• ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution denied
  PTAB · Feb 10, 2025 · IPR2024-01054 · APJ Michael T Cygan · IPR · Institution

  Institution denied for claims 1–15 because Petitioner did not show Seet was prior art, defeating the reasonable-likelihood showing for every asserted obviousness ground.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any one of claims 1–15 of the ’768 patent. Accordingly, we do not institute an inter partes review of the ’768 patent.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “Petitioner fails to show that the full scope of claim 9 of Seet is described in the Seet provisional. Seet expressly defines the claim term “media,” stating that, as it is “used herein,” “media” includes audio, video, software, and pictures. Ex. 1006 ¶ 50 (“Media content may include one . . . of audio . . ., video . . ., software . . ., and pictures”). Such a statement provides a clear definition of the term “media” that includes video, software, and pictures, in addition to audio. In addition to the express definition, Seet elsewhere indicates that its media includes video and other non-audio signals and databases. See, e.g., Ex. 1006 ¶¶ 26 (“if the media stream 102 is a video broadcast, each media item may comprise a television show or segment, an advertisement, or any other type of video”), 42–46 (creating databases of “videos,” “faces,” and “files”), 49 (“any signal that contains repeating content over any broadcast medium can benefit from the procedure described herein.”). Accordingly, the use of media in claim 9 for its claimed “media content database” and “media stream[s]” also includes both audio and non-audio media.” slip op. at 14

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “We agree with Patent Owner that Petitioner has not met its burden to show that Seet is prior art. Seet is not entitled to the benefit of its provisional filing date unless a claim in Seet has written description support in the Seet provisional. See Dynamic Drinkware, 800 F.3d at 1381–82. As the “‘hallmark’ of written description, . . . the disclosure must be considered as a whole, as the person of ordinary skill in the art would read it to determine if it reasonably conveys possession” of the claimed invention. Allergan USA, Inc. v. MSN Laboratories Private Ltd., 111 F.4th 1358, 1375 (Fed. Cir. 2024) (citation and emphasis omitted).” slip op. at 12

  • Skill levelSkill level board ownDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art [“POSITA”] at the critical time would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree with at least two years of relevant industry experience, including in digital media content delivery.” Pet. 2 (citing Ex. 1003 ¶ 32). Patent Owner argues that the level of ordinary skill should include persons lacking a formal degree but possessing considerable industry experience designing and implementing automated content recognition systems, and that such systems are the relevant industry experience. Prelim. Resp. 6–7. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, modified by the more inclusive standards of Patent Owner, as it appears to be consistent with the specification of the ’768 patent and the prior art of record.” slip op. at 7

  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,510,768
• ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution denied
  PTAB · Feb 10, 2025 · IPR2024-01057 · APJ Michael T Cygan · IPR · Institution

  The Board denied institution because Roku did not show a reasonable likelihood of proving claims 1–15 unpatentable; Seet was not shown to be prior art.

  RulingsInstitution decision

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

    “Without the benefit of its provisional filing date, Seet, filed on February 17, 2005, is not prior art to the ’848 patent, having an uncontested benefit to the May 27, 2004 filing date of its provisional. Because each of Petitioner has not shown a reasonable likelihood of prevailing on any of its unpatentability assertions. III. CONCLUSION For the reasons discussed above, we conclude Petitioner has not shown a reasonable likelihood of prevailing with respect to any of claims 1–15. We determine that the record does not support institution. Accordingly, no inter partes review is instituted.” slip op. at 16

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for patent owner

    “Petitioner fails to show that the full scope of claim 9 of Seet is described in the Seet provisional. Seet expressly defines the claim term “media,” stating that, as it is “used herein,” “media” includes audio, video, software, and pictures. Ex. 1006 ¶ 50 (“Media content may include one . . . of audio . . ., video . . ., software . . ., and pictures”). Such a statement provides a clear definition of the term “media” that includes video, software, and pictures, in addition to audio. In addition to the express definition, Seet elsewhere indicates that its media includes video and other non-audio signals and databases. See, e.g., Ex. 1006 ¶¶ 26 (“if the media stream 102 is a video broadcast, each media item may comprise a television show or segment, an advertisement, or any other type of video”), 42–46 (creating databases of “videos,” “faces,” and “files”), 49 (“any signal that contains repeating content over any broadcast medium can benefit from the procedure described herein.”). Accordingly, the use of media in claim 9 for its claimed “media content database” and “media stream[s]” also includes both audio and non-audio media. The disclosure of the Seet provisional, however, is more limited and defines the term media exclusively as audio. Ex. 1019, 4 (“Media will be defined as any streaming audio source in any form, be it radio, television, cable, satellite, internet stream, or the like.”). This definition does not include the full scope of “media” as that term is used in claim 9 of Seet because it does not include video, software, and pictures.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “at the critical time would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree with at least two years of relevant industry experience, including in digital media content delivery.” Pet. 2 (citing Ex. 1003 ¶ 32). Patent Owner argues that the level of ordinary skill should include persons lacking a formal degree but possessing considerable industry experience designing and implementing automated content recognition systems, and that such systems are the relevant industry experience. Prelim. Resp. 6–8. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, modified by the more inclusive standards of Patent Owner, as it appears to be consistent with the specification of the ’848 patent and the prior art of record.” slip op. at 7

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

    “Here, neither party sets forth any explicit claim construction. Pet. 14; Prelim. Resp. Although Patent Owner analyzes the term “media monitoring device” in its arguments (Preliminary Response 37–43), our ultimate determination on institution does not turn on that construction. We determine that no need exists to determine a particular construction for purposes of this institution decision, and instead construe the claims pursuant to § 42.100(b).” slip op. at 8

  Claim construction§ 102 anticipationcites Phillips · KSR · Graham
  Patents in suitUS 10,719,848
• Bio-Rad Laboratories, Inc. v. California Institute Of TechnologyInstitution denied
  PTAB · Jan 29, 2025 · IPR2024-01178 · APJ Erica A Franklin · IPR · Institution

  The Board denied institution because Bio-Rad did not show a reasonable likelihood of proving any challenged claim unpatentable, as relied-upon Saxonov disclosures were not shown to qualify as prior art.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314. Upon considering the parties’ arguments and evidence, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we decline to institute an inter partes review of the challenged claims.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “benefit of its provisional application’s filing date for pre-AIA 35 U.S.C. § 102(e) prior art purposes when two conditions are met: (1) the provisional provides sufficient support for at least one claim in the reference patent or published patent application; and (2) the provisional application provide sufficient support for the subject matter relied upon for prior art purposes in the reference patent or application. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1377, 1381–82 (Fed. Cir. 2015); MPEP §§ 2136 (I), 2136.03 (III), 2136 (Examples 2, 4, 7); see, e.g., Google LLC v. Ikorongo Tech, LLC, IPR 2021-00058, Paper 14 at 10–12 (PTAB May 10, 2021). The burden of production is on the Petitioner to show in its Petition that the asserted references qualify as prior art. See Dynamic Drinkware, 800 F.3d at 1380 (explaining that a petitioner bears the initial burden of production to establish that the asserted references qualify as prior art).” slip op. at 18

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

    “Each of the remaining grounds asserted in the Petition relies on Saxonov to reach a number of limitations of independent claim 1 and the challenged dependent claims. Because Petitioner has not shown that all of the relied-upon portions of Saxonov are prior art to the ’170 patent, we determine that Petitioner has failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’170 patent in any of the remaining grounds.” slip op. at 24

  • PTAB / AIA Trials › Discretionary denialNot reached

    “Because we deny institution upon consideration of the merits of Petitioner’s challenges, Patent Owner’s argument that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution is moot.” slip op. at 25

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,770,170
• Bio-Rad Laboratories, Inc. v. California Institute Of TechnologyInstitution denied
  PTAB · Jan 29, 2025 · IPR2024-01177 · APJ Erica A Franklin · IPR · Institution

  Institution was denied for claims 1–9 because Bio-Rad did not show a reasonable likelihood of unpatentability on any ground relying on Saxonov, which was not established as prior art.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At this stage in the proceeding, Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 26. Because Petitioner’s uncontested definition of one of ordinary skill in the art is reasonable and consistent with the ’051 patent and the cited art, we adopt Petitioner’s definition for purposes of this Decision.” slip op. at 10

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

    “Petitioner has identified certain claim terms for which it has proposed constructions in a parallel proceeding. Pet. 27–29. Petitioner notes that it has that “[o]ther terms, as used herein, are consistent with Patent Owner’s arguments and positions in the parallel proceeding,” without identifying those terms. Id. at 28. Patent Owner requests that the Board adopt Patent Owner’s proposed constructions from the parallel proceeding for certain claim terms. PO Prelim. Resp. 26–27. Neither party provides a discussion for their proposed constructions. In any event, for purposes of this Decision, we determine there is no need to expressly construe any claim term, as the parties appear to agree to the ordinary and customary meaning of the identified terms.” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “benefit of its provisional application’s filing date for pre-AIA 35 U.S.C. § 102(e) prior art purposes when two conditions are met: (1) the provisional provides sufficient support for at least one claim in the reference patent or published patent application; and (2) the provisional application provides sufficient support for the subject matter relied upon for prior art purposes in the reference patent or application. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1377, 1381–82 (Fed. Cir. 2015); MPEP §§ 2136 (I), 2136.03 (III), 2136 (Examples 2, 4, 7); see, e.g., Google LLC v. Ikorongo Tech, LLC, IPR2021-00058, Paper 14 at 10–12 (PTAB May 10, 2021). The burden of production is on the Petitioner to show in its Petition that the asserted references qualify as prior art. See Dynamic Drinkware, 800 F.3d at 1380 (explaining that a petitioner bears the initial burden of production to establish that the asserted references qualify as prior art).” slip op. at 18

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

    “explains how each of the relied-upon disclosures in Saxonov Figures 9 and 10, and Saxonov paragraphs 17, 18, 37, 76, and 79, which are not present in the ’013 provisional, are supported by the ’013 provisional, we determine that Petitioner has not shown that those cited portions of Saxonov are entitled to the priority date of the ’013 provisional. Accordingly, on this record, we determine that those relied-upon portions of Saxonov do not qualify as prior art to the ’051 patent.” slip op. at 24

  Claim construction§ 102 anticipationcites Phillips · Graham
  Patents in suitUS 10,068,051
• Boe Technology Group Co., Ltd. v. 138 East LCD Advancements LimitedInstitution denied
  PTAB · Dec 16, 2024 · IPR2024-00977 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 7–13 and 15–20 unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had at least a Bachelor’s degree in electrical engineering, computer science, physics, or a similar field and at least two years of experience designing semiconductor display devices, including LCD displays.” Pet. 19. Petitioner also asserts that “[a]dditional relevant work experience can compensate for less education, and vice versa.” Id. On the record presented, Patent Owner “does not dispute the level of skill for a person of ordinary skill in the art . . . set forth in the Petition.” Prelim. Resp. 8. Neither party explains why the outcome of this case would be affected by the adoption of any particular proffered definition of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears consistent with the ’606 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “As discussed below, we are able to determine whether to institute review without resolving the construction of any claim terms. Accordingly, we need not and do not construe any terms expressly. 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

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

    “view. First, as Petitioner admits, data line 6a is not connected to image signal line 101d and line 109 other than when sample hold circuit 101c connects them due to shift register 101b outputting an enabling signal. Pet. 49. This is supported by the layout of the four elements in Fujikawa’s Figure 2. Ex. 1005, Fig. 2 (depicting sample hold circuits 101c between and connecting data lines 6a and signal lines 101d). In addition, Patent Owner’s declarant, Dr. E. Fred Schubert, testifies that “two separate lines straddling circuitry are [not] one line.” Ex. 2001 ¶ 64. The dispute between the parties on this issue is largely one of claim construction: should the term “wiring line” in claim 7 be construed broadly enough to encompass a collection of lines separated by a sample hold circuit? In order to determine that Fujikawa discloses or teaches the recited wiring lines, we would need to answer this question in the affirmative. Yet, as discussed above, neither party proposes construing “wiring line,” or any other term used in the claims of the ’606 patent. Pet. 18; Prelim. Resp. 7. The failure to argue for and sufficiently support a broad construction of the term “wiring line” means that Petitioner does not show sufficiently, for purposes of supporting institution of review, that Fujikawa discloses or teaches the “wiring line” limitation of claim 7. b) Conclusion Regarding Claim 7 Based on the record presented, we determine that Petitioner has not shown that there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 7 is unpatentable as anticipated by or obvious in view of Fujikawa.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,557,606
• Sma Solar Technology America, LLC v. Tigo Energy, Inc.Rehearing denied
  PTAB · Apr 2, 2024 · IPR2023-01175 · APJ Kristina M Kalan · IPR · Rehearing

  The Board denied SMA’s rehearing request, leaving institution denied for claims 1–20 because the request showed no overlooked matter, misapplication of law, or abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW Rule 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply, or a sur-reply. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. Moreover, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.”). Our Institution Decision analyzed Petitioner’s arguments and evidence, and determined that Petitioner provided no persuasive argument that a person of ordinary skill in the art would have understood that Mieth’s load 20 is a micro-controller—i.e., that the claimed micro-controller reads onto Mieth’s load 20. Inst. Dec. 11–12 (citing Ex. 1014, 1180, Fig. 5; Ex. 1007 ¶¶ 102–103). The Request, as did the Petition, misapplies the anticipation analysis by arguing that a micro-controller is a load, rather than persuasively arguing that Mieth’s load is the claimed micro-controller. Id. at 10–12; Req. 8. None of Petitioner’s evidence or arguments explain why a person of ordinary skill in the art would have understood that load 20 disclosed in Mieth is a micro-controller. As such, Petitioner has not shown any material error in our decision that Petitioner did not demonstrate a reasonable likelihood of anticipation by Mieth.” slip op. at 6

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

    “reads on the micro-controller recited in the claims of the ’848 patent” (Req. 6), the test for anticipation is not whether the prior art reads on the claims, but rather whether the claims read on the prior art. See Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999) (“Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.”). Our Institution Decision analyzed Petitioner’s arguments and evidence, and determined that Petitioner provided no persuasive argument that a person of ordinary skill in the art would have understood that Mieth’s load 20 is a micro-controller—i.e., that the claimed micro-controller reads onto Mieth’s load 20. Inst. Dec. 11–12 (citing Ex. 1014, 1180, Fig. 5; Ex. 1007 ¶¶ 102–103). The Request, as did the Petition, misapplies the anticipation analysis by arguing that a micro-controller is a load, rather than persuasively arguing that Mieth’s load is the claimed micro-controller. Id. at 10–12; Req. 8. None of Petitioner’s evidence or arguments explain why a person of ordinary skill in the art would have understood that load 20 disclosed in Mieth is a micro-controller. As such, Petitioner has not shown any material error in our decision that Petitioner did not demonstrate a reasonable likelihood of anticipation by Mieth. slip op. at 5

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

    “D. Petitioner’s Section 103 Argument Petitioner argues throughout the Request that Mieth also discloses the “micro-controller” limitation under 35 U.SC. § 103. See Req. 7, 9–11, 13– 15. As explained above, however, the Request does not identify any matters that the Board misapprehended or overlooked. We addressed Petitioner’s obviousness arguments in our Institution Decision, and determined that those arguments failed to demonstrate a reasonable likelihood that Petitioner would prevail on its arguments that Mieth and Balogh, or Mieth, Balogh, and Liu, teach or suggest the claimed “micro-controller” limitation. Inst. Dec. 13–15.” slip op. at 8

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 9,966,848
• Sma Solar Technology America, LLC v. Tigo Energy, Inc.Institution denied
  PTAB · Jan 22, 2024 · IPR2023-01175 · APJ Kristina M Kalan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Mieth, alone or in the asserted combinations, disclosed or suggested the claimed micro-controller.

  RulingsInstitution decision

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

    “To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the parties’ submissions and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the claims challenged in the Petition. Accordingly, we decline to institute inter partes review.” slip op. at 2

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

    “AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, or a similar discipline and at least two years of design experience with circuit design.” Pet. 20 (citing Ex. 1007 ¶ 31). Patent Owner disputes Petitioner’s definition because it excludes “individuals with higher education and less experience.” Prelim. Resp. 7. However, Patent Owner does not argue that the level of ordinary skill in the art impacts the analysis. See id.” slip op. at 6

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

    “We agree with Patent Owner that Petitioner fails to show Mieth expressly discloses the claimed micro-controller. Petitioner relies on Mieth’s load 20 (Pet. 23, 50), but Patent Owner correctly observes that (citing Ex. 1002, 1:19–21, 1:23–28, 2:1–15, 4:25–27, 8:8–9, 8:20–23, 8:29– 33). We also agree with Patent Owner that Petitioner fails to show Mieth inherently discloses the claimed micro-controller. Petitioner argues that a “PHOSITA would understand that a load in a circuit can be or include a micro-controller” and “the load 20 is analogous to the claimed micro-controller.” Pet. 23. Petitioner’s argument itself, however, as noted by Patent Owner (Prelim. Resp. 9), admits that load 20 is not “necessarily” a micro-controller, and that load 20 does not “necessarily” include a micro-controller. Continental Can Co., U.S.A. v. Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”); see also Pet. 50 (discussing, in the context of claim limitation [10E], “load 20 (micro-controller))” (citing Ex. 1007 ¶ 163).” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,966,848
• Sma Solar Technology America, LLC v. Tigo Energy, Inc.Institution denied
  PTAB · Jan 12, 2024 · IPR2023-01133 · APJ Kristina M Kalan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–13 were unpatentable over the asserted Mieth-based grounds.

  RulingsInstitution decision

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

    “To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the parties’ submissions and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the claims challenged in the Petition. Accordingly, we decline to institute inter partes review.” slip op. at 2

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

    “AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(citing Ex. 1007 ¶¶ 30–31). Patent Owner disputes Petitioner’s definition because it excludes “individuals with higher education and less experience.” Prelim. Resp. 7. However, Patent Owner does not argue that the level of ordinary skill in the art impacts the analysis. See id. For the purposes of this Decision, we adopt Petitioner’s proposal because we find Petitioner’s statement of the level of ordinary skill in the art adequate and supported on this record. The level of ordinary skill in the art also appears to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 6

  • BurdenNot shown unpatentable

    “We also agree with Patent Owner that Petitioner fails to show Mieth inherently discloses the claimed micro-controller. Petitioner argues that a include a micro-controller” and “the load 20 is analogous to the claimed micro-controller.” Pet. 22–23. Petitioner’s argument itself, however, as noted by Patent Owner (Prelim. Resp. 9), admits that load 20 is not “necessarily” a micro-controller, and that load 20 does not “necessarily” include a micro-controller. Continental Can Co., U.S.A. v. Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”); see also Pet. 56 (discussing, in the context of claim limitation [7G], “load 20, which may be a micro-controller” (citing Ex. 1002, 17:19–18:3; Ex. 1007 ¶ 170; Ex. 1014, 1180, Fig. 5)). Additionally, Petitioner argues that Mieth’s load 20 is “analogous to” the claimed micro-controller. Pet. 22–23 (citing Ex. 1007 ¶ 97–99 (same language as Petition); Ex. 1014, 1180, Fig. 5). We are not persuaded that Petitioner’s “analogous to” argument comports with the standard for anticipation. Under the applicable standard for anticipation, neither Petitioner nor its declarant provides any analysis that would show that one skilled in the art would have reasonably understood or inferred from Mieth that load 20 is a micro-controller. See Eli Lilly, 849 F.3d at 1074–1075.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,333,405
• Apple Inc. v. Dodots Licensing Solutions LLCInstitution denied
  PTAB · Dec 15, 2023 · IPR2023-00937 · APJ Hubert C Lorin · IPR · Institution

  The Board denied institution on claims 1–21 because Petitioner did not show a reasonable likelihood that the relied-upon Slivka Appendices qualified as prior art.

  RulingsInstitution decision

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

    “On this record, Petitioner does not establish a reasonable likelihood that the Slivka Appendices are “(1) an application for patent, published under section 122(b), . . . or (2) a patent granted on an application for patent.” 35 U.S.C. 102(e). Accordingly, the relied-upon Slivka Appendices do not qualify as prior art under § 102(e) as Petitioner asserts. Pet. 9. III. CONCLUSION Petitioner’s invalidity contentions rely, in part, on disclosures from the Slivka Appendices, which Petitioner asserts qualify as prior art under § 102(e). Pet. 9. Because Petitioner has not established a reasonable likelihood of showing that the material it relies on was available as prior art at the time of the invention, we determine that the Petitioner has not satisfied its burden from the onset to show with particularity why the patent it challenges is unpatentable. 35 U.S.C. § 312(a)(3).” slip op. at 18

  • BurdenDenied

    “We determine that Petitioner has not satisfied its burden from the onset to show with particularity why the patent it challenges is unpatentable. Our determination is based on finding that Petitioner’s challenge relies on appendices (Ex. 1005, 69–245) missing from the ’695 patent (Ex. 1004) and insufficient indication on the record that the appendices have been incorporated into the ’695 patent, and that as a result, the relied-upon appendices do not qualify as prior art under 35 U.S.C. § 102(e) as Petitioner asserts. Pet. 9.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “Appendices (Ex. 1005, 69–245) missing from the ’695 patent (Ex. 1004) as published because the Slivka Appendices were not incorporated by reference into the ’695 patent specification. Thus, there is no sufficient indication on this record to establish a reasonable likelihood that the Slivka Appendices are available prior art for an inter partes review, as they are neither part of the patent. 35 U.S.C. § 311(b); see Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper No. 29 at 12–13 (December 20, 2019) (precedential) (discussing the standard at institution for a showing regarding the public availability of non-patent art). On this record Petitioner has not sufficiently shown that the Slivka Appendices, as separately-filed documents should be accorded their stamped “DEC 6 1996,” date for prior art purposes. As Patent Owner correctly explains, “the rule requiring publication of applications ‘after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought’ was not effective until November 29, 2000.” Prelim. Resp. 21 (citing 65 Fed. Reg. 57,024; 35 U.S.C. § 122(b)(1)). For applications filed before November 29, 2000, as here, “the prosecution history of an application remain[ed] confidential until the application itself issue[d] as a patent.” Hyatt v. U.S. Patent and Trademark Office, 797 F.3d 1374, 1378 (Fed. Cir. 2015). The current record, at most, might support a likelihood that the Slivka Appendices could be accorded the date they were first made publicly available, which is May 9, 2000, the date the ’695 patent issued. See 37 C.F.R. 1.11 (a) (“After a patent has been issued or a statutory invention registration has been published, the specification, drawings, and all papers relating to the case in the file of the patent or statutory invention registration are open to inspection by the public, and copies may be obtained by paying the fees therefore.”). As Patent Owner points out, however, this is “at least thirteen months after the ’545 patent’s effective filing date,” i.e., April 26, 1999 (based on a claim for priority to, inter alia, U.S. Provisional Application Ser. No. 60/131,083). Prelim. Resp. 29; Ex. 1001, code (60), 1:13–15. In addition, Petitioner only presents a case for availability of the Slivka reference under pre-AIA § 102(e). On this record, Petitioner does not establish a reasonable likelihood that the Slivka Appendices are “(1) an application for patent, published under section 122(b), . . . or (2) a patent granted on an application for patent.” 35 U.S.C. 102(e). Accordingly, the relied-upon Slivka Appendices do not qualify as prior art under § 102(e) as Petitioner asserts. Pet. 9.” slip op. at 17

  § 102 anticipation
  Patents in suitUS 9,369,545
• Vifor (International) AG v. Biofer S.P.A.Institution denied
  PTAB · Apr 24, 2023 · IPR2022-01608 · APJ Grace Karaffa Obermann · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–16, 19–21, and 23–25 were unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “step of reacting a sugar with bromine occurs “in a solution at a pH between 7.0 and 9.0.” Ex. 1001, 16:46–47. A dispositive question arises, on this record, as to whether Petitioner’s information, directed to this pH range limitation, is sufficient to support institution of review. For reasons that follow, we determine that Petitioner’s information is not sufficient and deny the Petition on that basis.” slip op. at 9

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

    “and 12 and that Stoll suggests a pH range of 7 or greater. Pet. 29–30 and n.7, 39. Those prior art pH ranges overlap or encompass the specified pH range of “between 7.0 and 9.0.” Pet. 38–39 and n.10. Under these circumstances, the burden of production shifts to Patent Owner to come forward with evidence of the criticality of the specified pH range limitation. See id. at 39–40 (quoting E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1008 (Fed. Cir. 2018). Patent Owner meets that burden by directing us to the Marchi Declaration. Resp. 9–12; Ex. 1004, 432–440. That evidence contains experimental results that support Dr. Marchi’s opinion that the claimed method, when performed at a pH of 8, “can be run with equimolar amounts of oxidant without increasing depolymerization,” but when performed at a pH of 10, results in an undesirable “depolymerizing attack on the main chain, even employing only 0.9 equivalents of oxidant.” Ex. 1004, 434–435 (¶ 7). As Patent Owner points out, moreover, the oxidation reaction in each of the examples in Geisser is carried out at a pH of 10. see Prelim. Resp. 26 and n.8 (citing Ex. 1006, Examples 1–8).” slip op. at 10

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

    “We assess the ground based on anticipation by Geisser in view of the principle that a prior art reference anticipates a patent claim “if it discloses every claim limitation.” In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The ground based on anticipation by Geisser rests on a conclusory opinion that Geisser’s disclosure of a pH range between 8 and 12 “describes” an oxidation reaction that occurs “at a pH between 7.0 and 9.0.” Pet. 63 (citing Ex. 1002 ¶ 178, which repeats that conclusory opinion verbatim without objective evidence or analysis). It is unclear on this record, and Petitioner does not explain adequately, how or why Geisser anticipates the pH range limitation of claim 1, which is “critical” for reasons explained above in our analysis of the ground based on obviousness over Geisser and Stoll. Ex. 1004, 435 (the Marchi Declaration, ¶ 7). Accordingly, on this record, we determine that Petitioner does not establish a reasonable likelihood of prevailing “with respect to at least [one] of the claims” based on any ground asserted in the Petition. 35 U.S.C. § 314(a).” slip op. at 13

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner proposes that an ordinarily skilled artisan “would hold an advanced degree, such as an M.S. or doctorate, in chemistry, medicine, pharmacy, or a related degree,” as well as post-graduate experience “in areas of carbohydrate chemistry, synthetic chemistry, medicinal chemistry, inorganic chemistry, and/or metal carbohydrate complexes, or the clinical use of such complexes.” Pet. 16. Patent Owner does not contest Petitioner’s proposed definition in the Preliminary Response. Prelim. Resp. 17–18. Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply Petitioner’s unopposed proposed definition for purposes of determining whether to institute review because it is consistent with the disclosures of the asserted prior art references.” slip op. at 7

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,759,320

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.