- PTAB · Dec 1, 2022 · IPR2022-01076 · APJ Thu A Dang · IPR · Institution
Instituted review of claims 1, 3, and 6–19 on all petition grounds and granted Bank of America’s motion to join the Samsung IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“1. Whether the Petition Warrants Institution Petitioner states that its Petition and accompanying declaration of Dr. Black (Exhibit 1003), are “substantively identical” to those filed by Samsung in the Samsung IPR, with the only differences being non-substantive introductory matters and mandatory notices. See Pet. 1; Mot. 6. We previously instituted an inter partes review in the Samsung IPR. See IPR2022-00113, Paper 8 (“Dec. on Inst.”). We incorporate our previous analysis regarding the asserted grounds of unpatentability, and conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’480 patent challenged in the Petition for the same reasons. See Dec. on Inst. 28. Therefore, we determine that the Petition warrants institution of inter partes review on all claims and all challenges asserted in the Petition.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Upon considering the parties’ arguments and the evidence presented, we are persuaded that it is appropriate under these circumstances to join Petitioner to the Samsung IPR. Petitioner challenges the same claims that are challenged in the Samsung IPR on the same grounds using the same prior art and evidence. Petitioner explicitly agrees that it will take an understudy role in the Samsung IPR, and has shown that the trial schedule will not be affected at all by joinder. Thus, joinder to the Samsung IPR would result in the just, speedy, and inexpensive resolution of Petitioner’s challenge. See 37 C.F.R. § 42.1(b). Accordingly, for the reasons discussed above, we grant Petitioner’s Motion for Joinder and join Petitioner as a party to the Samsung IPR.” slip op. at 11
NonePatents in suitUS 10,992,480 - PTAB · Nov 29, 2022 · IPR2022-01067 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR on claims 1–4, 8, 10–19, and 23–25 on all asserted grounds, finding a reasonable likelihood of unpatentability for at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“. . . the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure, 3 (footnote omitted; citing Sotera). In other words, under the Interim Procedure, a petitioner may avoid discretionary denial of the petition based on a parallel district court litigation by providing a Sotera-style stipulation. The Interim Procedure does not, however, make a Sotera-style stipulation a prerequisite for institution. Under our informative precedent, an inter partes review may be instituted despite the absence of a Sotera-style stipulation. Sand Revolution at 12 n.5 (instituting inter partes review notwithstanding the absence of a stipulation not pursue any ground that could have been reasonably raised in an inter partes review). We find that Petitioner’s stipulation (Ex. 1018) is the same as the one in Sand Revolution, where the petitioner stipulated that, if the IPR is instituted, the petitioner will not pursue the same grounds in the district court litigation. Sand Revolution at 11–12. In that case, the panel held that petitioner’s stipulation “mitigates to some degree the concerns of duplicative efforts between the district court and the Board as well as concerns of potentially conflicting decisions” and that Fintiv factor 4 “weighs marginally in favor of not exercising discretion to deny institution.” Id. at 12.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). 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). After considering the information presented in the Petition and the Preliminary Response, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing that at least one of the challenged claims is unpatentable, and we do not exercise our discretion to deny institution. Therefore, we grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) “would have had a Master’s degree in electrical engineering or an equivalent field and two years of academic or industry experience working with error correction in memory devices.” Pet. 14 (citing Ex. 1002 ¶ 19). For purposes of the preliminary response, Patent Owner does not dispute Petitioner’s definition of a POSITA. Prelim. Resp. 18. For purposes of this Decision, we apply Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“what it means to “partially decode.” Prelim. Resp. 14–15. We disagree. Although the sentence describes the function of a decoder module, it does not describe what it means to decode (or partially decode) encoded data. We decline to adopt Patent Owner’s proposed construction because it replaces the claim language “decode the received encoded data to generate a plurality of partially decoded data streams” with a sentence from the Specification that does not describe “decod[ing]” or “partially decoded.” Patent Owner’s proposed construction fails to capture the meanings of these words. Instead, it merely replaces the claim term “decode” with the broader term “process.” We agree with Patent Owner, however, that “decode” requires more than just buffering. The Specification twice mentions buffering. Ex. 1001, 6:11–14 (quoted above); id. at 6:46–50 (“[E]ncoded data may be read from a set of one or more of sectors . . . by a decoder sub-module . . . and processed (e.g., buffered, de-interleaved, decoded to some extent, etc.) to generate a data stream.”) In each instance, buffering is disclosed along with de-interleaving and decoding as actions performed by a decoder module or submodule. Nowhere does the Specification define “decode” to mean “buffer” or “de-interleave.” Patent Owner does not dispute the portion of Petitioner’s construction that defines “decode” to mean “distinguish error correction bits from information bits.” Pet. 14–15. Both parties rely on Patent Owner’s district court infringement contentions, where Patent Owner asserted that the disputed claim limitation is met by the accused products in part because “[a]t a minimum, the ECC bits will be identified, distinguished from, and Resp. 15.7 Neither party directs us to intrinsic evidence to support this definition of “decode.” Nevertheless, because this portion of Petitioner’s proposed construction is undisputed at this stage of the proceeding, we adopt it for purposes of our Decision. Accordingly, we construe the phrase “decode the received encoded data” to mean “distinguish error correction bits from information bits in the received encoded data.” Although the term may not be limited to this meaning, no other acceptable definition has been presented on this record. At this stage of the proceeding, we do not construe the phrase “to generate a plurality of partially decoded data streams” because neither party has proposed a construction for that portion of the claim language.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,615,700 - PTAB · Oct 5, 2022 · IPR2022-00516 · APJ Thu A Dang · IPR · Institution
The Board instituted review of claims 1–3 and 10 on all five grounds: anticipation by Perahia, Li, or Wax, and obviousness over Li or Wax with Perahia.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Patent Owner that “estimating a second radio channel . . . over said pilot interval” requires that the second radio channel be estimated over the same pilot interval as estimating a first radio channel was performed. See Prelim. Resp. 7. Nevertheless, given that a pilot interval is “predetermined time period . . . for supervisory purposes” (Ex. 1001, 7:41–53), we find that the time for estimating the first and second radio channels need not be exactly co-extensive in order to meet the “same pilot interval” limitation. For example, the pilot interval could be a longer predetermined period of time encompassing (1) the beginning and ending of estimating the first radio channel, then (2) some other activity such as “control, equalization, continuity, synchronization, or reference,” and then (3) the beginning and ending of estimating the second radio channel—so long as all of these are activities are for supervisory purposes. This comports with the Specification of the ’096 patent, which merely mentions “pilot interval” as the period of time over which the SMDA module estimates the first and second radio channels from the access point to the respective first and second mobile stations. That is, the Specification of the ’096 patent does not limit “pilot interval” to a time period for simultaneous and co-extensive estimation of first and second radio channels, as Patent Owner appears to be advocating. Therefore, for the foregoing reasons, based on the present record, we determine the term “said pilot interval” in the phrase “estimating a second radio channel . . . over said pilot interval” recited in claim 1 does not require the time for estimating the first and second radio channels to be co-extensive. Instead, the “pilot interval” could be a longer predetermined supervisory period that encompasses non-simultaneous estimating of the first and second radio channels. The parties are invited to address this claim construction issue during trial.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On the present record, we do not agree with Patent Owner’s contention that, because Perahia discloses transmitting first channel training information “in a first channel training period,” and allowing transmission of second channel training information “during a second channel training period,” Perahia fails to show that the estimating of a second radio channel takes place over the same interval over which the estimating of the first radio channel occurred. Prelim. Resp. 6–7. As discussed above, “over said pilot interval” as recited in claim 1 does not require the time for estimating the first and second radio channels to be co-extensive. Relying on Dr. Akl’s testimony, Petitioner contends that Perahia transmits channel training information in a “‘channel training period’— which is a pilot interval.” Pet. 23 (citing Ex. 1004, 3:4–12; Ex. 1003 ¶ 87). Dr. Akl testified that, like the ’096 patent, Perahia discloses channel estimation. Ex. 1003 ¶¶ 84–85. According to Dr. Akl, Perahia incorporates U.S. Patent No. 7,352,688 (Ex. 1008) by reference, which discloses antenna elements 1 and 2, wherein “[d]uring a first portion of the channel training period, one antenna element transmits a guard interval 504 followed by two long symbols 506 while the other antenna element is quiet,” and “[t]hen the first element goes into a quiet period.” See Ex. 1003 ¶ 87 (citing Ex. 1004, 8:61–64, 9:4–5, 9:29–30, Figs. 7–8; Ex. 1008, 6:26–45). That is, Dr. Akl testified that Perahia discloses a “pilot interval” that includes a “first portion” for estimating a first channel and another portion for estimating a second channel in a channel training period. Id. (emphasis added). On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that Perahia discloses “estimating a first radio channel from said access point to said first mobile station over a pilot interval,” and “estimating a second radio channel from said access point to said second mobile station over said pilot interval,” as recited in claim 1.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Having reviewed Petitioner’s arguments and supporting evidence in the present record, we are preliminarily persuaded by Petitioner’s contention that a POSITA would have found it obvious to combine the teachings of Li and Perahia for enhancing throughput through the use of SDMA, as testified by Dr. Akl. Pet. 38 (citing Ex. 1003 ¶¶ 110, 113). Accordingly, we determine Petitioner has made a sufficient showing that the combination of Li and Perahia teaches the subject matter of dependent claim 10.” slip op. at 30
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted on all grounds and on all claims challenged in the Petition, i.e., as to claims 1–3 and 10 of the ’096 patent to determine whether: 1) claim 1 is unpatentable under 35 U.S.C. § 102 as anticipated by Perahia; 2) claims 1–3 are unpatentable under 35 U.S.C. § 102 as anticipated by Li; 3) claim 10 is unpatentable under 35 U.S.C. § 103 as obvious over Li and Perahia;” slip op. at 39
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,512,096 - Apple Inc. v. Billjco LLCInstitutedPTAB · May 23, 2022 · IPR2022-00131 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR on claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49 for all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable.
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). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Based on the arguments and evidence of record, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’267 patent is unpatentable. Accordingly, we institute an inter partes review as to the challenged claims of the ’267 patent on all the grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As discussed below, on this record and at this stage of the proceeding, Petitioner presents a reasonably strong case that the challenged claims are unpatentable. See Fintiv, Paper 11 at 14–15 (“[I]f the merits of a ground raised in the petition seem particularly strong on the preliminary record, this fact has favored institution.”). For example, Petitioner’s evidence shows that Haberman and Vanluijt teach “privilege data” and a “destination identity of the whereabouts data,” which are the only limitations that Patent Owner disputes at this stage of the proceeding. See Sections II.D.1, II.F.1. Thus, we determine that the sixth Fintiv factor weighs against discretionary denial of institution. 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of experience relating to wireless communications.” Pet. 5 (citing Ex. 1002 ¶¶ 42–43). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Thomas La Porta. Ex. 1002 ¶¶ 42–43. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“On this record, we do not adopt Patent Owner’s proposed construction. Patent Owner does not identify any intrinsic evidence to support its argument that the term “privilege data” excludes preferences. See Prelim. Resp. 8–9. And the dictionary definition cited by Patent Owner relates to the term “privileged instruction,” which is different than the term “privilege data” that appears in claims 1 and 29. Id.; Ex. 2007, 3. Further, the ’267 patent indicates that privilege data can be “[a]ny configurable privilege granted by one identity to another identity that can limit, enable, disable, delegate, or govern actions, feature(s), functionality, behavior(s), or any subset(s) thereof.” Ex. 1001, 124:15–24. Patent Owner does not explain how this description of privilege data excludes preferences. See Prelim. Resp. 8–9. Thus, on this record, we are not persuaded that the term “privilege data” should be construed to exclude preferences. No further construction of the term “privilege data” is necessary to resolve the parties’ disputes at this stage of the proceeding. See Sections II.D.1, II.F.1; Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,639,267 - Apple Inc. v. Billjco LLCInstitutedPTAB · May 23, 2022 · IPR2022-00129 · APJ Robert J Weinschenk · IPR · Institution
Instituted IPR on claims 1–3, 8, 20, 21, 23–27, 32, 44, 45, 47, and 48 on all petitioned grounds because Apple showed a reasonable likelihood of prevailing.
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). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Based on the arguments and evidence of record, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’839 patent is unpatentable. Accordingly, we institute an inter partes review as to the challenged claims of the ’839 patent on all the grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As discussed below, on this record and at this stage of the proceeding, Petitioner presents a reasonably strong case that the challenged claims are unpatentable. See Fintiv, Paper 11 at 14–15 (“[I]f the merits of a ground raised in the petition seem particularly strong on the preliminary record, this fact has favored institution.”). For example, Petitioner’s evidence shows that Lutnick teaches an “object containing information and instructions for presenting said information” and an “event specification including a whereabouts condition and a condition for detecting a particular user action,” which are the only limitations that Patent Owner disputes at this stage of the proceeding. See Section II.D.1. Thus, we determine that the sixth Fintiv factor weighs against discretionary denial of institution. 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of experience relating to wireless communications.” Pet. 5–6 (citing Ex. 1003 ¶¶ 39–40). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Thomas La Porta. Ex. 1003 ¶¶ 39–40. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In an inter partes review proceeding, a claim of a patent is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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). Petitioner proposes construing the phrase “object containing information and instructions for presenting said information” in claim 1 and a similar phrase in claim 25 to mean “a self-contained object with both the information for presentation and the instructions describing under what conditions to present that information.” Pet. 8–10. Patent Owner does not propose an express construction for any claim terms. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,566,839 - PTAB · Apr 26, 2022 · PGR2022-00007 · APJ Thu A Dang · PGR · Institution
The Board instituted PGR on claims 1–19 based on likely lack of written description and obviousness over Ellison and Muir, with Al-Salqan or Searle added for certain claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Section 324(a) of Title 35 of the United States Code provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, for the reasons below, we determine that the information in the Petition satisfies the threshold provided in 35 U.S.C. § 324(a) and we institute this proceeding.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“not present in the written description whose benefit is sought it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation.” Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998) (emphasis added). In other words, where the written description fails to disclose an element explicitly, “the applicant must show that any absent text is necessarily comprehended in the description provided and would have been so understood at the time the patent application was filed.” Id. at 1354–55 (emphases added). At this stage of the proceeding, we do not find persuasive Patent Owner’s contention that a person of ordinary skill in the art would have recognized that authentication software has a “private key” that forms an “integral part of the authentication software component and/or is embedded therein” (Prelim. Resp. 13 (quoting Ex. 1001, 5:39–40)), in view of the cited section in the Detailed Description describing the authentication software as comprising the unique serial number, the unique software ID and/or a private encryption key, but only the unique serial number or the unique software ID is embedded therein. See Ex. 1001, 5:39–49. That is, we are unpersuaded at this stage of the proceeding that the person of ordinary skill in the art will directly and unambiguously deduce from the ’773 application as filed that the “private encryption key” is embedded in the authentication software, as Patent Owner contends. Prelim. Resp. 13. Instead, we find persuasive Petitioner’s contention that the ’480 patent (i.e., the ’773 application) merely teaches storing the digital signing algorithm in a secure part of the BIOS 44 but is silent as to storage of the private key. Pet. 18 (citing Ex. 1001, 9:27–34, 13:31–44; Ex. 1003). As Petitioner contends, the” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“The Specification of the ’480 patent discloses secure area 62 only accessible to BIOS 44, comprising applications and storage locations not reported to operating system 48 (Ex. 1001, 8:62–9:1), wherein, as shown in Figure 3, secure area 62 comprises secure storage location 60, recovery application 56, and authentication software 54. Id. at 9:7–11. That is, the Specification shows “secure memory inaccessible to said operating system” as a location that holds software not accessible to operating system 48. Id. Nothing in the Specification, or the general knowledge in the art, limits “secure memory inaccessible to said operating system” to Ellison’s “isolated storage area 70,” or precludes Ellison’s “secure platform 200,” as Patent Owner proposes. Prelim. Resp. 35–36. In fact, nothing in the Specification or the general knowledge in the art limits the “storage” to any amount of time in the secure memory. We are unpersuaded by Patent Owner’s apparent position that software that is loaded into a secure location of execution is not software that is “stored” in a “secure memory” location. Prelim. Resp. 35–36. In view of the Specification and the general knowledge in the art, we determine that the term “stored in said secure memory inaccessible to said operating system” encompasses being held in any secure location that is determination here is preliminary, and the parties are invited to address this claim construction issue at trial, if so desired.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“ii. “providing a private key in a memory of said electronic device, said memory being a secure part of a Basic In Out System or any other secure location in said electronic device, which private key is inaccessible to a user of said electronic device, wherein the private key is encrypted when the private key is stored in said memory” (claim 1) Petitioner contends that Ellison’s “isolated execution regions ‘is accessible only to elements of the operating system and processor operating in isolated execution mode,’” and that “isolated mode applets 461 to 46K and their data are tamper-resistant and monitor-resistant from all software attacks from other applets and OS 12.” Pet. 56 (citing Ex. 1006, 4:1–22). According to Petitioner, “[a] user is not an element of the operating system and processor operating in isolated execution mode, and therefore 6 The issue of whether the preamble is limiting need not be resolved at this stage of the proceeding because, regardless of whether the preamble is limiting, Petitioner shows sufficiently for purposes of institution, and Patent Owner does not dispute, that the combination of Ellison and Muir teaches a method for performing an electronic transaction between first and second transaction parties, as recited in the preamble. See Realtime Data, 912 F.3d at 1375 (noting that we need only construe “only those terms that . . . are in controversy”). Ex. 1003 ¶ 92). Petitioner then contends that Ellison discloses “a secure platform 200 that ‘includes the OS nub 16, the processor nub 18, a key generator 240, . . . , all operating within the isolated execution environment.’” Pet. 58 (citing Ex. 1006, 8:25–32; Ex. 1003 ¶ 95). Petitioner also contends that “the private key 204 can be stored in the cryptographic key storage 155 and in a multiple key storage of the non-volatile flash memory 160,” and “only the OS nub 16 can retrieve the private key.” Id. at 59–60. According to Petitioner, because “the OS nub 16 is within the secure platform and isolated environment,” it would have been obvious to a person of ordinary skill in the art (POSITA) that “the cryptographic key storage 155 and the non-volatile flash memory 160 are secure storage locations so that the private key 204 can be accessed securely by OS nub 16.” Id. (citing Ex. 1003 ¶ 96). Thus, Petitioner contends that “Ellison explicitly teaches that the OS nub 16 and private key 204 shown in platform 200 all operate within the isolated execution environment,” which “would indicate to a POSITA that private key 204 is stored in a secure memory and is inaccessible to a user of said electronic device.” Id. Nevertheless, Petitioner contends that Muir “explicitly teaches a private key 167 stored in a restricted memory space 170 which is inaccessible to the operating system.” Id. at 60 (citing Ex. 1008, 7–9, 3). Petitioner then contends that Ellison’s OS nub 16 “retrieves the encrypted private key 204 and decrypts it for use in the isolated environment.” Pet. 61 (citing Ex. 1006, 8:33–65, 11:1–12:26). Thus, Petitioner contends that “Ellison and Muir render obvious the private key 204 being encrypted when stored in a secure memory (e.g.,” slip op. at 32
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,992,480 - PTAB · Apr 19, 2022 · IPR2022-00010 · APJ Thu A Dang · IPR · Institution
The Board instituted review of claims 14–19 on four § 103 grounds based on Suzui, Boniface, and Gilmore, with additional references for claims 16, 17, and 19.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“Even though it explains that parallel petitions challenging the same patent are generally disfavored, the consolidated Trial Practice Guide nevertheless recognizes that there may be “rare” circumstances in which more than one petition may be necessary, and that the panel has discretion to review whether fairness warrants allowing multiple petitions by a single petitioner. Consolidated Trial Practice Guide, 59. In particular, petitioners are required to file lengthy petitions that fully elaborate their arguments for canceling the challenged patent. 37 C.F.R. § 42.22(a)(2); see also id. § 42.21(a), (c); 35 U.S.C. § 312(a)(3) (“A petition … may be considered only if … the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim”). Thus, the Board recognizes that, with the strict limits set on the length of petitions (see 37 C.F.R. § 42.24(a)(1)), in some cases, it may be impossible to adequately present all legitimate grounds for cancelation in a single petition. Here, petitions in Group 2 challenge different claims from the petitions in Group 1, wherein the claims in Group 2 are directed to different subject matter from those in Group 1. Thus, we are not persuaded that Petitioner should be able to adequately present all legitimate grounds for cancelation of both sets of claims directed to different subject matter in a single petition. In this case, we are not persuaded that the petitions between the two groups are considered “parallel” petitions that would provide the Petitioner more than one bite at the apple. That is, we are not persuaded that the filing of the two separate groups of petitions directed to different subject matter involve an abusive attempt to get more than one bite at the apple.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2020). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art (POSITA) at the time of the invention and in the context of the entire patent disclosure. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner further contends that “routing wires in parallel (for instance in the same conduit) was a well-known wiring technique,” wherein Boniface teaches “routing the positive and negative conductors ‘in parallel with an array grounding conductor.’” Pet. 29 (citing Ex. 1402 ¶¶ 193–196). Petitioner provides an annotated Figure 1 of Boniface, shown below, to illustrate its contentions. Annotated Figure 1 of Boniface in the Petition, according to Petitioner, illustrates “a fault detection system comprising a photovoltaic solar array 101 (blue) connected to a power conditioning unit, e.g., inverter 115 (orange) via connective wiring.” Pet. 29 (citing Ex. 1424 ¶ 37; Ex. 1402 ¶ 194). Petitioner contends that Boniface discloses that “a photovoltaic source positive conductor (102/112/112’) and a negative conductor (103/113/113’) (green) are routed in parallel with an equipment ground conductor 104 connected to earth ground system 118.” Id. (citing Ex. 1424, ¶¶ 37–39, 48, Figs. 1, 2, 6, 8; Ex. 1402 ¶ 194). According to Petitioner, a POSITA would have been motivated to implement Suzui’s system, in view of Boniface’s teaching, “to route Suzui’s positive and negative conductors in parallel with Suzui’s frame grounding conductors . . . to prevent shock hazards and improve safety,” and additionally “because routing the wires in parallel (e.g., in the same conduit) would also be easier and more convenient.” Id. at 31 (citing Ex. 1424 ¶ 2; Ex. 1402 ¶ 195).” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,937,822 - PTAB · Apr 19, 2022 · IPR2022-00007 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–13 and 20, finding a reasonable likelihood of success on each asserted ground in the petition.
RulingsInstitution decision- Parallel petitionsOther
“We decline Petitioner’s invitation to provide advisory opinions by entertaining different Petitions advancing alternative claim constructions. As Petitioner has expressed its preference for Petition 1, which cites Tracy as the primary reference, we exercise our discretion to entertain Petition 1. We decline to institute inter partes review based on Petitions 2 and 3.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“XI. CONCLUSION For the reasons discussed above, we find that Petitioner has demonstrated a reasonable likelihood that it will succeed on the following challenges to patentability: Claims 1–3 and 8–10 as anticipated by Tracy; Claims 1–3 and 8–10 as obvious over Tracy; Claims 4 and 11 as obvious over Tracy and Fujimoto; Claims 6 and 20 as obvious over Tracy and De; Claim 7 as obvious over Tracy and Bond; XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’822 patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial;” slip op. at 50
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). construed as means plus function terms: DC to AC converter, switch[ing] controller, AC ground leak detector, bi-directional DC-to-DC converter, common-mode filter. Pet. 17–21. Although Petitioner states these terms “could be construed as means-plus-function limitations,” Petitioner states that if the panel does not construe them as such, these terms should be construed according to their ordinary and customary meaning. Id. at 17. According to Petitioner, whether these limitations are construed as means plus function terms or according to their ordinary and customary meaning, the prior art discloses the limitations of the challenged claims. Petitioner does not explain why terms that have an ordinary and customary meaning should be construed as means-plus-function limitations in the context of the ’822 patent. Therefore, we apply the ordinary and customary meaning to each limitation. Vivid Techs., 200 F.3d at 803.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that at the time of the patent application, a person of ordinary skill “would have had a bachelor’s degree in electrical engineering or a similar discipline and three years of design experience with power electronics, including experience designing power converters.” Pet. 17 (citing Ex. 1002, Declaration of Dr. R. Joseph Baker (“Baker Decl.”)). Patent Owner does not discuss the level of ordinary skill. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); of ordinary skill is consistent with the subject matter of the claims and references, we apply Petitioner’s proposed level of skill in this Decision.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,937,822 - PTAB · Feb 28, 2022 · IPR2021-01439 · APJ Thu A Dang · IPR · Institution
The Board instituted review of claims 1–20 on three § 103 grounds: the Giobbi ’157, Giobbi ’139, and Dua combination; Broadcom; and Broadcom with Giobbi ’157.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDecided for petitioner
“Accordingly, on the whole, this factor weighs against exercising discretion to deny institution under 35 U.S.C. § 314(a). In particular, in considering this factor, we find that the substantial work that remains on invalidity issues in the parallel district court litigation substantially outweighs the minimal investment so far.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“the present record, we determine Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertion that independent claim 1 as obvious over Giobbi ’157, Giobbi ’139, and Dua.” slip op. at 31
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Reading Patent Owner’s proposed construction and Petitioner’s contention concerning the term, both parties agree that “PDK” for “storing local, secured financial information,” as claimed, comprises a local memory for storing financial information, wherein the information is secured. See Pet. 23–27, 51–54; Prelim. Resp. 2−3. An ordinarily skilled artisan would have appreciated the definition of “storing local, secured financial information” set forth in the various dictionaries as the general knowledge in the art. However, nothing in the Specification or the general knowledge in the art limits a PDK for storing “local, secured financial information” to having “memory comprising a service block unlocked by an access key provided to the PDK,” as Patent Owner proposes. Prelim. Resp. 2–3. Thus, we determine that “local, secured financial information” does not require being stored by a PDK that must have memory comprising a service block unlocked by an access key provided to the PDK. Id.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“would have been motivated to integrate an RDC into Giobbi ’157’s hybrid device for communication with external PDKs based on the teachings of Giobbi ’139 and Dua.” Pet. 27 (citing Ex. 1003 ¶ 42). In particular, Petitioner contends that Giobbi ’139 “expressly teaches integrating an RDC into the same type of hybrid device disclosed in Giobbi ’157, a cell phone,” wherein “a ‘Personal Digital Key Digital Content Security System (PDK- DCSS) is used to protect computers from unauthorized use and protect the digital content stored on computers from being wrongfully accessed, copied, and/or distributed.’” Id. (citing Ex. 1005, Abstract). According to Petitioner, “Giobbi ’139 teaches that RDCs should be incorporated into hybrid devices like cell phones because these devices ‘commonly included’ data storage,” wherein “Giobbi ’139 identified such a configuration as an ‘enhancement.” Pet. 28 (citing Ex. 1005 ¶¶ 87–88). Further, according to Petitioner, “Giobbi ’157 teaches that it is advantageous to incorporate PDKs into ‘commonly carried items,’ like phones, since it would eliminate the need for a user to carry a separate PDK device and would reduce the risk of loss.” Id. at 29 (citing Ex. 1004 ¶ 35; Ex. 1003 ¶ 47). In addition, Petitioner contends that “the Dua patent’s RFID system configuration also provides motivation to integrate and RDC into Giobbi ’157’s hybrid device.” Id. at 30. In particular, according to Petitioner, “Dua teaches a hybrid device –e.g., a cell phone—which establishes wireless connections with other devices to enable functions and exchange data.” Id. (citing Ex. 1006, 6:46–65). slip op. at 27
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,235,700 - PTAB · Feb 28, 2022 · IPR2021-01438 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that the claims are obvious over the asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Accordingly, on the whole, this factor weighs against exercising discretion to deny institution under 35 U.S.C. § 314(a). In particular, in considering this factor, we find that the substantial work that remains on invalidity issues in the parallel district court litigation substantially outweighs the minimal investment so far.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“limits a PDK for storing “local, secured biometric information” to having “memory comprising a service block unlocked by an access key provided to the PDK ,” as Patent Owner proposes. Prelim. Resp. 2–3. Thus, we determine that “local, secured biometric information” does not require being stored by a PDK that must have memory comprising a service block unlocked by an access key provided to the PDK. Id. We are unpersuaded by Patent Owner’s contention that “[t]he specification explicitly defines ‘local secure memory’ as a service block unlocked by an access key, and ‘local secured information’ as information stored in a service block unlocked by an access key.” Prelim. Resp. 2. Although Patent Owner points to Figure 2 of the Specification for such explicit[] defin[ition],” Figure 2 of the Specification merely shows an exemplary embodiment and not a definition, wherein, as Patent Owner also points out, such teaching in the Specification shows that “each service block 112 can be used as local secure memory for the corresponding application 120.” Id. at 2–3 (citing Ex. 1001, 5:27–31, Fig. 2) (emphasis added). That is, although the referenced portion of the Specification indicates that a “service block” can be used as “local secure memory,” nothing in the Specification limits the local storage memory to “a service block unlocked by an access key,” as Patent Owner contends. Prelim. Resp. 2. Any special definition for “local storage memory” limiting it to “a service block unlocked by an access key” must be set forth in the Specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In view of the Specification and the general knowledge in the art, we determine that the term “PDK” for “storing local, secured biometric information” for authenticating a user, as claimed, encompasses a local memory for storing biometric information for authenticating a user, wherein the information is secured. The parties are invited to address this claim construction issue during trial, if so desired.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“would have been motivated to integrate an RDC into Giobbi ’157’s hybrid device for communication with external PDKs based, in part on the teachings of Giobbi ’139.” Pet. 28. In particular, Petitioner contends that Giobbi ’139 “expressly teaches integrating an RDC into the same type of hybrid device disclosed in Giobbi ’157, a cell phone,” wherein “a ‘Personal Digital Key Digital Content Security System (PDK-DCSS) is used to protect computers from unauthorized use and protect the digital content stored on computers from being wrongfully accessed, copied, and/or distributed.’” Id. (citing Ex. 1005, Abstract). According to Petitioner, “Giobbi ’139 teaches that RDCs should be incorporated into hybrid devices like cell phones because these devices ‘commonly included’ data storage,” wherein “Giobbi ’139 identified such a configuration as an ‘enhancement.” Pet. 29 (citing Ex. 1005 ¶¶ 87–88). Further, according to Petitioner, “Giobbi ’157 teaches that it is advantageous to incorporate PDKs into ‘commonly carried items,’ like phone, since it would eliminate the need for a user to carry a separate PDK device and would reduce the risk of loss.” Id. at 30 (citing Ex. 1005 ¶ 35; Ex. 1003 ¶ 48). In addition, Petitioner contends that “the Dua patent’s RFID system configuration also provides motivation to integrate and RDC into Giobbi ’157’s hybrid device.” Id. at 31. In particular, according to Petitioner, “Dua teaches a hybrid device –e.g., a cell phone—which establishes wireless connections with other devices to enable functions and exchange data.” Id. (citing Ex. 1006, 6:46–65). slip op. at 27
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. 37 C.F.R. § 42.108(a) (2020). At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1–20 of the ’188 patent to determine whether: 1) claims 1–20 are unpatentable under 35 U.S.C. § 103 as obvious over Giobbi ’157, Giobbi ’139, and Dua; 2) claims 1–7, 9–15, 17, and 18 are unpatentable under 35 U.S.C. § 103 as obvious over Broadcom; 3) claims 8, 16, 19, and 20 are unpatentable under 35 U.S.C. § 103 as obvious over Broadcom and Giobbi ’157; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and” slip op. at 41
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,049,188
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.