- PTAB · Jan 17, 2024 · IPR2023-01026 · APJ Aaron W Moore · IPR · Institution
Instituted IPR on claims 1–36 on all petition grounds; the Board found 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
“We may institute an inter partes review if “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). For the reasons provided below, and based on the record as it now stands, we determine that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute inter partes review. B.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention “would have had an undergraduate degree in 2 U.S. Patent App. Pub. No. 2003/0137849 A1 (Exhibit 1005). 3 PCT Patent App. Pub. No. WO 01/01038 (Exhibit 1006). 4 U.S. Patent No. 4,970,628 (Exhibit 1007). 5 U.S. Patent No. 6,144,158 (Exhibit 1008). 6 U.S Patent No. 6,049,749 (Exhibit 1009). mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems” and that more education could compensate for less experience and vice versa. See Pet. 8–9 (citing Ex. 1003 ¶ 33). Patent Owner “does not dispute Petitioner’s proposed skill level for a person of ordinary skill in the art” (Prelim. Resp. 7), and, as we generally agree that it is consistent with the subject matter disclosed in the ’503 patent and the prior art, we adopt it for purposes of this decision. B.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner does not seek construction of any claim terms and asserts that “all claim terms [discussed in the Petition] are given [their] ordinary and customary meaning.” Petition 8. Patent Owner asserts that “[n]o claim construction is necessary” at this time because its “arguments for denial do not hinge on the outcome of an actual controversy about claim interpretation.” Prelim. Resp. 7. There being no present dispute about the meaning of any claim term, we find that no express claim construction is necessary to resolve the issues addressed in this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“First, Patent Owner asserts that Alden is “fatally ambiguous” and “fails to provide an enabling disclosure” because it describes the use of two-dimensional sensors and switch arrays (as shown in Figure 3, below left), but the headlamp embodiment on which Petitioner relies (which is depicted in Figure 5, excerpted below right), is illustrated as having just a single line of LEDs. See Prelim. Resp. 19–23. Alden’s Figures 3 and 5 We find this argument unpersuasive because we conclude, on the present record, that one of ordinary skill in the art (see Section II.A), would understand that Figure 5 is a schematic/sectional type of drawing intended to show generally how the system components are connected and how the LEDs would project light through the lens, and that for clarity it omits other LEDs that would be necessary to produce a two-dimensional lighting pattern. We find that the skilled artisan would recognize that a headlamp intended to produce a pattern similar to that reflected in the control circuits of Figure 3 would include additional rows of LEDs passing through the center of the lens at different angles arranged around the center of the lens. Alternatively, we conclude that one of ordinary skill in the art wishing to use a headlamp with just a single line of LEDs would understand that the sensor and/or control circuitry would need to be tailored to such an arrangement.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,894,503 - PTAB · Jan 16, 2024 · IPR2023-01122 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 1–33 on both asserted §103 grounds and granted Porsche’s motion to join IPR2022-01586, subject to participation restrictions.
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 . . . 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). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim, and we institute inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denialDenied
“the VW IPR and having determined that the threshold for institution of inter partes review has been met, we determine that the Petition here also presents a reasonable likelihood of prevailing on the challenges to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 68–75) are not persuasive.8 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See IPR2022-01586, Paper 7.” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantially identical to the petition in the VW IPR, contains the same grounds based on the same evidence, and relies on a substantively identical declaration. Petitioner also represents that joinder will not impact the VW IPR schedule. Mot. 6.” slip op. at 7
Discretionary denialPatents in suitUS 11,208,029 - PTAB · Dec 12, 2023 · IPR2023-01040 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 48–87 based on the petition’s asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“previously challenged the same claims of the same patent. General Plastic, Paper 19, 16. Here, Patent Owner asserts that although Petitioner did not do so, we should consider Petitioner as having a substantial relationship to Volkswagen, which is also as a defendant in Patent Owner’s infringement suit. Prelim. Resp. 50–51. In that regard, Patent Owner relies on Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11, 2 (PTAB April 12, 2019) (precedential). We do not agree, because Valve involved parties that were accused of infringement based on the same product. Valve, Paper 11, 9–10. Here, Patent Owner asserts that Petitioner is accused of infringing “based on the same type of headlight technology” (Prelim. Resp. 51), but that is insufficient. Patent Owner asserts that both parties’ accused headlights were “developed jointly with Hella KGaA Hueck & Co.” (id.), but that also is an insufficient connection for us to consider two parties substantially related for purposes of discretionary denial. As Petitioner points out, it and VW are direct competitors, and they are accused of infringing based on two different products, not as a supplier and customer of a single product, as at issue in Valve. Prelim. Reply 1. Additionally, although Patent Owner asserts that Petitioner and VW “have a history of coordinating serial IPR petitions against asserted patents” (Prelim. Resp. 52), the facts of each case are unique and we will not infer a motive from prior proceedings. Having considered Patent Owner’s arguments,8 we conclude that the first General Plastic factor weighs strongly against discretionary denial.” slip op. at 8
- Skill levelSkill level petitioner adoptedOther
“B. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that an ordinarily skilled artisan “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems.” Pet. 9 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute that level of ordinary skill in the art. Prelim. Resp. 6. We adopt the undisputed level of ordinary skill in the art for purposes of this decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. CLAIM CONSTRUCTION The parties agree that no express claim construction is required at this stage. Pet. 8; Prelim. Resp. 6. As discussed below, however, Patent Owner applies and argues for a particular construction of “classifying an object.” See infra at 11 (§ II.D.1.a). We discuss that potential construction below. Beyond that term, we agree with the parties and therefore do not further construe the claims for this decision. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“an object is an oncoming vehicle or anything else, i.e., classifying an object.” Prelim. Resp. 17. In Patent Owner’s view, Alden’s CPU instead “simply determines whether detected incoming light has a threshold intensity and controls the beam segments produced by the LED elements 119 of headlight 123 accordingly.” Id. at 17–18. Patent Owner takes the position that “classifying an object requires identifying an object and distinguishing that object among multiple classes or types of objects, such as distinguishing between vehicles, road signs, and pedestrians as described in the ’551 patent. Id. at 18 (citing Ex. 1001, 44:36–45:44, 52:66–53:4). We do not agree that the two specification passages Patent Owner cites compel such a construction. The first passage relates to a preferred embodiment that includes “a machine vision system with pattern recognition capabilities as is known in the art.” Ex. 1001, 44:37–40. The ’551 patent describes that, using known pattern-recognition methods, camera outputs “are analyzed by appropriate computational means employing trained pattern recognition techniques to classify, identify or locate the contents.” Id. at 44:63–45:3. Although the specification states that known technologies can be sued to classify an image’s contents, that does not define or restrict the understanding of what is required to “classify” an object. The second passage states that, “[u]sing color and pattern recognition techniques it is possible to determine what is a sign.” Id. at 52:66–67. To the extent that informs our understanding of “classify,” is supports a simple correlation between an image and an object. It does not include distinguishing the object among multiple classes or types of objects as Patent Owner contends.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,955,551 - PTAB · Dec 12, 2023 · IPR2023-01039 · APJ Jason W Melvin · IPR · Institution
Instituted review of claims 8, 10–18, and 24–47 based on the petition grounds because Mercedes-Benz showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denialDenied
“1. Lack of particularity First, Patent Owner contends that the Petition lacks particularity under 35 U.S.C. § 312(a)(3) because it improperly combines anticipation and obviousness 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), effective March 16, 2013, amended the applicable statutes. Because the application from which the ’551 patent issued was filed before this date, the pre-AIA versions of §§ 102 and 103 apply. 4 US 2003/0137849 A1, filed Jan. 22, 2002 (Ex. 1005). 5 US 6,049,749, issued Apr. 11, 2000 (Ex. 1006). 6 US 2002/0057572 A1, published May 16, 2002 (Ex. 1007). 7 WO 2001/07538 A2, published Sept. 27, 2001 (Ex. 1008). grounds based on Alden alone. Id. at 49–52. We do not agree that the Petition’s approach presents a problem or is hard to understand. As discussed below, we agree with Patent Owner that Petitioner has not adequately supported its obviousness contention based on Alden alone (see infra at 17 (§ II.D.2)), but that does not undermine the anticipation ground or make it difficult to understand. Accordingly, we do not agree with Patent Owner that the Petition warrants discretionary denial for lack of particularity.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Resp. 54–59. In that regard, Patent Owner relies on Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11, 2 (PTAB April 12, 2019) (precedential). We do not agree, because Valve involved parties that were accused of infringement based on the same product. Valve, Paper 11, 9–10. Here, Patent Owner asserts that Petitioner is accused of infringing “based on the same type of headlight technology” (Prelim. Resp. 55), but that is insufficient. Patent Owner asserts that both parties’ accused headlights were “developed jointly with Hella KGaA Hueck & Co.” (id. at 56), but that also is an insufficient connection for us to consider two parties substantially related for purposes of discretionary denial. As Petitioner points out, it and VW are direct competitors, and they are accused of infringing based on two different products, not as a supplier and customer of a single product, as at issue in Valve. Prelim. Reply 1. Additionally, although Patent Owner asserts that Petitioner and VW “have a history of coordinating serial IPR petitions against asserted patents” (Prelim. Resp. 56), the facts of each case are unique and we will not infer a motive from prior proceedings. Having considered Patent Owner’s arguments,8 we conclude that the first General Plastic factor weighs strongly against discretionary denial.” slip op. at 9
- 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 . . . 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). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that an ordinarily skilled artisan “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems.” Pet. 9 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute that level of ordinary skill in the art. Prelim. Resp. 6. We adopt the undisputed level of ordinary skill in the art for purposes of this decision.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,955,551 - PTAB · Nov 14, 2023 · IPR2023-00718 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR of claims 1, 4, and 11–16 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denialNot reached
“We authorized the parties to submit additional briefing to address Patent Owner’s request for discretionary denial under 35 U.S.C. § 314. See Prelim. Resp. 5–11. Petitioner filed a Reply (Paper 7, “Prelim. Reply”) and Patent Owner filed a Sur-reply (Paper 8, “Prelim. Sur-reply”). We note that in the Sur-reply, Patent Owner has withdrawn its request for discretionary denial and the request is now moot. Prelim. Sur-reply 1.” slip op. at 2
- 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.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’825 patent. Accordingly, we institute an inter partes review of claims 1, 4, and 11–16 of the ’825 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelOther
“We perceive no significance to how any difference between the two definitions might affect our analysis. To the extent either party believes its proposed level of skill affects part of the unpatentability analysis, it should explain how during the instituted trial.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner construction§112(f) appliesDecided for petitioner
“Petitioner proposes to construe the term “means coupling” as governed by 35 U.S.C. § 112, ¶ 6, with a function of “coupling suitable power for energizing said thermostat from said space conditioning equipment to said thermostat” and a structure of “a (power) line and any equivalents.” Pet. 10–11. Patent Owner does not dispute this construction. Prelim. Resp. 4. Based on the record at this stage of the proceeding, we adopt Petitioner’s proposed constructions of this term.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,185,825 - PTAB · Nov 14, 2023 · IPR2023-00716 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 1–3 and 6–9 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’739 patent. Accordingly, we institute an inter partes review of claims 1–3 and 6–9 of the ’739 patent on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denialNot reached
“1 We authorized the parties to submit additional briefing to address Patent Owner’s request for discretionary denial under 35 U.S.C. § 314. See Prelim. Resp. 5–11. Petitioner filed a Reply (Paper 7) and Patent Owner filed a Surreply (Paper 8). In its Sur-Reply, Patent Owner withdraws its request for discretionary denial and the issue, therefore, is moot. Paper 8, 1.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’739 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Additionally, Petitioner’s asserted level of ordinary skill is supported by the testimony of its declarant Dr. Baker. Ex. 1002 ¶ 54. Patent Owner’s asserted level of ordinary skill is overly narrow as it requires at least two years’ experience in temperature controls, electronic thermostats, and HVAC controls. Prelim. Resp. 4. Independent claim 1 recites an “environmental controller,” which is not limited controlling HVAC or temperature functions. Ex. 1001, 8:52–56. The ’739 patent explains that an environmental control may also turn lighting on or off and sense and responds to environmental gases or smoke. Id. at 6:62–7:2. Unlike Petitioner’s asserted level of ordinary skill in the art, which is supported by the testimony of Dr. Baker, at this stage of the proceeding, Patent Owner provides no support for its asserted level of ordinary skill. See Prelim. Resp. 4.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“Petitioner contends that two terms are means plus function terms, governed by 35 U.S.C. § 112 ¶ 6: “storage means” and “transmitter means.” Pet. 8. For the term “storage means,” Petitioner contends that the function is “storing as location data a physical location of the environmental controller” and the corresponding structure is “memory.” Pet. 9. Petitioner notes that this is Patent Owner’s proposed construction from the related district court litigation. Id. For the term “transmitter means,” Petitioner contends that the corresponding structure is “a modem with Internet or network connection.” Id. (citing Ex. 1001, 7:2–9, 7:20). Patent Owner does not dispute Petitioner’s proposed constructions. Prelim. Resp. 5. Based on the record at this stage of the proceeding, we adopt Petitioner’s proposed constructions of these terms.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,789,739 - PTAB · Nov 14, 2023 · IPR2023-00719 · APJ James P Calve · IPR · Institution
The Board instituted inter partes review of claims 1–4 and 11–15 on the asserted obviousness ground over Rosen, Rosen-II, and Smith.
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) (“The Board institutes the trial on behalf of the Director.”). 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). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Other
“E. Exercise of Discretion under 35 U.S.C. § 314(a) In its Preliminary Response, Patent Owner argues that the Fintiv factors support the exercise of our discretion under 35 U.S.C. § 314(a) to deny institution based on the Texas proceeding. Prelim. Resp. 7–13. Because Patent Owner has withdrawn its arguments concerning discretionary denial under 35 U.S.C. § 314(a) (see Ex. 3001), the issue is moot and we need not address it.” slip op. at 31
- Skill levelOther
“II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art would have had a Bachelor of Science degree in Electrical Engineering or a year or two of experience working with or designing processor-based systems with network connectivity, and more experience would compensate for less formal education and vice versa. Pet. 6–7 (citing Ex. 1002 ¶¶ 63–66). Patent Owner asserts that a person of ordinary skill in the art would have a bachelor’s degree in engineering, computer science, or a comparable field with at least 2 years’ experience in temperature controls, embedded control systems, electronic thermostats, or HVAC controls, or similarly relevant industry experience, with relevant experience substituting for education and vice versa. Prelim. Resp. 7. We perceive no significance to how any difference between the two definitions might affect our analysis. To the extent either party believes its proposed level of skill affects part of the unpatentability analysis, it should explain how during the instituted trial.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“1. “means coupling said communications interface and said first remote correspondent” The parties interpret this limitation under 35 U.S.C. § 112, ¶ 6 to perform a function of “coupling the communications interface and the remote correspondent” using “a serial link and/or data link and any equivalents.” Pet. 16–17; Prelim. Resp. 7; Ex. 1026, 76–80 (Joint Claim Construction and Prehearing Statement). The Court in the Texas proceeding has interpreted this term under Section 112, ¶ 6. See IPR2023-00715, Ex. 1056, 79–83, 113. The ’075 patent describes several different structures that couple the communications interface 14 with RC 15. Communications interface 14 can couple and communicate with RC 15 via link 16. Ex. 1001, 6:59–7:3, Fig. 1. Communications interface 14 couples to RC 15 via serial link 16, external modem 20, and Internet Service Provider (ISP) 21. Id. at 8:53–65, Fig. 2. Communications interface 14 also couples to RC 15 via integrated modem 24, data link 26, and ISP 21. Id. at 8:66–9:5, Fig. 3. Thus, the structures that perform this function include (1) a serial link, a modem external to the thermostat system, and a communications link provided by an ISP or (2) an integrated modem within the communications interface, a data link, and communications link provided by an ISP and equivalents. IPR2023-00715, Ex. 1056 (Claim Construction Order), 113.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,232,075 - PTAB · Nov 14, 2023 · IPR2023-00715 · APJ James P Calve · IPR · Institution
The Board instituted inter partes review of claims 18 and 20 on all three asserted obviousness grounds.
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) (“The Board institutes the trial on behalf of the Director.”). 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). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“1. “means coupling said communications interface and said first remote correspondent” The parties agree that this limitation is covered by 35 U.S.C. § 112, ¶ 6 to perform the function of “coupling the communications interface and the remote correspondent” with structure of “a serial link and/or data link and any equivalents.” See Pet. 7–8; Prelim. Resp. 5; Ex. 1016, 2–5 (Joint Claim Construction). The District Court in the Texas proceeding interpreted this term under Section 112, ¶ 6 with additional structures. Ex. 1056, 11–13, 107. The ’555 patent describes several structures by which communications interface 14 communicates with remote correspondent (RC) 15. In one embodiment, communications interface 14 communicates with RC 15 via serial link 16. Ex. 1001, 4:4–10, Fig. 1. Communications interface 14 may couple to RC 15 via serial link 16, external modem 20, and Internet Service Provider (ISP) 21. Id. at 6:1–11, Fig. 2. Communications interface 14 also couples to RC 15 via integrated modem 24, data link 26, and ISP 21. Id. at 6:12–18, Fig. 3. Thus, the structure to perform this function is (1) a serial link, a modem external to the thermostat system, and a communications link provided by an ISP or (2) a modem integrated into the communications interface, a data link, and a communications link provided by an ISP and equivalents thereof. See Ex. 1056 (Claim Construction Order), 13, 107.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“In the Texas proceeding, the limitation was construed under § 112, ¶ 6, as “displaying messages received from said remote correspondent” by the structure in Figure 7, column 5, lines 41–56, that establishes communication at predetermined times with a RC, reads current information from the RC, and displays the current information. Ex. 1056, 27–30, 108. We note that, based on the server-client relationship, processor 1 or RC 15 may start a transfer at predetermined times or on demand. Ex. 1001, 5:60–64. We disagree that Figure 5 provides structure for “displaying messages received from said first remote correspondent” because Figure 5’s flowchart does not display messages received from a RC. Figure 5’s flowchart parses key terms in information read from a RC, searches for values associated with a matched key term, and displays a message with components representative of the key terms and values found in the information. Ex. 1001, 4:4–65. The displayed messages concatenate prestored message components for matched key terms and associated values. Id. at 4:40–65, Fig. 6. Thus, as an example, the message “Current Montreal Temperature: +18C” concatenates a first prestored component “CURRENT MONTREAL TEMPERATURE” that is associated with a parsed term “temperature” received from a site providing local Montreal weather with a second message component “18 C” based on a value “18◦ C.” Ex. 1001, 4:40–65. This displayed message was not received from RC 15. Similarly, parsing stock quotation information to match a term “FMAGX” and an associated value of “102.75” causes display of a message “CURRENT QUOTE FOR MAGELLAN: 102.75” where the value 102.75 is concatenated with a component “CURRENT QUOTE FOR MAGELLAN.” Id. at 5:2–13; see Prelim. Resp. 6–7 (asserting if key terms and values are found when the received information is parsed, an alphanumeric message is generated for display by reading the prestored first message component that is a connotation of the matched key term from memory and concatenating it with a second message component for the value); Pet. Reply, 6–7. The claimed program thus displays information received from a remote correspondent by push or by pull. See Ex. 1001, 5:60–64.” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art. (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). “A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). In addition, “[i]f a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.” Id.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,619,555 - PTAB · Nov 14, 2023 · IPR2023-00717 · APJ Jason W Melvin · IPR · Institution
The Board instituted inter partes review of claims 1, 3–5, 7, 9, 11, and 14 based on the petition’s two §103 grounds.
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 . . . 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). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim, and we institute inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“‘Mode’ button does not disclose or render obvious the first legend indicative of a first control function” because such a legend must be the “contents of a non-static virtual button which are intuitive to a user.” Prelim. Resp. 17. We do not, however, construe “legend” to require that the legend appear on a button (i.e., the “content” of a button); instead, the claims encompass a legend that is “closely associated with” a button as described in the Specification. Ex. 1001, 3:53–56 (“[A]n image representative of a first virtual button may be shown on the touch screen display with graphics (alphanumeric characters and/or icons) on or closely associated with the first virtual button.”). By using a disjunctive, “or,” the Specification establishes that a legend need not be located on the button to which the legend corresponds.9 Geiwitz’s disclosures appear to satisfy the claim language because the asserted legend is indicative of a first control function of the thermostat. Additionally, Patent Owner has not provided any evidence that the “virtual button” in claim 1 excludes any static virtual buttons.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner asserts that locating the legend according to Bier’s teachings is a simple substitution for locating the legend according to Geiwitz’s teachings. Id. at 20–21. Accepting Patent Owner’s assertion that Bier does not disclose thermostat buttons does not undermine Bier’s disclosure of legend location. Further, we agree with Petitioner that skilled artisans had reason to use Bier’s legend-location teaching “to conserve space on Geiwitz’s touchscreen.” Pet. 21–22 (citing Ex. 1002 ¶¶ 125–127). See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (“[A]n implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.”). We conclude that, at this stage, Petitioner has provided adequate reasoning to combine Geiwitz with Bier.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Patent Owner contends that the Geiwitz provisional application “does not disclose a non-static virtual button . . . changed by touch and in consequence second control function is active when the second legend is viewable,” as claimed in 1(D)(3). Prelim. Resp. 17. Although the claim language does not recite a “non-static” button, Patent Owner appears to focus on the claimed “legend.” Petitioner asserts that Geiwitz teaches a “Mode” icon on its touchscreen, with a legend such as “COOL” (indicating a cooling mode of operation) that changes when the Mode icon is pressed to cycle through operational modes (cool, heat, and auto). Pet. 41–44. Petitioner provides an annotated version of the ’511 application’s Figures 84 and 85, reproduced below: Pet. 43 (Ex. 1007, Figs. 84–85). Figure 84 depicts Geiwitz’s primary navigation screen including a “Mode” button with the text “COOL” directly above the button. Petitioner’s annotations designate the “COOL” text as “Legend indicating current control function.” Figure 85 depicts Geiwitz’s primary navigation screen including a “Mode” button with the text “HEAT” directly above the button. Petitioner’s annotations designate the “HEAT” text as “Legend indicating current control function.” Id. Patent Owner asserts that “[t]he text that changes above the static ‘Mode’ button does not disclose or render obvious the first legend indicative of a first control function” because such a legend must be the “contents of a non-static virtual button which are intuitive to a user.” Prelim. Resp. 17. We do not, however, construe “legend” to require that the legend appear on a button (i.e., the “content” of a button); instead, the claims encompass a legend that is “closely associated with” a button as described in the Specification. Ex. 1001, 3:53–56 (“[A]n image representative of a first virtual button may be shown on the touch screen display with graphics (alphanumeric characters and/or icons) on or closely associated with the first virtual button.”). By using a disjunctive, “or,” the Specification establishes that a legend need not be located on the button to which the legend corresponds.9 Geiwitz’s disclosures appear to satisfy the claim language because the asserted legend is indicative of a first control function of the thermostat. Additionally, Patent Owner has not provided any evidence that the “virtual button” in claim 1 excludes any static virtual buttons.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,156,318 - PTAB · Oct 25, 2023 · IPR2023-00746 · APJ Brent M Dougal · IPR · Institution
The Board instituted review of claims 1–4, 7, 8, 11–13, 17–20, 26–31, and 37–41 on all petitioned grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“A claim is anticipated [under 35 U.S.C. § 102] only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011), revised 35 U.S.C. §§ 102–103 effective March 16, 2013. We refer to the pre-AIA version of §§ 102–103. claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Whether a reference anticipates is assessed from the perspective of an ordinarily skilled artisan. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.”). slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Under obviousness Petitioner further argues that: Taxis . . . typically calculate fares and charge customers using a taxi meter, not an invoice system. Accordingly, . . . it would be obvious to use the taximeter and trip meter in taxis to determine actual trip distance after the trip is completed and the driver has stopped the meter. (EX1005, ¶¶103-104.) Further, it would be obvious to connect the taxi meter to Smith’s AVL system to communicate the actual trip distance to Smith’s System for comparison to the estimated shortest trip distance. (EX1005, ¶104.) Pet. 20. Patent Owner does not contest that a taxi would have included a taxi meter, or that it would have been obvious for “the trip meter in taxis to determine actual trip distance after the trip is completed and the driver has stopped the meter.” See generally, Prelim. Resp. 16–20. Rather, Patent Owner argues that Smith does not teach using a taxi meter. Id. at 16, 19. Though Smith explicitly states that its “invention relates to dispatching or controlling of taxis” (Ex. 1006, 1:5–7), Petitioner’s obviousness arguments do not rely on an express teaching in Smith concerning taxi meters. Rather as shown above, Petitioner’s arguments focus on what one of skill would have found to be obvious when Smith’s system is applied to taxis. At the same time, Patent Owner also states that Smith “relies on driver reported information.” Id. at 16. This appears consistent with Petitioner’s position that a taxi driver would use a taxi meter as the easiest way to record and then report the actual trip distance. concerning the invoice system. Id. at 17–18. Patent Owner does not address what would have been obvious when using Smith’s system with taxis. Thus, Patent Owner’s argument does not address Petitioner’s position or arguments in the Petition concerning obviousness.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner provides constructions of certain terms according to what Petitioner states is the plain and ordinary meaning. Pet. 11. Petitioner also argues that the term “waiting time encountered in traffic” in claims 12 and 30 is indefinite. Id. at 12. Petitioner then provides three different potential meanings for this claim term. Id. Patent Owner does not offer any constructions. Prelim. Resp. 4–5. We determine that no terms need to be construed and that the indefiniteness issue does not need to be addressed at this time. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
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.