• Sercomm Corporation v. Atlas Global Technologies, LLCInstitution denied
  PTAB · Apr 11, 2023 · IPR2022-01520 · APJ Stephen E Belisle · IPR · Institution

  The Board denied institution because Sercomm did not show a reasonable likelihood of proving claims 1–9 and 11–19 unpatentable under any asserted ground.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and related briefing, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 1–9 and 11–19 of the ’919 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, based on the record before us, we deny institution of an inter partes review of the ’919 patent.” slip op. at 2

  • Skill levelSkill level board ownOther

    “Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Although slight differences exist in the formulation of such skill level between the parties, we discern no meaningful differences because none of those differences would affect the outcome of our analysis. Considering the subject matter of the ’919 patent, the background technical field, the prior art, and parties’ proposed definitions of the skilled artisan, we apply the level of skill cumulatively set forth above by the parties, which is consistent with testimony of both parties’ experts (Ex. 1003 ¶ 41; Ex. 2003 ¶ 48).” slip op. at 14

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

    “‘number of the one or more station information fields in the NDPA’ found earlier in the claims by explaining that this number is the number of station information fields in the NDPA, rather than, for example, the number of a particular station information field.” Prelim. Resp. 21. Patent Owner argues “Petitioner’s construction simply removes the term ‘cardinality’ from this claim element,” and “introduces ambiguity into the claims by suggesting that the number could be either the number of station information fields or the number (or index) of the station information field directed to a station,” which is the very ambiguity “the patentee sought to avoid” during prosecution.” Id. at 20–22; see id. at 21–27. We agree with Patent Owner and find Petitioner’s arguments unpersuasive. See, e.g., Ex. 1002, 159 (Examiner stating, “The applicant proposed amending the claim to further define the process of determining a number and further defining the number as a cardinality wherein the cardinality is a number of elements in a set or group.” (emphasis added)).6” slip op. at 16

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

    “We agree with Patent Owner and find Petitioner’s arguments unpersuasive. In particular, we find Petitioner does not show sufficiently, let alone with particularity, how or why 802.11ac allegedly discloses (explicitly or inherently) the combined features of “determining” that the number of elements in the set of STA Info fields “is one,” and “in response to” that determination, transmitting first CSI feedback in response to receiving the NDP. Instead, as noted by Patent Owner (Prelim. Resp. 32), Petitioner merely contends that, because 802.11ac’s VHT SU beamforming can be performed with a single station, 802.11ac allegedly discloses sending feedback in response to determining that the number of the one or more STA Info fields in the NDPA is one. We find Petitioner’s reasoning here unpersuasive, and agree with Patent Owner and its expert that Petitioner does not explain, sufficiently and with particularity, how any disclosure in 802.11ac describes channel sounding feedback being sent or received in response to determining the number of STA Info fields. See Prelim. Resp. 31–33; Ex. 2003 ¶¶ 104–109; see also Prelim. Resp. 28–31. For the foregoing reasons, we are not persuaded that the cited evidence adequately supports Petitioner’s contention that 802.11ac discloses limitation 1.D, namely “in response to determining that the number of the one or more station information fields in the NDPA is one, transmitting first Channel State Information (CSI) feedback in response to receiving the NDP,” as recited in independent claim 1.” slip op. at 23

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,020,919
• Apple Inc. v. Masimo CorporationInstitution denied
  PTAB · Jan 30, 2023 · IPR2022-01276 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood that claims 1–30 were unpatentable, including on the asserted obviousness grounds.

  RulingsInstitution decision

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

    “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, the Preliminary Response, and the evidence of record, we determine that Petitioner does not show a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner contends that [a] person of ordinary skill in the art relating to the subject matter of the ’648 Patent as of July 3, 2008 (“POSITA”) would have been a person with a working knowledge of physiological monitoring technologies. The person would have had a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to physiological monitoring technologies. APPLE-1003, ¶¶40-41. Alternatively, the person could have also had a Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline. Id. Pet. 2. Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art. See Prelim. Resp. 10. For purposes of deciding whether Petitioner has demonstrated a reasonable likelihood of prevailing, we adopt Petitioner’s definition of a person of ordinary skill in the art, which we find consistent with the ’648 patent and the asserted prior art.” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “After consideration of the record before us, we find questionable Petitioner’s and Dr. Kenny’s assessment and reasoning as to what a skilled artisan would have understood from the teachings of Lumidigm, Scharf, and Kotanagi as proposed by Petitioner here. We find persuasive Patent Owner’s arguments that Petitioner’s and Dr. Kenny’s assessments are grounded in hindsight rather than based on due consideration of the teachings of the pertinent prior art. See, e.g., Prelim. Resp. 26–28. Dr. Duckworth’s testimony that one of ordinary skill in the art would not have combined the teachings of the prior art in the manner advocated by Petitioner further supports Patent Owner’s arguments. See, e.g., Ex. 2002 ¶¶ 163–175, 179–185.” slip op. at 19

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

    “into account the inferences and creative steps that a skilled artisan might glean from the teachings of the prior art (see, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)), one must be cognizant that “hindsight is not an available analytical mechanism to show obviousness.” See In re Omeprazole Patent Litig., 483 F.3d 1364, 1381 (Fed. Cir. 2007) (Newman, J., dissenting). Indeed, “we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017). Without the guidance provided by the claims of the ’648 patent, it is difficult to conclude that Petitioner’s postulation as to a particular structure that results from combining the teachings of Lumidigm, Kotanagi, and Scharf is based on an objective assessment of what those teachings would have conveyed to a skilled artisan. It is clear from the Petition, however, that such structural configuration is necessary as the basis for Petitioner’s approach to arriving at the structural requirements of the claims.4” slip op. at 17

  § 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,945,648
• Apple Inc. v. Masimo CorporationInstitution denied
  PTAB · Jan 30, 2023 · IPR2022-01275 · APJ Neil T Powell · IPR · Institution

  The Board denied institution on all challenged claims 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

    “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, the Preliminary Response, and the evidence of record, we determine that Petitioner does not show a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner contends that [a] person of ordinary skill in the art relating to the subject matter of the ’648 Patent as of July 3, 2008 (“POSITA”) would have been a person with a working knowledge of physiological monitoring technologies. The person would have had a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to physiological monitoring technologies. APPLE-1003, ¶¶40-41. Alternatively, the person could have also had a Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline. Id. Pet. 3–4. Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art. See Prelim. Resp. 10. For purposes of deciding whether Petitioner has demonstrated a reasonable likelihood of prevailing, we adopt Petitioner’s definition of a person of ordinary skill in the art, which we find consistent with the ’648 patent and the asserted prior art.” slip op. at 10

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

    “using the same standard used in federal district court, including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2020). According to the applicable standard, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (citations omitted). Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. America Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner argues that “[n]o formal claim constructions are necessary in this proceeding.” Pet. 3. Patent Owner contends we “should give the claim terms their ordinary and customary meaning, consistent with the specification, as a [person of ordinary skill in the art] would understand them.” Prelim. Resp. 10. We do not discern a need to construe any claim language expressly in order to determine whether Petitioner demonstrates a reasonable likelihood of prevailing.” slip op. at 11

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

    “Although it is certainly the case that an obviousness analysis may take into account the inferences and creative steps that a skilled artisan might glean from the teachings of the prior art (see, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)), one must be cognizant that “hindsight is not an available analytical mechanism to show obviousness.” See In re Omeprazole Patent Litig., 483 F.3d 1364, 1381 (Fed. Cir. 2007) (Newman, J., dissenting). Indeed, “we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017). Without the guidance provided by the claims of the ’648 patent, it is difficult to conclude that Petitioner’s postulation as to a particular structure that results from combining the teachings of Mendelson- 799, Aizawa, and Ohsaki is based on an objective assessment of what those teachings would have conveyed to a skilled artisan. It is clear from the Petition, however, that such structural configuration is necessary as the basis for Petitioner’s approach to arriving at the structural requirements of the claims.3 At the outset, we share Patent Owner’s view, and that of its declarant, Dr. Duckworth (Ex. 2002), that none of the prior art on which Petitioner relies discloses a convex protrusion with multiple openings for multiple detectors. See, e.g., Prelim. Resp 35; Ex. 2002 ¶ 76. The proposed amalgamation of prior art teachings includes, for instance, arranging a “holder” from Aizawa into a configuration that, for ill explained reasons, forms protruded portions of that holder containing multiple openings associated with photodetectors of Mendelson-799’s optical sensor in an attempt to satisfy the structural requirements of the claim. See, e.g., Pet. 19–20. In our view, however, Petitioner simply does not explain adequately why such configuration with respect to Mendelson-799’s optical sensor results from the actual teachings of the prior art.” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,945,648
• Apple Inc. v. Masimo CorporationInstitution denied
  PTAB · Jan 24, 2023 · IPR2022-01274 · APJ Josiah C Cocks · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood that claims 1–30 were obvious over the proposed prior-art combinations.

  RulingsInstitution decision

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

    “under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a).” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute this proposed level of skill. Prelim. Resp. 10. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art and the ’502 patent. 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 8

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

    “in light of the specification. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279–80 (Fed. Cir. 2017). Thus, we give claim terms their ordinary and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party offers any express construction for any claim term. See Pet. 4; Prelim. Resp. 9. We determine that all claim terms should be given their ordinary and customary meaning and that it is unnecessary to make that meaning explicit for any term.” slip op. at 9

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

    “Although it is certainly the case that an obviousness analysis may take into account the inferences and creative steps that a skilled artisan might glean from the teachings of the prior art (see, e.g., KSR , 550 U.S. at 418), one must be cognizant that “hindsight is not an available analytical mechanism to show obviousness.” See In re Omeprazole Patent Litig., 483 F.3d 1364, 1381 (Fed. Cir. 2007) (Newman, J., dissenting). Indeed, “we patches into something that is the claimed invention.” See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017). Without the guidance provided by the claims of the ’502 patent, it is difficult to conclude that Petitioner’s postulation as to a particular structure that results from combining the teachings of Lumidigm, Kotanagi, and Scharf is based on an objective assessment of what those teachings would have conveyed to a skilled artisan. It is clear from the Petition, however, that such structural configuration is necessary as the basis for Petitioner’s approach to arriving at the structural requirements of the claims.9 At the outset, we share Patent Owner’s view, and that of its declarant, Dr. Duckworth (Ex. 2002), that none of the prior art on which Petitioner relies discloses a convex protrusion with multiple openings or windows for multiple detectors. See, e.g., Prelim. Resp 28–29; Ex. 2002 ¶ 76. As discussed above, Petitioner attempts to arrive at such structure through a proposed amalgamation of prior art teachings that must include, for instance, arranging a convex protrusion with multiple openings or separate glass windows over Lumidigm’s optical sensors. In our view, however, Petitioner simply does not explain adequately why such configuration results from the actual teachings of the prior art.” slip op. at 15

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,912,502
• Apple Inc. v. Masimo CorporationInstitution denied
  PTAB · Jan 24, 2023 · IPR2022-01273 · APJ Josiah C Cocks · IPR · Institution

  Institution was denied for claims 1–30 because Apple did not show a reasonable likelihood of prevailing on either proposed obviousness ground.

  RulingsInstitution decision

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

    “Based on the record here, we conclude that Petitioner has not shown a reasonable likelihood of success based on any of the proposed grounds that involve the combined teachings of Mendelson-799, Aizawa, Ohsaki, and Scharf.12” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends the following in connection with a person of ordinary skill in the art: A person of ordinary skill in the art relating to the subject matter of the ’502 Patent as of July 3, 2008 (“POSITA”) would have been a person with a working knowledge of physiological monitoring technologies. The person would have had a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to physiological monitoring technologies. Alternatively, the person could have also had a Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline. Pet. 4 (citing Ex. 1003 ¶¶ 22–23). Resp. 10. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art and the ’502 patent. 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 8

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

    “35 U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). When applying that standard, we interpret the claim language as it would have been understood by one of ordinary skill in the art in light of the specification. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279–80 (Fed. Cir. 2017). Thus, we give claim terms their ordinary and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party offers any express construction for any claim term. See Pet. 4; Prelim. Resp. 9. We determine that all claim terms should be given their ordinary and customary meaning and that it is unnecessary to make that meaning explicit for any term.” slip op. at 9

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

    “Although it is certainly the case that an obviousness analysis may take into account the inferences and creative steps that a skilled artisan might glean from the teachings of the prior art (see, e.g., KSR , 550 U.S. at 418), one must be cognizant that “hindsight is not an available analytical mechanism to show obviousness.” See In re Omeprazole Patent Litig., 483 F.3d 1364, 1381 (Fed. Cir. 2007) (Newman, J., dissenting). Indeed, “we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017). Without the guidance provided by the claims of the ’502 patent, it is difficult to conclude that Petitioner’s postulation as to a particular structure that results from combining the teachings of Mendelson-799, Aizawa, Ohsaki, and Scharf is based on an objective assessment of what those teachings would have conveyed to a skilled artisan. It is clear from the Petition, however, that such structural configuration is necessary as the basis for” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,912,502
• Apple Inc. v. Masimo CorporationInstitution denied
  PTAB · Jan 24, 2023 · IPR2022-01272 · APJ Josiah C Cocks · IPR · Institution

  The Board denied institution because Apple had not shown a reasonable likelihood that claims 1–30 were obvious over the proposed combinations.

  RulingsInstitution decision

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

    “II. ANALYSIS A. Principles of Law A petition must show how the construed claims are unpatentable under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a).” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art relating to the subject matter of the ’501 Patent as of July 3, 2008 (“POSITA”) would have been a person with a working knowledge of physiological monitoring technologies. The person would have had a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to physiological monitoring technologies. Alternatively, the person could have also had a Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline. Pet. 4 (citing Ex. 1003 ¶¶ 40–41). Patent Owner does not dispute this proposed level of skill. Prelim. Resp. 10. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art and the ’501 patent. 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 8

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

    “C. Claim Construction We construe claims in the same manner used in a civil action under 35 U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” language as it would have been understood by one of ordinary skill in the art in light of the specification. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279–80 (Fed. Cir. 2017). Thus, we give claim terms their ordinary and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party offers any express construction for any claim term. See Pet. 4; Prelim. Resp. 9. We determine that all claim terms should be given their ordinary and customary meaning and that it is unnecessary to make that meaning explicit for any term.” slip op. at 8

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

    “patches into something that is the claimed invention.” See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017). Without the guidance provided by the claims of the ’501 patent, it is difficult to conclude that Petitioner’s postulation as to a particular structure that results from combining the teachings of Lumidigm, Kotanagi, and Scharf is based on an objective assessment of what those teachings would have conveyed to a skilled artisan. It is clear from the Petition, however, that such structural configuration is necessary as the basis for Petitioner’s approach to arriving at the structural requirements of the claims.9” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,912,501
• Apple Inc. v. Masimo CorporationInstitution denied
  PTAB · Jan 24, 2023 · IPR2022-01271 · APJ Josiah C Cocks · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood that claims 1–30 were obvious over the proposed prior-art combinations.

  RulingsInstitution decision

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

    “III. CONCLUSION Petitioner has not shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. IV. ORDER In consideration of the foregoing, it is ORDERED that Petitioner’s request for an inter partes review of claims 1–30 of the ’501 patent is denied and no trial is instituted.” slip op. at 20

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

    “Dr. Duckworth (Ex. 2002), that none of the prior art on which Petitioner relies discloses a convex protrusion with multiple openings for multiple detectors. See, e.g., Prelim. Resp 31; Ex. 2002 ¶ 76. The proposed amalgamation of prior art teachings includes, for instance, arranging a “holder” from Aizawa into a configuration that, for ill explained reasons, forms protruded portions of that holder containing multiple openings associated with photodetectors of Mendelson-799’s optical sensor in an attempt to satisfy the structural requirements of the claim. See, e.g., Pet. 21– 22. In our view, however, Petitioner simply does not explain adequately why such configuration with respect to Mendelson-799’s optical sensor results from the actual teachings of the prior art.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner

    “into account the inferences and creative steps that a skilled artisan might glean from the teachings of the prior art (see, e.g., KSR, 550 U.S. at 418), one must be cognizant that “hindsight is not an available analytical mechanism to show obviousness.” See In re Omeprazole Patent Litig., 483 F.3d 1364, 1381 (Fed. Cir. 2007) (Newman, J., dissenting). Indeed, “we patches into something that is the claimed invention.” See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017). Without the guidance provided by the claims of the ’501 patent, it is difficult to conclude that Petitioner’s postulation as to a particular structure that results from combining the teachings of Mendelson-799, Aizawa, and Ohsaki is based on an objective assessment of what those teachings would have conveyed to a skilled artisan. It is clear from the Petition, however, that such structural configuration is necessary as the basis for Petitioner’s approach to arriving at the structural requirements of the claims.11” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art and the ’501 patent. 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 9

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,912,501
• Apple Inc. v. Shenzhen Rfcyber Asset Management, LLPInstitution denied
  PTAB · Jan 23, 2023 · IPR2022-01240 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution on all challenged claims because Apple did not show a reasonable likelihood that Hayaashi and Prisma rendered the claims obvious.

  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) (2022). 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 any challenged claim on any asserted ground.” slip op. at 2

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

    “sufficiently that the proposed combination of Hayaashi and Prisma would incorporate Prisma’s JCVM. See id. at 15–19. Instead, Petitioner asserts that one of ordinary skill in the art “would have simply needed to modify Hayaashi’s smart IC card chip 171 to incorporate Prisma’s core smart card elements, including CALC/OS and support for third-party e-purse applets.” Id. at 17 (citing Ex. 1003 ¶¶ 158–167). More specifically, Petitioner provides an annotated diagram, reproduced below, to identify the smart card components from Prisma to be incorporated into Hayaashi’s smart IC card chip 171. Id. at 18 (citing Ex. 1005, 9). In this annotated diagram, Petitioner adds red borders to the three boxes labeled “e-purse,” “CALC,” and “OS,”5 thereby 5 “CALC” is Prisma’s Card and Application LifeCycle manager, and “OS” is the card’s operating system. Ex. 1005, 6, 9. Hayaashi. As such, Petitioner does not specify Prisma’s JCVM as component that is incorporated into Hayaashi. To the extent Petitioner’s reference to “support for third-party e-purse applets” is meant to include Prisma’s JCVM, such a broad statement that fails to specifically mention Prisma’s JCVM lacks sufficient specificity to suggest that it would have been obvious to modify Hayaashi to include Prisma’s JCVM. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). For these reasons, we determine that the Petition fails to explain adequately why one of ordinary skill in the art would have been led to incorporate Prisma’s JCVM into Hayaashi.” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “purse applet and provides a response the e-purse applet is configured to expect” as claimed because the JCVM ensures that an applet operates as expected and that the applet’s requests are handled as the applet expects regardless of the underlying hardware platform. Ex. 1003 ¶ 178. This testimony, however, is entitled to little weight because Mr. Smith fails to provide the underlying basis for his opinion. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail). The assertion that “the JCVM ensures that an applet operates as expected” is a conclusory statement not supported sufficiently by any objective evidence or analysis. Accordingly, we do not find Mr. Smith’s testimony of this point persuasive. Moreover, neither the Petition nor Mr. Smith explains sufficiently how Hayaashi or Prisma disclose providing an e-purse applet that the JCVM would interact with in the manner claimed. For the above reasons, we determine Petitioner has not met its burden” slip op. at 15

  § 103 obviousnesscites Graham
  Patents in suitUS 8,118,218
• Apple Inc. v. Rfcyber Corp.Institution denied
  PTAB · Jan 23, 2023 · IPR2022-01241 · APJ Kevin W Cherry · IPR · Institution

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

  RulingsInstitution decision

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

    “We agree with Patent Owner that Petitioner has failed to show a reasonable likelihood that the combination accounts for limitation 1(f). As Patent Owner states, neither Prisma nor Hayaashi contain any express discussion of transaction logs, let alone “causing an emulator” to do so “after an authenticity of the commands is verified by the e-purse applet.” To fill this hole in the combination, Petitioner leans heavily on what it contends a person of ordinary skill “would have understood” about the modified system. See, e.g., Pet. 38. It is unclear whether Petitioner relying on inherency, some modification to the combination, or some combination with other knowledge of a person of ordinary skill to arrive at this limitation. But setting aside this problem for a moment, we find that Petitioner has failed to show sufficiently that what it contends is the emulator, the Java Card Virtual Machine, updates the logs, and more importantly, whether the logs are updated after the e-purse applet verifies the commands. Again, there is no express disclosure in Prisma of these components performing these actions. Instead, Petitioner relies on the testimony of Mr. Smith to show that the combination accounts for this limitation. See Pet. 37–38 (citing Ex. 1003 ¶¶ 208–215). But we find Mr. Smith’s testimony to be insufficient because it relies lacks adequate support for his assertions about what he contends a person of ordinary skill “would have understood” about how the hypothetical third-party e-purse application would have operated. See, e.g., Ex. 1003 ¶¶ 213–214. Mr. Smith’s contentions about what a person of ordinary skill are supported only with citations to vague passages in the Prisma reference that merely mention the use of Application for Secure Personal Identification and Communication (ASPIC) and public key infrastructure (PKI). See id. ¶ 213 (citing Ex. 1005, 21–22). Mr. Smith gestures to these passages, but then goes far beyond what those passages disclose without adequately tying his contentions to the actual disclosures and additional supporting evidence. See id. ¶¶ 213–214. Without more explanation and support, we find this evidence inadequate to show that the combination would actually suggest this limitation.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the Declaration testimony of Mr. Smith, Petitioner contends that an ordinarily skilled artisan for the ’855 patent “would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least one year of experience in the field of mobile payment technology. Additional pertinent education might substitute for the requisite experience and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 34–36). Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art,” but only for its Preliminary Response. Prelim. Resp. 8. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’855 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 8

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

    “Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “reasonable likelihood that the combination accounts for limitation 1(f). As Patent Owner states, neither Prisma nor Hayaashi contain any express discussion of transaction logs, let alone “causing an emulator” to do so “after an authenticity of the commands is verified by the e-purse applet.” To fill this hole in the combination, Petitioner leans heavily on what it contends a person of ordinary skill “would have understood” about the modified system. See, e.g., Pet. 38. It is unclear whether Petitioner relying on inherency, some modification to the combination, or some combination with other knowledge of a person of ordinary skill to arrive at this limitation. But setting aside this problem for a moment, we find that Petitioner has failed to show sufficiently that what it contends is the emulator, the Java Card Virtual Machine, updates the logs, and more importantly, whether the logs are updated after the e-purse applet verifies the commands. Again, there is no express disclosure in Prisma of these components performing these actions. Instead, Petitioner relies on the testimony of Mr. Smith to show that the combination accounts for this limitation. See Pet. 37–38 (citing Ex. 1003 ¶¶ 208–215). But we find Mr. Smith’s testimony to be insufficient because it relies lacks adequate support for his assertions about what he contends a person of ordinary skill “would have understood” about how the hypothetical third-party e-purse application would have operated. See, e.g., Ex. 1003 ¶¶ 213–214. Mr. Smith’s contentions about what a person of ordinary skill are supported only with citations to vague passages in the Prisma reference that merely mention the use of Application for Secure Personal Identification and Communication (ASPIC) and public key infrastructure (PKI). See id. ¶ 213 (citing Ex. 1005, 21–22). Mr. Smith gestures to these passages, but then goes far beyond what those passages disclose without adequately tying his contentions to the actual disclosures and additional supporting evidence. See id. ¶¶ 213–214. Without more explanation and support, we find this evidence inadequate to show that the combination would actually suggest this limitation. The lack of clarity of what theory the Petition is relying for this limitation exacerbates this problem. Because the references are completely silent as to “transaction logs,” let alone when, how, or by what they are updated, it is important for Petitioner to explain how it is filling that gap. Instead, Petitioner and Mr. Smith venture far beyond the disclosure of the actual references to what they contend a person of ordinary skill “would have known.” See Pet. 36–38; Ex. 1003 ¶¶ 208–215. At some points, Petitioner appears to attempt to rely on the underlying Prisma Proton system, not just the Prisma reference relied on in this ground. See Pet. 38 (discussing what was known about the Prisma Proton system). But 35 U.S.C. § 311(b) limits inter partes review as allowed “only on the basis of prior art consisting of patent or printed publications.” We decline to use the actual system to fill in gaps in the printed publication. Focusing our attention on the Prisma reference itself, we are only left with Mr. Smith’s conjectures about what a person of ordinary skill “would have known” without sufficient reasoning of how a person of ordinary skill would have combined this knowledge with the reference in precisely this way to arrive at the claim limitation. A rejection based on obviousness requires articulated reasoning with rational underpinning. See KSR, 550 U.S. at 418. In this case, having carefully reviewed the evidence currently presented, we cannot say that Petitioner has presented sufficient articulated reasoning to establish a reasonable likelihood of prevailing in showing that this limitation would have been obvious in view of the combination presented. Because all of the grounds and challenged claims contain a similar limitation to limitation 1(f) and rely on similar reasoning, we determine that Petitioner has also failed to establish a reasonable likelihood of prevailing on those grounds as well.” slip op. at 15

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,448,855
• Arconic Technologies LLC v. Novelis Inc.Rehearing denied
  PTAB · May 2, 2022 · DER2018-00004 · APJ James T Moore · DER · Rehearing

  The Board denied Arconic’s rehearing request, leaving in place denial of institution because it had not shown sufficiently corroborated prior conception for derivation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “documents cited by Petitioner for each of the six steps of claim 22 and explained why they were insufficient to corroborate Mr. Marinelli’s testimony. Id. at 16–22. We concluded that “[s]ubstantial evidence does not support Petitioner’s assertion that its inventors conceived of the inventions allegedly communicated to Respondent’s inventors (i.e., the six-step processes of each of Respondent’s claims)” and denied institution of a derivation proceeding. Id. at 23.” slip op. at 4

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “[w]e are not informed as to which of Mr. Marinelli, Mr. Dennis, and Mr. Shoemaker conceived what portions of the invention of claim 22 or how the three individuals jointly conceived of the recited process. Petitioner provides no explanation as to what the contributions of each individual were (other than that they were all “involved” in the development of the A951 process), the circumstances surrounding those contributions, or even when conception occurred. Indeed, Mr. Marinelli testifies that Petitioner began development of chromium-free aluminum pretreatments that provided the same performance characteristics of a chromate conversion coating in 1992 and that the development work spanned “the next two decades,” but does not explain when during that time he conceived of the process of claim 22 with Mr. Dennis and Mr. Shoemaker. Again, there is no meaningful information provided about what work was done by whom or the circumstances under which the claimed invention was conceived, other than a general assertion that it was Petitioner undertaking the work.” slip op. at 3

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part

    “a trial, a party may file a motion to expunge confidential information from the record.” 37 C.F.R. § 42.56. The Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 21–22, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”), provides: Confidential information that is subject to a protective order ordinarily would become public 45 days after denial of a petition to institute a trial or 45 days after final judgment in a trial. There is an expectation that information will be made public where the existence of the information is referred to in a decision to grant or deny a request to institute a review or is identified in a final written decision following a trial. A party seeking to maintain the confidentiality of information, however, may file a motion to” slip op. at 13

  None
  Patents in suitUS 11,807,942

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.