- PTAB · Mar 7, 2025 · IPR2024-01346 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–30 and all petition grounds, finding a reasonable likelihood of unpatentability based on Fox, Safford, and Arai, with or without Landry.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“As can be seen in the discussion above and the analysis of Petitioner’s grounds below, Arai and Landry are significant to Petitioner’s challenges. Because the Office did not previously consider all of the prior art references or combinations of references relied on in the Petition, including Arai and Landry, and because Arai and Landry are not the same or substantially the same as the art that was previously considered, we determine the Office did not previously consider the same or substantially the same prior art as is relied on in the Petition.8 Further, we find that there is not a substantial overlap, if any, between the arguments made during examination and the manner in which Petitioner relies on the prior art, including Arai and Landry, as discussed above. Therefore, part one of the Advanced Bionics framework is not met, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8.” slip op. at 24
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “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). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request that we exercise our discretion to deny institution in this proceeding under 35 U.S.C. § 325(d). We therefore institute inter partes review on all challenged claims and all grounds. See” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Motivation to Combine Fox, Safford, and Arai and Fox, Safford, Landry, and Arai Petitioner asserts that a person of ordinary skill “would have found it obvious to combine Fox’s multiprocessor system with Safford’s lockstep processor and error detection logics and Arai’s processor-switching implementation details.” Pet. 10. Dr. Brogioli testifies that “[a person of ordinary skill] would have been motivated to implement the processors in Fox as lockstep processors to improve reliability and availability of Fox’s server system for critical processes, for which higher reliability and availability of the system are desired.” Brogioli Decl. ¶ 90. He further testifies that “[a person or ordinary skill] also would have been motivated to implement in Fox the error detection logics that detect loss of lockstep together with the lockstep processors as taught by Safford to implement lockstep functions and further improve availability of the system.” Id. He testifies that “[a person of ordinary skill] would have understood how to implement Fox’s processors as lockstep processors with error detection logics and expect success. [A person of ordinary skill] would only have applied well-known configurations and ordinary hardware and software configuration skills.” Id. ¶ 91. Dr. Brogioli provides additional reasons motivating the combination. Id. ¶¶ 92–99. Petitioner contends that “Arai discloses switching the role of a failing processor with a spare processor.” Pet. 10. Dr. Brogioli testifies that “[a person of ordinary skill] would have been motivated to incorporate Arai’s teaching of transferring processor context from the failing processor to the spare processor not to interrupt the operating system and its running applications as desired by Fox.” Brogioli Decl. ¶ 109. He reasons that “[a person of ordinary skill] would have understood that incorporating Arai’s benefit of switching the role of the failing processor to the spare processor without affecting the operating system and running applications, which is expressly taught as desirable by both Fox and Arai and well known in the art.” Id. ¶ 110. Petitioner asserts that a person of ordinary skill also would have been motivated to further combine these references with Landry. Pet. 33–35. Dr. Brogioli testifies that “Landry discloses a fault-tolerant boot process that dynamically designates a functional CPU as logical CPU0 that performs the unique functions of a boot processor.” Brogioli Decl. ¶ 147. He testifies further that “[a person of ordinary skill] would have understood Landry’s process would have been a suitable option for selecting a boot processor in Fox’s system consistent with the initialization protocol of the IA-32 multiprocessor system.” Id. He asserts that “[a person of ordinary skill] would have understood the benefits of implementing Landry’s boot processor selection process in Fox.” Id. ¶ 148. Among other reasons, “[a person of ordinary skill] would have further understood that using the logical CPU0 as the identification for the boot processor allows for transparent replacement of the physical processor experiencing a failure with another processor without interrupting the operating system.” Id. At this stage, Patent Owner does not respond to these arguments by Petitioner or refute the testimony by Dr. Brogioli. On this record, we find that Petitioner has sufficiently demonstrated a motivation to combine Fox and Safford with Arai and to further combine these references with Landry with a reasonable expectation of success.” slip op. at 29
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We are not aware of any controversy between the parties over the meaning of these claim terms that would affect this Decision. Therefore, we determine that at this stage, we do not need to expressly construe these claim terms to resolve a controversy.” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,627,781 - PTAB · Feb 13, 2025 · IPR2024-00978 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–17 on all petition grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“letter stipulating that if the Board institutes this IPR petition on the grounds presented therein, then Samsung will not pursue in the above-captioned litigation any grounds that were raised or reasonably could have been raised in the IPR. For the sake of clarity, this stipulation does not extend to co-petitioner Google, which is not a party to the above-referenced litigation.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 61. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 61 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co. and Cerence, Inc. as real parties in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not currently take a position on the relevant level of ordinary skill in the art, but believes that “the Board could assume Petitioner’s proposed level of ordinary skill for purposes of deciding whether to institute.” Prelim. Resp. 3. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’078 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,395,078 - Samsung Electronics Co., Ltd. / Samsung Electronics, America, Inc. v. Cerence Operating CompanyInstitutedPTAB · Jan 31, 2025 · IPR2024-01267 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on claims 1–3, 7–9, 12, and 13 on all petitioned grounds, finding a reasonable likelihood that claim 1 is obvious over Arai and Fenwick.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation in Exhibit 1020 satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor before determining that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation. In light of Petitioner’s stipulation, Patent Owner’s request is denied.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“any evidence of objective indicia of nonobviousness. We conclude that on balance, considering the record presently before us, Petitioner has established a reasonable likelihood of showing that the differences between the subject matter of claim 1 and the teachings of Arai and Fenwick are such that the subject matter, as a whole, would have been obvious at the time of the invention to a person having ordinary skill in the art. e. Summary as to Claim 1 For the reasons discussed above, on the present record we find that Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Arai and Fenwick teaches or suggests each element of claim 1 of the ’428 patent. See 35 U.S.C. § 314(a).” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’428 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Relying on the Declaration of Jean Renard Ward, Petitioner contends that “[a] POSITA would have been motivated to incorporate[] Fenwick’s teachings regarding automatically sending recognized words to an application into Arai because this would have furthered Arai’s purpose of having a natural, uninterrupted flow in entering characters without having to press extra keys.” Pet. 31–32 (citing Ex. 1002 ¶ 139). Petitioner concludes that the combination would have been obvious in that it would apply Fenwick’s known technique for recognizing words without additional user confirmation to Arai’s known method of performing handwriting recognition, ready for improvement, to yield the predictable result of the Arai/Fenwick combination: “recognition results are sent to an application without further user confirmation—e.g., pressing the Enter Key—and handwritten character recognition results are removed from the temporary memory such as RAM when the recognition results are sent to the application.” Id. at 32 (citing Ex. 1002 ¶ 140).” slip op. at 18
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,026,428 - PTAB · Jan 31, 2025 · IPR2024-00979 · APJ Lisa A Murray · IPR · Institution
The Board instituted inter partes review of claims 1–18 on all four asserted obviousness grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto. gov/sites/default/files/documents/interim_proc_discretionary_denials_aia_ parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1018) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 57. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 57 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co., a subsidiary of Cerence, Inc., as a real party in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending that Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not currently take a position on the relevant level of ordinary skill in the art and believes that “the Board could assume Petitioner’s proposed level of ordinary skill for the purposes of deciding whether to institute.” Prelim. Resp. 3. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’993 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Additionally, only terms that are in controversy need to be construed, and these need to be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this time, neither party proposes a specific construction of any given claim term, instead requesting that the claims be given their plain and ordinary meaning. Pet. 10–11; Prelim. Resp. 5.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,081,993 - PTAB · Dec 3, 2024 · IPR2024-00856 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2003). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’109 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner has stipulated as follows: Petitioners stipulate that, if the Patent Trial and Appeal Board institutes an IPR proceeding for U.S. Patent No. 8,982,109 on the grounds presented in the petition in IPR2024-00856, Petitioners will not pursue an invalidity defense in district court that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR. Paper 13 (Updated Mandatory Notices), 1 (citing Ex. 1044). We determine that this stipulation is consistent in scope with the stipulation in Sotera Wireless cited approvingly in the Guidance Memo. Consistent with the Guidance Memo, therefore, we decline to exercise our discretion to deny institution under Fintiv in view of the parallel district court proceeding.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art According to Petitioner, a person of ordinary skill in the art “as of December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 7 (citing Karam Decl. ¶¶ 65–67). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard. The prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Preliminary Response and reserves the right to propose a different level of skill should the Board grant institution.” Prelim. Resp. 13. At this stage, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We construe only those claim terms and phrases necessary to our decision. See, e.g., 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))). At this stage of the proceeding, we need not construe any claim terms and phrases to resolve a controversy. To the extent further clarification or explanation of any claim term is necessary for this Decision, we will do so in the context of our analysis of that term infra.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,982,109 - PTAB · Nov 26, 2024 · IPR2024-00810 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood that claim 1 was obvious over Rosenberg and Park.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Trademark Office issued a Memorandum setting forth an “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Guidance Memo”).9 The Guidance Memo states that “[c]onsistent with Sotera Wireless, Inc., 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.” Guidance Memo 3 (footnote and emphasis omitted).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on all of the parties’ arguments and evidence, Petitioner demonstrates a reasonable likelihood of establishing that claim 1 of the ’110 patent would have been obvious over Rosenberg and Park. Pet. 18–19, 52–73, Prelim. Resp. 6–8, 14–18. In the following sections, we discuss in detail the parties’ current disputes regarding Petitioner’s position that claim 1 would have been obvious over Rosenberg and Park.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 8 (citing Ex. 1003 ¶ 91). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard” and that “[t]he prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Preliminary Response and reserves the right to propose a different level of skill should the Board grant institution.” Prelim. Resp. 10. At this stage, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We construe only those claim terms and phrases necessary to our decision. See, e.g., 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))). At this stage of the proceeding, we need not construe any claim terms and phrases to resolve a controversy.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,982,110 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · Nov 26, 2024 · IPR2024-00796 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that claims 1 and 11 would be obvious over Nevo and Avitabile.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Stipulate[s] and agree[s] that, if the PTAB institutes an inter partes review proceeding (“IPR”) for U.S. Patent No. 7,483,686 on the grounds presented in [the Petition], [Petitioner] will not pursue an invalidity defense in [the Western District of Texas Litigation] that the patent claims subject to the instituted IPR are invalid based on the same grounds as in the [P]etition or any grounds that could have reasonably been raised in the [P]etition. Ex. 1015 (letter from M. Bernstein to J. Charkow, dated May 21, 2024); see also Prelim. Reply 1 (“Patent Owner’s Preliminary Response (Paper 6) fails to acknowledge, much less address, Petitioner’s Sotera stipulation not to pursue in the related litigation the same grounds or any grounds of invalidity that could reasonably have been raised in this IPR.”); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020) (Decision Granting Institution) (precedential as to § II.A).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of [radio frequency (‘RF’)] circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems,” and “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree.” Pet. 14–15 (citing Ex. 1002 ¶ 38). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. See generally Prelim. Resp. We determine, on the current record, that Petitioner’s proposed level of ordinary skill is consistent with the ’686 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d at 1579. We adopt that level of ordinary skill in the level of ordinary skill in the art based on the full trial record. slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that all claim terms should be given their plain and ordinary meaning. Pet. 15 (citing Ex. 1002 ¶ 74). Petitioner, however, notes that several claim terms in the ’686 patent, or closely related claim terms for patents related to the ’686 patent, have been construed during prior litigation involving Patent Owner. Id. Petitioner discusses five claim terms and various constructions proposed or adopted in prior litigation. Id. at 15–20.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,483,686 - PTAB · Nov 26, 2024 · IPR2024-00934 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR of claims 19–21 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On June 21, 2022, the Director issued interim guidance in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors. See Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation at 3, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Notably, the Director stated that “the [Patent Trial and Appeal Board (‘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 ground that could have been reasonably raised before the PTAB.” Id. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding under Fintiv because TI filed a Sotera stipulation. Pet. 80; Ex. 1041.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construed as “indirectly or directly connecting such that an electrical signal can flow between”; and (2) “impedance device” was construed as “a device that exhibits an impedance.” Id. at 6. Even though TI identifies four claim terms in total in the Petition, TI argues that the asserted prior art renders the challenged claims unpatentable under any reasonable construction of those claim terms. See, e.g., id. at 4 (arguing that the “prior art analyzed here renders the claims unpatentable under either [party’s] constructions” proposed in the district court case), 6 (arguing that the “prior art renders the Challenged Claims unpatentable under . . . the [Board’s] constructions”). In its Preliminary Response, ParkerVision does not address TI’s proposed constructions, nor does ParkerVision identify additional claim terms that would require construction at this stage in the proceeding. See Prelim. Resp. Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any preliminary response thereto shows “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). Taking into account ParkerVision’s Preliminary Response, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that TI would prevail in demonstrating at least one of claims 19– 21 of the ’342 patent is unpatentable. Pursuant to § 314, we hereby institute an IPR as to claims 19–21 of the ’342 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of institution, there is sufficient evidence in the record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Galton, TI argues the following: [a] person of ordinary skill in the art . . . as of the ’342 Patent’s priority date (April 14, 2000) would have had a least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of EM circuit design. Less work experience may be compensated by a higher level of education, such as a master’s degree. Pet. 6 (citing Ex. 1003 ¶¶ 28–30). In its Preliminary Response, ParkerVision does not address TI’s assessment of the level of skill in the art. See Prelim. Resp. At this stage of the proceeding, we adopt TI’s uncontested assessment of the level of skill in the art because it is consistent with the ’342 patent and the asserted prior art.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,496,342 - PTAB · Sep 12, 2024 · IPR2024-00620 · APJ John A Hudalla · IPR · Institution
Instituted IPR on claims 1–8, 14–22, and 25 on all asserted grounds after finding a reasonable likelihood of prevailing on the Tobita obviousness grounds and declining General Plastic denial.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had a relevant technical degree in Electrical Engineering, Computer Engineering, Materials Science, Physics, or the like, and experience in active matrix display design and electroluminescence.” Prelim. Resp. 16 (citing Ex. 2019 ¶ 36). Patent Owner criticizes Petitioner’s proposed definition because it “entails only general ‘circuit design’ experience with no experience in active matrix display design and electroluminescence, the subject matter of the ’593 Patent.” Id. at 17; see also Ex. 2019 ¶¶ 38–39 (Dr. Wolfe’s testimony regarding the same). In particular, Patent Owner argues that “[i]mportant aspects and considerations of the pixel circuit design are unique to the context of active matrix display design and to electroluminescent displays.” Prelim. Resp. 17 (citing Ex. 2019 ¶ 38). Patent Owner additionally notes that the Administrative Law Judge (ALJ) in the ITC Investigation adopted Patent Owner’s definition. Id. at 16–17 (citing Ex. 2018, 12). For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. Although “[t]he challenged patent pertains generally to the field of OLED displays,” it is directed “more particularly to the circuitry used to drive and control the pixels that comprise the light-generating elements of the display.” Ex. 1003 ¶ 29; see also Ex. 1001, 1:16– 18 (describing the Field of the Invention as relating to “a stage circuit and an organic light emitting display using the same”). Moreover, we note, for example, that claim 1 does not include any limitations directed to “active matrix displays” or any other particular type of display, which suggests that an ordinarily skilled artisan need not have had specific experience designing such displays. See Ex. 1001, 9:43–45 (reciting “[a] stage circuit”). In addition, Patent Owner’s proposed definition is imprecise because it does not quantify the amount of experience possessed by an ordinarily skilled artisan. Therefore, at this stage, we adopt Petitioner’s definition because we find it to be more consistent with the teachings of the ’593 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededOther
“For purposes of this Decision, we apply the same construction as the ITC ALJ, i.e., that controlling the voltage of the second node does not require the voltage of the second node to be determined by the first driver alone. This is supported by contrast with another limitation in claim 1, which expressly recites direct control: “the signal of the third input terminal directly controls.” Ex. 1001, 9:58 (emphasis added). This is also supported by a paragraph in the Specification of the ’593 patent explaining that the Specification uses the word “directly” in contexts where the same is intended. Id. at 4:19–26. Further, as noted by the ITC ALJ, the Specification of the ’593 patent states that the second driver “controls the voltage on the first node” where such control is accomplished in conjunction with the outputting unit. Ex. 2018, 31–32 (citing Ex. 1001, 5:60–62, claims 1, 15). This supports the ITC ALJ’s understanding with respect to the first driver, i.e., that control can occur in conjunction with other elements.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Specifically, Petitioner relies on the timing diagram in Figure 21B of Kimura to illustrate the operation of the circuit in Figure 27C. Pet. 19 (reproducing Ex. 1004, Fig. 21B). Petitioner acknowledges that the timing diagram “is not specific to the device of Figure 27C.” Id. Still, Petitioner contends the Figure 27C circuit “would (or at least obviously could) be supplied with input signals in the same manner and with the same timing” because it includes “the same input and output lines and many of the same transistors as Kimura’s other circuits.” Id. (citing Ex. 1003 ¶¶ 160–165). According to the timing diagram, the potential of node 13 (V13) is shown at its highest level during period D. See Ex. 1004, Fig. 21B. Petitioner also cites Kimura for teaching that “the potential of the node 13 becomes an H level.” Pet. 18 (quoting Ex. 1004 ¶ 256). Yet Kimura describes the Figure 27C circuit’s operation at period D differently: “[I]n a period D, the potential of the node 13 can be lowered. Therefore, dielectric breakdown or deterioration of the transistor connected to the node 13 (e.g., the transistor 102, the transistor 203, the transistor 205, or the transistor 206) can be prevented.” Ex. 1004 ¶ 286 (emphasis added). And Petitioner cites this very teaching in its analysis of limitation [1-B]. See Pet. 20–21. This inconsistency undermines Petitioner’s argument that “the device of Figure 27C . . . would (or at least obviously could) be supplied with input signals in the same manner and with the same timing.” Id. at 19. In light of this inconsistency, and in the absence of a sufficient explanation as to why Kimura’s teachings about different circuits apply to the Figure 27C circuit on which Petitioner relies, we find Petitioner’s analysis of claim 1 to be deficient. Thus, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over Kimura.” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for petitioner
“presents facts that are different from those in General Plastic because Petitioner here did not use a prior Board decision or a prior preliminary response as a roadmap. Given the lack of road-mapping specific to our proceedings, we find that Factor 3 weighs strongly against exercising discretion to deny institution. Further, we note that “factors 1–3 only weigh in favor of discretionary denial when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 19 at 5 (PTAB Aug. 23, 2022) (precedential) (“Code200”). Although Patent Owner alleges concerns under Factor 2 insofar as Petitioner knew or should have known of the asserted references at the time of the petition in IPR2023-01221 (Prelim. Resp. 9–12; PO Prelim. Sur-reply 2), we find such concerns to be of minimal significance where there is no road-mapping. Thus, we consider Factor 1 in conjunction with Factors 2 and 3 (see Code200 at 5) and find that Factors 1– 3 weigh against exercising discretion to deny institution. Similarly, the timing of the second petition in relation to the filing of the first petition (Factor 4), and when petitioner learned of the prior art (Factor 5), are more pertinent to the situation where the second petition is filed by a party using prior art allegedly newly discovered after receiving the Board’s unfavorable decision, as was the case in General Plastic, or after a preliminary response was filed in the first case. General Plastic at 10. That is not the situation before us here. We also do not agree with Patent Owner (see Prelim. Resp. 4–9) that the interplay between the instant case and the ITC Investigation implicates the same concerns from General Plastic about abuse or gamesmanship from multiple, staggered petitions. See General Plastic at 16–17. As in Code200, we find that “Patent Owner’s concerns of fairness are outweighed by the benefits to the patent system of improving patent quality by reviewing the merits of the challenges raised in the petitions, which have not been addressed to date.” Code200 at 6. Thus, we determine that Factors 4 and 5 do not weigh in favor of exercising our discretion to deny institution. Regarding Factor 6, Patent Owner argues that “[t]he Board should not expend its finite resources to endorse Petitioner’s second bite at the apple.” Prelim. Resp. 14. Nevertheless, because the earlier proceeding was terminated at Petitioner’s request, the Board has not previously considered the merits of Petitioner’s unpatentability contentions, and the Board’s involvement in the parties’ disputes related to the ’593 patent has been minimal up to this juncture. In the absence of meaningful efficiency concerns, we find that Factor 6 does not weigh in favor of exercising our discretion to deny institution. For Factor 7, we know of no reason why we could not meet the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination within one year of institution, so we also find that this factor does not weigh in favor of exercising discretion to deny institution. After considering Petitioner’s and Patent Owner’s arguments, we conclude that the General Plastic factors weigh against exercising our discretion to deny review.” slip op. at 61
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,330,593 - PTAB · Jul 24, 2024 · IPR2024-00465 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–24 on all petition grounds, finding a reasonable likelihood that Irwin renders at least one challenged claim obvious.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“Even assuming Linq3 is a real party in interest to Petitioner and assuming we may exercise our discretion to deny institution based on unclean hands (see Kavo Dental Techs, LLC v. Osseo Imaging, Inc., IPR2020-00659, Paper 10 at 19 (PTAB June 10, 2020)), Patent Owner essentially asks us to resolve multiple factual issues related to its contract dispute with Linq3 to justify denial of institution. See, e.g., Prelim. Resp. 1– 26. Many, if not all, of these issues appear to be involved in the contract dispute, which will be resolved by the Arizona state court. We are not in a good position to make determinations about these particular issues at this stage of the proceeding, on the limited record before us. Rather, we find that the state court is better suited to address the conduct of Linq3 of which Patent Owner complains. Accordingly, we leave these matters for the state court. To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party in interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response, and the parties may brief and argue the issue during trial.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“We disagree. First, we agree with Patent Owner that the fact pattern presented here is not the typical situation in which the factors from General Plastic are considered. In particular, this proceeding challenges claims of a different patent than the patents at issue in PGR2020-00084 and IPR2023- 01235. Challenging claims of different patents significantly distinguishes the facts here from those in General Plastic, and we decline Patent Owner’s invitation to extend General Plastic in this regard. Accordingly, we do not exercise our discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Even assuming Linq3 is a real party in interest to Petitioner and assuming we may exercise our discretion to deny institution based on unclean hands (see Kavo Dental Techs, LLC v. Osseo Imaging, Inc., IPR2020-00659, Paper 10 at 19 (PTAB June 10, 2020)), Patent Owner essentially asks us to resolve multiple factual issues related to its contract dispute with Linq3 to justify denial of institution. See, e.g., Prelim. Resp. 1– 26. Many, if not all, of these issues appear to be involved in the contract dispute, which will be resolved by the Arizona state court. We are not in a good position to make determinations about these particular issues at this stage of the proceeding, on the limited record before us. Rather, we find that the state court is better suited to address the conduct of Linq3 of which Patent Owner complains. Accordingly, we leave these matters for the state court. To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party in interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response, and the parties may brief and argue the issue during trial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that Irwin would have rendered the subject matter of claims 1–9 and 11–24 of the ’451 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 38
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,488,451
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.