- PTAB · Sep 27, 2022 · IPR2022-00666 · APJ Robert J Weinschenk · IPR · Institution
Instituted review of claims 1–4 on all grounds, finding a reasonable likelihood of prevailing on obviousness over Mazzoni and VDSL1.
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 ’048 patent is unpatentable. Accordingly, we institute an inter partes review as to the challenged claims of the ’048 patent on all the grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We consider several factors when determining whether to deny institution under § 314(a) based on a parallel district court proceeding. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). Nonetheless, “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, 4–5 (June 21, 2022), available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_m emo_20220621_.pdf. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. Based on the evidence of record, Petitioner’s assertion that claims 1–4 would have been obvious over Mazzoni and VDSL1 presents a compelling unpatentability challenge. At this stage of the proceeding, Patent Owner disputes that the Mazzoni and VDSL1 combination teaches a “shared memory” and “a message during initialization specifying a maximum number of bytes of memory that are available to be allocated to an interleaver.” Prelim. Resp. 44–46, 52–55. Patent Owner also disputes that it would have been obvious to combine the cited teachings of Mazzoni and VDSL1. Id. at 55–59. As discussed in detail below, the evidence of record plainly shows that the Mazzoni and VDSL1 combination teaches the disputed limitations and that it would have been obvious to combine the cited teachings of Mazzoni and VDSL1. See Sections II.E.1, II.E.3. Because the information presented at the institution stage presents a compelling unpatentability challenge, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 6
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“§ 315(b). Prelim. Resp. 23. Section 315(b) provides that an inter partes review “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner served 2Wire, Inc. (“2Wire”) with a complaint alleging infringement of the ’048 patent in February 2014. Prelim. Resp. 12; Ex. 2001, 34–35; Ex. 2002. Petitioner filed the Petition in this case more than one year later on March 4, 2022. Pet. 79. Patent Owner contends that the Petition is barred under § 315(b) because 2Wire and its successor-in-interest CommScope Holding Company, Inc. (“CommScope”) are real parties in interest and privies of Petitioner.1 Prelim. Resp. 23–28; Sur-reply 2–7.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“On this record, we are not persuaded that Petitioner filed the Petition at the behest of 2Wire and CommScope. The evidence of record indicates that Patent Owner sent claim charts to Petitioner alleging infringement of the ’048 patent based on compliance with Very High Speed Digital Subscriber Line (“VDSL”) standards.2 Reply 2; Ex. 1037, 39; Ex. 1038, 1–8; Ex. 1039, 1–8; Ex. 1040 ¶ 3. Although Patent Owner has not filed a complaint against Petitioner for infringement of the ’048 patent, Patent Owner did file a complaint against Petitioner for infringement of another patent that includes similar claims. Ex. 1026, 5 (“asserts infringement of . . . United States Patent Nos. . . . 7,844,882”); Ex. 2031, 5 (“Family 3 Patents”); compare Ex. 1001, 10:41–65, with IPR2022-00664, Ex. 1001, 11:39–12:12. Further, 2 Petitioner argued in a related district court case that Patent Owner’s communications do not provide a specific charge of infringement by a specific product that constitute actual notice under 35 U.S.C. § 287. Sur-reply 3; Ex. 2032, 11. Here, we rely on Patent Owner’s communications only as evidence that Petitioner had its own interest in filing the Petition, not that those communications provided sufficient notice under § 287. there is evidence that Patent Owner continues to demand that Petitioner “take a license to its entire portfolio,” including the ’048 patent. Reply 2–3 (emphasis omitted); Ex. 1040 ¶ 3. Thus, at this stage of the proceeding, the evidence of record indicates that Petitioner filed the Petition for itself, not at the behest of 2Wire and CommScope.” slip op. at 9
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,276,048 - PTAB · Sep 27, 2022 · IPR2022-00664 · APJ Lynne E Pettigrew · IPR · Institution
Instituted IPR of claims 9–16 on both asserted obviousness grounds; the Mazzoni and VDSL1 combination presented a compelling challenge, and the second ground was also instituted.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“A. 35 U.S.C. § 315(b) Patent Owner argues that we should deny the Petition under 35 U.S.C. § 315(b). Prelim. Resp. 23. Section 315(b) provides that an inter partes review “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner served 2Wire, Inc. (“2Wire”) with a complaint alleging infringement of the ’882 patent in February 2014. Prelim. Resp. 11–12; Ex. 2001, 33–34; Ex. 2002. Petitioner filed the Petition in this case more than one year later on March 4, 2022. Pet. 83. Patent Owner contends that the Petition is barred under § 315(b) because 2Wire and its successor-in-interest CommScope Holding Company, Inc. (“CommScope”) are real parties in interest and privies of Petitioner.5 Prelim. Resp. 23–28; Sur-reply 2–7.” slip op. at 5
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner argues that Petitioner filed the Petition at the behest of 2Wire and CommScope. Prelim. Resp. 26. Specifically, Patent Owner contends that Petitioner and CommScope are “‘featured partner[s]’ in business” who agreed to a “joint strategy.” Id. at 27; Sur-reply 3–4. According to Patent Owner, Petitioner filed petitions challenging certain patents that 2Wire and CommScope are “unquestionably time barred from challenging,” even though Petitioner is not accused of infringing them. Prelim. Resp. 25–27; Sur-reply 2–3. And, in “exchange,” CommScope filed petitions challenging certain other patents that Petitioner is accused of infringing. Prelim. Resp. 26–27; Sur-reply 3. Patent Owner also contends that Petitioner and CommScope used the same declarants to support their respective petitions. Prelim. Resp. 27; Sur-reply 4. On this record, we are not persuaded that Petitioner filed the Petition at the behest of 2Wire and CommScope. The evidence of record indicates that Patent Owner sent claim charts to Petitioner alleging infringement of the ’882 patent based on compliance with Very High Speed Digital Subscriber Line (“VDSL”) standards. Reply 2; Ex. 1034, 38–39; Ex. 1035, 1–8; Ex. 1036, 1–8; Ex. 1037 ¶ 3. Thereafter, on August 13, 2021, Patent Owner filed a complaint in the Eastern District of Texas accusing Petitioner of infringing several patents, including the ’882 patent. Ex. 1026, 5; see Reply 2–3. Further, there is evidence that Patent Owner “continues to “take a license to its entire portfolio,” including the ’882 patent. Reply 3 (emphasis omitted); Ex. 1037 ¶ 3. Thus, at this stage of the proceeding, the evidence of record indicates that Petitioner filed the Petition for itself, not at the behest of 2Wire and CommScope.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“to deny institution in light of parallel district court litigation. Prelim. Resp. 28–39; Sur-reply 7–8. We consider several factors when determining whether to deny institution under § 314(a) based on a parallel district court proceeding. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). Nonetheless, “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, 4–5 (June 21, 2022), available at https://www.uspto.gov/sites/default/files/ litigation_memo_20220621_.pdf. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. Based on the evidence of record, Petitioner’s assertion that claims 9–16 would have been obvious over Mazzoni and VDSL1 presents a compelling unpatentability challenge. At this stage of the proceeding, Patent Owner disputes that the Mazzoni and VDSL1 combination teaches a “shared memory” and “a message during initialization specifying a maximum number of bytes of memory that are available to be allocated to an interleaver.” Prelim. Resp. 43–45, 51–54. Patent Owner also disputes that it would have been obvious to combine the cited teachings of Mazzoni and VDSL1. Id. at 55–59. As discussed in detail below, the evidence of record plainly shows that the Mazzoni and VDSL1 combination teaches the disputed limitations and that it would have been obvious to combine the cited teachings of Mazzoni and VDSL1. See Section III.F. Because the information presented at the institution stage presents a compelling unpatentability challenge, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Summary For the foregoing reasons, Petitioner makes a sufficient showing that the combination of Mazzoni and VDSL1 teaches or suggests all the limitations of claims 9–16 and that a person of ordinary skill in the art would have combined the references in the manner asserted. Accordingly, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that claims 9–16 are unpatentable as obvious over the combined teachings of Mazzoni and VDSL1.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,844,882 - PTAB · Aug 18, 2022 · IPR2022-00471 · APJ Joni Y Chang · IPR · Institution
The Board instituted IPR on claims 8–10, 15, 24–26, and 31 over four asserted grounds: anticipation by G.992.1 and obviousness over SC-060, G.992.1 with SC-060, and G.992.1 with Wunsch.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredRpi dispute resolved for petitionerDecided for petitioner
“Petitioner “bears the ultimate burden of persuasion to show that its petitions are not time-barred under § 315(b) based on a complaint served on an alleged real party in interest more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). 3. RPI Analysis” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Office (“USPTO”) issued a Memorandum8 titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“the Memorandum” or “Memo”), which states, among other things, that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memo, 2. The Memorandum explains that “compelling, meritorious challenges will be allowed to proceed at the PTAB even where district court litigation is proceeding in parallel.” Id. at 4. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. “[W]here the PTAB determines that the information presented at the institution stage 8 Available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf 19 presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4−5. “This clarification strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Id. at 5. In addition, “[t]he compelling evidence test affirms the PTAB’s current approach of declining to deny institution under Fintiv where the evidence of record so far in the case would plainly lead to a conclusion that one or more claims are unpatentable.” Id. at 5 n.6 (citing, e.g., Illumina Inc. v. Trs. Of Columbia Univ., IPR2020-00988, Paper 20 (PTAB Dec. 8, 2020) (declining to deny under Fintiv in light of strong evidence on the merits even though four factors weighed in favor of denial and remining factor was neutral)).” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“agreed[] that a flag signal does not include information indicating when the FIP settings are going to be used.” Prelim. Resp. 8. In its Claim Construction Memorandum Opinion, the District Court in the Delaware case, after considering both parties’ arguments and evidence, rejected Patent Owner’s proposed construction and adopted Defendants’ compromise construction, which does not import the negative limitation advanced by Patent Owner into the claims. Ex. 2027, 7−8; see also Ex. 1024, 2. The District Court in the Delaware case noted that “the patent does not provide lexicography for ‘flag signal,’” and “[Patent Owner] does not argue that a disclaimer supports it[s] construction.” Ex. 2027, 7−8. The ’835 patent discloses that “synchronization can be based on, for example, a synchronization using FEC codeword counters or a flag signal.” Ex. 1001, 11:7−9. The “flag signal” embodiment does not limit a flag signal to “an inverted sync symbol, or sync FLAG, as used in the ADSL2 G.992.3 OLR protocol,” as Patent Owner alleges. The portions of the Specification relied upon by Patent Owner and Dr. Madisetti use permissive language in explaining that “[f]or example, the flag signal could be an inverted sync symbol, or sync FLAG, as used in the ADSL2 G.992.3 OLR protocol.” Ex. 1001, 12:29−31. Moreover, Patent Owner conceded at the Markman hearing in the Delaware case that a flag signal may contain information that indicates when updated FIP settings are to be used, as long as the” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’835 patent, prior art of record, and supported by the testimony of Dr. Jacobsen, except that we do not accept the qualifier “at least,” which would expand the required amount of experience indefinitely.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,462,835 - Epic Games, Inc. v. Ingenioshare, LLCInstitutedPTAB · Jun 7, 2022 · IPR2022-00295 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 7–12, 22–24, and 33–67 on all petitioned grounds, finding a reasonable likelihood of success on the § 103(a) combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Mar. 20, 2020) (precedential) (“Fintiv”), Patent Owner argues that we should exercise our discretion under § 314(a) to deny institution in light of the Texas case where Patent Owner has asserted the ’038 patent and other patents against Petitioner. See Prelim. Resp. 7–12; supra § II.B.” slip op. at 16
- Parallel petitionsDecided for petitioner
“Under the circumstances here, two petitions challenging claims in the ’038 patent will not place a substantial and unnecessary burden on the Board or Patent Owner. In IPR2022-00202, the Board will consider challenges to related U.S. Patent No. 10,142,810 B2 based on Diacakis and alternatively the Tanigawa-Hullfish combination. See Epic Games, Inc. v. IngenioShare, LLC, IPR2022-00202, Paper 9 (PTAB May 23, 2022) (granting institution of inter partes review); supra § II.B. In IPR2022-00291, the Board will similarly consider challenges to related U.S. Patent No. 10,708,727 B2 based on Diacakis and alternatively the Tanigawa-Hullfish combination. See Epic Games, Inc. v. IngenioShare, LLC, IPR2022-00291, Paper 10 (PTAB May 24, 2022) (granting institution of inter partes review); supra § II.B. Thus, in other proceedings the Board will consider and become familiar with Diacakis, Tanigawa, and Hullfish and the relevance of those references to claims in related patents.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. Petitioner also asserts that “[a]dditional education might 5 The record does not include evidence concerning objective indicia of nonobviousness. compensate for less experience, and vice-versa.” Id. Dr. Almeroth’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 92–97. At this stage of the proceeding, Patent Owner does not address the educational level or work experience of a person of ordinary skill in the art. See, e.g., Prelim. Resp. 1–7, 12–16. Based on the current record and for purposes of institution, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’038 patent and the asserted prior art.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,492,038 - Epic Games, Inc. v. Ingenioshare, LLCInstitutedPTAB · May 24, 2022 · IPR2022-00291 · APJ Patrick M Boucher · IPR · Institution
The Board instituted IPR on claims 1–9 and 15–17 on all asserted § 103 grounds, finding a reasonable likelihood that Epic would prevail on at least one challenged claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation, and Patent Owner does not, at this time, propose any different articulation. See Ex. 1003 ¶¶ 92–97. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2021); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Although “Petitioner does not believe that any terms need to be construed to assess the arguments presented” in its Petition, Patent Owner raises an issue with respect to the challenged claims’ recitation of a “network-based portal.” See Pet. 25; Prelim. Resp. 15–16. In particular, Patent Owner contends that “[t]he specification of the ’727 Patent uses the term ‘network-based portal’ consistently as being at the server-side of a network.” Prelim. Resp. 15. Patent Owner supports its contention by identifying examples where the specification of the ’727 patent describes a “portal” as separate from a “mobile phone” or from a person’s “wireless device.” Id. at 15–16 (citing Ex. 1001, 6:12–13, 6:32–33, 6:55–63, 16:1–3). But the specification also includes numerous examples where the portal functionality is implemented in a “mobile phone,” i.e., a client-side device. See Ex. 1001, 3:10–19, 9:3– 10:2, 10:17–13:27, 14:64–15:54, Figs. 7–11. For example, the specification explains that a “mobile communication device,” such as a “mobile telephone,” may perform steps depicted in Figures 7 through 11. See id. at 9:4–8, 10:17–28, 11:60–12:5, 13:1–9, 14:7–13, 14:66–67, 15:44–46; see also id. at 14:36–38 (identifying a “mobile telephone” as an example of a “mobile communication device), 17:53–55 (same). And Patent Owner categorizes a “mobile phone” as a client-side device. See Prelim. Resp. 16– 22. To adopt Patent Owner’s exclusion of client-side functionality from the scope of the recited “network-based portal” would thus exclude preferred embodiments. See PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016). Accordingly, for purposes of this Decision, we decline to adopt such an exclusion. The parties will have an opportunity to elaborate on their positions for proper construction of “network-based portal” during the trial. On the record before us, we do not find it necessary to construe any other term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Among such reasons, Petitioner identifies both references’ teachings regarding prioritization of communications from certain individuals, as well as the similarity of Diacakis’s “presence and availability” information with Loveland’s “current circumstance” information. Id. at 53–56 (citing Ex. 1007 ¶¶ 8, 24; Ex. 1008, 3:45–5:24, Figs. 1–2). Petitioner supports this identification with testimony by Dr. Almeroth, who also supports Petitioner’s contention that the combination would both yield predictable results and be reasonably expected to succeed. Ex. 1003 ¶¶ 152–161; Pet. 54–57. At this time, Patent Owner disputes neither Petitioner’s reasoning to effect the combination nor Petitioner’s specific analysis of the individual limitations of claims 7–9. On the current record, and mindful of the standard that applies during this preliminary phase of the proceeding, we find that Petitioner’s reasoning is sufficiently supported by rational underpinning.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for petitioner
“discretion under 35 U.S.C. § 314(a) to deny the Petition in light of the state of the related litigation. Prelim. Resp. 9–14 (citing, inter alia, NHK Spring Co., Ltd. v. Intri-plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)). But on the same date Patent Owner filed its Preliminary Response, the district court granted Petitioner’s motion to dismiss for improper venue, thereby terminating the related litigation. See Ex. 3001, 9. We agree with Petitioner that “this dismissal moots Patent Owner’s arguments based on Fintiv” and that “[b]ecause there is no longer any parallel proceeding, there is no basis for a discretionary denial under § 314(a).”4 Reply 1. We accordingly decline to exercise our discretionary authority to deny the Petition.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,708,727 - PTAB · May 6, 2022 · IPR2022-00360 · APJ Brent M Dougal · IPR · Institution
The Board instituted inter partes review of claims 1–30 on all petitioned grounds and granted Google’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 institute an inter partes review.2 Further, for the reasons set forth below, we grant the Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“institution of the Apple IPR. See 37 C.F.R. § 42.122(b). As noted, the Petition in this case asserts the same unpatentability grounds on which we instituted review in the Apple IPR. See Mot. 1. Petitioner also relies on the same prior art analysis and expert testimony submitted by the Apple petitioner. See id. at 5. Indeed, the Petition is nearly identical to the petition filed by the Apple petitioner. See id. Thus, this inter partes review does not present any ground or matter not already at issue in the Apple IPR. Id. If joinder is granted, Petitioner agrees to assume an “‘understudy’ role” and agrees that this role “shall apply so long as the current petition[er] in IPR2021-00922 remains [an] active” party.10 Id. at 6. Petitioner further represents that it will not advance any arguments separate from those advanced by Apple in the consolidated filings. Id. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that joinder will not impact the trial schedule for the Apple IPR. Id. at 6.” slip op. at 5
NonePatents in suitUS 8,553,079 - PTAB · Apr 6, 2022 · DER2017-00031 · APJ Jameson Lee · DER · Institution
The Board instituted a derivation proceeding as to Respondent’s claims 24–36, finding sufficient evidence that claims 24–30 and 32–35 matched the disclosed invention.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The threshold showing for institution of a derivation proceeding is whether the petition demonstrates substantial evidence, which if unrebutted, would support the assertion of derivation.5 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c). For establishing derivation, a petitioner must show that the respondent, without authorization, filed an application claiming a derived invention. 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(b)(2). The party asserting derivation must establish prior conception of an invention and communication of that conception to an inventor of the other party. Cooper v. Goldfarb, 154 F.3d 1321, 1332 (Fed. Cir. 1998); Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993); Hedgewick v. Akers, 497 F.2d 905, 908 (CCPA 1974).” slip op. at 4
- BurdenDecided for petitioner
“Exhibits 1026, 1028, 1041, and 1042, constitute sufficient evidence, under the substantial evidence standard, to support Petitioner’s assertion of conception, except for the requirement of independent corroboration. For instance, there is no declaration testimony from any of the recipients of the email communications or people who were copied on those email communications to corroborate those email communications. There is no testimony from anyone at Pro-Tech to corroborate the nature and existence of the signed manufacturing outline that is Exhibit 1042.” slip op. at 9
None - PTAB · Mar 17, 2022 · IPR2022-00091 · APJ Brent M Dougal · IPR · Institution
The Board instituted review of claims 1–31 on all petitioned obviousness grounds, granted LG’s motion to join the Apple IPR, and terminated this proceeding into that joined case.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. Grounds of Unpatentability and 37 C.F.R. § 42.104(b)(3)-(4) Patent Owner’s Preliminary Response repeats the same arguments over the Petition’s grounds of unpatentability and under 37 C.F.R. § 42.104 (b)(3)–(4) that Patent Owner presented in the Apple IPR. Compare Prelim. Resp. 9–25 with Apple IPR, Paper 8, 9–25. Thus, for the same reasons set forth in our institution decision in the Apple IPR, we determine that the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in showing that claims 1–31 would have been obvious. See Apple Dec. 11–22. Accordingly, we institute an inter partes review on the same basis as we instituted review in the Apple IPR.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“In Apple v. Uniloc, the petitioner filed a first petition for inter partes review that was denied and then, after another party filed an additional petition for inter partes review of the patent, the petitioner filed its second petition with a motion for joinder. Apple v. Uniloc at 6. However, not only was that the second petition for inter partes review filed by the petitioner, but the petitioner was also barred under 35 U.S.C. § 315(b) from filing any further petitions. Id. at 6–7. Thus, under these facts, among others, the panel exercised its discretion to decline institution of the petition after applying the General Plastic factors. Id. at 13. Here, however, none of the unique facts in Apple v. Uniloc are present. The Petition is substantially identical to the petition in IPR2021- 00920 (“the Apple IPR”), which it seeks to join, and it presents us with a standard “me too” petition with a motion for joinder. Patent Owner presents no unique facts here that separate the Petition from most other “me too” petitions with a motion for joinder, with the possible exception that Patent Owner sued both Petitioner and the petitioner in the Apple IPR for patent infringement, which is those parties’ only connection to one another identified by Patent Owner. See Prelim. Resp. 29.9” slip op. at 5
- Other 314aDecided for petitioner
“35 U.S.C. § 315(d) states: “if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.” Though we agree that 35 U.S.C. § 315(d) gives the Director authority to determine how to proceed in the present circumstances, we decline the invitation to deny the Petition based on the existence of co-pending ex parte reexamination No. 90/014,901 and our finite resources.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should: set forth the reasons joinder is appropriate; identify any new grounds of unpatentability asserted in the petition; and explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013). Petitioner timely filed the Motion no later than one month after institution of the Apple IPR. See 37 C.F.R. § 42.122 (b). As noted, the Petition in this case asserts the same unpatentability grounds on which we instituted review in the Apple IPR. See Mot. 2. Petitioner also relies on the same prior art analysis and expert testimony submitted by the Apple petitioner. See id. Indeed, the Petition is nearly identical to the petition filed by the Apple petitioner. See id. at 6. Thus, this inter partes review does not present any ground or matter not already at issue in the Apple IPR. Id. If joinder is granted, Petitioner agrees to assume an “understudy role” and “will only assume the lead role in the proceedings if Apple is no longer a party to the proceedings or unable to advance arguments for one or more claims, or grounds, for example, because of § 315(e)(1).” Id. at 2. Petitioner further represents that it “will not advance any arguments separate from those advanced by Apple in the consolidated filings.” Id. at 3. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that joinder will not impact the trial schedule for the Apple IPR. Id.” slip op. at 10
Discretionary denialPatents in suitUS 7,933,431 - PTAB · Mar 17, 2022 · IPR2022-00090 · APJ Brent M Dougal · IPR · Institution
The Board instituted IPR on claims 1–30 on all petition grounds and granted LG’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“over the Petition’s grounds of unpatentability that Patent Owner presented in the Apple IPR. Compare Prelim. Resp. 5–21 with Apple IPR, Paper 8, 5–21. Thus, for the same reasons set forth in our institution decision in the Apple IPR, we determine that the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in showing that claims 1– 30 would have been obvious. See Apple Dec. 7–17. Accordingly, we institute an inter partes review on the same basis as we instituted review in the Apple IPR.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Here, however, none of the unique facts in Apple v. Uniloc are present. The Petition is substantially identical to the petition in IPR2021- 00922 (“the Apple IPR”), which it seeks to join, and it presents us with a standard “me too” petition with a motion for joinder. Patent Owner presents no unique facts here that separate the Petition from most other “me too” petitions with a motion for joinder, with the possible exception that Patent Owner sued both Petitioner and the petitioner in the Apple IPR for patent infringement, which is those parties’ only connection to one another identified by Patent Owner. See Prelim. Resp. 25.10 The statutes and rules governing inter partes review expressly provide for joinder. See 35 U.S.C. § 315(c); 37 C.F.R. 42.122(b). For example, 35 U.S.C. § 315(c) states: Joinder.— If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Under Patent Owner’s reasoning (see Prelim. Resp. 24–29)11, essentially any petition with a motion for joinder would be denied under the General Plastic factors, even though our governing statutes and rules expressly allow the practice. Patent Owner does not address why we should ignore our governing statutes and rules allowing joinder to use the facts surrounding a motion for joinder to decline to institute the petition, and we decline to do so.” slip op. at 5
- Other 314aDecided for petitioner
“Board and . . . co-pending [ex parte] reexamination [No. 90/014,900 of the ’079 patent], the Director should deny the Petition” under 35 U.S.C. § 315(d). Prelim. Resp. 29. 35 U.S.C. § 315(d) states: “if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.” Though we agree that 35 U.S.C. § 315(d) gives the Director authority to determine how to proceed in the present circumstances, we decline the invitation to deny the Petition based on the existence of co-pending ex parte reexamination No. 90/014,900 and our finite resources.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“institution of the Apple IPR. See 37 C.F.R. § 42.122 (b). As noted, the Petition in this case asserts the same unpatentability grounds on which we instituted review in the Apple IPR. See Mot. 2. Petitioner also relies on the same prior art analysis and expert testimony submitted by the Apple petitioner. See id. Indeed, the Petition is nearly identical to the petition filed by the Apple petitioner. See id. at 6. Thus, this inter partes review does not present any ground or matter not already at issue in the Apple IPR. Id. If joinder is granted, Petitioner agrees to assume an “understudy role” and “will only assume the lead role in the proceedings if Apple is no longer a party to the proceedings or unable to advance arguments for one or more claims, or grounds, for example, because of § 315(e)(1).” Id. at 2. Petitioner further represents that it “will not advance any arguments separate from those advanced by Apple in the consolidated filings.” Id. at 3. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that joinder will not impact the trial schedule for the Apple IPR. Id.” slip op. at 10
Discretionary denialPatents in suitUS 8,553,079 - Allstate Insurance Company v. Atos, LLCInstitutedPTAB · Mar 8, 2022 · IPR2021-01449 · APJ Julia Heaney · IPR · Institution
The Board instituted review of claims 1–5 on all asserted grounds, finding a reasonable likelihood that claims 1, 2, and 5 are unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . 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). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention “would have been someone with a bachelor’s or master’s degree in the field of mechanical engineering, electrical engineering, or physics or with a bachelor’s or master’s degree in a related field and at least three years of experience in designing or developing portable device systems.” Pet. 4 (citing Ex. 1003 ¶ 52). Petitioner further argues the “Skilled Artisan would have been aware of the types of portable devices discussed below and would have known how to utilize the portable devices and their accelerometers to detect motion while inside a vehicle,” and “would have known how to model the forces on moving objects in line with Newtonian Mechanics.” Id. Patent Owner does not dispute the level of ordinary skill in the art. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’174 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“appear only in claim 5. Claim 5 is at issue in Grounds 4 and 5, but no issue in Ground 4 turns on construction of either claim term. As to Ground 5, for the reasons discussed below, we need not decide at this stage of the proceeding whether Kim discloses an “operation indicator” under either party’s proposed construction, because we determine that Petitioner has met the threshold for institution based on other claims and grounds asserted in the Petition. See SAS Guidance. Therefore, at this stage of the proceeding, no issue turns on our construction of “operation indicator” or “on-board component,” and we determine we need not construe either term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). This does not constitute a determination regarding the persuasiveness of either party’s arguments; we leave claim construction as an open question for the parties to address during trial. In that regard, we remind Patent Owner that any argument not raised in its Patent Owner response pursuant to 37 C.F.R. § 42.120 may be deemed waived.” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“analogous art. Under In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004), we determine analogous art based on (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. According to Patent Owner, the ’174 patent is directed to using the sensors of a portable device to accurately determine changes in operational state of a vehicle, such as vehicle cornering, using the relationship between vectors derived from the sensors’ output. Prelim. Resp. 3. On this preliminary record, Johnson describes monitoring driver behavior using sensors on a mobile phone (Ex. 1010, 1609), and Kleppner describes inter alia using vector operations to determine the direction of rotation of a moving object. See supra II.D.1. Thus, both references appear reasonably pertinent to the problem with which the inventors of the ’174 patent were involved.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,846,174
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.