• Zhejiang Lingdi Digital Technology Co., Ltd. v. Clo Virtual Fashion, IncInstitution denied
  PTAB · Oct 25, 2024 · IPR2024-00970 · APJ William V Saindon · IPR · Institution

  Institution was denied for claims 1–11 because the petition did not sufficiently explain why a skilled artisan would combine TUKATECH’s features with EZBRUSH.

  RulingsInstitution decision

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

    “II. ANALYSIS A. Legal Standards Used in the Merits Analysis “In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A claim is unpatentable under 35 U.S.C. § 103 if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious . . . to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective evidence of non-obviousness, i.e., secondary considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).” slip op. at 5

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

    “Petitioner’s expert provides no citation for his “smooth seam” or “pleated or ruffled effect at the seam” rationales. Indeed, Petitioner’s expert does not indicate that he has expertise regarding clothing, let alone seam formation on clothing. Ex. 1003 ¶¶ 3–13. As our Rules make clear, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); see also Sundance, Inc. v. DeMonte Fab. Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008) (“Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702.”). Petitioner’s expert does not cite evidence in support of his statements, nor does he provide evidence that he has a background that indicates that he would intrinsically know such things to be true. On this record, we afford Petitioner’s expert’s testimony on the “length selection” rationales for providing a “smooth seam” and/or “pleated or ruffled effect at the seam” no weight. Ex. 1003 ¶ 61. For this reason, Petitioner’s obviousness position is untenable. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner’s expert provides no citation for his “smooth seam” or “pleated or ruffled effect at the seam” rationales. Indeed, Petitioner’s expert does not indicate that he has expertise regarding clothing, let alone seam formation on clothing. Ex. 1003 ¶¶ 3–13. As our Rules make clear, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); see also Sundance, Inc. v. DeMonte Fab. Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008) (“Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702.”). Petitioner’s expert does not cite evidence in support of his statements, nor does he provide evidence that he has a background that indicates that he would intrinsically know such things to be true. On this record, we afford Petitioner’s expert’s testimony on the “length selection” rationales for providing a “smooth seam” and/or “pleated or ruffled effect at the seam” no weight. Ex. 1003 ¶ 61. For this reason, Petitioner’s obviousness position is untenable. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). Similarly, Petitioner asserts that adding “TUKATECH’s suggested techniques” to EZBRUSH “would be merely the application of known techniques to a known system ready for improvement to yield predictable results.” Pet. 43 (citing Ex. 1003 ¶ 62). Petitioner asserts that a person of ordinary skill in the art “would have recognized that applying the suggested user interface improvement from TUKATECH to EZBRUSH’s CAD system would have led to predictable and helpful results with a reasonable expectation of success.” Id. (citing Ex. 1003 ¶ 62). Similar to the discussion above, we have reviewed the cited paragraph of Petitioner’s expert’s declaration and find insufficient credible evidence supporting Petitioner’s naked assertions regarding what was an “application of known techniques to a known system ready for improvement to yield predictable results.” Pet. 43; Ex. 1003 ¶ 62. To the extent Petitioner is arguing that obviousness can be established merely by showing that EZBRUSH and TUKATECH are in the same field of endeavor (e.g., Pet. 43 (“both [are] directed toward CAD systems”)), we disagree. We are not aware of any authority supporting such an argument. Petitioner has not sufficiently explained why or how it would have been obvious to apply the length comparison information from the table of TUKATECH’s size reshaping feature to EZBRUSH in a manner that meets each step of the claim. Thus, Petitioner’s additional reasons for modifying EZBRUSH to implement TUKATECH’s sizing table are also untenable.” slip op. at 10

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

    “C. Claim Construction Under 37 C.F.R. § 42.100(b), we apply the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary 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 1312–13. We do not need to construe any claim terms to reach a decision in this proceeding. Realtime, 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 7

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,733,773
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Slyde Analytics, LLCInstitution denied
  PTAB · Oct 10, 2024 · IPR2024-00040 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were unpatentable, principally because Orr’s trigger circuit was not shown to be a processor.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “patent. The term processor appears only once in the entire Specification.11 That passage in the Specification states: The inertial sensor 23 could be an accelerometer with embedded power processing capabilities and which is always powered on in the first low power mode. The embedded power processing capabilities comprise a processor or other processing means for executing programmable software code for analysing the accelerations values delivered by the accelerometer, and for generating signals or values when certain conditions are met. Ex. 1001, 6:15–22 (emphasis added). We read the phrase “for executing programmable software code” as referring back to both the “processor” and the “other processing means.” The disjunctive “or” between “processor” and “other processing means” binds the two together as the subject being addressed. Accordingly, we know from the Specification’s only disclosure of the term, that a “processor” in an inertial sensor has a structure that is configured to execute programmable software code.12” slip op. at 16

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyOther

    “Neither party suggests that “processor” invokes 35 U.S.C. § 112, paragraph 6. Nor do we so find. Thus, the Halliburton Rule against functional claiming still applies to “processor” and we do not construe that term to cover any structure which performs the recited function of “discriminating between gesture and no gesture based on a direction of said acceleration signal as measured by said accelerometer being a three dimensional accelerometer and on a slope or frequency of said acceleration signal.”” slip op. at 15

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

    “First, Petitioner has not asserted, much less demonstrated, that only a processor, and nothing else, can be used to detect a specific gesture, detect each component of the gesture, and analyze each component to determine whether a gesture has been properly formed. Although a processor may perform those functions, the record is inadequate to show, even for institution purposes, that only a processor, nothing but a processor, can perform those functions and that one of ordinary skill in the art would have so recognized. Thus, the fact that trigger circuit 38 detects a specific gesture, detects each component of the gesture, and analyzes each component to determine whether the gesture has been properly formed, does not make trigger circuit 38 a processor. Further, nothing indicates trigger circuit 38 is configured to execute programmable code. Second, that there are processors elsewhere in the system but in sleep mode at the time the inertial sensor operates does not persuade us that trigger circuit 38 itself must be a processor. This argument assumes, without supporting evidence and explanation, the stated functions of the trigger circuit can only be performed by a processor. Again, nothing indicates that trigger circuit 38 is configured to execute programmable code. Third, Petitioner has not explained the presence of switch 41 and comparator 46 within trigger circuit 38, neither one of which, on this record, is shown as having anything to do with execution of programmable code. Fourth, Orr describes that Main Accelerometer Sub-sys 42 in trigger circuit 38 includes a second motion sensor which is activated by a signal from switch 41 and which provides output signal 44 to threshold comparator 46. Ex. 1005, 7:3–17. Petitioner has not adequately explained the presence of this second motion sensor within Main Accelerometer Sub-sys 42. On this record, a motion sensor, such as the second motion sensor in Main Accelerometer Sub-sys 42, has not been shown to have anything to do with execution of programmable code. For all of the foregoing reasons, Petitioner has not adequately accounted for limitations 14[E][1] and 14[E][3]. In short, trigger circuit 38 is not configured to execute programmable code and so has not been shown to teach or suggest the processor limitation. Petitioner has not shown a reasonable likelihood that it would prevail in establishing obviousness of claim 14 over Orr and Orr682.” slip op. at 24

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, and consistent with the Director’s remand instructions, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’678 patent. Accordingly, we decline to institute an inter partes review of the challenged claims of the ’678 patent. B.” slip op. at 3

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,804,678
• Amazon.Com, Inc. / Amazon.Com Services LLC v. Nokia Technologies OYInstitution denied
  PTAB · Oct 4, 2024 · IPR2024-00725 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 were unpatentable; Yagasaki did not disclose the claimed intentional discontinuity in image-frame numbering.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). 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.” 35 U.S.C.§ 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (footnote omitted). Upon consideration of the contentions of the parties and the evidence before us, we conclude that Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’134 patent. We decline to institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Havlicek and not 8 The record does not include any evidence of secondary considerations of nonobviousness. disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Also, our conclusion would be the same even if we applied Patent Owner’s stated level of ordinary skill in the art. C.” slip op. at 14

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

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner has not proposed a construction for any claim term and asserts that “no constructions are necessary to resolve any disputes identified in this Petition.” Pet. 7 (footnote omitted). Patent Owner does not disagree and also has not itself proposed any construction. Prelim. Resp. 9. We find that no express construction for any claim term is necessary. D.” slip op. at 16

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

    “According to limitation 1[a], the decoded “indication” must “inform[] an intentional discontinuity of numbering of the image frames.” Petitioner has not sufficiently shown any discontinuity of the numbering of image frames. Patent Owner asserts that “Petitioner relies on continuously incremented ‘temporal_reference codes’ as the claimed numbering, but these continuously incremented ‘temporal_reference codes’ never have a discontinuity.” Prelim. Resp. 11. We determine that Petitioner has not sufficiently shown, for institution purposes, a discontinuity in these temporal_reference codes. Petitioner’s argument assumes, without adequate supporting basis, that when a duplicate picture is eliminated by the encoder such that no image picture content is provided in the encoder output, the temporal_reference code for that duplicate picture is also eliminated and not provided in the encoder output to be furnished to the decoder. To prevail, this alleged fact must be sufficiently shown and not assumed. The Petition made no adequate showing. Yagasaki expressly states: “The temporal reference generator [within the encoder] feeds the temporal reference code to the variable-length coder 1006 for inclusion in the coding apparatus output signal VC1.” Ex. 1005, 19:27–29. We find no statement or indication of an exception for a duplicate picture of which the image data is “eliminated,” and Petitioner has not pointed us to any such description.” slip op. at 28

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,204,134
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Slyde Analytics, LLCInstitution denied
  PTAB · Apr 9, 2024 · IPR2024-00041 · APJ St John Courtenay III · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable under any asserted obviousness ground.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any challenged claim of the ’085 patent. Accordingly, we decline to institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art (POSITA). In assessing 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 workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We disagree with Petitioner, Dr. Bederson, and Patent Owner on this point, because at least one of their disputes centers on the meaning of first and second power modes. We again emphasize that “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (emphasis added). Here, in its Petition and Dr. Bederson’s supporting declaration (Ex. 1002 ¶ 123)), neither Petitioner nor Dr. Bederson has proposed any claim construction for the claim 1 terms “first power mode” and “second power mode.” See 37 C.F.R. § 42.104(b)(3) (the petition must set forth “how the challenged claim is to be construed.”). However, on this record, we determine the claim 1 terms “first power mode” and “second power mode” require explicit claim construction as a principal threshold issue in our institution decision. And Petitioner has not done so.” slip op. at 16

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

    “than two power modes can be provided” (Ex. 1001, 5:58–59), for purposes of our claim construction in deciding whether institute an inter partes review, we focus on the corresponding supporting descriptions supra of the first and second power modes. As described within the ’085 patent, switching between first and second power modes seems to generally require switching physical components, e.g., electrodes, on or off as needed to conserve power. The conservation of power comes from a device being ready or not ready, set or not set, to perform a function, rather than actually performing or not performing a function. Petitioner has the burden to show how the first and second power modes of claim 1 of the ’085 patent might be alternatively interpreted as modes involving different power usage levels due to the selective usage of applications available for use, instead of different power usage levels due to switching physical components on or off, rendering them available or unavailable for use, consistent with the many supporting descriptions found in the ’085 patent, as reproduced above.” slip op. at 20

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,198,085
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Slyde Analytics, LLCInstitution denied
  PTAB · Apr 5, 2024 · IPR2024-00002 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any of claims 1–24 unpatentable, principally because the asserted combinations did not establish the required full-display card replacement limitations.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any challenged claim of the ’922 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art at the relevant time (“POSITA”) would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, or a related field, and 2-3 years of experience in the research, design, development, or testing of graphical user interfaces, touchscreens, and mobile devices, with additional education substituting for the experience and vice-versa.” slip op. at 9

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

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner asserts that “Petitioner does not believe any term requires construction.” Pet. 6. Patent Owner asserts that it “believes that claim construction is not required to resolve any issues.” Prelim. Resp. 7. We agree that on this record it is not necessary to conduct express claim construction for any term. C.” slip op. at 11

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

    “Petitioner adds: “It would have been obvious to apply the same teaching to Figure 5B and to a wearable device such as a watch,” referring to Louch’s description in paragraph 67 that widget 402 “can consume the entire display area 406 or a portion thereof.” Pet. 21 (citing Ex. 1002 ¶¶ 51–59, 116). No reasoning or rationale, however, is provided in the Petition for sizing the scrolling widgets to fill the whole or entirety of the display. Only a conclusory statement of obviousness is provided in the footnote. We have reviewed each of the cited paragraphs in Dr. Bederson’s Declaration and could find nothing supportive in that regard in any of cited paragraphs 51–59 for Petitioner’s conclusory statement about sizing the scrolling widgets to the whole or entirety of the display. There is one sentence in the last cited paragraph, paragraph 116 of Dr. Bederson’s Declaration, which provides a reasoning for sizing the scrolling widgets to be the whole or entirety of the display. However, we decline to consider it, because “[a]rguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Also, embedding reasoning in the expert’s Declaration and not expressly stating the same in the Petition fail to give Patent Owner adequate notice to respond. Patent Owner did not respond to this extraneous argument, improperly incorporated by reference from Dr. Bederson’s Declaration into the Petition.” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 9,651,922
• Manufacturing Resources International, Inc. v. Samsung Electronics Co. Ltd.Institution denied
  PTAB · Feb 7, 2024 · IPR2023-01201 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 2, or 5 obvious over either asserted reference combination.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any challenged claim of the RE ’117 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “We adopt Petitioner’s statement of the level of ordinary skill in the art, except that we delete the qualifier “at least,” which renders the statement vague by rendering the scope of ordinary skill unbounded at the top. This level of ordinary skill appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).9 C.” slip op. at 9

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

    “1. “display panel” According to Petitioner, “display panel” means “a flat type screen on which images are displayed, such as a Liquid Crystal Display or Plasma Display Panel.” Id. at 17. Patent Owner asserts that Petitioner improperly limits “display panel” to only a “screen” on which images are displayed. Prelim. Resp. 8. Patent Owner states, however, that “construction of this term does not impact the issues in this proceeding.” Id. Patent Owner does not dispute Petitioner’s position that “display panel” includes Liquid Crystal Display and Plasma Display Panel. Therefore, it is not necessary to construe “display panel” for purposes of this decision. “circuit board mounting part” 2. Petitioner proposes a construction for “circuit board mounting part” which appears in each of claims 1, 2, and 5. Pet. 19–25. Our decision, however, does not depend on any construction of the term “circuit board mounting part.” Thus, it is not necessary to construe this term.” slip op. at 11

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

    “disclosed in Figure 1, especially since “the text of the ’117 patent does not limit the entry/exit of the cooling paths.” Prelim. Reply 2. However, given that the goal of the RE ’117 patent is to avoid inter-heating by providing separate cooling fluid paths, as discussed above, it is not consistent with the Specification to have mixing of the two cooling fluid paths within the panel display device. We are not reading an extraneous limitation from the Specification into the claim. Rather, we are interpreting the limitation “separated from each other” in light of the Specification, which is the single best guide to the meaning of a disputed term. Phillips, 415 F.3d at 1315.” slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
• Apple Inc. v. Togail Technologies, Ltd.Institution denied
  PTAB · Sep 14, 2023 · IPR2023-00720 · APJ Gregg I Anderson · IPR · Institution

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

  RulingsInstitution decision

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

    “To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art, the Board must consider whether a person of ordinary skill would have been motivated to combine the prior art to achieve the claimed invention. Nuvasive, 842 F.3d at 1381. slip op. at 11

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

    “‘transmitting a second SI request message to the BS only when . . . the prohibit timer expires.’” Pet. 26. This argument that the limitation is obvious is conclusory. The Ding Declaration is repetitive of the Petition without any additional support cited for the conclusions. See Ex. 1003 ¶ 59 (citing Ex. 1007, 2). We give the Ding Declaration little weight where it contains an exact restatement of the petition’s unsupported, conclusory assertions without any additional supporting evidence or reasoning. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB August 24, 2022) (precedential). We agree with Patent Owner. Petitioner’s citations to Oppo show that the SI can be sent regardless of whether or not the timer has expired. For example, the table above shows that a second SI request transmission event may occur without the prohibit timer having expired. Specifically, there is a check as to whether the SI request is “available” or “acknowledged,” and if so, the prohibit timer is stopped, and thus would not run to expiration. See Ex. 1007, table (Proposal 4). Petitioner has not sufficiently shown that the requested SI having been “acknowledged” is the same as the requested SI” slip op. at 14

  • Expert testimonyPetitioner expert discountedOther

    “‘transmitting a second SI request message to the BS only when . . . the prohibit timer expires.’” Pet. 26. This argument that the limitation is obvious is conclusory. The Ding Declaration is repetitive of the Petition without any additional support cited for the conclusions. See Ex. 1003 ¶ 59 (citing Ex. 1007, 2). We give the Ding Declaration little weight where it contains an exact restatement of the petition’s unsupported, conclusory assertions without any additional supporting evidence or reasoning. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB August 24, 2022) (precedential).” slip op. at 14

  • Skill levelSkill level petitioner adoptedOther

    “IV. PATENTABILITY ANALYSIS A. Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art in the field of the ’502 patent, as of April 2, 2018, would have been someone knowledgeable and familiar with the cellular telecommunications arts that are pertinent to the ’502 patent. That person would have at least a master’s degree in electrical engineering, computer engineering, computer science, or a related field from an accredited program and one year of relevant experience in mobile communications or wireless networks. A Ph.D. degree in a relevant field may substitute for some work experience.” slip op. at 9

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,791,502
• ADT LLC v. Vivint, Inc.Institution denied
  PTAB · Oct 4, 2022 · IPR2022-00642 · APJ Iftikhar Ahmed · IPR · Institution

  The Board denied institution because ADT did not clearly map the references to the challenged claims or adequately explain why a skilled artisan would combine them.

  RulingsInstitution decision

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

    “§ 42.4(a), we may not institute an IPR unless “the information presented in the petition filed under section 311 and any response filed under section 313 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). Taking into account Vivint’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that ADT would prevail in challenging any one of claims 1, 2, 10–14, and 25–27 of the ’769 patent as unpatentable. We, therefore, deny ADT’s Petition.” slip op. at 2

  • BurdenDenied

    “U.S.C. § 311(a), that identifies the challenged claims and the grounds for challenge with particularity, [35 U.S.C.] § 312(a)(3).” SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1351 (2018); see also 37 C.F.R. § 42.104(b) (specifying necessary elements of a petition). Under 35 U.S.C. § 314(a), an IPR can be instituted only if there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a). Even when a petitioner demonstrates a reasonable likelihood as to at least one claim, however, institution of an IPR remains discretionary. SAS Inst., 138 S. Ct. at 1351 (“§ 314(a) invests the Director with discretion on the question whether to institute review”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016)” slip op. at 11

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

    “Ulrich and Mathias, the reasoning provided is generic and does not clarify sufficiently which teachings from each reference it combines to account for all the limitations of claims 1, 2, and 10–14. In Belden Inc. v. Berk-Tek LLC, the Federal Circuit explained that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Further, a rationale to combine must not rely on hindsight, but must “imply a motivation to pick out those two references and combine them to arrive at the claimed invention.” Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017); Metalcraft of Mayville, Inc. v. 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.”).” slip op. at 15

  • Expert testimonyPetitioner expert discountedOther

    “that “[s]imilarity in subject matter is insufficient,” by itself, “to establish that a [person having ordinary skill in the art] would have been motivated to combine references.” Prelim. Resp. 23–24 (citing Microsoft Corp. v. Enfish, LLC, 662 F. App’x 981, 990 (Fed. Cir. 2016) (unpublished); Securus Techs., Inc. v. Global Tel*Link Corp., 701 F. App’x 971, 977 (Fed. Cir. 2017) (unpublished); Salpeter v. ARP Wave, LLC, IPR2019-01384, Paper 12 at 17 (PTAB Jan. 27, 2020)). Similar to Personal Web Technologies, ADT’s “reasoning seems to say no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined.” Personal Web Techs., 848 F.3d at 993; see Prelim. Resp. 25 (citing Apple Inc. v. MPH Techs. Oy, 28 F.4th 254, 262–63 (Fed. Cir. 2022) (finding expert testimony conclusory and improperly guided by hindsight based on use of the phrases: “would naturally have included”; “would be logical”; and “could be, and most logically would be”)). ADT neither explains why a person having ordinary skill in the art would have been motivated to combine the teachings of Ulrich and Mathias—as we understand ADT to be arguing—nor does it explain why a person having ordinary skill in the art would have been motivated to modify either Ulrich or Mathias such that either reference may be asserted in a single-reference obviousness ground. In addition, because Dr. Rhyne’s declaration testimony mirrors the arguments presented by ADT, his supporting testimony fares no better. Compare Pet. 13, with Ex. 1009 ¶¶ 64, 65.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,700,769
• F5, Inc. v. Sunstone Information Defense, Inc.Institution denied
  PTAB · Aug 9, 2022 · IPR2022-00484 · APJ Jon M Jurgovan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–6, 8, 12, 16, 21–25, 27, 28, 32, and 36 unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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 § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The “reasonable likelihood” standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute an inter partes review on any claim of the ’682 patent on any asserted ground of unpatentability.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “of the alleged invention “will have had either a master’s degree in computer science with at least two-years’ experience developing technology for detecting malware affecting internet browsers or a bachelor’s degree with four years of said experience.” Pet. 12 (citing Ex. 1006 ¶ 42). Patent Owner has not proposed a differently stated level of ordinary skill in the art. See generally Prelim. Resp. Nor has Patent Owner opposed Petitioner’s statement of the level of ordinary skill. Petitioner’s assertion is supported by the testimony of Dr. Jakobsson. Ex. 1006 ¶ 42. Petitioner’s assertion also appears consistent with the content of the applied prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). We adopt Petitioner’s statement of the level of ordinary skill in the art, but delete the modifier “at least” to avoid vagueness and to keep the level of ordinary skill from extending into a level above “ordinary.” B.” slip op. at 10

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

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Neither Petitioner nor Patent Owner has proposed a construction for any claim term. Patent Owner states that no claim construction is necessary to determine whether review should be instituted. Prelim. Resp. 11. We determine that no express claim construction is necessary for this Decision.” slip op. at 11

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

    “First, Petitioner splits limitation [1.d] into two parts, and applies Chen’s teachings to meet the first part, i.e., subsections (i) and (ii) of limitation [1.d] (Pet. 23–28), and Ozzie’s teachings to meet the second part, i.e., subsection (iii) of limitation [1.d] (Pet. 28). There is no explanation by Petitioner of how the combination of Ozzie and Chen results in satisfaction of all three subsections (i), (ii), and (iii) of limitation [1.d] at the same time in a single embodiment. On the record presented by Petitioner, at most only subsections (i) and (ii) of limitation [1.d] are met, or subsection (iii) is met, but not all three subsections (i), (ii), and (iii) at once as is required by claim 1. One seeking to establish obviousness based on more than one reference must articulate sufficient reasoning with rational underpinning to combine teachings. See KSR Int’l, 550 U.S. at 418. Petitioner has not presented reasoning with rational underpinning to support satisfaction of all three subsections (i), (ii), and (iii) together in a single embodiment. The carving up of limitation [1.d] into two parts and satisfying the two parts separately by relying on different references, one for each part, fails to treat limitation [1.d] as a whole and is improper.” slip op. at 22

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,958,682
• F5, Inc. v. Sunstone Information Defense, Inc.Institution denied
  PTAB · Jul 28, 2022 · IPR2022-00482 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–18 and 37–39 were unpatentable over any asserted obviousness ground.

  RulingsInstitution decision

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

    “review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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 § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The “reasonable likelihood” standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute an inter partes review on any claim of the ’870 patent on any asserted ground of unpatentability.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner has not proposed a differently stated level of ordinary skill in the art. Nor has Patent Owner opposed Petitioner’s statement of the level of ordinary skill. 3 Patent Owner submits the Declaration of Nenad Medvidović, Ph.D. in support of its Preliminary Response. Ex. 2001. 4 The Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Based on the record before us, the ’870 patent has an effective filing date prior to the effective date of the applicable AIA amendments (March 16, 2013). Therefore, we apply the pre-AIA version of 35 U.S.C. § 103. Petitioner’s assertion is supported by the testimony of Dr. Jacobsson. Ex. 1006 ¶ 42. Petitioner’s assertion also appears consistent with the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). We adopt Petitioner’s statement of the level of ordinary skill in the art, but delete the modifier “at least” to avoid vagueness and to keep the level of ordinary skill from extending into a level above “ordinary.” B.” slip op. at 9

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

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Neither Petitioner nor Patent Owner has proposed a construction for any claim term. Patent Owner states that no claim construction is necessary to determine whether review should be instituted. Prelim. Resp. 11. We determine that no express claim construction is necessary for this Decision. C.” slip op. at 11

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

    “One seeking to establish obviousness based on more than one reference must articulate sufficient reasoning with rational underpinning to combine teachings. See KSR Int’l, 550 U.S. at 418. Petitioner has not presented reasoning with rational underpinning to support satisfaction of all three subsections (i), (ii), and (iii) together in a single embodiment. The carving up of limitation [1.d] into two parts and satisfying the two parts separately by relying on different references, one for each part, fails to treat limitation [1.d] as a whole and is improper. Second, Petitioner identifies Chen’s user actions as the claimed response message. Pet. 21. But Chen’s “user actions” are canonical, i.e., theoretical possibility, and used only for formal reasoning analysis, as discussed above in Section II.C.3. They have not been shown by Petitioner to be actual responses in a real communication between a server and a user. Chen’s user action or user actions do not constitute a response message. Further, Petitioner has not shown how Chen’s canonical user action corresponds in kind to any actual response message in Ozzie. Petitioner’s application of Chen in Ozzie to make a real response message from Chen’s canonical user actions reflects application of inappropriate hindsight reasoning and is not reasonably suggested by the applied prior art. Third, Petitioner identifies Chen’s program invariant as the claimed prediction of a response message. Pet. 21. But Chen’s “program invariant,” as discussed above in Section II.C.3, is not any expected or anticipated information that is returned to any server from a client. It is not the prediction of any response message. Further, Petitioner has not shown how Chen’s program invariant corresponds in kind to any prediction of an actual response message in Ozzie. Petitioner’s application of Chen in Ozzie to make a prediction of a response message from Chen’s program invariant reflects application of inappropriate hindsight reasoning and is not reasonably suggested by the applied prior art.” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,122,870

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.