• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.Institution denied
  PTAB · Mar 31, 2025 · IPR2024-01434 · APJ Jennifer S Bisk · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that the single claimed design was obvious over the asserted prior-art combinations.

  RulingsInstitution decision

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

    “shown that Chen686, alone or in combination with the various secondary references, teaches or suggests a camera having the same overall visual appearance of the claimed design. Thus, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in challenging the patentability of the ’435 patent’s claim over Chen686 and the asserted secondary references.” slip op. at 30

  • Other 314aNot reached

    “These deficiencies in analysis raise the question of whether the Petition adequately identifies the number of actual challenges, and evidence supporting each, with the degree of particularity required of petitions in our forum. The Petition does not explain why so many grounds are necessary under the circumstances or why the Board should impose on Patent Owner the burden of defending against so many challenges. See generally Pet. An inter partes review based on 24 distinct grounds raised against a single claim, supported by analysis lacking in particularity, potentially burdens Patent Owner unduly and makes inefficient use of the Board’s resources. See PTAB Consolidated Trial Practice Guide (Nov. 2019),22 56 (“The AIA was ‘designed to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs.’” (quoting H.R. Rep. No. 112–98, pt. 1, at 40 (2011), 2011 U.S.C.C.A.N. 67, 69 (Post grant reviews were meant to be “quick and cost effective alternatives to litigation”)). Because we understand enough of the Petition’s analysis to address each group of asserted grounds on the merits, we decline to exercise our discretion to deny institution based solely on this issue.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner submits that a designer of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in industrial design or an equivalent field, or two years of experience designing cameras or camera housings.” Pet. 11 (citing Bressler Decl. ¶¶ 22–24). Patent Owner does not dispute this proposed definition. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s uncontested proposal regarding a designer of ordinary skill in the art. See Bressler Decl. ¶¶ 22–24.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “In its claim construction section, Petitioner states that the ’435 patent “encompasses a rectangular body with flat faces, a rectangular lens cover extending outward from the front of the body, rectangular buttons/access elements, and rectangles for displays” and “[a]s a whole . . . gives an ordinary designer an overall visual impression of a rectangular design for a camera/camera housing.” Pet. 12 (citing Bressler Decl. ¶¶ 25–26). These descriptions are incredibly general and do not provide an adequate understanding of the overall visual appearance of the claimed design. Moreover, we do not find them helpful in our analysis and, therefore, do not adopt them as a claim construction. Patent Owner does not explicitly address claim construction. See” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Graham
• NXP USA, Inc. v. Bell Semiconductor, LLCInstitution denied
  PTAB · May 15, 2024 · IPR2024-00142 · APJ John D Hamann · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–16 were unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 314 (2018) and 37 C.F.R. § 42.4(a). An inter partes review may be instituted if “the information presented in the petition filed under section 311 and any response filed under 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). Upon consideration of the papers, we determine that the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that at least one challenged claim is unpatentable. Accordingly, we deny the Petition and do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that one of ordinary skill in the art at the time of the invention of the ’330 patent “would have had at least the equivalent of a bachelor’s degree in electrical engineering and one to two years of experience in the field of circuit design, particularly the design of circuits operating at high frequencies.” Pet. 4 (citing Ex. 1002 ¶ 29). Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’330 patent or identify any specific shortcoming in Petitioner’s definition. See Prelim. Resp. 7. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 4. This definition is consistent with the ’330 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther

    “Petitioner argues that “no express constructions of the claims are necessary to assess whether the prior art reads on the challenged claims.” Pet. 8. However, Petitioner also cites to a Special Master Report and Recommendation on Claim Construction where “node” was construed to mean “a point of connection or intersection in an electrical circuit.” Id. at 9 (quoting Ex. 1015, 29). Patent Owner adopts this construction for purposes of this Decision on Institution. Prelim. Resp. 8. We find that this construction is consistent with the plain and ordinary meaning of the term “node.” We thus apply the construction as such to our analysis below, and we determine that we need not provide an express construction of any other claim term for purposes of this institution decision.” slip op. at 8

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

    “[claim] limitation is found either expressly or inherently in a single prior art reference.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1273 (Fed. Cir. 2017). “A claim limitation is inherent in the prior art if it is necessarily present in the prior art, not merely probably or possibly present.” Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003) (citing Rosco, Inc. v. Mirror Lite, Co., 304 F.3d 1373, 1380 (Fed. Cir. 2002)). Moreover, “[t]o anticipate, the reference must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.” Sanofi-Synthelabo v. Apotex, Inc., 550 F. 3d 1075, 1083 (Fed. Cir. 2008) (internal quotation marks omitted). In other words, it is not enough to be able to find all of the pieces of the claimed invention somewhere in a prior art reference; rather, those elements must be set out in the prior art reference in the same way they are in the claimed invention. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (“Because the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,535,330
• NXP USA, Inc. v. Bell Semiconductor, LLCInstitution denied
  PTAB · May 13, 2024 · IPR2024-00167 · APJ Jeffrey W Abraham · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that any challenged claim was unpatentable over the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “Upon consideration of the Petition, the Preliminary Response, and the evidence presented, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of any challenged claim based on any ground asserted in the Petition. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied, and no inter partes review is instituted.” slip op. at 22

  • BurdenDecided for patent owner

    “For all of the foregoing reasons, Petitioner has failed to demonstrate sufficiently that Okabe discloses a semiconductor integrated circuit package with a first layer that includes “a first ground plane enabling electrical connection with low speed electronic circuitry” and a “second ground plane enabling electrical connection with high speed electronic circuitry.” Ex. 1001, 9:25–36.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had a “bachelor’s degree in a field relating to the integrated circuit package manufacturing process like materials science, physics, electrical engineering, or other related subjects, and at least two to three years of experience with fabrication and packaging of integrated circuits.” Pet. 4 (citing Ex. 1002 Preliminary Response. Prelim. Resp. 7. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art.” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner’s arguments are not persuasive. As Patent Owner and Dr. Bernstein point out, Petitioner does not specify the frequencies at which duplexer 45 and VCO 70 operate in Okabe. Prelim. Resp. 20; Ex. 2001 ¶ 79. Nor does Petitioner direct us to any criteria for classifying circuitry as “high speed” or “low speed.” Prelim. Resp. 20; Ex. 2001 ¶ 79. As a result, we are left with only the assertion of what a person of ordinary skill in the art would have understood about duplexer 45 and VCO 70. To support this assertion, Petitioner directs us to statements in Dr. Baker’s declaration that mirror the Petition. Pet. 26–27 (citing Ex. 1002 ¶¶ 71–73). Dr. Baker, however, does not cite to any supporting evidence or provide any technical reasoning to support his statements. Ex. 1002 ¶¶ 71–73. “Thus, the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential); see also 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.”). Accordingly, Petitioner has failed to demonstrate sufficiently that Okabe discloses a second layer that includes a “third ground plane configured for electrical connection with low speed electronic circuitry” and a “fourth ground plane configured for electrical connection with high speed electronic circuitry.” Ex. 1001, 9:37– 43.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,646,091
• Google LLC v. Geoscope Technologies Pte. Ltd.Institution denied
  PTAB · Feb 20, 2024 · IPR2023-01214 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over Almgren or Haartsen, alone or with other prior art.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . 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). Upon consideration of the Petition, the Preliminary Response, the Petitioner Preliminary Reply, the Patent Owner Preliminary Sur-reply, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’264 patent. Accordingly, for the reasons that follow, we decline to institute inter partes review of claims 1, 3, 6, 11, 13, 15, 20, 21, 23, and 25–27 of the ’264 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “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 8 Petitioner asserts that Haartsen is prior art under § 102(b). Pet. 6. 9 US 5,491,837, filed March 7, 1994, issued February 13, 1996 (Ex. 1005, “Haartsen”). workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner, without the qualifier “at least” because its use introduces vagueness, for the purposes of this Decision because it is consistent with the ’264 patent and the asserted prior art.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Petitioner, however, argues that “[t]he phrase ‘without disabling any other communication channel’ encompasses not dedicating a specific frequency channel for measuring path loss.” Pet. 25; see also Ex. 1008 ¶ 124. That is, Petitioner’s position appears to be that the recited limitation could be sufficiently disclosed or met by prior art if it instead meets the different requirement of “not dedicating a specific frequency channel for measuring path loss.” We do not agree. For support, Petitioner cites portions of the ’264 patent Specification that discuss not dedicating specific frequency channels for measuring path loss. Pet. 25 (citing Ex. 1001, 1:58– 61, 3:39–45, 3:48–50, 4:60–63). Petitioner does not explain, however, why the term “without disabling any other communication channel” should be taught by this disclosure of this alternative requirement or, in other words, Petitioner does not explain why that term should encompass “not dedicating a specific frequency channel for measuring path loss.” Mr. William does not provide any additional explanation and merely repeats the statements of the Petition in a conclusory manner. Ex. 1008 ¶ 124. As discussed above, and as the parties agreed, we will proceed with the assessment of the merits using the plain meaning of the claim term “without disabling any other communication channel.”” slip op. at 15

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

    “claim limitations at issue, and, specifically, the burden extends to negative limitations such as “without disabling any other communication.” See IBM v. Iancu, 759 F. App’x 1002, 1011 (Fed. Cir. 2019) (explaining that a reference’s silence was not by itself sufficient to establish that the reference teaches a process involving only one user authentication action). Petitioner does not appear to dispute its required showing, that is, Petitioner does not argue that the absence of an element in the prior art is sufficient per se to satisfy a negative limitation. Rather, the Petition affirmatively asserts that Almgren discloses or teaches the limitation “without disabling any other communication.” Pet. 25–26. Petitioner, however, argues that “[t]he phrase ‘without disabling any other communication channel’ encompasses not dedicating a specific frequency channel for measuring path loss.” Pet. 25; see also Ex. 1008 ¶ 124. That is, Petitioner’s position appears to be that the recited limitation could be sufficiently disclosed or met by prior art if it instead meets the different requirement of “not dedicating a specific frequency channel for measuring path loss.” We do not agree. For support, Petitioner cites portions of the ’264 patent Specification that discuss not dedicating specific frequency channels for measuring path loss. Pet. 25 (citing Ex. 1001, 1:58– 61, 3:39–45, 3:48–50, 4:60–63). Petitioner does not explain, however, why the term “without disabling any other communication channel” should be taught by this disclosure of this alternative requirement or, in other words, Petitioner does not explain why that term should encompass “not dedicating a specific frequency channel for measuring path loss.” Mr. William does not provide any additional explanation and merely repeats the statements of the Petition in a conclusory manner. Ex. 1008 ¶ 124. As discussed above, and as the parties agreed, we will proceed with the assessment of the merits using the plain meaning of the claim term “without disabling any other communication channel.”” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,320,264
• Masimo Corporation v. Apple Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00635 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, principally because Rothkopf did not disclose an electrode positioned on the carrier member.

  RulingsInstitution decision

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

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Whether a reference anticipates is assessed from the perspective of one of ordinary skill in the art. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368–69 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” (second and third alterations in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))). slip op. at 10

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

    “member.” On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 14

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner

    “Independent claim 1 recites “a carrier member formed from a transparent material.” Ex. 1001, 56:13. Independent claim 9 recites “a carrier member having a circular carrier profile and positioned over the circular rear opening.” Id. at 57:20–21. Independent claim 15 recites “a carrier member protruding outward from an external surface of the housing member.” Id. at 58:10–11. None of these phrases is written in the form of a “means for” performing a function, the Petition does not identify a recited function,5 and Petitioner does not address the issue of whether the overall limitation recites adequate structure for performing any such function. See 5 On the conference call, Petitioner represented that “the Petition identifies carrying or supporting electrodes to be the function of the carrier member.” Ex. 1051, 49:3–10 (citing Pet. 10–12). The cited section of the Petition quotes the Specification, not the claim. Pet. 10. However, the focus of a means-plus-function analysis is the function recited in the claim. See 35 U.S.C. § 112(f). And, the Petition associates the function of supporting the electrodes with “carrier assembly” not “carrier member.” See Pet. 10–11 (“Petitioner interprets the claim term ‘carrier assembly’ according[ly] to mean any appropriate structure that supports the electrodes and, optionally, optical components.”). Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022) (“The first step is to determine whether a claim limitation is drafted in means-plusfunction format, which requires us to construe the limitation to determine whether it connotes sufficiently definite structure to a person of ordinary skill in the art.”). Additionally, regardless as to whether “Courts have construed ‘member’ style claim terms as nonstructural” under the particular facts before those courts, it was incumbent upon Petitioner—particularly in light of the “carrier” modifier—to demonstrate that “carrier member” is a nonce term under the facts of the case before us, i.e. whether the term is a generic placeholder that a person of ordinary skill in the art of wearable electronic devices/watches would not recognize as a name for sufficiently definite structure. Pet. 11; Williamson, 792 F.3d at 1348 (“In making the assessment of whether the limitation in question is a means-plus-function term subject to the strictures of § 112, para. 6, our cases have emphasized that the essential inquiry is . . . whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”); see id. at 1350 (explaining that a nonce word is a generic term “that reflect[s] nothing more than verbal constructs [that] may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.”); see also Kyocera, 22 F.4th 1380 (the court, in Petitioner’s cited case, determining, as part of its analysis, that “[a] person of ordinary skill in the art would not understand the claimed ‘lifter member’ to have ‘a sufficiently definite meaning as the name for a structure.’”). Accordingly, we determine that Petitioner has not shown persuasively that “carrier member” is a means-plus-function term.” slip op. at 15

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

    “We find to be persuasive Patent Owner’s argument that “the Petition fails to cite anything in Rothkopf that describes electrodes attached to the ‘rear cover 608.’” Prelim. Resp. 23. Rothkopf discloses several embodiments of varying configurations. See, e.g., Ex. 1005 ¶¶ 4–27. Petitioner, in the block quoted contention above, stitches together several statements from various points in the Specification that individually are correct descriptions of an aspect of a particular embodiment or example but, together, fail to constitute a disclosure of an embodiment having electrodes positioned on the rear cover. For example, Rothkopf, in the paragraph 148 cited by Petitioner, states that “[i]n some embodiments, the biosensor module 710 includes the rear cover 608” and, “[a]s described in more detail . . . with respect to FIG. 16, the biosensor module 710 may include one or more light sources, one or more photodetectors, and one or more electrodes or conductive elements.” Ex. 1005 ¶ 148 (emphasis added). Thus, the biosensor module (mapped to the carrier assembly, not the carrier member) might include a rear cover and might include an electrode. It does not necessarily follow, however, that the electrode, when present, is positioned on the cover (mapped to the carrier member). Petitioner points to Rothkopf’s paragraph 201 as support for the proposition that “Rothkopf describes an embodiment where the electrodes are positioned on the cover 608.” Pet. 42 (citing Ex. 1005 ¶ 201). That paragraph provides that, “[a]s described above with respect to FIG. 6, in some embodiments, the biosensors are disposed relative to or attached to a rear cover 608 that is formed from an optically transparent material and is configured to be positioned with the opening of the housing 601.” Ex. 1005 ¶ 201. The paragraph does not describe an electrode as an exemplary biosensor in such embodiments. Rather, the paragraph goes on to describe the rear cover’s use with light sources 1611–1613 and detector 1614, i.e. optical sensor components. See id. (“The convex curved area of the rear cover 608 may include one or more windows or apertures that provide operational access to one or more internal components located within the housing. For example, the rear cover 608 may include an array of windows, each window including an aperture or opening for a respective light source 1611–1613 and/or the detector 1614.”). This description is consistent with Figure 16, which is relied on by Petitioner, where those optical sensor components are positioned on or under rear cover 608 (shaded orange in Petitioner’s annotated figure above) while electrodes 1601 and 1602 are positioned on the rear face of the housing (shaded in red) and thereby contact the user’s skin. See Ex. 1005 ¶¶ 190, 196 (“In this example [of Figure 16], a first electrode 1601 and second electrode 1602 are disposed on the rear face of the device 100. The first 1601 and second 1602 electrodes may be configured to make contact with the skin of the user’s wrist when the device is being worn.”). We determine that Petitioner has not shown adequately that a person of ordinary skill in the art would understand Rothkopf to disclose an electrode positioned on the carrier member, as recited in independent claims 9 and 15 and, by extension, claims 13 and 14, which depend from independent claim 9. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its anticipation challenge (Ground 1).” slip op. at 22

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,987,054
• DK Crown Holdings Inc. v. Diogenes LimitedInstitution denied
  PTAB · Jun 22, 2023 · IPR2023-00265 · APJ Sean P O’Hanlon · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that DeWaal, alone or with Schugar, renders claims 1, 4–15, 17–19, or 32 unpatentable.

  RulingsInstitution decision

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

    “recited wager. Pet. 35. However, Petitioner does not explain adequately how this wager “coincides with each of the defined number of legs” of DeWaal’s bonus game (which Petitioner maps to the recited multi-outcome wagering event (id. at 23)) as required by the challenged claims. Rather, Petitioner refers to the player’s input for each round of bonus game. Id. at 35. As explained above, DeWaal discloses that a player’s selection of a winning outcome for each round of the bonus game is independent of the wager made by the player in the base game. As acknowledged by Petitioner’s declarant, Mr. Crevelt, DeWaal’s wager allows “a player [to] qualify for the bonus game,” but “players of the bonus event must also ‘make an input in association with the plurality of outcomes in each round as indicated by block 108’ in FIG. 3.” Ex. 1007 ¶ 141 (quoting Ex. 1004 ¶ 129). Nor has Petitioner explained adequately how DeWaal identifies “players eligible to win each of the defined number of legs” of the bonus game “based on the wager” as required by the challenged claims. Rather, Petitioner again refers to the player’s input for each round of the bonus game. Pet. 40. The wager in DeWaal is the bet placed to play the initial game, which occurs prior to the multi-round bonus event. Ex. 1004 ¶ 83. That wager does not, however, serve to identify a winner of a leg of DeWaal’s bonus game. Instead, players advance by making separate choices at each leg of the bonus game. See, e.g., id. ¶¶ 119, 127. That is, it is those choices, not the wager, that determines whether the player advances at each leg. As such, we are not persuaded DeWaal describes “identifying one or more players eligible to win each of the defined number of legs based on the wager” as required by the challenged claims.” slip op. at 16

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

    “As noted above, Petitioner maps DeWaal’s base game wager to the recited wager. Pet. 35. However, Petitioner does not explain adequately how this wager “coincides with each of the defined number of legs” of DeWaal’s bonus game (which Petitioner maps to the recited multi-outcome wagering event (id. at 23)) as required by the challenged claims. Rather, Petitioner refers to the player’s input for each round of bonus game. Id. at 35. As explained above, DeWaal discloses that a player’s selection of a winning outcome for each round of the bonus game is independent of the wager made by the player in the base game. As acknowledged by Petitioner’s declarant, Mr. Crevelt, DeWaal’s wager allows “a player [to] qualify for the bonus game,” but “players of the bonus event must also ‘make an input in association with the plurality of outcomes in each round as indicated by block 108’ in FIG. 3.” Ex. 1007 ¶ 141 (quoting Ex. 1004 ¶ 129). Nor has Petitioner explained adequately how DeWaal identifies “players eligible to win each of the defined number of legs” of the bonus game “based on the wager” as required by the challenged claims. Rather, Petitioner again refers to the player’s input for each round of the bonus game. Pet. 40. The wager in DeWaal is the bet placed to play the initial game, which occurs prior to the multi-round bonus event. Ex. 1004 ¶ 83. That wager does not, however, serve to identify a winner of a leg of DeWaal’s bonus game. Instead, players advance by making separate choices at each leg of the bonus game. See, e.g., id. ¶¶ 119, 127. That is, it is those choices, not the wager, that determines whether the player advances at each leg. As such, we are not persuaded DeWaal describes “identifying one or more players eligible to win each of the defined number of legs based on the wager” as required by the challenged claims.” slip op. at 16

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

    “For at least the foregoing reasons, Petitioner has not shown sufficiently that DeWaal discloses or teaches a wager as recited in independent claims 1 and 32. Petitioner’s reliance on Schugar to teach a partial buy-out offer does not correct this deficiency. See Pet. 55–58.” slip op. at 17

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

    “Independent claims 1 and 32 include several limitations involving “the wager.” First, the wager is received “in response to input from a player desiring to participate in the multi-outcome wagering event” (“receiving recitation”). Ex. 1001, 33:25–30, 40:7–11. The claims here further recite that the wager must “coincide[] with each of the defined number of legs.” Id. Second, the claims then identify “one or more players eligible to win each of the defined number of legs based on the wager.” Id. at 33:39–42, 40:20–23. Accordingly, we construe claims 1 and 32 to set out a method where the wager (1) enters the player into the event (and, thus, is set before the event) and (2) is of a nature such that it serves as the metric by which the player is evaluated at each leg to determine whether the player remains eligible to win the event.2 Neither party offers a claim construction of this term.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,704,338
• DK Crown Holdings Inc. v. Diogenes LimitedInstitution denied
  PTAB · Jun 21, 2023 · IPR2023-00264 · APJ Hyun J Jung · IPR · Institution

  Institution denied on the merits: Petitioner failed to show a reasonable likelihood that claims 1, 2, 24, 28-30, 54-64, and 83 were unpatentable over DeWaal or DeWaal and Schugar.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we do not institute an inter partes review of claims 1, 2, 24, 28– 30, 54–64, and 83 of the ’716 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that one of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or a similar field; and at least two years of experience in the wager based gaming industry.” Pet. 12 (citing Ex. 1007 ¶ 28). Petitioner also states that “[a] person with less education but more relevant practical experience may also meet this standard” and that the “description is approximate, and a higher level of education or skill may make up for less experience, and vice-versa.” Id. (citing Ex. 1007 ¶ 28). Patent Owner does not dispute Petitioner’s asserted level of ordinary skill in the art and does not propose its own level of skill. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s asserted level of ordinary skill.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “We understand that these independent claims are written in a way that reads on some embodiments (see, e.g., Ex. 1001, 14:61–15:19, describing an embodiment where the wager involves guessing the outcomes of 6 games and the “legs” are the outcomes of each of the underlying 6 games) but not all embodiments (see, e.g., id. at 23:9–34, describing an embodiment where the “legs” are the outcomes of each reel in a slot machine, and thus there is no evaluation of an initial wager to determine whether the player won at each leg—the wager is akin to an entry fee to play). Accordingly, we construe independent claims 1 and 83 to set out a method where the wager (1) enters the player into the event (and thus, is set before the event) and (2) is of a nature such that it serves as the metric by which the player is evaluated at each leg to determine whether they remain eligible to win the event. We similarly construe independent claim 54 to require a system wherein the controller receives a wager “in response to input from a player desiring to participate in . . . wagering events” (and thus, before the event) and (2) the wager is of a nature such that it serves as the metric by which the player is evaluated at each leg to determine whether they remain eligible to win the event.” slip op. at 8

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

    “Petitioner’s anticipation challenge does not adequately address the “wager” recited in the receiving and identifying limitations. In particular, the wager in DeWaal relied upon by Petitioner is the bet placed to play the initial game, which occurs prior to the multi-round bonus event. Pet. § IX.A.1.d; Ex. 1004 ¶ 57. Alternatively, DeWaal discloses that it could require a separate fee to enter the bonus game. Id. ¶ 83. In either case, the putative wager in DeWaal serves to allow entry into the event. Petitioner does not explain sufficiently how either wager serves to identify a winner of a leg of DeWaal’s bonus game. See Pet. § IX.A.1.f.; Ex. 1007 ¶¶ 114–119. Instead, players advance by making separate choices at each leg of the bonus game. See, e.g., Ex. 1004 ¶¶ 119, 128; see also Ex. 1007 ¶ 118 (“DeWaal’s identification of players that are eligible to win each round of the bonus event is ‘based on the wager,’ and more specifically based on the player’s input selection of one of the wagered upon potential outcome in each round.”) (emphasis added). That is, the player’s choice, not the relied-upon wager, determines whether the player advances at each leg. See, e.g., Ex. 1004 ¶ 119 (“If at least one of the players picks (or makes an input associated with) the designated outcome in a first round, that player advances to a second round.”). As such, Petitioner does not sufficiently show that DeWaal describes “identifying one or more winners . . . based on the wager.” Similarly, even if we were to consider the player’s choice in DeWaal’s bonus event, such as whether to risk further play or take the buyout (e.g., Ex. 1004 ¶ 146), to be a form of wager, that wager would be different from the one required in claim 1. In particular, claim 1 requires the wager to be “in response to the . . . players desiring to participate in the . . . event” as well as to “coincide[] with each of the defined number of legs.” Ex. 1001, 32:27–30. Thus, by the time the player in DeWaal is making choices during the event, they have already expressed a desire to participate in the event, and any such “wager” to continue the event is tied only to that leg, not to “each of the defined number of legs.” In other words, claims 1 and 83 require the wager to be something that is set ahead of time, and to contain information that is used, at each leg, to evaluate whether that player remains eligible. Accordingly, for the reasons above, we determine that Petitioner has not sufficiently addressed each limitation of claims 1 and 83 and does not show a reasonable likelihood of prevailing in its challenge that DeWaal anticipates claims 1 and 83.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,424,716
• DK Crown Holdings Inc. v. Diogenes LimitedInstitution denied
  PTAB · Jun 15, 2023 · IPR2023-00261 · APJ William V Saindon · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–30 were unpatentable over DeWaal alone or with Schugar and Scott.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a) (2020). 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.” For the reasons provided below, we determine Petitioner has not satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has not demonstrated a reasonable likelihood that at least one claim of the ’439 patent is unpatentable, we do not institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2

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

    “wager.” First, the wager is received “in response to the . . . players desiring to participate in the multi-outcome wagering event” (“receiving” limitation). The claim here further specifies that the wager must “coincide[] with each of the number of legs.”1 Second, the claim then identifies one or more winners “based on the wager” (“identifying” limitation). The claim here also” slip op. at 7

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

    “adequately address the specific “wager” recited in the receiving and identifying limitations. In particular, the wager in DeWaal is the bet placed to play the initial game, which occurs prior to the multi-round bonus event. Ex. 1004 ¶ 83. Alternatively, DeWaal discloses that it could require a separate fee to enter the bonus game. Id. In either case, putative wager in DeWaal serves to allow entry into the event. That wager does not, however, serve to identify a winner of a leg of DeWaal’s bonus game. Instead, players advance by making separate choices at each leg of the bonus game. See, e.g., id. ¶¶ 119, 127. That is, it is those choices, not the wager, that determines whether the player advances at each leg. As such, we are not persuaded DeWaal describes “identifying one or more winners . . . based on the wager.” Similarly, even if we were to consider the player’s choices in DeWaal’s bonus event, such as whether to risk further play or take the buyout (e.g., Ex. 1004 ¶ 146), to be a form of wager, that wager would be different from the one required in claim 1. In particular, claim 1 requires the wager to be “in response to the . . . players desiring to participate in the . . . event” as well as to “coincide[] with each of the defined number of legs.” Thus, by the time the player in DeWaal is making choices during the event, they have already expressed a desire to participate in the event, and any such “wager” to continue the event is tied only to that leg, not to “each of the defined number of legs.” In other words, claim 1 requires the wager to be something that is set ahead of time, and to contain information that is used, at each leg, to evaluate whether that player remains eligible. Accordingly, we determine that Petitioner has not addressed sufficiently each limitation of claim 1.” slip op. at 11

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

    “The other claims and ground addressed in the Petition are deficient for the same reasons. Petitioner’s position regarding independent claim 26 is effectively identical to that of claim 1. Pet. 55 (“DeWaal therefore discloses each limitation of Claim 26 for the reasons discussed above with regard to Claim 1.”). Similarly, Petitioner’s obviousness grounds bring in references for limitations regarding buy-outs and partial buy-outs, not for the wager limitations. See id. at 55–64.” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,721,439
• Logan Outdoor Products, LLC, D/B/A Camp Chef v. Lifetime Products, Inc.Institution denied
  PTAB · Mar 22, 2023 · IPR2022-01467 · APJ Robert L Kinder · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable under the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “Based on the record before us, Petitioner has not shown sufficiently how Dahle’s distinct embodiments would have been combined to teach each limitation of claims 1, 10, and 15. First, Petitioner has not established sufficiently that insert 26, which is capable of burning charcoal or other burnable elements, discloses the claimed “wood pellet heat source.” Ex. 1004 ¶¶ 34, 42. Dahle’s insert 26 is designed to hold charcoal or similar burnable elements, and Petitioner does not explain how the insert discloses a wood pellet heat source. Dr. Stevick testifies that “[p]ellet grills are the types of grill that integrate the use of wood smoking in place of gas burners or charcoal to cook food.” Ex. 1003 ¶ 58 (emphasis added). Dr. Stevick explains that pellet grills may utilize a pellet reservoir that feeds pellets to an auger, which then transports them to a pellet burner, also referred to as a fire pot. Id. ¶ 62; see also Ex. 1001, 2:51–53 (“The wood pellet burner may include a cylindrical structure configured to receive wood pellets from the wood pellet reservoir via an auger.”). But none of this explains why Petitioner believes that Dahle’s insert 26 (depicted below in Figure 3) is a wood pellet burner.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner disagrees with the Petitioner’s statements regarding a person of ordinary skill in the art, but does not provide a proposed alternative. See Prelim. Resp. 14. Patent Owner further notes that the disagreement does not have any bearing on its contentions. Id. The level of ordinary skill in the art can be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)

    “First, Petitioner has not established sufficiently that insert 26, which is capable of burning charcoal or other burnable elements, discloses the claimed “wood pellet heat source.” Ex. 1004 ¶¶ 34, 42. Dahle’s insert 26 is designed to hold charcoal or similar burnable elements, and Petitioner does not explain how the insert discloses a wood pellet heat source. Dr. Stevick testifies that “[p]ellet grills are the types of grill that integrate the use of wood smoking in place of gas burners or charcoal to cook food.” Ex. 1003 ¶ 58 (emphasis added). Dr. Stevick explains that pellet grills may utilize a pellet reservoir that feeds pellets to an auger, which then transports them to a pellet burner, also referred to as a fire pot. Id. ¶ 62; see also Ex. 1001, 2:51–53 (“The wood pellet burner may include a cylindrical structure configured to receive wood pellets from the wood pellet reservoir via an auger.”). But none of this explains why Petitioner believes that Dahle’s insert 26 (depicted below in Figure 3) is a wood pellet burner.” slip op. at 20

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

    “Petitioner first observes that both references are directed to dual-fuel grilling systems that utilize both gas burners and wood pellet burners. Pet. 93. Even presuming this to be true, it does not provide a rational basis for modifying Sauerwein as proposed on its own; it is merely an observation that the references are analogous art. The mere fact that two references may be analogous art, however, is not adequate to demonstrate motivation to combine, even at this stage of the proceeding. See Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10–11 (PTAB Oct. 16, 2018) (Decision Denying Institution) (informative) (“Demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim.”). Petitioner next states that Dahle teaches that dual-fuel source grills can be configured for different purposes. Pet. 93–94. Although we generally agree with this statement, it does not explain why a person of ordinary skill in the art would have considered it obvious to add a burner or shorten Sauerwein’s cooking surface and also move its wood pellet heat source directly below the gas heat source.” slip op. at 30

  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,292,531
• Beckman Coulter, Inc. v. Sirigen II LimitedInstitution denied
  PTAB · Jan 6, 2023 · IPR2022-01208 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution on all challenged claims and grounds because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.

  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 “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.” For the reasons stated below, we determine that Petitioner does not establish a reasonable likelihood that it would prevail with respect to at least one claim of the ’303 patent. Thus, we do not institute an inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denialNot reached

    “1 Because we deny the Petition on the merits, we do not address the parties’ arguments related to discretionary denial.” slip op. at 2

  • Skill levelOther

    “Petitioner asserts that a person having ordinary skill in the art (POSITA) “would have at least a Ph.D. degree in chemistry, or a bachelor’s or master’s degree plus experience involving the use and design of fluorescent probes or dyes.” Pet. 17 (citing Ex. 1007 ¶¶ 14–18). Patent Owner agrees that a POSITA may have a Ph.D. degree or master’s degree in chemistry, but asserts that a POSITA would also have “some experience with fluorescence” in addition to a Ph.D. degree in chemistry and that the experience of a POSITA with a master’s degree in chemistry is alternatively “industry experience in the field of biological detection systems.” Prelim. Resp. 9–10 (citing Ex. 2001 ¶ 7). For purposes of this Decision, we need not choose between the parties’ proposed levels of one of ordinary skill in the art, which are quite similar, as neither party asserts that the anticipation or obviousness analyses in this case would turn on which definition is adopted. See, e.g., id. at 10 (noting that the arguments and conclusions reached in the Preliminary Response “would not change” if Petitioner’s definition of the ordinarily skilled artisan were applied).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “structure of Formula (Ia),” including specific MU, L1 and L2, G1 and G2, n, and a, b, c, and d (which define the mol % of each unit within the structure) constituents, wherein each R group must be a “[n]on-ionic side group capable of imparting solubility in water in excess of 10 mg/mL.” Ex. 1006, 239:29–240:56. The ’303 patent expressly defines the phrase “[n]on-ionic side groups capable of imparting solubility in water” to refer to “side groups which are not charged and allow the resulting polymer to be soluble in water or aqueous solutions with no visible particulates.” Id. at 54:31–34. In view of structure of claim 1 and the express definition provided in the ’303 patent, we agree with Patent Owner that claim 1 requires that the non-ionic side group R must be capable of imparting solubility to the claimed conjugated polymer (having constituents that satisfy the claimed variables noted above) in excess of 10 mg/mL. Prelim. Resp. 13. On this record, it is not sufficient to show that a particular R group is capable of” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,575,303

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.