• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Rfcyber Corp.Institution denied
  PTAB · Dec 14, 2021 · IPR2021-00978 · APJ Kristi L R Sawert · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that the asserted combinations teach or suggest the server-initiated fund transfer limitation in claims 1 and 9.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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.” After considering the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, we determine the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’855 patent. Accordingly, we do not institute an inter partes review of all challenged claims of the ’855 patent on the grounds asserted in the Petition.” slip op. at 2

  • BurdenDenied

    “Although Petitioner contends that “it was obvious” for the WCM to initiate the fund transfer request to a financial institution, Pet. 34, Petitioner presents insufficient evidence as to why this would have been obvious to an ordinarily skilled artisan at the time of the ’855 patent based on the combined teachings of Dua and Davis. Petitioner states only in a conclusory manner that, “after the WCM receives an indication that the ‘load request’ is verified, it was obvious to send additional information identifying the credential and for the request to the ICMS, thus allowing the WCM to initiate the fund transfer request to the financial institution/bank.” Id. (citing Ex. 1003 ¶¶ 182–188). In Davis, however, the client terminal, rather than the load server,” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Although Petitioner contends that “it was obvious” for the WCM to initiate the fund transfer request to a financial institution, Pet. 34, Petitioner presents insufficient evidence as to why this would have been obvious to an ordinarily skilled artisan at the time of the ’855 patent based on the combined teachings of Dua and Davis. Petitioner states only in a conclusory manner that, “after the WCM receives an indication that the ‘load request’ is verified, it was obvious to send additional information identifying the credential and for the request to the ICMS, thus allowing the WCM to initiate the fund transfer request to the financial institution/bank.” Id. (citing Ex. 1003 ¶¶ 182–188). In Davis, however, the client terminal, rather than the load server,” slip op. at 25

  • PTAB / AIA Trials › Discretionary denialNot reached

    “V. DISCRETIONARY ISSUES Because we deny institution on the merits, we do not reach the discretionary issues raised by Patent Owner. See Prelim. Resp. 17–25.” slip op. at 29

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,448,855
• Tomofun, LLC v. Doggyphone LLCRehearing denied
  PTAB · Dec 10, 2021 · IPR2021-00260 · APJ Patrick R Scanlon · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution because Petitioner did not show the Board overlooked or misapprehended its arguments or abused its discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The 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, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “Substantial evidence is ‘such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.’” OSI Pharm., LLC v. Apotex” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Claim(s) Ground 35 U.S.C. § Reference(s)/Basis Challenged 1 7 102(b) Alasaarela1 2 8 103(a) Alasaarela 3 7–9 102(b) Beccaria2 4 7–9 103(a) Carelli,3 Beccaria 5 7–9 103(a) Bloksberg,4 Beccaria Pet. 4. Petitioner asserts that Alasaarela discloses the audio signal limitation for Grounds 1 and 2. Id. at 23–24, 31. Petitioner asserts that Beccaria discloses the audio signal limitation for Ground 3, and Carelli discloses the audio signal limitation for Ground 4. Id. at 36–37, 48. For Ground 5, Petitioner asserts that Bloksberg discloses the audio signal limitation. Id. at 60.” slip op. at 3

  • BurdenDecided for patent owner

    “As such, the Petition does not indicate with sufficient particularity that Petitioner relies on the Examiner’s finding as a basis for asserting that Bloksberg discloses the audio signal limitation and, thus, does not satisfy Petitioner’s burden on this point. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Because the Petition did not indicate clearly that it was relying on the Examiner’s finding, we could not have misapprehended or overlooked such a position. In addition, Patent Owner was not afforded a fair opportunity to dispute any reliance on the Examiner’s finding or the reasoning underlying the finding.” slip op. at 5

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We disagree with Petitioner’s characterization of Ground 3 as being based on obviousness. Rather, the Petition clearly asserts for Ground 3 that “Claims 7-9 are anticipated under 35 U.S.C. § 102 by Beccaria[].” Pet. 4; see also id. at 32 (“Ground 3 – Claims 7–9 Are Unpatentable As Anticipated By Beccaria[]”). Petitioner’s Ground 3 analysis of claim 7 relies on Beccaria disclosing each limitation, including the audio signal limitation. Id. at 32–40. Petitioner’s Rehearing Request does not direct us to any portion of the Petition for Ground 3 that asserts any claim limitation would have been obvious over Beccaria, alone or in combination with another reference. Accordingly, we are not persuaded that we misapprehended Petitioner’s argument with respect to Beccaria.” slip op. at 9

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 9,723,813
• American Well Corporation v. Teladoc Health, Inc.Institution denied
  PTAB · Nov 15, 2021 · IPR2021-00871 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of proving the Wang-I and Johnson combinations rendered the claims obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the ’000 patent.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Id. (citing Ex. 1003 ¶ 62) (emphasis added). It is not clear, however, whether Petitioner actually asserts that Wang-I discloses a server containing the database recited in claim 1. But, to the extent Petitioner is taking this position, Petitioner fails to explain adequately how arbitrator 250 (even assuming for the sake of argument that arbitrator 250 is a server) contains a database defining a first subset of robots as associated with a first customer ID and a second subset of robots as associated with a second customer ID. Furthermore, we agree with Patent Owner that “Wang-I is completely silent regarding the defining of subsets of the robots, or associating such subsets with a customer ID.” See Prelim. Resp. 27 (citing Ex. 1004 ¶ 23; Ex. 2001 ¶ 69).” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Dr. Rozenblit’s testimony cited by Petitioner merely repeats the Petition’s assertions and does not offer objective evidence or analysis to support the assertion. See Ex. 1003 ¶¶ 62–67. For this reason, we do not credit the testimony of Dr. Rozenblit on this point. 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 Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail).” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art would have had at least a Bachelor’s of Science Degree (or equivalent) in an academic area emphasizing electrical engineering, computer engineering, computer science, biomedical engineering, or a related technical field, and at least 2-3 years of experience in the field of robotics, telepresence systems, or both (e.g., familiarity with wireless communication technology, biomedical robotic systems, etc.). Pet. 8 (citing Ex. 1003 ¶¶ 24–25). Patent Owner agrees with Petitioner’s definition for the purposes of this proceeding. Prelim. Resp. 15. Based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 7

  § 103 obviousnesscites Graham
  Patents in suitUS 10,059,000
• Apple, Inc. v. Koss Corp.Institution denied
  PTAB · Oct 13, 2021 · IPR2021-00693 · APJ David C Mckone · IPR · Institution

  The Board denied institution on all challenged claims, finding no reasonable likelihood of success on the signal-strength claims and declining the duplicative remaining claims for efficiency.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Neither Seshadri nor Seshadri-818 teaches transitioning between sources of digital audio. Seshadri teaches transitioning between two types of wireless communication (e.g., from piconet to WLAN) in order for headphones (wireless headset 10) to continue communicating with the same source (e.g., cellular telephone 36) when the signal strength of the first communication type (e.g., piconet) becomes too low. Ex. 1007 ¶ 42. In another example, Seshadri teaches headset 10 transitioning between one device, wire line telephone 37, and another device, cellular telephone 36. Id. ¶ 44. However, cellular telephone 36 is connected via another path (e.g., the WLAN) to wire line telephone 37 and essentially is acting as a repeater to communicate the telephone information from its source, wire line telephone 37, to headset 10. Id. It is in this context that Seshadri teaches that “headset 10 extends the mobility of its user, extends the range of headset use and expands on headset functionality while preserving privacy and security by seeking service from base units to which it may be registered.” Id. In other words, by using cellular telephone 36 as an intermediary, headset 10 can travel farther away from wire line telephone 37, the source of the phone call, and still communicate with it. This is not, however, an example of transitioning between two sources, as required by claim 58. Wire line telephone 37 still is the only source with which headset 10 communicates in this example. Seshadri-818’s teaching is similar to this second example in Seshadri. Although Seshadri-818 describes transitioning headset 12 from one device to another (e.g., from wire line telephone 14 to cellular telephone 22) based on signal strength, the second device (cellular telephone 22) is used merely as an intermediary between headset 12 and wire line telephone 14 so that the headset can continue to communicate with the wire line telephone, the source of the data. Ex. 1013 ¶¶ 11, 26, 49–50. Again, it is in the context of the second device acting as an intermediary between a headset and a single source that Seshadri-818’s invention “extends the mobility of its user, extends the range of headset use and expands on headset functionality.” Id. ¶ 26 (“Thus, a logical connection is established between the universal wireless headset 12 and the wire line telephone 14 via the cellular telephone 22 and access point 24.”). See also id. ¶¶ 11 (“[A] logical connection may be established between the new device and a host device supporting the communication,” with the benefit that “a universal wireless headset is provided that extends the mobility of the user, extends the range of the headset and expands on its functionality.”), 50 (“This enables the universal wireless headset to roam within the local area network and maintain its wireless headset functionally with one of its host devices as it roams.” (emphasis added)).” slip op. at 23

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied

    “The Petition further challenges claims 1–3, 5, 10, 11, 14–16, 19, 23– 25, 28, 32–36, 39, and 42. Pet. 1–2. As noted above, however, each of these claims is challenged in the ’592 IPR on nearly identical grounds. Thus, it would be a waste of resources to institute a duplicative trial on these claims when Petitioner has not shown a reasonable likelihood of success in its challenges to the non-overlapping signal strength claims. Accordingly, we exercise discretion and do not institute a trial on this Petition, which Petitioner filed to challenge the signal strength claims. See supra § II.G. 5. Summary Petitioner filed this Petition to challenge the signal strength claims, claims 4, 6, 8, 12, 13, 17, 18, 20, 22, 26, 27, 29, 31, 38, 40, 41, 44, and 58– 62. See supra § II.G; Notice 2–3. For the reasons addressed above in connection with illustrative signal strength claim 58, Petitioner does not show a reasonable likelihood of prevailing on any of the signal strength claims. But for the signal strength claims, this Petition challenges the same claims as the ’592 petition. See supra § II.G; Notice 2–3. Accordingly, in the interest of efficiency and not duplicating the trial based on the ’592 petition, we exercise our discretion and do not institute a trial on this Petition.” slip op. at 29

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “This, however, ignores Petitioner’s asserted evidence of reasons to combine the references, namely, to maintain a connection between a headset and a host while roaming within a WLAN network that is wider than the piconet that could be established between the headset and that host. Pet. 31 (citing Ex. 1007 ¶ 44; Ex. 1013 ¶¶ 26, 50; Ex. 1003 ¶ 103). Specifically, Petitioner relies on Seshadri’s and Seshadri-818’s similar “use-case[s] in which this transition between two different devices would be useful,” namely the examples in which a cellular phone is used as an intermediary between a headset and a wire line telephone, with the wire line telephone serving as the single source. Pet. 31–32 (citing Ex. 1007 ¶ 44; 8 The Dissent also argues that a skilled artisan would have made the combination because the headset receiving some audio would have been better than it receiving no audio. We do not read the Petition as having made this argument. Ex. 1013 ¶ 26).9 Dr. Cooperstock repeats this reasoning in his testimony. Ex. 1003 ¶¶ 104–105. Thus, Petitioner’s asserted evidence of reasons to combine, taken directly from the two Seshadri references, describes the benefits of maintaining the connection between a headset and a single source (i.e., the host device), and transitioning between devices to maintain that connection. Petitioner does not present persuasive evidence of reasons to transition a headset from playing digital content from one source to playing digital content from another source while roaming within a WLAN, e.g., transitioning among a phone call on a cellular phone, a podcast on a PDA, streaming music on a PC, and an audio book on a laptop computer as the user moves from room to room in their house, changing proximity of the headset to the various devices. Even Petitioner’s citation to Haupt does not provide such evidence. As noted above, Petitioner’s theory for claim limitation 58[h] (“wherein the processor is configured to, upon activation of a user-control of the headphone assembly, initiate transmission of a request to a remote, network-connected server that is in wireless communication 9 Petitioner’s argument, cited by the Dissent, that the method of Seshadri- 818’s Figure 8 “would ensure that the headset only transitions to a better connection and therefore improves audio transmission to the headset,” PO Resp. 30, is still in the context of maintaining a connection between a headset and a single source. In particular, the testimony of Dr. Cooperstock cited to support this argument continues that “[n]otably, Seshadri-818 teaches making a ‘determination’ about ‘which device, or access point, to hand the communication off to’ and discloses an example of ‘determin[ing] that device K is to facilitate the ongoing communication.’” Ex. 1003 ¶ 101 (quoting Ex. 1013 ¶ 40). Paragraphs 39 and 40 of Seshadri-818 describe communication between headset 12 and device C, first using access point H, which has a logical connection to device C, and second using device K, which has a logical connection to device C. with the mobile, digital audio player”) has Seshadri’s PDA 30 and cellular telephone 36 both communicating and receiving audio files from the same server (i.e., the same source) “in the same manner as the operating element BE taught by Haupt.” Pet. 26. Here, Petitioner refers to the server, not either PDA 30 or cellphone 36, as “a source for the audio streams to which Seshadri teaches the base units 16 have access.” Id. at 26–27.” slip op. at 26

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner also constructs an “alternative example” or “additional configuration” in which Haupt’s headset hands off streamed audio from one playback device to another based on signal strength, e.g., “transition[ing] from playing streaming audio (e.g., internet radio) from Seshadri’s cellphone 36 to Seshadri’s PDA 30 as the headphones/headset move out of piconet range of the cellphone 36 and into piconet range of the PDA 30.” Pet. 32–33 (citing Ex. 1003 ¶ 106). Petitioner’s alternative theory rests on Dr. Cooperstock’s testimony which, in turn, merely repeats the Petition’s arguments without providing any basis for the testimony. Ex. 1003 ¶ 106. Here, Petitioner appears to rely on Seshadri’s general teaching that a headset could communicate with any one of several devices (Ex. 1007 ¶ 43 (“Wireless headset 10 may establish a piconet with any one of the devices 30–37.”)); that more than one of these devices would have been capable of transmitting digital audio content to the headset (id. ¶ 67); and that Seshadri-818 includes a general teaching of transitioning from one device to another based on signal strength (Ex. 1013 ¶ 50). A user wearing the headset, then, would roam from device to device, giving the user wider range of movement. The Dissent appears to accept this reasoning.8” slip op. at 25

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,469,934
• Apple Inc. v. Koss CorporationInstitution denied
  PTAB · Sep 30, 2021 · IPR2021-00626 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood that any claim was unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “would be able” to communicate with an arbitrary server is insufficient to support the proposed further modification because “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “would be able” to communicate with an arbitrary server is insufficient to support the proposed further modification because “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Moreover, we are not persuaded that Petitioner sufficiently explains why a person of ordinary skill would have made the proposed modification. Petitioner asserts that Seshadri’s base unit 16 would be able to communicate with a server “in the same manner” as operating element BE in Figure 3 of Haupt, but does not discuss Haupt’s Figure 3 embodiment or explain sufficiently how operating element BE in this embodiment communicates with a server. As such, it is difficult to decipher exactly what Petitioner means by communicating “in the same manner” as operating element BE in Haupt’s Figure 3. We, thus, find that Petitioner’s assertion lacks sufficient specificity as to why one of ordinary skill in the art would have made the proposed modification. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings slip op. at 18

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Dr. Cooperstock’s testimony on this point merely repeats the Petition’s assertion and is a conclusory statement not supported sufficiently by objective evidence or analysis. Ex. 1003 ¶ 108. For this reason, we do not credit this testimony. 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 Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail).” slip op. at 19

  • Skill levelSkill level petitioner adoptedOther

    “defining the level of ordinary skill in the art. Pet. 4 n.2 (citing Ex. 1003 ¶¶ 33–34). Dr. Cooperstock testifies that a person having ordinary skill in the art “would have had at least a Bachelor’s Degree in an academic area emphasizing electrical engineering, computer science, or a similar discipline, and at least two years of experience in wireless communications across short distance or local area networks” and “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Ex. 1003 ¶ 33. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art in its Preliminary Response, nor does it propose a different level of skill. Based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 10,206,025
• Apple Inc. v. Koss CorporationInstitution denied
  PTAB · Sep 7, 2021 · IPR2021-00546 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that the Haupt-based combinations rendered them obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “would be able” to communicate with an arbitrary server is insufficient to support the proposed further modification because “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed.Cir.2014)). slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “defining the level of ordinary skill in the art. Pet. 4 n.1 (citing Ex. 1003 ¶¶ 33–34). Dr. Cooperstock testifies that a person having ordinary skill in the art “would have had at least a Bachelor’s Degree in an academic area emphasizing electrical engineering, computer science, or a similar discipline, and at least two years of experience in wireless communications across short distance or local area networks” and “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Ex. 1003 ¶ 33. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art in its Preliminary Response, nor does it propose a different level of skill. Based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner does not propose any term for construction and suggests that there is no term that requires construction to resolve the controversy. Pet. 4 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Patent Owner does not discuss claim construction or propose any term for construction. See generally Prelim. Resp. Thus, on the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “data, public switched telephone networks (PSTN), private branch exchanges or others known to those skilled in the art.” Ex. 1007 ¶ 24. As such, Seshadri discloses a direct coupling to the headset but not to a server. To the extent Petitioner’s position is that Seshadri’s devices (at least some of which Petitioner contends are “digital audio players”) must be configured to wirelessly communicate with remote servers because they wirelessly communicate with the headset and, thus, must be configured to communicate with any wireless device, we are not persuaded that this configuration would have caused one of ordinary skill in the art to further modify the combination of Haupt and Seshadri to provide wireless communication between Seshadri’s devices and Haupt’s servers OS and PS. At best, Petitioner establishes that Seshadri’s devices are capable of wirelessly communicating with the servers. Such capability, however, is not sufficient to have led one of ordinary skill in the art to make the proposed modification in which the digital audio player wirelessly communicates with the specific OS or PS servers of Haupt.” slip op. at 16

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 10,206,025
• Fitbit, Inc. v. Philips North America LLCInstitution denied
  PTAB · Oct 30, 2020 · IPR2020-00782 · APJ Frances L Ippolito · IPR · Institution

  The Board denied institution because Philips had recorded a statutory disclaimer of all challenged claims 15–17.

  RulingsInstitution decision

  • Adverse judgmentAdverse judgmentDenied

    “Pursuant to 37 C.F.R. § 42.107(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. [§] 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” (Emphasis added.) A disclaimer under 35 U.S.C. § 253(a) shall be recorded in the Office, and is “considered as part of the original patent.” See 35 U.S.C. § 253(a).” slip op. at 5

  Discretionary denial
  Patents in suitUS 6,976,958
• SHDS, Inc. / Galderma Laboratories, L.P. v. Truinject Corp.Institution denied
  PTAB · Apr 14, 2020 · IPR2020-00042 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving the claims obvious over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the ’836 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the testimony of Dr. Mukherjee, Petitioner submits that a person of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering, robotics engineering, mechatronics, or a similar field, or, alternatively, may have had a lesser degree in one of those fields accompanied by practical experience in designing medical training or similar systems. Pet. 17–18 (citing Ex. 1002 ¶ 27). Petitioner further submits that a person of ordinary skill in the art would have an in-depth working knowledge of machine vision, three-dimensional tracking systems, microprocessors, signal processing, sensors, computer programming, or a combination thereof. Id. at 18 (citing Ex. 1002 ¶ 27). In addition, Petitioner submits that a person of ordinary skill in the art would have experience in designing and producing realistic anatomical models or lifelike mannequins and would have a strong working knowledge of mannequin design, computer-aided design and manufacturing (CAD and CAM), materials selection, human anatomy, and related special effects, and may have collaborated with others of skill in the art, such that the individual or the team collectively would have had experience and/or knowledge of medical simulators. Id. (citing Ex. 1002 ¶ 28). Patent Owner does not dispute this contention at this stage of the proceeding, nor does Patent Owner offer its own definition of the level of ordinary skill in the art. We find, based on our review of the record before us, that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence at this stage of the proceeding, including the asserted prior art and, for the purposes of this Decision only, we adopt Petitioner’s definition.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded that Petitioner has demonstrated sufficiently that one of ordinary skill in the art would have been led to modify Goldstein’s blinded breast model 6 by combining it with the larger torso body form of Lacey. First, neither the Petition nor Dr. Mukherjee adequately explains why the proposed modification would provide a simulation of human tissues for training that is more realistic than Goldstein’s training apparatus. Dr. Mukherjee’s testimony merely repeats the Petition’s assertion and does not offer objective evidence or analysis to support the assertion. See Ex. 1002 ¶ 75. For this reason, we do not credit the testimony of Dr. Mukherjee on this point. 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 Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail).” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “We are not persuaded that Petitioner has demonstrated sufficiently that one of ordinary skill in the art would have been led to modify Goldstein’s blinded breast model 6 by combining it with the larger torso body form of Lacey. First, neither the Petition nor Dr. Mukherjee adequately explains why the proposed modification would provide a simulation of human tissues for training that is more realistic than Goldstein’s training apparatus. Dr. Mukherjee’s testimony merely repeats the Petition’s assertion and does not offer objective evidence or analysis to support the assertion. See Ex. 1002 ¶ 75. For this reason, we do not credit the testimony of Dr. Mukherjee on this point. 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 Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail). Second, we do not agree that one of ordinary skill in the art would have considered combining Goldstein’s model with a torso body form useful or desirable given the nature of Goldstein’s training process. That is, Goldstein’s training technique relies on the trainee palpating the breast model to locate the target lesion and to guide the aspiration needle to the target. Ex. 1004, 3:53–59. Thus, “[t]he lifelike characteristics of the breast model provide tactile training of these events and allow the trainee to accumulate sensory knowledge of successful technique.” Id. at 3:60–62 (emphasis added). Petitioner fails to explain adequately why including a human torso form would have made palpating the breast model more realistic or otherwise enhanced this technique in any way. Furthermore, Goldstein states that a benefit of the disclosed breast models is “their small size and simplicity which encourage their availability and use.” Id. at 5:13–15. Petitioner’s proposed modification, however, would result in a larger, more expensive training apparatus that would defeat Goldstein’s stated benefit. As such, we are not persuaded that one of ordinary skill in the art would have been led to modify Goldstein’s training apparatus in the manner proposed by Petitioner. For the reasons discussed above, we find that Petitioner has not met its burden to show a reasonable likelihood that claim 1 is unpatentable over the combination of Goldstein and Lacey. 5.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,792,836
• Tesla, Inc. v. Nikola CorporationInstitution denied
  PTAB · Mar 27, 2020 · IPR2019-01646 · APJ Frances L Ippolito · IPR · Institution

  The Board denied institution on all challenged claims because Tesla did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted 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 the arguments presented in Patent Owner’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–26 of the ’084 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby do not institute an inter partes review as to these claims of the ’084 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that an ordinarily skilled artisan at the time of the invention of the ’084 patent would have had the following education and experience, a “Bachelor of Science degree in an industrial design field and two years of experience in automotive design.” Pet. 13 (citing, Ex. 1002 ¶ 17). Patent Owner does not dispute this level of skill. Prelim. Resp. 17. For purposes of this Decision, we adopt Petitioner’s proposal.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “electric drive train.” See Pet. 8–13. In its Preliminary Response, Patent Owner asserts that no claim construction is necessary, but if construction of 9 The Partner of Choice, MAN SE 2012 Annual Report (Exhibit 1013) (“MAN Annual Report”). 10 Josef Loczi, Ergonomics Program at Freightliner, Society of Automotive Engineers, Inc., Journal of Commercial Vehicles, Section 2 – Volume 109, SAE 2000, pp. 462‒69 (Exhibit 1014) (“Freightliner”). “adjacent to” is necessary, Petitioner’s construction should not be used because it is too narrow. Prelim. Resp. 8–17. We determine that for the purposes of this Decision, it is unnecessary to expressly construe any claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms in controversy must be construed 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) (citing Vivid Techs in the context of an inter partes review). slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “[t]he following annotated Figure 1 of Modec shows that “at least a portion of the door [yellow]” is “positioned behind the seat [green] and at least a portion of the seat [green] is disposed to be forward of a line defining the rearmost portion of the wheel well [blue line extended from rearmost edge].” Ex. 1002 ¶ 82. Mr. Baker’s testimony simply repeats the conclusions articulated in the Petition with no further explanation or support. Compare id. with Pet. 39. “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 37 C.F.R. § 42.65(a). Thus, neither Petitioner nor its declarant supports its conclusion with sufficient rationale, explanation, or evidence. Consequently, Petitioner has not sufficiently shown that a person of skill in the art would have understood Modec’s Figure 1 to disclose “at least a portion of the seat is disposed to be forward of a line defining the rearmost portion of the front wheel well” recited in claim 1. In reviewing the record, we are mindful of the principle that patent drawings are not working drawings and we must not disregard things clearly shown in patent drawings. See In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). However, our reviewing court “has repeatedly cautioned against overreliance on drawings that are neither expressly to scale nor linked to quantitative values in the specification.” Krippelz v. Ford Motor Co., 667 F.3d 1261, 1268 (Fed. Cir. 2012). Here, even with Petitioner’s annotations, it is not clear whether Modec’s Figure 1 shows a portion of the green seat in front of Petitioner’s blue line. Thus, we are not persuaded by Petitioner’s unsupported arguments, which would require us to speculate on the contents of a patent drawing.” slip op. at 19

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 10,077,084
• Firstspear, LLC v. Lineweight, LLCRehearing denied
  PTAB · Mar 25, 2020 · IPR2019-01170 · APJ Patrick R Scanlon · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution because Petitioner did not show that combining Fegen and Stevens would have made the claimed openings compatible with the asserted properties.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “37 C.F.R. § 42.71(d), which provides: A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The 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, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “motivated to adhere Fegen’s exterior garment layer to a substrate in order to provide a substrate material having water-proofing or scent blocking properties as taught by Stevens.” Pet. 31–32 (citing Ex. 1002 ¶ 55; Ex. 1006, 2:1–4, 3:50–53). In addition, the Petition asserts that one of ordinary skill in the art “would understand that the slits in Fegen extend all the way through the exterior layer and the substrate in order to permit attachments to be more easily secured to Fegen’s garment.” Id. at 35 (citing Ex. 1002 ¶ 62; Ex. 1005, Fig. 3). In the Decision, we determined that Petitioner had failed to establish sufficiently that it would have been obvious to one of ordinary skill in the art to combine Fegen and Stevens in the manner proposed. Dec. 14–16. In particular, we determined that providing slits or openings in the substrate of the proposed combination of Fegen and Stevens “would defeat, or at least greatly diminish, any water-proofing or scent blocking properties of the substrate.” Id. at 15. Thus, we disagreed with Petitioner’s contention that one of ordinary skill in the art would have been motivated to add a substrate to Fegen’s garment for the purpose of providing water-proofing or scent blocking properties. Id.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “We disagree with this broad assertion because the Petition does not demonstrate sufficiently why providing openings in the substrate, as the claims require, would not have led one of ordinary skill in the art to consider such openings detrimental to the rationale of providing water-proofing or scent blocking properties. Petitioner’s assertion also ignores the fact that the corresponding openings in the substrate would allow sweat and odor to pass through freely, thereby decreasing the effectiveness of water-proofing and scent blocking properties. Although no evidence of record appears to state expressly that openings of the size claimed would allow sweat and odor to pass freely through the substrate, this fact would have been readily apparent to one of ordinary skill in the art. Thus, the Rehearing Request fails to demonstrate that a reasonable fact finder could not have arrived at this fact, such that our determination is supported by substantial evidence. See OSI Pharm., 939 F.3d at 1381–82.” slip op. at 4

  • BurdenDecided for patent owner

    “Petitioner also argues that “[t]here is no evidence supporting a difference in effectiveness of the water-proofing and scent blocking properties of the substrate whether the substrate is a solid sheet of material or the substrate contains slots or openings in the same location as the exterior layer.” Reh. Req. 3. This argument, however, attempts to improperly shift the burden of persuasion away from Petitioner. “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). The burden of persuasion rests with Petitioner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Thus, Petitioner has the burden of presenting evidence supporting its assertion that there is no difference in effectiveness of the water-proofing and scent blocking properties of the substrate with or without openings.” slip op. at 5

  § 103 obviousness
  Patents in suitUS 9,173,436

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.