- Shenzhen Waydoo Intelligence Technology Co., Ltd. v. MHL Custom, Inc.Institution deniedPTAB · Dec 17, 2024 · IPR2024-00998 · APJ Michael L Woods · IPR · Institution
The Board denied joinder and denied institution on all challenged claims because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“establish that it is entitled to the requested relief.” See 37 C.F.R. § 42.20(c). Regarding joinder, the relevant statute provides that: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. 35 U.S.C. § 315(c).” slip op. at 5
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“This statute further provides that the petition for inter partes review must be filed no later than “1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b); see also 37 C.F.R. § 42.101(b). This one-year time bar, however, “shall not apply to a request for joinder.” 35 U.S.C. § 315(b); see also 37 C.F.R. § 42.122(b).” slip op. at 5
Discretionary denialPatents in suitUS 9,359,044 - Samsung Electronics Co., Ltd. v. Advanced Coding Technologies, LLCInstitution deniedPTAB · May 23, 2024 · IPR2024-00062 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because Petitioner did not show that the prior art disclosed or taught the construed “emphasis level” limitation in any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“which the amplitude of the high frequency components of the video signal is increased,” as required by the construction of “emphasis level.”7 See Prelim. Resp. 9 (“the Petition’s analysis of the claim limitations containing these terms against the cited references does not indicate that those references disclose these limitations under Petitioner’s proposed constructions in the District Court Action”). Thus, without Petitioner mapping the constructions to the prior art in a clear and identifiable way, we determine the Petition itself does not satisfy Petitioner’s burden. See 37 C.F.R. §§ 42.104(b)(3)– (4).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“the terms “emphasis processing” and “emphasis level.” In the Petition, Petitioner states that no constructions are necessary (Pet. 2), but after filing 2 US 5,491,514; issued Feb. 13, 1996. Ex. 1005. 3 US 5,241,387; issued Aug. 31, 1993. Ex. 1006. 4 US 6,801,665 B1; published Sept. 30, 1999. Ex. 1007. the Petition, Petitioner proposed constructions of those terms in the parties’ district-court litigation, stating that: (i) the claim term “emphasis processing” means “increasing the amplitude of the high frequency components of a video signal;” and (ii) the claim term “emphasis level” means “a value that represents the amount by which the amplitude of the high frequency components of the video signal is increased.” Ex. 2003, 10– 11. After Patent Owner relied on those constructions in its Preliminary Response (see, e.g., Prelim. Resp. 8–10),5 Petitioner requested (Ex. 3001), and the Board authorized (Paper 8), additional briefing to address how the analysis in the Petition applies under those constructions.6 Because we determine Petitioner’s showings with respect to those constructions are inadequate to carry Petitioner’s burden, our discussion below focuses primarily on those aspects of the parties’ briefing.” slip op. at 4
- PTAB / AIA Trials › Discretionary denialNot reached
“Discretionary Denial Because we determine Petitioner has not carried its burden on the merits, we do not reach the parties’ arguments relating to discretionary denial. See Pet. 98–99; Prelim. Resp. 26–32.” slip op. at 11
Claim constructionDiscretionary denialPatents in suitUS 6,845,128 - Millerknoll, Inc. v. Aaron DejuleInstitution deniedPTAB · Mar 22, 2024 · IPR2023-01428 · APJ Robert J Silverman · IPR · Institution
The Board denied institution for claims 1–10, 14, 15, and 18–22 because Petitioner did not identify corresponding structure for the § 112(f) adjusting assembly limitation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Under these circumstances, the Petition does not establish a reasonable likelihood of unpatentability for claim 1. See Samsung Elecs. Co., Ltd. v Power2B Inc., IPR2022-01378, Paper 12 at 15, 17 (PTAB March 15, 2023) (“Because Petitioner has not identified structure corresponding to the functions recited in claims 1 and 5, we cannot ascertain the differences between the claimed invention and the asserted prior art, as required [to evaluate obviousness]. . . . Accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing claims 1 and 5 are unpatentable under 35 U.S.C. § 103(a) as obvious over Bird and Ishii.”); HTC Corp. v Lemaire Illumination Techs., LLC, IPR2019-00092, Paper 7 at 20 (PTAB Apr. 29, 2019) (“Petitioner . . . fails to identify structure described in the Specification of the ’266 patent that corresponds to the claimed function as is required by 37 C.F.R. § 42.104(b)(3) . . . . Consequently, Petitioner also fails to explain how that corresponding structure or an equivalent thereof is met by its proposed combination of [prior art references].”); ZTE Corp. v. Maxell, Ltd., IPR2018-00235, Paper 9 at 11 (PTAB June 1, 2018) (“Petitioner has not satisfied the claim construction requirement set forth in 37 C.F.R. § 42.104(b)(3) with respect to certain limitations in independent claims 1, 6, and 10. Based on this deficiency in the Petition, which affects all of the challenged claims, we deny institution of inter partes review.”); Unified Patents Inc. v. Blackbird Tech LLC, IPR2017-01525, Paper 11 at 14 (PTAB Dec. 1, 2017) (“Petitioner does not ‘identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function,’ as required by our Rules (37 C.F.R. § 42.104(b)(3)), to enable us to determine if the asserted prior art teaches such structure. Thus, Petitioner fails to demonstrate a reasonable likelihood of prevailing in its challenge to independent claims 2, 7, and 10 as well as its challenge to claims 11, 13, 16, and 19.”); Panel Claw, Inc. v. SunPower Corp., IPR2014-00386, Paper 7 at 9–10 (PTAB June 30, 2014) (Petitioner’s failure to identify corresponding structure for a means-plus-function limitation warranted denial of institution for all claims that included that limitation). Because the claims 2–10, 14, 15, and 18–22 depend, directly or indirectly, from claim 1, Petitioner’s challenge to these claims fails for the same reasons.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art. See Phillips, 415 F.3d at 1313. Petitioner contends that person of ordinary skill in the art to which the ’498 patent pertains “would have had a bachelor’s degree in industrial design, mechanical engineering, and/or a related field, and at least 2–3 years of experience designing furniture.” Pet. 8 (citing Ex. 1108 ¶ 29). Patent Owner “forgoes offering a competing definition of the level of ordinary skill,” at the current stage of this proceeding, stating that “under Petitioner’s definition of the level of ordinary skill in the art, Petitioner’s challenges fail to establish a reasonable likelihood of prevailing as to any claim of the ’498 Patent.” Prelim. Resp. 7. Accordingly, for the purposes of this Decision, and in view of the parties’ representations, we adopt Petitioner’s description of the relevant level of skill in the art, which appears to be consistent with the level of skill reflected in the ’498 patent and the asserted prior art. See Okajima, 261 F.3d at 1355.” slip op. at 18
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“‘[a]djusting assembly’ is not a recognized term of art in the field of the ’498 Patent” and “[a]s used in the claims of the ’498 Patent, it should be construed as a means-plus-function (‘MPF’) claim element under 35 U.S.C. § 112(f).” Pet. 9 (citing Ex. 1108 ¶ 47). Petitioner bases this assertion on its expert’s opinions that “claim 1 does not recite sufficient structure for performing th[e] function” recited in the “adjusting assembly” limitation and that a person of ordinary skill in the art “would not consider ‘adjusting assembly’ to refer to any specific structure.” Id. (citing Ex. 1108 ¶ 52); see also id. at 10 (citing Ex. 1108 ¶¶ 54–59) (“Nor do the claims otherwise recite sufficient structure for providing the claimed function.”) Further, Petitioner contends that “[c]laim 1 uses ‘adjusting assembly’ as a ‘nonce’ term that operates as a substitute for ‘means’ to claim a function.” Id. at 10 (citing MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1341–45 (Fed. Cir. 2019) (holding “mechanical control assembly” operated as nonce term)). For its part, “Patent Owner agrees that means-plus-function treatment is appropriate for the ‘adjusting assembly,’” although taking this position “[f]or purposes of this proceeding only.” Prelim. Resp. 8 n.5. Based on the current record, we agree with the parties’ positions that the “adjusting assembly” limitation of the ’498 patent should be construed according to 35 U.S.C. § 112(f). Although the word “means” does not appear in the limitation, the claim language itself does not recite structure that, per the recited function, “cooperat[es] between the first component and the at least second component” and “changes [the] magnitude” of “the force required to be applied in the second manner to reconfigure the apparatus and move the second component relative to the first component,” “as an incident of the force being applied in the first manner changing in magnitude.” In other words, claim 1 appears to lack sufficient structure for performing the stated function of the “adjusting assembly.” See Williamson, 792 F.3d at 1348. Mr. Koepke’s opinion, which is unrebutted at this point, that the term “adjusting assembly” would not connote any specific structure, to a person of ordinary skill in the art, at the relevant time (see Ex. 1108 ¶ 52), supports our conclusion that 35 U.S.C. § 112(f) applies to the “adjusting assembly” limitation. slip op. at 19
- BurdenDenied
“As to the purportedly corresponding structure, in the ’498 patent Specification, Petitioner identifies only two structures for performing the recited function of the “adjusting assembly”: a “tilting spring” and a “weighing spring.” See Pet. 10–14. Petitioner characterizes a “tilting spring” as “a spring structure that” slip op. at 21
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 10,292,498 - Millerknoll, Inc. v. Aaron DejuleInstitution deniedPTAB · Mar 22, 2024 · IPR2023-01427 · APJ Richard H Marschall · IPR · Institution
Institution was denied because the petition did not show a reasonable likelihood that Schmitz or Takamatsu anticipates any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of the challenges in the Petition. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
“may be expressed as a means or step for performing a specified function . . . and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112(f). The use of the term “means” creates a rebuttable presumption that 35 U.S.C. § 112(f) applies and, conversely, the absence of the term “means” creates a rebuttable presumption that this statutory mandate does not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc, in relevant part). These presumptions can be overcome, however, if the claim limitation “fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. (citing Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000). Indeed, as the Federal Circuit has emphasized, the essential inquiry is not merely the presence or absence of the word “means” but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownOther
“on incorrect aspects of Petitioner’s proposed construction because Petitioner’s faulty construction fatally undermines Petitioner’s anticipation challenges. We agree with Patent Owner that Petitioner’s construction fails to give adequate weight, or any weight, to the “plurality of gears” aspect of the “adjusting assembly” limitation. Petitioner acknowledges the “plurality of gears” language when arguing that the presence of this structure in the claim does not prevent that the “adjusting assembly” limitation from being construed as a means-plus-function limitation, but Petitioner does not include the functional requirements of the gears in its identification of the claimed function or identify the gears as part of the structure in the Specification that performs the claimed function. See Pet. 13–17. Both of these approaches are erroneous and lead to an incorrect construction of the “adjusting assembly” limitation. The adjusting assembly limitation requires “an adjusting assembly comprising a plurality of gears that cooperate and move relative to each other as an incident of the seat moving from the first position into the loaded position configured to thereby increase a resistance to changing of the angular orientation of the back rest from the starting angular position.” Ex. 1001, claim 1 (emphasis added). Accordingly, the plain language of the claim requires an adjusting assembly that includes gears that perform a certain function (“cooperate and move relative to each other . . .”). Petitioner’s identified function focuses on the “increase a resistance” functional language and improperly omits the functional language associated” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). “This reference point prevents . . . factfinders from using their own insight or, worse yet, hindsight, to gauge obviousness.” Id. Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Env’t Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a level of ordinary skill, we also may look to the prior art, which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355. Petitioner contends that one of ordinary skill in the art “would have had a bachelor’s degree in industrial design, mechanical engineering, and/or a related field, and at least 2–3 years of experience designing furniture.” Pet. 12 (citing Ex. 1012 ¶¶ 22–23). Patent Owner states that “for the purposes of this Preliminary Response only, Patent Owner forgoes offering a competing definition of the level of ordinary skill.” Prelim. Resp. 7. For purposes of this Decision, we adopt and apply Petitioner’s proposed level of ordinary skill in the art, which we view as consistent with the level of skill reflected in the ’753 patent and the asserted prior art.” slip op. at 10
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 10,893,753 - Testo, Inc. A/K/A Testo North America / Testo SE & Co. Kgaa v. Parker Intangibles LLCInstitution deniedPTAB · Jul 25, 2023 · IPR2023-00691 · APJ Robert J Silverman · IPR · Institution
The Board denied institution for claims 1, 10, 15, 20, and 21 because Patent Owner statutorily disclaimed all challenged claims.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“37 C.F.R. § 1.321(a); see also Vectra, 162 F.3d at 1382 (holding that a § 253 disclaimer is immediately “recorded” on the date that the Office receives a disclaimer meeting requirements of 37 C.F.R. § 1.321(a) and that no further action is required in the Office). “No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e); see also General Electric Co. v. United Techs. Corp., IPR2017-00491, Paper 9, 3 (PTAB July 6, 2017) (precedential).” slip op. at 4
NonePatents in suitUS 10,739,051 - Testo, Inc. A/K/A Testo North America / Testo SE & Co. Kgaa v. Parker Intangibles LLCInstitution deniedPTAB · Jul 19, 2023 · IPR2023-00685 · APJ Jeremy M Plenzler · IPR · Institution
The Board denied institution of IPR for challenged claims 1 and 12 because Patent Owner had statutorily disclaimed both claims.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“37 C.F.R. § 1.321(a); see also Vectra, 162 F.3d at 1382 (holding that a § 253 disclaimer is immediately “recorded” on the date that the Office receives a disclaimer meeting requirements of 37 C.F.R. § 1.321(a) and that no further action is required in the Office). “No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e); see also General Electric Co. v. United Techs. Corp., IPR2017-00491, Paper 9, 3 (PTAB July 6, 2017) (precedential). ’183 patent, we conclude that a disclaimer of claims 1 and 12 of the ’183 patent under 35 U.S.C. § 253(a) has been recorded in the Office as of June 22, 2023. Exhibit 2001, a copy of the filed disclaimer, is signed by Patent Owner’s attorney of record, Amir Shenouda. Ex. 2001, 3. Exhibit 2001 also identifies the ’183 patent; identifies that all of the claims at issue in the Petition (claims 1 and 12) are disclaimed; and states that Parker Intangibles, LLC is the owner of 100% of the instant patent by virtue of an assignment recorded at Reel 050634 and Frame 0476.2 Id. at 6. Because Patent Owner filed a statutory disclaimer in compliance with 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a) disclaiming all claims of the ’183 patent that are challenged in the Petition, no inter partes review is instituted in this proceeding.” slip op. at 3
NonePatents in suitUS 10,281,183 - Ecobee Technologies Ulc v. Ollnova Technologies Ltd.Institution deniedPTAB · May 8, 2023 · IPR2023-00082 · APJ Robert J Silverman · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to Pasternak, we are not persuaded that the Petitioner adequately establishes that Pasternak teaches or suggests claim 1’s limitation: “the first [lower-level] wireless network is operable to control, free of communications with the second [higher-level] wireless network, building components in response to sensors operable within the first [lower-level] wireless network.”” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“to Pasternak, we are not persuaded that the Petitioner adequately establishes that Pasternak teaches or suggests claim 1’s limitation: “the first [lower-level] wireless network is operable to control, free of communications with the second [higher-level] wireless network, building components in response to sensors operable within the first [lower-level] wireless network.”” slip op. at 12
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,860,495 - Tiktok Inc. v. Advanced Coding Technologies LLCInstitution deniedPTAB · Mar 27, 2023 · IPR2022-01546 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7 were unpatentable as obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we deny the Petition and do not institute an inter partes review of the ’154 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner, supported by Dr. Lett’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have been a person with a working knowledge of digital video and audio technologies.” Pet. 4 (citing Ex. 1003 ¶ 22). Petitioner contends that a person of ordinary skill in the art would have had a Bachelor of Science, a Bachelor of Applied Science, or a Bachelor of Engineering degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to digital video and audio technologies. Id. Alternatively, Petitioner contends, “the person could have also had a Master of Science, Master of Applied Science, or Master of Engineering degree in a relevant academic discipline with less than a year of related work experience in the same discipline.” Id. at 5 (citing Ex. 1003 ¶ 22). Patent Owner states that “[f]or the purpose of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 13. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’154 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner and Patent Owner agree that no claim terms require an express construction at this stage of the proceeding. Pet. 14; Prelim. Resp. 13. Accordingly, we need not construe any claim terms expressly because none are in dispute.7 See Vivid Techs., 200 F.3d at 803.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Third, as noted above, Petitioner also argues that it would have been obvious to one of ordinary skill in the art that elapsed playback time would be indicated by time stamps included in the audio content. Pet. 15–16. But, on this aspect of Petitioner’s contention, neither Petitioner nor Mr. Lett provides any reason why one of ordinary skill in the art would have found it obvious to include a time stamp in Lindroos’ audio data. Id.; Ex. 1003 ¶ 35. As reflected in our discussion above, Mr. Lett’s testimony regarding Exhibits 1010–1013 is unsupported by the references cited. Thus, Petitioner’s assertion that this limitation was “well known” and “would have been obvious” to one of ordinary skill in the art is not supported on the record before us. Accordingly, Petitioner fails to demonstrate on the present 13 Mr. Lett states that he “refer[s] to these other publications . . . merely for purposes of corroborating this common background knowledge recognizable to a [person of ordinary skill in the art] at the time.” Ex. 1003 ¶ 35. record that it was “well known and would have been obvious” “for elapsed playback time to be indicated by time stamps included in the audio content.” Pet. 15–16 (citations omitted).14” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,615,154 - Volvo Penta Of The Americas, LLC v. Brunswick CorporationInstitution deniedPTAB · Feb 16, 2023 · IPR2022-01424 · APJ Robert J Silverman · IPR · Institution
The Board denied institution on all challenged claims, finding it lacked authority to review claim 1 after its final invalidity judgment and exercising § 314(a) discretion to avoid conflict and inefficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Nonetheless, several considerations underlying Fintiv are beneficial to our analysis. For instance, the Director’s Interim Procedure recognized “the potential for inefficiency and gamesmanship in AIA proceedings, given the existence of parallel proceedings between the Office and district courts” and noted that Fintiv was designated precedential “[t]o minimize potential conflict” between such proceedings. Interim Procedure at 1; see also id. at 5 (“competing concerns of conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable”); 6 (“avoid duplicative efforts between the PTAB and federal district courts”). We keep these considerations in mind in determining whether to exercise our discretion to deny institution under § 314(a).” slip op. at 15
- Other 314aInstitution denied discretionary otherInstitution denied
“Nonetheless, several considerations underlying Fintiv are beneficial to our analysis. For instance, the Director’s Interim Procedure recognized “the potential for inefficiency and gamesmanship in AIA proceedings, given the existence of parallel proceedings between the Office and district courts” and noted that Fintiv was designated precedential “[t]o minimize potential conflict” between such proceedings. Interim Procedure at 1; see also id. at 5 (“competing concerns of conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable”); 6 (“avoid duplicative efforts between the PTAB and federal district courts”). We keep these considerations in mind in determining whether to exercise our discretion to deny institution under § 314(a).” slip op. at 15
- BurdenNot reached
“partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After reviewing the record, including the district court’s decision, we determine that the Board lacks authority to institute inter partes review of challenged claim 1, as it has already been determined to be invalid under 35 U.S.C. § 101 in a federal district court action. Also, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review of all the challenged claims so as to avoid potential conflict, inefficiency, and gamesmanship, and in order to maintain consistency with our decisions in related cases.” slip op. at 2
Discretionary denialcites MayoPatents in suitUS 10,671,073 - Volvo Penta Of The Americas, LLC v. Brunswick CorporationInstitution deniedPTAB · Feb 8, 2023 · IPR2022-01367 · APJ Carl M Defranco · IPR · Institution
The Board denied institution on claims 1–19 under § 314(a), citing potential conflict, inefficiency, and gamesmanship after the district court held claim 1 invalid under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Nonetheless, several considerations underlying Fintiv are beneficial to our analysis. For instance, the Director’s Interim Procedure recognized “the potential for inefficiency and gamesmanship in AIA proceedings, given the existence of parallel proceedings between the Office and district courts” and noted that Fintiv was designated precedential “[t]o minimize potential conflict” between such proceedings. Interim Procedure at 1; see also id. at 5 (“competing concerns of conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable”); 6 (“avoid duplicative efforts between the PTAB and federal district courts”). We keep these considerations in mind in determining whether to exercise our discretion to deny institution under § 314(a).” slip op. at 13
- Other 314aInstitution denied discretionary otherInstitution denied
“Nonetheless, several considerations underlying Fintiv are beneficial to our analysis. For instance, the Director’s Interim Procedure recognized “the potential for inefficiency and gamesmanship in AIA proceedings, given the existence of parallel proceedings between the Office and district courts” and noted that Fintiv was designated precedential “[t]o minimize potential conflict” between such proceedings. Interim Procedure at 1; see also id. at 5 (“competing concerns of conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable”); 6 (“avoid duplicative efforts between the PTAB and federal district courts”). We keep these considerations in mind in determining whether to exercise our discretion to deny institution under § 314(a).” slip op. at 13
Discretionary denialcites Alice · MayoPatents in suitUS 10,324,468
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.