• Vusiongroup SA v. Hanshow Technology Co., Ltd.Institution denied
  PTAB · Jan 14, 2025 · IPR2024-01045 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any of its four § 103 grounds.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2

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

    “We agree with Patent Owner. At best, Schwartz’s disclosure cited by Petitioner teaches aggregating product information obtained from different stores, but neither the Petition nor Dr. Wolfe explains sufficiently how aggregating product information would have suggested cross-correlating different product facing bounding boxes to one of ordinary skill in the art. See Pet. 35–37; Ex. 1003 ¶¶ 148–151. We are not persuaded that aggregating product information and cross-correlating different product facing bounding boxes would have been recognized as similar or comparable processes. Moreover, Petitioner does not even assert that one of ordinary skill in the art would have recognized that Schwartz cross-correlates one or more product facing bounding boxes and one or more other product facing bounding boxes as required by limitation [1.5]. Instead, Petitioner asserts only that one of ordinary skill in the art “would have recognized Schwartz . . . cross-correlates that product and affiliated shelf added). Furthermore, limitation [1.5] recites cross-correlating different product facing bounding boxes by matching shelf label content of the different product facing bounding boxes. But Petitioner does not explain adequately how the combination of Schwartz and Katircioglu satisfies this requirement. Pet. 35–37. Although Petitioner asserts that the combination discloses associating shelf label content with product facing bounding boxes (id. at 30–35), we are not directed to any disclosure in either Schwartz or Katircioglu that teaches or suggests matching the shelf label content of different product facing bounding boxes. For the above reasons, Petitioner fails to persuade us that the combination of Schwartz and Katircioglu discloses limitation [1.5]. Therefore, we determine Petitioner has not met its burden to show a reasonable likelihood it would prevail with respect to the contention that claim 1 is unpatentable over the combination of Schwartz and Katircioglu.” slip op. at 13

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that [a] person of ordinary skill in the art (“POSITA”) in November 2016 would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and two or more years of work experience or research related to computer vision, image analytics, machine learning, artificial intelligence or automated object recognition methods and systems, or equivalent training and work experience in the field. Formal education can substitute for work experience and relevant work experience could substitute for formal education. Pet. 8–9 (citing Ex. 1003 ¶ 29). Patent Owner indicates it agrees with Petitioner’s definition of a person having ordinary skill in the art. Prelim. Resp. 4–5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior definition.” slip op. at 7

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

    “Petitioner contends that “[n]o formal claim constructions are necessary ‘to resolve the controversy.’” Pet. 9 (quoting Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Petitioner adds that there is a rebuttable presumption that § 112(f) does not apply because the challenged claims do not recite “means.” Id. In the event the presumption is overcome with respect to the claim terms “processor” and “product classifier,” Petitioner identifies the disclosure describing the corresponding structure for these terms. Id. at 9–10. Patent Owner contends that claim construction is not necessary and the claims should be given their plain and ordinary meaning. Prelim. Resp. 5. Regarding the claim terms “processor” and “product classifier,” Patent Owner argues that Petitioner has not advanced any argument to rebut the presumption that § 112(f) does not apply. Id. at 6. any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 11,087,272
• Aptiv Services US, LCC v. Microchip Technology Inc.Institution denied
  PTAB · Nov 7, 2024 · IPR2024-00803 · APJ Jason M Repko · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–18 obvious over Verhaege, Verhaege and Miller, or Ker.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine “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). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2

  • Skill levelOther

    “(‘POSITA’) in the field of the ’665 patent in 2007 would have at least a Master’s degree in electrical engineering, computer engineering, or a related field and three to five years of experience in integrated circuit design.” Pet. 10 (citing Ex. 1002 ¶ 51). Patent Owner argues that Petitioner’s definition is “excessively high.” Prelim. Resp. 3 n.1. In Patent Owner’s view, “a POSITA would have had a bachelor’s degree in electrical engineering or an equivalent technical degree and two years of experience in mixed-signal (i.e., analog/digital) circuit design.” Id. (citing Ex. 2003 ¶¶ 30–34). We need not resolve this dispute because our decision would be the same under either definition.” slip op. at 6

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

    “only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In Patent Owner’s view, “the claims require sharing ESD charge from one pad with a different I/O pad.” Prelim. Resp. 27. Patent Owner argues that charge sharing is the only way that charging the pad capacitance can reduce a maximum voltage, as recited. Id. at 24–25. Apart from the charge sharing, Patent Owner argues that the recited enable or control circuitry is not located in the circuit where the ESD event occurs. Id. at 27–33. Patent Owner argues that Petitioner disagrees with this interpretation. Id. Petitioner, though, argues that it would have been obvious to duplicate Verhaege’s and Ker’s protection circuits. See, e.g., id. at 18 (discussing claim 1 and Verhaege), 48 (discussing the Verhaege-Miller combination), 66 (discussing claim 1 and Kerr). For example, Petitioner argues that “a POSITA would have been motivated to use the improved protection circuit of Verhaege, apply it at every I/O pad, and share the ESD energy across multiple pad circuits as taught by Miller.” See id. at 48 (emphasis added). From statements like these, Patent Owner draws the conclusion that Petitioner must also be interpreting the claims to require charge sharing. Prelim. Resp. 25–27. For the reasons discussed in Section II.C below, Petitioner has not shown a reasonable likelihood of showing that any claims are unpatentable even under the implied claim construction used in its obviousness rationale. The Board need not expressly construe any claims in reaching that conclusion.” slip op. at 6

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

    “Petitioner argues, “It would have been obvious to a POSITA that, because an ESD event could occur at any I/O pad, the Verhaege invention should be repeated at every I/O pad.” Pet. 18 (citing Ex. 1002 ¶ 67); id at 30–32 (claim 6); id. at 43 (claim 14). Yet Petitioner acknowledges that “there were many obvious ways to activate multiple circuits during an ESD event.” Id. at 51. The Petition does not sufficiently explain why it would have been obvious to have chosen the way that is claimed. See id. at 18, 30– 32, 43. Rather, Petitioner’s obviousness rationale appears to be based on impermissible hindsight gleaned entirely from the challenged patent’s 1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on the . . . patent itself as her roadmap for putting what she referred to as pieces of a ‘jigsaw puzzle’ together.”). For this additional reason, Petitioner has not shown a reasonable likelihood of prevailing in its challenges to claims 1, 6, and 14.” slip op. at 15

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,564,665
• Google LLC v. Dialect, LLCInstitution denied
  PTAB · Oct 15, 2024 · IPR2024-00746 · APJ Brian J Mcnamara · IPR · Institution

  Institution was denied for claims 1–9 and 12 because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

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

    “processes the request formulated in step 1[f] because the application carries out processing in accordance with the request. Pet. 41 (citing Ex. 1002, Schmandt Decl. ¶ 136 (as discussing Zadrozny’s conferencing schedule example)). Noting that a domain agent provides a functionality for a particular area or realm, such as a particular subject matter or device, Patent Owner argues that Coffman’s conversationally aware application does not teach limitation 1[g] because Coffman’s conversationally aware application does not process a request. Prelim. Resp. 29, 35–39. Noting that in Coffman, each application has its own context stack, Patent Owner argues that Coffman’s description of the context stack contents for various discourses does not support Petitioner’s theory that a conversationally aware application is invoked to process a user’s request. Id. at 37 (citing Ex, 1003, 27:1–2). As Patent Owner points out, calls to conversational sub-systems (see Ex. 1003, Fig. 2, 218, Fig. 4, 407) are hidden to the application. Prelim. Resp. 37 (citing Ex. 1003, 29:10–11), see also Ex. 1003, 29:7–9 (“CVM 401 will locate the requested conversational subsystem 407 (via the conversational subsystem services manager 406), drive its execution and return appropriately the results.”)). As a conversational subsystem, rather than a conversationally aware application executes the request, we determine that Petitioner has not demonstrated that Coffman discloses limitation 1[g]. d) Claim 1 conclusion In view of the above, we determine that Petitioner has not” slip op. at 29

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “speech recognition and processing (and more experience could substitute for less formal education, and vice versa).” Pet. 15 (citing Ex. 1002, Schmandt Decl. ¶¶ 11–15). Patent Owner does not explicitly dispute Petitioner’s characterization of a person of ordinary skill in the art. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of the level of ordinary skill appears consistent with the technology of the ’209 patent and the references, we apply Petitioner’s characterization of an ordinarily skilled artisan for purposes of this Decision.” slip op. at 8

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

    “Neither party has proposed a special definition or explicit construction of any claim term for purpose of this Decision. See Pet. 17 (“[e]xpress claim construction is unnecessary”); Prelim. Resp. 13 (“the Board need not engage in any pre-institution claim construction”). For purposes of this Decision, we understand Petitioner to propose that the claims be given their ordinary and customary meaning as understood by a person of ordinary skill under Phillips. 37 C.F.R. 42.104(b)(3).” slip op. at 9

  • BurdenDecided for patent owner

    “processes the request formulated in step 1[f] because the application carries out processing in accordance with the request. Pet. 41 (citing Ex. 1002, Schmandt Decl. ¶ 136 (as discussing Zadrozny’s conferencing schedule example)). Noting that a domain agent provides a functionality for a particular area or realm, such as a particular subject matter or device, Patent Owner argues that Coffman’s conversationally aware application does not teach limitation 1[g] because Coffman’s conversationally aware application does not process a request. Prelim. Resp. 29, 35–39. Noting that in Coffman, each application has its own context stack, Patent Owner argues that Coffman’s description of the context stack contents for various discourses does not support Petitioner’s theory that a conversationally aware application is invoked to process a user’s request. Id. at 37 (citing Ex, 1003, 27:1–2). As Patent Owner points out, calls to conversational sub-systems (see Ex. 1003, Fig. 2, 218, Fig. 4, 407) are hidden to the application. Prelim. Resp. 37 (citing Ex. 1003, 29:10–11), see also Ex. 1003, 29:7–9 (“CVM 401 will locate the requested conversational subsystem 407 (via the conversational subsystem services manager 406), drive its execution and return appropriately the results.”)). As a conversational subsystem, rather than a conversationally aware application executes the request, we determine that Petitioner has not demonstrated that Coffman discloses limitation 1[g]. d) Claim 1 conclusion In view of the above, we determine that Petitioner has not demonstrated that the combined teachings of Coffman, Kanevsky, Kneser, and that Petitioner has not shown a reasonable likelihood it would prevail in its challenge to claim 1 based on the combined teachings of these references.” slip op. at 29

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,398,209
• Google LLC v. Dialect, LLCInstitution denied
  PTAB · Oct 11, 2024 · IPR2024-00751 · APJ George R Hoskins · IPR · Institution

  The Board denied institution because Google did not show a reasonable likelihood of prevailing on any challenged claim, failing to show Coffman identifies a domain agent associated with a matching context-stack entry.

  RulingsInstitution decision

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

    “onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). B. Legal Standards — Obviousness A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, if made available in the record, which has not happened here. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 8

  • BurdenDenied

    “institution of review, Petitioner’s contention that Coffman’s CVM 14 / 202 / 401 includes a processor that identifies a domain agent (i.e., one of Coffman’s conversationally aware applications 11) associated with an entry in a context stack (i.e., context stack 217 / 405) that matches information in a merged transcription of user inputs. Details are provided below, but in overview, we determine Coffman’s disclosure is too high-level and non-specific, and Mr. Schmandt’s supporting testimony is too conclusory, to justify institution here. See, e.g., Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, at 15–17 (PTAB Aug. 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it “is conclusory and unsupported, [and] adds little to the conclusory assertion for which it is offered to support”); 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.”).” slip op. at 18

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “IV. POTENTIAL DISCRETIONARY DENIAL UNDER 35 U.S.C. § 325(d) Patent Owner urges us to exercise our discretion under 35 U.S.C. § 325(d) to deny institution of review, on the basis that the Examiner considered and commented on Coffman and Kennewick during prosecution of the ’607 patent, and Petitioner’s reliance on Ross (in Ground One) and Lee (in Ground Two) does not cure a deficiency of Coffman relating to merged transcriptions that was recognized by the Examiner. See Prelim. Resp. 3–4, 14, 44, 47–50. Petitioner provides opposing arguments. See Pet. 10–12. In light of our determination above to deny institution on the merits per 35 U.S.C. § 314(a), we do not reach the § 325(d) issues raised by Patent Owner.” slip op. at 25

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “institution of review, Petitioner’s contention that Coffman’s CVM 14 / 202 / 401 includes a processor that identifies a domain agent (i.e., one of Coffman’s conversationally aware applications 11) associated with an entry in a context stack (i.e., context stack 217 / 405) that matches information in a merged transcription of user inputs. Details are provided below, but in overview, we determine Coffman’s disclosure is too high-level and non-specific, and Mr. Schmandt’s supporting testimony is too conclusory, to justify institution here. See, e.g., Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, at 15–17 (PTAB Aug. 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it “is conclusory and unsupported, [and] adds little to the conclusory assertion for which it is offered to support”); 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.”).” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,447,607
• Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution denied
  PTAB · Feb 9, 2024 · IPR2023-01098 · APJ Michael J Fitzpatrick · IPR · Institution

  The Board denied institution on claims 1, 2, 5, 8, and 12, finding the Fintiv factors favored denial and the petition did not present compelling evidence of unpatentability.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “We agree with Patent Owner’s analysis based on the schedule in the district court’s docket control order. Ex. 2007. The fact that the time-to-trial statistics cited by Petitioner predict that a trial in May 2024 (Pet. 89), a date even earlier than the trial date set in the court’s docket control order, confirms that the schedule set by the district court is credible and should be given weight. We are not persuaded by Petitioner’s argument that diligence in filing the Petition “in advance of the one-year bar date and within four months of PO’s infringement contentions in the Texas Litigation” should weigh in favor of institution. Pet. 89. As the Texas Litigation is scheduled to go to trial in August 2024, approximately six months before a final written decision would be entered, we determine that Factor 2 weighs in favor of discretionary denial.” slip op. at 8

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

    “Patent Owner persuasively argues that Odendaal’s planar coil is not a simple drop-in replacement for Okada’s tapped solenoid, as the Petition seems to suggest. Id. at 40. The Petition states only that a person of ordinary skill would have had reason to modify Okada to use a primary coil that is substantially planar and substantially parallel to the surface to expand or complement Okada’s thin-form charging applications. Pet. 17 (citing Ex. 1002, Baker Decl. ¶¶ 138–139; Ex. 1005, Figs 1, 9, 10–16, ¶¶ 33–34, 116– 146). Petitioner’s argument that reducing the distance between primary and secondary would promote close proximity couple, reduce energy waste, and shorten charging time fails to address salient issues underlying the combination. Id. (citing Ex. 1002, Baker Decl. ¶¶ 50–53, 138–139; Ex. 1008, 2:29–44; Ex. 1005 ¶¶ 66–68, 112, Figs. 4(a)–4(b); Ex. 1036, 24:19– 22). Although Okada is premised on a multi-section primary coil, the Petition does not identify any multi-tap planar coil or explain why a person of ordinary skill would have had reason to modify Odendaal’s planar coil to add taps to it. Moreover, the Petition does not explain how a person of ordinary skill attempting to exchange Okada’s multi-section solenoid coil with a planar coil could add multiple taps to said primary coil to create multiple sections and access those sections. As Patent Owner points out, utilizing multi-tap solenoid coils, Okada relies on detection of the degree of coupling/alignment between the communication section of the primary side of the coil and a secondary coil to determine whether there is correct alignment for power delivery sections of the primary and secondary sections of the coil. See Prelim. Resp. 38. The Petition does not address how of Okada. On this record it appears that Petitioner’s proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Shimano, Inc. v. Globeride, Inc., IPR2015- 00273, Paper 40 at 12 (Final Written Decision) (PTAB Jun 16, 2016) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) as standing for the proposition that a case of obviousness is undermined if modifying the prior art would render that prior art inoperable for its intended purpose). In consideration of the above, we are not persuaded that Petitioner has cited sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Okada and Odendaal.” slip op. at 28

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

    “Patent Owner persuasively argues that Odendaal’s planar coil is not a simple drop-in replacement for Okada’s tapped solenoid, as the Petition seems to suggest. Id. at 40. The Petition states only that a person of ordinary skill would have had reason to modify Okada to use a primary coil that is substantially planar and substantially parallel to the surface to expand or complement Okada’s thin-form charging applications. Pet. 17 (citing Ex. 1002, Baker Decl. ¶¶ 138–139; Ex. 1005, Figs 1, 9, 10–16, ¶¶ 33–34, 116– 146). Petitioner’s argument that reducing the distance between primary and secondary would promote close proximity couple, reduce energy waste, and shorten charging time fails to address salient issues underlying the combination. Id. (citing Ex. 1002, Baker Decl. ¶¶ 50–53, 138–139; Ex. 1008, 2:29–44; Ex. 1005 ¶¶ 66–68, 112, Figs. 4(a)–4(b); Ex. 1036, 24:19– 22). Although Okada is premised on a multi-section primary coil, the Petition does not identify any multi-tap planar coil or explain why a person of ordinary skill would have had reason to modify Odendaal’s planar coil to add taps to it. Moreover, the Petition does not explain how a person of ordinary skill attempting to exchange Okada’s multi-section solenoid coil with a planar coil could add multiple taps to said primary coil to create multiple sections and access those sections. As Patent Owner points out, utilizing multi-tap solenoid coils, Okada relies on detection of the degree of coupling/alignment between the communication section of the primary side of the coil and a secondary coil to determine whether there is correct alignment for power delivery sections of the primary and secondary sections of the coil. See Prelim. Resp. 38. The Petition does not address how of Okada. On this record it appears that Petitioner’s proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Shimano, Inc. v. Globeride, Inc., IPR2015- 00273, Paper 40 at 12 (Final Written Decision) (PTAB Jun 16, 2016) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) as standing for the proposition that a case of obviousness is undermined if modifying the prior art would render that prior art inoperable for its intended purpose). In consideration of the above, we are not persuaded that Petitioner has cited sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Okada and Odendaal.” slip op. at 28

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinarily skilled artisan”) as one having “at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems.” Pet. 4 (citing Ex. 1002, Declaration of Dr. R. Jacob Baker (“Baker Decl.”) ¶¶ 20–21). Petitioner further states that slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,462,942
• Servicenow, Incorporated v. Inquisient IncorporatedInstitution denied
  PTAB · Jan 16, 2024 · IPR2023-01072 · APJ Brian J Mcnamara · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–47 were unpatentable over the asserted combinations.

  RulingsInstitution decision

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

    “Institution is issued pursuant to 35 U.S.C. § 314, which provides that 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.”” slip op. at 2

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

    “argument does not change Petitioner’s recognition that the ’585 patent describes a data repository as including modules, such that an ordinarily skilled person would have understood a “module” to be a portion of a data repository. The ’585 patent includes an extensive discussion of tables and relationships between tables, but does not define the term “module.” In the ’585 patent, the term “module” appears in the claims; “module” also appears in the “SUMMARY,” in a manner that parrots the language of the claims. Ex. 1001, 2:1–14. The term “module” is a classic nonce word that does not connote definite structure. See, e.g., Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015) (“‘Module’ is a well-known nonce word that can operate as a substitute for ‘means’ in the context of [pre-AIA 35 U.S.C.] § 112, para. 6” and “is simply a generic description for software or hardware that performs a specified function” that “does not provide any indication of structure.”). Nonetheless, claim 48, which is not challenged in the Petition, does not use the term “module,” instead reciting limitations similar to those of claim 1 with express use of “means”-plus-function language, thereby and equivalents thereof. Ex. 1001, 20:47–22:3; see 35 U.S.C. § 112, para. 6 (2012). Under the doctrine of claim differentiation, we ascribe a broader meaning to the term “module” in claims 1–47.” slip op. at 10

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

    “translator generates eight relational database tables, one for each class (i.e., (1) Component, (2) Analog Component, (3) Memory, (4) Dynamic Memory, (5) Static Memory, (6) Manufacturer, (7) Domestic [manufacturer], and (8) Foreign [manufacturer]), but Althoff’s system does not generate a relational database table called Class because there is no object called Class. Id. at 29–32 (citing Ex. 1006, 4:58–49, 5:8–10, Figs. 1, 8). We agree with Patent Owner that, contrary to Petitioner’s assertion, Althoff does not teach the claimed class module, i.e., a module (or table) configured to define at least one class of the plurality of elements (Althoff’s objects 101) and store that class. Patent Owner’s contention that there would be no reason to generate a class Class 301 table as Petitioner asserts is also persuasive. See Prelim. Resp. 31–32. As Patent Owner notes, by creating separate tables for each class, e.g., a Component table and a Manufacturer table, Althoff preserves the class information. Id. Patent Owner also argues that Petitioner’s assertions concerning a class Class 301 table fail because “if objects were already stored as table in the object database, there would be no need for Althoff to build a translator to translate objects into table.” Id. at 33. Petitioner relies on Moore’s disclosure of a virtual folders description database to teach the named text module recited in limitation 1[i]. Pet. 5, 28. Petitioner does not identify any disclosure in Moore that teaches the subject matter not disclosed by Althoff. Accordingly, we determine that Petitioner has not sufficiently shown that limitation 1[e] is taught or suggested by the combination of Althoff and Moore.” slip op. at 29

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

    “Petitioner’s Contentions Concerning Reasons to Combine Althoff and Moore Petitioner contends that a person of ordinary skill would have had reason to combine the teachings of Althoff and Moore to improve end-user experience by avoiding the need for complicated SQL queries or for navigating complicated tables to access objects stored in Althoff’s database. Pet. 10. Petitioner contends that SQL queries to access databases are often beyond the capabilities of ordinary users, but such users are already familiar with working with folders. Id. at 11–12. Petitioner contends that, because represent it as a container that is like a folder, a person of ordinary skill would have had reason to combine Moore’s virtual folders with Althoff’s database to simplify use of such systems. Id. at 11–13 (citing Ex. 1003, White Decl. ¶¶ 62–69; Ex. 1007, 3:36–41).” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,219,585
• Servicenow, Incorporated v. Inquisient IncorporatedInstitution denied
  PTAB · Jan 16, 2024 · IPR2023-01071 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on the asserted obviousness grounds.

  RulingsInstitution decision

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

    “We have jurisdiction under 35 U.S.C. § 6 (2018). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, Preliminary Response, Preliminary Reply, Sur-reply, and all supporting evidence, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing for any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’468 patent “would have [had] a Bachelor’s degree in Computer Science and three to five years of industry experience in application development, database development, enterprise application management; or a Ph.D. specializing in the field,” but that “more education could compensate for less experience and vice versa.” Pet. 3 (citing Ex. 1003 ¶ 24). Patent Owner does not contest Petitioner’s contention with regard to the level of skill. See generally Prelim. Resp. As Petitioner’s unchallenged description of the level of ordinary skill appears appropriate to the subject matter of the ’468 patent and the cited prior art, we apply it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “The term “module” is a classic nonce word that does not connote definite structure. See, e.g., Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015) (“‘Module’ is a well-known nonce word that can operate as a substitute for ‘means’ in the context of [pre-AIA 35 U.S.C.] § 112, para. 6” and “is simply a generic description for software or hardware that performs a specified function” that “does not provide any indication of structure.”). Independent claims 14 and 27 do not use the term “module,”” slip op. at 10

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

    “Petitioner relies on Althoff’s relational database as teaching the recited data repository and, inter alia, the recited element module. See Pet. 14–17. However, Petitioner relies on Althoff’s “class Class 301,” a class used by Althoff’s object-oriented database, as the basis for its arguments with respect to the recited class module. Pet. 21. Although Althoff provides a database translator for translation between object oriented and relational database structures (see, e.g., Ex. 1006, 3:4–6 (stating that “it would be advantageous to provide a method of compilation and translation between object oriented and relational database structures”)), we agree with Patent Owner that there is no object named “Class” or “Class 301” in the user’s object database in Althoff and that no object name “Class” is translated into a “class module” in the relational database. Prelim. Resp. 32. We further agree with Patent Owner that Petitioner points to nothing from either the user’s object database or the meta-model that is translated into a “class module” found in the user’s relational database. Id. As Patent Owner argues, class Class 301 in Althoff is not an object in the user’s object database, but instead is a class (i.e., a data type) defined by the meta-model that can be used by the user’s object database as a data type when the user creates objects. Id. at 29–30, 32, 37– 38. Still further, we agree with Patent Owner that Althoff teaches that relational databases and object databases are distinct and incompatible, a problem that Althoff seeks to address with its disclosed systems and methods. See Prelim. Resp. 25–26, 29 (citing Ex. 1006, 2:9–14, 3:4–24). Patent Owner’s contentions are also persuasive that there is neither any “‘class Class 301’ table” disclosed in Althoff, notwithstanding Petitioner’s assertions, nor any reason to generate such a table. See Prelim. Resp. 36–39 (citing Pet. 21). As Patent Owner notes, by creating separate Althoff preserves class information. Id. at 33. But Althoff does not state that class information for each user-created object is stored in a “row” of a “class Class 301 table” as asserted in the Petition, and we agree with Patent Owner that Althoff would have no need to describe a translation process to convert objects into tables if the classes of the object database were already stored “rows” in a “table.” Id. at 38. With regard to the Petition’s reference to Althoff’s disclosure that “each object of class Class 301 comprises information in table 3-2” (Pet. 21 (quoting Ex. 1006, 11:12–16)), we agree with Patent Owner that Table 3-2 of Althoff does not concern a row of a “class table”; instead, as Patent Owner explains, “Table 3-2 is merely a descriptive device in the specification of Althoff that describes in a two-column format the information stored within an object of type ‘Class’ in the user’s object database . . . in a form more easily accessible to the reader than a narrative.” Prelim. Resp. 38–39 (citing Ex. 1006, 11:15–47).” slip op. at 28

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,979,468
• Servicenow, Incorporated v. Inquisient IncorporatedInstitution denied
  PTAB · Jan 16, 2024 · IPR2023-01073 · APJ Gregg I Anderson · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of success on any challenged claim, including the independent claims’ class-module limitation.

  RulingsInstitution decision

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

    “Institution is issued pursuant to 35 U.S.C. § 314, which provides that 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.”” slip op. at 2

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

    “argument does not change Petitioner’s recognition that the ’855 patent describes a data repository as including modules, such that an ordinarily skilled artisan would have understood a “module” to be a portion of a data repository. The ’855 patent includes an extensive discussion of tables and relationships between tables, but does not define the term “module.” In the ’855 patent, the term “module” appears in the claims; “module” also appears” slip op. at 10

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

    “We agree with Patent Owner that, contrary to Petitioner’s assertion, Althoff does not teach the claimed class module, i.e., a module (or table) configured to define at least one class of the plurality of elements (Althoff’s objects 101) and store that class. The claimed “data repository” is the relational database. See Pet. 13. However, Class 301 is part of the object database and is not translated into the relational database. As Patent Owner argues, Althoff teaches that the system “selects a class 101 in the user’s object database 100,” not the relational database. See Prelim. Resp. 27 [in FIG. 1] comprises a set of classes 101.”)). Patent Owner’s contention that there would be no reason to generate a class Class 301 table as Petitioner asserts is also persuasive. See Prelim. Resp. 29–30. As Patent Owner notes, by creating separate tables for each class, e.g., a Component table and a Manufacturer table, Althoff preserves the class information. Id. Patent Owner also argues that Petitioner’s assertions concerning a class Class 301 table fail because “if objects were already stored in a table in the object database, there would be no need for Althoff to build a translator to translate objects into tables.” Id. at 31. For at least the foregoing reasons, we conclude that Petitioner has not shown adequately at this stage of the proceeding that Althoff teaches or suggests limitation 1[c]. Moreover, Petitioner does not allege that Surjanto addresses the above-identified deficiencies of Althoff with respect to that limitation. Thus, we determine that Petitioner has not demonstrated that there is a reasonable likelihood it will succeed in its challenge to claim 1. We need not address the remaining limitations of claim 1 or Patent Owner’s arguments as to why those limitations have not been sufficiently shown. See Prelim. Resp. 34–40.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Petitioner’s Contentions Concerning Reasons to Combine Althoff and Surjanto Petitioner contends that a person of ordinary skill would have had reason to combine the teachings of Althoff and Surjanto to achieve the well-known benefits of Surjanto’s extensions, which were specifically designed to extend OO databases like Althoff’s to provide the known benefits of XML document support, such as “allow[ing] users to reuse and process textual portions of document contents,” “enabl[ing] collaborative development of documents” and in general “offer[ing] comprehensive content management functionality.” Pet. 8–9 (citing Ex. 1008, 9; Ex. 1003 ¶ 61). be motivated to modify Althoff to include Surjanto’s XCoP extensions because of the well-known benefits of XML document support.” Pet. 9 (citing Ex. 1003 ¶¶ 158–164). Petitioner further identifies Surjanto as disclosing that XCoP allows “users to reuse and process textual portions of document contents.” Id. Patent Owner does not respond to Petitioner’s contention as to combining Althoff and Surjanto. We agree that Petitioner has demonstrated sufficient reasons for combining Althoff and Surjanto.” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,224,855
• Realtek Semiconductor Corp. v. Ati Technologies UlcInstitution denied
  PTAB · Oct 25, 2023 · IPR2023-00688 · APJ Kevin W Cherry · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 7–12 were unpatentable over the asserted § 103 grounds.

  RulingsInstitution decision

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

    “institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen 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) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’628 patent. Accordingly, we deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on this record, we adopt Dr. Manocha’s articulation of the level of ordinary skill in the art, which is consistent with the ’628 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We agree with Patent Owner that Petitioner’s purported motivation that the modification would “preserve the image fidelity of the texture” lacks sufficient reasoning and support. Importantly, we fail to see, and Petitioner provides inadequate explanation or support, why adding an additional level of partitioning above the 4x4 and 8x8 blocks would “preserve the image fidelity of the texture” any more than what FXT1 already does. See Pet. 57. We also decline to give weight to Petitioner’s expert declaration, which merely repeats this conclusory reasoning without providing any additional explanation or evidentiary support. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning.” InTouch Techs., Inc. v. VGo Communs., Inc., 751 F.3d 1327, 1347, 1351 (Fed. Cir. 2014). Here, we find Petitioner’s reasoning and rational underpinning as to why FTX1 would be modified in the manner proposed to be lacking. Accordingly, because we find that Petitioner has failed to account for limitation 7(b), we find that Petitioner has failed to demonstrate a reasonable likelihood of prevailing in showing that claim 7 would have been obvious in view of FXT1.” slip op. at 27

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

    “The Specification, however, supports Patent Owner’s construction. In the Background section, the Specification consistently uses the term “block” as a division of an image. See, e.g., Ex. 1001, 1:67–2:3 (“The codebook entries are blocks of pixels of some size (typically 2×2 or larger). For each block of pixels in the original texture, an index is stored to the codebook entry that most closely approximates the block.”). Moreover, the Background section describes the prior-art DXTC technique as “a block-based texture compression scheme” that “explicitly stores two 16-bit colors per 4×4 pixel block.” Id. at 2:24–29. The Background section also describes FXT1, which Petitioner asserts in one of its challenges here, as “a competing compression scheme with DXTC,” which “essentially extends DXTC with some additional block types that can be mixed within any given image.” Id. at 2:46–48. The Specification also uses “block” in the same way in its “Detailed Description of the Preferred Embodiments.” Indeed, the Specification states that [T]he present invention further refines block-based image compression techniques such as DXTC with a flexible method for pre-compression partitioning of texture blocks. The pre-compression partitioning enhances image quality by flexibly selecting partitions suitable to the characteristics of the texture block being compressed, rather than adopting the one-size-fits-all approach suggested in other methods. Ex. 1001, 4:52–57; see also id. at 5:66–6:4 (noting “the present invention represents a further refinement of block-based texture compression schemes such as DXTC” and “the basic compression algorithm . . . divides or splits the image up into discrete blocks of pixels”). The Specification goes to reinforce the understanding of the term “block” as a division of the entire image. For example, when discussing the preferred embodiment, the Specification explains As with other block-based texture compression schemes, the original texture is then split or divided into original blocks of pixels according to step 305. Typically, the original block of pixels is a square or rectangular block—e.g., 4×4 or 8×8 pixel. The size of the original block of pixels is variable, and may be selected according to user needs, application demands and/or system capabilities. Id. at 6:20–26; see also id. at 9:12–13 (“[T]he texture is divided into blocks of 8x8 pixels for compression.”). Thus, we determine that the Specification consistently uses the term “block” to indicate a division of an image, not the image itself, which supports Patent Owner’s construction.” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,184,628
• Samsung Electronics Co., Ltd. v. Cardware, Inc.Institution denied
  PTAB · Jun 13, 2023 · IPR2023-00219 · APJ Brian J Mcnamara · IPR · Institution

  The Board denied institution because Samsung did not show a reasonable likelihood that claims 1–21 and 23–30 were unpatentable, including failure to show the claimed combining and transmitting limitations.

  RulingsInstitution decision

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

    “onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 8

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

    “information and transmitting the combined payment information to an NFC reader, we find that Petitioner has not demonstrated sufficiently that Royyuru teaches or suggests claim limitations 1.h and 1.i. In view of this finding, we need not analyze the remaining limitations of claim 1 for purposes of this Decision.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s proposed description of the level of ordinary skill appears consistent with the subject matter described and claimed in the ’538 patent and the references, we apply Petitioner’s proposed description in this Decision.” slip op. at 7

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

    “whether to institute inter partes review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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)). Neither party has proposed a special definition or explicit construction of any claim term. Although the parties’ arguments discuss the meanings of certain claim terms, as discussed further herein, for purposes of this Decision, we do not construe any claim terms specifically.” slip op. at 8

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,176,538

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.