• Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Institution denied
  PTAB · Jul 17, 2024 · IPR2024-00321 · APJ Georgianna W Braden · IPR · Institution

  The Board denied institution of IPR on claims 1–26, finding the Fintiv factors favored denial and the petition did not meet the compelling merits standard; it also cited the parallel petition.

  RulingsInstitution decision

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

    “The second, third, and fifth Fintiv factors favor denial. The first factor is neutral, and only the fourth factor weighs against denial. As set forth above, we determine that the first five Fintiv factors favor discretionary denial, and thus, we assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1– 5 favors denial of institution, the Board shall then assess compelling merits.”). The compelling merits standard is met if “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. A challenge can only meet this standard “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.”” slip op. at 11

  • Parallel petitionsInstitution denied discretionary otherDenied

    “The record before us does not support the need for two petitions. In the related district court litigation noted above, Patent Owner has asserted only six claims of the ’251 patent (Paper 10 at 4), so this is not a situation in which “the patent owner has asserted a large number of claims in litigation.” See CTPG 59. Nor has Petitioner shown why this Petition would be preferable to a petition that has a challenge relying only on § 102(b) art, as in IPR2024-00322, should there arise a priority dispute. Thus, in addition to our reasons for denying based on Fintiv, we determine that discretionary denial is appropriate here given the institution of inter partes review in IPR2024-00322.” slip op. at 19

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

    “As noted above, our inquiry is directed to whether the Petition meets the compelling merits standard, not the “reasonable likelihood” standard of § 314(a). We agree with Patent Owner that there is some inconsistency in Petitioner’s contentions regarding the “programming code” recitations of claim 1. Petitioner’s contention for the storing limitation does not mention “VideoPlay” even though Petitioner identifies that as the converted command in the converting step. See Pet. 34–36. Rather, Petitioner’s contentions for the storing step focus on the URL. Petitioner does not explain how the URL is “programming code.” Petitioner relies on a portion of Figure 11H from Redford (see Pet. 34), but that figure shows in step 1153 that a server transmits a command to the content provider computer, not the television that Petitioner identifies as the “display device.” Ex. 1005, 11:36:45–50, Fig. 11H.” slip op. at 15

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 8,356,251
• Meta Platforms, Inc. v. Jawbone Innovations, LLCInstitution denied
  PTAB · Jun 3, 2024 · IPR2024-00350 · APJ Georgianna W Braden · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were 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 (2018); see also 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below and based on the record before us, we determine Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute an inter partes review of the ’080 patent and the asserted challenges to patentability.” slip op. at 2

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

    “Contrary to Petitioner’s interpretation of Brandstein’s Figure 5.2, we are not persuaded that the figure and its accompanying text would have rendered it obvious to an ordinarily skilled artisan that the individual microphone responses have similar responses to noise. See Prelim. Resp. 14–16. As stated in IPR2023-01130, and which equally applies here: In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. IPR2023-01130, Paper 10 at 24. Likewise, Figure 5.3 of Brandstein undermines Petitioner’s contention that the virtual microphone noise responses are substantially similar. See Prelim. Resp. 17. We credit the testimony of Dr. Sayeed, who explains Brandstein’s Figure 5.3, which actually depicts the directivity of the cited GJBF’s top and bottom path unlike Figure 5.2, further shows that their responses to noise are not substantially similar. Ex. 1005 at [90]. I have highlighted the noise response of each plot in green. A POSITA would plainly understand that these responses are not substantially similar. Ex. 2001 ¶ 44. Dr. Sayeed provides an additional annotated version of Brandstein’s Figure 5.3, reproduced below, which illustrates the speech direction and the noise direction as shown in green. We credit Dr. Sayeed’s testimony that with respect to Figure 5.3 above, the noise responses of the FBF and the BM (shown in green) are different. See id. ¶ 45. We also are persuaded by Dr. Sayeed’s testimony regarding Brandstein’s disclosure that:” slip op. at 30

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “IPR2023-01130, Paper 10 at 24. Likewise, Figure 5.3 of Brandstein undermines Petitioner’s contention that the virtual microphone noise responses are substantially similar. See Prelim. Resp. 17. We credit the testimony of Dr. Sayeed, who explains Brandstein’s Figure 5.3, which actually depicts the directivity of the cited GJBF’s top and bottom path unlike Figure 5.2, further shows that their responses to noise are not substantially similar. Ex. 1005 at [90]. I have highlighted the noise response of each plot in green. A POSITA would plainly understand that these responses are not substantially similar. Ex. 2001 ¶ 44. Dr. Sayeed provides an additional annotated version of Brandstein’s Figure 5.3, reproduced below, which illustrates the speech direction and the noise direction as shown in green. We credit Dr. Sayeed’s testimony that with respect to Figure 5.3 above, the noise responses of the FBF and the BM (shown in green) are different. See id. ¶ 45. We also are persuaded by Dr. Sayeed’s testimony regarding Brandstein’s disclosure that: As Chapter 5 does not disclose equations for the GJBF discussed in section 5.2, Fig. 5.3 would provide a POSITA’s only understanding of the actual noise responses of its FBF and BM outside of the above-cited disclosure that noise is attenuated in its FBF and not in its BM. This would further support a POSITA’s understanding that the top and bottom branches of Brandstein’s GJBF do not have substantially similar responses to noise. Id. ¶ 46.” slip op. at 31

  • Skill levelSkill level petitioner adoptedOther

    “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). Furthermore, the prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Here, Petitioner asserts that a person of ordinary skill in the art by June 27, 2007, would have had “a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 21 (citing Ex. 1003 ¶¶ 21–26). Dr. Johnson supports Petitioner’s position and further testifies that “work experience could substitute for formal education, and additional formal education can substitute for work experience.” Ex. 1003 ¶ 23. Patent Owner does not assert a different level of skill in the art at the time of the alleged invention and uses Petitioner’s proposed level of skill. Prelim. Resp. 19 (citing Ex. 2001 ¶ 26). For the purposes of this Decision, we too adopt Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’080 Patent and the prior art of record.” slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,779,080
• Meta Platforms, Inc. v. Jawbone Innovations, LLCInstitution denied
  PTAB · May 30, 2024 · IPR2024-00349 · APJ Jason M Repko · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–46 obvious over Brandstein or Brandstein and McCowan.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine “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). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2

  • BurdenNot shown unpatentable

    “We agree with Patent Owner that Petitioner does not sufficiently explain why Brandstein’s responses of the GJBF’s top and bottom branches are substantially similar. See Pet. 34. Rather, Petitioner merely states that the “deep null reflects that subtracting the bottom branch from the top branch cancels the interference,” citing Dr. Johnson’s testimony. Id. (citing Ex. 1003 ¶ 104). Dr. Johnson’s testimony (Ex. 1003 ¶ 104), though, is entitled to little weight here because it merely repeats the Petition’s conclusory assertions without adding supporting evidence or technical reasoning. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). Petitioner cites Figure 5.2 for its assertions about the branches. Pet. 34. But Figure 5.2 shows the overall directivity pattern for the entire GJBF, not the top and bottom branches. See Ex. 1005, Fig. 5.3. The top branch includes the FBF, and the bottom branch includes the BM. Pet. 24, 30. As discussed above, Figure 5.3 shows that the responses for the FBF and BM are different. See id. at 24, 30; Ex. 2001 ¶ 44. As Dr. Sayeed points out, Chapter 5 is a general overview of the GJBF, intended to be a tutorial, and the chapter does not further discuss the responses of the individual branches identified in the Petition. See Ex. 2001 ¶ 45; Ex. 1005, 8. Thus, Petitioner has not shown that, under its rationale based on the basic GJBF, Brandstein teaches or suggests “the second linear response to noise being substantially similar to the first linear response to noise, and the second linear response to speech being substantially dissimilar to the first linear response to speech,” as claimed.” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We agree with Patent Owner that Petitioner does not sufficiently explain why Brandstein’s responses of the GJBF’s top and bottom branches are substantially similar. See Pet. 34. Rather, Petitioner merely states that the “deep null reflects that subtracting the bottom branch from the top branch cancels the interference,” citing Dr. Johnson’s testimony. Id. (citing Ex. 1003 ¶ 104). Dr. Johnson’s testimony (Ex. 1003 ¶ 104), though, is entitled to little weight here because it merely repeats the Petition’s conclusory assertions without adding supporting evidence or technical reasoning. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 11

  • Skill levelSkill level petitioner adoptedOther

    “A person of ordinary skill in the art (“POSITA”) would have had a minimum of a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing. [Ex. 10034 ¶¶ 21–26.] Work experience could substitute for formal education, and additional formal education could substitute for work experience. [Id.] Pet. 18. In its Preliminary Response, Patent Owner follows this proposed skill level. Prelim. Resp. 8. To determine whether to institute here, the Board also follows Petitioner’s proposed skill level.” slip op. at 5

  Claim construction§ 103 obviousness
  Patents in suitUS 8,503,691
• Delta Electronics, Inc. v. Vicor Corp.Institution denied
  PTAB · May 24, 2024 · IPR2024-00227 · APJ Sean P O’Hanlon · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any of claims 1–7 unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute only 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). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review. 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had “at least a Master’s degree in electrical engineering and two or more years of work experience relating to power electronics and the manufacture of power converters or printed circuit board design for power converters,” but acknowledges that “[a]dditional education might compensate for less work experience, and vice-versa.” Pet. 14 (citing Ex. 1013, 79). Patent Owner does not contest Petitioner’s proposed definition or proffer a definition of its own. See generally Prelim. Resp. Patent Owner’s witness, Dr. Rivas-Davila, asserts that he applies Petitioner’s definition. Ex. 2001 ¶ 77. We find Petitioner’s definition of the level of ordinary skill in the art to be consistent with the problems and solutions disclosed in the ’761 patent and prior art of record, and adopt it as our own for purposes of this Decision. See Okajima, 261 F.3d at 1355.” slip op. at 9

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

    “Ex. 1001, 28:13–33. The court’s analysis of “plurality” in Apple applies here. Consistent with Apple and other precedent of our reviewing court, we interpret “plurality” to mean two or more. See Dayco Prods., Inc. v. Total Containment, Inc., 258 F.3d 1317, 1327–28 (Fed. Cir. 2001) (“In accordance with standard dictionary definitions, we have held that ‘plurality,’ when used in a claim, refers to two or more items, absent some indication to the contrary.”); York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1575 (Fed. Cir. 1996) (“The term [‘plurality’] means, simply, ‘the state of being plural.’”). And as explained above, neither the ’761 patent nor its prosecution history indicates that “a plurality of power semiconductor devices” as used in claim 1 refers to a subset, rather than all, of the power semiconductor devices in the power converter. See Ex. 1001, 23:24–42, 24:7–25:32; generally, Ex. 1004. As discussed in more detail below, Petitioner maps “plurality of power semiconductor devices” to a subset of the power semiconductor devices in the device disclosed in Ericsson-BMR, implicitly interpreting this language to mean less than all of the power converter power semiconductor devices of the power converter. Petitioner’s interpretation that “plurality of power semiconductor devices” is satisfied by a subset of the power semiconductor devices does not accord with the Federal Circuit’s interpretation of “plurality” as set forth in Apple and is at odds with the requirement that “the power semiconductor devices are distributed between the first and second sets” as recited in claim 1. See Apple, 695 F.3d at 1379. Accordingly, we interpret “a power converter including . . . a plurality of power semiconductor devices” as recited in claim 1 to refer to all of the power semiconductor devices in the power converter, not merely a subset of the power semiconductor devices.” slip op. at 14

  • BurdenNot shown unpatentable

    “Petitioner fails to identify with requisite particularity how BMR-2008 renders the challenged claims obvious. See 35 U.S.C. § 312 (a)(3). Petitioner has made no showing of the grounds on which the challenged claims are based; Petitioner makes no mapping whatsoever of the BMR-2008 disclosure to the challenged claims, instead suggesting that we compare the disclosures of BMR-2008 and Ericsson-BMR. This is insufficient to meet Petitioner’s obligation to identify with particularity how the asserted references satisfy the requirements of the challenged claims. For at least the foregoing reasons, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claim 1, or its dependent claims 2–7, would have been obvious in view of Ericsson-BMR alone or in combination with Spiazzi, Wanes, or Takeshima.” slip op. at 46

  Claim constructioncites KSR · Graham
  Patents in suitUS 9,516,761
• Delta Electronics, Inc. v. Vicor CorporationInstitution denied
  PTAB · May 17, 2024 · IPR2024-00134 · APJ Georgianna W Braden · IPR · Institution

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

  RulingsInstitution decision

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

    “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; see also 37 C.F.R § 42.4(a) (2022) (“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 Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we decline to institute inter partes review on any of the alleged grounds of unpatentability.” slip op. at 2

  • Adverse judgmentAdverse judgmentOther

    “it filed with the Office a statutory disclaimer of claims 22, 24, 39, and 40 of the challenged patent pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2028, 1; see Prelim. Resp. 7 n.1. The disclaimer of a claim “shall . . . be considered as part of the original patent.” 35 U.S.C. § 253(a). The language “considered as part of the original patent” means that a patent subject to a disclaimer under § 253(a) “is treated as though the disclaimed claims never existed.” Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in section 253 to mean that the patent is treated as though the disclaimed claims never existed.”) (citing Altoona Publix Theatres v. Am. Tri-Ergon Corp., 294 U.S. 477, 492 (1935)); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (holding that the Board’s interference jurisdiction under 35 U.S.C. § 291 required “the existence of an interference, and a claim that ‘never existed’ [due to a statutory disclaimer] cannot form the basis for an interference”); Facebook, Inc. v. Skky, LLC, CBM2016- 00091, Paper 12 at 8 (PTAB Sept. 28, 2017) (precedential as to § II.B.2) (“The Federal Circuit has held consistently that claims disclaimed under § 253(a) should be treated as though they never existed.”). Thus, even though claims of the challenged patent existed at the time the Petition here was filed, we must now treat the challenged patent as if it had never included those claims. Accordingly, no inter partes review will be instituted for disclaimed claims 22, 24, 39, and 40 of the ’950 patent. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”). Nevertheless, our analysis continues because not all of the claims challenged in the Petition have been disclaimed by Patent Owner.” slip op. at 11

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

    “Based on our review of the record, we do not construe any limitations or terms of the challenged claims because construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy” and we do not discern any such controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12

  • Skill levelSkill level petitioner adoptedOther

    “Here, Petitioner asserts a person of ordinary skill in the art at the time of the ’950 patent would have had “at least a Master’s degree in electrical engineering and two or more years of work experience relating to power electronics and the design of switching power converters, with more experience potentially substituting for education or vice versa.” Pet. 7 (citing Ex. 1003 ¶ 29; Ex. 1009 ¶¶ 35–38; Ex. 1010, 80). Patent Owner does not assert a different level of skill in the art at the time of the alleged invention at this time. See generally Prelim. Resp. Additionally, Dr. Rivas-Davila applies Petitioner’s definition in his declaration. Ex. 2001 ¶ 64. For the purposes of this Decision, we adopt Petitioner’s level of ordinary skill in the art because it appears consistent with (1) the problems addressed in the ’950 Patent and (2) the level of ordinary skill in the art reflected by the prior art of record. See Okajima, 261 F.3d at 1355.” slip op. at 15

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,199,950
• Delta Electronics, Inc. v. Vicor CorporationInstitution denied
  PTAB · May 17, 2024 · IPR2024-00187 · APJ Kara L Szpondowski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 22, and 31–35 were unpatentable under any asserted § 103 ground.

  RulingsInstitution decision

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

    “In an [inter partes review], 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)); see also Intelligent Bio-Sys., 821 F.3d at 1369. This burden of persuasion never shifts to Patent Owner. See 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). Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combination of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art “would have at least a Master’s degree in electrical engineering and two or more years of work experience relating to power electronics and the design and control of switching power converters, with more experience potentially substituting for education, or vice-versa.” Pet. 14 (citing Ex. 1017, 79; Ex. 1003 ¶ 29).” slip op. at 10

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

    “Only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review. 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))). After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly construe any term, or decide whether the preamble of claim 1 is limiting, for purposes of this Decision.” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner cites to Dr. Hopkins’ Declaration, which repeats nearly verbatim the contentions in the Petition, and then adds testimony that “[t]he resonant period and frequency is what the ’481 Patent refers to as the ‘standard’ operating period and frequency.” Pet. 32 (citing Ex. 1003 ¶ 81). Dr. Hopkins, however, does not provide any citation to the ’481 patent to support this testimony, nor any further explanation as to how or why the resonant period and frequency teaches the “standard operating period and frequency” recited in limitation 1[c]. Therefore, “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory 17 As discussed below, Petitioner also relies on this theory for all of the remaining six challenges in the Petition, and does not provide further explanation in any of those challenges. Accordingly, as explained below, each of Petitioner’s remaining challenges is insufficient for the same reasons described here. assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,166,481
• 10x Genomics, Inc. v. President And Fellows Of Harvard CollegeInstitution denied
  PTAB · Mar 7, 2024 · IPR2023-01299 · APJ Tina E Hulse · IPR · Institution

  Denied institution on claims 1–12 because the Petition failed to address a disputed § 112(f) construction and the Fintiv factors favored discretionary denial.

  RulingsInstitution decision

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

    “II. DENIAL UNDER 37 C.F.R. § 42.104(b)(3) Our rules require that a petition set forth “[h]ow the challenged claim is to be construed” and, “[w]here the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. [§] 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each function.” 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103, effective March 16, 2013. Because the ’303 Patent has an effective filing date after March 16, 2013, the AIA version of §§ 102 and 103 apply. Our decision, however, would be the same under either version. 3 Fan et al., US 10,829,814 B2, issued Nov. 10, 2020. Ex. 1005 (“Fan”). 4 Gunderson et al., Decoding Randomly Ordered DNA Arrays, 14 GENOME 870–77 (2004). Ex. 1007 (“Gunderson”). 5 Larsson et al., In situ detection and genotyping of individual mRNA molecules, 7 NAT. METHODS 395–97 (2010). Ex. 1008 (“Larsson”). 6 Bo U. Curry, US 8,765,642 B2, issued Jul. 1, 2014. Ex. 1009 (“Curry”). 37 C.F.R. § 42.104(b)(3). The Consolidated Trial Practice Guide7 (“CTPG”), which provides guidance to practitioners on our rules, further instructs that “[w]here claim language may be construed according to 35 U.S.C. § 112(f), a petitioner must provide a construction.” CTPG 45 (emphases added) (citing 37 C.F.R. § 42.104(b)(3)). The CTPG advises that a party “may choose to elaborate why § 112(f) should or should not apply to the limitation at issue.” Id. Notably, the CTPG warns that “[a] petitioner who chooses not to address construction under § 112(f) risks failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).” Id.” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Decided for patent owner

    “Similarly, here, Petitioner asserts that the phrase “an error detection or correction system” is not governed by § 112(f) and that no construction is necessary. See Pet. 12 (“Solely for the purposes of this IPR, 10x applies Co- Plaintiff’s [(i.e., Vizgen’s)] interpretations of the 303 patent claims from the concurrent litigation.”); see also Ex. 2005, 7 (reciting Vizgen’s proposed construction: “This claim limitation is not governed by 35 U.S.C. § 112(f). No construction necessary”). Before the district court, however, Petitioner asserts that the claim phrase is subject to § 112(f), which the district court largely adopted.10 Ex. 1062, 34. Petitioner admitted the claim phrase was in dispute in the Joint Claim Construction Statement filed in district court. Ex. 2005, 4, 7 (identifying “an error detection or correction system” as a disputed claim term). Despite knowing the meaning of the claim phrase is in dispute, Petitioner did not offer a reasoned construction in the Petition. Thus, like the petitioner in Orthopediatrics, Petitioner should have provided reasons why the limitation is not governed by § 112(f) or provided an express construction of the claim phrase. See IPR2018- 01546, Paper 10 at 11. Because Petitioner has the burden to show a reasonable likelihood of prevailing in its assertion that at least one claim is unpatentable, our rules require that Petitioner substantively address any claim terms in dispute. Based on the circumstances presented here, by relying solely on Vizgen’s construction for “an error detection or correction system” that “no construction [is] necessary” without further explanation, Petitioner failed to satisfy its burden to set forth “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). Thus, we find the Petition is deficient on its face under 37 C.F.R. § 42.104(b)(3), as merely stating “no construction [is] necessary”—while knowing the construction is actually disputed under § 112(f)—is not sufficient for purposes of institution.” slip op. at 12

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

    “Given the coordinated schedule with the related cases, the prior denial of a motion to stay, and the lack of intent by either party to file a motion to stay, we agree with Patent Owner that it is unlikely the district court proceeding will be stayed. Thus, under the facts and circumstances of this case, we find this factor favors exercising our discretion to deny institution.” slip op. at 16

  Claim constructionDiscretionary denial
  Patents in suitUS 11,098,303
• Sony Electronics Inc. v. Jawbone Innovations, LLCInstitution denied
  PTAB · Jan 9, 2024 · IPR2023-01176 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because Sony did not show a reasonable likelihood that claims 29–44 were unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, and for the reasons explained below, we determine Petitioner has not shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we deny institution of an inter partes review of claims 29–44 in the ’611 patent on all challenges included in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingOther

    “Amazon IPR in view of representations by Amazon and Patent Owner that they had settled their dispute in the Amazon IPR and related district court litigation. IPR2023-00285, Paper 16, 2. Because the Amazon IPR has been terminated, we dismiss the Motion for Joinder as moot.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner and Patent Owner’s proposed levels of skill in the art are similar, except that Patent Owner proposes slightly more experience, i.e., “three years of industry or academic experience” versus “at least two years of relevant experience.” Prelim. Resp. 14; Pet. 7. Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan, with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, as it is consistent with the ’611 patent and the asserted prior art.” slip op. at 12

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

    “Petitioner contends that “[n]o formal claim constructions are necessary.” Pet. 7. Patent Owner proposes a claim construction for the claim 1 term of “forming a filter” and “filter” which are used in claims 29 and 44. Prelim. Resp. 12. As discussed below, we determine that Petitioner has not met its burden on the merits and, because the construction of these terms is not relevant to that determination, we need not address the construction of the terms that Patent Owner proposes for construction.” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,326,611
• LG Electronics Inc. v. Jawbone Innovations, LLCInstitution denied
  PTAB · Jan 9, 2024 · IPR2023-01156 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 29–44 would be unpatentable under either asserted obviousness ground.

  RulingsInstitution decision

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

    “information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, and for the reasons explained below, we determine Petitioner has not shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we deny institution of an inter partes review of claims 29–44 in the ’611 patent on all challenges included in the Petition.” slip op. at 2

  • BurdenNot shown unpatentable

    “We agree with Patent Owner and find that the argument and evidence presented in the Petition is insufficient to teach limitation [29b]. The limitation requires that the formation of the “filter by generating a first quantity by applying a calibration to a second signal of a second physical microphone.” Under Petitioner’s assertion, a calibration would be applied to the second signal using Avendano ’880’s gain factor, but then the calibrated signal would be subsequently processed to generate the claimed first quantity “by processing the calibrated second signal [] using Hou’s ‘first minimum estimate unit 508.’” Pet. 34. This does not meet the claim limitation: it requires that the application of calibration generates the first quantity. Petitioner instead asserts that it is subsequent processing by Hou’s “first minimum estimate unit 508” that generates the “first quantity,” which does not meet the claim limitation. Petitioner also asserts that “a calibration also would be applied to the second signal x2 by Hou’s ‘first minimum estimate unit 508’ to generate a first quantity.” Pet. 39 (citing Ex. 1003 ¶ 135). Petitioner’s assertion is that Hou’s minimum estimate unit 508 serves to apply a calibration to a second signal. Hou’s first minimum estimate unit 508, however, “estimates the minimum for the first electronic sound signal,” and there is no indication or support that the minimum estimate unit performs calibration. See Ex. 1008, 5:36–38. Petitioner also provides no explanation or support for this assertion. See Pet. 39; Ex. 1003 ¶ 135.” slip op. at 23

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingOther

    “Amazon IPR in view of representations by Amazon and Patent Owner that they had settled their dispute in the Amazon IPR and related district court litigation. IPR2023-00285, Paper 16, 2. Because the Amazon IPR has been terminated, we dismiss the Motion for Joinder as moot.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner and Patent Owner’s proposed levels of skill in the art are similar, except that Patent Owner proposes slightly more experience, i.e., “three years of industry or academic experience” versus “at least two years of relevant experience.” Prelim. Resp. 14; Pet. 10. Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan, with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, as it is consistent with the ’611 patent and the asserted prior art.” slip op. at 12

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 8,326,611
• Meta Platforms, Inc. v. Jawbone Innovations, LLCInstitution denied
  PTAB · Jan 9, 2024 · IPR2023-01129 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because Meta did not show a reasonable likelihood that claims 29, 31–44 were obvious over the asserted combinations.

  RulingsInstitution decision

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

    “information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, and for the reasons explained below, we determine Petitioner has not shown that there is a 1 Petitioner identifies itself, Meta Platforms, Inc., as the real party-in-interest. Pet. 93. 2 Patent Owner identifies itself, Jawbone Innovations, LLC, as the real partyin-interest. Paper 7, 2. reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we deny institution of an inter partes review of claims 29 and 31–44 in the ’611 patent on all challenges included in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner and Patent Owner’s proposed levels of skill in the art are similar, except that Patent Owner proposes slightly more experience, i.e., “three years of industry or academic experience” versus “at least two years of relevant experience.” Prelim. Resp. 14; Pet. 7. Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan, with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, as it is consistent with the ’611 patent and the asserted prior art.” slip op. at 13

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

    “Petitioner contends that “[n]o formal claim constructions are necessary.” Pet. 7. Patent Owner proposes a claim construction for the claim 1 term of “forming a filter” and “filter” which are used in claims 29 and 44. Prelim. Resp. 12. As discussed below, we determine that Petitioner has not met its burden on the merits and, because the construction of these terms is not relevant to that determination, we need not address the construction of the terms that Patent Owner proposes for construction.” slip op. at 14

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

    “a. Claim 29 We determine that Petitioner has failed to meet its burden to show a reasonable likelihood that Avendano ’880 and Hou would have rendered claim 29 obvious. This determination is based on the evidence and argument presented for limitation [29b], so we solely address this issue below.” slip op. at 21

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,326,611

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.