- Truist Bank v. United Services Automobile AssociationInstitution deniedPTAB · May 16, 2023 · IPR2023-00143 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious, failing to establish motivation to combine Acharya and King.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Thus, we determine that Petitioner has failed to show that a skilled artisan would have been motivated to combine the teachings of Acharya and King as set forth in sole independent claim 1 of the ’432 patent and as proposed in the Petition. On this basis, Petitioner has failed to show a reasonable likelihood of prevailing with respect to any of the claims challenged in the Petition. We, therefore, deny the Petition and do not institute inter partes review. III. CONCLUSION For the reasons discussed above, we determine that Petitioner has not demonstrated a reasonable likelihood of showing at least one of the claims challenged in the Petition would have been obvious.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Pet. 14–15. These arguments speak to whether a skilled artisan could have made the substitution of a “mobile device” for the RTC disclosed in Acharya but fail to provide a reason as to why a skilled artisan would have been motivated to make the substitution. Belden Inc. v. Berk-Tec LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Petitioner acknowledges that Acharya requires devices that “would have operated from the convenience of a customer’s home.” Pet. 14. As Petitioner acknowledges that Acharya requires operating from a customer’s home, there would seem to be no reason to use a “mobile device.”” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“Pet. 5 (citing Doermann Decl. ¶¶ 24–26). “For the purposes of this Preliminary Response only, Patent Owner applies the skill level of a [POSA] proposed by Petitioner,” but “may propose a different level of skill in the art in the event that the Board institutes review.” Prelim. Resp. 22. Petitioner’s proposal is consistent with the technology described in the Specification of the ’432 patent and the cited prior art. In order to determine whether Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims, we adopt Petitioner’s proposed level of skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “the Board need not construe any terms[] because the claims are invalid under any reasonable interpretation.” Pet. 7 (citing Ex. 1003 (Doermann Decl.) ¶¶ 27–31). “Patent Owner does not take any position regarding claim construction at this stage in the proceedings.” Prelim. Resp. 22. We agree with Petitioner that no claim construction is necessary to make this decision on institution. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,482,432 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Tot Power Control, S.L.Institution deniedPTAB · May 2, 2023 · IPR2022-01536 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because neither asserted obviousness ground showed a reasonable likelihood of establishing claims 1–12 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the parties’ briefing and the evidence of record, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of claims 1–12 of the ’865 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the alleged invention of the ’865 patent “would have had at least a Bachelor’s degree in computer science, electrical engineering, computer engineering, or related field, with 2-3 years of experience in telecommunication systems and knowledge of telecommunication standards, with superior education compensating for less work experience.” Pet. 18 (citing Ex. 1003 ¶ 38). Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 20–21. On the present record, we determine that Petitioner’s proposed level of ordinary skill in the art is consistent with the ’865 patent and asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Therefore, we adopt Petitioner’s proposal for purposes of deciding whether to institute inter partes review, except that we do not include the qualifier “at least,” which would expand the required amount of education and experience indefinitely.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes a construction for any claim term. Petitioner contends that no claim terms require express construction for purposes of applying the prior art. Pet. 17–18. Patent Owner submits that, at this stage of the proceeding, we should adopt the ordinary and customary meaning of the claim terms. Prelim. Resp. 21. For purposes of this decision, we determine that no claim terms require express construction. 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 reached
“received (SIRrec) based on a data signal (107, 108) received from a base station (102, 103) or mobile station (104).” Ex. 1001, 8:48–50. For this limitation, which relates to closed (inner) loop power control, Petitioner relies on a combination of Laakso and TS214. Pet. 35. First, Petitioner contends that Laakso discloses closed loop power control in WCDMA. Id. (citing Ex. 1005, 2:14–23, 8:28–9:8, 9:20–30; Ex. 1003 ¶ 105). Petitioner also contends that a person of ordinary skill in the art would have been aware of closed loop power control standards, such as TS214, which require estimating SIR based on a data signal received from a base station or mobile station. Id. (citing Ex. 1006, 12–15 (§ 5.1.2.2), 49 (Annex B.2); Ex. 1003 ¶ 105). Petitioner further contends that a person of ordinary skill in the art would have been motivated to combine Laakso’s outer loop power control success. Id. (citing Ex. 1003 ¶ 105); id. at 29–33 (citing Ex. 1003 ¶¶ 92–101) (addressing motivation to combine Laakso and TS214).” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,532,865 - PTAB · Mar 22, 2023 · IPR2022-01344 · APJ Barbara A Parvis · IPR · Institution
Institution was denied for claims 3–11 because the Petition did not show a reasonable likelihood of proving obviousness over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Inter partes review shall not be instituted unless the Board decides that the information presented in the petition demonstrates that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.” 37 C.F.R. § 42.108(c) (emphasis added). “The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence.” Id. (emphasis added). We, therefore, consider the arguments and evidence presented in the Petition, including the testimony of Dr. Layton, as well as the arguments and evidence in the Preliminary Response, including the testimony of Dr. Stone, in determining what the drawings of Christensson would have conveyed to a person having ordinary skill in the art. slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for patent owner
“We find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we, therefore, do not adopt that aspect of the proposal. We agree with Patent Owner that Petitioner has not made a sufficient showing regardless of which definition we adopt. Accordingly, for purposes of this Decision, with the exception of the “at least” terminology noted above, we use Petitioner’s assessment of the level of skill for one of ordinary skill in the art in our analysis below.” slip op. at 10
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petition, without further testimony (id.) does not remedy the deficiency. Dr. Layton’s Declaration does not disclose facts or data that Dr. Layton relies on in forming his opinion that the yellow highlighted circle illustrates opening 26h and the blue highlighted circle illustrates opening 30h. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Dr. Stone’s testimony that “Figure 7 is a bottom view of the Christensson connector, and Christensson could be illustrating relative depth of the openings in the housing and electrical contact member” (Ex. 2001 ¶ 146) is consistent with the illustration of Figure 7 and the related text. Ex. 1008, 3:5, Fig. 7. Also, Dr. Stone’s testimony that a person having ordinary skill in the art would not have understood Figure 7 of Christensson “as clearly illustrating the opening in the electrical contact being any larger or smaller than the opening in the housing” (Ex. 2001 ¶ 146) also is consistent with the illustration of Figure 7 and the related text. Ex. 1008, 6:34–39, Fig. 7. We, therefore, credit and give significant weight to the testimony of Dr. Stone regarding Figure 7 (Ex. 2001 ¶ 146) over the testimony of Dr. Layton (Ex. 1002 ¶¶ 88–89) because we find that Dr. Stone’s testimony is consistent with Christensson’s disclosures and we find that Dr. Layton’s testimony (Ex. 1002 ¶¶ 88–89) is conclusory. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–16 (Aug. 24, 2002) (precedential). As a result, we find Figure 7 of Christensson does not describe element 3.3, i.e., “having a second opening disposed therein, the second opening disposed substantially concentrically to the first opening, wherein the perimeter of the” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“first opening 26h and second opening 30h is consistent with and supported by the text of Christensson. Claim 3, however, requires “wherein the perimeter of the second opening is less than the perimeter of the first opening” and that requirement is not supported by the quote of Christensson relied on by Petitioner. Contrary to Petitioner’s argument (Pet. 28–29), the quote of Christensson describes only “oblong opening 26h” and “similarly shaped opening 30h.” Ex. 1008, 6:34–39 (emphasis added). Petitioner does not emphasize the portion of the quote of Christensson that describes opening 26h as “slightly larger at its forward end.” Ex. 1008, 6:34–39. Also, Petitioner relies on the entirety of opening 26h as meeting the 28–29. For completeness, however, we note that the forward end portion of the first opening does not satisfy Petitioner’s construction of “first opening,” which is “the aperture, or a hole extending through the bottom wall of the housing from the bottom surface of the housing to the inner surface of the bottom wall that is sized to allow a press stud to extend therethrough.” Pet. 15 (citing Ex. 1002 ¶ 49). Accordingly, Petitioner’s arguments regarding the size of the perimeter of Christensson’s second opening are not supported by the quote of Christensson. Neither Petitioner nor Dr. Layton rely on any other text in Christensson for showing element 3.3. Pet. 28–30; Ex. 1002 ¶¶ 88–89.” slip op. at 17
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,038,484 - PTAB · Mar 9, 2023 · IPR2022-01343 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4–11, 13, 14, 16, and 17 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Inter partes review shall not be instituted unless the Board decides that the information presented in the petition demonstrates that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.” 37 C.F.R. § 42.108(c) (emphasis added). “The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence.” Id. (emphasis added). We, therefore, consider the arguments and evidence presented in the Petition, including the testimony of Dr. Layton, as well as the arguments and evidence in the Preliminary Response, including the testimony of Dr. Stone, in determining what the drawings of Christensson would have conveyed to a person having ordinary skill in the art. We give credit and significant weight to the testimony of Dr. Stone regarding Figure 3 (Ex. 2001 ¶¶ 153–154) over the testimony of Dr. Layton (Ex. 1002 ¶¶ 93–94) because we find that Dr. Stone’s testimony is consistent with Christensson’s disclosures and we find that Dr. Layton’s testimony (Ex. 1002 ¶¶ 93–94) is conclusory. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–16 (Aug. 24, 2002) (precedential). For instance, consistent with Patent Owner’s argument and Dr. Stone’s testimony, Figure 3 does not include reference number 30h. Ex. 1008, Fig. 3. Additionally, Dr. Layton testifies that the “second opening” is “defined by the light blue box,” but Dr. Layton’s testimony in his Declaration does not disclose facts or data that Dr. Layton relies on in forming his opinion that second opening 30h is the sliver in Figure 3 highlighted in blue. Ex. 1002 ¶ 94. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65 (a). slip op. at 21
- Skill levelSkill level board ownDecided for patent owner
“We find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we, therefore, do not adopt that aspect of the proposal. We agree with Patent Owner that Petitioner has not made a sufficient showing regardless of which definition we adopt. Accordingly, for purposes of this Decision, with the exception of the “at least” terminology noted above, we use Petitioner’s assessment of the level of skill for one of ordinary skill in the art in our analysis below.” slip op. at 10
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We give credit and significant weight to the testimony of Dr. Stone regarding Figure 3 (Ex. 2001 ¶¶ 153–154) over the testimony of Dr. Layton (Ex. 1002 ¶¶ 93–94) because we find that Dr. Stone’s testimony is consistent with Christensson’s disclosures and we find that Dr. Layton’s testimony (Ex. 1002 ¶¶ 93–94) is conclusory. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–16 (Aug. 24, 2002) (precedential). For instance, consistent with Patent Owner’s argument and Dr. Stone’s testimony, Figure 3 does not include reference number 30h. Ex. 1008, Fig. 3. Additionally, Dr. Layton testifies that the “second opening” is “defined by the light blue box,” but Dr. Layton’s testimony in his Declaration does not disclose facts or data that Dr. Layton relies on in forming his opinion that second opening 30h is the sliver in Figure 3 highlighted in blue. Ex. 1002 ¶ 94. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65 (a).” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“first opening 26h and second opening 30h is consistent with and supported by the text of Christensson. Claim 1, however, requires “a second opening smaller than and disposed at least partially within the first opening” and those requirements are not supported by the quote of Christensson relied on by Petitioner. Contrary to Petitioner’s argument that Christensson describes that the second opening is smaller than the first opening (Pet. 28–29), the quote of Christensson describes only “oblong opening 26h” and “similarly shaped opening 30h.” Ex. 1008, 6:34–39 (emphasis added). Contrary to Petitioner’s argument that Christensson describes that the second opening is “disposed at least partially within the first opening” (Pet. 28–29), the quote of Christensson describes that opening 30h is “[a]ligned above” opening 26h. Ex. 1008, 6:34–39 (emphasis added). Petitioner does not emphasize the portion of the quote of Christensson that describes opening 26h as “slightly larger at its forward end.” Ex. 1008, 6:34–39. Also, Petitioner relies on the entirety of opening 26h as meeting the “first opening” limitation, not just the forward end portion. See, e.g., Pet. 29. For completeness, however, we note that the forward end portion of the first opening does not satisfy Petitioner’s construction of “first opening,” which is “the aperture, or hole extending through the bottom wall of the housing from the bottom surface of the housing to the inner surface of the bottom wall that is sized to allow a press stud to extend therethrough.” Pet. 15 (citing Ex. 1002 ¶ 49). Accordingly, Petitioner’s arguments regarding the size and position of Christensson’s second opening are not supported by the quote of Christensson. Neither Petitioner nor Dr. Layton rely on any other text in Christensson for showing element 1.3. Pet. 28–30; Ex. 1002 ¶¶ 93–94.” slip op. at 18
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,795,004 - PTAB · Dec 27, 2022 · IPR2022-01147 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted reference combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“at least a bachelor of science in electrical engineering, computer engineering, computer science, or a related discipline, with at least two years of relevant experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 4 (citing Ex. 1003 ¶ 22). Petitioner also asserts that “[a]dditional education or industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. Patent Owner adopts Petitioner’s proposed level of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 6–7. To determine whether to institute, we also apply Petitioner’s proposed definition.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Construction We need only construe terms that are in controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6
- Expert testimonyPetitioner expert discountedOther
“The closest that Petitioner comes to addressing the recited VAD with Weinstein is by stating that “[a] POSITA would have understood that ‘there is no coupling of the desired signal into the reference sensor, i.e., when the actual coupling system H21 is zero,’ occurs when the desired signal, e.g., speech, is absent.” Id. at 25 (citing Ex. 1003 ¶ 92). Notably, the only support for this conclusion is the Kenny Declaration, which simply repeats this statement verbatim without any citation to the evidence of record. Compare id., with Ex. 1003 ¶ 92. We agree with Patent Owner that the “conclusion is wholly unsupported by evidence.” PO Resp. 12. And “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). But, even assuming Petitioner’s conclusion is correct and crediting Dr. Kenny’s testimony, the Petition does not explain sufficiently how a VAD signal in the Hietanen-Burnett combination is related to the period in which speech is alleged to be absent in Weinstein. See Pet. 25.” slip op. at 12
Claim construction§ 103 obviousnessPatents in suitUS 8,019,091 - Google LLC v. Jawbone Innovations, LLCInstitution deniedPTAB · Nov 28, 2022 · IPR2022-00888 · APJ Steven M Amundson · IPR · Institution
The Board denied institution: Petitioner failed to show a reasonable likelihood of unpatentability for claims 1–13, and trying claim 42 alone would be inefficient.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“institution that Elko discloses a “first virtual microphone” according to claim 1 and Petitioner does not rely on Boll or Buck for teaching a “first virtual microphone” according to claim 1, Petitioner does not establish sufficiently for purposes of institution that the combined disclosures in Elko, Boll, and Buck teach claim 1’s subject matter. See Pet. 23–25; Prelim. Reply 1–2; Ex. 1007 ¶¶ 55–58; supra § IV.D.4(a). Hence, Petitioner does not demonstrate a reasonable likelihood of prevailing in proving claim 1 unpatentable under § 103(a) as obvious over Elko, Boll, and Buck.” slip op. at 35
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“for purposes of institution that Elko discloses a “first virtual microphone” according to claim 1. See Pet. 23–25, 36–38; Prelim. Reply 1–2; Ex. 1007 ¶¶ 55–58, 81–82. For forming the “first virtual microphone” and the “second virtual microphone” claim 1 recites three different signals: “a first signal,” “a second signal,” and “a first intermediate signal” formed by applying a filter to “the first signal.” Ex. 1001, 37:5–9, 37:16–19. “Different claim terms are presumed to have different meanings.” Bd. of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008); see Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,” slip op. at 30
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“for purposes of institution that Elko discloses a “first virtual microphone” according to claim 1. See Pet. 23–25, 36–38; Prelim. Reply 1–2; Ex. 1007 ¶¶ 55–58, 81–82. For forming the “first virtual microphone” and the “second virtual microphone” claim 1 recites three different signals: “a first signal,” “a second signal,” and “a first intermediate signal” formed by applying a filter to “the first signal.” Ex. 1001, 37:5–9, 37:16–19. “Different claim terms are presumed to have different meanings.” Bd. of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008); see Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,” slip op. at 30
- Other 314aInstitution denied discretionary otherDenied
“the ’213 patent. Pet. 3, 23–83. As discussed above, Petitioner fails to satisfy the “reasonable likelihood” institution standard for four of the five challenges and thirteen of the fourteen challenged claims. See supra §§ IV.D–IV.E. At best, Petitioner satisfies the “reasonable likelihood” institution standard for only one of the five challenges and only one of the 6 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. fourteen challenged claims. See supra § IV.F. These circumstances weigh in favor of exercising our discretion under § 314(a) to deny institution. See, e.g., Netscout Sys., Inc. v. Longhorn HD LLC, IPR2021-01258, Paper 11 at 23–24 (PTAB Feb. 10, 2022) (exercising discretion to deny institution); Sling TV L.L.C. v. Uniloc 2017 LLC, IPR2019-01391, Paper 7 at 25–27 (PTAB Feb. 25, 2020) (exercising discretion to deny institution).” slip op. at 38
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,321,213 - Google LLC v. Jawbone Innovations, LLCInstitution deniedPTAB · Nov 14, 2022 · IPR2022-00889 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Google did not show a reasonable likelihood of proving claims 29–44 obvious, principally because it did not adequately explain why an artisan would add a delay to Elko’s first microphone …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood that it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“microphone channel to the first microphone channel when implementing the dual-filter alternative suggested by Elko.14 Pet. 29–31. However, Petitioner fails to sufficiently explain why an ordinary artisan would have been motivated to implement that dual-filter alternative by relocating the delay to the first microphone channel. Although Petitioner states that its proposed modification “would account for sound propagation from different directions in the dual filter embodiment” (id. at 30–31), this is conclusory and insufficiently explained, particularly given Elko’s disclosure. Petitioner is correct that Elko suggests a dual-filter alternative. Ex. 1002, 11:15–20. Specifically, after describing the Figure 10 embodiment, Elko states that “[i]t might be desirable to filter both input channels to exclude signals that are out of the desired frequency band.” Id. at 11:15–16. Specifically, Elko suggests including “two adaptive filters like filter 1020 shown in FIG. 10, to adjust the two sensing microphones,” as well as a third microphone to serve as the reference. Id. at 11:16–20. But Petitioner fails to sufficiently explain why an ordinary artisan would have relocated delay 1022 when implementing this alternative. Petitioner’s refers to a need to “account for sound propagation from different directions” (Pet. 30–31), but Elko’s adaptive filter already does this. Elko specifically states that filter 1020 accounts for changes in the location of the desired source signal. See Ex. 1002, 11:21–24 (“[U]sing an adaptive filter also allows for the compensation of modal variation in the orientation of the array relative to the desired source.”);15 see also id. at 10:34–55 (noting that” slip op. at 15
- Expert testimonyPetitioner expert discountedOther
“Finally, although Petitioner relies upon Dr. Vipperman’s declaration, the cited passages simply mirror the language in the Petition. Compare Ex. 1007 ¶¶ 63–66, with Pet. 29–31. As a result, Dr. Vipperman’s testimony does not remedy the Petition’s deficiencies. 37 C.F.R § 42.65(a) (conclusory testimony is entitled to little or no weight); cf. TQ Delta, 942 F.3d at 1358 (“Conclusory expert testimony does not qualify as substantial evidence.”).” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’611 patent and the asserted prior art. 8 The current record does not include allegations or evidence of objective indicia of nonobviousness. This definition is also supported by the testimony of Dr. Vipperman. See Ex. 1007 ¶ 23.” slip op. at 6
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,326,611 - Solaredge Technologies, Inc v. Fronius International GmbHInstitution deniedPTAB · Oct 21, 2022 · IPR2022-00849 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–7 obvious over the asserted prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We find Petitioner’s challenges fail because the same structures cannot be both the claimed housing and the contact-making system. The atissue claim language supports that the housing and contact-making system are distinct structures. “Where,” as here, “a claim lists elements separately, the clear implication of the claim language is that those elements are distinct component[s] of the patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010). Beyond listing the housing and contact-making systems separately, claim 1 recites “wherein in the upper and lower housing parts, parts of the contact-making system are arranged.” Ex. 1001, 7:29–30. Because a structure cannot be arranged in itself, the housing and contact-making system must be distinct. Beyond the claim’s language, the ’919 patent’s specification also consistently describes the housing and contact-making structures as distinct. See, e.g., Ex. 1001, Figs. 2, 3, 5:15–20, 6:32–37, 6:48–49, 6:62–64. Because Petitioner does not identify separate structures in the asserted references for the claimed housing and contact-making system, Petitioner has not shown a reasonable likelihood that it would prevail in establishing claims 1–7 would have been obvious over the asserted prior art.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We find Petitioner’s challenges fail because the same structures cannot be both the claimed housing and the contact-making system. The atissue claim language supports that the housing and contact-making system are distinct structures. “Where,” as here, “a claim lists elements separately, the clear implication of the claim language is that those elements are distinct component[s] of the patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010). Beyond listing the housing and contact-making systems separately, claim 1 recites “wherein in the upper and lower housing parts, parts of the contact-making system are arranged.” Ex. 1001, 7:29–30. Because a structure cannot be arranged in itself, the housing and contact-making system must be distinct. Beyond the claim’s language, the ’919 patent’s specification also consistently describes the housing and contact-making structures as distinct. See, e.g., Ex. 1001, Figs. 2, 3, 5:15–20, 6:32–37, 6:48–49, 6:62–64. Because Petitioner does not identify separate structures in the asserted references for the claimed housing and contact-making system, Petitioner has not shown a reasonable likelihood that it would prevail in establishing claims 1–7 would have been obvious over the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION We find no claim terms require express construction for us to determine whether or not to institute inter partes review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“industry experience.” Pet. 7. Further, “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Id. (citing Ex. 1003 ¶ 38). Patent Owner does not contest Petitioner’s formulation. See generally Prelim. Resp. At this stage in the proceeding, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which appears commensurate with the level of ordinary skill as reflected in the asserted prior art and the ’919 patent.” slip op. at 5
Claim construction§ 103 obviousnessPatents in suitUS 9,137,919 - Microsoft Corporation v. Throughputer, Inc.Institution deniedPTAB · Oct 11, 2022 · IPR2022-00758 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution on claims 1–23 because Sandstrom-1 was not prior art in light of the patent’s priority date, so Petitioner did not meet the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’242 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Office was satisfied that the ’731 application, which had issued as the ’953 patent, properly claimed priority to the preceding applications in the 2012 line, and that all intermediate applications also included proper priority claims. It thus follows that, absent any defects in the priority claims of the subsequent applications, including the application that issued as the ’242 patent, the remedial steps taken by the applicant and approved by the Office during prosecution and post-issuance of the ’953 patent also render proper the priority claims of the subsequent applications. Petitioner has not persuasively pointed us to any additional defects not addressed previously by the Office in the priority chain of the ’242 patent in the 2012 line. Nor has Petitioner identified legal authority for the Board to revisit the January 2021 Decision’s finding that the priority claims of the ’731 application met the relevant statutory and regulatory criteria. See Ex. 1008, 4 (“[T]he reference as set forth in the [second corrected ADS] filed March 19, 2018 complies with 35 U.S.C. §§ 120 and 119(e) and 37 [C.F.R.] §§ 1.78(d)(2) and 1.78(a)(3).”).” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“For these reasons, Petitioner has not persuaded us that there is a break in the priority chain of the ’242 patent in the 2012 line. As such, we find that the ’242 patent is entitled to a priority date at least as early as June 8, 2012. See Ex. 1001, code (60). Accordingly, we determine that Sandstrom-1 does not qualify prior art under pre-AIA 35 U.S.C. § 102(a) or (b) because Sandstrom-1’s publication date of May 29, 2014, is after the June 8, 2012, priority date from the 2012 line.6 Ex. 1001, code (60); Ex. 1004, code (43).” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“in the priority chain of the ’242 patent in the 2012 line. As such, we find that the ’242 patent is entitled to a priority date at least as early as June 8, 2012. See Ex. 1001, code (60). Accordingly, we determine that Sandstrom-1 does not qualify prior art under pre-AIA 35 U.S.C. § 102(a) or (b) because Sandstrom-1’s publication date of May 29, 2014, is after the June 8, 2012, priority date from the 2012 line.6 Ex. 1001, code (60); Ex. 1004, code (43).” slip op. at 22
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,430,242 - Google LLC v. Jawbone Innovations, LLCInstitution deniedPTAB · Oct 6, 2022 · IPR2022-00604 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–28 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret claim terms using “the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under the principles set forth by our reviewing court, the “words of a claim ‘are generally given their ordinary and customary meaning,’” as would be 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 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Petitioner contends that no terms require construction. Pet. 7. Patent Owner states that “claim construction is not required to resolve any issues” at this stage. Prelim. Resp. 6. We agree that, in this Decision, we need not address the construction of any claim terms or phrases. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“As a result, even if we accept Petitioner’s contentions—i.e., assuming that the “first virtual microphone” is output by the difference block and the “second virtual microphone” is output by the sum block—Petitioner fails to sufficiently show that Elko discloses forming the first virtual microphone by combining a first signal and a second signal, where the second virtual microphone is formed by summing a first intermediate signal (generated by applying a filter to the first signal) and the second signal, as claim 1 requires. Instead, both of the alleged “virtual microphones” are formed by combining the same two signals. Stated differently, Petitioner at most shows that Elko discloses forming a first virtual microphone by combining the first intermediate signal and the second signal, rather than showing that Elko discloses forming a first virtual microphone by combining the first signal and the second signal. The Petition does not address this discrepancy between Elko’s disclosure and the requirements of claim 1. See Pet. 18–23. To the degree Petitioner relies on Elko’s statement that “the signals from two microphones 602 are differenced (604) and summed (606)” (Ex. 1002, 9:24– 26, cited in Pet. 18), this disclosure does not help Petitioner. The quoted statement describes Elko’s Figure 6, and that figure—like Figure 10—shows providing the same two inputs to the difference block (item 604) and the sum block (item 606). To the extent Petitioner is proposing to combine features from two separate embodiments, which is not clear, Petitioner does not explain why an ordinary artisan would have combined these embodiments in such a way as to provide different inputs to the difference block and the sum block. Petitioner cites to Dr. Vipperman’s testimony to support its contentions, but his testimony suffers from the same deficiencies. See Ex. 1003 ¶¶ 52–64. In the analysis of dependent claim 11, Petitioner asserts that a filtered first signal remains a “first signal.” Pet. 48 (citing Ex. 1007 ¶¶ 115–116). In Petitioner’s view, this is “consistent with the ’611 patent, which interchangeably refers to the formation of its virtual microphones in claim 1 as combining the first and second signals, yet later defining these as delayed, filtered, and calibrated signals.” Id. (citing Ex. 1001, 36:61–64, 37:30–32; 30:14–26, 37:39–41; 33:12–13). In Petitioner’s view, the recited “first signal” includes the “first intermediate signal.” Id. Because this analysis is only included in the discussion of claim 11, it is unclear whether Petitioner relies on this interpretation of the recited signals in its analysis of claim 1. See id. 18–23. Even so, Petitioner’s interpretation lacks support from the patent’s written description and is conclusory. See id. at 48. For example, Petitioner merely cites the claim language and various passages from the patent without further analysis (see id.), and the quoted passages do not show that the required “first signal” can be satisfied by the claimed “first intermediate signal.”9 We do not credit Dr. Vipperman’s testimony because it only repeats Petitioner’s assertions without further support. See Ex. 1007 ¶¶ 115–116.” slip op. at 12
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 8,326,611
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.