- PTAB · May 24, 2022 · IPR2022-00669 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–30 under all six §103 grounds and granted T-Mobile’s motion to join IPR2021-01552.
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 any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” As elaborated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim, and we institute an inter partes review as to the challenged claims and grounds raised in the Petition. We also grant the Joinder Motion.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We are persuaded by Petitioner’s arguments. Because the Petition challenges the same claims on the same grounds using the same prior art, Kyocera factor (2) favors joinder. See Kyocera, IPR2013-00004, Paper 15 at 4. Indeed, the Board “routinely grants motions for joinder where the party seeking joinder introduces identical arguments and the same grounds raised in the existing proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Company, IPR2016-00962, Paper 12 at 9 (PTAB Aug. 24, 2016).” slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner states, “[n]o claim term requires express construction.” Pet. 11. Patent Owner states that it “considered the plain and ordinary meaning of each term of the ’196 patent as it would have been understood by one skilled in the art as of October 23, 2001.” Prelim. Resp. 3–4. For purposes of this Decision, we do not construe any claim terms.” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,918,196 - PTAB · Apr 19, 2022 · IPR2022-00010 · APJ Thu A Dang · IPR · Institution
The Board instituted review of claims 14–19 on four § 103 grounds based on Suzui, Boniface, and Gilmore, with additional references for claims 16, 17, and 19.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“Even though it explains that parallel petitions challenging the same patent are generally disfavored, the consolidated Trial Practice Guide nevertheless recognizes that there may be “rare” circumstances in which more than one petition may be necessary, and that the panel has discretion to review whether fairness warrants allowing multiple petitions by a single petitioner. Consolidated Trial Practice Guide, 59. In particular, petitioners are required to file lengthy petitions that fully elaborate their arguments for canceling the challenged patent. 37 C.F.R. § 42.22(a)(2); see also id. § 42.21(a), (c); 35 U.S.C. § 312(a)(3) (“A petition … may be considered only if … the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim”). Thus, the Board recognizes that, with the strict limits set on the length of petitions (see 37 C.F.R. § 42.24(a)(1)), in some cases, it may be impossible to adequately present all legitimate grounds for cancelation in a single petition. Here, petitions in Group 2 challenge different claims from the petitions in Group 1, wherein the claims in Group 2 are directed to different subject matter from those in Group 1. Thus, we are not persuaded that Petitioner should be able to adequately present all legitimate grounds for cancelation of both sets of claims directed to different subject matter in a single petition. In this case, we are not persuaded that the petitions between the two groups are considered “parallel” petitions that would provide the Petitioner more than one bite at the apple. That is, we are not persuaded that the filing of the two separate groups of petitions directed to different subject matter involve an abusive attempt to get more than one bite at the apple.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2020). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art (POSITA) at the time of the invention and in the context of the entire patent disclosure. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner further contends that “routing wires in parallel (for instance in the same conduit) was a well-known wiring technique,” wherein Boniface teaches “routing the positive and negative conductors ‘in parallel with an array grounding conductor.’” Pet. 29 (citing Ex. 1402 ¶¶ 193–196). Petitioner provides an annotated Figure 1 of Boniface, shown below, to illustrate its contentions. Annotated Figure 1 of Boniface in the Petition, according to Petitioner, illustrates “a fault detection system comprising a photovoltaic solar array 101 (blue) connected to a power conditioning unit, e.g., inverter 115 (orange) via connective wiring.” Pet. 29 (citing Ex. 1424 ¶ 37; Ex. 1402 ¶ 194). Petitioner contends that Boniface discloses that “a photovoltaic source positive conductor (102/112/112’) and a negative conductor (103/113/113’) (green) are routed in parallel with an equipment ground conductor 104 connected to earth ground system 118.” Id. (citing Ex. 1424, ¶¶ 37–39, 48, Figs. 1, 2, 6, 8; Ex. 1402 ¶ 194). According to Petitioner, a POSITA would have been motivated to implement Suzui’s system, in view of Boniface’s teaching, “to route Suzui’s positive and negative conductors in parallel with Suzui’s frame grounding conductors . . . to prevent shock hazards and improve safety,” and additionally “because routing the wires in parallel (e.g., in the same conduit) would also be easier and more convenient.” Id. at 31 (citing Ex. 1424 ¶ 2; Ex. 1402 ¶ 195).” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,937,822 - PTAB · Apr 19, 2022 · IPR2022-00007 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–13 and 20, finding a reasonable likelihood of success on each asserted ground in the petition.
RulingsInstitution decision- Parallel petitionsOther
“We decline Petitioner’s invitation to provide advisory opinions by entertaining different Petitions advancing alternative claim constructions. As Petitioner has expressed its preference for Petition 1, which cites Tracy as the primary reference, we exercise our discretion to entertain Petition 1. We decline to institute inter partes review based on Petitions 2 and 3.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“XI. CONCLUSION For the reasons discussed above, we find that Petitioner has demonstrated a reasonable likelihood that it will succeed on the following challenges to patentability: Claims 1–3 and 8–10 as anticipated by Tracy; Claims 1–3 and 8–10 as obvious over Tracy; Claims 4 and 11 as obvious over Tracy and Fujimoto; Claims 6 and 20 as obvious over Tracy and De; Claim 7 as obvious over Tracy and Bond; XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’822 patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial;” slip op. at 50
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). construed as means plus function terms: DC to AC converter, switch[ing] controller, AC ground leak detector, bi-directional DC-to-DC converter, common-mode filter. Pet. 17–21. Although Petitioner states these terms “could be construed as means-plus-function limitations,” Petitioner states that if the panel does not construe them as such, these terms should be construed according to their ordinary and customary meaning. Id. at 17. According to Petitioner, whether these limitations are construed as means plus function terms or according to their ordinary and customary meaning, the prior art discloses the limitations of the challenged claims. Petitioner does not explain why terms that have an ordinary and customary meaning should be construed as means-plus-function limitations in the context of the ’822 patent. Therefore, we apply the ordinary and customary meaning to each limitation. Vivid Techs., 200 F.3d at 803.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that at the time of the patent application, a person of ordinary skill “would have had a bachelor’s degree in electrical engineering or a similar discipline and three years of design experience with power electronics, including experience designing power converters.” Pet. 17 (citing Ex. 1002, Declaration of Dr. R. Joseph Baker (“Baker Decl.”)). Patent Owner does not discuss the level of ordinary skill. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); of ordinary skill is consistent with the subject matter of the claims and references, we apply Petitioner’s proposed level of skill in this Decision.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,937,822 - Apple Inc. v. Traxcell Technologies, LLCInstitutedPTAB · Mar 15, 2022 · IPR2021-01553 · APJ Norman H Beamer · IPR · Institution
The Board instituted review of claims 1–25, 27–28, and 30 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim was unpatentable.
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 any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A Person of Ordinary Skill in The Art (“POSITA”) in October 2001 would have had a bachelor’s degree in electrical or computer engineering, or an equivalent, and two years of professional experience relating to locating technologies, mobile devices and wireless networks. . . . Lack of professional experience can be remedied by additional education, and vice versa. Pet. 6 (citing Braasch Decl. ¶ 22). Patent Owner submits: A Person of Ordinary Skill in The Art (“POSITA”) in October 2001 would have had a bachelor’s degree in electrical or computer engineering, or an equivalent, and two years of professional experience relating to locating technologies, mobile devices and wireless networks. . . . Lack of professional experience can be remedied by additional education, and vice versa. Prelim. Resp. 4 (citing Ex. 2001 (Declaration of Robert Van Essen, hereafter, “Van Essen Decl.”), ¶ 21). Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Although we agree that the plain meaning of “navigation information” encompasses “route, travel direction, speed, and mobile location” in this context, we conclude that, as this stage of the proceeding, it is not necessary to explicitly construe that phrase or other claim terms.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner argues, without elaboration, “[t]here is a lack of a motivation to combine [Moles, Sakarya, and Meadows].” Prelim. Resp. 26 (citing Van Essen Decl. ¶ 72). This conclusory assertion is unpersuasive. For purposes of this Decision, we determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combination of Moles, Sakarya, and Meadows.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,549,388 - Apple Inc. v. Traxcell Technologies, LLCInstitutedPTAB · Feb 7, 2022 · IPR2021-01552 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–30 and 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
“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 any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) at the time of the filing would have at least a Master of Science (“MS”) Degree in Computer Science, Computer Engineering, Cartography, or equivalent work experience in the field of computer networks, along with knowledge of the general structure of networked communication systems, its hardware and software components and underlying communications technologies. . . . In addition, a POSITA would be familiar with the latest communications standards. Prelim. Resp. 4 (citing Ex. 2001 (Declaration of Robert Van Essen, hereafter, “Van Essen Decl.”), ¶ 21). Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner states, “[n]o claim term requires express construction.” Pet. 6–7. Patent Owner states that it “considered the plain and ordinary meaning of each term of the ’196 patent as it would have been understood by one skilled in the art as of October 23, 2001.” Prelim. Resp. 3–4. For purposes of this Decision, we do not construe any claim terms. D.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“3. The Combination of Bruce and Hancock Petitioner argues that one of ordinary skill would have been motivated to combine the geographic location-based systems of Bruce and Hancock, resulting in a combination that would have rendered obvious, for example, independent claim 1. Pet. 12–17. Petitioner first argues that one of ordinary skill would have been motivated to add to the Bruce system, the capability of accessing routing information via the Internet, as disclosed in Hancock. Pet. 13–15. Petitioner cites the fact that one embodiment of Bruce uses a computer with a modem to allow a user to obtain directions from the system, and that providing such access via the Internet, as disclosed in Hancock, would have provided well-known advantages of higher data rates, storage capacity and additional Internet services. Id. (citing Ex. 1005, 1:38–40; Ex. 1008, 42:38–42; Ex. 1011, 24:16–19, 25:1–7, 27:39–67, 32:32–41; Braasch Decl. ¶¶ 46–49). Petitioner also argues that that one of ordinary skill would have been motivated to improve Bruce by providing more flexibility and variety in the ways for entering a destination, for which directions are requested, as disclosed in Hancock. Pet. 15–16. For example, Hancock discloses the ability to enter the names of businesses, to specify specific distances to destinations, and to use menus of possible destination locations. Id. (citing Ex. 1006, 2:40–43, 8:2–3; Ex. 1011, 8:66–9:3, 13:7–15, 28:49–29:1, 30:12– 14; Braasch Decl. ¶¶ 50–51). Petitioner further argues that one of ordinary skill would have been motivated to improve Bruce by using Hancock’s improved methods of formatting requests for directions via the use of data packets. Pet. 16–17 (citing Ex. 1011, 27:27–39, 27:64–67, 28:58–65; Braasch Decl. ¶¶ 52–54). Patent Owner does not specifically respond to these arguments. See generally Prelim. Resp. For purposes of this Decision, we determine that Petitioner has” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,918,196 - Stmicroelectronics, Inc. v. Neodron Ltd.InstitutedPTAB · Dec 15, 2021 · IPR2021-01161 · APJ Scott B Howard · IPR · Institution
Instituted IPR on claims 1–20 on all petitioned grounds because Petitioner showed a reasonable likelihood of prevailing on obviousness over Philipp and QT60161.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Givargis Declaration (Ex. 1003), which Patent Owner does not address at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that the combination of Philipp and QT60161 teaches each claim limitation recited in claim 1 and that a person having ordinary skill in the art would have combined the teachings of the references in the manner set forth in the Petition. Accordingly, Petitioner has demonstrated, on this record, a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Philipp and QT60161. 4. Claims 2–20 Because Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’251 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (indicating that a decision whether to institute an inter partes review “requires a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”); 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every” slip op. at 18
- Parallel petitionsDecided for petitioner
“Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). CTPG, 59. Nonetheless, the Consolidated Trial Practice Guide recognizes that “more than one petition may be necessary, including for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. The present circumstance is consistent with the exception referenced in the Consolidated Trial Practice Guide because there is a potential dispute about the effective filing date of the ’251 patent, which may require arguments to be made under multiple prior art references. See Paper 3, 2–3. Moreover, Patent Owner has not requested that we exercise our discretion to only consider, at most, one petition. Accordingly, we do not exercise our discretion to deny this Petition under § 314(a). E.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“implement these functions with a touch screen and to trigger the claimed time duration from detecting a ‘key touch on a/the touch screen’ pursuant to the touch screen teachings of QT60161.” Pet. 36.9 More specifically, Petitioner argues that it would have been obvious to apply the timed features of Philipp “to a ‘touch screen’ and to trigger the claimed time duration from detecting a ‘key touch on a/the touch screen.’” Id. at 29. According to Petitioner, a person having ordinary skill in the art would have made such a combination because (1) “the primary timer-based functions described and claimed in the ’251 Patent are not only compatible with the touch screen described in QT60161, but are expressly discussed in QT60161” (id. at 30; see also id. at 3031 (citing Ex. 1001, 6:61– 7:2; Ex. 1017, 7)), 9 The Petition emphasizes the names of prior art references. The emphasis is omitted throughout this Decision. (2) QT60161 and Philipp “are compatible with the same sensor technology” (id. at 31; see also id. at 31–32 (citing Ex. 1017, 5, Figs. 1-1, 1-2; Ex. 1024 ¶ 48, 49; Ex. 1003 ¶ 52; Ex. 1028, Figs. 1b, 7)), (3) both the ’251 patent and QT60161 are directed to saving power after the passage of time (id. at 32–33 (citing Ex. 1001, 4:55–65, 10:41–13:59; Ex. 1017, 11; Ex. 1003 ¶¶ 97– 103)), and (4) implementing Philipp “with QT60161’s touch screen would have yielded predictable results” (id. at 33 (citing Ex. 1003 ¶¶ 97–103)). After reviewing Petitioner’s arguments and information, including the Givargis Declaration (Ex. 1003), which Patent Owner does not address at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that the combination of Philipp and QT60161 teaches each claim limitation recited in claim 1 and that a person having ordinary skill in the art would have combined the teachings of the references in the manner set forth in the Petition. Accordingly, Petitioner has demonstrated, on this record, a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Philipp and QT60161.” slip op. at 17
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“In evaluating the effective filing date of the ’251 patent, we first address the parties’ respective burdens. In an inter partes review, Petitioner bears the ultimate burden of persuasion regarding unpatentability, which never shifts to patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). Dynamic Drinkware also establishes that Petitioner has the initial burden of production to show a reference is prior art. Dynamic Drinkware, 800 F.3d at 1379. However, the burden of production then shifts to Patent Owner to refute Petitioner’s argument by either showing the prior art does not actually render the claims unpatentable or does not qualify as prior art. Id. at 1380. The burden of production then shifts back to Petitioner to respond to Patent Owner’s argument. Id. The Board then evaluates all of the evidence and determines whether Petitioner has satisfied its burden of persuasion regarding unpatentability. Id. We apply the same framework when considering whether the parties have met their respective burdens at this stage of the proceeding. (2) Application of Dynamic Drinkware Based on the current status of the proceedings, we are sufficiently persuaded that Petitioner satisfied its initial burden of production under Dynamic Drinkware. Specifically, Petitioner identifies two claim terms— “touch screen” and “key touch on a/the touch screen”—that are recited in each of the independent claims and were added to the ’274 application. Pet. 10 (citing Ex. 1002, 38–41); see also id. at 11–17. Additionally, as discussed below, Petitioner has also sufficiently shown that the combination of Philipp and QT60161 teaches each of the limitations of the claims of the ’251 patent. See Dynamic Drinkware, 800 F.2d at 1379 (finding Petitioner satisfied its initial burden of production by arguing that the prior art rendered the claims unpatentable). Because Petitioner satisfied its initial burden of production, the burden of production now shifts to Patent Owner to argue or produce evidence that either (1) the prior art does not render the claims unpatentable or (2) that Philipp is not prior art because the asserted claims of the ’251 patent are entitled to the benefit of a filing date (constructive or otherwise) prior to Philipp. See Dynamic Drinkware, 800 F.3d at 1380. Because Patent Owner—as is its right—chose not to file a Patent Owner’s Preliminary Response, for purposes of institution only, Patent Owner did not meet its burden of production to show that the ’251 patent is entitled to a filing date earlier than Philipp.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,749,251 - Stmicroelectronics, Inc. v. Neodron Ltd.InstitutedPTAB · Dec 15, 2021 · IPR2021-01160 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1–20 and 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
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence, 85 Fed. Reg. 79,120, 79,129 (Dec. 9, 2020) (codified at 37 C.F.R. § 42.108(a) (2021)).” slip op. at 2
- Parallel petitionsDecided for petitioner
“Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). CTPG, 59. Nonetheless, the Consolidated Trial Practice Guide recognizes that “more than one petition may be necessary, including for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Because there is a dispute about the effective filing date of the ’251 patent, which may require arguments to be made under multiple prior art references, the present circumstance is consistent with the exception referenced in the Consolidated Trial Practice Guide. See Paper 3, 2–3. Moreover, Patent Owner has not requested that we exercise our discretion to only consider, at most, one petition. Accordingly, we do not exercise our discretion to deny this Petition under § 314(a). E.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have been a person having at least a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of human-machine interfaces such as touch sensors and the firmware or system software that govern said interfaces, or the equivalent, with additional education substituting for experience and vice versa. Pet. 2 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not address this issue. For purposes of this Decision, we adopt the level of ordinary skill in the art that Petitioner proffers, except that we delete the qualifiers “at least” to eliminate vagueness as to the amount of education and practical experience. The qualifiers expand the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.7 C.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for two terms. See Pet. 11–16. Because no express construction is needed to resolve any dispute in this proceeding, we do not construe any of the claim limitations. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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))). D.” slip op. at 10
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,749,251 - PTAB · Dec 13, 2021 · IPR2021-01128 · APJ Miriam L Quinn · IPR · Institution
The Board instituted IPR on claims 1–3, 5–12, and 14–19 on all petitioned grounds, after finding a reasonable likelihood of success on the § 103 grounds.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes the same articulation of the level of ordinary skill in the art that the Administrative Law Judge adopted in the related ITC proceeding, which is as follows: one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of touch sensors, human-machine interaction and interfaces, and/or graphical user interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa. Pet. 6; Ex. 1008, 8. Dr. Bederson agrees with it. See Pet. 6, Bederson Decl. ¶ 30. This articulation of the level of ordinary skill is consistent with the problems and solutions in the ’173 patent and the prior art of record. Therefore, we adopt the proposed articulation of the level of ordinary skill in the art for purposes of this decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Although a number of ’173 patent claim terms have been construed in the related ITC proceeding, Petitioner contends that we do not need to explicitly construe any claim terms. Pet. 6–7. In particular, the constructions for the selected terms in the related ITC proceeding are as follows, according to Petitioner. Term Construction a sensing element that com-a physical electrical sensing element prises a sensing path that com-made of conductive substances that prises a length comprises a path for sensing that is determined for each use that com-prises a length object either an inanimate object, such as a wiper, pointer, or stylus, or alterna-tively, a human finger or other ap-pendage any of whose presence ad-jacent the element will create a lo-calized capacitive coupling from a region of the element back to a cir-cuit reference via any circuitous path, whether galvanically or nongalvanically displacement distance and direction of movement Pet. 6−7. Petitioner does not dispute these constructions (id.), which we find reasonable at this juncture. Therefore, we preliminarily adopt these constructions for purposes of institution.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At our discretion, we may institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Applying that standard, we institute an inter partes review of all asserted grounds and all challenged claims of the ’173 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record, including any timely response by Patent Owner.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Further, to the extent the range of parameter values is not expressly or inherently taught by Trent, Petitioner argues that it would have been obvious to set a parameter to an initial value within a range that is associated with the length of the sensing path. Id. Relying on testimony of Dr. Bederson, Petitioner argues that a person of ordinary skill in the art would have had reason to combine the volume control knob of Trent’s Figure 36 (reproduced above in our overview of Trent) with functionality that sets the volume to an initial value as disclosed in Trent’s paragraph 92. Pet. 22 (citing Ex. 1005 ¶¶ 3, 4−11; Bederson Decl. ¶¶ 91–93). Petitioner also argues that Trent identifies, as part of the prior art “solutions” to the problem of the invention, a two-dimensional sensor in which users can slide their fingers to generate scrolling actions. Id. (citing Ex. 1005 ¶ 11). According to Dr. Bederson, a person of ordinary skill in the art would have understood that such a sensor would set a parameter to an initial value as recited in the claims. See Bederson Decl. ¶ 93. We find Petitioner’s arguments, and Dr. Bederson’s supporting testimony on the above points, sufficiently persuasive at this preliminary stage to show by a reasonable likelihood that Trent discloses or teaches the Setting Parameter Limitation.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,432,173 - PTAB · Dec 1, 2021 · IPR2021-00943 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1, 5–9, 11, 12, 16–20, and 22 based on a reasonable likelihood that the combination of the 300 reference, the 321 reference, and Ericsson renders claim 12 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Petition is not materially different from the prior art presented to the Examiner because the basis for the sole challenge in the Petition is a combination of references listed in the IDS. Pet. 3–4. Thus, we determine that the Petition uses “the same or substantially the same” art compared to what was previously presented to the Office, which satisfies part one of the framework. See Advanced Bionics, Paper 6 at 8. 2. Part Two of the Advanced Bionics Framework Under part two, we must determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id. at 8. For the reasons discussed in this section,” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Yet Patent Owner does not provide a basis for its definition. By contrast, Petitioner’s definition is supported by the Min declaration. See Pet. 12 (citing Min Decl. ¶ 34). Also, Patent Owner does not specifically explain how its proposed definition affects Petitioner’s obviousness analysis. See Prelim. Resp. 36. Rather, Patent Owner argues “even under Samsung’s proposal, the level of ordinary skill in the art does not comport with Samsung’s assertion of obviousness.” Id. Considering the types of problems and solutions described in the ’120 Patent and the cited prior art, we preliminarily agree with Petitioner’s proposed definition of the level of ordinary skill in the art. Pet. 12. During trial, however, the parties are encouraged to explain how the differences between Patent Owner’s proposed definition and Petitioner’s affect the obviousness analysis.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“Rather, Petitioner’s “only when” construction is adequately supported on this record. Pet. 12–13. Specifically, we preliminarily agree that the first “transmitting” step appears to be independent of the later three “transmitting” steps. Id. at 13. The later three steps cover the potential scenarios other than the first transmitting step in which the UL Grant is that the claimed user equipment must transmit one of the Msg3 buffer data or new data—not both. See id. In this way, the claim language adequately supports Petitioner’s assertion that the “when” clause in the first transmitting step introduces a necessary condition, at this stage and on this record. See id. at 13–14. Thus, we adopt Petitioner’s “only when” construction for the purpose of determining whether to institute. See id.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Motivation foundInstituted
“Patent Owner’s argument, though, does not fully address Petitioner’s obviousness rationale, which relies on the 321 reference as well as other teachings from several other sources. See Pet. at 32–37. At this stage, we preliminarily agree with Petitioner that the 321 reference does not state what happens if a UE receives two uplink grants during an ongoing random access procedure. Id. at 31. Petitioner asserts that it would have been obvious to transmit Msg3 only when there was Msg3 data to transmit and the UE had received an uplink grant in a random access response. Id. at 33. To be sure, Patent Owner does address Petitioner’s obviousness rationale by arguing that it is based on improper hindsight. Prelim. Resp. 34– 37. Patent Owner argues that Petitioner’s “suggestion that a POSITA would find the solution to the problem of improper transmission of Msg3 data obvious in view of the then-existing draft of the LTE standard is incorrect.” Id. at 34. Patent Owner argues that “[b]y claiming that there was no problem to be solved and that the draft LTE standard already addressed the potential for erroneous Msg3 data transmission, [Petitioner] essentially argues that the inventors and the LTE Working Groups did not know how the standard and based on improper hindsight. Id. at 36–37. At this stage, we determine that Petitioner’s obviousness rationale is adequately supported by the preliminary record: The 321 reference states, “If the UE receives both a grant for its RA-RNTI and a grant for its C-RNTI, the UE may choose to continue with either the grant for its RA-RNTI or the grant for its C-RNTI.” Ex. 1003, § 5.4.1, quoted in Pet. 32. The 321 reference calls the RA-RNTI grant an uplink grant in a random access response and calls the C-RNTI grant the uplink grant in a PDCCH. See, e.g., id. §§ 3.1 (“UE shall monitor the PDCCH after the uplink message containing the C-RNTI MAC”), 4.5.2 (“RA-RNTI for Random Access Response on DL-SCH”), cited in Min Decl. ¶ 99. In at least this way, the 321 reference supports Petitioner’s reasoning. See Pet. 32. Petitioner’s obviousness rationale is further supported by the 300” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,517,120 - Meta Platforms, Inc. v. Wrinkl, Inc.InstitutedPTAB · Nov 23, 2021 · IPR2021-00883 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–9, 11–20, 22–28, and 30 based on the §103 ground over Ji, Sarafa, and Oh.
RulingsInstitution decision- 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) (2018). Having considered the arguments and the associated evidence, for the reasons described below, we institute inter partes review of all the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that [a] person of ordinary skill in the art (“POSA”) at the relevant time (early 2017) would have had a bachelor’s degree in computer science or information systems and at least two years’ industry experience in designing and/or implementing user interfaces, or equivalent education and experience. Cockburn Decl. ¶ 31. Alternatively, a skilled artisan could substitute 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16, 2013. Because the application from which the ’192 patent issued was filed after that date, with no benefit claim prior to that date, the AIA version of § 103 applies. 4 Ji et al., Chinese Patent Application Publication No. CN 105553834 A, published May 4, 2016 (Ex. 1005 (original publication), Ex. 1006 (certified English translation), “Ji”). 5 Sarafa et al., Published U.S. Patent Application No. 2018/0159812 A1, published June 7, 2018 (Ex. 1007, “Sarafa”). 6 Oh et al., Published U.S. Patent Application No. 2014/0143684 A1, published May 22, 2014 (Ex. 1008, “Oh”). directly relevant work experience with a higher level of education, e.g., an advanced degree such as a master’s of computer science. Id. Pet. 13. At this stage, Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. We find Petitioner’s proposed definition reasonable and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill set forth above, which also comports with the testimony of Dr. Cockburn (Ex. 1003 ¶ 31).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the reasons explained in Sections II.C and II.D, Petitioner has demonstrated a reasonable likelihood of establishing obviousness of the challenged claims, regardless of which party’s arguments about the meaning of “reference” are more correct. Accordingly, we need not construe expressly any claim language. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). At the same time, we find one aspect of Patent Owner’s arguments regarding the construction of “reference” warrants some discussion. To the extent that Patent Owner views the term “reference” as coextensive with the term “link,” we have reason to believe the scope of the term “reference” may differ from the scope of the term “link.” As Patent Owner observes, the ’192 patent discloses “[b]y ‘reference’ what is meant is that there is a connection between the second message and the first message. The connection may be for example a link.” Ex. 1001, 4:25–27; Prelim. Resp. 14. Even if this disclosure indicates that a link is a type of reference, it does not say that every reference is a link. Indeed, the ’192 patent’s disclosure of “a (reference) object . . . that links or otherwise references a chat message” may suggest the terms “link” and “reference” are not coextensive. Ex. 1001, 3:26–29. For example, this disclosure may suggest that a reference can be but need not be a link. The parties are asked to address this observation during the trial.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Additionally, we find Petitioner has shown sufficiently that a person of ordinary skill in the art would have had motivation and a reasonable expectation of success for modifying Ji’s system to use a reference in the manner disclosed by Sarafa. Pet. 14–18, 20–24, 50–53. Similarly, we find Petitioner has shown sufficiently that a person of ordinary skill in the art would have had motivation and a reasonable expectation of success for combining the cited portions of Oh’s disclosure with the disclosures of Ji and Sarafa. Id. at 18–20, 24–26, 38–44. At this stage, Patent Owner does not dispute that it would have been obvious to combine the cited portions of the disclosures of Ji, Sarafa, and Oh. Furthermore, we find a reasonable likelihood that Petitioner will establish that the allegedly obvious combination of Ji’s, Sarafa’s, and Oh’s disclosures would have resulted in a messaging system implementing a reference in all the ways recited in the challenged claims. At this stage, our review of the record does not reveal an apparent distinction between the challenged claims and a system that would have resulted from combining the disclosures of Ji, Sarafa, and Oh in the manner proposed by Petitioner. Here again, Patent Owner does not address Sarafa, Oh or the proposed combination of their disclosures with Ji; Patent Owner only argues Ji does not disclose a reference. In sum, based on the proposed combination of the references’ teachings, Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness assertions, even if Ji does not disclose a reference.” slip op. at 37
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,728,192
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.