- PTAB · Jan 27, 2025 · IPR2024-01179 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR of claims 1–25; it found a reasonable likelihood that claims 1, 2, 4–11, 16–20, and 22–24 are obvious over Waldner and Dynatek.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on our preliminary review, we agree with Solaris that Waldner discloses each of the assemblies, as claimed, except for the limitation requiring that the “inboard” and “outboard” segments of the conveyor extension assembly be “pivotally connected” to each other “about a substantially vertical axis,” as recited in claim elements 1(j) and 1(k). See Pet. 25–46 (mapping elements 1(a)–1(h) to Waldner and elements 1(i)–1(k) to Waldner and Dynatek).7 For those missing claim limitations, Solaris relies on Dynatek’s express teaching of constructing a conveyor belt assembly for granular materials from pivotally-connected segments capable of rotating relative to one another about a vertical axis. See id. at 43–46 (citing Ex, 1005, at 2). In doing so, Solaris provides persuasive reasoning for why a skilled artisan would have considered it obvious “to substitute” Dynatek’s two-part conveyor assembly for Waldner’s two-part conveyor chute and/or “to modify” Waldner’s two-part conveyor chute with Dynatek’s teaching of coupling the two-parts of a conveyor assembly to be pivotally connected. See id. at 26–28. Given Solaris’s persuasive and detailed showing at this stage, we find that Solaris demonstrates a reasonable likelihood that claim 1 is unpatentable” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Based on our preliminary review, we agree with Solaris that Waldner discloses each of the assemblies, as claimed, except for the limitation requiring that the “inboard” and “outboard” segments of the conveyor extension assembly be “pivotally connected” to each other “about a substantially vertical axis,” as recited in claim elements 1(j) and 1(k). See Pet. 25–46 (mapping elements 1(a)–1(h) to Waldner and elements 1(i)–1(k) to Waldner and Dynatek).7 For those missing claim limitations, Solaris relies on Dynatek’s express teaching of constructing a conveyor belt assembly for granular materials from pivotally-connected segments capable of rotating relative to one another about a vertical axis. See id. at 43–46 (citing Ex, 1005, at 2). In doing so, Solaris provides persuasive reasoning for why a skilled artisan would have considered it obvious “to substitute” Dynatek’s two-part conveyor assembly for Waldner’s two-part conveyor chute and/or “to modify” Waldner’s two-part conveyor chute with Dynatek’s teaching of coupling the two-parts of a conveyor assembly to be pivotally connected. See id. at 26–28. Given Solaris’s persuasive and detailed showing at this stage, we find that Solaris demonstrates a reasonable likelihood that claim 1 is unpatentable” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Based on our preliminary review, we agree with Solaris that Waldner discloses each of the assemblies, as claimed, except for the limitation requiring that the “inboard” and “outboard” segments of the conveyor extension assembly be “pivotally connected” to each other “about a substantially vertical axis,” as recited in claim elements 1(j) and 1(k). See Pet. 25–46 (mapping elements 1(a)–1(h) to Waldner and elements 1(i)–1(k) to Waldner and Dynatek).7 For those missing claim limitations, Solaris relies on Dynatek’s express teaching of constructing a conveyor belt assembly for granular materials from pivotally-connected segments capable of rotating relative to one another about a vertical axis. See id. at 43–46 (citing Ex, 1005, at 2). In doing so, Solaris provides persuasive reasoning for why a skilled artisan would have considered it obvious “to substitute” Dynatek’s two-part conveyor assembly for Waldner’s two-part conveyor chute and/or “to modify” Waldner’s two-part conveyor chute with Dynatek’s teaching of coupling the two-parts of a conveyor assembly to be pivotally connected. See id. at 26–28. Given Solaris’s persuasive and detailed showing at this stage, we find” slip op. at 8
§ 103 obviousnessPatents in suitUS 11,780,689 - Alivecor, Inc. v. Apple Inc.InstitutedPTAB · Jan 9, 2024 · IPR2023-00950 · APJ Robert L Kinder · IPR · Institution
Instituted inter partes review of claims 1–22 on all petitioned grounds; the Board found a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Markel – to accomplish Markel’s goal of a concealed electrode – is a reasonably sufficient basis or reason to combine the references. On this record, Petitioner demonstrates that a person of ordinary skill in the art would have reason to apply Nissilä’s electrode structure having a distinct exterior surface to the teachings of Markel because of the similarities in electrode structure and to achieve a stated goal of Markel. Nissilä’s electrode structure uses an external layer of “metal, electrically conductive plastic or a similar conductive material.” Ex. 1006, 5:32–37; Ex. 1003 ¶ 355 (“both references disclose an intermediate conductive material made of conductive plastic”). Petitioner has shown this structure could be adopted by Markel’s “hidden” electrode having a main body portion formed from conductive plastic and a person having ordinary skill in the art would be motivated to do so in order to achieve Markel’s stated goal of an electrode that is substantially concealed (or hidden) from a user. See Ex. 1003 ¶ 354. Even if a goal of Nissilä’s device is for the user to be aware of the electrodes to place them on their chest, as Patent Owner alleges, Petitioner shows that Markel’s concealment objective could be suitably achieved by use of Nissilä’s structure, even if Nissilä does not share a similar concealment objective. Id. ¶ 355 (“Markel’s hidden electrode is desirable because it increases aesthetics of the device while protecting the electrode from bumps or other damage.”). Based on the record before us, Petitioner has also shown sufficiently that a POSITA would be motivated to combine Markel and Nissilä to satisfy limitations [1.c.i], [1.c.ii], and [1.c.iii].” slip op. at 41
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ recitations are similar in scope. Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in education. Petitioner’s definition is consistent with both the scope of the claimed invention and 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 our decision would be the same adopting either proposed level of ordinary skill in the art.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“With respect to the preamble “[a]n electronic device for detecting a user’s cardiac signal,” as recited in elements [1.pre] and [15.pre], Petitioner submits that the language provides antecedent basis that defines language in the claim body. For example, [1.pre] and [15.pre] each recite “a user’s cardiac signal,” which is referred back to later in the claim bodies as “the user’s cardiac signal” . . . The phrase “a user” in [1.pre] and [15.pre] is referred back to in the claim bodies as part of “the user’s skin’s contact” . . . As another example, [15.pre] recites “An electronic device,” which is referred back to later in the claim body as “the electronic device” . . . Consequently, a person of ordinary skill in the art would have understood that the language “An electronic device for detecting a user’s cardiac signal” in [1.pre] and [15.pre] is limiting and should receive its plain and ordinary meaning. Pet. 5 (citing Ex. 1003 ¶ 77). We find Petitioner’s contentions with respect to the preamble of claims 1 and 15 persuasive. Petitioner has shown that the claim preamble, when read in the context of the entire claim, recites limitations of the claim, and is necessary to give life, meaning, and vitality to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,076,257 - Alivecor, Inc. v. Apple Inc.InstitutedPTAB · Jan 9, 2024 · IPR2023-00949 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR of claims 11–20 on all petition grounds, finding a reasonable likelihood that Kim anticipates or renders obvious at least claims 11, 14, 16, and 19.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims in this proceeding.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Our Trial Practice Guide explains that, as is the case here, for parallel petitions challenging the same patent “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. The CTPG also recognizes “that there may be circumstances in which more than one petition may be necessary.” Id. The CTPG provides some exemplary reasons for multiple petitions, for instance “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. The CTPG further compels a petitioner filing multiple petitions to identify: (1) a ranking of the petitions in the order in which it wishes the Board to consider the merits, if the Board uses its explanation of the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a). Id. at 60. We focus our analysis on part (2) and “why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions.” Id.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction 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) (2020). 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. Furthermore, at this stage in the proceeding, we expressly construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. (“[W]e need only construe 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))). Neither Patent Owner nor Petitioner indicate that any claim terms require construction. See generally, Petition; Prelim. Resp. For purposes of this Decision where no claim terms are in dispute we need not explicitly construe any claim terms.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art at the time of the ’619 patent would have been a person with a working knowledge of physiological monitoring technologies, a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, and training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to physiological monitoring technologies. Pet. 8 (Ex. 1003 ¶¶ 37–38). Petitioner also asserts that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not expressly address the level of ordinary skill in the art. See generally Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’619 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 9
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 10,866,619 - Alivecor, Inc. v. Apple Inc.InstitutedPTAB · Jan 9, 2024 · IPR2023-00948 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–10 and all petition grounds, finding a reasonable likelihood that Kim anticipates or renders obvious at least claims 1, 5, 9, and 10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims in this proceeding.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Analysis Two things can be true—first, the Board’s word and page count can be necessary to limit Petitioner’s to a reasonable articulation and advancement of the challenges with respect to the claims of a particular patent. 37 C.F.R. § 42.24; see also CTPG II.A.3. (“parties should . . . focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.”). Second, as recognized in the CTPG, a single petition, limited in this way, may at times be insufficient to convey all of the necessary information for the Board to correctly consider and evaluate the prior art and claims at issue. See CTPG 59 (“there may be circumstances in which more than one petition may be necessary.”). With this in mind, and for the following reasons, we find Petitioner’s explanations and arguments for filing two petitions persuasive and, based on the facts and circumstances in this case, institute both parallel petitions.” slip op. at 23
Discretionary denialPatents in suitUS 10,866,619 - PTAB · Nov 21, 2023 · IPR2023-00865 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR of claims 1–19, finding a reasonable likelihood that claims 1 and 14 are obvious over Carr and Lauka.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the above reasons, we determine that the information presented in the Petition demonstrates a reasonable likelihood that at least claims 1 and 14 of the ’465 patent are unpatentable as obvious over Carr and Lauka. And because Instacart demonstrates that at least one claim of the ’465 patent meets the threshold for institution, we institute an inter partes review of all claims as challenged in the Petition. See 37 C.F.R. § 42.108(a),(c); SAS, 138 S. Ct. at 1359–60. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–19 of the ’465 patent is instituted; and” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Consumeron responds that one skilled in the art would have been “someone with a background in electrical engineering, computer science, or the like” and that “industry experience can make up for a lack of technical training, and more education can make up for a lack of industry experience.” Prelim. Resp. 29. Consumeron’s definition appears to overlap significantly with Instacart’s definition. Accordingly, for purposes of institution, we adopt the level of skill in the art as articulated by Instacart.” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“product ordered by the customer is available and does not contemplate a scenario where the product is unavailable or otherwise describe the action to be taken if the product is unavailable. See Pet. 17–22. We agree, at least based on the preliminary record. In particular, with reference to Figures 2 and 3, the ’848 parent application describes a method where (1) a customer chooses “a store where a desired product is being sold” (step 105), (2) the customer selects a delivery agent and sends an “acquisition request” to the delivery agent (steps 108, 109, 110), and (3) “the selected delivery agent travels to the store location . . . and finds the desired product to be acquired” (step 113). Ex. 1011 ¶¶ 17, 20, 23 (emphasis added). “The delivery agent then communicates to the customer that the product has been identified, and the customer has the option of inspecting the product in real-time” (step 117). Id. ¶ 23 (emphasis added). “Next, the customer either approves or rejects acquisition of the inspected product” (steps 119, 120, 122). Id. ¶ 24 (emphasis added). That description in the ’848 parent application clearly presumes that the product ordered by the customer has been located and is available for inspection, which is at odds with the additional requirements of claims 1 and 14 of “failing to locate an identified product” and “determining that the identified product is not available.” Ex. 1001, 11:20 (claim 1), 12:30 (claim 14) (emphases added). To the extent Consumeron argues otherwise, we are not persuaded at this preliminary stage. According to Consumeron, the customer’s rejection of the product means that “the agent fails to locate a product that is satisfactory.” See Prelim Resp. 11. But nowhere do we discern that the ’848 parent application hinges the identity and availability of a product on whether it is satisfactory to the customer. That a product might not meet a customer’s satisfaction does not negate the description in the ’848 parent application that the agent locates and identifies the product in the first instance before giving the customer the option to inspect and reject the product. Indeed, because the customer placed the online order with a store advertising the product, the presumption is that the advertised product is available and satisfactory to the customer.8 And, while conceivably the purchase of a product cannot be fulfilled in the event the product is unavailable, it would seem to be improper hindsight to derive written description support by “[w]orking backward from a knowledge of the claims.” Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1349 (Fed. Cir. 2013). “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to that which is disclosed.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997). Thus, based on the preliminary record, the ’848 parent application does not provide sufficient written description for the terms noted above. As such, we find that Instacart demonstrates a reasonable likelihood it will prevail in showing that the asserted references are prior art to the challenged claims.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“and Lauka. See Pet. 30–44, 47–49. We begin with Instacart’s challenge of method claim 1. Instacart provides a detailed mapping of how Carr satisfies all the recited limitations of claim 1, except limitation [1.0.3], for which Instacart points to Lauka. See id. at 35–44. In particular, Instacart cites the following evidence in support of its contentions that Carr and Lauka, when combined, teach or suggest each of the recited limitations of claim 1: Limitation 1.0.1—“A method for remote acquisition and delivery of goods through one or more agents of a service provider” (Pet. 35 (citing Ex. 1005 ¶¶ 36, 39, 43, 45, 92, Figs. 1, 3, 6;; Ex. 1001 ¶¶ 97–100)); Limitation 1.0.2—“each agent having a mobile agent system in communication with at least one remote server,” (Pet. 35–37 (citing Ex. 1005 ¶¶ 2, 6, 40–43, 53, Fig. 1 (annotated); Ex. 1003 ¶¶ 101–104)); Limitation 1.0.3—“with each mobile agent system including: a digital image capture device and a communication device, said method comprising:” (Pet. 37–38 (citing Ex. 1005 ¶¶ 74, 88, 94, 122; Ex. 1006, 3:19–28, 3:49–57, 4:10–21; Ex. 1003 ¶¶ 105– 109)); Limitation 1.1—“receiving, through the at least one remote server, a first acquisition request from a customer for a first set of one or more goods;” (Pet. 38 (citing Ex. 1005 ¶¶ 9, 60, 73, Fig. 1; Ex. 1003 ¶¶ 110–112)); Limitation 1.2—“contacting, through the communications device, the one or more agents;” (Pet. 38 (citing Ex. 1005 ¶¶ 57, 74; Ex. 1003 ¶¶ 113–115)); Limitation 1.3—“upon failing to locate an identified product of the set of one or more goods, electronically transmitting information on a replacement product for the identified product of the set of one or more goods to the customer using the digital image capture device of the agent, including:” (Pet. 38–40 (citing Ex. 1005 ¶¶ 90, 95, 96, 105, 107, ; Ex. 1003 ¶¶ 116– 119)); Limitation 1.4—“obtaining a bar or QR code of the replacement product;” (Pet. 40 (citing Ex. 1005 ¶¶ 95, 107; Ex. 1003 ¶¶ 120– 122)); Limitation 1.5—“determining the information from the bar or QR code, wherein the information includes at least one image of the replacement product; and” (Pet. 40–42 (citing Ex. 1005 ¶¶ 95–96, 116; Ex. 1003 ¶¶ 123–127)); Limitation 1.6—“sending the information for the customer to approve the purchase of the replacement product based on the information determined from the bar or QR code; and” (Pet. 42– 43 (citing Ex. 1005 ¶¶ 51, 96–99, Fig. 12; Ex. 1003 ¶¶ 128– 130)); and Limitation 1.7—“upon receiving approval of the purchase from the customer, acquiring the replacement product, via the agent.” (Pet. 43–44 (citing Ex. 1005 ¶¶ 99, 101; Ex. 1003 ¶¶ 131–132)); Instacart also provides a reason why one skilled in the art would have combined the teachings of Carr and Lauka with a reasonable expectation of success. See Pet. 31–34 (citing Ex. 1003 ¶¶ 86–96); see also id. at 37 (“In view of the teachings of Lauka, a POSITA would have recognized that it was obvious to implement the UPC scanner functionality of Carr’s handheld device using an ‘imaging device’ such as that taught by Lauka, which specifies that the ‘imaging device 206 can comprise a video or still camera’ and ‘can be used to capture images.’ Ex.1006, 3:49-57; Ex.1003, ¶¶105- 107.”).” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 11,238,465 - PTAB · Nov 6, 2023 · IPR2023-00643 · APJ Matthew S Meyers · IPR · Institution
The Board instituted review of claims 1–7 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Willner and Park.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“We are not persuaded by Patent Owner’s arguments. In our previous decision in the 1197 IPR, we exercised our discretion to deny institution under § 314(a) based on our consideration of the Fintiv factors. 1197 IPR, Paper 13, 23. The decision in the 1197 IPR noted that although “there does appear to be some strength to the merits of Petitioner’s challenges,” this determination was based particularly on the fact that “the ’393 patent’s claims share some of the same claim limitations addressed by the Board previously in the ’119 patent’s IPRs.” See id. at 20–21. Therefore, we did not fully address the substantive merits of any of Petitioner’s grounds of unpatentability. 10 We also are not persuaded that the changes between the Petition in the 1197 IPR and the present Petition demonstrates “ample evidence” of road-mapping. Instead, we agree with Petitioner that “[t]hese changes are not road-mapping because they are unrelated to the record in the earlier [1197] IPR.” Pet. Reply 2–3. And, as we explained above, our earlier decision did not fully address the substantive merits of any of Petitioner’s grounds of unpatentability, nor did we address the substantive merits of any of Patent Owner’s counterarguments. See General Plastic, Paper 19, 17 (warning against allowing “petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap.”) (emphasis added); see also id. at fn.14 (citing Butamax Advanced Biofuels LLC v. Gevo, IPR2014-00581, Paper 8, 12–13 (PTAB Oct. 14, 2014) (criticizing petitioner’s use of “our prior decision as a roadmap”) (emphasis added). In addition, Patent Owner acknowledges that the present Petition challenges “the same claims 1–7 based on identical prior art references and substantially similar grounds.” Prelim. Resp. 1 (emphasis omitted). Thus, we find Patent Owner’s “road-mapping” concerns to be minimized based on the similarity of the unpatentability challenges between those raised in the 1197 IPR Petition and the present Petition. For these reasons, we agree with Petitioner that factors 1–3 weigh in favor of institution. See Code200, Paper 18 at 5 (“Where the first-filed petition under factor 1 was discretionarily denied or otherwise was not evaluated on the merits, factors 1−3 only weigh in favor of discretionary denial when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.”).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“based on the related district court matters identified above. Prelim. Resp. 17–27; see Fintiv, Paper 11, 12 (holding that PTAB has discretion to deny institution in certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue the same invalidity grounds against the challenged claims of the ’393 patent in the parallel litigation [or] any 14 grounds that could have been reasonably raised in this petition” (Pet. 85)7, we do not discretionarily deny institution under Fintiv.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“At the outset, we note that the exercise of discretion in Advanced Bionics did not turn on mere citation in an IDS of the art asserted in the petition. Rather, the Board’s exercise of discretion in that case turned on the Examiner’s application and discussion of that art. Specifically, the Board 18 found in Advanced Bionics that the asserted art, Zimmerling, “is the same art previously presented to the Office” because “the Examiner rejected [the claims] as anticipated by Zimmerling” and “Zimmerling was discussed during prosecution.” Advanced Bionics, Paper 6, 13. In other words, the criteria adopted by the Board for denying the petition in Advanced Bionics included not only the fact that the art was made of record, but also the fact that it was applied and discussed during prosecution. Anything less disregards the express reasoning behind the Board’s exercise of discretion in that case. Here, Patent Owner has not shown that any Petitioner’s cited art (i.e., Willner, Park, Schoenith, Kessler, Hirschman) was applied by the Examiner or discussed during prosecution. Instead, during examination of the ’393 patent, the record shows that the Examiner allowed the pending claims over “Wu (2006/0252537) in view of Willis (2014/0274394).” Ex. 1009, 26–29. In doing so, the Examiner stated that a “[g]ame controller with structural bridge is well known in the art” (id. at 27), but found that “Wu in view of Willis is silent on” the subject matter claim 1. See id. at 27–28 (quoting the subject matter of independent claim 1 in its entirety). However, on this record, Petitioner demonstrates that the Examiner overlooked the combination of Willner and Park’s teachings of the limitations that were the basis for allowing the challenged claims. Id. As discussed in more detail below, Petitioner’s evidence demonstrates a reasonable likelihood that at least independent claim 1 of the ’393 patent is unpatentable over the combination of Willner and Park. See Pet. 19–41 (citing Exs. 1002, 1003, 1004).” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion for Claim 1 Petitioner has shown sufficiently that the combination of Willner and Park teaches all limitations of claim 1. Petitioner also has put forth sufficient reasons for combining these references with a reasonable expectation of success. Pet. 20–21 (citing Ex. 1002 ¶¶ 133–139, 150–157; Ex. 1003 ¶ 50; Ex. 1004 ¶¶ 39–46). For example, Petitioner asserts that “Park’s adjustable bridge ‘would greatly expand the number of devices that [Willner’s] product would support, leading to the predictable result of having a larger base of customers.’” Id. at 20 (citing Ex. 1011, 19; Ex. 1018, 185 Ex. 1003 ¶ 138). Based on the present record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over the combination of Willner and Park.” slip op. at 37
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,391,393 - PTAB · Oct 26, 2023 · IPR2023-00883 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on the challenges to claims 1–20 and joined Micron as a petitioner in IPR2022-01427, with its role limited as stated in its motion.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “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 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, Petitioner’s Motion is unopposed by Samsung and Patent Owner. Petitioner argues that, if joinder is granted, it will take an “understudy” role and would only assume a primary role if Samsung ceases participation in the proceeding. Motion 6–9. In the “understudy” role, Petitioner represents, among other things, that it “will not be making any substantive filings,” that it “agrees to be bound by all filings by Samsung . . . except for filings regarding termination and settlement,” and that it “will not cross-examine or defend any witness at deposition.” Motion 7–8. We have reviewed the Motion, and we determine that it is appropriate under these circumstances to join Petitioner as a party to the 1427 IPR.” slip op. at 4
NonePatents in suitUS 9,318,160 - PTAB · Oct 26, 2023 · IPR2023-00882 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on all petition challenges and joined Micron as a petitioner in IPR2022-01428, subject to its stated understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “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 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“1 Although Petitioner requests that we “join this IPR with the [1428] IPR” (Motion 2), the joinder statute does not permit this. See Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020) (“[W]e hold that the clear and unambiguous meaning of § 315(c) does not authorize joinder of two proceedings . . . .”). Thus, we treat Petitioner’s Motion for Joinder as a request to be joined as a petitioner to the 1428 IPR, and, for the reasons discussed herein, we grant that request.” slip op. at 2
NonePatents in suitUS 8,787,060 - Masimo Corporation v. Apple Inc.InstitutedPTAB · Oct 16, 2023 · IPR2023-00745 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1–4 and 8–22 for all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ recitations are similar in scope. Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. This proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. Petitioner’s definition is consistent with both the scope of the claimed invention and 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 our decision would be the same adopting either proposed level of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for the terms “embedded” (recited in claims 1, 9, and 15), “lead” (recited in the independent claims), “pad” (recited in claim 1 and some of its dependent claims), and “pocket” (recited in dependent claim 8). Pet. 7–12. Patent Owner, at this time, “discerns no need to construe explicitly any claim language because doing so would have no effect on analyses of Masimo’s asserted grounds, and would not assist in resolving the present controversy between the parties.” Prelim. Resp. 6.” slip op. at 13
- BurdenOther
“We agree with Patent Owner that Petitioner’s citation to Mills (Ex. 1006, 5:18–19), which is “[y]et another VLSI chip . . . SRAM chip 38,” does not necessarily disclose a processor standing alone. Petitioner’s position, however, does not rely just on SRAM chip 38, but instead a VLSI comprising other circuit components, including a distinct processor. See Pet. 31 (citing Ex. 1006, 2:3–6). Petitioner first cites to Mills column 2 to support its position that “housing 12 comprises a very-large scale integrated (VLSI) circuit chip that includes an ‘ECG signal and abnormal event detection circuitry, analog-to-digital (AD) and digital-to-analog (DA) conversion circuitry, memory and processor circuitry.’” Id. (quoting Ex. 1006, 2:3–6). Petitioner next relies on Mills’ disclosure that “microprocessor and associated electronics, including firmware executed thereby, employs a digital bandpass filter reliably to detect ECG signals.” Id. (quoting Ex. 1006, 2:20–23). Petitioner next cites to Mills (Ex. 1006, 4:55–5:3), which describes “circuitry shown schematically in FIG.4, including on [PCB 50’s] bottom side a microcontroller (with integral ROM) chip 42.” Pet. 31. It is unclear from this citation whether Petitioner is relying on microcontroller 42 (on PCB 50’s bottom side) as a processor because Petitioner then quotes Mills’ discussion of SRAM chip 38, which states “that the VLSI is surface-mounted on the top side of printed circuit board (PCB) 50.” Pet. 31 (quoting Ex. 1006, 5:18–19). We understand Petitioner’s position as relying on the “very-large scale integrated (VLSI) circuit chip that includes” several components, including “memory and processor circuitry.” Pet. 31 (quoting Ex. 1006, 2:3–6). Notably, this section of the specification is labeled, “Background and Summary of the Invention,” and the paragraph describing this VLSI circuit chip is “summarizing the invention.” Ex. 1006, 1:7–8, 1:60. This VLSI circuit chip does not appear to us to be the same as VLSI SRAM chip 38, which is characterized by Mills as “[y]et another VLSI chip.” Ex. 1006, 5:18. Mr. Oslan testifies that “the VLSI is a processor coupled to the heart sensor (first and second electrodes 14 and 16, respectively) and is configured to receive and process the detected cardiac signal.” Ex. 1003 ¶ 65. Mr. Oslan relies on Mills’ disclosure of a microprocessor and associated electronics, including firmware employing a digital bandpass filter for detecting ECG signals. Id. (citing Ex. 1006, 2:20–23). This cited sentence of Mills further discloses characterizing ECG signals (processing) based on QRS complexes or pacer and defibrillator pulses, but ignoring noise and motion artifacts. Ex. 1006, 2:20–25. Patent Owner makes additional arguments, such as alleging that the” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,076,257 - Masimo Corporation v. Apple Inc.InstitutedPTAB · Oct 5, 2023 · IPR2023-00734 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood that Masimo would prevail on claims 1, 7, and 14 as obvious.
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.” slip op. at 12
- 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) (2018). 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 ’491 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’491 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“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 Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for certain terms concerning the cover material—“a cover formed from a dielectric material,” “a transparent substrate,” and “a cover comprising a non-conductive material”—and window terms such as “defines at least one window” and “window defined.” Pet. 7–10. Patent Owner states: “While not agreeing with Petitioner’s proposed constructions (or lack thereof) for certain claim terms . . . , solely for purposes of this Preliminary Response, Patent Owner does not object to the constructions proposed by Petitioner at this time.” Prelim. Resp. 24. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,942,491
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.