• Sram, LLC v. Fox Factory, Inc.Institution denied
  PTAB · Feb 21, 2024 · IPR2023-01302 · APJ Frances L Ippolito · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–8 unpatentable under any asserted anticipation or obviousness ground.

  RulingsInstitution decision

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

    “Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a). 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).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have a degree in Mechanical Engineering and at least three years’ experience in vehicle suspension technology, or a Master’s degree in Mechanical Engineering with a concentration in design of vehicle suspension technology and/or shock absorbers.” Pet. 2, n.1 (citing Ex. 1102 ¶ 33; Ex. 1103 ¶ 29). Patent Owner does not dispute Petitioner’s proposed definition. See generally, Prelim. Resp. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9

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

    “Petitioner contends that claim construction is not necessary. Pet.7. Nonetheless, Petitioner contends that because of prosecution history disclaimer, the claim term “air bleed assembly” should be construed to be “located between the lower leg seal and the upper bushing.” Id. Patent Owner contends that this claim term should be accorded its plain and ordinary meaning. Prelim. Resp. 13. In particular, Petitioner argues that “[t]he claim language itself makes it clear that the ‘air bleed assembly’ is located on the lower fork between the lower leg seal and a resting level of the oil bath in the lower fork.” Id. (citing Ex. 1101, 4:56– 5:4). We note that Petitioner acknowledges that “claim construction is not necessary because the claims of the ‘331 patent are invalid in view of the prior art regardless of whether Fox’s prosecution history disclaimer on the position of the “air bleed assembly” is included in the claim construction.” Pet. 7. Based on our review of the parties’ arguments and evidence, no” slip op. at 10

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

    “Here, we understand Kashima to teach that when setscrew 6 is opened to release air in the clearance, oil is also released through the same opening. Ex. 1105 ¶ 4. In other words, the distance between setscrew 6 and the oil bath lubrication does not prevent the leakage of oil from the lower tube. Rather, setscrew 6 must be closed to prevent the oil from leaking and continuing to leak from the inside of outer tube 1. Indeed, Petitioner acknowledges the same. Petitioner asserts that “most if not all of the oil bath lubrication remains within the lower fork 1 because the valve is near the top of the lower fork 1 and can be closed once any oil begins to leak.” Pet. 26– 27 (citing Ex. 1105 ¶ 4). Here, Petitioner acknowledges that it is the closing of the setscrew that stops the oil leakage. However, claim 1 requires that the fluid passage and manually operable valve “are located at a distance from an oil bath lubrication within said lower fork, such that when said manually operable valve is in said second position, most, if not all of said oil bath lubrication remains within said lower fork[.]” Ex. 1001, 5:2–7 (emphases added).” slip op. at 21

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,739,331
• Sram, LLC v. Fox Factory, Inc.Institution denied
  PTAB · Feb 21, 2024 · IPR2023-01301 · APJ Frances L Ippolito · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, chiefly because the references did not meet claim 1’s oil-retention limitation.

  RulingsInstitution decision

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

    “Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a). 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).” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983).” slip op. at 8

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

    “Nonetheless, Petitioner contends that because of prosecution history disclaimer, the claim term “air bleed assembly disposed on said lower fork tube” should be construed as “air bleed assembly located between the lower leg seal and the upper bushing.” Id. at 11 (citing Ex. 1014, 7). Patent Owner contends that this claim term should be accorded its plain and ordinary meaning. Prelim. Resp. 13. In particular, Petitioner argues that “[t]he claim language itself makes it clear that the ‘air bleed assembly’ is located on the lower fork between the lower leg seal and a resting level of the oil bath in the lower fork.” Id. (citing Ex. 1001, 4:56– 5:4). Based on our review of the parties’ arguments and evidence, no construction is necessary to resolve the parties’ disputes. 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 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)

    “From this disclosure, we understand Kojima teaches expressly that chamber 210a is positively pressurized, rather than de-pressurized to ambient pressure. As such, the level of oil shown in Figure 9, which is positioned under the location of air valve 215, also reflects a positive pressure in chamber 210a. See Ex. 1005 ¶ 78. Petitioner’s expert, Dr. Eric Wang, testified to the same at the Preliminary Injunction Hearing in the parallel district court proceeding. The cross-examination exchange between Patent Owner’s litigation counsel and Dr. Wang is provided below: Q So air chamber 210a, to which -- with which the air valve 215 communicates is -- has a positive air pressure, of example 50 PSI, correct? A Yes. Well according to this -- according to what’s written here for example, pressure 50 PSI; that's one example. Q So at least in this embodiment of figure nine, Kojima teaches that the chamber 210a has a positive air pressure of example 50 PSI, right? A That’s what it says here, yes. Ex. 2005, 191:9–17. Given that Kojima’s Figure 9 reflects a positive pressure scenario, it is” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,739,331
• Reboot Labs LLC v. Lpi, Inc.Institution denied
  PTAB · May 18, 2023 · IPR2023-00134 · APJ Cynthia L Murphy · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were anticipated or obvious over the asserted prior art.

  RulingsInstitution decision

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

    “there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R § 42.4(a). Petitioner bears the burden of demonstrating this reasonable likelihood. 35 U.S.C. § 314(a). slip op. at 2

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

    “A. water heating device The challenged claims all require a water heating device. Ex. 1001, 12:28, 13:1, 13:48, 14:31. A person of ordinary skill would understand that a “water heating device” is a device that actually heats water, as opposed to, for example, a device that merely interacts with already heated water. This claim construction aligns with the disclosure of the ’161 Patent. See, e.g., Ex. 1001, 6:39–45.6 Consequently, the claim term “water heating device” would not be met by a device that merely interacts with already hot water.” slip op. at 6

  • Skill levelDecided for patent owner

    “V. LEVEL OF ORDINARY SKILL IN THE ART Petitioner’s prior art arguments all hinge, one way or another, on what would have been known, understood, envisioned, or obvious to a person of ordinary skill in the art. See, e.g., Pet. 4, 12, 27, 28, 29, 31, 32, 33. Yet Petitioner does not discuss, much less provide us with a proposed definition of, the level of ordinary skill in the art. Petitioner’s omission of any discussion whatsoever about the level of ordinary skill in the art, alone, makes us question the likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Although the prior art can be used to establish the level of ordinary skill, here, Petitioner does not give any indication that its position is based upon a level of ordinary skill established in this manner. This, at best, introduces conjecture into Petitioner’s prior art arguments because, as indicated above, they all hinge on what would have been known, understood, envisioned, or obvious to a person of ordinary skill in the art.” slip op. at 8

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

    “In the circuit diagrammed in Petitioner’s annotated drawing, water is conveyed through heating device 46, through cross-feed line 80, into cold tub chamber 14, out of cold tub chamber 14, through cooling device 67, into tub cold chamber 14, through weir 19, into hot water tub 16, out of hot water tub 16, and back to heating device 46. Thus, in Petitioner’s diagrammed circuit, water is conveyed to both the heating device 46 and the cooling device 67 only by passing through tub chambers 14/16 therebetween. As discussed above in Section IV, the specific coupled-in-series arrangement required by the challenged claims is not met by an arrangement in which water is conveyed to both the heating device and the cooling device only by passing through the tub therebetween. Consequently, Hargrove does not disclose the specific coupled-in-series arrangement required by the challenged claims. Thus, Petitioner has not shown a reasonable likelihood that it would prevail in showing that independent claims 1 and 15 are anticipated by Hargrove.” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,712,161
• Unified Patents, LLC v. Charge Fusion Technologies, LLCInstitution denied
  PTAB · Aug 24, 2022 · IPR2022-00519 · APJ Jeremy M Plenzler · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Hafner and Lowenthal rendered claims 13–15 obvious.

  RulingsInstitution decision

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

    “Whether Hafner teaches “a processor . . . and a memory in communication with the processor, the memory storing instructions that when executed by the processor cause the processor to . . . determine . . . a charging schedule for the vehicle” as recited in claim 13 (Ex. 1001, 30:36– 51, hereinafter “the scheduling limitation”) is dispositive to our decision in this proceeding. Accordingly, our discussion below is limited to Hafner and that limitation from claim 13.” slip op. at 6

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

    “Whether Hafner teaches “a processor . . . and a memory in communication with the processor, the memory storing instructions that when executed by the processor cause the processor to . . . determine . . . a charging schedule for the vehicle” as recited in claim 13 (Ex. 1001, 30:36– 51, hereinafter “the scheduling limitation”) is dispositive to our decision in this proceeding. Accordingly, our discussion below is limited to Hafner and that limitation from claim 13.” slip op. at 6

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

    “According to Petitioner, “[n]o terms of the ’488 patent warrant construction beyond their ordinary and customary meaning.” Pet. 12. Similarly, Patent Owner indicates that “[f]or purposes of [the Preliminary Response], for all claim terms, Patent Owner requests that the Board adopt the ordinary and customary meaning of the claim terms as understood by one of ordinary skill in the art.” Prelim. Resp. 20. Neither party articulates the asserted plain and ordinary meaning. We do not need to construe any terms expressly to reach our decision. 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))).” slip op. at 5

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

    “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§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,853,488
• Aisin Seki Co. Ltd. v. Signal IP, Inc.Institution denied
  PTAB · Jun 17, 2016 · IPR2016-00369 · APJ James A Tartal · IPR · Institution

  The Board denied institution on claim 11 because the petition did not show a reasonable likelihood that any of its three obviousness grounds established unpatentability.

  RulingsInstitution decision

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

    “conclude the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of the challenged claim. Accordingly, we do not authorize an inter partes review to be instituted as to claim 11 of the ’375 patent.” slip op. at 2

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

    “2015. See Pet. 13. “[T]he Board’s review of the claims of an expired patent is similar to that of a district court’s review.” In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Specifically, because the expired claims of the patent are not subject to amendment, we apply the principle set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)), that “words of a claim ‘are generally given their ordinary and customary meaning,’” as understood by a person of ordinary skill in the art in question at the time of the invention. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,” slip op. at 7

  • BurdenNot shown unpatentable

    “Pet. 30–31. Contrary to Petitioner’s argument, there is no express disclosure in Tokuyama that it is “adding up” the number of sensors that are ON. We are not persuaded that Petitioner has carried its burden by merely arguing that “[i]n other words, Tokuyama’s apparatus determines a ‘total load rating’ by adding up the number of sensors that are ON,” or that “this determination amounts to adding up the sensors’ load ratings.” Pet. 30; Ex. 1009, ¶ 66 (emphasis added). Petitioner’s interpretation of Tokuyama is supported only by a limited explanation in the Declaration of Dr. Rouhana, which states:” slip op. at 11

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

    “Petitioner offers no sufficient reason why Mano’s “binary logic” would have been used at the time of the invention in Zeidler’s device or simple algorithm. Nor does Petitioner explain any sufficient rationale for why one of ordinary skill in the art would have applied the binary logic of Mano to Zeidler. Indeed, Petitioner offers no sufficient explanation for how its purported use of Boolean arithmetic comports with “summing,” as that term is used in the ’375 patent.” slip op. at 15

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 5,732,375
• Toyota Motor Corporation v. Signal IP, Inc.Institution denied
  PTAB · Jun 10, 2016 · IPR2016-00291 · APJ James A Tartal · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claim 11 was obvious over either asserted combination.

  RulingsInstitution decision

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

    “Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of the challenged claim. Accordingly, we do not authorize an inter partes review to be instituted as to claim 11 of the ’375 patent.” slip op. at 2

  • BurdenNot shown unpatentable

    “Pet. 29. Contrary to Petitioner’s argument, there is no express disclosure in Tokuyama that it is “adding up” the number of sensors that are ON. We are not persuaded that Petitioner has carried its burden by arguing in a conclusory manner that “[i]n other words, Tokuyama’s apparatus determines a ‘total load rating’ by adding up the number of sensors that are ON,” or that “this determination amounts to adding up the sensors’ load ratings.” Pet. 29; Ex. 1009, ¶ 66 (emphasis added). Petitioner’s interpretation of Tokuyama is supported only by a limited explanation in the Declaration of Scott Andrews, which states: Again, step (b) in Tokuyama determines whether at least four of the nine sensors are on (i.e., are sensing the minimum pressure required to activate the sensor). Viewing the “on” sensors as binary “1” values and the “off” sensors as binary “0” values, this determination amounts to adding up the sensors’ load ratings; the sum of these binary values represents the number of sensors in the “on” state. Therefore, Tokuyama’s system computes a “total load rating.” By determining whether that number is at least 4, it compares the total load rating to a “total load threshold.” Ex. 1009, ¶ 66. Thus, from the evidence relied on by Petitioner, Tokuyama determines whether a certain number of sensors is on, but Tokuyama provides no indication that it is “adding up” sensor ON information. 13 Mr. Andrews testimony is not persuasive because it is conclusory and provides no explanation of why one of ordinary skill in the art at the time of the invention would have understand Tokuyama to be applying a binary system based on numerical values for ON and OFF, much less summing those numerical values to add up the load ratings of the sensors. Tokuyama does not state that it assigns a numerical value to any load rating, and in fact utilizes information to make determinations based not only on how many of the twelve load detection units are ON or OFF, but also about which of those units are ON or OFF. Petitioner does not explain how such location information would be reflected were Tokuyama properly viewed as a simple binary system. Petitioner also neglects to address how Tokuyama’s exclusion of three of the twelve sensors from its determination of whether four or more of the load detection units are ON relates to the requirement of claim 11 of summing the assigned load ratings for all the sensors. Petitioner’s contentions are not supported by sufficient evidence to suggest that any set of load rating values is summed, or needs to be summed, for Tokuyama to operate, even if Petitioner contends that conceptually it “amounts to” adding values up.” slip op. at 13

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

    “Any judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In this 14 case, Petitioner provides no persuasive explanation or sufficient evidence that Tokuyama contemplated “summing the assigned load ratings,” as claimed, and instead suggests that by considering the disclosure of the ’375 patent, Tokuyama can be thought of as accomplishing the same task. There is no persuasive evidence that such reasoning is limited to the level of ordinary skill in the art at the time of the claimed invention. Moreover, reasoning that the disclosure of Tokuyama “amounts to” what is disclosed in the ’375 patent necessarily includes knowledge gleaned from the ’375 patent. As a result, we are not persuaded that Petitioner has sufficiently demonstrated Tokuyama discloses “summing the assigned load ratings for all the sensors to derive a total load rating,” as required by claim 11. Accordingly, we conclude that Petitioner has not presented sufficient information to establish a reasonable likelihood of prevailing in showing the unpatentability of claim 11 of the ’375 patent as obvious over Schousek and Tokuyama. slip op. at 14

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

    “For purposes of this Decision, the only term requiring specific discussion is “load rating,” recited in claim 13. According to Petitioner: The ’375 patent does not expressly define the term “load rating.” An example is provided in the specification where a “load rating” varies between 0 and 4. (See [Ex. 1001] at 4:6–9; see also 6.) Claim 11, however, is not limited to this example. Instead, the ’375 patent confirms that “[t]he load rating is a measure of whether the sensor is detecting some load….” (Id. at 4:2–4.) Thus, while a load rating can vary between 0 and 4 (or 0 and some other number), it can also simply be binary value that varies between 0 and 1. In other words, a “load rating” is simply a numerical value indicating “whether [each] sensor” in the “sensor array” is “detecting some load.” (See Ex. 1009, Andrews Dec. at ¶ 34.) Pet. 8. Patent Owner does not dispute Petitioner’s proposed construction, stating “a load rating, according to the ’375 [p]atent is a measure of whether a given sensor is detecting some load.” Prelim. Resp. 3, 13 (citing Ex. 1001, 4:1–4). For purposes of this decision, we agree with the parties that a “load rating” is a measure of whether a given sensor is detecting some load.” slip op. at 9

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 5,732,375
• Toyota Motor Corporation v. Signal IP, Inc.Institution denied
  PTAB · Jun 9, 2016 · IPR2016-00293 · APJ Jason J Chung · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 2, and 6 obvious over either asserted combination.

  RulingsInstitution decision

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

    “inter partes review of claims 1, 2, and 6 of U.S. Patent No. 5,714,927 (Ex. 1001, “the ’927 patent”). Paper 2 (“Pet.”). In response, Patent Owner, Signal IP, Inc., filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that 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 set forth below, we deny institution of inter partes review of the ’927 patent.” slip op. at 2

  • Prior constructionPrior construction adoptedDecided for petitioner

    “(1) a related inter partes review (Pet. 8), and (2) a related matter before the U.S. District Court for the Central District of California (id. at 6–8). Regarding the related inter partes review, the Board previously construed the term “alert command” as raw alert data that is used to generate an alert signal, and the term “alert signal” as a signal that provides a visual or audio alert to a driver. Volkswagen Grp. of Am., Inc. v. Signal IP, Inc., Case IPR2015-00968, slip op. at 6–7 (PTAB Aug. 25, 2015), Paper 6. In order to reach our decision below, we need only construe the terms “alert command” and “alert signal.” We, therefore, decline to specifically construe any other claim terms at this time. We agree with Petitioner’s construction of the terms “alert command” and “alert signal,” consistent with our prior construction in IPR2015-00968. (See id. for our prior construction of the terms.) Thus, we construe the term “alert command” as raw alert data that is used to generate an alert signal, and the term “alert signal” as a signal that provides a visual or audio alert to a driver. Id. As explained below, even using Petitioner’s construction of these terms, Petitioner’s challenge fails to establish a reasonable likelihood that Petitioner would prevail in establishing unpatentability.” slip op. at 6

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

    “Petitioner asserts that it would have been obvious “to modify Pakett’s system such that it determines whether the ‘alert signal,’ as opposed to the ‘alert command,’ was active for a ‘threshold time’ as the claim requires.” Pet. 47. Petitioner asserts that this could be accomplished by activating a warning (alert signal) as soon as Pakett recognizes that an obstacle is present, and then applying the processing method previously applied to the persistence period instead to determine whether to sustain the warning. Id. at 47–48 (citing Ex. 1010 ¶¶ 101–04). Petitioner asserts that “one of ordinary skill in the art would consider Pakett’s delay of a warning until after the end of the persistence period to be nothing more than an optional redundancy,” and, thus, that this modification would have been obvious as “nothing more than a routine, obvious design choice.” Id. at 48 (citing Ex. 1010 ¶ 104). We disagree with Petitioner that the cited portions of Pakett’s teaching to delay the warning until after the persistence period is “nothing more than an optional redundancy,” at least because the cited portions of Packett do not indicate, either explicitly or implicitly, the 17 function of waiting for the persistence period before sending a warning to the driver indicators as optional or redundant. See id. Pakett clearly states that during the persistence period, “no warnings are sent to the driver indicators.” Ex. 1002, 6:50–51 (emphasis added). Pakett explains that waiting through the persistence period before sending warnings to the driver indicators prevents the system from incorrectly identifying stationary obstacles that were identified by the square wave generator 29 as valid obstacles in the blind spot. Id. at 7:56–63. Pakett thus explains that waiting through the persistence period before sending warnings to the driver indicators filters out false positives of objects in the blind spot of the vehicle. Id.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,714,927
• Robert Bosch LLC / Daimler AG v. Orbital Australia Pty LimitedRehearing denied
  PTAB · Feb 2, 2016 · IPR2015-01249 · APJ Jeremy M Plenzler · IPR · Rehearing

  The Board denied rehearing of the institution denial, finding no error in its conclusion that Petitioner had not shown claims 1, 3-7, 9, 12, 14, and 15 unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” 1 U.S. Pat. No. 5,080,064, iss. Jan. 14, 1992 (Ex. 1004, “Buslepp”). 2 U.S. Pat. No. 5,078,109, iss. Jan. 7, 1992 (Ex. 1005, “Yoshida”). PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). In its request for rehearing, the dissatisfied party must identify the place in the record where it previously addressed each matter it submits for review. 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “A. Claim Construction Petitioner does not dispute our construction of the “initial position” recited in the claims. See Req. Reh’g 5–8. Petitioner, however, alleges that we incorrectly characterized their construction of that limitation. Id. at 5–6. We are not persuaded that we incorrectly characterized the construction set forth in the Petition. Notwithstanding that determination, Petitioner’s arguments on this issue are unpersuasive because we evaluated their challenges based on our construction of the “initial position” recited in the claims, which, as noted above, Petitioner does not dispute.” slip op. at 3

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

    “identification of Buslepp’s disclosure of a feed-forward determination in the form of the BASE VALUE.” Req. Reh’g 9 (citing Pet. 1, 12). This is an inaccurate characterization of our Decision. Our Decision specifically notes Petitioner’s reliance on Buslepp’s “BASE VALUE” as corresponding to the claimed initial position (Dec. 9–10), and Petitioner cites to this portion of our Decision in its Request (Req. Reh’g 11). Petitioner asserts that “[t]he only deficiency the Board notes with Buslepp, based on Patent Owner’s misleading statements, is that the THROTTLE POSITION (a different variable from the BASE VALUE) is determined by a feedback control loop.” Id. (citing Dec. 10). Ultimately, our Decision was based on Petitioner’s failure to explain sufficiently how Buslepp’s “BASE VALUE” discloses the claimed “initial position.” See Dec. 10. Petitioner essentially disagrees with our Decision, which is not a proper basis for requesting rehearing. As noted above, there is no dispute regarding the proper construction of the “initial position,” and we considered the arguments asserted in the Petition identifying Buslepp’s “BASE VALUE” as corresponding to the claimed “initial position.” Furthermore, as Petitioner acknowledges (Req. Reh’g 11), our Decision explicitly acknowledged that Buslepp’s “BASE VALUE” is an open-loop determination. See Dec. 10. The Petition failed to establish that Buslepp discloses that the BASE VALUE is the initial position for its throttle valve, rather than merely a value used to determine a position for the throttle valve. Claim 1 not only requires “determining an initial position of said throttle means,” but also “moving the throttle means to said initial position.”” slip op. at 3

  Claim construction§ 102 anticipation
  Patents in suitUS 5,606,951
• Indoor Skydiving Germany GmbH v. Ifly Holdings LLCInstitution denied
  PTAB · Nov 18, 2015 · IPR2015-01272 · APJ Richard E Rice · IPR · Institution

  Institution was denied because petitioner failed to show a reasonable likelihood of prevailing on any challenged claim under any asserted ground.

  RulingsInstitution decision

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

    “B. Asserted Anticipation Anticipation requires all features of a claim to be disclosed within a single reference. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (holding that, for anticipation, “a single prior art reference must expressly or inherently disclose each claim limitation”). In an inter partes review, moreover, anticipation must be based on prior art consisting of patents or printed publications. 35 U.S.C. § 311(b). Whether a prior art reference is a printed publication depends on its public accessibility. See In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “A reference is publicly accessible upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (internal citation and quotation marks omitted).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Claim Construction In an inter partes review, the Board gives claim terms in an unexpired patent their broadest reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278, 1279 (Fed. Cir. 2015). Under the broadest reasonable interpretation standard, and absent any special definition, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the Petition, Petitioner asserts that a person of ordinary skill in the art would have “had a bachelor’s degree in mechanical or aeronautical sciences or the equivalent, and two or more years of experience in the field of aerodynamic or wind tunnel design.” Pet. 14 (citing Ex. 1029 ¶¶ 25–28). As Patent Owner does not dispute that definition, we adopt it for purposes of our Decision. See Prelim. Resp. 48.” slip op. at 7

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

    “Prelim. Resp. 21–22. Patent Owner argues, however, that “Albuschkat does not describe or illustrate any fluid communication between the stand 13 and the floating space 19,” and thus implicitly asserts that the phrase “said staging area aerodynamically communicating with said chamber” requires “fluid communication” between the staging area and the chamber. See id. at 37. The phrase “said staging area aerodynamically communicating with said chamber” is recited in each of the challenged independent claims, except claim 19. While the Specification does not use the term “aerodynamically communicating,” it does describe airflow that passes through openings from the flight chamber to the staging area and re-enters the flight chamber through perforated wall section 230. Ex. 1001, 6:53–67. According to the Specification, “perforated wall section 230 reduces the turbulence that the airflow might otherwise experience as it passes the openings to the staging area as described in FIG. 3.” Id. at 6:55–58. On this record, we determine that the broadest reasonable interpretation of “said staging area aerodynamically communicating with said chamber” requires movement of air or other gaseous fluids between the staging area and the chamber.” slip op. at 8

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

    “single reference. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (holding that, for anticipation, “a single prior art reference must expressly or inherently disclose each claim limitation”). In an inter partes review, moreover, anticipation must be based on prior art consisting of patents or printed publications. 35 U.S.C. § 311(b). Whether a prior art reference is a printed publication depends on its public accessibility. See In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “A reference is publicly accessible upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (internal citation and quotation marks omitted).” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
• Clickbooth.Com, LLC v. Essociate, Inc.Institution denied
  PTAB · Jul 9, 2015 · IPR2015-00464 · APJ Jeremy M Plenzler · IPR · Institution

  The Board denied institution because the Petition did not adequately address claim 1’s ambiguity or identify corresponding structure for the means-plus-function limitations in claims 15 and 28.

  RulingsInstitution decision

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

    “Our rules state that “the petition must set forth . . . [h]ow the challenged claim is to be construed” (37 C.F.R. § 42.104(b)(3)) and “[h]ow the construed claim is unpatentable” (37 C.F.R. § 42.104(b)(4)). Claim 1 recites the step of “configuring an existing target affiliate system to receive referrals from a first plurality of Webmasters in an affiliate pool of source Webmasters such that the target Merchant affiliate system recognizes a transaction as originating from a source Webmaster in an affiliate pooling system” (emphasis added). The claim does not provide antecedent basis for this first instance of “the target Merchant affiliate system.” Based on the claim language, it is unclear whether the “existing target affiliate system” and the “target Merchant affiliate system” in the “configuring” step are intended to be different systems or the same system and, if the same system, whether both should be the “existing target affiliate system” or the “target Merchant affiliate system.” Because the claim references the “target Merchant affiliate system” for later recited steps, claim scope depends on which system is recited in the configuring step. As noted above, our rules require that “the petition must set forth . . . [h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). In the present case, the ambiguity resulting from the antecedent basis issue is readily apparent upon review of the claim and affects the scope of the claim. Petitioner, however, offers no construction of the “configuring” step that addresses this ambiguity. In fact, Petitioner does not even acknowledge that the ambiguity exists. See Pet. 4 (summarizing the “configuring” step as “configuring an existing affiliate system to receive referrals from webmasters in an affiliate pool of webmasters” without reference to the recitation of “the target merchant affiliate system”). As noted above, Petitioner’s only proposed construction for the “configuring” step of claim 1 is directed to the individual terms in the “configuring” step. See id. at 4–6. Providing constructions for several specific terms, and further contending that other terms “were commonly understood words having widely accepted and ordinary meanings,” does not cure the deficiency in the Petition resulting from Petitioner’s failure to address the ambiguity in the “configuring” step.” slip op. at 8

  • BurdenInstitution denied

    “Our rules require Petitioner to direct us to “the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). Although Petitioner contends that “[t]he corresponding structure is a software algorithm” for each of the “code segment for” and “means for” limitations found in claims 15 and 28, respectively, Petitioner does not identify an algorithm in the specification of the ’660 patent corresponding to even one of the “code segment for” or “means for” limitations. Pet. 6. Instead, as noted above, Petitioner contends that the ’660 patent does not describe the software algorithm. Id. As such, Petitioner fails to identify corresponding structure for any of the means-plus-function limitations and, therefore, fails to comply with 37 C.F.R. § 42.104(b)(3). Accordingly, we decline to institute inter partes review for claim 15 or claim 28, or claims 23 and 36, which depend from claims 15 and 28, respectively.” slip op. at 12

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

    “of “code segment for” limitations. Claim 28 is directed to “[a] system” and recites a number of “means for” limitations. The “code segment for” and “means for” limitations in claims 15 and 28, respectively, further recite functions similar to those recited in the method steps of claim 1. Petitioner acknowledges, and, for purposes of this decision, we agree, that these “code segment for” and “means for” limitations are means-plus-function limitations that should be construed in accordance with 35 U.S.C. § 112, ¶ 6. Pet. 6.13” slip op. at 11

  Claim constructioncites Phillips
  Patents in suitUS 6,804,660

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.