- Nokia Of America Corporation v. TQ Delta, LLCInstitution deniedPTAB · Sep 7, 2022 · IPR2022-00640 · APJ Jennifer Meyer Chagnon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that claims 17 or 18 were unpatentable under any asserted 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, which provides that an inter partes review may be instituted only upon a showing 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). Applying this standard, and upon consideration of the information presented in the parties’ briefing, as well as the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Based on these disclosures, we agree with Patent Owner that the Specification of the ’881 patent clearly distinguishes between methods of compensating for differences in latency and methods of reducing differences in latency. We also agree that the claim is directed to the reducing differences embodiment. See Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010) (“It is not necessary that each claim read on every embodiment.”); see also SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983 F.3d 1367, 1379 (Fed. Cir. 2021) (“We have noted that ‘[i]t is often the case that different claims are directed to and cover different disclosed embodiments. The patentee chooses the language and accordingly the scope of his claims.’ Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1383 (Fed. Cir. 2008); see also Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1381 (Fed. Cir. 2018) (same); PSN [Illinois, LLC v. Ivoclar Vivadent, Inc.], 525 F.3d [1159,] 1166” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“Gray teaches changing the rate at which packets are provided to the links based on the quality of the link. See Ex. 1007, code (57); see also id. at 6:53–59 (“A delay factor associated with each of the plurality of links is determined and communication packets are distributed among the plurality of links based upon the delay factor associated with each of the plurality of links. The communication packets may be distributed to the links by providing communication packets to a link of the plurality of links with the least delay.”). Rather than reducing the difference in latency between the links, Gray teaches compensating for the differences by sending more packets to higher quality links, and less packets to lower quality links. Section II.C.), we agree with Patent Owner that Petitioner has not shown sufficiently that Gray discloses “reducing a difference in latency between the bonded transceivers” as recited in claim 17. For this reason, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 17, or claim 18 which depends therefrom, is anticipated by Gray.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“Petitioner’s combination with Cooper, however, does not remedy the deficiencies discussed above with respect to the asserted ground based on Keller-Tuberg alone. See Section II.F. As noted above, Petitioner relies on Cooper’s teaching of a specific delay-reducing algorithm, but continues to rely on Keller-Tuberg for its alleged teaching of “equalizing the difference in latency between the bonded transceivers.” Pet. 53. As Patent Owner argues “dynamically balancing the receive queue lengths to compensate for difference in latency,” as in Petitioner’s combination of Keller-Tuberg and Cooper, “compensates for a difference in configuration latency without doing anything to the actual difference in latency much less ‘utilizing a transmission parameter to reduce a difference in latency.’” Prelim. Resp. 8 compensates for the differences in latency” (emphasis added)). Based on our construction of the “utilizing” term, discussed above (see Section II.C.), we agree with Patent Owner that Petitioner has not shown sufficiently that the combination of Keller-Tuberg and Cooper teaches “reducing a difference in latency between the bonded transceivers” as recited in claim 17. For these reasons, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 17, or claim 18 which depends therefrom, would have been obvious in view of Keller- Tuberg and Cooper.” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,453,881 - Sensor Electronic Technology, Inc. v. Lite-On Technology Corporation And Genesis Photonics, Inc.Institution deniedPTAB · Jul 15, 2022 · IPR2022-00397 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3–8, 10, or 11 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the parties’ briefing and the evidence of record, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’013 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention of the ’013 patent would have had “a Bachelor’s Degree in electrical engineering, materials science, physics, or a similar discipline,” and “one to two years of experience in the field of LED packaging design with knowledge of device design, the semiconductor and contact metal materials involved with the fabrication of an LED device, as well as LED packaging design.” Pet. 5 (citing Ex. 1010 ¶¶ 30–31). Patent Owner asserts that a person of ordinary skill in the art at the relevant time would have had (i) “at least an undergraduate degree in electrical engineering (or similar discipline with an electrical and/or semiconductor emphasis) and two or more years of experience in LED device design, fabrication and packaging,” (ii) “a master’s degree with at least a year of experience in those fields,” or (iii) “an equivalent combination of education and experience.” Prelim. Resp. 2. 7 With respect to the fourth Graham factor, the parties do not present arguments or evidence regarding objective indicia of non-obviousness. See Pet. 88; see generally Prelim. Resp. We see little difference between the parties’ contentions regarding the level of ordinary skill in the art. For purposes of this Decision, we apply the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the level of skill in the art at the time of the invention as reflected in the ’013 patent and the prior art of record.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“1. “orthographic projection” Petitioner argues that “orthographic projection” is a term of art that should be construed according to its plain meaning, which Petitioner contends is “a two-dimensional graphic representation of an object in which the projecting lines are at right angles to the plane of the projection.” Pet. 6 (quoting Ex. 1012, 1 (dictionary.com definition of “orthographic projection”)) (citing Ex. 1010 ¶ 33). Petitioner contends that this construction tracks the term’s usage in the ’013 patent. Id. at 7 (citing Ex. 1001, 4:5–12). Specifically, Petitioner contends that a person of ordinary skill in the art would understand Figure 1B of the ’013 patent “to be a two-dimensional representation of the LED chip as it appears against the plane of the conductive layer.” Id. at 7–8 (citing Ex. 1010 ¶ 36). Patent Owner agrees with Petitioner’s proposed construction of the term “orthographic projection” for purposes of the proceeding. Prelim. Resp. 19. Based on the present record, we agree with Petitioner that its proposed construction is consistent with the term’s usage in the ’013 patent and we adopt it for purposes of this Decision. In particular, we construe “orthographic projection” as “a two-dimensional graphic representation of an object in which the projecting lines are at right angles to the plane of the projection.”” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionOther
“Based on the evidence in the present record, we agree with Patent Owner’s proposed construction and adopt it for purposes of this Decision. In particular, we agree with Patent Owner that “the bonding pad and a corner of the rectangle are correspondingly disposed” means that “the bonding pad is disposed at a location corresponding to a corner of the rectangle,” which is consistent with the Specification of the ’013 patent and further supported by Dr. Lebby’s testimony. We also agree with Patent Owner that the orthographic projection must be “on” the patterned conductive layer, which the claim language expressly requires and which is consistent with Figures 1A and 1B and their descriptions. See Ex. 1001, 4:5–7 (“[A]n orthographic projection of the LED chip 130a of this embodiment on the patterned conductive layer 120a is a rectangle.” (emphasis added)). Therefore, we construe “an orthographic projection of the LED chip on the patterned conductive layer is a rectangle, the bonding pad and a corner of the rectangle are correspondingly disposed” to mean “an orthographic projection of the LED chip on the patterned conductive layer is in a shape of a rectangle and the bonding pad is disposed at a location corresponding to a corner of the rectangle.”” slip op. at 14
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 8,587,013 - Sensor Electronic Technology, Inc. v. Lite-On Technology CorporationInstitution deniedPTAB · Jun 27, 2022 · IPR2022-00396 · APJ Joni Y Chang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–5, 7, 9, 18, and 20 obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the challenged claims. We hereby decline to institute an inter partes review in this proceeding.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Ex. 1001, 3:33−34. The Specification discloses that “[r]eferring to FIG. 1, in a preferred embodiment, one end of each first groove 14 extends to the edge of the semiconductor layer 2.” Id. at 4:38−40. Other embodiments of the ’549 patent also show a device having at least one groove that extends to a sidewall of semiconductor layer 2. Ex. 1001, Figs. 3−9. The Specification discloses that, by extending the first grooves to the edges of the second doped layer and the light emitting layer, “the current can spread evenly over the first doped layer through the first contact to improve the problem of current crowding and achieve the uniform distribution of current” in the LED. Id. at 3:4−8. Patent Owner contends that a person of ordinary skill in the art would have understood that the claim phrase “extends to the edge of the first doped layer” means “extends to a sidewall of the first doped layer.” Prelim. Resp. 20 (citing Ex. 2001 ¶ 98). In view of the claim language and the Specification, we agree with Patent Owner.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner asserts that a person of ordinary skill in the art of the ’549 patent would have had “at least an undergraduate degree in electrical engineering (or similar discipline with an electrical and/or semiconductor emphasis) and two or more years of experience in LED device design, fabrication and packaging,” or alternatively, “a master’s degree with at least a year of experience in those fields, or an equivalent combination of education and experience.” Prelim. Resp. 4 (citing Ex. 2001 ¶¶ 71−72). However, Patent Owner does not point out any meaningful difference between the parties’ assessments. We note that the open-ended language “at least” in Patent Owner’s assessment may cause certain ambiguity. For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’549 patent, prior art of record, and supported by the testimony of Jack Josefowicz, Ph.D.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“sufficiently supported by Yasuda or other objective evidence. Petitioner’s analysis rests on impermissible hindsight. An obviousness analysis must provide a sufficient and specific reasoning to guard against the impermissible use of hindsight, even for a structurally simple claimed invention, as here. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[O]bviousness grounds cannot be sustained by mere conclusory statement; instead, there must be some articulated reasoning with some underpinning to support the legal conclusion of obviousness.”); see also id. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”). Notably, Petitioner fails to show that Yasuda discloses extending a” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,829,549 - Epic Games, Inc. v. Ingenioshare, LLCInstitution deniedPTAB · May 26, 2022 · IPR2022-00297 · APJ Joni Y Chang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 2, 5, 7, 53, 54, 56, 57, and 59 obvious over Furlong or Diacakis.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the challenged claims. We hereby decline to institute an inter partes review in this proceeding.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Each of these claims does not reintroduce the term “message” in the body of the claim but instead relies on the instance of “message” introduced in the preamble for antecedent basis. Notably, the first reference to “message” in the body of claim 1 (Element 1.1) appears in a limitation (“receiving, by the server, the message from the person using the first device”), describing a positive step in the claimed “method.” Similarly, the first reference to “message” in the body of claim 53 (Element 53.3) appears in a limitation (“wherein the at least one computing device [of the server] is configured to receive the message from the person using the first device”), describing a structural feature (“computing device”) of the claimed “server.” As Patent Owner notes, the “message” recited in each of Elements 1.1 and 53.3 refers back to the phrase “a person, using a first device, trying to 8 electronically convey a message from the first device to a second device” recited in the preambles. Prelim. Resp. 1−2, 10. Because claims 1 and 53 require the server (or the computing device in the server) to “receive the message from the person using the first device,” the phrase “a person, using a first device, trying to electronically convey a message from the first device to a second device of the user” in the preambles of these claims is essential to understanding the limitations in these claims, not merely reciting an intended purpose of the claimed invention. This “indicates a reliance on both the preamble and claim body to define the claimed invention.” Catalina, 289 F.3d at 808; Bell Commc’ns Research, 55 F.3d at 620; Shoes by Firebug, 962 F.3d at 1368. Therefore, the phrase “a person, using a first device, trying to electronically convey a message from the first device to a second device of the user” in each of the preambles of claims 1 and 53 is limiting.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Notably, neither the authenticated session with PLAS 15, nor the request from the third-party application (steps 500 and 502), is the “message” the person is trying to convey to the device of the user, as required by Element 53.3. Significantly, Furlong discloses that, after PLAS 15 notifies the third-party application of the subscriber’s availability (step 512), “the application sends the message to the subscriber (step 514)” directly, not via the server, PLAS 15. Ex. 1007 ¶ 94 (emphasis added), Fig. 5. Thus, PLAS 15 in Furlong does not receive the message the third-party application (person) is trying to convey to the device of the subscriber (user).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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) (citation omitted). Here, Petitioner asserts that a person of ordinary skill in the art of the ’407 patent would have had “a Bachelor’s degree in Computer Science, or equivalent field and three to five years of experience working with Internet communication systems.” Pet. 23 (citing Ex. 1003 ¶¶ 67−72). At this juncture, Patent Owner does not proffer any assessment regarding the knowledge of an ordinarily skilled artisan. 2 At this time, the parties do not address objective indicia of nonobviousness, which accordingly do not form part of our analysis. See Pet. 75 (“Petitioner is unaware of any evidence of secondary considerations that would support a finding of non-obviousness.”). 10 For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’407 patent, prior art of record, and supported by the testimony of Dr. Kevin Almeroth.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,744,407 - Xiaomi Communications Co., Ltd. v. Koninklijke KPN N.V.Institution deniedPTAB · Apr 19, 2022 · IPR2022-00025 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution: claims 1, 7–10, 12, 13, and 15 were disclaimed, and Petitioner failed to show a reasonable likelihood of prevailing on claims 2–6, 11, 14, and 16.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On this record, Petitioner does not show sufficiently that Chatrath’s intermediary node IN is configured to receive a reply from server S and relay the reply to terminal TE. Petitioner relies on an annotated version of Chatrath’s Figure 1 reproduced below. Pet. 24–25. Chatrath’s Figure 1 “shows a device management system,” and Petitioner’s annotations include arrowed lines allegedly indicating how servers S communicate with terminal TE through intermediary node IN. Id.; Ex. 1003 ¶ 109; Ex. 1004 ¶ 15. To support those annotations, Petitioner’s declarant, Dr. Akl, states that Chatrath’s Figure 1 “shows the servers S2 and S3 are connected with the terminal TE only through the intermediary node IN,” and, thus, “the device management messages from the servers S2 and S3 can only be relayed by the IN to the terminal TE.” Ex. 1003 ¶ 109. Petitioner does not support its annotations to Figure 1 sufficiently. Chatrath’s Figure 1, on its face, does not indicate how server S sends messages to terminal TE. See Ex. 1004 ¶¶ 15–17, Fig. 1. And Petitioner does not identify any portion of Chatrath that describes intermediary node IN receiving a reply from server S and relaying the reply to terminal TE. See Pet. 24–25; Ex. 1003 ¶¶ 108–110.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ex. 1004, Fig. 3. Chatrath’s Figure 3 “is a signaling diagram illustrating initiation of device management utilizing configuration messages.” Id. ¶ 13. Figure 3 shows intermediary node IN receiving message 301 from terminal TE and then sending requests 302, 303, 304 to server S. Id. ¶ 34, Fig. 3. In contrast, Figure 3 shows server S sending messages 305, 306, 307 directly to terminal TE.1 Id. ¶ 35 (“the terminal TE accepts these messages”), Fig. 3; see also id. ¶ 27 (“The terminal TE receives in step 208 a device management message from server S.”). Thus, Chatrath’s Figure 3 and the accompanying description indicate that although server S receives requests 1 Chatrath’s Figure 3 is similar to the ’772 patent’s Figure 4 where ACS1 replies directly to CPE1. See Ex. 1001, Fig. 4; Ex. 1004, Fig. 3; Section I.D. through intermediary node IN, server S replies directly to terminal TE.2 Id. ¶¶ 34–35, Fig. 3.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction In an inter partes review proceeding, a claim of a patent is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner does not propose an express construction for any claim terms. Pet. 9. Patent Owner notes that certain claim terms previously were construed in other proceedings, but Patent Owner does not argue that an express construction of any claim term is necessary to resolve the parties’ disputes in this case. Prelim. Resp. 20–21. We determine that no claim terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 8,886,772 - PNC Bank N.A. v. United Services Automobile AssociationInstitution deniedPTAB · Mar 2, 2022 · IPR2021-01381 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because PNC did not show that Oakes, Medina, or Roach qualified as prior art, so it failed to establish a reasonable likelihood of prevailing on any challenged claim.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Although USAA takes issue with PNC’s approach to claim construction for purposes of this proceeding, it does not appear that USAA disputes PNC’s position that we should apply the constructions for the claim terms “mobile device,” “portable device,” and “digital camera” that USAA proposed in the district court and, eventually, the district court adopted. Compare Ex. 1028, 15, with Ex. 1054, 20. Because there is no dispute between the parties as to the construction of these three claim terms, we need not construe them for purposes of this Decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Skill in the Art There is sufficient evidence in the current record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Noble, PNC argues the following: [a] person of ordinary skill in the relevant field of art . . . at the relevant time (2006–2017) of the ’681 patent would have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent field, and two years of experience in software development and programming in the area of image capturing/scanning technology involving transferring and processing of image data to and at a server. Less work experience may be compensated by a higher level of education, and vice versa. Pet. 10 (citing Ex. 1002 ¶¶ 37, 38). In response, USAA states that, “[f]or the purposes of [its] Preliminary Response only, USAA applies the level of skill in the art proposed by [PNC].” Prelim. Resp. 21. To the extent necessary, and for purposes of this Decision, we adopt PNC’s assessment of the level of skill in the art because it is supported by the testimony of Dr. Noble and it is consistent with the ’681 patent.” slip op. at 17
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“conclusion PNC asks us to draw from them. In particular, PNC appears to contend that we should find that the ’247 application does not provide sufficient written description support for the device limitations merely because the scope of the independent claims encompass a configuration that is not described expressly in that document. See Pet. 16, 18–19. But this reflects a misunderstanding of the law—a claim can be broader than the embodiments disclosed. See, e.g., Rexnord, 274 F.3d at 1344 (“[A]n applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention.”); see also Ethicon, 93 F.3d 1582 n.7 (noting that a claim may be “literally infringed by undisclosed embodiments” and yet sufficiently supported); In re Smythe, 480 F.2d 1376, 1382 (C.C.P.A. 1973) (“We cannot agree with the broad proposition . . . that in every case where the description of the invention in the specification is narrower than that in the claim there has been a failure to fulfill the [written] description requirement in section 112.”). We acknowledge that there are situations where a claim’s breadth results in a lack of written description support, but PNC fails to show that such a situation is present here. In its argument, PNC primarily relies on Reckitt, but this case is unavailing. See Pet. 13–15, 19, 32 (citing Reckitt Benckiser LLC v. Ansell Healthcare Prods. LLC, IPR2017-00063, Paper 38 (PTAB Jan. 30, 2018)). First, Reckitt is a non-precedential Board decision that is not binding on this panel.5 Second, and perhaps more importantly, the case is readily distinguishable on its facts. See Prelim. Resp. 30–31 (distinguishing Reckitt from the circumstances presented here). In particular, in Reckitt, the Board panel found that claims lacking a pre-vulcanization requirement lacked written description support in the priority document, noting that “[p]re-vulcanization [was] not some ancillary feature but rather the very heart of the invention.” Reckitt, IPR2017-00063, Paper 38 at 12, 14–15 (emphasis added). However, “[PNC] identifies nothing whatsoever in the ’247 application suggesting that it is important— much less the ‘very heart of the invention’—that the described image capture device be in a housing entirely separate from the described general purpose computer.” Prelim. Resp. 31. In fact, the Petition identifies (and we perceive) no reason why the relative location of the general purpose computer (i.e., the portable/mobile device) and the image capture device” slip op. at 21
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We have considered Dr. Noble’s supporting testimony, but it suffers from the same deficiencies as PNC’s arguments. See Ex. 1002 ¶¶ 42–58. Moreover, in our view, Dr. Noble does not explain sufficiently his conclusions regarding what a person of ordinary skill would have understood the inventor of the ’247 application to possess (or not possess) and, accordingly, we assign little weight to his testimony on this particular issue. E.g., id. ¶¶ 46, 54–57; see TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1358 (Fed. Cir. 2019) (“Conclusory expert testimony does not qualify as substantial evidence.”).” slip op. at 25
Claim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 10,013,681 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Jan 18, 2022 · IPR2021-01113 · APJ Thu A Dang · IPR · Institution
The Board denied institution of IPR challenging claims 14–16 and 20–25 under § 325(d), finding the same or substantially the same arguments were previously presented and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Under § 325(d), in “determining whether to institute [an inter partes review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Here, Petitioner has the burden to show that the Examiner erred in determining that Chu ’330 incorporated by reference the ’886 provisional. Advanced Bionics, Paper 6 at 8.” slip op. at 17
§ 102 anticipationDiscretionary denial - PTAB · Dec 8, 2021 · IPR2021-00608 · APJ Thu A Dang · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving institution denied under § 325(d) because the same or substantially the same arguments were previously presented and examiner error was not shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in its petition. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Advanced Bionics, we exercised our discretion under 35 U.S.C. § 325(d) and determined not to institute inter partes review. Dec. 7−26 (citing Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte Gmbh, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)). As to Part 1 of the Advanced Bionics framework, we determined that the same or substantially the same arguments were presented previously to the Office. Id. at 10−13. Under Part 2 of the Advanced Bionics framework, we determined that Petitioner failed to show that the Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the claims in the ’654 patent. Id. at 14−26.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s arguments are new arguments raised for the first time in its Rehearing Request. Petitioner acknowledges that “NRG and Hollmer were not cited in the Petition.” Req. Reh’g 10. Nevertheless, Petitioner alleges that it “could not have anticipated the Patent Owner’s mischaracterization of the Droplets decision, nor the Board’s reliance on this mischaracterization,” and that Petitioner was not authorized to file a reply to the Patent Owner Preliminary Response. Id.; see also id. at 2−3, fn.1. Petitioner’s new arguments in connection with Hollmer and NRG are improper. As we discussed above, Patent Owner did not mischaracterize and we did not misapprehend Droplets. It was not necessary to authorize Petitioner to file a reply, as we were capable of determining whether Patent Owner mischaracterizes Droplets. As discussed above, Petitioner fails to recognize that the language relied upon by Patent Owner in Droplets is consistent with 37 C.F.R. § 1.57 and MPEP § 608.01(p). Although Petitioner relies on MPEP § 608.01(p) in its Petition, Petitioner now in its Rehearing Request for the first time suggests that we should ignore MPEP § 608.01(p) and the case law cited in MPEP § 608.01(p). Pet. 11–12; Req. Reh’g 6−7. A request for rehearing is not an opportunity to submit new arguments, after the decision has noted the deficiencies in the petitioner’s original analysis. 37 C.F.R. § 42.71(d). It is Petitioner’s burden to identify specifically all matters we misapprehended or overlooked in our Decision to Institute. We could not have misapprehended or overlooked the new arguments that were not presented in the record until after the Decision.” slip op. at 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Contrary to Petitioner’s contentions, section 1.57 of Title 37 of the Code of Federal Regulations is not a “statute,” but a regulation that became effective on September 21, 2004. See 69 Fed. Reg. 56,482. The ’882 application, which incorporated Chu ’886 by reference, was filed on September 8, 1998, and issued as Chu ’330 on February 5, 2002. Ex. 1005, codes (21), (22), (45), (60), 6:1–7. The ’654 patent, which incorporated the ’882 application by reference, is a reissue of Application No. 09/312,199 (“the ’199 application”) filed on May 14, 1999, now U.S. Patent No. 6,634,777 (“the ’777 patent”), issued on November 4, 2003. Ex. 1001, codes (63), (64); 5:63–67. Both the ’882 application (issued as Chu ’330) and the ’199 application (reissued as the ’654 patent) were filed and issued as patents prior to the effective date, September 21, 2004, of 37 C.F.R. § 1.57. Petitioner does not explain why the applicant should have complied with 37 C.F.R. § 1.57, which did not exist at the time of filing of those applications or issuance of those patents that incorporated by reference Chu ’886 and the ’882 application. Pet. 7–8, 10−17; Req. Reh’g 1−12. We decline to apply 37 C.F.R. § 1.57 retroactively to the incorporation by reference statements submitted in the ’882 application and the ’199 application.” slip op. at 6
§ 102 anticipationDiscretionary denial - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Dec 6, 2021 · IPR2021-01108 · APJ Thu A Dang · IPR · Institution
The Board denied institution for claims 1–3, 7–9, 13–17, 19, 20, 25, and 33–35 under § 325(d), finding the same arguments were previously presented and no material examiner error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“II. ANALYSIS 35 U.S.C. § 325(d) Petitioner relies upon Chu ’330 in both of the asserted grounds.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Decided for patent owner
“As such, we find that Petitioner has failed to show (1) the ’768 patent is not entitled to a priority date before April 15, 2011, (2) the ’436 patent’s parent applications in the’768 patent family did not properly incorporate by reference the ’886 provisional, and (3) the amendments adding the subject matter from the ’886 provisional improperly introduced new matter. Pet. 18−30.” slip op. at 23
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 9,529,768 - PTAB · Dec 6, 2021 · IPR2021-00605 · APJ Thu A Dang · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving institution denied under § 325(d) because the same or substantially the same arguments were previously presented and material Examiner error was not shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in its petition. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under Part 2 of the Advanced Bionics framework, Petitioner has the burden to show that “[t]he Examiner erred by not realizing that Chu ’330, Chu ’185, and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the ’768 Patent claims,” as Petitioner alleges in its § 325(d) analysis. Pet. 7, 9−18. Upon consideration of Petitioner’s Request for Rehearing, we are not persuaded by Petitioner’s arguments of Examiner error.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s arguments are new arguments raised for the first time in its Rehearing Request. Petitioner acknowledges that “Hollmer and NRG were not cited in the Petition.” Req. Reh’g 10. Nevertheless, Petitioner alleges that it “could not have anticipated the Patent Owner’s mischaracterization of the Droplets decision, nor the Board’s reliance on this mischaracterization,” and that Petitioner was not authorized to file a reply to the Patent Owner Preliminary Response. Id.; see also id. at 2−3, fn.1. Petitioner’s new arguments in connection with Hollmer and NRG are improper. As we discussed above, Patent Owner did not mischaracterize and we did not misapprehend Droplets. It was not necessary to authorize Petitioner to file a reply, as we were capable of determining whether Patent Owner mischaracterizes Droplets. As discussed above, Petitioner fails to recognize that the language relied upon by Patent Owner in Droplets is consistent with 37 C.F.R. § 1.57 and MPEP § 608.01(p). Although Petitioner relies on MPEP § 608.01(p) in its Petition, Petitioner now in its Rehearing Request for the first time suggests that we should ignore MPEP § 608.01(p) and the case law cited in MPEP § 608.01(p). Pet. 11; Req. Reh’g 6−7. A request for rehearing is not an opportunity to submit new arguments, after the decision has noted the deficiencies in the petitioner’s original analysis. 37 C.F.R. § 42.71(d). It is Petitioner’s burden to identify specifically all matters we misapprehended or overlooked in our Decision to Institute. We could not have misapprehended or overlooked the new arguments that were not presented in the record until after the Decision.” slip op. at 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“codes (21), (22), (45), (60), 6:1–7. The initial parent application in the ’768 patent’s priority chain, U.S. Application No. 09/569,758 (“the ’758 application”), which incorporated the ’882 application by reference, was filed on May 12, 2000, and issued as U.S. Patent No. 6,718,415 B1 (“the ’415 patent”) on April 6, 2004. See Ex. 1001, code (63); Ex. 1008, code (45), 4:50–53. Both the ’882 application (issued as Chu ’330) and the ’758 application (issued as the ’415 patent) were filed and issued as patents prior to the effective date, September 21, 2004, of 37 C.F.R. § 1.57. Petitioner does not explain why the applicant should have complied with 37 C.F.R. § 1.57, which did not exist at the time of filing of those applications or issuance of those patents that incorporated by reference Chu ’886 and the ’882. Pet. 7, 9−18; Req. Reh’g 1−13. We decline to apply 37 C.F.R. § 1.57 retroactively to the incorporation by reference statements submitted in the ’882 application and the ’758 application.” slip op. at 7
§ 102 anticipationDiscretionary denialPatents in suitUS 9,529,768
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.