• Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution denied
  PTAB · Sep 4, 2024 · IPR2024-00457 · APJ Brian D Range · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that any claim was unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “The parties agreed that resolution of this time bar issue would be resolved in the same manner as in IPR2024-00456. In particular, the parties stipulated: The parties stipulate with respect to the privity time bar issue that the facts and issues in IPR2024-00457 are the same as in IPR2024-00456, so that any decision the Board reaches resolving the privity time bar issue in IPR2024-00456 will apply and resolve the privity time bar issue in IPR2024-00457 in the same manner. Notice of Stipulation, Paper 14, 1. In the decision on institution for IPR2024-00456, the Board determined that “Lenovo is not a privity of Microsoft [in this context] and the Petition is not time-barred under § 315(b).” IPR2024-00456, Paper 22, 10 (July 31, 2024). Thus, pursuant to the parties’ stipulation, the instant petition is also not time-barred.” slip op. at 16

  • Prior constructionPrior construction adoptedDecided for petitioner

    “For this decision, we again construe “plurality of views of a plurality of visual representations of computer content” as “referring to a plurality of ways of organizing visual representations of computer content.” We again note that this limitation is distinct from merely providing a plurality of ways of displaying content (by, for example, changing display orientation, color, resolution, etc.). Petitioner assumes this construction for the Petition, and Patent Owner assumes this construction for Patent Owner’s Preliminary Response. Moreover, the construction is well supported by the ’715 patent’s claims and specification for reasons similar to those stated in the prior decision cited by Petitioner. IPR2021-00786, Paper 6, 13–16 (construing this term for the ’715 patent). For this decision, we do not discern a need to construe explicitly any other claim language because doing so would have no effect on our analysis below and will not assist in resolving the present controversy between the parties.7 See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in” slip op. at 15

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

    “Below, we explain that we deny institution based on the merits: Petitioner has not shown, with respect to at least one of the challenged claims, a reasonable likelihood of prevailing at trial. In the interest of judicial efficiency, we therefore do not need to consider discretionary denial. Cf. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (explaining that the Board is not required to reach issues unnecessary to “resolve the controversy”); see also, e.g., Aylo Freesites Ltd. v. Dish Techs. LLC, IPR 2024-00512, Paper 12, 12, n. 3 (declining to reach the 35 U.S.C. § 325(d) issues when denying based on 35 U.S.C. § 314(a)).” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art (POSITA), would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing GUIs for computing devices. Ex-1003, ¶ 21. More education could substitute for experience and vice versa. Id. Pet. 15. Patent Owner does not dispute the level of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in the prior art and the ’715 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,880,715
• Sony Interactive Entertainment Inc. / Sony Group Corporation v. Resonant Systems, Inc.Institution denied
  PTAB · Aug 26, 2024 · IPR2024-00568 · APJ Karl D Easthom · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8, 11, or 17 were unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “The record supports Patent Owner. Under a means plus function analysis, which the parties agree applies, Petitioner relies on Houston’s microprocessor as the structure that corresponds to the recited “control component.” Pet. 36 (“Houston teaches that vibration controller 623 is a microprocessor thereby satisfying the structural requirement of this means plus-function limitation.”). microprocessor, limitation 1.f further requires algorithmic structure (processed by the microprocessor of the recited “control component”) to include “1) computing a digital output value corresponding to user-selected amplitude of oscillation and outputting the value to the claimed power supply so that the power supply outputs an appropriate current amplitude to the coil.” Supra Section III.C (emphasis added). In other words, as Patent Owner argues, to satisfy limitation 1.f, the “prior art [at least] would need to have this microprocessor perform the algorithmic step of ‘provid[ing] a corresponding ‘output to the power supply.’” Prelim. Resp. 18. Patent Owner also argues that “[t]he Petition fails to show that this [algorithmic step] is disclosed or rendered obvious by the combination of Houston and Goldenberg.” Prelim. Resp. 18. The record supports Patent Owner. Petitioner does not contend, let alone show, that the combination of Houston and Goldenberg teaches outputting any value to a power supply as limitation 1.f requires according to the claim construction Patent Owner argues and we adopt. See Pet. 35–44; supra Section III.C. It follows that the Petition fails to show a reasonable likelihood of success of prevailing with respect to claim 1.” slip op. at 22

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner

    “The specification, therefore, supports Patent Owner. The specification clearly links this algorithmic structure to the recited function, “controlling supply of power from the power supply.” As Patent Owner shows, Petitioner agreed in the Sony litigation that the corresponding structure includes “provide a corresponding output to the power supply so that the power supply provides a corresponding output to the driving component and equivalents thereof.” Prelim. Resp. 13 (quoting Ex. 2002, 9).” slip op. at 15

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

    “microprocessor, limitation 1.f further requires algorithmic structure (processed by the microprocessor of the recited “control component”) to include “1) computing a digital output value corresponding to user-selected amplitude of oscillation and outputting the value to the claimed power supply so that the power supply outputs an appropriate current amplitude to the coil.” Supra Section III.C (emphasis added). In other words, as Patent Owner argues, to satisfy limitation 1.f, the “prior art [at least] would need to have this microprocessor perform the algorithmic step of ‘provid[ing] a corresponding ‘output to the power supply.’” Prelim. Resp. 18. Patent Owner also argues that “[t]he Petition fails to show that this [algorithmic step] is disclosed or rendered obvious by the combination of Houston and Goldenberg.” Prelim. Resp. 18. The record supports Patent Owner. Petitioner does not contend, let alone show, that the combination of Houston and Goldenberg teaches outputting any value to a power supply as limitation 1.f requires according to the claim construction Patent Owner argues and we adopt. See Pet. 35–44; supra Section III.C. It follows that the Petition fails to show a reasonable likelihood of success of prevailing with respect to claim 1.” slip op. at 23

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,369,081
• Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution denied
  PTAB · Jul 1, 2024 · IPR2024-00454 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution on all challenged claims and grounds because Petitioners did not show a reasonable likelihood that the Reavey–Chandhri combination met limitation 1h.

  RulingsInstitution decision

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

    “view of the evidence of record, we are not persuaded Petitioners have shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. For our purposes here, we accept Petitioners’ contention that, in light of the Reavey and Chandhri disclosures, a skilled artisan would have been led to configure Reavey’s device to display in laptop mode a first set of visual representations using a menu-based view and transition when in flat mode to an image-based scrolling view to display a second set of visual representations. Still, we remain unpersuaded Petitioners have established sufficiently that the Reavey and Chandhri combination discloses or suggests to a skilled artisan a configuration in which the device filters the first set of visual representations by identifying and removing content therefrom to be used with the image-based scrolling view to generate a second set of visual representations that are based on the filtered version of the first set of visual representations.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioners assert, with the support of its expert, that a person of ordinary skill in the art at the relevant time would have had a “bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing GUIs for computing devices.” Pet. 10 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioners’ proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’315 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, therefore, we rely on Petitioners’ proposed level of ordinary skill in the art to focus the lens through which we view the prior art and the claimed invention.” slip op. at 11

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

    “The Petition offers explicit claim constructions for a number of claim terms, including “plurality of views,” “display component,” “execution component,” “storage component,” and “first/second user interface component.” Pet. 11–15. And Patent Owner states that it “does not challenge Petitioners’ explicit claim constructions because the Petition fails even if these constructions are adopted.” Prelim. Resp. 18. Nevertheless, we do not reach Petitioners’ proposed constructions because a resolution in this matter does not turn on the precise meaning of any of those terms; in fact, none of the proposed constructions are for terms that are used in Limitation [1h]. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For the language used in Limitation [1h], which is critical to our decision, both parties rely on the plain and ordinary meaning and neither party suggests that any term used has a particular meaning beyond what is clearly conveyed within the context of the ’315 patent. Therefore, no term in this proceeding needs to be construed expressly.” slip op. at 12

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

    “view of the evidence of record, we are not persuaded Petitioners have shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. For our purposes here, we accept Petitioners’ contention that, in light of the Reavey and Chandhri disclosures, a skilled artisan would have been led to configure Reavey’s device to display in laptop mode a first set of visual representations using a menu-based view and transition when in flat mode to an image-based scrolling view to display a second set of visual representations. Still, we remain unpersuaded Petitioners have established sufficiently that the Reavey and Chandhri combination discloses or suggests to a skilled artisan a configuration in which the device filters the first set of visual representations by identifying and removing content therefrom to be used with the image-based scrolling view to generate a second set of visual representations that are based on the filtered version of the first set of visual representations.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,003,315
• Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution denied
  PTAB · Jul 1, 2024 · IPR2024-00455 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution on all challenged claims and grounds because Petitioners did not show a reasonable likelihood that Reavey and Chandhri disclose or suggest limitation 1[h].

  RulingsInstitution decision

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

    “shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. And as a result, we find Petitioners have not demonstrated a reasonable likelihood of proving that the Reavey/Chandhri combination render independent claims 1 and 28 unpatentable, which is a deficiency that necessarily extends therethrough to all of the dependent claims challenged in all three grounds.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioners assert, with the support of its expert, that a person of ordinary skill in the art at the relevant time would have had a “bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing GUIs for computing devices.” Pet. 11 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioners’ proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’315 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, therefore, we rely on Petitioners’ proposed level of ordinary skill in the art to focus the lens through which we view the prior art and the claimed invention.” slip op. at 11

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

    “The Petition offers explicit claim constructions for a number of claim terms, including “plurality of views,” “display component,” “execution component,” “storage component,” and “first/second user interface component.” Pet. 12–16. And Patent Owner states that it “does not challenge Petitioners’ explicit claim constructions because the Petition fails even if these constructions are adopted.” Prelim. Resp. 18. Nevertheless, we do not reach Petitioners’ proposed constructions because a resolution in this matter does not turn on the precise meaning of any of those terms; in fact, none of the proposed constructions are for terms that are used in Limitation [1h]. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For the language used in Limitation [1h], which is critical to our decision, both parties rely on the plain and ordinary meaning and neither party suggests that any term used has a particular meaning beyond what is clearly conveyed within the context of the ’315 patent. Therefore, no term in this proceeding needs to be construed expressly.” slip op. at 12

  • BurdenDecided for patent owner

    “view of the evidence of record, we are not persuaded Petitioners have shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. For our purposes here, we accept Petitioners’ contention that, in light of the Reavey and Chandhri disclosures, a skilled artisan would have been led to configure Reavey’s device to display in laptop mode a first set of visual representations using a menu-based view and transition when in flat mode to an image-based scrolling view to display a second set of visual representations. Still, we remain unpersuaded Petitioners have established sufficiently that the Reavey and Chandhri combination discloses or suggests to a skilled artisan a configuration in which the device filters the first set of visual representations by identifying and removing content therefrom to be used with the image-based scrolling view to generate a second set of visual representations that are based on the filtered version of the first set of visual representations.” slip op. at 19

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,003,315
• Dell Technologies Inc. / Dell Inc. et al. v. Litl LLCInstitution denied
  PTAB · May 28, 2024 · IPR2024-00480 · APJ Brian D Range · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–11, 19–21, and 23–25 were obvious over the asserted grounds.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “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.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review on the grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art (POSITA) would have had (i) a bachelor’s degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and two to three years of experience in the design and architecture of laptop computers and other portable electronic devices, or (ii) an advanced degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the field. Ex. 1003, ¶102. A POSITA would have been familiar with the structural hardware aspects of laptop computers and other portable electronic devices as well as designs of user interfaces employed and displayed by computer operating systems and their organization of content and functionality. Id. Pet. 9–10. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 17. For this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’229 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10

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

    “For this decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analysis below and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12

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

    “Lane’s accelerometer provides information only on the “spatial orientation” of the first module (keyboard) or second module (screen). Ex. 1005, 5:23–6:6. “Spatial orientation,” as used in Lane, refers to the orientation of the first or second module relative to the earth’s gravity because Lane teaches that its accelerometer uses a “movable conductor” that “responds via gravitational forces” to reorientation. Id. at 5:25–31. Lane does not teach using an accelerometer to determine the orientation of the first and second modules relative to each other, and Petitioner does not suggest that Lane could be modified to determine the orientation of the first and second modules relative to each other. Rather, Petitioner argues that, for example, a determination that the keyboard is “facing upward but at a diagonal angle” (relative to the earth’s gravity) would be indicative of “easel mode.” Pet. 30. The spatial orientation of Lane’s keyboard or screen relative to the earth’s gravity, however, does not reliably9 indicate the device’s current display mode because, at any given moment, the Lane device could be held at different angles such that orientation relative to gravity does not correlate with the display mode. For example, Lane Figure 13 teaches that its keyboard could be at an angle (relative to earth’s gravity) while in laptop mode. Ex. 1005, Fig. 5; Prelim. Resp. 41–42. We reproduce Lane Figure 13 as annotated by Patent Owner below.” slip op. at 18

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,563,229
• NXP USA, Inc. v. Bell Semiconductor, LLCInstitution denied
  PTAB · May 13, 2024 · IPR2024-00167 · APJ Jeffrey W Abraham · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that any challenged claim was unpatentable over the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “Upon consideration of the Petition, the Preliminary Response, and the evidence presented, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of any challenged claim based on any ground asserted in the Petition. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied, and no inter partes review is instituted.” slip op. at 22

  • BurdenDecided for patent owner

    “For all of the foregoing reasons, Petitioner has failed to demonstrate sufficiently that Okabe discloses a semiconductor integrated circuit package with a first layer that includes “a first ground plane enabling electrical connection with low speed electronic circuitry” and a “second ground plane enabling electrical connection with high speed electronic circuitry.” Ex. 1001, 9:25–36.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had a “bachelor’s degree in a field relating to the integrated circuit package manufacturing process like materials science, physics, electrical engineering, or other related subjects, and at least two to three years of experience with fabrication and packaging of integrated circuits.” Pet. 4 (citing Ex. 1002 Preliminary Response. Prelim. Resp. 7. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art.” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner’s arguments are not persuasive. As Patent Owner and Dr. Bernstein point out, Petitioner does not specify the frequencies at which duplexer 45 and VCO 70 operate in Okabe. Prelim. Resp. 20; Ex. 2001 ¶ 79. Nor does Petitioner direct us to any criteria for classifying circuitry as “high speed” or “low speed.” Prelim. Resp. 20; Ex. 2001 ¶ 79. As a result, we are left with only the assertion of what a person of ordinary skill in the art would have understood about duplexer 45 and VCO 70. To support this assertion, Petitioner directs us to statements in Dr. Baker’s declaration that mirror the Petition. Pet. 26–27 (citing Ex. 1002 ¶¶ 71–73). Dr. Baker, however, does not cite to any supporting evidence or provide any technical reasoning to support his statements. Ex. 1002 ¶¶ 71–73. “Thus, the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential); see also 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.”). Accordingly, Petitioner has failed to demonstrate sufficiently that Okabe discloses a second layer that includes a “third ground plane configured for electrical connection with low speed electronic circuitry” and a “fourth ground plane configured for electrical connection with high speed electronic circuitry.” Ex. 1001, 9:37– 43.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,646,091
• Google LLC v. Geoscope Technologies Pte. Ltd.Institution denied
  PTAB · Feb 20, 2024 · IPR2023-01214 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over Almgren or Haartsen, alone or with other prior art.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute when “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) (2018). Upon consideration of the Petition, the Preliminary Response, the Petitioner Preliminary Reply, the Patent Owner Preliminary Sur-reply, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’264 patent. Accordingly, for the reasons that follow, we decline to institute inter partes review of claims 1, 3, 6, 11, 13, 15, 20, 21, 23, and 25–27 of the ’264 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active 8 Petitioner asserts that Haartsen is prior art under § 102(b). Pet. 6. 9 US 5,491,837, filed March 7, 1994, issued February 13, 1996 (Ex. 1005, “Haartsen”). workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner, without the qualifier “at least” because its use introduces vagueness, for the purposes of this Decision because it is consistent with the ’264 patent and the asserted prior art.” slip op. at 8

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

    “Petitioner, however, argues that “[t]he phrase ‘without disabling any other communication channel’ encompasses not dedicating a specific frequency channel for measuring path loss.” Pet. 25; see also Ex. 1008 ¶ 124. That is, Petitioner’s position appears to be that the recited limitation could be sufficiently disclosed or met by prior art if it instead meets the different requirement of “not dedicating a specific frequency channel for measuring path loss.” We do not agree. For support, Petitioner cites portions of the ’264 patent Specification that discuss not dedicating specific frequency channels for measuring path loss. Pet. 25 (citing Ex. 1001, 1:58– 61, 3:39–45, 3:48–50, 4:60–63). Petitioner does not explain, however, why the term “without disabling any other communication channel” should be taught by this disclosure of this alternative requirement or, in other words, Petitioner does not explain why that term should encompass “not dedicating a specific frequency channel for measuring path loss.” Mr. William does not provide any additional explanation and merely repeats the statements of the Petition in a conclusory manner. Ex. 1008 ¶ 124. As discussed above, and as the parties agreed, we will proceed with the assessment of the merits using the plain meaning of the claim term “without disabling any other communication channel.”” slip op. at 15

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

    “claim limitations at issue, and, specifically, the burden extends to negative limitations such as “without disabling any other communication.” See IBM v. Iancu, 759 F. App’x 1002, 1011 (Fed. Cir. 2019) (explaining that a reference’s silence was not by itself sufficient to establish that the reference teaches a process involving only one user authentication action). Petitioner does not appear to dispute its required showing, that is, Petitioner does not argue that the absence of an element in the prior art is sufficient per se to satisfy a negative limitation. Rather, the Petition affirmatively asserts that Almgren discloses or teaches the limitation “without disabling any other communication.” Pet. 25–26. Petitioner, however, argues that “[t]he phrase ‘without disabling any other communication channel’ encompasses not dedicating a specific frequency channel for measuring path loss.” Pet. 25; see also Ex. 1008 ¶ 124. That is, Petitioner’s position appears to be that the recited limitation could be sufficiently disclosed or met by prior art if it instead meets the different requirement of “not dedicating a specific frequency channel for measuring path loss.” We do not agree. For support, Petitioner cites portions of the ’264 patent Specification that discuss not dedicating specific frequency channels for measuring path loss. Pet. 25 (citing Ex. 1001, 1:58– 61, 3:39–45, 3:48–50, 4:60–63). Petitioner does not explain, however, why the term “without disabling any other communication channel” should be taught by this disclosure of this alternative requirement or, in other words, Petitioner does not explain why that term should encompass “not dedicating a specific frequency channel for measuring path loss.” Mr. William does not provide any additional explanation and merely repeats the statements of the Petition in a conclusory manner. Ex. 1008 ¶ 124. As discussed above, and as the parties agreed, we will proceed with the assessment of the merits using the plain meaning of the claim term “without disabling any other communication channel.”” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,320,264
• Mara Renewables Corporation v. DSM IP Assets, B.V.Institution denied
  PTAB · Jan 25, 2024 · IPR2023-01167 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “When asserting unpatentability under obviousness, the patent challenger must show a reasonable expectation of success, that is, “the likelihood of success in combining references to arrive at the claimed invention.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Thus, “[t]he reasonable-expectationof-success analysis must be tied to the scope of the claimed invention.” Teva Pharms. USA, Inc. v. Corcept Therapeutics, Inc., 18 F.4th 1377, 1381 (Fed. Cir. 2021); Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 966 (Fed. Cir. 2014) (holding the trial court’s failure to consider the appropriate scope of the claimed invention in evaluating the reasonable expectation of success constitutes a legal error). Relevant to our Decision here, claim 3 requires its microbial lipid to have, among others, at least 60% by weight DHA in the triglyceride fraction and an AV of 0.5 to 26.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision, we adopt Petitioner’s definition of the skill level because it is consistent with the prior art’s demonstration of the level of ordinary skill at the relevant time. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7

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

    “We emphasize that our finding is not on lack of reasonable expectation of success per se. Instead, we merely find neither the Petition nor the Curtis Declaration persuasively addresses “the expected differences in the oxidizability and oxidation rate—and their expected impact on anisidine values—of an oil containing 42% ARA (for which Schaap discloses limited experimental data) versus one containing 60% DHA in the triglyceride fraction (for which Schaap does not).” See id. at 27. In sum, we find Petitioner has not shown sufficiently that an ordinarily skilled artisan, based on the teachings of the asserted prior art, would have had a reasonable expectation of success for the appropriate scope of the claimed invention (that is, a microbial lipid having at least 60% DHA in the triglyceride fraction and an AV of 0.5 to 26). As a result, on this record, Petitioner has not established a reasonable likelihood that it would prevail in this challenge.” slip op. at 13

  § 103 obviousnesscites Phillips
  Patents in suitUS 10,392,578
• Amperex Technology Ltd. v. Semiconductor Energy Laboratory Co., Ltd.Institution denied
  PTAB · Dec 5, 2023 · IPR2023-01016 · APJ Christopher M Kaiser · IPR · Institution

  Institution was denied because the petition did not show a reasonable likelihood that claims 1–8 were unpatentable over the asserted Shim- or Fujiki-based grounds.

  RulingsInstitution decision

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

    “Because Petitioner relies on Shim and Fey to show that a person of ordinary skill in the art would have understood that fluorine would be present in a crack portion of the Shim or Shim/Lee particle, because the requirement for fluorine to be present in a crack portion appears in all the challenged claims, and because Petitioner does not show sufficiently that Shim and Fey would have suggested the presence of fluorine in a crack portion, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to any claim challenged on the basis of Shim.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in chemistry, chemical engineering, or materials science and at least five years of experience in the field of batteries and battery materials.” Pet. 33. According to Petitioner, “[i]ndividuals with different education and additional experience could still be of ordinary skill in the art if that additional experience compensates for a deficit in their education and experience.” Id. (citing Ex. 1003 ¶¶ 83–91). On the present record, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 19–20. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’828 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’828 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7

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

    “As explained more fully below, we need not construe any claim terms to determine that Petitioner fails to show sufficiently that the prior art teaches or suggests the subject matter of the challenged claims. Thus, after considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to construe any terms expressly for purposes of this Decision. See 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8

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

    “Because Petitioner relies on Shim and Fey to show that a person of ordinary skill in the art would have understood that fluorine would be present in a crack portion of the Shim or Shim/Lee particle, because the requirement for fluorine to be present in a crack portion appears in all the challenged claims, and because Petitioner does not show sufficiently that Shim and Fey would have suggested the presence of fluorine in a crack portion, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to any claim challenged on the basis of Shim.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,741,828
• Mahle Behr Charleston Inc. v. Frank Amidio CatalanoInstitution denied
  PTAB · Nov 15, 2023 · IPR2023-00861 · APJ Christopher M Kaiser · IPR · Institution

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

  RulingsInstitution decision

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

    “On this record, we determine that Petitioner advances Dr. Medlin’s testimony to make out a claim limitation that is not suggested, much less taught, by the text of the prior art reference at hand. Because that testimony lacks objective support or adequate technical reasoning, it is entitled “little weight” and, moreover, is insufficient to support institution of trial. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (Aug. 24, 2022) (precedential). Dr. Medlin’s remaining testimony relies on the testimony we have discussed so far. Ex. 1004 ¶¶ 201–204, 207–210, 224–226. Accordingly, this testimony does not show sufficiently that Tomosada would have suggested to a person of ordinary skill in the art that anodes should be placed within 10 inches of Tomosada’s hot liquid inlet. Because Petitioner relies on Dr. Medlin’s testimony to show that a person of ordinary skill in the art would have understood that Tomosada suggested placing an anode within 10 inches of a hot liquid inlet to a radiator, and because that testimony does not show sufficiently that a person of ordinary skill in the art would have had such an understanding, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to any claim challenged on the basis of Tomosada.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “To show obviousness, it is not enough to merely show that the prior art includes separate references covering each separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). “Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention.” Id. (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)). “This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” KSR, 550 U.S. at 418–19. On the other hand, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Nevertheless, “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, metallurgical engineering, or materials science engineering, and have two or more years of experience in mechanical engineering, metallurgical engineering, or materials science engineering and/or corrosion prevention system design.” Pet. 16 (citing Ex. 1004 ¶¶ 72–75). According to Petitioner, “[a] person could also have qualified as a [person of ordinary skill in the art] with some combination of more formal education (e.g., a Ph.D.) and less technical experience,” or vice versa. Id. at 16–17. “To the extent necessary, the [person of ordinary skill in the art] may have collaborated with other skilled artisans, such that the individual and/or team collectively would have had experience and/or knowledge or particular characteristics of a radiator system.” Id. at 17. “For the limited purpose of [its] Preliminary Response, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so if trial is instituted.” Prelim. Resp. 7. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’494 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’494 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7

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

    “C. Claim Construction In an inter partes review, we construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2022). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. Both parties argue that we need not construe any terms in order to decide whether to institute trial. Pet. 17; Prelim. Resp. 8. We agree. After considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to construe any terms expressly for purposes of this Decision. See 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8

  Claim constructioncites Phillips · KSR · Graham

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.