- PTAB · Mar 20, 2024 · IPR2023-01373 · APJ Carl W Whitehead Jr · IPR · Institution
The Board instituted review of claims 1–8 and 13–22 on the asserted § 103 ground over Bigbee and Nguyen after finding a reasonable likelihood of prevailing on claim 19.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts a person of ordinary skill in the art “would have at least a bachelor’s degree in Computer Science, Computer Engineering, or equivalent, and at least two years of prior work experience with computer architecture design, including fault tolerant computer architecture design.” Pet. 1 (citing Ex. 1002 ¶ 29). Petitioner further asserts that “[a]dditional education could substitute for professional experience and vice versa.” Id. (citing Ex. 1002 ¶ 29).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Petitioner contends that the terms ‘“detection of loss of lockstep’ and ‘detecting loss of lockstep’ should be construed to include both mismatch errors and errors that may eventually result in mismatch errors.” Pet. 17 (citing Ex. 1001, 4:56–67). In other words, Petitioner contends the terms include “a ‘precursor to lockstep mismatch,’” i.e., “detecting an error that may eventually cause a lockstep mismatch error.” Id. (citing Ex. 1001, 4:56–67). Petitioner contends the “specification provides detecting these two types of errors as examples of detection of LOL.” Id. (citing Ex. 1001, 2:26–59, 4:37–67). Petitioner contends the specification states that “[l]ockstep mismatch is one way of detecting an LOL [between the master processor 12A and slave processor 12B].” Id. (citing Ex. 1001, 4:56–57). Petitioner contends the specification “is consistent with the dependent claims, which expressly define detecting loss of lockstep as either of the two options.” Id. at 18 (citing Ex. 1001, 15:7–19, 30–49 (claims 1, 4–8)). Petitioner contends that the terms ‘“lockstep is recoverable’ and ‘loss of lockstep is recoverable’ should be construed as ‘lockstep is recoverable from the detected loss of lockstep’ because the specification only describes lockstep recovery from the detected LOL—‘whether the detected LOL is a recoverable LOL.”’ Id. at 19 (citing Ex. 1001, 5:56–6:1). At this stage of the proceeding, Patent Owner does not challenge Petitioner’s position on these terms. See Prelim. Resp. 13. At this stage of the proceeding, only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F. 3d 795, 803 (Fed. Cir. 1999))). After reviewing the parties’ evidence and contentions, we do not observe a dispute over the meaning of these terms that is necessary to resolve at this stage. Accordingly, we determine that we do not need to expressly construe any term for purposes of this Decision.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Furthermore, on February 10, 2024, the Eastern District of Texas granted Foras Technologies Ltd., Kia Corp., and Kia America Inc.’s Joint Motion to Stay in that case. Ex. 1035, 1–2; Ex. 1036; see Reply 1–2. Therefore, because the trial in the district court litigation has been stayed, this factor weighs heavily against discretionary denial.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Biosystems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious. slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,502,958 - PTAB · Mar 20, 2024 · IPR2023-01401 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 17–25 on all asserted grounds, finding a reasonable likelihood that Hisense would prove at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute 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); see 37 C.F.R. § 42.108 (2023). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’331 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find in applying either parties’ definition for what comprises the level of likelihood that it would prevail in proving the unpatentability of the challenged claims. At this stage of the proceeding, however, we adopt Petitioner’s proposed definition of the level of skill for one of ordinary skill in the art. Pet. 9. This definition for the level of ordinary skill is consistent with the ’331 patent and the asserted prior art, and we apply it in our analysis below. During trial, and in accordance with our Rules, the parties should address what substantive effect, if any, different proposed definitions for the level of ordinary skill in the art have on analyzing what the prior art teaches or in otherwise evaluating unpatentability of the challenged claims.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b); 83 Fed. Reg. 51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying such standard, claim terms generally are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Pet. 9; Prelim. Resp. 5–6. Thus, for purposes of our Decision on Institution, we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We agree with Petitioner and find that one of ordinary skill in the art would have been motivated to combine Lys and Grootes’s teachings to have a current supply circuit for each LED string in Lys’s lighting unit to achieve better color and brightness control and uniformity, and to achieve a desired white point. Pet. 18–20 (citing Ex. 1003 ¶¶ 82–84, 89), 24 (citing Ex. 1003 ¶ 61). At this stage, we find persuasive Mr. Betancourt’s cited testimony on this issue as it is consistent with Lys and Grootes’s teachings. For example, Lys teaches with respect to a lighting unit 102 that “[t]he sources 300 can also be mixed, including sources 300 of varying wavelength, intensity, power, quality, light output, efficiency, efficacy or other characteristics,” allow light of different colors or color temperatures, including color temperatures of white.” Ex. 1005, 37:3–8 (emphasis added). And Grootes explains, for example, that “[e]ach current source 40–42 is controllable to control the brightness of its associated LEDs to achieve the desired white point.” Ex. 1006 ¶ 41. We also agree with Petitioner and find that one of ordinary skill in the art would have had a reasonable expectation of success in combining Lys and Grootes’s teachings to produce a lighting system having separate circuits for supplying each of the currents for the LED strings. Pet. 18; Ex. 1003 ¶ 88. Nor at this stage do we find that Lys’s lighting units having separate current supply circuits for each LED string would have been uniquely challenging or difficult for one of ordinary skill in the art. See Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419–20) (finding that obviousness was supported because there was no evidence that making the combination was uniquely challenging or difficult for one of ordinary skill in the art). Accordingly, at this stage, we find that Petitioner has provided sufficiently articulated reasoning with rational underpinning to support combining Lys and Grootes in the manner Petitioner proposes. See In re Kahn, 441 F.3d at 988; see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374 (Fed. Cir. 2019) (“A motivation to combine may be found ‘explicitly or implicitly in market forces; design incentives; . . . and the background knowledge, creativity, and common sense of the person of ordinary skill.’”) (quoting ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1371 (Fed. Cir. 2018)).” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,941,331 - K/S Himpp v. Bragi GmbHInstitutedPTAB · Mar 19, 2024 · IPR2023-01205 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that Hain anticipates claims 1, 2, and 4 and the stated combinations render claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“While we acknowledge that Shaffer was before the Office, that alone is not sufficient to meet the first prong of the Advanced Bionics test. Factor (b) under Becton, Dickinson, which is also considered under the first prong of Advanced Bionics, examines “the cumulative nature of the asserted art and the prior art evaluated during examination.” Advanced Bionics, Paper 6 at 9 n.10. We note that there is no evidence or argument that Hain or Sørensen were previously considered by the Office or cumulative of art that was in front of the Office. Although one reference, Shaffer, was previously presented to the Office, in each asserted ground, Petitioner relies on either Hain or Hain in combination with Sørensen. Because neither of those references was before the office, Patent Owner has not satisfied the first prong of the Advanced Bionics test.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, 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 Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to 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
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“All of these arguments center on the claim language’s recitation of “one or more of the wireless earpieces.” Id. at 16. Patent Owner agrees with Petitioner that “[i]f both hearing aids detect a magnetic field, such as by being located in the disclosed storage box, the hearing aids are automatically switched off.” Id. at 17; see also Ex. 1004 ¶ 13 (“[I]f both hearing aids detect a relatively strong magnetic field in their immediate vicinity, then this is an indication that the hearing aids are located in the storage box and can be switched off.”). Patent Owner does not appear to dispute that Hain teaches a high power mode when both earpieces do not detect a magnetic field. See Prelim. Resp. 17; see also Ex. 1004 ¶ 21 (“For as long as no magnetic field is detected, the hearing aid is in ‘normal operation.’”). On the current record, we are thus persuaded that Hain discloses a low power mode when both earpieces detect a magnetic field and a high power mode when both earpieces do not detect a magnetic field. The parties’ dispute centers on the mixed situation when one earpiece detects a magnetic field and one does not. Patent Owner directs us to Hain’s disclosure of a “telephone mode” when “there is a magnetic field applied to one hearing aid but not the other, such as by a telephone receiver emitting a magnetic field.” Prelim. Resp. 16. According to Patent Owner, in order “[t]o anticipate the claims, Hain must disclose an earpiece that switches to a high power mode when only it – and not both it and its pair – no longer detects a magnetic field.” Id. at 17. Patent Owner, however, also asserts that “to anticipate the claims, Hain must disclose an earpiece that switches to a low power mode when only it – and not its pair – detects a magnetic field.” Id. at 21. Thus, we understand Patent Owner to be arguing that each earpiece must independently move to a high or low power state based on whether it detects a magnetic field. We, however, are not persuaded that the claim language is so limited. Limitation 1B recites “powering circuitry of the wireless earpieces utilizing a high-power mode in response to detecting a magnetic field is not applied to one or more of the wireless earpieces.” Limitation 1C recites “altering the power sent to the circuitry of the wireless earpiece to a high-power mode in response to detecting a magnetic field is not applied to one or more of the wireless earpieces.” Thus, the disputed portions of these limitations are met if “one or more” of the earpieces detects that a magnetic field is not present and goes into a high power mode. As noted above, on the current record, we are persuaded that Hain discloses that an earpiece goes to a high power state if it does not detect a magnetic field. See Ex. 1004 ¶ 21 (“For as long as no magnetic field is detected, the hearing aid is in ‘normal operation.’”).” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“F. Obviousness over Hain and Shaffer Petitioner asserts that claims 1–6, 8–12, and 14 are unpatentable under 35 U.S.C. § 103 as obvious over Hain and Shaffer, citing the Declaration of Dr. Kiaei for support. Pet. 29–61 (citing Ex. 1002). Patent Owner argues that this ground must fail because Shaffer was previously presented to the Office and it reiterates its arguments addressed above regarding the disclosures of Hain. Prelim. Resp. 21–26. For reasons discussed above, we are not persuaded by those arguments. We have reviewed Petitioner’s arguments and evidence and based on the evidence in the present record, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that the combination of Hain and Shaffer teaches all of the limitations recited in claims 1–6, 8–12, and 14. G. Obviousness over Hain, Shaffer, and Sørensen Petitioner asserts that claims 3, 5–7, and 9–14 are unpatentable under 35 U.S.C. § 103 as obvious over Hain, Shaffer, and Sørensen, citing the Declaration of Dr. Sayfe Kiaei for support. Pet. 61–67 (citing Ex. 1002). Patent Owner argues that this ground must fail because Shaffer was previously presented to the Office and it reiterates its arguments addressed above regarding the disclosures of Hain. Prelim. Resp. 27. For reasons discussed above, we are not persuaded by those arguments. We have reviewed Petitioner’s arguments and evidence and based on the evidence in the present record, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that the combination of Hain, Shaffer, and Sørensen teaches all of the limitations recited in claims 3, 5–7, and 9–14.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,397,688 - K/S Himpp v. Bragi GmbHInstitutedPTAB · Mar 19, 2024 · IPR2023-01204 · APJ Larry J Hume · IPR · Institution
The Board instituted IPR on claims 1–13 on all six asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In light of the argument and evidence before us, we find that Shaffer was previously presented to the Office and as such, the first prong of the Advanced Bionics test is satisfied.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.4 (2023). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim. Therefore, we institute an inter partes review of all challenged claims 1–13 of the ’014 patent, based on the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Supported by the testimony of Dr. Kiaei, Petitioner asserts the level of ordinary skill in the art corresponds to a person having “a bachelor’s degree in Electrical Engineering, or equivalent experience, and one to two years of experience in the field of wireless electronic devices and battery systems, particularly wireless earpieces such as wireless headphones and hearing aids.” Pet. 17 (citing Ex. 1002 ¶ 25). At this stage, Patent Owner “applies Petitioner’s definition of a POSITA [(person of ordinary skill in the art)]” (Prelim. Resp. 15 (citing Pet. 17)), but “reserves the right to present issues relating to the level of a POSITA should the Board institute this IPR.” Prelim. Resp. 15. Based on the current record, and for purposes of this Decision, we preliminarily adopt Petitioner’s position as to the level of ordinary skill in the art at the time of the claimed invention, as articulated above. On this record, we are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’014 patent and the asserted prior art. This definition also is supported by the testimony of Dr. Kiaei. See Ex. 1002 ¶ 25. In addition, Patent Owner “applies Petitioner’s definition of a POSITA . . . but reserves the right to present issues relating to the level of a POSITA should the Board institute this IPR and in other proceedings involving the ’014 Patent.” Prelim. Resp. 15 (citing Pet. 17).” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“10–13, we disagree with Patent Owner’s narrow construction requiring that the smart case includes a rechargeable battery utilized to charge a wireless device. The patent discloses an illustrative embodiment that includes a presumably rechargeable battery, i.e., “[t]he smart case 102 encloses a battery, and various other circuitry (not shown) . . . . For example, the battery of the smart case 102 may be utilized to charge the wireless earpieces 142, 144 any number of times before the smart case 102 and corresponding battery may require charging.” Ex. 1001, 3:28–37. However, as quoted below, we note the ʼ014 patent also discloses alternative embodiments of the smart case that do not require a rechargeable battery to recharge a wireless device: The smart case 402 may have any number of configurations and include various circuitry, connections, and other components. The smart case 402 is one potential embodiment of the smart case 102 of FIGS. 1–3. In one embodiment, the smart case 402 may include a battery 404, a logic engine 406, a memory 408, interfaces 410, 411, a transceiver 412, and a magnet 414. The battery 404 is a power storage device configured to charge the power storage system of the wireless earpieces 401 once or multiple times. In other embodiments, the battery 404 as well as the batteries of the wireless earpieces 401 may represent a fuel cell, thermal electric generator, piezo electric charger, solar charger, ultra-capacitor, or other existing or developing power storage technologies. Ex. 1001, 6:9–22 (emphases added). Accordingly, at this stage of the proceeding, in connection with claims 4, 6–8, and 10–13, we decline to adopt Patent Owner’s proffered claim construction of the phrase “smart case” that requires a rechargeable battery utilized to recharge a wireless device. No further express construction is required for the purposes of this Decision.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,117,014 - PTAB · Mar 14, 2024 · IPR2023-01385 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1–7, 10–12, 14–21, and 23 on all asserted grounds, finding a reasonable likelihood that Chou renders claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim of the ’812 patent. We therefore institute inter partes review as to all of the challenged claims of the ’812 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Based on the current record, we determine that Petitioner has established compliance with the statutory requirement under 35 U.S.C. § 312(a)(2) to identify all real parties in interest. C. The ’812 Patent” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We regard Petitioner’s definition as consistent with the complexity of the technology described in the ’812 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Patent Owner’s use of the term “technical field” is unduly vague. Therefore, for the purpose of this Decision, we adopt Petitioner’s proposed formulation. C. Claim Construction” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“On this record, we preliminarily agree with Patent Owner that the ’812 patent shows alternative ways for a reflector sheet “to conform to a shape of a protruding feature” on a lighting tile that does not demand the reflector sheet have “the same shape, outline, or contour of a protruding feature” as Petitioner’s proposed construction in the Underlying Litigation would require. To illustrate this, Figures 3 and 4 from the ’812 patent are shown in their entirety below.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,690,812 - PTAB · Feb 21, 2024 · IPR2023-01281 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–23 on all asserted § 103 grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to all of the challenged claims of the ’878 patent on all of the asserted grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have possessed a bachelor’s degree in electrical engineering or computer science, 8 U.S. Pat. Pub. 2006/0282328 A1, published Dec. 14, 2006 (Ex. 1010, “Gerace”). and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 5 (citing Ex. 1002 ¶¶ 10–14). At this time, Patent Owner does not challenge Petitioner’s description of the level of ordinary skill in the art. Prelim. Resp. 3. We are persuaded that Petitioner’s description is consistent with the prior art and patent specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we adopt Petitioner’s description.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “does not believe claim construction is necessary at this time.” Pet. 7. Patent Owner “does not believe that any terms require express construction to resolve the parties’ dispute.” Prelim. Resp. 4. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“b) Entitlement of Baig to Earlier Effective Filing Date Petitioner asserts that Baig is entitled to the November 10, 2006 filing date of Provisional Application No. 60/858,204 (Ex. 1004, “’204 Provisional”), and is prior art to the ’878 Patent under pre-AIA 35 U.S.C. § 102(e). Pet. 9. Petitioner asserts that the ’204 Provisional provides support for the disclosure of Baig and provides § 112 support for at least one claim in Baig. Id. Petitioner asserts that there are no material differences between Baig and the ’204 Provisional. Id. at 10 (citing Ex. 1002 ¶ 43 (citing Ex. 1005 (redline comparison of Ex. 1003 and Ex. 1004))). Petitioner further contends that the ’204 Provisional includes 17 claims that are identical to the claims in Baig, and, therefore, provides written description support for the corresponding claims in Baig. Id. Petitioner also asserts the ’204 Provisional provides enablement. Id. At this preliminary stage in which Patent Owner has not challenged the status of Baig as prior art, Petitioner has shown sufficiently that Baig is entitled to the earlier effective filing date of the ’204 Provisional Application. Although the burden of production may shift between the parties during trial, the burden of persuasion to show that Baig is entitled to an earlier effective filing date always remains with Petitioner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,715,878 - PTAB · Feb 13, 2024 · IPR2023-01343 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted inter partes review of claims 1–7, 13–15, 17, and 18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. See 35 U.S.C. § 314(a) (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.”) We therefore institute inter partes review as to all of the challenged claims of the ’494 patent and all asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 138 S.Ct. 1348, 1356 (2018); 37 C.F.R. § 42.108(a) (“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.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art of the ’494 patent would have possessed “an undergraduate degree in electrical engineering, computer engineering, computer science, or similar disciplines, along with two years of professional experience working with the research, design and/or development of semiconductors, processors, power consumption and thermal power management, and related firmware and software or an equivalent level of skill, knowledge, and experience.” Pet. 12–13 (citing Wyatt Decl. ¶ 21). Petitioner adds, “[t]he more education one has, the less experience needed to attain an ordinary level of skill. Similarly, more experience in the field may serve as a substitute for formal education.” Id. at 13 (citations omitted) At this stage, Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“B. Claim Construction We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner states, “[u]nless indicated otherwise, all claim terms herein are given [their] ordinary and customary meaning.” Pet. 12. Patent Owner does not dispute Petitioner’s position or discuss claim construction. Therefore, we determine there are no claim terms that need to be construed at this stage.” slip op. at 13
Claim constructioncites KSRPatents in suitUS 8,898,494 - PTAB · Feb 13, 2024 · IPR2023-01333 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted obviousness grounds, finding a reasonable likelihood that Mercedes-Benz would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“response. Paper 9. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. See 35 U.S.C. § 314(a) (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.”) We therefore institute inter partes review as to all of the challenged claims of the ’080 patent and all of the asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 138 S.Ct. 1348, 1356 (2018); 37 C.F.R. § 42.108 (a) (“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.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“In this proceeding, Patent Owner has not requested that we exercise our discretion to deny institution under either § 314(a) or § 325(d). Therefore, we do not reach those issues here. In the ’567 IPR, Patent Owner argued that the petition there should be denied under § 325(d). ’567 IPR, Paper 12 at 10–22. In our Institution Decision in the ’567 IPR, we addressed that issue and, after analyzing Patent Owner’s arguments, we were not persuaded to exercise our discretion to deny institution under § 325(d). Id., Paper 13 at 13–19.” slip op. at 14
- Other 314aNot reached
“In this proceeding, Patent Owner has not requested that we exercise our discretion to deny institution under either § 314(a) or § 325(d). Therefore, we do not reach those issues here. In the ’567 IPR, Patent Owner argued that the petition there should be denied under § 325(d). ’567 IPR, Paper 12 at 10–22. In our Institution Decision in the ’567 IPR, we addressed that issue and, after analyzing Patent Owner’s arguments, we were not persuaded to exercise our discretion to deny institution under § 325(d). Id., Paper 13 at 13–19.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As noted, Patent Owner has expressly waived filing a preliminary response. Paper 9. At this stage, therefore, Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,049,080 - PTAB · Feb 7, 2024 · IPR2023-01203 · APJ John A Hudalla · IPR · Institution
The Board instituted review of claims 6, 8, 11, 12, and 14–20 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “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 that follow, we institute an inter partes review as to claims 6, 8, 11, 12, and 14–20 of the ’253 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Meinhart, Petitioner contends a person of ordinary skill in the art “would have had at least [a] Bachelor of Science degree in mechanical engineering, electrical engineering, or a similar degree with one or two years of graduate school training or one to two years of industry experience in the fields of mechanical design, fluid mechanics, heat transfer, or electronics cooling.” Pet. 7 (citing Ex. 1003 ¶ 15). Petitioner further notes that “[l]ack of work experience could have been remedied by additional education, and vice versa,” and that “[s]uch academic and industry experience would be necessary to appreciate what was obvious and/or anticipated in the industry and what a [person of ordinary skill in the art] would have thought and understood at the time.” Id. at 7–8 (citing Ex. 1003 ¶ 16). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art at this time. Prelim. Resp. 5. 3 The present record does not include any evidence of secondary considerations of nonobviousness. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’253 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Interpretation In an inter partes review, we construe each 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), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Based on the present record, we are persuaded preliminarily that an ordinarily skilled artisan considering Karppanen’s teachings would have had reason to position Karppanen’s transducers to measure the temperature of the airflow in the front channel. Karppanen expressly discloses “a circulating air flow” that standardizes the temperatures of the display and display casing. Ex. 1008, 9:9–14, 9:18–25. Karppanen’s circulating fans that create the airflow are controlled based on temperatures measured within the device by transducers. Id. at 9:14–18. Although Karppanen discloses disposing the transducers “[i]n the device and display casing,” it does not expressly state that they measure the temperature of the airflow in the front channel. Id. at 9:14–16. Nevertheless, Dr. Meinhart testifies that an ordinarily skilled artisan “would position one or more temperature sensors in locations to sense temperatures that indicate the temperatures of certain electronics” and that one location indicative of display temperature is “in a region of air flow immediately downstream from the display element, after air has flown past the display.” Ex. 1003 ¶¶ 168, 170. We find this slight modification to be a predictable variation of Karppanen based on the established function of its transducers, which is to directly or indirectly measure the temperature of LCD components. See KSR, 550 U.S. at 401 (“A [tribunal] must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.”).” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,842,253 - PTAB · Feb 7, 2024 · IPR2023-01202 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1–7, 9–11, and 13 on 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
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “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 that follow, we institute an inter partes review as to claims 1–7, 9–11, and 13 of the ’311 patent on all grounds of unpatentability presented.” slip op. at 2
- Adverse judgmentAdverse judgmentOther
“Patent Owner’s Disclaimer of Claim 12 As indicated above, Patent Owner filed a statutory disclaimer of claim 12 of the ’311 patent. See Ex. 2007. In view of Patent Owner’s statutory disclaimer, we treat claim 12 as having never been part of the ’311 patent. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in [35 U.S.C. §] 253 to mean that the patent is treated as though the disclaimed claims never existed.”) (citing Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)). And, because no inter partes review will be instituted based on disclaimed claims, we do not consider claim 12 to be within the scope of this proceeding. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims”); see also General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution of inter partes review in view of a statutory disclaimer of all challenged claims). Thus, we confine our unpatentability analysis to claims 1–7, 9–11, and 13, the challenged claims of the ’311 patent that have not been disclaimed.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Meinhart, Petitioner contends a person of ordinary skill in the art “would have had at least a Bachelor of Science degree in mechanical engineering, electrical engineering, or a similar degree with one or two years of graduate school training or one to two years of industry experience in the fields of mechanical design, fluid mechanics, heat transfer, or electronics cooling.” Pet. 7 (citing Ex. 1003 ¶ 15). Petitioner further notes that “[l]ack of work experience could have been remedied by 3 The present record does not include any evidence of secondary considerations of nonobviousness. additional education, and vice versa,” and that “[s]uch academic and industry experience would be necessary to appreciate what was obvious and/or anticipated in the industry and what a [person of ordinary skill in the art] would have thought and understood at the time.” Id. (citing Ex. 1003 ¶ 16). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art at this time. Prelim. Resp. 5. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’311 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “[n]othing in the specification or prosecution history of the ’311 Patent expressly defines any term appearing in any claim of the ’311 Patent,” and that “the Board does not need to construe any claim term for purposes of evaluating the prior art in this Petition.” Pet. 7. Petitioner concludes that “for purposes of this proceeding only, Petitioner believes that no claim term requires construction.” Id. Likewise, Patent Owner contends that “claim construction is not necessary for the Board to determine that the Petition fails to demonstrate a reasonable likelihood that any challenged claim of the ’311 patent is unpatentable.” Prelim. Resp. 5. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,223,311
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.