- Mobileye Global, Inc. v. Facet Technology Corp.Rehearing deniedPTAB · Apr 22, 2025 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place on claim 15 based on the Gallagher–Lumia obviousness challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“or overlooked any matter. As we explained in the Institution Decision, the ’255 patent discloses that the recited characterization profile allows the system to convert the intensity values measured by the intensity sensor into luminance values based on the sensor’s ability to sense the particular color of the measured light. Inst. Dec. 21; Ex. 1001, 11:41–48. The ’255 patent states that “the light intensity sensor’s 280 ability to sense . . . a particular color” is the “the light intensity sensor’s 280 profile for [that] particular color.” Ex. 1001, 11:45–47. The ’255 patent further states that this “[l]ight intensity sensor 280 characterization is essential for high precision computations.” Id. at 11:48–49. Thus, as we stated in the Institution Decision, the recited “characterization profile” refers to a conversion factor used to convert the measured light intensity into luminance. As this conversion factor is based on the light intensity sensor’s ability to sense the particular color of light reflected by the road sign, we agree that it is empirical information. Patent Owner fails to explain adequately how the fact that the ’255 patent discloses storing multiple conversion factors for multiple colors of measured light in a digital look-up-table (see id. at 11:56–59 (“The light intensity sensor characterization 275 is empirical information about the light intensity sensor 280 that is used to create the [look-up table] 475.”)) has any bearing on our interpretation.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Owner to the Institution Decision where we fully addressed Patent Owner’s contentions. See Inst. Dec. 29–31. As we explained, “Petitioner proposes to incorporate Lumia’s teaching of measuring luminance values into Gallagher’s system, and argues that an ordinarily skilled artisan would have had a reasonable expectation of success given Gallagher’s disclosure of determining calibration factors for each individual sensor in the array of sensors.” Id. at 30. In other words, Petitioner proposes to use Gallagher’s array of sensors to measure luminance in the manner taught by Lumia. We also explained in the Institution Decision how Lumia discloses using a video camera to measure the luminance of a road sign. Id. at 27–29. We further explained that, in the Petition, “Petitioner sets forth reasoning with rational underpinning to support its contentions that it would have been obvious to combine the teachings of Gallagher and Lumia” by, for example, “argu[ing] that implementing Lumia’s teaching of determining the luminance of traffic signs in Gallagher’s system would allow Gallagher’s system to calculate the retroreflectivity of road markers as a means of identifying any markers that do not meet minimum acceptable reflectance levels.” Id. at 30–30 (citing Pet. 46). We further explained that Petitioner’s arguments were supported by the testimony of it witness, Dr. Thorpe. Id. at 31 (citing Ex. 1003 ¶ 116).” slip op. at 7
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,335,255 - PTAB · Mar 5, 2025 · IPR2024-01111 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that claims 1 and 9 would be obvious over Gallagher and Schofield.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Texas litigation, but significant work still remains to be done. See Ex. 2004. Moreover, we agree that Petitioner filed the Petition expeditiously. See 2nd Prelim. Reply 4. Accordingly, the facts underlying this factor weigh strongly against exercising our discretion to deny institution.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“h. Conclusion Accordingly, at this stage of the proceeding, we determine that Petitioner has established a reasonable likelihood of prevailing on its assertion that claim 9 would have been obvious in view of the combination of Gallaher and Schofield.” slip op. at 32
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party proposes a definition for any claim term. See Pet. 6; Prelim. Resp. 4–5. For purposes of this Decision, and based on the record before us, we determine that no construction of any term is necessary. We note that this determination does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all of their claim construction arguments and evidence during the trial as permitted by our rules. slip op. at 19
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner has not advanced persuasive evidence to put into dispute Petitioner’s identification of itself as the sole real party in interest. Patent Owner asserts that the two third parties it seeks to add as defendants in the Texas Litigation produce products that incorporate components manufactured by Petitioner and that Patent Owner has asserted that these Petitioner products infringe the ’328 patent in the Texas Litigation. Prelim. Sur-reply 4–5. Patent Owner also asserts that these two third parties asserted an obligation to defend Petitioner and the other third party against Patent Owner’s infringement assertions. Id. at 5. However, Patent Owner does not assert or provide any evidence that Petitioner must indemnify any of the three third parties or that any of the third parties controls any aspect of this inter partes review proceeding. See id. Moreover, Petitioner stipulates that, if we institute inter partes review in this proceeding, it will not pursue in the Texas Litigation “‘any ground that [Petitioner] raised or reasonably could have raised’ during this proceeding.” Prelim. Reply 4 (alteration in original) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential in relevant part)). Furthermore, to the extent that the two parties Patent Owner seeks to add as defendants in the Texas Litigation should be named as real parties in interest in this proceeding, those parties have also filed a stipulation here (see Ex. 1024), alleviating any concerns of conflict with district court litigation.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,671,328 - PTAB · Mar 5, 2025 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claim 15 based on Gallagher and Lumia, finding a reasonable likelihood that the combination renders the claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“7. Holistic Assessment of the Fintiv Factors On this record, after weighing all of the factors and taking a holistic view, we determine that the facts in this case that weigh against exercising discretion outweigh the facts that favor exercising discretion. Accordingly, we determine that the circumstances presented weigh against exercising our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review based on the Texas litigation.” slip op. at 16
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“dispute Petitioner’s identification of itself as the sole real party in interest. Patent Owner asserts that the two third parties it seeks to add as defendants in the Texas Litigation produce products that incorporate components manufactured by Petitioner and that Patent Owner has asserted that these Petitioner products infringe the ’255 patent in the Texas Litigation. Prelim. Sur-reply 4. Patent Owner also asserts that these two third parties asserted an obligation to defend Petitioner and the other third party against Patent Owner’s infringement assertions. Id. However, Patent Owner does not assert or provide any evidence that Petitioner must indemnify any of the three third parties or that any of the third parties controls any aspect of this inter partes review proceeding. See id. Moreover, Petitioner stipulates that, if we institute inter partes review in this proceeding, it will not pursue in the Texas Litigation “‘any ground that [Petitioner] raised or reasonably could have raised’ during this proceeding.” Prelim. Reply 4 (alteration in original) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential in relevant part)). Furthermore, to the extent that the two parties Patent Owner seeks to add as defendants in the Texas Litigation should be named as real parties in interest in this proceeding, those parties have also filed a stipulation here (see Ex. 1024), alleviating any concerns of conflict with district court litigation.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Accordingly, at this stage of the proceeding, we determine that Petitioner has established a reasonable likelihood of prevailing on its assertion that claim 15 would have been obvious in view of the combination of Gallagher and Lumia.” slip op. at 31
- Adverse judgmentAdverse judgmentOther
“Here, Patent Owner filed a statutory disclaimer of claims 12–14 and 17–23. Prelim. Resp. 1; Ex. 2002. Based on our review of Exhibit 2002, we determine that a disclaimer of claims 12–14 and 17–23 of the ’255 patent under 35 U.S.C. § 253(a) has been filed with the Office as of December 9, 2024. Based on the information in the public record, we find that the disclaimer complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Because claims 12–14 and 17–23 have been disclaimed under 35 U.S.C. § 253(a), in compliance with 37 C.F.R. § 1.321(a), we do not reach challenges to claims 12–14 and 17–23. As a result, the remaining challenged claim is claim 15 (“the challenged claim”).” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,335,255 - PTAB · Feb 20, 2025 · IPR2024-00996 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 13–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that: [A] person of ordinary skill in the art at the time of the alleged invention (“POSITA”) would have had a bachelor’s degree or higher in electrical engineering, at least 3 years of experience designing or researching electronic circuits, and familiarity with power electronics and inductive power transfer circuits. Pet. 8 (citing Ex. 1003 ¶ 20). Patent Owner states that, “[f]or purposes of this preliminary response, Patent Owner adopts the Petitioner’s proposal.” Prelim. Resp. 17. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[a]ll claim terms should be construed according to the Phillips standard,” and “[h]ere, given the remarkable overlap between the preferred embodiment of the ’461 patent and the prior art/predictable combinations articulated in Grounds 1A–3, Petitioners submit that no claim elements need a formal construction for purposes of resolving the controversy in this proceeding.” Pet. 8. Patent Owner states that, “[t]o simplify the issues before the Board, Patent Owner has not asserted any claim constructions in this preliminary response and adopts the Petitioner’s position that ‘[a]ll claim terms should be construed according to the Phillips standard.’” Prelim. Resp. 17 (quoting Pet. 8). On this record and for purposes of this decision, we determine that no” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At this preliminary stage of the proceeding, we do not agree with Patent Owner’s arguments. Patent Owner does not cite to evidence, such as expert testimony, to support its implied argument that Olson’s measured current is “fundamentally different” from the current received by the primary coil. See Prelim. Resp. 31–32. Petitioner’s declarant, Dr. Woods, on the other hand, testifies, inter alia, that “[t]he ‘[c]urrent measured by current measure block 226 is used in the calculation of power, which as depicted in FIG. 14, measures the ‘power in’ provided to transmit block 214/primary coil 54.” Ex. 1003 ¶ 37 (citing Ex. 1004 ¶¶ 74–75, Fig. 14) (first alteration added); see also, e.g., id. ¶ 42 (Dr. Woods testifying that the measured current to the power supply “is the current driving the external antenna 52, via the transmit block 214 and to the primary coil 54.” (citing Ex. 1004 ¶¶ 74–75, 112, Fig. 14)). Paragraph 75 of Olson, cited in support of that testimony, provides: “The power in is gauged by the power generated by charging unit 50 and is determined by multiplying the voltage of the internal voltage of charging unit 50, e.g., the voltage of a battery or batteries internal to charging unit 50, by the current driving external antenna 52.” Ex. 1004 ¶ 75 (emphasis added). We note that external antenna 52 includes primary coil 54. See, e.g., Fig. 14. Dr. Woods’ testimony is, at this stage, unrebutted. Patent Owner also argues that “Petitioner fails to provide any evidence regarding the function of Olson’s microprocessor 212 in relation to measuring input power,” and that, “[w]hile Olson describes a power calculation in paragraph [0075], Olson does not describe this power calculation as performed by microprocessor 212.” Prelim. Resp. 32 (citing Pet. 16; Ex. 1004 ¶ 72) (first alteration added). At this preliminary stage of the proceeding, we do not agree with Patent Owner’s arguments regarding the microprocessor. Although Patent Owner does not bear the burden to show patentability, we observe that Patent Owner does not suggest that there is another component in Olson’s external charging device that might perform the admittedly-disclosed power calculation. See Prelim. Resp. 32–33. Dr. Woods testifies that microprocessor 212 receives the measured current and the input voltage of the charging device, and, from those values, calculates power in. See Ex. 1003 ¶¶ 43–44 (citing, inter alia, Ex. 1004 ¶¶ 71–78, Fig. 14); see also Ex. 1004 ¶ 74, Fig. 14 (Olson stating that “[c]urrent measured by current measure block 226 is used in the calculation of power in along with the voltage of batteries 160,” and Figure 14 depicting the signal from measure block 226 as an input to microprocessor 212). Dr. Woods’ testimony is, at this stage, unrebutted.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,626,461 - PTAB · Feb 20, 2025 · IPR2024-00995 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–6, 8, and 10–13 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’204 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’204 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“different from the resonant frequency of the inductive couple.” Ex. 1001, 21:16–20. The Specification then states the following: “Preferably the transmission frequency is selected to lie within one of the near-linear regions 6, 8 [of Figure 6b] where the slope of the frequency-amplitude graph is less steep.” Id. at 21:20–23; see also id. at 21:56–59 (“Referring back to FIG. 6b, the frequency of transmission is selected to be in the approximately linear region 8 of the curve between a lower frequency value of fL and an upper frequency value of fU.”9); Pet. 8 (citing the same).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,083,204 - Tommy John, Inc. v. Pakage Apparel, Inc.InstitutedPTAB · Jan 8, 2025 · IPR2024-01163 · APJ Robert J Silverman · IPR · Institution
The Board instituted IPR of claims 1–13, 15, and 16 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition and the Preliminary Response (including any authorized submissions) “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.”” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“demonstrate any motivation to combine Kitsch and Brocks, other than they are both underwear” (Prelim. Resp. 23), we note that Petitioner articulates various reasons for combining the teachings of Kitsch with Brocks’ technique for shirring and gathering fabric with an elastic material, supported by Ms. Wagner’s testimony. See Pet. 25–27 (citing, inter alia, Ex. 1005, ¶¶ 68–72). Patent Owner does not address any of Petitioner’s stated reasons for combining Kitsch and Brocks. Moreover, whether a person of ordinary skill in the art would have had a reason to combine/modify the identified references’ teachings is “a question of fact.” WBIP, 829 F.3d at 1327. Petitioner’s argument is supported by the unrebutted testimony of Ms. Wagner, whereas Patent Owner’s contrary position amounts to attorney argument, which does not persuade us, in this instance, that there is not at least a reasonable likelihood that Petitioner would prevail at trial, based on the record before us. At this stage of the proceeding, Patent Owner provides no sufficient evidence to rebut Ms. Wagner’s testimony as to what a POSITA would have understood, based upon Kitsch and Brocks, and as to the alleged motivations to combine Kitsch and Brocks, as provided in Ground 1.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/ default/files/documents/interim_proc_discretionary_denials_aia_parallel_dis trict_court_litigation_memo_20220621_.pdf (“Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”)). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. In this proceeding, Petitioner “stipulates that if the Board institutes, it will not pursue in the related district court case ‘any ground that [Petitioner] raised or reasonably could have raised’ during this proceeding.” Prelim. Reply. 5 (quoting Sotera 18–19). In view of Petitioner’s stipulation, which quotes Sotera and accords with the Interim Procedure, we decline to deny institution under Fintiv.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,834,974 - PTAB · Dec 10, 2024 · IPR2024-00994 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–7 and 9–14 on all asserted grounds, finding a reasonable likelihood of success on the Onishi-based obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially 4 For purposes of this Decision, we assume the challenged claims have an effective filing date prior to March 16, 2013, the effective date of the relevant aspects of the Leahy-Smith America Invents Act, Pub. L. No. 112- 29, 125 Stat. 284 (2011) (“AIA”), and we apply the pre-AIA version of 35 U.S.C. § 103. the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’696 patent. Further, we decline to discretionarily deny inter partes review. Accordingly, we institute an inter partes review as to all the challenged claims of the ’696 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. However, Patent Owner’s declarant, Dr. Mercier, opines that [A]t the time of the ’696 Patent, a POSITA would have a working knowledge of wireless charging and inductive charging. The person would have gained this knowledge through an undergraduate Bachelor of Science degree in electrical engineering, computer engineering, computer science, or a related field, with at least two years of experience working in the field of wireless or inductive charging device design, or testing of such wireless or inductive charging device testing, or 5 The parties have not directed our attention to any objective evidence of obviousness or non-obviousness. an equivalent combination of academic study and work experience. More education (e.g., a Master’s degree) or work experience any relevant field may compensate for a deficit in one of the relevant qualifications stated above. Ex. 2001 ¶ 26. We observe that, in Dr. Mercier’s definition, the undergraduate degree categories are a bit broader and the experience possibly a bit more specific than in Petitioner’s definition. However, at this stage and absent argument to the contrary by the parties, we discern no material difference between the parties’ definitions. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Dr. Mercier’s assessment, the outcome of this Decision would be the same.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“near-linear region—consistent with the quoted applicant’s use of the term “near-linear”—rather than a linear or non-linear region, which seemingly would encompass the entire curve. As to the second part, we understand Patent Owner to be referring to the purported benefit of linear control, and we determine that Patent Owner has not explained adequately why such a benefit should be read into the claim term “substantially different,” particularly where the quoted Specification support does not explicitly mention linear regulation.7 See Ex. 1001, 21:61–63 (“The induced voltage 7 To the extent that Patent Owner relies on its declarant’s testimony as an explanation of Patent Owner’s claim construction position, we remind Patent Owner about the prohibition on incorporation by reference. See 37 C.F.R. § 42.6(a)(3); Consolidated Trial Practice Guide, November 2019, 35–36 can be increased by reducing the transmission frequency and can be reduced by increasing the transmission frequency.”). On this record and for purposes of this decision, we determine that— consistent with the Specification’s description of the frequency that is “[p]referably . . . selected” and applicant’s argument regarding the same during prosecution—“a transmission frequency substantially different from said characteristic resonant frequency of said inductive couple” encompasses frequencies that lie within one of the near-linear regions of a frequency-amplitude graph associated with the inductive couple. See Ex. 1001, 21:20– 24; Ex. 1002, 70. At this time and for purposes of this Decision, we need not and do not reach the issue of the outer bounds of the scope of “substantially different.” We also note that independent claim 1 is an apparatus claim and the subject limitation 1.7 further defines the “driving circuit” recited in limitations 1.5 and 1.6. Specifically, limitation 1.7 requires a driving circuit that is “configured and operable to produce said oscillating driving voltage at a transmission frequency” that is “substantially different” from the inductive couple’s resonant frequency. Ex. 1001, 28:43–46. In future briefing, the parties’ arguments regarding the prior art references should focus on that recited structure, i.e., a circuit that is configured and operable to produce the recited frequency.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,048,696 - PTAB · Nov 22, 2024 · PGR2024-00034 · APJ Patrick R Scanlon · PGR · Institution
Instituted PGR on claims 1–19 and all asserted grounds after finding at least one claim more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review. See 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (2022). To institute a post-grant review, we must determine that “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons set forth below, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of at least one challenged claim. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We note that the identification of a Ph.D. as an example of “more formal education” creates a vast range of education relative to a bachelor’s degree. Thus, we treat the identification of a Ph.D. just as it is—an example—and not a requirement. In this case, “more formal education” can be satisfied by a level of education less than a Ph.D (but greater than a bachelor’s degree). Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, definition, limited as discussed above, for the purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“would have understood Unger’s disclosure to “suggest the use of a torsion spring to facilitate attachment and detachment, because torsion springs are designed to impart this functionality.” Id. (citing Ex. 1002 ¶ 118). Petitioner also asserts that one of ordinary skill in the art would have “understood that there were a limited number of ways to impart the referenced resilient or flexible ‘manipulation,’” and “would have been motivated to look to various known solutions to impart the suggested functionality, including the torsional spring mechanism of Smith that is used in a similar hearing protection device application for a similar purpose as Unger’s mounting arms (to apply a clamping force).” Id. at 32 (citing Ex. 1002 ¶¶ 120–121).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,736,855 - PTAB · Nov 14, 2024 · IPR2024-00835 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR of claims 1–8 on all asserted grounds, finding a reasonable likelihood that claim 1 would be unpatentable over CIII and Rio.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Advanced Bionics stated that: If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Factor (c) focuses on the record developed by the Office in previously reviewing the art or arguments. It informs, therefore, the petitioner’s showing under factors (e) and (f), which focus on the petitioner’s evidence of previous Office error regardless of the context in which the same or substantially the same art or arguments were previously presented. For example, if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under factors (e) and (f). On the other hand, if the alleged error is a disagreement with a specific finding of record by the Office, then ordinarily the petitioner’s required showing of material error must overcome persuasively that specific finding of record. That is, although Becton, Dickinson factor (c) evaluates “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection,” the focus should be on the record when determining whether the Office erred in evaluating such art or arguments.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Petitioner Shows a Reasonable Likelihood of Prevailing Based on the preliminary record, Petitioner shows a reasonable likelihood of prevailing in its challenge that CIII and Rio teach, suggest, or would have been understood to disclose the limitations of claim 1 and that one of ordinary skill in the art would have combined the references in the manner asserted with a reasonable expectation of success.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“track” that “is configured to rotate . . . relative to the jacking column,” Petitioner proposes modifying CIII in view of Rio “by positioning Rio’s rotary actuator 44 between the jacking column and crawler track, and using that rotary actuator to rotate CIII’s crawler track relative to the entire jacking column, rather than just its outer cylinder.” Pet. 45 (citing Ex. 1002 ¶ 89) (emphasis added); see also id. at 47 (citing Ex. 1002 ¶ 92; Ex. 1006, 5:8–11, 6:2–6). Petitioner argues such a modification would have been a design choice, one of a finite number of alternatives, obvious to try, and a known design that provides maneuverability. Id. at 29–31 (citing Ex. 1002 ¶¶ 61–67; Ex. 1006, 5:8–11; Ex. 1007, 5:14–59, Figs. 4–5; Ex. 1008, 7:35– 53, Figs. 7, 20; Ex. 1009 ¶¶ 5, 19–20, Fig. 2; Ex. 1011, 4:7–16, Fig. 3; Ex. 1013 ¶¶ 41, 44–45). At this stage, Petitioner’s arguments and cited evidence sufficiently support for institution that the modification would have been made so that the proposed combination would have had “a crawler track” that “is configured to rotate . . . relative to the jacking column.” Regarding claim 1’s “slew drive,” as discussed above, Petitioner proposes modifying CIII so that rotary actuator 44, the asserted slew drive, would be between the jacking column and crawler track. See Pet. 29–31. Petitioner also argues that, in the proposed combination, “actuating the rotary actuator causes the crawler track to rotate relative to the entire jacking column.” Id. at 47 (citing Ex. 1002 ¶ 92). The present record supports Petitioner’s argument that Rio’s worm gear actuator would have been understood to disclose a slew drive with support from the ’318 patent itself, the opinion of its declarant, and deposition testimony of Patent Owner’s expert in related litigation. Id. at 46–47 (citing Ex. 1001, 11:40–61; Ex. 1002 ¶ 91; Ex. 1006, 4:61–5:3; Ex. 1032, 84:12–86:17). At this stage, the cited evidence sufficiently supports for purposes of institution Petitioner’s argument that the proposed combination would have included the recited “slew drive.”” slip op. at 28
- Skill levelSkill level petitioner adoptedOther
“had at least a four-year degree in mechanical engineering or a closely related field and at least two years of experience designing, developing, or operating heavy machinery, including their components and control systems.” Pet. 8– 9 (citing Ex. 1002 ¶¶ 22–24). Petitioner also argues that “[a]dditional experience could substitute for a formal degree, and an advanced degree could substitute for experience.” Id. at 9 (citing Ex. 1002 ¶¶ 22–25). Petitioner states that “[t]he Board adopted this definition of the level of ordinary skill for the related ’749 patent.” Id. (citing Godberson-Smith Const. Co. v. Guntert & Zimmerman Const. Div., Inc., IPR2020-01698, Paper 80, 21–24 (PTAB Apr. 12, 2022) (Final Written Decision)). For purposes of its Preliminary Response, Patent Owner applies Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 13 (quoting Pet. 8–9). Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. Pet. 8–9; Godberson-Smith, Paper 80 at 21–24 (determining level of ordinary skill after considering the parties’ competing proposals and evidence).” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,535,318 - PTAB · Oct 10, 2024 · IPR2024-00734 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1, 3, 15, 17, and 19–21, finding a reasonable likelihood of success on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1, 3, 15, 17, and 19–21 in the ’518 patent on all challenges included in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have been someone”: (1) “knowledgeable with the computer networking techniques available at the time”; and (2) “who had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of experience working with computer networks, including network security.” Pet. 7. Petitioner also asserts that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. Dr. Crovella’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 15–16. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’518 patent as well as the asserted references. See Ex. 1003 ¶ 16.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the current record, Petitioner establishes sufficiently for purposes of institution that an ordinarily skilled artisan would have had reasons, i.e., as articulated by Dr. Crovella, to combine the teachings of Gai, Yip, and Kwan in the way Petitioner proposes. See Pet. 14–21, 27, 29–31, 38; Ex. 1003 ¶¶ 51–58, 62–72, 91–92, 98, 101, 121. Based on the current record, Petitioner also establishes sufficiently that an ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings of the references. See Pet. 16–17, 22, 38; Ex. 1003 ¶¶ 59–60, 73–74, 121. (f) Preliminary Conclusion About Alleged Obviousness As discussed above, Petitioner’s analysis addresses how the combined disclosures in Gai, Yip, and Kwan teach claim 1’s subject matter. See supra §§ III.D.4(a)–(d). Additionally, Petitioner provides reasons with rational underpinnings as to why an ordinarily skilled artisan would have been motivated to combine the teachings of Gai, Yip, and Kwan in the way Petitioner proposes and would have had a reasonable expectation of success. See supra § III.D.4(e). Hence, Petitioner demonstrates a reasonable likelihood of proving that claim 1 is unpatentable under § 103(a) because the claim would have been obvious over Gai, Yip, and Kwan.” slip op. at 34
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,623,518
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.