• Uber Technologies, Inc. v. Enovsys, LLCInstitution denied
  PTAB · Nov 22, 2024 · IPR2024-00826 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted obviousness grounds.

  RulingsInstitution decision

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

    “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) (2018). For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We, therefore, deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “alleged invention “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related location tracking techniques, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 8 (citing Andrews Decl. ¶¶ 25–26). Patent Owner does not dispute this contention or offer an alternative formulation. See Prelim. Resp. 6. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’752 patent specification and the asserted prior art.” slip op. at 19

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “1. Means-Plus-Function Terms Challenged claims 14 and 15 recite elements using the word “means.” See Ex. 1001, 13:6–18, 13:20–22. The use of the word “means” in a claim ’752 patent has a filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of §103. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Construing a means-plus-function claim term is a two-step process. We must first identify the claimed function. Then, we must determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1351 (citation omitted). The parties do not dispute that 35 U.S.C. § 112 ¶ 6 applies to those “means” elements recited in claims 14 and 15. See Pet. 8–12; Prelim. Resp. 11–19.” slip op. at 10

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

    “geographic region.” The ’752 patent describes polling specific sub-regions of the network for a PRU. Ex. 1001, 2:12–15, 7:22–34. As Mr. McAlexander testifies, “[a] PRU may choose to instruct the network to relay certain information to mobile units in a specific geographic region. That information would then be appended to the geographic boundary information and beamed in the specified geographic region.” McAlexander Decl. ¶ 49 (quoting Ex. 1001, 10:19–23) (alteration in original). For example, a nearby boundary can be polled for the locations of nearby wireless customers within proximity of a distressed wireless customer. As described in the ’752 patent, a distressed mobile user M1 may need to find where another party might exist in that geographic region. The user could initiate a page from their PRU for the closest available PRUs that could be found in that geographic jurisdiction. Looking at FIG. 3, mobile user M1 will provide its location, latitude and longitude (x0,y0) to the closest available ground station serving area C1 or grid G1. As stated earlier, appropriate terrestrial technology will be scattered in that region to serve the PRUs in that area as shown in FIG. 1. Once a ground station picks up this signal, it sends a page for all location reporting devices in the specified boundary surrounding mobile unit M1, FIG. 3 to disclose their location. Ex. 1001, 7:22–34 (emphasis added). slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,441,752
• Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution denied
  PTAB · Jan 8, 2024 · IPR2023-01093 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution on claims 2, 4, and 18 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id. at 6.” slip op. at 10

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute inter partes review.” slip op. at 2

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

    “and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “believes that no special constructions are necessary to assess whether the challenged claims are unpatentable over the asserted prior art.” Pet. 5 (citing Baker Decl. ¶ 68). Patent Owner does not dispute Petitioner’s position or discuss claim construction. Therefore, we determine there are no claim terms that need to be construed at this stage.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent would have possessed “at least a master’s degree in electrical engineering, or a similar discipline,” and would have had “two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems,” with additional education supplementing “practical experience and vice versa.” Pet. 4 (citing Baker Decl. ¶¶ 20–21). Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 20

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 11,201,500
• Meta Platforms, Inc. v. Almondnet, Inc. And Intent Iq, LLCInstitution denied
  PTAB · Oct 26, 2022 · IPR2022-00929 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Amjadi teaches or suggests the claimed first Internet site, as required by every challenged claim.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We therefore deny institution of inter partes review.” slip op. at 2

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

    “We recognize that the claim recites an “Internet site,” and not a “Web site.” Although the ’586 patent sometimes describes an “Internet site,” see Ex. 1001, 4:48–49, 5:22, 16:7, 17:2, 17:11, the patent more frequently describes an “Internet web site” or “web site,” suggesting the inventors understood “Internet site” and “web site” to be synonymous. See, e.g., id. at 2:6, 2:17, 2:20, 2:32, 2:39, 2:65, 3:31, 3:34, 3:35, 3:36, 3:38. In addition, the specification describes the saturation problem addressed by the ’586 patent as one experienced by Web sites. Id. at 6:4–8 (“A media may reach this saturation level due to pragmatic considerations such as limited physical size or space. In addition, saturation may occur due to a requirement to limit the cost of a producing a Web site, magazine, newspaper or other media application.”) One technical dictionary defines “Web site” as “[a] group of related HTML documents and associated files, scripts, and databases that is served up by an HTTP server on the World Wide Web.” Microsoft Computer Dictionary 564 (2002). Ex. 3001. Another states: “In more common usage [Web site] refers to individual sets of Web pages that can be visited with Web Browsers.” Newton’s Telecom Dictionary 913 (2004). Ex. 3002. Merriam-Webster defines Web site as “a group of World Wide Web pages usually containing hyperlinks to each other and made available online by an individual, company, educational institution, government, or organization.” See https://www.merriam-webster.com/dictionary/web%20site (last accessed Oct. 14, 2022). From these definitions, and consistent with the ’586 patent specification, we determine that an Internet site is a collection of HTML Web pages that can be accessed by users with Web browsers.” slip op. at 17

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

    “We are not persuaded that Petitioner has sufficiently demonstrated that Amjadi’s incentive host server 410 qualifies as an Internet site. As discussed, only two functions of the Incentive Host Server are disclosed by Amjadi: (1) distributing incentive information to incentive network server 420, and (2) registering subscribers discussed supra. See Ex. 1003, 7:40–42. Amjadi does not describe either function as involving HTML Web pages that can be accessed by users with Web browsers. Amjadi describes the user registration process as the server transmitting a registration form to the subscriber. Id. at 8:1–4 (also disclosing that the completed form is then transmitted back to the server); see also Prelim. Resp. 16–18.4 We see no disclosure in Amjadi of incentive host server 410 having a collection of Web pages that can be visited by users, nor is that evident from the described functions of the incentive host server.” slip op. at 18

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,244,586
• Samsung Electronics Co. Ltd. v. Led Wafer Solutions, LLCInstitution denied
  PTAB · Apr 12, 2022 · IPR2021-01554 · APJ Jeffrey W Abraham · IPR · Institution

  Institution was denied for claims 1–9 because Petitioner did not show Tanaka disclosed or suggested a thermally conductive layer disposed on the second LED surface.

  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 demonstrate sufficiently that Tanaka discloses or suggests a thermally conductive layer disposed on the second LED surface of the semiconductor LED. Petitioner does not contend that Tanaka includes an express disclosure of metal wiring being “disposed on” the second LED surface of Tanaka’s semiconductor LED. Instead, Petitioner states only that a person of ordinary skill in the art would have understood that metal wiring 80 is disposed on the second LED surface because there are portions of metal wiring 80 that overlap the second LED surface in the vertical direction. Pet. 17–18. We find this statement to be conclusory and lacking adequate support.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “emitting diodes (LEDs).” Pet. 5 (citing Ex. 1002 ¶¶ 20–21). Patent Owner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or a similar field, and at least . . . two years of professional experience, or its equivalent, in the manufacture of light sources using light emitting diodes (“LEDs”).” Prelim. Resp. 5. Patent Owner states that its position and Petitioner’s position are “substantially similar.” Prelim. Resp. 5. We agree with Patent Owner that the parties’ positions are substantially similar. However, for the purposes of this Decision, we determine that Petitioner’s slightly broader proposed level of ordinary skill in the art (which does not limit professional experience to the manufacturing of light sources) is consistent with the ’612 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.” slip op. at 8

  • BurdenDenied

    “We agree with Patent Owner that Petitioner has failed to demonstrate sufficiently that Tanaka discloses or suggests a thermally conductive layer disposed on the second LED surface of the semiconductor LED. Petitioner does not contend that Tanaka includes an express disclosure of metal wiring being “disposed on” the second LED surface of Tanaka’s semiconductor LED. Instead, Petitioner states only that a person of ordinary skill in the art would have understood that metal wiring 80 is disposed on the second LED surface because there are portions of metal wiring 80 that overlap the second LED surface in the vertical direction. Pet. 17–18. We find this statement to be conclusory and lacking adequate support. In support of its assertion, Petitioner cites to paragraph 72 of Tanaka, which describes wiring pattern 80 being “directly connected” to electrodes 51 and 52. Ex. 1005 ¶ 72; Pet. 17. As noted above, Petitioner does not contend that electrodes 51 and 52 comprise the second LED surface. Instead, Petitioner maps the second LED surface in Tanaka to the lower surfaces of P-type semiconductor layer 74 and N-type semiconductor layer 72. Pet. 14–17. Petitioner, however, fails to explain sufficiently why paragraph 72 of Tanaka supports its conclusion that a person of ordinary skill in the art would have understood wiring layer 80 to be disposed on the lower surfaces of P-type semiconductor layer 74 and N-type semiconductor layer 72, surfaces not discussed in that paragraph. Petitioner also cites to paragraph 65 of Dr. Baker’s declaration in support of its assertion. Pet. 17– 18. This paragraph, however, offers nothing beyond what appears in the Petition. Compare Ex. 1002 ¶ 65 with Pet. 17–18; 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.”).” slip op. at 12

  Nonecites KSR · Graham
  Patents in suitUS 9,502,612
• Niantic, Inc. v. Nant Holdings IP, LLCInstitution denied
  PTAB · Dec 6, 2021 · IPR2021-01133 · APJ Stephen E Belisle · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 5–11, 15, 18, 22–29, 34–36, 38, or 43 obvious over any asserted combination.

  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. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). 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). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 1, 5–11, 15, 18, 22–29, 34–36, 38, and 43 of the ’051 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, constrained by the record before us, we deny institution of an inter partes review of the ’051 patent.” slip op. at 2

  • BurdenDenied

    “While the ’051 Patent does not expressly define [“virtual element attribute”], it describes “[e]lement attributes, AR object attributes, or other attributes” as “includ[ing] myriad types of attributes” such as “location information (e.g., relative location to elements 390 of a scene, triangulation, GPS coordinates, etc.)[.]” (’051, 16:4-19.) As explained above, Yu discloses that the AR platform system obtains digital data including ambient-light information in a three-step process at steps 901-903. (Yu, ¶¶0060-0062.) A POSA would have understood that this ambient light information is a “virtual element attribute” as described in the ’051 Patent, because the indoor/outdoor data, position data for the sun, and local weather data all relate to the location of the mobile device on which the virtual element will be placed. (Zyda, ¶¶140-141.) Pet. 29–30. Petitioner’s declarant makes these same statements. See Ex. 1002 ¶¶ 140–141.” slip op. at 13

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

    “proceeding. On the one hand, Petitioner acknowledges “[t]he parties dispute the construction of several claim terms,” and submits that it identifies such disputes in the Petition “so that the Board can be aware of them.” Pet. 10– 11. Petitioner also “respectfully submits that [such disputes] need not be expressly resolved by the Board for purposes of evaluating Petitioner’s proposed Grounds” because “the prior art would satisfy the constructions proposed by either party.” Pet. 11. But, notwithstanding 37 C.F.R. § 42.104(b)(3), Petitioner does not provide and support an express construction in the Petition for any limitation at issue in this proceeding. On the other hand, Patent Owner submits the limitation “alter[ed] presence” should be construed to mean “the degree of at least a relevant AR object’s visual presentation based on a spectrum.” Prelim. Resp. 9. Patent Owner otherwise submits, “[f]or all other terms, the plain and ordinary meaning of those terms is sufficient for the Board to analyze Petitioner’s grounds at this preliminary stage.” Id. at 10. Patent Owner also argues the Petition fails to provide required claim constructions or support therefor in violation of 37 C.F.R. § 42.104(b)(3). Id. at 13–16 (arguing Petitioner “leaves the Board and Patent Owner to guess at how the Petition has construed the claims in and what support allegedly exists for such constructions”). Regardless, as discussed below, we do not find that the express construction of any term is necessary for this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 10

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

    “with particularity, how or why a real-world attribute, namely, Yu’s ambient light information, allegedly teaches a virtual element attribute as recited in claim 1. Prelim. Resp. 21 (“[T]he Petition points only to digital data concerning real-world ‘ambient-light information’ as corresponding to the claimed ‘virtual element attribute.’”; “Yu gives no hint that virtual element attributes would play any role in an image’s rendering.”; “[Petitioner] assumes that real-world ambient light corresponds to the virtual element attribute used to ‘determine whether to alter presence of a relevant AR object.’”). Patent Owner argues “at no point does the Petition construe the term ‘virtual element attribute’ or explain how the real-world attributes of ambient light could be a ‘virtual element attribute,’” despite “the ’051 Patent specification repeatedly distinguish[ing] real-world elements and virtual elements as separate factors.” Id. at 21–22; see id. at 22 (“[The skilled artisan] would conclude that virtual elements are different from real-world elements and that virtual element attributes are the information about the virtual elements, not real-world elements.”). Patent Owner also argues Petitioner bases its premise that real-world “location” of a mobile device may be a “virtual element attribute” on a “misleading[] combin[ation]” of two partial statements in the ’051 patent. Prelim. Resp. 22–23 (referring to Petitioner’s citation to Ex. 1001, 16:4–19). Patent Owner argues, “[i]n context, these two sentences do not define ‘virtual element attribute’ to mean location information as the Petition argues,” and “would [not] lead [the skilled artisan] to conclude that real-world ambient light is a virtual element attribute merely because it ‘relate[s] to the location of the mobile device.’” Id. at 23. As noted by Patent Owner (Prelim Resp. 23), contrary to Petitioner’s above argument, the ’051 patent explicitly discloses that “the location information can pertain to or reflect the physical location of real-world elements.” Ex. 1001, 16:15–16. Patent Owner concludes, and we agree for the reasons discussed above, Petitioner “simply has not shown that it is proper to rely on the real-world quality of ambient light to fulfill the requirement for a ‘virtual element attribute’ in claims 1 and 43 of the ’051 Patent.” Prelim. Resp. 23. Indeed, neither Petitioner nor its declarant expressly construes, with citation to supporting evidence, the limitation “virtual element attribute” to include real-world attributes, or provides evidentiary support and explanation of sufficient particularity for how or why obtaining a real-world attribute like ambient light information teaches obtaining a virtual element attribute. See 35 U.S.C. § 312(a)(3); 37 C.F.R § 42.104(b)(4). For the foregoing reasons, and constrained by the Petition, we are not persuaded that the cited evidence adequately supports Petitioner’s contention that Yu discloses the “virtual element attribute” limitation, as recited in independent claims 1 and 43.” slip op. at 14

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,403,051
• Decurtis LLC v. Carnival CorporationInstitution denied
  PTAB · Oct 8, 2021 · IPR2021-00784 · APJ Michael T Cygan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on obviousness for any challenged claim, 1–22.

  RulingsInstitution decision

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

    “§ 103(a) A claim is unpatentable under § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” slip op. at 6

  • BurdenDenied

    “computers were “separate and distinct”). Accordingly, Petitioner must show that the combination of Soleimani and Elfström applied to claim 13 teaches or suggest a door lock communication module and an electronically controlled locking mechanism that are distinct, separate, and electrically connected to each other.” slip op. at 17

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

    “locking mechanism are separate and distinct components because claim limitation 13[b] sets forth a “door lock communication module” that is “electrically connected to the electronically controlled locking mechanism of the latch assembly.” Prelim. Resp. 17–18. We begin with the language of the claim. The listing of the door lock communication module and locking mechanism as separate and distinct elements clearly implies that they are distinct components. Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.”) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)). Furthermore, not only are the communication module and locking mechanism recited as separate elements, the phrase “electrically connected to each other” denotes a further level of distinction between those two components. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (finding the word “other” to “denote[] a further level of distinction” between separately recited components); see also Comcast Cable Commc’ns, LLC v. Promptu Sys. Corp., 838 F. App’x 551, 553 (Fed.” slip op. at 13

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

    “computers were “separate and distinct”). Accordingly, Petitioner must show that the combination of Soleimani and Elfström applied to claim 13 teaches or suggest a door lock communication module and an electronically controlled locking mechanism that are distinct, separate, and electrically connected to each other. Soleimani does not teach or suggest a locking mechanism and communication module that are separate, distinct, and electrically connected to each other We are persuaded by Patent Owner’s argument that Petitioner has not shown Soleimani to teach or suggest both an “electronically controlled locking mechanism” and a “door lock communication module” electrically connected thereto in the claimed configuration. Prelim. Resp. 16–17. Although Petitioner identifies the claimed locking mechanism as Soleimani’s “electronically actuated lock 216,” and the claimed door lock communication module as Soleimani’s “networked lock actuator” (Pet. 19), we are not persuaded that these elements of Soleimani teach locking mechanism and communication module that are electrically connected to each other as claimed. Petitioner points to electronically actuated lock 216 as the electronically controlled locking mechanism and to a networked lock actuator as the communication module. Pet. 17. Petitioner does not clearly specify whether the electronically controlled locking mechanism is alleged to be the entire electronically actuated lock 216 or merely the physical catch portion therein. We consider both possibilities. Should Petitioner’s contention be that the physical catch is the claimed “electronically controlled locking mechanism,” Petitioner does not allege that the catch is “electrically connected to” the door lock communication module as recited in claim limitation 13[b]. Rather, Petitioner only characterizes Soleimani’s catch as being “actuated” by the network lock actuator (Petitioner’s alleged “door lock communication module”). Pet. 61–62 (addressing claim 1). We note the Petition includes evidence that this action need not involve an electrical connection to the latch. In Petitioner’s discussion of Bliding (not applied to claim 13), Petitioner’s declarant discusses an example of a mechanical, not electrical, connection between catch and actuator. Ex. 1002 ¶ 71 (“an electric motor to actuate a catch”) (citing Ex. 1009 ¶ 21, in which “rotation of the rotatable axle . . . actuates the lock catch”). Thus, to the extent Petitioner attempts to allege the catch portion of lock 216 teaches or suggests the electronically controlled locking mechanism electrically connected to the door lock communication module, Petitioner has not explained how Soleimani’s catch is “electrically connected” in any manner, much less to the door lock communication module as claimed. Thus, a reliance solely on Soleimani’s catch as the electronically controlled locking mechanism would fail to teach the “electrically connected” limitation, and as such, would lack a reasonable likelihood of prevailing on the merits of the obviousness ground for claim 13.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,049,516
• Mercedes-Benz USA, LLC / BMW Of North America, LLC v. Stragent, LLCInstitution denied
  PTAB · Oct 1, 2021 · IPR2021-00726 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–42, 102–108, 121, and 126 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “We agree with Patent Owner that Petitioner does not show sufficiently, for purposes of instituting an inter partes review, that Miesterfeld, in combination with the other references, teaches or suggests limitation [1.1] together with limitations [1.2]–[1.8] in the manner claimed. Petitioner asserts that Miesterfeld’s SPI RAM 64, shown in Figure 2, corresponds to the claimed “non-transitory memory storage” and that “command requests” written to SPI RAM 64 by either the VDB interface or ITS data bus interface are “instructions” stored in the non-transitory memory storage and executed by the processor (i.e., either the VDB interface or ITS data bus interface) when it queues a message for transmission. Pet. 19–20 (citing Ex. 1050, 7:17–26, 8:36–42). However, the passages in Miesterfeld cited by Petitioner describe VDB interface 62 processing a command that was written by ITS data bus interface 58 to SPI RAM 64 for transmission onto the VDB 48 via VDB interface 62. See, e.g., Ex. 1050, 7:17–21. The commands processed in this way are commands that are exchanged between the ITS data bus and the VDB via their respective interfaces connected to shared memory (i.e., SPI RAM 64). See, e.g., id. at code (57) (“The gateway includes a memory accessible by both a VDB interface and an ITS data bus interface so that data and commands may be shared between each respective bus through the shared memory.”). They are not commands or instructions executed by a processor to carry out the steps in the flow chart of Figure 4, which Petitioner maps to the operations recited in limitations [1.3]–[1.7]. In other words, for the claimed “instructions,” Petitioner points only to commands that, like other data, are exchanged between the ITS data bus and the VDB; Petitioner does not point to any “instructions” stored in a “non-transitory memory storage” that are executed by a processor to perform the storage operations in limitations [1.3]–[1.7], as required by the claim language. Nor does Petitioner otherwise argue that it would have been obvious to a person of ordinary skill in the art to store such instructions in a non-transitory memory storage. See Pet. 20.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “that a person of ordinary skill in the art at the time of the invention would have had “at least . . . a bachelor’s degree in electrical engineering, computer engineering, or a related engineering discipline and at least two years of industry experience in the field of distributed computing or automotive engineering, or equivalent experience, education, or both.” Pet. 10 (citing Ex. 1004 ¶¶ 58–59). Patent Owner and its declarant generally agree with Petitioner’s proposed definition. Prelim. Resp. 14–15 (citing Ex. 2001 ¶¶ 15–17 (Declaration of Dr. Michael Smith)).” slip op. at 7

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

    “The parties address the construction of various claim terms. Pet. 10–11; Prelim. Resp. 15–33. For purposes of this Decision, we need not construe any claim terms expressly. 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 8

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

    “sufficiently, for purposes of instituting an inter partes review, that Miesterfeld, in combination with the other references, teaches or suggests limitation [1.1] together with limitations [1.2]–[1.8] in the manner claimed. Petitioner asserts that Miesterfeld’s SPI RAM 64, shown in Figure 2, corresponds to the claimed “non-transitory memory storage” and that “command requests” written to SPI RAM 64 by either the VDB interface or ITS data bus interface are “instructions” stored in the non-transitory memory storage and executed by the processor (i.e., either the VDB interface or ITS data bus interface) when it queues a message for transmission. Pet. 19–20 (citing Ex. 1050, 7:17–26, 8:36–42). However, the passages in Miesterfeld cited by Petitioner describe VDB interface 62 processing a command that was written by ITS data bus interface 58 to SPI RAM 64 for transmission onto the VDB 48 via VDB interface 62. See, e.g., Ex. 1050, 7:17–21. The commands processed in this way are commands that are exchanged between the ITS data bus and the VDB via their respective interfaces connected to shared memory (i.e., SPI RAM 64). See, e.g., id. at code (57) (“The gateway includes a memory accessible by both a VDB interface and an ITS data bus interface so that data and commands may be shared between each respective bus through the shared memory.”). They are not commands or instructions executed by a processor to carry out the steps in the flow chart of Figure 4, which Petitioner maps to the operations recited in limitations [1.3]–[1.7]. In other words, for the claimed “instructions,” Petitioner points only to commands that, like other data, are exchanged between the ITS data bus and the VDB; Petitioner does not point to any “instructions” stored in a “non-transitory memory storage” that are executed by a processor to perform the storage operations in limitations [1.3]–[1.7], as required by the claim language. Nor does Petitioner otherwise argue that it would have been obvious to a person of ordinary skill in the art to store such instructions in a non-transitory memory storage. See Pet. 20.” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,002,036
• Google LLC v. Uniloc 2017 LLCRehearing denied
  PTAB · May 25, 2021 · IPR2020-00170 · APJ Lynne E Pettigrew · IPR · Rehearing

  The Board denied Google’s rehearing request, leaving institution denied for claims 1–14 and 17–20 because the petition did not adequately explain combining Hull and Barber.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “disclosure or that the Decision’s analysis of Hull is unsupported by substantial evidence. Petitioner does not point to any disclosure in Hull of descriptors that are not invariant to distortions such as those caused by translation, rotation, and scaling. See Req. Reh’g 2–8. Although Petitioner cites references in Hull to “other” or “alternative” embodiments, Petitioner does not identify, nor do we see, any descriptors other than distortion- invariant descriptors in those embodiments. See id. at 3–8. Nor does Petitioner cite any disclosure in Hull explicitly stating that distortion-invariant descriptors are “optional” or “exemplary,” as Petitioner contends. See id. at 1, 6, 8.” slip op. at 4

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

    “adequate showing in its obviousness analysis that a person of ordinary skill in the art would have combined the teachings of Hull1 and Barber2 in the manner proposed to achieve the claimed invention, which relates to a system and method for matching a target image to images stored in a database.” slip op. at 2

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

    “adequate showing in its obviousness analysis that a person of ordinary skill in the art would have combined the teachings of Hull1 and Barber2 in the manner proposed to achieve the claimed invention, which relates to a system and method for matching a target image to images stored in a database.” slip op. at 2

  § 103 obviousness
  Patents in suitUS 6,253,201
• Emerson Electric Co. v. Sipco, LLCRehearing denied
  PTAB · Aug 14, 2020 · IPR2019-00548 · APJ Lynne E Pettigrew · IPR · Rehearing

  The Board denied Emerson’s rehearing request and the petition, finding Jubin insufficient to show claim 1’s required path determination occurs when transmitting to the site controller.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Request, but we do not reach a different result. As Petitioner admits, claim 1 requires that “determin[ing] a first communication path” in limitation [1.b] be performed by the first remote device “when transmitting to the site controller.” Ex. 1001, 20:56–57; see Req. Reh’g 8. According to Petitioner, Jubin’s first remote device (PR M in Petitioner’s example) selects a “first communication path” by updating its tier table with a new next PR (e.g., PR Q) for destination PR L when the direct path from PR M to PR L is “bad.” Pet. 32 (citing Ex. 1005, 24); see Req. Reh’g 4–5. Petitioner further asserts that updating the tier table occurs “[w]hen PR M attempts to transmit a packet to PR L,” i.e., “when transmitting to the site controller.” Pet. 32 (citing Ex. 1005, 24); Req. Reh’g 7–8. On the record before us, Petitioner does not show sufficiently that Jubin discloses “determin[ing] a first communication path between the first remote device and the site controller” by updating the tier table “when transmitting to the controller” as required by the claim language in limitation [1.b]. The cited section of Jubin discloses that “[w]hen the link quality to a neighboring PR (say the link from PR N to PR M) becomes ‘bad,’” PR N’s which PR M is the next PR in the route. Ex. 1005, 24. Thus, with reference to Petitioner’s Figure 6 scenario, PR M (the claimed first remote device) updates its tier table for destination PR L (the claimed site controller) when it becomes aware that the quality of the link from PR M to PR L has become bad. See Pet. 32; Ex. 1005, 24. Petitioner contends that PR M updates its tier table (i.e., determines a first communication path) when PR M is transmitting a packet to PR L, but Petitioner does not cite, nor do we see, a specific description in Jubin supporting this assertion. See Pet. 32; Ex. 1005, 24. Rather, Jubin discloses using Packet Radio Organization Packets (PROPs), which are broadcast by each PR every 7.5 seconds to announce information about the network, to determine link quality (“good” vs. “bad”) and to communicate link quality and “news of bad tier data” among PRs. Ex. 1005, 24; see id. at 23–24 (describing PROPs). Petitioner does not contend that Jubin’s broadcasting of PROPs satisfies the “when transmitting to the site controller” language in limitation [1.b]. See Pet. 32. Nor does Petitioner explain adequately how Jubin discloses that PR M in Figure 6 updates its tier table for destination PR L (i.e., “determine[s] a first communication path between the first remote device and the site controller”) when PR M is attempting to transmit a packet to PR L (i.e., “when transmitting to the site controller”) based on information that the link between PR M and PR L is “bad.” See id.” slip op. at 5

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

    “On the record before us, Petitioner does not show sufficiently that Jubin discloses “determin[ing] a first communication path between the first remote device and the site controller” by updating the tier table “when transmitting to the controller” as required by the claim language in limitation [1.b]. The cited section of Jubin discloses that “[w]hen the link quality to a neighboring PR (say the link from PR N to PR M) becomes ‘bad,’” PR N’s which PR M is the next PR in the route. Ex. 1005, 24. Thus, with reference to Petitioner’s Figure 6 scenario, PR M (the claimed first remote device) updates its tier table for destination PR L (the claimed site controller) when it becomes aware that the quality of the link from PR M to PR L has become bad. See Pet. 32; Ex. 1005, 24. Petitioner contends that PR M updates its tier table (i.e., determines a first communication path) when PR M is transmitting a packet to PR L, but Petitioner does not cite, nor do we see, a specific description in Jubin supporting this assertion. See Pet. 32; Ex. 1005, 24. Rather, Jubin discloses using Packet Radio Organization Packets (PROPs), which are broadcast by each PR every 7.5 seconds to announce information about the network, to determine link quality (“good” vs. “bad”) and to communicate link quality and “news of bad tier data” among PRs. Ex. 1005, 24; see id. at 23–24 (describing PROPs). Petitioner does not contend that Jubin’s broadcasting of PROPs satisfies the “when transmitting to the site controller” language in limitation [1.b]. See Pet. 32. Nor does Petitioner explain adequately how Jubin discloses that PR M in Figure 6 updates its tier table for destination PR L (i.e., “determine[s] a first communication path between the first remote device and the site controller”) when PR M is attempting to transmit a packet to PR L (i.e., “when transmitting to the site controller”) based on information that the link between PR M and PR L is “bad.” See id.” slip op. at 5

  • BurdenNot shown unpatentable

    “On the record before us, Petitioner does not show sufficiently that Jubin discloses “determin[ing] a first communication path between the first remote device and the site controller” by updating the tier table “when transmitting to the controller” as required by the claim language in limitation [1.b]. The cited section of Jubin discloses that “[w]hen the link quality to a neighboring PR (say the link from PR N to PR M) becomes ‘bad,’” PR N’s which PR M is the next PR in the route. Ex. 1005, 24. Thus, with reference to Petitioner’s Figure 6 scenario, PR M (the claimed first remote device) updates its tier table for destination PR L (the claimed site controller) when it becomes aware that the quality of the link from PR M to PR L has become bad. See Pet. 32; Ex. 1005, 24. Petitioner contends that PR M updates its tier table (i.e., determines a first communication path) when PR M is transmitting a packet to PR L, but Petitioner does not cite, nor do we see, a specific description in Jubin supporting this assertion. See Pet. 32; Ex. 1005, 24. Rather, Jubin discloses using Packet Radio Organization Packets (PROPs), which are broadcast by each PR every 7.5 seconds to announce information about the network, to determine link quality (“good” vs. “bad”) and to communicate link quality and “news of bad tier data” among PRs. Ex. 1005, 24; see id. at 23–24 (describing PROPs). Petitioner does not contend that Jubin’s broadcasting of PROPs satisfies the “when transmitting to the site controller” language in limitation [1.b]. See Pet. 32. Nor does Petitioner explain adequately how Jubin discloses that PR M in Figure 6 updates its tier table for destination PR L (i.e., “determine[s] a first communication path between the first remote device and the site controller”) when PR M is attempting to transmit a packet to PR L (i.e., “when transmitting to the site controller”) based on information that the link between PR M and PR L is “bad.” See id.” slip op. at 5

  None
  Patents in suitUS 9,439,126
• Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products Inc.Rehearing denied
  PTAB · May 26, 2020 · IPR2019-01209 · APJ Lynne E Pettigrew · IPR · Rehearing

  The Board denied rehearing and left in place its denial of institution because the Petition lacked adequate evidence and reasoning to support the proposed obviousness combination.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). “An abuse of discretion is found if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or (4) involves a record that contains no evidence on which the Board could” slip op. at 2

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

    “As the Petition makes clear, the linchpin of Petitioner’s argument for modifying Brenner is that a person of ordinary skill in the art would have recognized reliability issues due to signal loss in the optical waveguide of Brenner’s device. See Pet. 21 (“Thus, a [person of ordinary skill in the art] would have recognized that the security device of Brenner is prone to reliability issues due to signal loss in the optical waveguide.”); id. at 34 (“A [person of ordinary skill in the art] would recognize that . . . the security device will likely suffer from reliability issues associated with signal loss within the optical waveguide.”); id. at 35 (“[T]he optical transceivers of the sensor unit and the base unit may not be able to reliably communicate with one another due to optical signal loss within the optical waveguide.”); id. 6 The Petition and our Decision refer to this book by its title (“Communications Standard Dictionary”), but Petitioner now refers to it by the last name of its author (“Weik”). Compare Pet. 6, 19, with Req. Reh’g 2. For convenience and consistency with the Request for Rehearing, we refer to the book herein as “Weik.” Notably, Petitioner did not submit Weik as a prior art printed publication to be considered as part of an unpatentability ground, as set forth in 35 U.S.C. § 311(b) (2018). See Pet. 5. Rather, the Petition cites Weik as support for its proposed claim construction and as support for an alleged “well-known fact” that an optical waveguide subjected to bending or winding is prone to signal loss. Id. at 6, 19. skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 17–18 (citing Pet. 21, 35). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 4

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

    “As the Petition makes clear, the linchpin of Petitioner’s argument for modifying Brenner is that a person of ordinary skill in the art would have recognized reliability issues due to signal loss in the optical waveguide of Brenner’s device. See Pet. 21 (“Thus, a [person of ordinary skill in the art] would have recognized that the security device of Brenner is prone to reliability issues due to signal loss in the optical waveguide.”); id. at 34 (“A [person of ordinary skill in the art] would recognize that . . . the security device will likely suffer from reliability issues associated with signal loss within the optical waveguide.”); id. at 35 (“[T]he optical transceivers of the sensor unit and the base unit may not be able to reliably communicate with one another due to optical signal loss within the optical waveguide.”); id. 6 The Petition and our Decision refer to this book by its title (“Communications Standard Dictionary”), but Petitioner now refers to it by the last name of its author (“Weik”). Compare Pet. 6, 19, with Req. Reh’g 2. For convenience and consistency with the Request for Rehearing, we refer to the book herein as “Weik.” Notably, Petitioner did not submit Weik as a prior art printed publication to be considered as part of an unpatentability ground, as set forth in 35 U.S.C. § 311(b) (2018). See Pet. 5. Rather, the Petition cites Weik as support for its proposed claim construction and as support for an alleged “well-known fact” that an optical waveguide subjected to bending or winding is prone to signal loss. Id. at 6, 19. skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 17–18 (citing Pet. 21, 35). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 4

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We are not persuaded that we overlooked evidence from Weik relied on in the Petition. Our Decision considered Weik’s description of a “microbend loss” that was quoted in the Petition: “the optical power loss caused by a microbend, i.e., a small bend, kink, or abrupt discontinuity in the direction of the optical axis of fibers, in the core-cladding interface surface, or both, usually caused by cabling, wrapping the fiber around drums and (citing Pet. 34–35 (citing Ex. 1002, 576)). But Petitioner does not identify, nor do we see, any assertion in the Petition that Weik shows a microbend loss can cause a “total failure” of an optical signal to reach its destination. See Req. Reh’g 9; Pet. 19–20, 34–35. Petitioner’s Request for Rehearing also does not identify where the Petition addressed Weik’s statement that microbends can cause radiative loss. See Pet. 19–20, 34–35. Because these arguments were not presented in the first instance in the Petition, we could not have overlooked them in our Decision.” slip op. at 5

  § 103 obviousnesscites KSR
  Patents in suitUS 10,062,253

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.