• Uber Technologies, Inc. v. Surgetech LLCInstitution denied
  PTAB · Oct 6, 2023 · IPR2023-00737 · APJ Michael L Woods · IPR · Institution

  Denied institution of IPR for claims 1–10 because the petition lacked particularity and failed to show a reasonable likelihood that any challenged claim was unpatentable.

  RulingsInstitution decision

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

    “We agree with Patent Owner. Petitioner’s citations to Dr. Regan’s testimony, as well as to Jacob, Tamura, and Kono, fail to show a reasonable likelihood that the cited art satisfies that the steps recited in limitations 9(g) and 9(h) are performed “based on the query,” as required in limitation 9(f). Petitioner’s treatment of these limitations lacks sufficient substantive analysis. See Pet. 60–62.” slip op. at 17

  • BurdenDenied

    “1. Petitioner fails to clearly map how the claim limitations are mapped to the prior art, and “simply combines the references together in a single, omnibus chart, with no delineation between grounds.” Id. at 9. 2. The Petition fails to identify how the references are being combined. Id. at 14. 3. Petitioner’s motivations to combine are deficient, as Petitioner simply relies on boilerplate language without “address[ing] the combination of any specific teachings in the prior art, let alone explain why a POSITA would have understood such combinations.” Id. at 20. We agree with Patent Owner. Petitioner has a duty to identify “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3); see also Playtika Ltd. V. NexRF Corp., IPR2021- 00952, Paper 14 (denying institution based on discretionary factors and lack of sufficient particularity). The importance of this requirement has been stressed by our reviewing court. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’”). Our Rules further require that the Petition must identify “specific portions of the evidence that support the challenge” (37 C.F.R. § 42.104(b)(5)) and that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent” (id. § 42.22(a)(2)). Our Practice Guide also instructs that “parties should avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” Patent Trial and Appeal Board Consolidated Trial Practice Guide, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (Nov. 14, 2019), at 39.2 The Petition falls short of these requirements. Rather than present its challenges in a concise and understandable” slip op. at 10

  • Skill levelSkill level board ownOther

    “would at minimum have a bachelor’s degree in software/computer/electrical engineering, computer science, or industrial engineering and management with at least two years’ experience in inventory and pricing management, including with respect to systems for dynamically managing inventory and pricing of inventory, or the equivalent. Additional graduate education could substitute for professional experience, or significant inventory and pricing management experience could substitute for formal education. Pet. 10; see also Prelim. Resp. 7 (“This is the same level of skill agreed to by the parties in the litigation. Patent Owner applies this definition for purposes of this Preliminary Response.”). For purposes of this Decision, we adopt the parties’ assessment of the level of ordinary skill in the art. We find that their assessment is consistent with the ’999 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther

    “Rather, the parties do not propose competing constructions for any term. Compare Pet. 8–9, with Prelim. Resp. 42–45. For purposes of this Decision, we give the claims their plain and ordinary meaning, and we need not and do not expressly construe any term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10

  Claim constructionDiscretionary denialcites Phillips
  Patents in suitUS 11,360,999
• Zhuhai Cosmx Battery Co., Ltd. v. Ningde Amperex Technology LimitedInstitution denied
  PTAB · Sep 22, 2023 · IPR2023-00587 · APJ Donna M Praiss · IPR · Institution

  The Board denied institution for claims 1–17 under § 314(a), finding the parallel litigation favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

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

    “Concerns about the degree of overlap may be mitigated where a petitioner agrees not to pursue in the parallel proceeding the grounds advanced in the petition. Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 11–12, 12 n.5 (June 16, 2020) (informative). “The PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo, 7–8 (emphasis added); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to § II.A). Here, Petitioner’s stipulation extends to the same grounds raised in the Petition, but does not extend to any ground “that could have been reasonably raised,” pursuant to Sotera. Patent Owner points to the narrowness of the proffered stipulation in the Sur-Reply and asserts this factor “only marginally weighs in favor of institution.” Sur-Reply 3. Because Petitioner’s stipulation obviates some potential for duplication or redundancy with respect to the patentability of the challenged claims (albeit not to the extent a full Sotera-type stipulation would have) and the parallel litigation does not include claims 10–16, we determine that the fourth Fintiv factor weighs against denial of institution.” slip op. at 15

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

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “Inherent anticipation requires that the missing descriptive material is ‘necessarily present,’ not merely probably or possibly present, in the prior art.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (quoting In re Robertson, 169 F.3d 743, 745, (Fed. Cir. 1999)). “[T]he reference must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008) (internal quotation marks omitted). In other words, it is not enough to be able to find all of the pieces of the claimed invention somewhere in a prior art reference; rather, those elements must be set out in the prior art reference in the same way they are in the claimed invention. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (“Because the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable

    “As discussed above, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Fintiv Memo 4. While the Petition and Dr. Gido provide an explanation for the full range in which Iwai’s D90 necessarily would be found, the Petition and Dr. Gido identify only a single value for the adhesive porous layer thickness of Iwai’s Example 7 and Comparative Example 2. Pet. 48, 51; Ex. 1003 ¶¶ 165, 174. The Petition and Dr. Gido direct us to the average thickness “a” of Iwai’s adhesive porous layer without taking into account Iwai’s disclosure of the ratio of the average thickness layer “a” to the volume average particle diameter “r.” Iwai describes the volume average particle diameter “r” being “projected at a proper height . . . formed on a surface of the adhesive porous layer.” Ex. 1006 ¶ 43. Thus, the evidence of record purportedly mapping claim 1’s recited “thickness of the porous layer” to Iwai does not plainly lead to a conclusion that Iwai necessarily discloses to a POSA the claimed “ratio of Dv90 of the inorganic particles to the thickness of the porous layer is in a range from 0.3 to 3.0.” Consequently, Petitioner does not present a compelling, meritorious challenge to claim 1 as anticipated by Iwai.” slip op. at 23

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

    “In addition to the lack of support in the record for the Petition and Dr. Gido’s assumption that the porous layer thicknesses of Examples 4 and 5 are the same as the porous layer thickness of Example 1 discussed above in connection with the anticipation challenge of claim 1, the cited record does not plainly support Petitioner’s assertion that Nishikawa teaches or suggests claim 10’s recited “uniform coating solution.” The Petition acknowledges that Nishikawa teaches a mixed solvent containing DMAc and TPG to provide a coating slurry. Pet. 31; Ex. 1003 ¶ 64; Ex. 1005, 22:26–33 (Example 4), 22:46–51 (Example 5). Nishikawa teaches that the solvent mixture includes a polar solvent (DMAc preferred) and a poor solvent (such as TPG) that “induces a microscopic phase separation structure to facilitate formation of pores upon providing the heat resistant porous layer.” Ex. 1005, 11:1–5. The Petition does not sufficiently explain why such a phase separation structure produced by Nishikawa’s mixed solvent meets claim 10’s recited “uniform coating solution.” Consequently, Petitioner does not present a compelling, meritorious challenge to claim 10 as obvious over Nishikawa’s teachings.” slip op. at 25

  § 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,964,987
• ROKU, Inc.Institution denied
  PTAB · May 5, 2023 · IPR2022-01552 · APJ Christopher L Ogden · IPR · Institution

  The Board denied institution of IPR challenging claims 17–21, 25–35, 59–69, 85–89, and 93–99 because the Fintiv factors favored discretionary denial.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Ex. 2011, 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential)). Roku’s stipulation, however, falls far short of a Sotera-type stipulation that would bar Roku from pursuing any grounds in the parallel district court proceeding that could have reasonably been raised before the Board. Thus, while Roku’s stipulation would prevent some overlap between this proceeding and the parallel district court proceeding, the scope of the stipulation does not rise to the level contemplated in the Fintiv Memo. Thus, although we find that the fourth Fintiv factor weighs somewhat against discretionary denial of institution, this does not end our analysis because Roku has declined to submit a Sotera-type stipulation.” slip op. at 14

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

    “§ 42.4(a), we may only institute an inter partes review 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); see also 37 C.F.R. § 42.108(c) (2022). 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 below, we exercise our discretion not to institute an inter partes review.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “In particular, we find it a close issue whether Ozawa discloses a “portable device” as recited in unchallenged independent claims 1, 39, and 73, which is also part of the challenged dependent claims. In claims 1 and 39, the term “portable device” is introduced in the preamble and appears throughout the claims. See Ex. 1101, 32:46–33:30, 36:32–37:11. In claim 73, a “portable device” is recited as an element of the claimed system. See id. at 39:44–40:20. In its Petition, Roku assumes, for its arguments, that the claim preambles, including the term “portable,” are limiting. See Pet. 24, 27–28. In its Preliminary Response, IOENGINE argues that “[t]he term ‘portable device’ is limiting because it provides antecedent basis for 11 instances in the body of claim 1,” and because the specification specifically focused on portability as an important feature of the invention. Prelim. Resp. 11–13. We agree with IOENGINE that the claim preambles are limiting at least to the extent that “portable” is a necessary feature of the portable device recited in the claims. We also point out that in the parallel district court litigation, the court specifically held that the preambles of claims 1, 39, and 73 are limiting. See Ex. 2008, 29–31. We agree with the district court’s analysis.” slip op. at 16

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

    “In light of IOENGINE’s preliminary arguments, we find the issue of whether Ozawa discloses a “portable device” to be a close issue. The 9 IOENGINE erroneously identifies the Preliminary Infringement Contentions as Exhibit 1116 rather than Exhibit 1118. evidence does not plainly support Roku’s position at this stage, and the question would need to be further developed at trial. Because the “portable device” limitation is part of all challenged claims, Roku would need to prevail on this issue to prevail on any claim at trial. Thus, we determine that Roku has not, at this stage, presented a “compelling, meritorious challenge[]” to any claim of the ’584 patent. Ex. 2011, 4. Accordingly, we find that the sixth Fintiv factor does not weigh against discretionary denial.” slip op. at 17

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,972,584
• ROKU, Inc. v. Ioengine, LLCInstitution denied
  PTAB · May 5, 2023 · IPR2022-01551 · APJ Christopher L Ogden · IPR · Institution

  The Board denied institution on all challenged claims under Fintiv, citing the advanced parallel district court case and finding no compelling merits challenge.

  RulingsInstitution decision

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

    “We agree with IOENGINE that trial in the parallel district court proceeding is likely to be about six months prior to the due date for our final written decision if we were to institute an inter partes review. Because the district court would address issues relating to the validity of the ’584 patent well before we would issue a final written decision, we find that the second Fintiv factor weighs heavily in favor of discretionary denial of institution.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “We agree with IOENGINE that the claim preambles are limiting at least to the extent that “portable” is a necessary feature of the portable device recited in the claims. We also point out that in the parallel district 5 Our compelling-merits analysis relies on the parties’ agreed understanding of the level of ordinary skill in the pertinent art, which Roku articulates in its Petition. Pet. 15 (citing Ex. 1003 ¶ 60); Prelim. Resp. 8–9; see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–1313 (Fed. Cir. 2005) (en banc) (the level of ordinary skill is pertinent to claim construction); Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966) (the level of ordinary skill is one of the factors to consider when determining obviousness). court litigation, the court specifically held that the preambles of claims 1, 39, and 73 are limiting. See Ex. 2008, 29–31. We agree with the district court’s analysis.” slip op. at 15

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

    “In light of IOENGINE’s preliminary arguments, we find the issue of whether Ozawa discloses a “portable device” to be a close issue. The evidence does not plainly support Roku’s position at this stage, and the question would need to be further developed at trial. Because the “portable device” limitation is part of all challenged claims, Roku would need to prevail on this issue to prevail on any claim at trial. Thus, we determine that Roku has not, at this stage, presented a “compelling, meritorious challenge[]” to any claim of the ’584 patent. Ex. 2011, 4. Accordingly, we find that the sixth Fintiv factor does not weigh against discretionary denial.” slip op. at 17

  Claim constructionDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,972,584
• Nokia Of America Corporation / Ericsson Inc. v. Godo Kaisha IP Bridge 1Institution denied
  PTAB · Nov 2, 2022 · IPR2022-00755 · APJ John D Hamann · IPR · Institution

  The Board denied institution under § 314(a), finding the Fintiv factors favored denial and that the challenges to claims 14–19 were not compelling.

  RulingsInstitution decision

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

    “Accordingly, this factor weighs heavily in favor of exercising our discretion to deny the Petition.” slip op. at 10

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

    “In sum, we find that Petitioner’s arguments, and Dr. Fuja’s cited testimony, are not compelling. Accordingly, Petitioner’s showing as to independent claim 14 is less than a “compelling, meritorious challenge[].” In addition, claims 15–19 depend from claim 14, and Petitioner’s arguments for these dependent claims do not cure the above deficiencies for independent claim 14. Pet. 26– 31. Likewise, Petitioner’s arguments for dependent claims 15 and 18 for the remaining ground (Kotecha combined with R1-081126) do not cure the above deficiencies for independent claim 14. Pet. 31–34. Thus, Petitioner’s showing of unpatentability is not compelling for any of the challenged claims for any of the asserted grounds. VII. CONCLUSION For the foregoing reasons, we exercise our discretion to deny the Petition. VIII. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied and no trial is instituted.” slip op. at 25

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

    “We find that Petitioner’s arguments are not compelling. First, we have doubts as to whether Kotecha (i) teaches a scheme “which utilizes a CQI trigger, a particular MCS value, and other fields present in the uplink grant” or (ii) “encourages [one of ordinary skill in the art] to use fields in addition to the MCS field.” Pet. 23–24. Rather, it appears that Kotecha teaches in its discussion regarding using a CQI trigger and a particular MCS value that “different fields, other than the MCS field, may be reused according to [Kotecha’s] disclosure to clearly signal whether an uplink grant is for only CQI or CQI and data.” See Ex. 1004, 4:23–43 (emphasis added). Hence, Kotecha teaches using other fields in lieu of—not in addition to—the MCS field. Id. Moreover, Kotecha’s teachings regarding using “one or more fields” to indicate only CQI or CQI and data identify the CQI request and MCS fields, as examples, without identifying additional fields, nor requiring the use of these fields. See id. at 7:19–22, 8:15–20, Fig. 6. Thus, these teachings also do not provide compelling support for Petitioner’s arguments that Kotecha encourages adding a third field to the CQI request and MCS fields combination. Id. Second, we find uncompelling Petitioner’s argument that one of ordinary skill in the art “would have been motivated to try using the . . . (RB) assignment field as a further indication of whether to multiplex CQI with data,” which “is one of only seven other possible fields for [one of ordinary skill in the art] to consider.” Pet. 25. This argument is premised on Kotecha encouraging using a third field—and only a third field—in addition to the CQI request and MCS fields, which, as we discuss above, Kotecha does not. Rather, choosing any three, for example, of the nine fields in the uplink grant would yield 84 possible combinations. See Ex. 1004, 1:25–34 (listing nine fields); Ex. 1003 ¶ 78 (testifying that “Kotecha identifies nine fields in the uplink grant”). Yet more combinations are possible if combinations having other numbers of fields are employed. “[T]he breadth of these choices and the numerous combinations indicate that these disclosures would not have rendered the claimed invention obvious to try.” Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d 1346, 1356 (Fed. Cir. 2013) (citing Rolls–Royce PLC v. United Techs. Corp., 603 F.3d 1325, 1339 (Fed. Cir. 2010)). Nor does Petitioner cite to any guidance provided in Kotecha about which combinations of fields would likely be successful in arguing that the claimed three field combination would have been obvious to try. See In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (“[W]here a defendant merely throws metaphorical darts at a board filled with combinatorial prior art possibilities, courts should not succumb to hindsight claims of obviousness.”).” slip op. at 22

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Third, we do not find compelling Dr. Fuja’s cited testimony, which in our view, and taken as a whole, risks using impermissible hindsight to reconstruct the invention of claim 14. See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”); In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” (citation omitted)). For example, the testimony appears to be predicated incorrectly on Kotecha teaching using a third field (i.e., the resource assignment field) in addition to the CQI request and MCS fields, and the testimony instead tracks the claimed three field combination of claim 14. Ex. 1003 ¶¶ 77–79. Moreover, Dr. Fuja opines that “it would have been obvious for [one of ordinary skill in the art] to use the resource assignment field in the uplink grant in addition to the CQI request bit and the MCS field because doing so provides additional flexibility and greater efficiency at no additional cost.” Ex. 1003 ¶ 79. We find this testimony to be conclusory as there is no factual support underlying Dr. Fuja’s opinion that one of ordinary skill in the art would have found such to be obvious. Id. ¶¶ 77–83. Also, claim 14 recites more than just reusing the resource assignment field to indicate whether data should be multiplexed with the CQI report. Ex. 1001, 24:7–14. Rather, claim 14 also recites evaluating whether the indicated number of resource blocks “is smaller than or equal to a determined number of resource blocks.” Id. Kotecha does not teach this, nor does Dr. Fuja address it in a compelling way. See Ex. 1003 ¶¶ 77–83.” slip op. at 23

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 8,385,239
• Ericsson Inc. / Nokia Of America Corporation v. Godo Kaisha IP Bridge 1Institution denied
  PTAB · Nov 2, 2022 · IPR2022-00725 · APJ David C Mckone · IPR · Institution

  The Board denied institution for claims 1–6 and 11–16 under § 314(a), finding the Fintiv factors favored denial and the challenges were not compelling.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “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.”); 35 U.S.C. § 314(a). The Board has held that the advanced state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 58 & n.2 (Nov. 2019) (“Trial Practice Guide”)2. We consider the following factors to assess “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”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’000 patent claims a filing date before March 16, 2013, the effective date of the relevant amendment, the pre-AIA version of § 103 applies. 2 Available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf. 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 5

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

    “implemented by a base station. As Petitioner points out, Classon describes a multicarrier communications system that includes a “base site” and “receiving platforms” (also referred to as “transmission targets”), which we find are a base station and mobile stations. Pet. 19–20 (citing Ex. 1005, code (57), ¶¶ 23, 27, 28, 31, Fig. 4). The parties dispute whether Classon (in light of the background knowledge of a skilled artisan or, in light of TR 25.858) teaches transmitting control information indicating whether a mobile station is to transmit one channel quality indicator (CQI) for each subcarrier block within a communication frequency band or one CQI for all subcarrier blocks within the communication frequency band instead of multiple CQIs for multiple subcarrier blocks within the communication frequency band, as recited in claim 1 (and similarly recited in claim 11). For the reasons given below, the case Petitioner advances is less than compelling.” slip op. at 21

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

    “Patent Owner’s argument has merit. Paragraphs 37–40 of Classon describe the base station determining what mode to use for communication based on the information (including CQI information) sent by the mobile units. Paragraph 41 states that “such channel quality information will preferably already be available to the base site” but that, if it is not available, “the base site can transmit 73 a message to the relevant transmission target or targets and request a reply that includes the relevant channel quality information.” Also, paragraph 41 states that “[w]ays in which such information can be provided to the base site will be described below in more detail.” This appears to be a reference to Classon’s description of the mobile stations, not the base station, determining that they are of “type 1” or “type 2” and sending channel quality information to the base station based on that determination, after which the base station determines whether to use the first mode or second mode in communications. Ex. 1005 ¶¶ 45–51. Thus, rather than supporting Petitioner’s position, the context around paragraph 41 appears in friction with that position. Petitioner does not explain how the base station determines a transmission mode (and thus a requested amount of CQI information) without first having that information from the mobile stations. Instead, it is reasonable to read paragraph 41 as requesting of the mobile stations information that the mobile stations deem appropriate; in other words, that the mobile stations determine whether to send a CQI value for each subcarrier or information on average channel quality. Even if it is sufficient to go forward on a theory that Classon implicitly teaches the claimed control message, the evidence Petitioner advances for this position is not compelling.” slip op. at 23

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

    “III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 325(D) Petitioner argues that we should not deny the Petition under 35 U.S.C. § 325(d). Pet. 56. Patent Owner argues that we should. Prelim. Resp. 23– 28. Because we deny the Petition for other reasons, we do not reach whether we should exercise our discretion to deny the Petition under § 325(d).” slip op. at 29

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 9,137,000
• Google LLC v. Videoshare LLCInstitution denied
  PTAB · Mar 24, 2021 · CBM2020-00027 · APJ Thomas L Giannetti · CBM · Institution

  The Board denied institution of CBM review for claims 1–7 because the patent did not qualify as a covered business method patent; it did not reach the § 101 challenge.

  RulingsInstitution decision

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

    “covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6

  • BurdenDecided for patent owner

    “covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached

    “E. Subject Matter Eligibility Under 35 U.S.C. § 101 Petitioner contends that the challenged claims are directed to an abstract idea that is not eligible subject matter for a patent under 35 U.S.C. § 101. Pet. 77. According to Petitioner, “[t]he claims recite the abstract idea of including advertising with appropriately formatted video.” Id. at 80. Patent Owner responds that Petitioner has failed to show that the claims recite ineligible subject matter. Prelim. Resp. 64. According to Patent Owner, “[t]he ’341 Patent claims recite specific steps that improve the functioning of a video server providing shared video files.” Id. Because we have determined that the ’341 patent does not qualify for covered business method patent review, we do not address whether the claims recite eligible subject matter under 35 U.S.C. § 101.” slip op. at 11

  § 101 eligibilityDiscretionary denial
  Patents in suitUS 10,362,341
• Marketdial, Inc. v. Applied Predictive Technologies, Inc.Institution denied
  PTAB · Mar 3, 2021 · CBM2020-00025 · APJ Justin T Arbes · CBM · Institution

  The Board denied institution of CBM review of claims 1–35 under Fintiv because the district court had already held the same claims invalid under § 101.

  RulingsInstitution decision

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

    “institution decision.” Prelim. Resp. 6–7 (citing Snap, Paper 8). We agree. There will be no trial as to patent infringement because the district court already concluded that all claims of the ’916 patent are invalid under § 101. Patent Owner indicates that it will appeal that decision once the remainder of the district court case concludes. Id. at 3. The statutory deadline for a final written decision in this proceeding would be one year from institution. Under the particular factual circumstances of this case, we find that this factor strongly weighs in favor of exercising our discretion to deny the Petition.” slip op. at 10

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached

    “3 Because we exercise our discretion to deny the Petition under 35 U.S.C. § 324(a), we need not decide other issues presented by the Petition, such as whether the ’916 patent is eligible for covered business method patent review.” slip op. at 8

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached

    “3 Because we exercise our discretion to deny the Petition under 35 U.S.C. § 324(a), we need not decide other issues presented by the Petition, such as whether the ’916 patent is eligible for covered business method patent review.” slip op. at 8

  § 101 eligibilityDiscretionary denial
  Patents in suitUS 8,571,916
• U.S. Venture, Inc. v. Sunoco Partners Marketing & Terminals L.P.Rehearing denied
  PTAB · Dec 17, 2020 · IPR2020-00728 · APJ Brent M Dougal · IPR · Rehearing

  The Board denied rehearing, leaving in place its denial of institution for claims 16–17 based on the Fintiv factors and its § 314(a) discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner

    “the evidence laid out an approximate time frame for when the trial would likely be held. Dec. 9 (citing Ex. 2003); see also id. at 8–9 (citing PO Resp. 35; Ex. 1026) (Discussing the Court’s Procedures and timeline for trial after the docket call). Thus, we determined that this factor favored denying institution under our analysis of the factors under Fintiv. Id. at 9.” slip op. at 4

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

    “Petitioner acknowledges that the proposed combination of the references relies on “us[ing] the cumulative totals of the flow rates of the unblended components in the Hoffman compensation process” (id.), however Patent Owner identifies that Hoffman appears to teach away from using the flow rates of the unblended components in its calculations because of the uncertainty in the flow rate of the blended line. Prelim. Resp. 19, 21– 22. Contrary to Petitioner’s position, it is not Patent Owner’s burden to show why “a person of ordinary skill in the art would be discouraged from measuring flow rates upstream for use in the Hoffman compensation process” (Reh. Req. 9), but rather, Petitioner bears the burden to show why a person of ordinary skill in the art would measure flow rates upstream for use in the Hoffman compensation process in view of the all of the teachings of the references (35 U.S.C. § 314(a) (Institution only authorized if “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.”)). Petitioner’s arguments do not show that we misapprehended or” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageNot reached

    “argument concerning the construction of the term “in-line blending.” Id. at 13.” slip op. at 6

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,207,686
• Supercell OY v. Gree, Inc.Rehearing denied
  PTAB · Nov 18, 2020 · PGR2020-00041 · APJ Lynne H Browne · PGR · Rehearing

  The Board denied Supercell’s rehearing request, upholding denial of institution based on the Fintiv factors and the risk of duplicated efforts and inconsistent results.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner

    “this factor or that we misapprehended the trial date. At the time of our Decision, trial was scheduled in the parallel proceeding for December 7, 2020, approximately nine months before our final written decision would have been due, if we were to institute trial. Dec. 10–11. As such, this gap in timing created a cognizable risk of inconsistent results and duplication of efforts, which weighed toward denying institution. Id. at 7, 11. Additionally, the Decision notes that some uncertainty exists regarding trial dates, as Petitioner again argues in its Request. Id. at 11; Req. Reh’g 4. However, the Decision goes on to determine that even if trial in the parallel proceeding was delayed by two months, consistent with Petitioner’s prior requested delay, the proximity of the trial date to our final written decision would still favor denying institution. Dec. 12 (citing Ex. 2002, 2). As such, Petitioner has not shown that the Board misapprehended the trial date.” slip op. at 5

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was” slip op. at 8

  • BurdenDecided for patent owner

    “Petitioner was provided an opportunity to respond to this evidence to address any “time-based distinctions in Dr. Claypool’s testimony,” however, Petitioner declined to address this testimony in its Preliminary Reply, despite having the opportunity to do so. Prelim. Reply 5–7. We decline to consider now, on rehearing, arguments that Petitioner failed to make in its pre-institution papers. It is Petitioner’s burden to demonstrate that Mastermind was publicly accessible. As we stated in our Decision, this prior testimony casts serious doubt on Petitioner’s ability to satisfy that burden. Dec. 25. We also decline to consider new testimonial evidence submitted on rehearing on this issue, as Petitioner does not show good cause for admitting this new evidence. See Huawei Device Co. v. Optics Cellular Tech., LLC, IPR2018-00816, Paper 19 (PTAB Jan. 8, 2019) (precedential) (showing of “good cause” required prior to filing a rehearing request or in the request itself for new exhibits to be admitted). We could not have misapprehended or overlooked evidence and arguments that were not made before our Decision.” slip op. at 9

  § 102 anticipationDiscretionary denial
  Patents in suitUS 10,307,677

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.