we discussed above for claim 10, and Petitioner’s proposed modification of Levy in view of Finley does not remedy the deficiencies of Petitioner’s arguments that Levy discloses all the limitations of claim 10. Thus, for the reasons discussed above for claim 10, Petitioner fails to show that Levy and Finley teach or suggest all the limitations of claims 10, 11, 13, and 15 and, therefore, fails to show that Levy and Finley would have rendered obvious these claims. 5. Petitioner Fails to Show a Reasonable Likelihood of Prevailing As discussed above, Petitioner’s arguments and evidence fail to show that Levy anticipates claims 10, 11, 13, and 15 and fail to show that Levy and Finley would have rendered obvious these claims. Petitioner, therefore, fails to show a reasonable likelihood of prevailing in its challenges based on Levy.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,584,843 - Supercell OY v. Gree, Inc.Institution deniedPTAB · Nov 12, 2020 · PGR2020-00063 · APJ Lynne H Browne · PGR · Institution
The Board denied institution of PGR on claims 1–9, finding the § 101 arguments previously presented to the Office and the other grounds insufficient to show likely unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. The Board recently explained a two-part framework that the Board uses under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or 4 “ObjectLabel” (Ex. 1007, “ObjectLabel”). 5 US 2015/0153913 A1, issued June 4, 2015 (Ex. 1008, “Ballard”). substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). The Board further explained that “[i]f a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute.” Id. at 8–9. “If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Id. at 9. The Becton, Dickinson6 factors, which address discretion to deny when a Petition presents the same or substantially the same prior art or arguments previously presented to the Office, are instructive. Id. (“[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” (Footnote omitted)).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(“the ’432 patent”). Supercell Oy (“Supercell”) filed a petition requesting post-grant review of claims 1–9 of the ’432 patent. Paper 2 (“Pet.”). GREE, in turn, filed a preliminary response. Paper 8 (“Prelim. Resp.”). After considering the petition and the preliminary response, as well as all supporting evidence, we determine the petition does not demonstrate that it is more likely than not that at least one of the challenged claims of the ’432 patent is unpatentable. 35 U.S.C. § 324(a). Thus, we do not institute post-grant review of claims 1–9 of the ’432 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“‘“the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.’” Prelim. Resp. 11 (citing Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). “Rather, ‘the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had ‘possession’ of the claimed subject matter as of the filing date.’” Id. (citing Ariad Pharms, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)).” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“information.” Id. at 7:34–41. In particular, Ross explains that “[t]he user may interact with the secondary, tertiary, etc., virtual reality content and then return his view back to the movie wherein the movie has been adjusted to reflect the user’s interaction with the secondary, tertiary, etc., virtual reality content.” Id. at 7:41–45. Ross explains further that “while a user views primary virtual reality content, system 10 may be configured to display a ‘pop-up’ cue indicating that additional virtual reality content (e.g., additional characters) is available in a different (e.g., secondary, tertiary, etc.) content area.” Id. at 7:46–50. Thus, we understand Ross to disclose a system wherein a user can turn their gaze from a primary area to a secondary, tertiary, etc., area to view content related to the content in the primary area. See Ross, 7:21–33 (“Responsive to the user turning his view from the primary virtual reality content . . . a sensory cue comprising . . . secondary, tertiary, etc., . . . may be displayed to the user.”). Further, we understand Ross to disclose a system wherein the user’s focus on an item in the primary area may activate a “popup” cue in the primary area directing the user to additional virtual reality content in a secondary, tertiary, etc., area. See id. at 7:46–50 (“[W]hile a user views primary virtual reality content, system 10 may be configured to display a ‘pop-up’ cue indicating that additional virtual reality content . . . is available in a different (e.g., secondary, tertiary, etc.) content area.”). We do not, however, understand Ross’ “pop-up” cue to be activated in a secondary, tertiary, etc. area based on the user’s gaze position moving to the second area from the first area as required by claims 1, 8, and 9. See id. Therefore, because Ross describes displaying a “pop-up” cue while a user is viewing primary virtual reality content (see Ross, 7:46–50), Petitioner does not show persuasively that Ross discloses that “a gaze position moving to the second area from the first area” is an “information providing condition.” Furthermore, Petitioner’s cited testimonial evidence does not explain sufficiently how Ross discloses the recited “information providing condition.” See Ex. 1003 ¶ 73. For the reasons above, Petitioner does not show adequately that Ross discloses an “information providing condition [that] is a condition of a gaze position moving to the second area from the first area.”” slip op. at 18
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,406,432 - Robert Bosch Tool Corporation v. Sd3, LLCInstitution deniedPTAB · Mar 22, 2017 · IPR2016-01754 · APJ Scott A Daniels · IPR · Institution
The Board denied institution under § 325(d), finding the petition presented substantially the same prior art and arguments previously considered during prosecution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“similarities between the prior art references presented here, in this Petition, as compared to the prior art substantively considered by the Examiner, we determine that the evidence weighs in favor of a determination that the prior art asserted in the Petition was previously considered by the Office. We are persuaded that the prior art of Nieberle, either in view of the knowledge of one of ordinary skill in the art or Bielinski, and Lokey, either in view of the knowledge of one of ordinary skill or Bielinski, as asserted in this proceeding in grounds 1–4 against claims 1–8 and 10–17 are “the same or substantially the same prior art” as that specifically relied on and considered substantively by the Examiner, and overcome by Applicant, during prosecution of the underlying patent application. See 35 U.S.C. § 325(d).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“machine safety would have known could achieve the claimed speed and distance. This testimony, following his desired acceleration calculation however, fails to state affirmatively that it was even possible by explosive devices and capacitors to achieve the claimed time and distance performance characteristics asserted in the calculation. More importantly, Mr. Main’s testimony fails to persuasively explain how any known explosives or capacitors available to one of skill in the art at the time of invention, would have achieved such an acceleration and a mechanical actuation of the “moveable component 1/32nd of an inch within approximately 3 milliseconds or less after the dangerous condition is detected” as called for in claims 1, 13, and 16 of the ’279 patent. By way of another example, Mr. Main’s declaration refers to a spring loaded actuator disclosed by Bielinski, the secondary reference combined with Nieberle in ground 2, and asserts that it “could have provided sufficient energy (depending on size, etc.), and it would have been obvious to use it.” Ex. 1003 ¶ 258. Even assuming that Mr. Main is forthrightly stating that the “sufficient energy” developed by Bielinski’s actuator could actuate a moveable member to move 1/32nd of an inch in 3 milliseconds or less, nowhere in his declaration can we find that Mr. Main provides any persuasive technical reasoning or analysis to support this allegation. Id. (citing Ex. 1003, V.B.9).” slip op. at 18
- PTAB / AIA Trials › §315(b) time barNot reached
“IV. CONCLUSION We conclude that the facts and evidence do not establish a sufficient or persuasive reason for the Board to again consider the same prior art, the same claims, and substantially the same arguments as substantively considered in the examination of the application leading to the ’279 patent. Further, because we are guided by our analysis above to exercise our discretion in this threshold matter under 35 U.S.C. § 325(d) and deny institution in this case, we need not reach a different threshold issue raised by Patent Owner in their Preliminary Response, that is whether Petitioner is time-barred by an ITC investigation, (Inv. No. 337-TA-965), under 35 U.S.C. § 315(b).” slip op. at 21
§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,011,279
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.