- PTAB · Mar 28, 2025 · IPR2024-01505 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–8, 15, 17, and 19–25 because Petitioner showed a reasonable likelihood of proving obviousness over Rusert and Zheng.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.§ 314(a). 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). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’833 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’833 patent on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art (hereinafter “POSITA”) “would have had (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study such as physics, and (2) approximately two to three years of practical experience with video encoding/decoding.” Pet. 19 (citing Ex. 1003 ¶¶ 37–39). Patent Owner states that it “has applied Petitioner’s POSITA for the sake of this Response.” Prelim. Resp. 33. On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Creusere and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“That specific claim language of association indicates a relationship between “the block” and the first spatial motion vector prediction candidate, that is more than how every single prediction candidate broadly may be regarded in general as related to the current block being processed, the block for which a motion vector prediction list is being generated. The modifier “associated with the first spatial motion vector prediction candidate” clearly modifies “the block” at issue here and cannot be discarded or ignored. Further, if “the block” refers to the block recited in limitation [1a], i.e., the current block being processed, then the modifying phrase “associated with the first spatial motion vector prediction candidate” would be superfluous and have no meaning, because “the block,” without the modifying phrase, would already derive its antecedent basis from “a block of pixels” recited in limitation [1a]. We decline to adopt a construction that reads out “associated with the first spatial motion vector prediction candidate.” Construing the claim according to what the claim language actually states, without excluding any part of the claim language recited, is more appropriate.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,571,833 - PTAB · Mar 28, 2025 · IPR2024-01503 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 9–14, 16, 18, and 26–30 based on a reasonable likelihood of obviousness over Rusert and Zheng.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). 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). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’833 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’833 patent on all grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“That specific claim language of association indicates a relationship between “the block” and the first spatial motion vector prediction candidate, that is more than how every single prediction candidate broadly may be regarded in general as related to the current block being processed, the block for which a motion vector prediction list is being generated. The modifier “associated with the first spatial motion vector prediction candidate” clearly modifies “the block” at issue here and cannot be discarded or ignored. Further, if “the block” refers to the block recited in limitation [9a], i.e., the current block being processed, then the modifying phrase “associated with the first spatial motion vector prediction candidate” would be superfluous and have no meaning, because “the block,” without the modifying phrase, would already derive its antecedent basis from “a block of pixels” recited in limitation [9a]. We decline to adopt a construction that reads out “associated with the first spatial motion vector prediction candidate.” Construing the claim according to what the claim language actually states, without excluding any part of the claim language recited, is more appropriate.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“particular teachings sought to be combined. Rather, it appears, according to Petitioner, anything in Nakamura properly can be combined with anything in WD4 simply because Nakamura is a proposal for the next draft version of new standard H.265, i.e., version 4, and WD4 is the resulting draft version 4 of H.265 after all the proposals had been considered. Pet. 65–66. Petitioner’s reasoning is flawed and based on mere speculation. Nakamura is not a proposal to revise or modify WD4. WD4 did not yet exist at the time the Nakamura proposal was made. Even if some suggestions of Nakamura made it into WD4, as Petitioner asserts (Pet. 65), i.e., spatial merge candidate positions unification, that does not mean one of ordinary skill in the art would have had reason to combine other teachings of Nakamura with particular disclosures of WD4. Even assuming Nakamura and WD4 have striking similarities in some way and also a common purpose to some general extent, that still does not mean everything in one is combinable with everything in the other, without specific consideration and discussion of what are proposed to be combined and in what manner. g. Preliminary Conclusion for Claim 9 For the foregoing reasons, Petitioner has not shown a reasonable likelihood that it would prevail in establishing obviousness of claim 9 over Nakamura and WD4.” slip op. at 63
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We must grant or deny institution on both of Petitioner’s grounds. See 37 C.F.R. § 42.108(a). Petitioner has made a sufficient showing based on Rusert and Zheng for the Board to institute review, but not Nakamura and WD4. Here, § 325(d) is not sufficiently implicated that its statutory purpose would be undermined. Rather, the benefits of holding a trial to resolve the Rusert-Zheng ground for which Petitioner has shown a likelihood of prevailing outweigh any theoretical burden of addressing the weaker Nakamura-WD4 ground, to the extent that the Examiner considered Nakamura and WD4. See Dril-Quip, Inc., v. FMC Tech., Inc., PGR2021- 00049, Paper 10 at 13–14 (PTAB Aug. 4, 2021) (declining to exercise discretion to deny institution under § 325(d) even though one asserted ground was “weak” on the merits). Thus, we do not exercise our discretion to deny institution based on § 325(d). 3. Conclusion We find that the same or substantially the same prior art or arguments, i.e., Rusert (Ex. 1004) and Zheng (Ex. 1005), previously were not presented to the Office. We need not proceed past the first stage of the Advanced Bionics framework. We decline to exercise discretion under § 325(d) to deny the Petition.” slip op. at 68
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,571,833 - PTAB · Nov 7, 2024 · IPR2024-00605 · APJ Jameson Lee · IPR · Institution
Instituted review of claims 9–14, 23–28, and 30 on all petition grounds; Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.§ 314(a). 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). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’714 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’714 patent on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Based on the foregoing arguments, which lack specifics and do not sufficiently map the particular teachings from Rusert relied on by Petitioner to the disclosures of Han, Tai, and Huang, we do not find Rusert to be cumulative of these references. Further, even if all of Rusert’s teachings 13 Han, Woo-Jin, et al., Improved Video Compression Efficiency Through Flexible Unit Representation and Corresponding Extension of Coding Tools, 20 IEEE Transactions on Circuits and Systems for Video Technology 1709 (2010). 14 Tai, Shen-Chuan, et al., A Multi-Pass True Motion Estimation Scheme with Motion Vector Propagation for Frame Rate Up-Conversion Applications, 4 Journal of Display Technology 188 (2008). 15 Huang, Ai-Mei, et al., A Multistage Motion Vector Processing Method for Motion-Compensated Frame Interpolation, 17 IEEE Transactions on Image Processing 694 (2008). relied on by Petitioner can be found in Han, Tai, and Huang as a collection of separate partial teachings from each, that still does not demonstrate Rusert as a cumulative reference. The quality of disclosure simply is not the same if three references have to be combined to yield what Rusert itself discloses. Patent Owner also does not explain how it combines Han, Tai, and Huang to provide the same teachings relied on from Rusert by Petitioner.16” slip op. at 65
- Parallel petitionsDenied
“Although we do not think 30 claims are too numerous for one petition to cover, many claims in the ’714 patent are extraordinarily lengthy and include numerous limitations. For example, claim 6, which depends from claim 5 which depends from claim 1, is more than one column long in the ’714 patent. The length of claim 20, which depends from claim 19, which depends from claim 15, also is more than one column long in the ’714 patent. Additionally, we agree with Petitioner that the subject matter of the ’714 patent is complex. We further agree with Petitioner that the division of claims among the two petitions, i.e., encoder claims in IPR2024-00604 and decoder claims in IPR2024-00605, is a structured division which helps to facilitate the handling of two petitions. Patent Owner has not presented arguments urging that the filing of two petitions by Petitioner against the ’714 patent is excessive. For the foregoing reasons, we determine that the filing of two petitions by Petitioner against the ’714 patent is reasonable under these circumstances. We decline to exercise discretion to deny either petition on the ground of the Petitioner filing an excessive number of petitions against the ’714 patent.” slip op. at 69
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Creusere, Petitioner asserts a person of ordinary skill in the art (hereinafter “POSITA”) “would have had (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study such as physics, and (2) approximately two to three years of practical experience with video encoding/decoding.” Pet. 21 (citing Ex. 1003 ¶¶ 57–59). Patent Owner states that it “has applied Petitioner’s POSITA for the sake of this Response.” Prelim. Resp. 31. On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Creusere and not 11 The record does not include any evidence of secondary considerations of nonobviousness. disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,536,714 - PTAB · Feb 21, 2024 · IPR2023-01287 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood of success on at least one claim based on the obviousness challenges.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“restriction region” should not be limited to an “exclusionary zone” or “an area where the vehicle is excluded from entry,” as asserted by SZ DJI. See Prelim. Resp. 9; Prelim. Sur-reply 2. Upon reviewing the specification of the ’121 patent, it states the following: “[i]n some embodiments, a flight response measure may include allowing the UAV to remain in the flight restriction region, but imposing certain restrictions on the operation of the UAV within the flight restriction region. The UAV may be forced to remain within the flight restriction region.” Ex. 1001, 17:44–49. Construing the claim term “restriction region” in accordance with SZ DJI’s proposed construction as an “exclusionary zone” would exclude these embodiments, which allow the UAV to remain in the flight restriction region, or force the UAV to remain within the flight restriction region. See, e.g., Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (Although a preferred embodiment should not be read into claims as limitations, construction of a claim term that excludes a preferred embodiment “is rarely, if ever, correct and would require highly persuasive evidentiary support.”). In light of these embodiments, which do not comport with SZ DJI’s proposed construction, and lacking persuasive evidentiary support from the specification to support its narrow construction, the proper construction of the claim term “restricted region” is broader than SZ DJI would allow. At this stage of the proceeding, lacking a clear construction for the claim term “restriction region” in the Petition itself, we decline to adopt Textron’s implied construction for this claim term presented for the first time in the Preliminary Reply. See Prelim. Reply 1. Instead, for the purposes of institution, we preliminary construe the claim term “restricted region” in accordance with its plain and ordinary meaning as “any region in which it is possible to limit or affect operation of a ground vehicle.”3 Our preliminary construction finds support in various embodiments disclosed the specification, which include both confinement and exclusion. See, e.g., Ex. 1001, 17:48–49 (“The UAV may be forced to remain within the flight restriction region.”), 22:46–48 (“For instance, if the user is approaching a flight restriction region, the user may be alerted and may change course of the UAV to exit the flight restriction region.”). During trial, if the construction of the claim term “restriction region” remains in dispute, we invite the parties to provide arguments and evidence regarding the plain and ordinary meaning of this claim term. slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION We conclude that the information presented in the Petition demonstrates that there is a reasonable likelihood that Textron would prevail in challenging at least one of claims 1–30 of the ’121 patent as unpatentable. Accordingly, we institute an IPR as to all challenged claims and all the grounds raised in the Petition. See 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims or the construction of any claim term. IV. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), an IPR is hereby instituted as to all of the challenged claims and all of the grounds raised in the Petition; and” slip op. at 54
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Based on our initial review of Humphries, we are persuaded by SZ DJI’s argument that the reference does not disclose, either expressly or inherently, “private property,” such as residential and commercial buildings. See Ex. 1004. It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it, for example, if the prior art necessarily functions in accordance with, or includes, the claimed limitations. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). However, the fact that a certain thing may result from a given set of circumstances is not sufficient for inherent anticipation. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Figure 2 of Humphries does not meet the exacting standard of anticipation because there is nothing within the four corners of this reference indicating that the geofence objects 220 actually encompass the city of Clinton, Mississippi, much less that such a location would be associated with private property, such as residential or commercial buildings. Notwithstanding, we believe that Humphries, together with the general background knowledge of a person of ordinary skill in the art, teaches that the geofence annotated in Textron’s version of Figure 2 would encompass a real-world location, such as the city of Clinton, Mississippi, which at the very least includes “a location associated with a private property.” We address this below when addressing the asserted ground based on obviousness over Humphries. See infra Section II.C.2.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the preliminary record, the purported deficiencies identified by SZ DJI do not undermine Textron’s asserted obviousness ground based on the combined teachings of Humphries and Marcus. For example, it is not dispositive that both Humphries and Marcus relate to systems applicable to airborne vehicles, whereas the challenged claims require a ground vehicle, because Humphries explicitly contemplates that its system also is applicable to a ground vehicle. Ex. 1004, 4:26–31 (disclosing that tracked device 120 may be “associated with a vehicle such an automobile, truck or the like”), 5:44–46 (“The object being tracked as described in the present invention is a vehicle (e.g., cars, boats, trucks, trains).”). Moreover, as we explain in our preliminary claim construction analysis above, we decline to adopt SZ DJI’s narrow view of the claim term “restriction region” as limited to exclusion. Instead, we preliminary construe the claim term “restricted region” in accordance with its plain and ordinary meaning as “any region in which it is possible to limit or affect operation of a ground vehicle.” See supra Section II.A. Lastly, even if the user and roles in Humphries and Marcus are different or there are certain disclosures in Marcus that might create tension with its proposed combination with Humphries, this would not undermine Textron’s rationale to combine the teaching of these two reference. Textron does not seek to bodily incorporate all of Marcus into Humphries, but instead only relies on Marcus to teach specifying a location associated with private property. See Pet. 47–48 (citing Ex. 1005 ¶¶ 14, 17). In summary, Textron has shown a reasonable likelihood that it would” slip op. at 38
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,482,121 - Apple Inc. v. Mozido, Inc.InstitutedPTAB · Jan 4, 2023 · IPR2022-01150 · APJ Kristen L Droesch · IPR · Institution
Instituted IPR on claims 1–21 and all petition grounds; claims 1–3, 6–10, 13–17, 20, and 21 met the institution threshold under § 103 over Easterly and Luz.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For all of the foregoing reasons and based on the record before us, we determine there is a reasonable likelihood Petitioner would prevail in showing that claims 1–3, 6–10, 13–17, 20, and 21 are unpatentable under 35 U.S.C. § 103 over Easterly and Luz. We, however, determine that there is not a reasonable likelihood Petitioner would prevail in showing that claims 4, 5, 11, 12, 18, and 19 are unpatentable under 35 U.S.C. § 103 over Easterly and Luz. In any event, because Petitioner has satisfied the threshold for institution as to at least one claim, we institute inter partes review on all claims and all grounds raised in the Petition. See 37 C.F.R. § 42.108(a). III. CONCLUSION For the foregoing reasons, we determine there is a reasonable likelihood that Petitioner would prevail in showing at least one of the challenged claims of the ’785 Patent is unpatentable. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–21 of the ’785 Patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“For the purposes of institution and based on Petitioner’s citations to Easterly, Luz, and Dr. Houh’s testimony (Ex. 1003), we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art at the time of the invention to include a total payment amount that is to be paid in the embedded payment information of Easterly’s barcode. See Pet. 21–25; KSR, 550 U.S. at 418. Petitioner contends that the combination is an example of combining prior art elements according to known methods to yield predictable results. See Pet. 21 (citing Ex. 1003 ¶ 50). Petitioner also asserts that the combination is explicitly suggested because “Easterly’s barcode ‘contains all of the data required to authenticate, authorize, clear, and settle a transaction’” and “‘incorporate[s] information sufficient to identify the parties to a transaction and all other ¶¶ 18, 20) (emphasis omitted), 22 (quoting Ex. 1005 ¶ 18) (emphasis omitted). According to Petitioner, “because Easterly notes that price is pertinent to the transaction, and that the barcode includes all the data required to process the transaction, or relevant to the transaction, it would have been obvious for the barcode to include the total price.” Id. at 21 (citing Ex. 1003 ¶ 51). Petitioner also asserts that a person of ordinary skill in the art “would have understood that transaction information such as the items subject to the transaction would be important and thus obvious to include within the barcode that is used at point-of-sale terminals.” Id. at 22 (citing Ex. 1003 ¶ 52). Petitioner further contends that Luz provides an explicit example of putting information regarding a product or a service, a cost of the product or the service, a tax amount, and a total price; purchase payment information, merchant information, purchaser information, in a barcode. See Pet. 22 (quoting Ex. 1006 ¶ 40, claim 6; citing Ex. 1006, claim 12; Ex. 1003 ¶ 53). According to Petitioner, [g]iven Easterly’s suggestion that the barcode includes the total price and items subject to a transaction, along with Luz’s explicit teaching of a barcode including such information, a [person of ordinary skill in the art] would have found it obvious for Easterly’s barcode to include price and items of the transaction. Including such information as the total price would have yielded the predictable result of having the barcode include data that is relevant to the transaction.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art in August of 2012 would have had a working knowledge of the software arts that are pertinent to the ’785 patent. That person would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of software programming. Lack of work experience can be remedied by additional education, and vice versa. Pet. 12 (citing Ex. 1003 ¶¶ 20–22). Patent Owner offers essentially the same definition of the level of skill in the art as Petitioner, asserting that a person of ordinary skill in the art as of the effective filing date of the ’785 Patent would have had a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development involving network-based monetary transaction systems. . . . Lack of work experience can be remedied by additional education, and vice versa. . . . Appropriate experience could substitute for education. Prelim. Resp. 4–5 (citing Ex. 2001 ¶ 35). For the purposes of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it appears to be consistent with the level of skill reflected by the ’785 Patent Specification and the asserted prior art, and does not materially differ from Patent Owner’s definition.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner contends that there is no disclosure in Easterly that a debit network is selected based on location. See Prelim. Resp. 16 (citing Ex. 2001 ¶ 69), 19 (citing Ex. 2001 ¶ 82), 21 (citing Ex. 2001 ¶ 95). Patent Owner asserts that Easterly discloses in paragraph 24 “that the customer’s the customer, but there is no disclosure that location plays any role at all in selecting a debit network.” Id. at 16 (citing Ex. 2001 ¶ 70). According to Patent Owner, “[e]ven if Easterly discloses that different merchants can have different debit network preferences, there is no disclosure that such a preference is based on the location where the payment is initiated, and certainly no disclosure that any selection is based on location.” Id. (citing Ex. 2001 ¶ 70). We agree with Patent Owner that Easterly does not teach or suggest selecting a debit network based on a merchant’s location or otherwise based on a location where a payment is initiated. See Prelim. Resp. 16. On this record, we are not persuaded by Petitioner’s contentions that Easterly teaches or suggests selecting a debit network based on a location at which the payment is initiated based on Easterly’s disclosure of considering merchant’s preferences in selecting a debit network, and due to the fact that different merchants may be located in different locations. For example, Petitioner does not direct us to, nor can we find, a disclosure in Easterly that a merchant’s preferences will reflect a preference based on the location of the merchant. Accordingly, for purposes of institution and based on the record before us, Petitioner does not establish sufficiently that the subject matter of dependent claims 4, 11, and 18 would have been obvious over the combination of Easterly and Luz.” slip op. at 27
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,189,785 - PTAB · Jul 13, 2022 · IPR2022-00165 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–3 and 6–10 on every asserted ground after finding a reasonable likelihood of success for at least one claim and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Guidance Memo”). The Guidance Memo states: “[T]he 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 at 3. Petitioner states: “Petitioner already stipulated that if IPR is instituted it will not pursue in the parallel litigation any ground that is raised or that could have reasonably been raised in an IPR. This favors institution. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential).” Prelim. Reply 5 (emphasis added). With regard to this representation by Petitioner, Patent Owner asserts: “There is no such stipulation of record in this matter or in the District Court, [See EX2018], nor has Petitioner ever provided any such stipulation by any other means.” Prelim. Sur-reply 4. Petitioner’s averment itself constitutes written representation to the Board that if inter partes review is instituted in this proceeding it will not pursue in the parallel litigation any ground that is raised or that could have reasonably been raised in this proceeding. Because Petitioner has represented to the Board that if inter partes review is instituted it will not pursue in the parallel litigation any ground that is raised or that could have reasonably been raised in an IPR, we decline to deny the Petition discretionarily. Guidance Memo at 3.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. 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) (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). 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). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review on all challenged claims and on each ground set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 2009 ¶ 23.6 Based on the language “[i]f the qualifications of a POSITA were as stated by Petitioner’s expert Dr. Willis,” we read the above-quoted testimony of Dr. Surati as indicating that in rendering his opinions, he has assumed the level of ordinary skill as stated by Mr. Willis, and that he has restated that level of ordinary skill more simply as: “a bachelor’s degree in computer science or electrical engineering, along with two or more years of experience with instant messaging and web-based servers and client systems.” Petitioner’s assertion is supported by the testimony of Mr. Willis. Ex. 1004 ¶¶ 32–35. Petitioner’s assertion also appears consistent with the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Given that Patent Owner has not disputed Petitioner’s assertion of the level of ordinary skill in the art, we adopt Petitioner’s primary statement of the level of ordinary skill in the art, but exclude Petitioner’s “alternative” statement for reasons discussed above. B.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner has not proposed a specific construction for any claim term, and states that no express construction is necessary. Pet. 5. Further, Petitioner states that it interprets claims according to the standard set forth in Phillips. Id. Patent Owner has proposed an express construction for the term “event.” Also, the parties’ arguments reveal conflicting understanding and interpretation of the term “alternative title.” Patent Owner argues that in the context of the ’179 patent, an event is a “detectable condition of a system that can trigger a notification.” Prelim. Resp. 16. On the current record, however, we are uncertain that Patent Owner’s construction is the correct construction. For example, the ’179 patent explains that the method possesses “an event, such as by way of example but not limitation, a new mail event, a new instant message event, a reminder event, a calendar event, or some other event, and generating a string of characters that includes information associated with the event.” Ex. 1001, 2:3–7 (emphasis added). The quoted text appears broad. The ’179 patent states that the events used in the embodiments are merely examples. Id.; see also id. at 12:30–32 (“As used herein, the term ‘embodiment’ means an embodiment that serves to illustrate by way of example but not limitation.”). We have no need, however, to provide an express construction for “event,” because even under Patent Owner’s proposed construction for event, as explained in the discussions of the alleged grounds of unpatentability below, Petitioner has made a sufficient showing for institution purposes.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,402,179 - PTAB · Jul 13, 2022 · IPR2022-00164 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–3 and 6–10 on all grounds, finding a reasonable likelihood of success on obviousness over Kim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“According to our precedent, one way to mitigate those concerns is for a petitioner to present a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the Board. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential); accord Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Consistent with [Sotera], 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.”).3 Such a “stipulation ensures that an inter partes review is a ‘true alternative’ to the district court proceeding.” Sotera, Paper 12 at 19 (citing Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 12 n.5 (PTAB June 16, 2020) (informative, designated July 13, 2020)).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “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 discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. And we have not been provided a sufficient reason to exercise our discretion to deny institution. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s alternative definition that “a PHOSITA would possess equivalent additional formal education such as graduate studies, or work experience to replace formal education” is unclear or, at best, does not meaningfully contribute to the first definition. See id. For example, Petitioner does not explain whether or how additional graduate studies would be both equivalent and additional to the education described in the first definition. See id. “would be someone with a bachelor’s degree in computer science or electrical engineering, along with two or more years of experience with instant messaging and web-based servers and client systems.” Prelim. Resp. 15 (citing Ex. 2009 ¶ 23). Patent Owner’s declarant, Dr. Surati, testifies: It is my belief that a POSITA [person with ordinary skill in the art] of the ‘135 patent would have possessed: a bachelor’s degree in computer science or electrical engineering, along with two or more years of experience with instant messaging and web-based servers and client systems. If the qualifications of a POSITA were as stated by Petitioner’s expert Dr. Willis. As noted above and on my CV [Ex. 2017], my qualifications exceed this description. Ex. 2009 ¶ 23 (emphasis added). The italicized sentence in the paragraph above is ungrammatical and unclear. It could be interpreted in multiple contradictory ways: The sentence could mean that, in rendering his opinions, Dr. Surati has assumed the level of ordinary skill as stated by Dean Willis. Or it could mean that, “if the qualifications of a POSITA were as stated by Petitioner’s expert Dr. Willis,” Dr. Surati’s qualifications exceed those qualifications. Nevertheless, we see no meaningful difference between Petitioner’s definition and Patent Owner’s. Rather, Patent Owner’s definition appears to be a simplified version of Petitioner’s. To the extent that Patent Owner disagrees, Patent Owner is encouraged to explain how the differences affect the obviousness analysis. Also, we preliminarily determine that Petitioner’s definition is supported by the testimony of Dean Willis (Ex. 1004 ¶¶ 32–35) and is consistent with the level of skill reflected in the asserted references (cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect an appropriate level of skill in the art)).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We need only construe terms that are in controversy and to the extent necessary to resolve the dispute. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner argues that “[i]t is not necessary for the Board to resolve this claim construction dispute for purposes of this Preliminary Response because both Prelim. Resp. 59 n.5. We agree with Patent Owner on this point. See id. That is, we construe the term “title array” to require a data structure, which is not disputed. But other than that, we need not further construe the term at this stage.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,230,135 - PTAB · Feb 18, 2022 · IPR2021-01325 · APJ Jameson Lee · IPR · Institution
Instituted IPR on all grounds for claims 70–80, 84, 89–97, 99, 103, and 107; petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. Upon consideration of the contentions and the evidence of record at this juncture, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability at least one challenged claim of the ’457 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’457 patent on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“exercise discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review in view of parallel district court proceeding. Prelim. Resp. 37–44 (citing, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). Petitioner asserts, in its Preliminary Reply, however, that the circumstances have changed with respect to parallel litigation in district court, because as of January 10, 2022, “Patent Owner is no longer asserting the ’457 Patent.” Prelim. Reply 1. Patent Owner, in its Preliminary Sur-Reply, confirms that “the ’457 patent is no longer asserted in the co-pending litigation.” Prelim. Sur-Reply 1. Because the ’457 patent is no longer being asserted in parallel district court litigation initially noted by the parties in the Petition and in the Preliminary Response, discretionary denial as originally requested by Patent Owner in its Preliminary Response is moot and need not be reached. Patent Owner asserts that under Fintiv Factor 6, “the Board should deny institution of trial because the merits of this Petition are particularly weak.” Prelim. Sur-Reply 1. The assertion is misplaced where, as here, there is no longer any parallel litigation involving the ’457 patent. The Fintiv factors are not at issue in this circumstance.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s use of the qualifier “at least” renders Petitioner’s articulation vague and potentially overlapping with the level of skill of an expert. On this record, we adopt Petitioner’s articulation of the level of ordinary skill, but delete the qualifier “at least” for the level of education and for the amount of experience, to keep the level from being vague and overbroad and extending into the level of an expert. What remains appears consistent with what is reflected by the content of the applied prior art 2001) (the applied prior art may reflect an appropriate level of skill). In summary, one with ordinary skill in the art at the pertinent time period would have had a Bachelor’s degree in an academic area emphasizing electrical engineering, computer science, or a similar discipline, and two years of experience in the field working with, teaching, or researching stereoscopic and/or virtual/augmented reality (VR/AR) display technologies. C.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In related litigation proceedings, Petitioner and Patent Owner agreed to construe “cursor” as “an indicator movable within a three-dimensional image, image space, and volume.” MS-1025. For the purposes of this petition, Petitioner will use this construction. It follows then that a “3D cursor” is a “3D indicator movable within a three-dimensional image, image space, and volume.” MS-1003, ¶[49]. Pet. 8 (footnote omitted). Patent Owner has not proposed a construction for either “cursor,” “3D cursor,” or “three-dimensional cursor.” Nor has Patent Owner expressed disagreement in this proceeding with Petitioner’s proposed construction for “three-dimensional cursor.” On this record, we see no error with Petitioner’s proposed construction for “three-dimensional cursor” and will, for purposes of institution, adopted it as the construction for “three-dimensional cursor.” indicator movable within a three-dimensional image, image space, and volume.”9” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,795,457 - ADT LLC v. Vivint, Inc.InstitutedPTAB · Feb 15, 2022 · IPR2021-01374 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted review of claims 1–3 and 6–11 on anticipation by Oh and obviousness over Oh, and claims 4, 5, and 12–17 as obvious over Oh, Forbes, and TS23.141.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. 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 all the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art would have had a bachelor’s degree in computer science, electrical engineering, or computer engineering (or equivalent experience) and two years of experience in monitoring or telecommunications systems. Pet. 6 (citing Ex. 1017 ¶ 25). Patent Owner did not file a preliminary response and, therefore, does not dispute Petitioner’s proposal at this stage of the proceeding. We determine, on the current record, that the level of ordinary skill proposed by Petitioner is consistent with the ’739 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt that level in deciding whether to institute trial.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner proposes constructions for “presentity,” “personal presentity,” “watcher,” and “aggregate presence service.” Pet. 7–10. In particular, Petitioner contends, a person of ordinary skill in the art “would have understood ‘presentity’ to mean an entity that has presence information associated with it, such as information regarding whether a visitor is present at a resident’s door,” and “would have understood ‘personal presentity’ to mean a presentity that is associated with the presence of a person (e.g., a human visitor).” Id. at 7–8 (citing Ex. 1017 ¶¶ 59–63). Petitioner also contends a person of ordinary skill in the art “would have understood ‘watcher’ to mean an entity (person or otherwise) that requests and/or receives presence information regarding a presentity.” Id. at 8–9 (citing Ex. 1017 ¶¶ 64–67). Petitioner further contends a person of ordinary skill in the art “would have understood ‘aggregate presence service’ to mean a service that receives, stores and provides presence-related information.” Id. at 9–10 (citing Ex. 1017 ¶¶ 68–71). Patent Owner did not file a preliminary response and, therefore, does not challenge Petitioner’s proposed constructions at this stage of the proceeding. We determine we need not explicitly construe any claim terms at this stage of the proceeding. 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))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As discussed above (supra Section III.E.1.c, III.E.1.e), we determine that, for the purposes of institution, Oh teaches or suggests “determining a current location of the watcher” and “storing data related to a current location of the watcher,” as recited in claim 1, and the related limitation in claim 8. We question, however, whether the evidence presented as to these limitations supports Petitioner’s assertion of anticipation of claims 1 and 8. See Net MoneyIN, 545 F.3d at 1369–71. For example, Petitioner’s anticipation ground turns on the construction of “current location,” which has not been fully developed on the current record. Petitioner relies on the IP address of Oh’s wireless communication terminal as being indicative of the physical location of the watcher/user. See Pet. 18–20, 25. Alternatively, Petitioner contends that a person of skill in the art would have recognized that Oh’s home gateway could readily have been modified to store GPS location data associated with the wireless terminal. Id. at 19 (citing Ex. 1017 ¶ 106). We are therefore not persuaded, on the current record, that Oh expressly or inherently discloses the claim limitations related to the watcher/user’s current location and location information. Accordingly, at this stage of the proceeding and without prejudging our ultimate determination with respect to this ground at the conclusion of this proceeding, we determine that Petitioner has not shown a reasonable likelihood of prevailing in establishing that Oh anticipates independent claims 1 and 8, and dependent claims 2, 3, 6, 7, and 9–11 of the ’739 patent.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,956,739 - PTAB · Mar 4, 2016 · IPR2015-01417 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing, finding the petition did not show a reasonable likelihood of prevailing on the anticipation challenge to claim 4 because its mapping was inadequately explained.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing, we review the Decision Granting Institution for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision Granting Institution should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable
“with respect to the anticipation ground,] Takizawa discloses semiconductor material being disposed at the drain bus line/gate bus line overlap, in addition to other regions in the thin film transistor matrix device. Petition (“Pet.”) at 19–26; Ex. 1012 at ¶¶ 55, 61.” Reh’g Req. 4. We disagree because such evidence was not explained adequately in the Petition. The Petition states, without further explanation, that “Takizawa also teaches formation of semiconductor layers at the crossover location. Ex. 1012, ¶ 61.” Pet. 21–22. Nevertheless, the Petition contains no further explanation supporting that statement. Id. The Petition merely cites the Chiang declaration and does not explain sufficiently the significance of the cited testimony. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Takizawa would anticipate the limitation to operative semiconductor formed where said gate bus line overlaps said drain bus line in the Petition itself, the citations to the Chiang Declaration amount to incorporation by reference of arguments made in that declaration that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). Thus, we did not overlook or misapprehend Petitioner’s arguments or evidence in the Petition. Thus, we are not persuaded by this argument.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“with respect to the anticipation ground,] Takizawa discloses semiconductor material being disposed at the drain bus line/gate bus line overlap, in addition to other regions in the thin film transistor matrix device. Petition (“Pet.”) at 19–26; Ex. 1012 at ¶¶ 55, 61.” Reh’g Req. 4. We disagree because such evidence was not explained adequately in the Petition. The Petition states, without further explanation, that “Takizawa also teaches formation of semiconductor layers at the crossover location. Ex. 1012, ¶ 61.” Pet. 21–22. Nevertheless, the Petition contains no further explanation supporting that statement. Id. The Petition merely cites the Chiang declaration and does not explain sufficiently the significance of the cited testimony. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Takizawa would anticipate the limitation to operative semiconductor formed where said gate bus line overlaps said drain bus line in the Petition itself, the citations to the Chiang Declaration amount to incorporation by reference of arguments made in that declaration that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). Thus, we did not overlook or misapprehend Petitioner’s arguments or evidence in the Petition. Thus, we are not persuaded by this argument.” slip op. at 3
- BurdenDecided for patent owner
“teaches formation of semiconductor layers at the crossover location. Ex. 1012, ¶ 61.” Pet. 21–22. Nevertheless, the Petition contains no further explanation supporting that statement. Id. The Petition merely cites the Chiang declaration and does not explain sufficiently the significance of the cited testimony. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Takizawa would anticipate the limitation to operative semiconductor formed where said gate bus line overlaps said drain bus line in the Petition itself, the citations to the Chiang Declaration amount to incorporation by reference of arguments made in that declaration that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). Thus, we did not overlook or misapprehend Petitioner’s arguments or evidence in the Petition. Thus, we are not persuaded by this argument.” slip op. at 3
§ 102 anticipationPatents in suitUS 5,966,589
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.