• PLR Worldwide Sales Ltd. v. Flip Phone Games Inc.Institution denied
  PTAB · Apr 29, 2024 · IPR2024-00133 · APJ Scott B Howard · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable under any asserted obviousness ground.

  RulingsInstitution decision

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

    “determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is 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) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2

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

    “For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting 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))). To the extent necessary, we address the parties’ implicit claim constructions in the context of the arguments on the merits of the Petition.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person having ordinary skill in the art at the time of the invention would have had “an undergraduate degree in game design, computer science, computer engineering, or a related field, with at least two years of experience working with computer gaming systems or software application development,” and that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Pet. 12 (citing Ex. 1003 ¶¶ 67–72). Petitioner’s recitation of the level of ordinary is consistent with the invention disclosed in the ’089 patent. It is also not disputed by Patent Owner at this time. See Prelim. Resp. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art, with the exception of the open-ended phrase “at least” which we change to “about.”” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Figure 3 above is an example of the embodiment of Ho showing a wings button, a car, and a hamburger monster in the foreground. Ex. 1004, 5:1–5, Fig. 3. Ho describes how the various interactive information elements are used for game play. See id. at 5:11–38. For example, hamburger monster 56 may be engaged when character 52 fights and successfully slays the hamburger monster, car 58 may be engaged when character 52 enters the car, and “wings” button 54 may be engaged (for example when character 52 wishes to fly) by clicking on icon 54 using a pointer, or by using an enclosure moving between different icons to highlight icon 54 to engage the icon. Id. Because Petitioner has not shown persuasive evidence that a user would not have expected those objects to be ones that the user could interact with, Petitioner has not shown them to be background objects. Petitioner also argues that Ho teaches that activating the interactive information elements “does not disrupt gameplay” and is therefore “outside the primary focus of game play.” Pet. 31–32 (quoting 5:36–38). We do not find that argument persuasive for two reasons. First, we do not see how the fact that activating an element without disrupting game play means the element is in the background. Petitioner and its expert simply make a statement without any explanation. See id.; Ex. 1003 ¶ 122. Such conclusory statements are not persuasive. Second, the language in Ho Petitioner relies on is not about the interactive information element, which Petitioner maps to the hotspot. Instead, Ho describes a sub-screen that appears after the user interacts with one of the interactive information elements, namely when the user slays the hamburger monster: “Similarly, making the character 52 slay the hamburger monster 56 may generate a sub-screen showing an advertisement of a chain of fast food restaurants. The sub-screen may also be overlain on the game environment and may not be disruptive to gameplay.” Ex. 1004, 5:35–38. Petitioner does not persuasively explain how a nondisruptive sub-screen that appears after an interaction with an object makes the object a background object.” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,688,089
• Mercedes-Benz USA, LLC / BMW Of North America, LLC v. Stragent, LLCInstitution denied
  PTAB · Oct 1, 2021 · IPR2021-00728 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “We agree with Patent Owner that Petitioner does not show sufficiently, for purposes of instituting an inter partes review, that Miesterfeld, in combination with the other references, teaches or suggests limitation [1.1] together with limitations [1.2]–[1.8] in the manner claimed. Petitioner asserts that Miesterfeld’s SPI RAM 64, shown in Figure 2, corresponds to the claimed “non-transitory memory storage” and that “command requests” written to SPI RAM 64 by either the VDB interface or ITS data bus interface are “instructions” stored in the non-transitory memory storage and executed by the processor (i.e., either the VDB interface or ITS data bus interface) when it queues a message for transmission. Pet. 22–23 (citing Ex. 1050, 7:17–26, 8:36–42). However, the passages in Miesterfeld cited by Petitioner describe VDB interface 62 processing a command that was written by ITS data bus interface 58 to SPI RAM 64 for transmission onto the VDB 48 via VDB interface 62. See, e.g., Ex. 1050, 7:17–21. The commands processed in this way are commands that are exchanged between the ITS data bus and the VDB via their respective interfaces connected to shared memory (i.e., SPI RAM 64). See, e.g., id. at code (57) (“The gateway includes a memory accessible by both a VDB interface and an ITS data bus interface so that data and commands may be shared between each respective bus through the shared memory.”). They are not commands or instructions executed by a processor to carry out the steps in the flow chart of Figure 4, which Petitioner maps to the operations recited in limitations [1.3]–[1.7]. In other words, for the claimed “instructions,” Petitioner points only to commands that, like other data, are exchanged between the ITS data bus and the VDB; Petitioner does not point to any “instructions” stored in a “non-transitory memory storage” that are executed by a processor to perform the storage operations in limitations [1.3]–[1.7], as required by the claim language. Nor does Petitioner otherwise argue that it would have been obvious to a person of ordinary skill in the art to store such instructions in a non-transitory memory storage. See Pet. 23.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Ex. 1004 ¶¶ 58–59). Patent Owner and its declarant generally agree with Petitioner’s proposed definition. Prelim. Resp. 14–15 (citing Ex. 2001 ¶¶ 15–17 (Declaration of Dr. Michael Smith)). For purposes of this Decision, with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound, we adopt Petitioner’s assessment of the level of ordinary skill in the art because it is consistent with the ’036 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “standard that would be used in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2020). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). The parties address the construction of various claim terms. Pet. 12–13; Prelim. Resp. 15–33. For purposes of this Decision, we need not construe any claim terms expressly. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “sufficiently, for purposes of instituting an inter partes review, that Miesterfeld, in combination with the other references, teaches or suggests limitation [1.1] together with limitations [1.2]–[1.8] in the manner claimed. Petitioner asserts that Miesterfeld’s SPI RAM 64, shown in Figure 2, corresponds to the claimed “non-transitory memory storage” and that “command requests” written to SPI RAM 64 by either the VDB interface or ITS data bus interface are “instructions” stored in the non-transitory memory storage and executed by the processor (i.e., either the VDB interface or ITS data bus interface) when it queues a message for transmission. Pet. 22–23 (citing Ex. 1050, 7:17–26, 8:36–42). However, the passages in Miesterfeld cited by Petitioner describe VDB interface 62 processing a command that was written by ITS data bus interface 58 to SPI RAM 64 for transmission onto the VDB 48 via VDB interface 62. See, e.g., Ex. 1050, 7:17–21. The commands processed in this way are commands that are exchanged between the ITS data bus and the VDB via their respective interfaces connected to shared memory (i.e., SPI RAM 64). See, e.g., id. at code (57) (“The gateway includes a memory accessible by both a VDB interface and an ITS data bus interface so that data and commands may be shared between each respective bus through the shared memory.”). They are not commands or instructions executed by a processor to carry out the steps in the flow chart of Figure 4, which Petitioner maps to the operations recited in limitations [1.3]–[1.7]. In other words, for the claimed “instructions,” Petitioner points only to commands that, like other data, are exchanged between the ITS data bus and the VDB; Petitioner does not point to any “instructions” stored in a “non-transitory memory storage” that are executed by a processor to perform the storage operations in limitations [1.3]–[1.7], as required by the claim language. Nor does Petitioner otherwise argue that it would have been obvious to a person of ordinary skill in the art to store such instructions in a non-transitory memory storage. See Pet. 23.” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,002,036
• Mercedes-Benz USA, LLC / BMW Of North America, LLC v. Stragent, LLCInstitution denied
  PTAB · Oct 1, 2021 · IPR2021-00726 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–42, 102–108, 121, and 126 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “We agree with Patent Owner that Petitioner does not show sufficiently, for purposes of instituting an inter partes review, that Miesterfeld, in combination with the other references, teaches or suggests limitation [1.1] together with limitations [1.2]–[1.8] in the manner claimed. Petitioner asserts that Miesterfeld’s SPI RAM 64, shown in Figure 2, corresponds to the claimed “non-transitory memory storage” and that “command requests” written to SPI RAM 64 by either the VDB interface or ITS data bus interface are “instructions” stored in the non-transitory memory storage and executed by the processor (i.e., either the VDB interface or ITS data bus interface) when it queues a message for transmission. Pet. 19–20 (citing Ex. 1050, 7:17–26, 8:36–42). However, the passages in Miesterfeld cited by Petitioner describe VDB interface 62 processing a command that was written by ITS data bus interface 58 to SPI RAM 64 for transmission onto the VDB 48 via VDB interface 62. See, e.g., Ex. 1050, 7:17–21. The commands processed in this way are commands that are exchanged between the ITS data bus and the VDB via their respective interfaces connected to shared memory (i.e., SPI RAM 64). See, e.g., id. at code (57) (“The gateway includes a memory accessible by both a VDB interface and an ITS data bus interface so that data and commands may be shared between each respective bus through the shared memory.”). They are not commands or instructions executed by a processor to carry out the steps in the flow chart of Figure 4, which Petitioner maps to the operations recited in limitations [1.3]–[1.7]. In other words, for the claimed “instructions,” Petitioner points only to commands that, like other data, are exchanged between the ITS data bus and the VDB; Petitioner does not point to any “instructions” stored in a “non-transitory memory storage” that are executed by a processor to perform the storage operations in limitations [1.3]–[1.7], as required by the claim language. Nor does Petitioner otherwise argue that it would have been obvious to a person of ordinary skill in the art to store such instructions in a non-transitory memory storage. See Pet. 20.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “that a person of ordinary skill in the art at the time of the invention would have had “at least . . . a bachelor’s degree in electrical engineering, computer engineering, or a related engineering discipline and at least two years of industry experience in the field of distributed computing or automotive engineering, or equivalent experience, education, or both.” Pet. 10 (citing Ex. 1004 ¶¶ 58–59). Patent Owner and its declarant generally agree with Petitioner’s proposed definition. Prelim. Resp. 14–15 (citing Ex. 2001 ¶¶ 15–17 (Declaration of Dr. Michael Smith)).” slip op. at 7

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

    “The parties address the construction of various claim terms. Pet. 10–11; Prelim. Resp. 15–33. For purposes of this Decision, we need not construe any claim terms expressly. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “sufficiently, for purposes of instituting an inter partes review, that Miesterfeld, in combination with the other references, teaches or suggests limitation [1.1] together with limitations [1.2]–[1.8] in the manner claimed. Petitioner asserts that Miesterfeld’s SPI RAM 64, shown in Figure 2, corresponds to the claimed “non-transitory memory storage” and that “command requests” written to SPI RAM 64 by either the VDB interface or ITS data bus interface are “instructions” stored in the non-transitory memory storage and executed by the processor (i.e., either the VDB interface or ITS data bus interface) when it queues a message for transmission. Pet. 19–20 (citing Ex. 1050, 7:17–26, 8:36–42). However, the passages in Miesterfeld cited by Petitioner describe VDB interface 62 processing a command that was written by ITS data bus interface 58 to SPI RAM 64 for transmission onto the VDB 48 via VDB interface 62. See, e.g., Ex. 1050, 7:17–21. The commands processed in this way are commands that are exchanged between the ITS data bus and the VDB via their respective interfaces connected to shared memory (i.e., SPI RAM 64). See, e.g., id. at code (57) (“The gateway includes a memory accessible by both a VDB interface and an ITS data bus interface so that data and commands may be shared between each respective bus through the shared memory.”). They are not commands or instructions executed by a processor to carry out the steps in the flow chart of Figure 4, which Petitioner maps to the operations recited in limitations [1.3]–[1.7]. In other words, for the claimed “instructions,” Petitioner points only to commands that, like other data, are exchanged between the ITS data bus and the VDB; Petitioner does not point to any “instructions” stored in a “non-transitory memory storage” that are executed by a processor to perform the storage operations in limitations [1.3]–[1.7], as required by the claim language. Nor does Petitioner otherwise argue that it would have been obvious to a person of ordinary skill in the art to store such instructions in a non-transitory memory storage. See Pet. 20.” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,002,036
• Askelladen L.L.C. v. Digital Verification Systems LLCRehearing denied
  PTAB · May 29, 2019 · IPR2018-00745 · APJ Jameson Lee · IPR · Rehearing

  The Board denied rehearing, leaving in place the denial of institution for claims 1-22 because the claims recite a means-plus-function element without identifying its computer-implemented algorithm.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “On rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “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.” 37 C.F.R. § 42.71(d). For reasons discussed below, Petitioner’s arguments are unpersuasive. The Request is denied.” slip op. at 2

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

    “In the Decision, we determined that all claims include a means-plus- function element under 35 U.S.C. § 112, sixth paragraph, and that because Petitioner did not identify corresponding structure in the specification, Petitioner did not show a reasonable likelihood that it would prevail in establishing unpatentability of any challenged claim. In the Request, Petitioner asserts that we erred in determining that claims include a means-plus-function element. Req. Reh’g 1.” slip op. at 2

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “hardware to execute the software fails to set forth sufficient structure, as we discussed in the Decision. Decision 10–11. But for rare exceptions not applicable here for reasons explained in the Decision, the structure for a computer-implemented function is the “algorithm” by which the software performs. Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008); Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). The claims here do not specify the algorithm by which the computer” slip op. at 4

  Claim construction
  Patents in suitUS 9,054,860
• Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Rehearing denied
  PTAB · Aug 22, 2018 · IPR2018-00376 · APJ Stephen C Siu · IPR · Rehearing

  The Board denied rehearing and upheld denial of institution on the Slemmer and Vu obviousness ground because the petition did not show a reasonable likelihood of prevailing.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co.,, 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition . . . shows that there is 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). Notably, we must base our determination of a “reasonable likelihood” that Petitioner would “prevail” on “the information presented in the petition,” specifically. In the present case, Petitioner has not provided a basis, legal or otherwise, in support of its position that we must determine a “reasonable likelihood” based on information presented in some other petition, much less based on some other evidence of record in another proceeding. For example, in IPR2016-00077, the panel based its decision on a “Declaration by Mr. Keith Olsen.” That evidence is not of record in this proceeding.” slip op. at 3

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

    “supporting Petitioner’s position that it would have been obvious to one of ordinary skill in the art to have combined the cited references. Req. Reh’g. 8–10. In particular, Petitioner reiterates previous arguments presented in the Petition such as “Vu is one of the first prior art references to teach the handshake” but that “other prior art references also teach it.” Req. Reh’g 9. These arguments were previously addressed. Decision 7–8. Although Petitioner may disagree with our resolution of the arguments that Petitioner presented in its Petition, such arguments were considered fully in our Decision.” slip op. at 4

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “construction for the term ‘TCP connection hand shake completion data,’ which resulted in an incorrect determination.” Req. Reh’g. 5. In particular, Petitioner now proposes a broadest reasonable construction of the term “TCP connection hand shake completion data” to mean “two devices initiating a communication session by the first device sending information to a second device, and the second device then responding to the first device.” Req. Reh’g. 7. Based on this newly proposed construction of the term “TCP connection hand shake completion data,” Petitioner argues that Vu discloses this feature. Req. Reh’g. 6–8. Under 37 C.F.R. § 42.71(d), Petitioner must “identify all matters [Petitioner] believes the Board misapprehended or overlooked.” Petitioner did not present this proposed construction in the Petition. See generally Req. Reh’g.; see generally Pet. We could not have “misapprehended or overlooked” what was not presented.” slip op. at 4

  Claim construction§ 103 obviousness
  Patents in suitUS 8,266,266
• Facebook, Inc. v. Sound View Innovations, LLCRehearing denied
  PTAB · Oct 19, 2017 · IPR2017-00985 · APJ James B Arpin · IPR · Rehearing

  The Board denied rehearing and left institution denied for claims 1–3 because the petition lacked required means-plus-function constructions under the adopted claim-construction standard.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 3

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached

    “Under our Rules setting forth the requirements for the content of the petition, “[w]here the claim to be construed contains a means-plus-function . . . limitation as permitted under 35 U.S.C. [§ 112, ¶ 6], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3) (emphasis added); see Inst. Dec. 13. Thus, where the challenged claim contains a means-plus-function limitation, the petition must provide a means-plus-function construction for that limitation. Consequently, it was not our task to determine first whether the word “controller” is a nonce word potentially subjecting the claim terms to treatment under 35 U.S.C. § 112, ¶ 6, and only then to receive arguments from Petitioner on their construction. See Reh’g Req. 4 (“Without a predicate finding that § 112, ¶ 6 applies, the Petition’s silence on the identity of a ‘corresponding structure’ had no relevance to the issue of claim construction.” (emphasis added)). Our Rules do not require such a “predicate finding,” and we made no such finding regarding the construction of the “controller” terms. See Inst. Dec. 11 (“For the reasons set forth below, we do not need to construe this claim term or determine its definiteness.”). In the absence of arguments under the appropriate standard from at least Petitioner during the Preliminary Proceeding, we have no basis for construing the “controller” terms. See id. at 13–14 (“The analysis of Petitioner’s arguments regarding claims 1–3 begins and ends with Petitioner’s failure to provide constructions of the claim terms including “controller” under 35 U.S.C. § 112, ¶ 6, and we cannot evaluate Petitioner’s asserted ground with respect to claims 1–3 in the absence of such constructions.”).” slip op. at 6

  • BurdenDecided for patent owner

    “Under our Rules setting forth the requirements for the content of the petition, “[w]here the claim to be construed contains a means-plus-function . . . limitation as permitted under 35 U.S.C. [§ 112, ¶ 6], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3) (emphasis added); see Inst. Dec. 13. Thus, where the challenged claim contains a means-plus-function limitation, the petition must provide a means-plus-function construction for that limitation. Consequently, it was not our task to determine first whether the word “controller” is a nonce word potentially subjecting the claim terms to treatment under 35 U.S.C. § 112, ¶ 6, and only then to receive arguments from Petitioner on their construction. See Reh’g Req. 4 (“Without a predicate finding that § 112, ¶ 6 applies, the Petition’s silence on the identity of a ‘corresponding structure’ had no relevance to the issue of claim construction.” (emphasis added)). Our Rules do not require such a “predicate finding,” and we made no such finding regarding the construction of the “controller” terms. See Inst. Dec. 11 (“For the reasons set forth below, we do not need to construe this claim term or determine its definiteness.”). In the absence of arguments under the appropriate standard from at least Petitioner during the Preliminary Proceeding, we have no basis for construing the “controller” terms. See id. at 13–14 (“The analysis of Petitioner’s arguments regarding claims 1–3 begins and ends with Petitioner’s failure to provide constructions of the claim terms including “controller” under 35 U.S.C. § 112, ¶ 6, and we cannot evaluate Petitioner’s asserted ground with respect to claims 1–3 in the absence of such constructions.”). It was Petitioner’s task to determine the necessary claim term constructions to support its request for inter partes review and to present those constructions as part of its Petition. Petitioner failed to do that here with respect to the “controller” terms. Thus, contrary to Petitioner’s assertion, we did not misapply the law governing interpretation of means- plus-function claim limitations; rather, due to the lack of any arguments or evidence from Petitioner, we did not and could not apply it at all. Consequently, we deny Petitioner’s request that we reconsider our Institution Decision and institute inter partes review of claims 1–3 of the ’371 patent.” slip op. at 6

  • Strike new argumentNew argument disregardedDecided for patent owner

    “It is hard to see where efficiency is achieved by having two tribunals simultaneously consider different claim constructions under the same standard.4 Nevertheless, we cannot find where Petitioner made this argument in its Petition or its Reply, nor does Petitioner identify where it previously raised this argument. See id. at 7–8; see also 37 C.F.R. § 42.71(d) (“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.”). It goes without saying that we could not have overlooked or misunderstood an argument not made, and it is not an abuse of discretion not to consider such an argument.” slip op. at 11

  Claim construction
  Patents in suitUS 6,125,371
• Dexcowin Global, Inc. v. Aribex, Inc.Institution denied
  PTAB · Jul 7, 2016 · IPR2016-00436 · APJ Joni Y Chang · IPR · Institution

  The Board denied institution because Dexco did not show a reasonable likelihood of proving claims 1–5, 14, 15, 17, 19, 21, and 23 unpatentable over Kobayashi-based grounds.

  RulingsInstitution decision

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

    “For the foregoing reasons, we determine that Dexco has not shown adequately that Kobayashi describes “a continuous, high voltage DC power.” Therefore, we conclude that Dexco has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 19, and 21 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Kobayashi.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “determining the level of ordinary skill in the art, various factors may be considered, including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). According to the “Field of the Invention” section of the ’178 patent, the invention relates to x-ray devices generally, and also relates specifically to portable x-ray devices that include an integrated power system. Ex. 1001, 1:13–20. Dexco’s experts merely recognize that, in the context of the ’178 patent, a relevant skilled artisan would have had general knowledge in connection with x-ray devices as well as power systems. This is consistent with the prior art of record, recognizing the use of a smaller and lighter power system would address one of the problems of designing a portable x-ray device. Ex. 1011 ¶¶ 11–15; Ex. 1012, 1:6–14, 8:8–60; Ex. 1013, 1:6– 2:51. Therefore, we do not discern any meaningful conflict in Dexco’s definitions, as alleged by Aribex. Ex. 1003 ¶ 12; Ex. 1006 ¶ 7. For purposes of this Decision, we adopt the definitions of a person of ordinary skill in the art identified by Dr. Hamby and Mr. Montrose, as they are consistent with the Specification of the ’178 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We decline, here in an anticipation analysis, to combine the two separate and distinct power systems of Kobayashi, as suggested by Mr. Montrose. Ex. 1006 ¶¶ 27–31. Furthermore, even if we were to contemplate such a combination, Mr. Montrose does not explain how the components of each power system are to be combined or what components would be included in the resulting power system. Nor does he articulate any reasoning why one with ordinary skill in the art would have combined the power systems to provide “a continuous, high voltage DC power” as required by the claims 1, 4, 19, and 21. Dexco also directs our attention to Dr. Hamby’s Declaration, which mainly repeats Mr. Montrose’s testimony and provides no additional meaningful explanations or evidence with respect to the “continuous, high voltage DC power” limitation. Compare Ex. 1003 ¶¶ 31–55, with Ex. 1006 ¶¶ 27–31. Given the evidence before us, we give little, if any, weight to the testimony of Mr. Montrose and Dr. Hamby that Kobayashi discloses “a continuous, high voltage DC power.” See 37 C.F.R. § 42.65(a) (“Expert” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “patent states that the “power system can be battery-operated, yet still provide a continuous high voltage, rather than Marx generators (pulsed) or capacitively-pulsed systems.” Id. at 8:12–14. In its Petition, Dexco proposes to construe the claim term “high voltage” as “a voltage that can be used by an x-ray tube to generate x-rays.” Pet. 6–7 (citing Ex. 1001, 4:10–21). Aribex, in its Preliminary Response, proposes to construe the claim term “continuous” to exclude a pulse or burst of high voltage. Prelim. Resp. 19 (citing Ex. 1001, 8:12–14; Ex. 1002, 188– 92). In light of the Specification, we agree with the parties that the claim term “a continuous, high voltage DC power” encompasses a DC voltage power that can be used by an x-ray tube to generate x-rays, but this claim term does not include a pulse or burst of high voltage. See Ex. 1001, 4:10– 21, 8:12–14.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,496,178
• Dexcowin Global, Inc. v. Aribex, Inc.Institution denied
  PTAB · Jul 7, 2016 · IPR2016-00440 · APJ Daniel J Galligan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 6, 10, 14, 17, 34, 36, 37, 39–53, and 55–64 were unpatentable under § 103(a).

  RulingsInstitution decision

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

    “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 the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we deny institution of an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On this record, we are not persuaded by Patent Owner’s argument. In determining the level of ordinary skill in the art, various factors may be considered, including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). According to the “Field of the Invention” section of the ’769 patent, the invention relates to x-ray devices generally, and also relates specifically to portable x-ray devices. Ex. 1001, 1:12–17. The “Summary of the Invention” section of the ’769 patent explains that the portable x-ray devices of the invention have integrated power systems. Id. at 1:66–2:1. Petitioner’s declarants merely recognize that, in the context of the ’769 patent, a relevant skilled artisan would have had general knowledge in connection with x-ray devices as well as power systems. This is consistent with the prior art of record, recognizing the use of a smaller and lighter power system would address one of the problems of designing a portable x-ray device. See, e.g., Ex. 1015 ¶¶ 11–15; Ex. 1016, 1:6–14, 8:8–60; Ex. 1017, 1:6–2:51. Therefore, we do not discern any meaningful conflict in Petitioner’s definitions, as alleged by Patent Owner. Ex. 1006 ¶ 12; Ex. 1009 ¶ 7. For purposes of this Decision, we adopt the definitions of a person of ordinary skill in the art identified by Dr. Hamby and Mr. Montrose, as they are consistent with the Specification of the ’769 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “structurally unattached to the housing.” The term “detecting means” recites a function—“detecting”—and uses the word “means,” thus creating a presumption that 35 U.S.C. § 112 ¶ 6 applies. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (quoting Personalized Media Communications, LLC v. International Trade Commission, 161 F.3d 696, 703 (Fed.Cir.1998)) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies.”). Section 112, paragraph 6 provides: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. (Emphasis added). The challenged independent claims do not recite particular structure for the “detecting means” to avoid invocation of 35 U.S.C. § 112 ¶ 6.6 Therefore, we determine “detecting means” is a means-plus-function limitation subject to 35 U.S.C. § 112 ¶ 6.” slip op. at 8

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “Both parties agree that Yu was published on February 2, 2005. Pet. 12; Prelim. Resp. 16. Also, as explained above, Patent Owner acknowledges that the ’769 patent’s priority date is March 21, 2005, due to the break of the priority chain to provisional application 60/546,575 (see Prelim. Resp. 2–3), and, therefore, the date of constructive reduction to practice (March 21, 2005) is after the date of publication of Yu. Patent Owner’s arguments primarily focus on provisional application 60/546,575, which Patent Owner contends supports the subject matter of the claims. See Prelim. Resp. 34–37. However, although the provisional application may support an argument of an earlier conception date, the provisional application is not a constructive reduction to practice due to the break in the chain of priority. See In re Costello, 717 F.2d 1346, 1350 (Fed. Cir. 1983) (“While the filing of the original application theoretically constituted a constructive reduction to practice at the time, the subsequent abandonment of that application also resulted in an abandonment of the benefit of that filing as a constructive reduction to practice. The filing of the original application is, however, evidence of conception of the invention.”). As such, to demonstrate “the inventor of the challenged claims conceived and reduced them to practice before Yu published” (Prelim. Resp. 16), Patent Owner appears to argue actual reduction to practice occurred before February 2, 2005. The record before us does not demonstrate actual reduction to practice of the claimed subject matter prior to February 2, 2005. Therefore, we decline to deny institution on the basis that Yu is not prior art under 35 U.S.C. § 102(a).” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,224,769
• Telit Wireless Solutions Inc. / Telit Communications PLC v. M2m Solutions LLCInstitution denied
  PTAB · Apr 22, 2016 · IPR2016-00054 · APJ Daniel J Galligan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 were unpatentable, as all grounds relied on Wandel’s alleged storage of an IP address.

  RulingsInstitution decision

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

    “To anticipate, “[t]here must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention.” Scripps Clinic & Res. Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991), overruled on other grounds by Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009). Petitioner has not proffered sufficient evidence to persuade us that Wandel, as viewed by a person of ordinary skill in the art, discloses an “IP-based CDPD network” or that “Wandel’s radio modem communicated over the CDPD network,” such that the “destination address[es] for log packets” disclosed in Wandel would have been IP addresses. Pet. 22–23.” slip op. at 10

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

    “To anticipate, “[t]here must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention.” Scripps Clinic & Res. Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991), overruled on other grounds by Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009). Petitioner has not proffered sufficient evidence to persuade us that Wandel, as viewed by a person of ordinary skill in the art, discloses an “IP-based CDPD network” or that “Wandel’s radio modem communicated over the CDPD network,” such that the “destination address[es] for log packets” disclosed in Wandel would have been IP addresses. Pet. 22–23.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “To the extent Petitioner alleges that Wandel inherently discloses IP addresses because it mentions CDPD, we are not persuaded. The Federal Circuit has stated: [t]o establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks omitted). As Patent Owner correctly notes, the evidence of record makes clear that CDPD networks support several protocols, only one of which is the Internet protocol. Prelim. Resp. 22–23 (citing Ex. 1014, 10:1–82; Ex. 1015, 443–44). Therefore, a device operating in a CDPD network may or may not have employed IP addresses. Because the evidence of record shows that CDPD supports the Internet protocol and other protocols, we are not persuaded that the disclosure of CDPD necessarily implicates the use of IP addresses. Therefore, we are not persuaded that Wandel’s mention of CDPD inherently discloses the use of IP addresses.” slip op. at 10

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

    “Petitioner proposes alternative unpatentability challenges based additionally on certain alleged teachings of Boden in the event we construe the phrase “numbers to which the programmable communicator device is configured to and permitted to send outgoing wireless transmissions,” which appears in each independent claim, to mean an “exclusive” set of numbers such that transmissions to all other numbers are not permitted and are blocked. Pet. 55. Petitioner contends “[i]t would have been obvious to a person of ordinary skill in the art to make Wandel’s ‘destination address[es] for log packets’ . . . an exclusive set of permitted addresses by filtering packets to all other addresses as disclosed in Boden.” Id. at 57. Because these alternative unpatentability challenges rely on Wandel as allegedly disclosing storing IP addresses (see Pet. 55), a contention with which we disagree, Petitioner’s alternative challenges are not persuasive, and we need not address the construction of the phrase “numbers to which the programmable communicator device is configured to and permitted to send outgoing wireless transmissions.” Because all challenges in this Petition depend on Wandel as allegedly disclosing storing an IP address, we are not persuaded Petitioner has established a reasonable likelihood of prevailing in showing that the challenged claims are anticipated or would have been obvious as alleged.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,648,717

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.