- PTAB · Mar 24, 2025 · IPR2024-01235 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR of claims 1–3, 6–11, and 14–16 on all proposed grounds after finding a reasonable likelihood of prevailing on the §103 ground over Mañosa and Patel.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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), 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). 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
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedPrinted publication not establishedMixed
“[T]here is no presumption in favor of institution or in favor of finding a reference to be a printed publication under § 42.108(c) or any other authority. . . . [T]he burden is on the petitioner to identify with particularity evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent, and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“May” expresses a possibility. The Specification reflects this interpretation of “may” when it states that “[i]n one embodiment, the organic material is not lyotropic. Thus, the organic material may not be a phospholipid.” Ex. 1001, 8:27–28 (emphasis added). One of ordinary skill would understand from this that the organic material “may not be” a phospholipid if the organic material is not lyotropic. It follows that if the organic material is lyotropic, then the organic material may be a phospholipid. Reading the statement “[t]he organic material may not be . . . a phospholipid” (id. at 8:59–63) in light of the earlier stated possibility that the organic material may be a phospholipid if the organic material is lyotropic, one of ordinary skill in the art would interpret “may not be” as excluding phospholipids under some conditions, not under all conditions. Taking the Specification’s discussion about phospholipids as exemplifying the permissive nature of the word “may,” we are unpersuaded that in stating that “[t]he organic material may not be [PMMA], a polyvinylidene difluoride-containing polymer, such as [PVDF] or PVDF- TrFE-CTFE, or a phospholipid, such as [DHPE]’” (Ex. 1001, 8:59–63), the specification “contains a clear and unmistakable disavowal of the compounds PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE” and “disclaims the listed compounds” from the “organic material” of the claims under all conditions, as Patent Owner argues. Prelim. Resp. 6–7. Moreover, the claims themselves limit the “organic material” only to the extent that it is “barocaloric cooling or heating agent” and can perform in the manner claimed. See Ex. 1001, claim 1, supra. As broadly worded, the claims do not exclude PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE per se from the group of organic materials employed by the claimed method. Adopting Patent Owner’s construction would impermissibly import a limitation (i.e., not exclude PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE) into the claims. For the reasons stated, at this stage of the proceeding, we agree with Petitioner’s broad construction of “organic material.” We do not adopt Patent Owner’s proposed construction whereby PMMA, PVDF, PVDF- TrFE-CTFE, and DHPE are excluded from the scope of the claim term “organic material.” The parties are invited to address this issue further during trial, if desired. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner shows that (a) Mañosa (i.e., inorganic compounds such as Ni-Mn-In, Gd5Si2Ge2, and La-Fe-Co-Si) and (b) Patel (i.e., PVDF-TrFE- CTFE) teach materials exhibiting inverse BCEs. Pet. 59 (citing, inter alia, Ex. 1007, pages 4–8; Ex. 1009, 1, 4–5; Ex. 1004 ¶ 108). In our view, at this stage, Petitioner sufficiently shows (via the five reasons listed supra) why it would have been obvious to one of ordinary skill in the art to substitute the barocaloric cooling or heating agent of Patel for that taught in Mañosa, thereby reaching the claimed method with a reasonable expectation of success. Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (U.S., 2007) (“The Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”)” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,230,656 - Medit Corporation v. 3shape A/SInstitutedPTAB · Mar 28, 2024 · IPR2023-01315 · APJ James J Mayberry · IPR · Institution
The Board instituted review of claims 1, 2, 4, 5, 9, 10, and 12–17 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, we interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundInstituted
“We understand Petitioner to rely on an inherent disclosure of the certainty score in contending that Korten anticipates claim 1. See, e.g., ABS Glob., Inc. v. Cytonome/St, LLC, 84 F.4th 1034, 1042–43 (Fed. Cir. 2023) (“A claim is anticipated if ‘each and every element as set forth in the claim is found, either expressly or inherently, in a single prior art reference.’” (emphasis added). And inherency is a high standard. See, e.g., Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.”). We determine, on the limited record before us, that Petitioner has made a sufficient showing for institution that a certainty score would naturally flow from Korten’s validity and error determinations. Accordingly, upon review of the information in the Petition and corresponding evidence, including Patent Owner’s counter arguments, we determine Petitioner has sufficiently demonstrated, at this stage of the proceeding, that Korten discloses the subject matter of limitation 1[c].” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“teachings of Korten with either Lehmann I or Lehmann II. Prelim. Resp. 22–26, 29 (referencing arguments for Ground 2), 35–36 (referencing arguments for Ground 2 directed to motivation to combine references). Patent Owner argues that, contrary to Petitioner’s assertion, the technology of Korten does not overlap with Lehmann II. Id. at 23. Specifically, Patent Owner argues that Petitioner and Dr. Foroosh fail to address how a person having ordinary skill in the art could have successfully combined the two-dimensional imaging of Lehmann II with the three-dimensional imaging of Korten. See id.; see, e.g., Pet. 31 (“Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models.”). Patent Owner argues that Petitioner should have been aware of this issue given the Board’s prior decision denying institution in IPR2023-00400. Prelim. Resp. 23. Patent Owner then itemizes a list of technical challenges with respect to combining a two-dimensional system with a three-dimensional system. Id. at 24. These challenges include that Petitioner does not explain “how one might associate a Z-coordinate of Korten with the color data obtained by the Lehmann II camera,” how a person having ordinary skill in the art “would have Korten’s processor align the [two-dimensional] color image areas obtained by the Lehmann II camera with the [three-dimensional] entity previously created by Korten, and then provide color values to the entity at aligned X-Y-Z points,” and “how to implement Lehmann II’s [two-dimensional] image into Korten’s [three-dimensional] model.” Id.; see also id. at 24–26 (discussing difficulties in using spectrophotometers to collect color data and associating two-dimensional color data with three-dimensional representations). Petitioner, concentrating on Lehmann II’s best fit technology, contends that “[a]lthough Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models, this difference is immaterial as it relates to determining the certainty score of the selected tooth shade value.” Pet. 31 (referencing Ex. 1015 ¶ 141); cf. Ex. 1015 ¶ 141 (providing the same testimony as is in the Petition). We have reviewed Patent Owner’s argument and determine, on the limited record before us, that Patent Owner identifies a weakness in Petitioner’s position. Petitioner’s contentions concerning motivation to combine Korten and Lehmann II seem to focus on a motivation for using Lehmann’s teachings of the subject matter of limitation 1[c], and does not address Petitioner’s reliance on Lehmann II for the subject matter of limitation 1[b], which recites the step of “determining a tooth shade value for at least one point on the tooth based on the texture data of the corresponding point of the digital 3D representation and on known texture values of one or more reference tooth shade values.” See Pet. 30 (mapping the requirements of limitation 1[b] to disclosures in Lehmann II); Ex. 1001, 21:33–37 (providing limitation 1[b]). Limitation 1[b] seems to require implementing teachings concerning two-dimensional color data from Lehmann II with three-dimensional color data collected at the step of limitation 1[a] by Korten’s system. As such, Petitioner’s reasoning may not be adequately supported by a rational underpinning. Cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). The parties may develop the record concerning this dispute at trial.” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,695,151 - Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.InstitutedPTAB · Mar 26, 2024 · IPR2023-01319 · APJ Brent M Dougal · IPR · Institution
The Board instituted IPR on claims 1–27 based on a reasonable likelihood that claims were obvious over Crossley and Albers.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows 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. See 35 U.S.C. § 314(a).” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Patent Owner requests that we exercise discretion to deny the Petition under 35 U.S.C. § 325(d). Prelim. Resp. 14–25. We decline. Contrary to Patent Owner’s argument, we do not perceive Crossley as “cumulative” of Weaver. Id. at 17–20. Crossley explicitly describes two separate fluid delivery lines as follows: [Fluid distribution] Lines 428 and 428′ are preserved for the delivery of chemicals, such as hydrate inhibition fluids. Chemicals may be delivered from the lines 428, 428′ and then through the manifold 115 for treatment of flow lines, valves, and even the wellbores as appropriate. a disclosure. Thus, Patent Owner does not persuade us that exercising our § 325(d) discretion is appropriate where, on their face, the asserted references do not appear to be cumulative of the references cited during prosecution.” slip op. at 20
- Expert testimonyPetitioner expert creditedDecided for petitioner
“The paragraphs highlighted by Patent Owner include extensive citations in support of the statements made by Dr. Nikolaou. For example, paragraph 95 of Dr. Nikolaou’s declaration includes four citations to three different documents and refers back to a prior paragraph in the declaration. The noted paragraphs all appear to include support in the evidence of record. Further, Patent Owner only provides a general allegation without discussing any particular paragraph or opinion. Thus, it is unclear which opinions Patent Owner considers conclusory. Further, whether the declaration and Petition include similar or even identical statements is not a reason, by itself, to give the declaration little to no weight. As noted by Patent Owner (Prelim. Resp. 47–49), it is only when these statements are conclusory that they should be given little to no weight. See, e.g., TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“conclusory expert testimony is inadequate to support an obviousness determination”). For these reasons, and at this stage, we decline Patent Owner’s invitation to give little to no weight to Dr. Nikolaou’s testimony as a whole.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art (“POSITA”) would have had: at least a bachelor of science in chemical engineering, mechanical engineering, materials science, or metallurgical engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. A person having [more] education but less professional experience, and vice versa, may . . . also qualify as a POSITA. Pet. 3–4 (citing Ex. 1003 ¶ 4). Patent Owner does not dispute this. Prelim. Resp. 2. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’394 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 5
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,841,394 - PTAB · Jan 24, 2024 · IPR2023-01196 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR of claims 8–16 on the § 103 ground, finding a reasonable likelihood that the Key, Chauhan, Sweeney, and McKinney combination renders them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“Petitioner does not submit constructions for any claim terms. “Petitioner construes terms consistent with the understanding a POSA would have had at the time of the invention.” Pet. 9–10. Patent Owner proposes that the limitation “fire hydrant management software” be construed as “[s]oftware that allows the user to input fire hydrant information, schedule maintenance and create reminders for service.” Prelim. Resp. 12–13 (citing Ex. 2001 ¶¶ 51–54; Ex. 1001, 1:63– 66). At this stage, we construe “fire hydrant management software” as management software that processes information about fire hydrant assets. This comports with Petitioner’s implicit construction. See, e.g., Pet. 1 (“there is nothing novel or non-obvious about the claimed methods of using management software and a registry to track asset inspections”) (emphasis added).” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner finds that “Petitioner’s description of the qualifications of a POSA is too general” and it “fails to consider the express scope of the Challenged Claims.” Prelim. Resp. 13. According to Patent Owner, the challenged claims “are limited to a method for ‘using a fire hydrant management software and web-based registry.’” Id. Patent Owner argues, inter alia, that the prosecution history “shows that the claims were allowed after they were limited to a field of technology relating to fire hydrant management software.” Id. (emphasis added). Patent Owner contends that [a] POSA should at minimum have knowledge of and experience in the inspection and maintenance of fire hydrants or at least similar emergency or life safety assets and software available for use in connection therewith in 2007. Id. (citing Ex. 2001 ¶¶ 39–42). We decline at this stage to adopt Patent Owner’s definition for the level of skill for a POSA such that it requires additional knowledge and experience with fire hydrants. The definition is predicated on Patent Owner’s view that “fire hydrant” relates to a functional characteristic of the software. See, e.g., Prelim. Resp 36 (contending, inter alia, that the “fire hydrant management software” is “directed to a particular technology”). For the reasons discussed in the Claim Construction section (§ II.C.), we adopt Petitioner’s implicit construction of “fire hydrant management software” which defines “fire hydrant management software” as management software that processes information about fire hydrant assets. See, e.g., Pet. 1. Given that construction, it would be unnecessary for a POSA to have a level of skill that requires additional knowledge and experience with fire hydrants. We apply Petitioner’s description of the qualifications of a POSA in” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“that a skilled artisan would have had a reason to combine the teachings of the prior art in the manner claimed in the patent and would have had a reasonable expectation of success in doing so. KSR, 550 U.S. at 406 (2007). “To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” Id. at 418. In that regard, Petitioner’s position is that, inter alia, the combination of Key, Chauhan, Sweeney, and McKinney renders obvious the claimed method, including using a “fire hydrant management software” as claimed. See, inter alia, Pet. 21–27 (discussing the combination of Key, Chauhan, Sweeney, McKinney), 53 n. 8 (“it would have been obvious that such software was used for fire hydrant management”) (relying on the discussion at Pet. 21–27). According to Petitioner, “Key, Chauhan, Sweeney and McKinney are complementary references that are all in the field of asset management, monitoring, and compliance (including, e.g., inspection, repairs, scheduling, and notices) implemented as online, web-based systems and methods using conventional computers, software, and databases.” Id. at 21. Petitioner explains, inter alia, that: the prior art demonstrates that (i) there was a well-known need and desirability to monitor and inspect various assets to ensure compliance and proper operation, (ii) the need included to improve the monitoring/inspection process through use of web-based computer systems and databases thereby becoming more efficient and less costly, and (iii) such assets were interchangeable within inspection compliance monitoring and reporting systems (including assets for which inspection compliance was regulated, including life/safety and non-life/safety assets). EX1003 Pet. 25 (citing, inter alia, Ex. 1003 ¶¶ 131–138). At this stage, Petitioner sufficiently shows the claimed process would have been obvious to a POSA based on the combination of Key, Chauhan, Sweeney, McKinney, with a reasonable expectation of success. It is consistent with Petitioner’s implicit construction of “fire hydrant management software;” that is, as software managing information about fire hydrant assets. Patent Owner argues, inter alia, that the claimed method employs a “fire hydrant management software” having a technology the combination of Key, Chauhan, Sweeney, McKinney would not have rendered obvious to a POSA with a reasonable expectation of success. See, e.g., Prelim. Resp. 36 (“Challenged Claims and steps recited therein are directed toward addressing problems relating to software capable of managing assets such as fire hydrants.”), id. (the “fire hydrant management software” . . . [is] directed to a particular technology”), 38 (“the ‘966 Patent and Challenged Claims are directed at a much narrower technical field” [than the “the technical field of asset management, monitoring, and compliance” that Petitioner argues]) (citing Pet. 22). Given that we adopt Petitioner’s implicit construction of “fire hydrant management software” as management software that processes information about fire hydrant assets rather than Patent Owner’s view that “fire hydrant” provides a functional distinction, these arguments do not undermine Petitioner’s position. We have considered all of Patent Owner’s arguments. At this stage, based on the evidence, Petitioner sufficiently shows on this record the combination of Key, Chauhan, Sweeney, and McKinney renders obvious the claimed method, including using a “fire hydrant management software” as claimed, with a reasonable expectation of success.” slip op. at 42
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,126,966 - Google LLC v. Wirelesswerx IP LLCInstitutedPTAB · Dec 11, 2023 · IPR2023-00850 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR of claims 1–30 on all asserted grounds after finding a reasonable likelihood that Google would show at least one claim unpatentable over Wrappe and Belcea.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because Petitioner has demonstrated a reasonable likelihood of success in demonstrating that at least one claim of the ’203 patent as unpatentable under 35 U.S.C. § 103(a) over the combination of Wrappe and Belcea (Ground I), we institute on all challenged claims and all grounds raised in the Petition. See 37 C.F.R. §42.108(a) (2023). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of claims 6–30 under these remaining grounds based on obviousness.” slip op. at 36
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that “[f]or purposes of this Response, Patent Owner adopts Petitioner’s proffered level of ordinary skill in the art because it comports with the technology and claims of the ’203 Patent as well as the asserted prior art.” Prelim. Resp. 6. Accordingly, we adopt Petitioner’s definition of a person of ordinary skill in the art for our analysis in this decision.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“On this preliminary record, we agree with the Petitioner that the claim 1 limitation “preconfigured geographical zone” is not limited to a “preconfigured geographical zone” defined by a user as Patent Owner contends. See Prelim. Resp. 18–20. Based on a plain reading of the claim, claim 1 puts no limit on the scope of the “preconfigured geographical zone.” Nor do we read the specification as providing a definition of “preconfigured geographical zone” so that when the claim is read in light of the specification its scope is limited to a “preconfigured geographical zone” defined by a user. As Petitioner points out, “the term ‘preconfigured geographical zone’ (or ‘pre-configured geographical zone’) appears in the specification six times, [and in] none of those uses describes the meaning of the term.” Prelim. Reply 2 (citing Ex. 1001, 1:27, 1:62, 3:23, 7:34, 31:56, 37:37). Based on this record, we also agree with Petitioner (Prelim. Reply 2) that claim 30 calls for “applying the plurality of transponders in the network with each other to define the zone,” which means that the recited transponders—not a user—define the zone. Ex. 1001, 44:62–63 (emphasis added); see also, e.g., 5:35–39 (“In another aspect, the transponder or subscriber device can determine whether the transponder or subscriber device is inside or outside the geographical zone in two or three dimensions by obtaining global positioning coordinates, and calculating . . . .)” For the foregoing reasons, at this stage of the proceeding, we construe “preconfigured geographical zone” in claims 1 and 30 broadly and not limited to a “preconfigured geographical zone” defined by a user.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“According to Mr. Andrews, based on these teachings, “a POSITA would have understood that Belcea teaches to first identify the nodes on a specific floor, disregard nodes on other floors, and then perform location determinations using only the nodes on the specific floor desired.” Ex. 1002 ¶ 171; Pet. 38. “Different stores on different floors are less relevant to the user, because even though they may be nearby in the vertical sense (e.g., directly underneath the user on a different floor), if the user is not in the store, then they are less likely to be interested in messages from that store.” Ex. 1002 ¶ 172; Pet. 38. Petitioner contends that a “POSITA would have been motivated to implement these teachings with Wrappe to ensure the user device is connected to the beacon of a store the user is actually in, for example a store on the same floor as the user as opposed to a different store on a different floor.” Pet. 38 (citing Ex. 1002 ¶ 172). “The [combined] system identifies a beacon ‘nearby’ on the same floor because other stores on the floor above or below are not immediately relevant to the user.” Id.” slip op. at 33
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,315,203 - Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.InstitutedPTAB · Nov 1, 2023 · PGR2023-00023 · APJ Brent M Dougal · PGR · Institution
Instituted PGR of claims 1–20 because at least one challenged claim was more likely than not unpatentable under the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability under the more likely than not standard. 35 U.S.C. § 324(a); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A claim is unpatentable “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). We resolve the question of obviousness based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the prior art and the claims; (3) the level of skill in the art; and (4) when in evidence,” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art (POSA): would have had a B.S. in Chemical Engineering, Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. Further, a person with additional education but less professional experience, and vice-versa, may qualify. Pet. 23–24 (citing Ex. 1003 ¶ 4). Patent Owner adopts Petitioner’s definition. Prelim. Resp. 15. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’058 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.200(b) (2022). claim terms. Pet. 25; Prelim. Resp 15–16. We determine that no terms need to be construed at this time. 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner also relies on Pankaj Figure 11 to disclose the preamble and the final limitation, with the exception of the fracturing pump/fracturing equipment being electrical. See Pet. 38–40 (discussing e.g., Pankaj’s control method in Figure 11, teachings of computer implementation), 49–51 (discussing e.g., Pankaj’s controlling of production operations, including a fracturing pump). As previously noted, Petitioner relies on Payne for teaching that the fracturing pump can be electrical. Id. at 31, 49–51. Petitioner also provides reasons why one of skill in the art would combine Payne’s electrical fracturing pump with Pankaj’s fracturing system. Id. at 31–38, 51. Patent Owner does not contest that the combination of Pankaj and Payne teaches the above noted limitations. See generally, Prelim. Resp. 50– 57.” slip op. at 9
Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Enfish · KSRPatents in suitUS 11,373,058 - PTAB · Oct 11, 2023 · IPR2023-00621 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that Samsung would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In evaluating the factors, we take a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review. Id. at 6. The Director has issued additional guidance on the application of in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Fintiv Memo”). Additionally, we are guided by the precedential decisions of the Director in OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102, 49–50 (Oct. 4, 2022) (precedential), and CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 (Feb. 27, 2023) (precedential) (“CommScope”). We are instructed to consider compelling merits under Fintiv factor six only after a determination that the first five Fintiv factors favor discretionary denial. CommScope, 4–5. Thus, we begin by considering the first five Fintiv factors.2” slip op. at 7
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner states: In the Lenovo ’083 IPR, the Board found that a person of ordinary skill in the art “would have a bachelor’s degree in electrical or computer Engineering, Computer Science, or a related field and have three or more years of corresponding industry work experience.” Prelim. Resp. 12–13 (citing Ex. 1012,4 8). Patent Owner agrees with this standard and argues that it is the same as the standard Petitioner proposes. Id. at 13. We agree that there appear to be no significant differences. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same preliminary determinations under Petitioner’s formulation of the level of skill.” slip op. at 17
- BurdenDecided for petitioner
“It is undisputed that the Petition states that “[a]ll claim terms should be construed according to the Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37 C.F.R. §42.100.” Pet. 2. Standing alone, there is no dispute that the Petition uses the correct claim construction standard in the analysis. It only becomes a question because Petitioner’s declarant (Dr. Schmidt) employs the phrase “broadest reasonable construction in light of the specification of the patent in which it appears” in describing his “understand[ing]” of the claim construction standard. Ex. 1003 ¶ 26. If Dr. Schmidt’s “understand[ing]” of the claim construction standard was that BRI should be used, then it was incorrect. The claim construction standard for claims of challenged unexpired patents in this forum was changed from BRI to the Phillips standard in 2018, long before Dr. Schmidt signed the Declaration (Feb. 22, 2023). See “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board,” 83 Fed. Reg. 51340, 51340–51359, 51343 (October 11, 2018) (“This change replaces the BRI standard for construing unexpired patent claims and proposed substitute claims in IPR, PGR, and CBM proceedings with the federal court claim construction standard, which is articulated in Phillips and its progeny.”); 37 C.F.R. § 42.100(b). But the Petition articulates, unequivocally, the correct claim construction standard and goes into some detail in explaining what the Phillips standard entails. Pet. 2–5 (citing Ex. 1003 ¶¶ 28–29). Although” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,020,083 - PTAB · Oct 11, 2023 · IPR2023-00756 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR on claims 1–21 on all petitioned grounds, finding a reasonable likelihood that Samsung would prove at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner, we are persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. For the reasons stated below, we institute inter partes review as to challenged claims 1–21 of the ’545 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the first five Fintiv factors. Because our analysis is fact-driven, no single factor is determinative of our conclusion. Considering these five Fintiv factors together, we determine that they do not favor a discretionary denial. As we do not find that the first five Fintiv factors favor discretionary denial, we therefore do not make a determination regarding compelling merits under Fintiv factor 6, and our consideration ends with this conclusion. CommScope, 4–5.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“considered” is an IDS statement. Ex. 2003; cited at Prelim Resp. 23. The IDS statement contains two sets of documents. Ex. 2003, 1–12 (first set); 15–22 (second set). The first set lists over 250 references, one of which includes Brown. Id. at 6, reference 4E. The Examiner signed the bottom of the page citing Brown on Sept. 24, 2015. Where the Examiner signed the page, it states that the Examiner “CONSIDERED” on that date (i.e., on Sept. 24, 2015). What precisely the Examiner “considered” on that date is unclear because none of the citations, including to Brown, have been initialed. This evidence which amounts to a single uninitialed citation to Brown among hundreds of other citations does not provide a sufficient basis for the Board to exercise its discretion to deny institution under § 325(d).” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Lenovo ’545 IPR [i.e., IPR2019-00988 (see footnote 2)], the Board found that a person of ordinary skill in the art “would have a bachelor’s degree in electrical or computer Engineering, Computer Science, or a related field and have three or more years of corresponding industry work experience.” Ex. 2001 at 9. [Patent Owner] agrees that this is the correct standard for a POSITA and [Petitioner] has also adopted this definition. Therefore, there is no dispute about the skill level of a POSITA. Prelim. Resp. 12. Patent Owner does not propose a definition for the level of skill in the art possessed by a POSA that is significantly different from that proposed by the Petitioner. Also, as Patent Owner indicates, Petitioner’s proposal is consistent with the one adopted in IPR2019-00988. See Ex. 2001, 9. We adopt Petitioner’s asserted level of ordinary skill in the art. E. Claim Construction” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,369,545 - PTAB · Sep 26, 2023 · IPR2023-00529 · APJ Neil T Powell · IPR · Institution
The Board instituted review of claims 1–8, 11–16, and 21 on all petitioned grounds, finding a reasonable likelihood that claim 11 would have been obvious over Waylett and Mauer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion does not shift to Patent Owner, except in limited circumstances not present here. 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). We have reviewed all of the parties’ arguments and evidence regarding Petitioner’s Ground 1 and Ground 2. Based on our review, we determine that, in Ground 2, Petitioner demonstrates a reasonable likelihood of establishing that independent claim 11 would have been obvious over Waylett and Mauer. slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner defines the person of ordinary skill in the art as follows: As of February 2006, a person of ordinary skill in the art (“POSITA”) would have been a person with a degree in computer science, electrical or computer engineering, physics, or a similar discipline . . . [and] would also have at least two years of relevant experience including, for example, work related to telecommunications networks. Pet. 3 (citing Ex. 1003 ¶ 54). 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims of the ’414 patent have an effective filing date before the effective date of the applicable AIA amendments, we refer to the pre-AIA version of 35 U.S.C. § 103 throughout this Decision. 2 Mauer et al., U.S. Patent No. 7,395,085 B1, issued July 1, 2008 (Ex. 1005, “Mauer”). 3 Waylett et al., U.S. Patent No. 8,184,603 B2, issued May 22, 2012 (Ex. 1006, “Waylett”). Patent Owner states that it “applies Petitioners’ definition of a person of ordinary skill in the art (‘POSITA’)” “[f]or the purpose of this preliminary response only.” Prelim. Resp. 18. Petitioner’s undisputed definition of a person of ordinary skill in the art appears reasonable and is consistent with the prior art. Based on the complete record now before us, we adopt Petitioner’s undisputed proposal 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 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner
“As Patent Owner acknowledges, a petitioner must offer an express claim construction only if that petitioner “believes that a claim term requires an express construction.” Id. at 19; Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”) at 44; Prelim. Resp. 19. Alternatively, a petitioner can take the position that no express claim construction is needed. CTPG at 44. Here, Petitioner’s statement about claim construction conveys that it does not believe any claim term requires express construction. See Pet. 7. Accordingly, we do not find persuasive Patent Owner’s argument that we should deny institution because Petitioner did not submit an express construction for any term.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededDecided for petitioner
“At this time, we decline to adopt a construction of the claim term “DMA network” that would require peer-to-peer connections. We start with the claim language, which appears to conflict with Patent Owner’s suggestion that “DMA network” requires peer-to-peer connections. Each of independent claims 1, 8, and 11 recites “DMA network” without any mention of “peer-to-peer connection.” Ex. 1001, 18:8–34, 18:66–19:32, 20:8–9. Certain dependent claims expressly narrow the claimed invention by requiring “peer-to-peer connection,” strongly evincing that the claim language “DMA network” does not require peer-to-peer connection. Id. at 18:42–46, 19:41–49. Moreover, the present record does not sufficiently support the view that a POSITA would have otherwise understood the claim term “DMA network” as requiring peer-to-peer connection.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,653,414 - PTAB · Sep 25, 2023 · IPR2023-00531 · APJ Hubert C Lorin · IPR · Institution
The Board instituted inter partes review of claims 1, 3–9, and 20 because Petitioner showed a reasonable likelihood that Flore anticipates them.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of claims 1, 3–9, and 20 of the ’988 patent. Accordingly, we grant the Petition and institute an inter partes review of the ’988 patent. IV. ORDER It is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1, 3–9, and 20 of the ’988 patent is instituted with respect to the ground set forth in the Petition; and” slip op. at 33
- BurdenDecided for petitioner
“We have reviewed the evidence and find that, at this stage, Petitioner sufficiently shows on this record that Flore teaches “routing the communication from the first DMA gateway [Inter-AS Anchor 152] to the target device [UE 110] by relaying the communication from the first DMA gateway [Inter-AS Anchor 152] to the second DMA gateway [SGSN 142] via the DMA gateway communications network [via a Gn interface].” Given that we find, at this stage, that Petitioner sufficiently shows that Flore teaches every limitation in the claim, on this record, Petitioner has demonstrated a reasonable likelihood of prevailing in demonstrating that claim 1 of the ’988 patent is anticipated by Flore.” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this time, we decline to adopt a construction of the claim term “DMA server” that would limit its scope to include a P2P connection with other DMA servers. The claims do not include a limitation calling for the “DMA server” to be connected to other DMA servers via a P2P connection. There is a single mention of “a DMA server” in the claim and its scope is not limited so as to be connected to other DMA servers via a P2P connection. See, e.g., Ex. 1001, claim 1[b]: “a DMA server.” Nor does the present record sufficiently support the view that a POSITA would have understood the claim term “DMA server” to be necessarily limited to one that it is connected to other DMA servers via a P2P connection.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“II. ANALYSIS A. Principles of Law To “demonstrate anticipation, the proponent must show ‘that the four corners of a single, prior art document describe every element of the claimed 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 102. Because the challenged claims of the ’988 patent have an effective filing date before the effective date of the applicable AIA amendments, we refer to the pre-AIA version of 35 U.S.C. § 102 throughout this Decision. invention.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Xerox Corp. v. 3Com Corp., 458 F.3d 1310, 1322 (Fed. Cir. 2006)). The prior-art document “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Id. (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Hence, a patent challenger cannot rely on portions from different, unrelated embodiments in a prior-art document to demonstrate anticipation. See id. at 1369, 1371. The “disclosure of a limited number of combination possibilities” may anticipate a claim. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1274 (Fed. Cir. 2017). Hence, a reference may anticipate “if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016). The “dispositive question regarding anticipation [is] whether one skilled in the art would reasonably understand or infer from the [reference’s] teaching” that it discloses every claim element arranged as in the claim. In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991); see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003).” slip op. at 7
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 7,855,988
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.