- PTAB · Sep 19, 2025 · PGR2025-00025 · APJ Kimberly Mcgraw · PGR · Institution
The Board instituted PGR on claims 1–19 and all asserted grounds, finding it more likely than not that claim 1 is anticipated by the Gatorade Label.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Post-grant review is available for patents that issue from applications that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). After considering the briefing and the evidence of record, for the reasons set forth below, we determine that Petitioner has shown that the ’422 Patent is eligible for post-grant review and has shown it is more likely than not that at least one challenged claim of the ’422 Patent is unpatentable under § 324(a). Accordingly, we institute a post-grant review of the challenged claims of the ’422 Patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would possess at least (1) a Bachelor’s degree in chemistry or a related field, with (2) five years of experience in material identification and characterization using multiple analytical methods and field sampling, or equivalent research or professional experience.” Pet. 12 (citing Ex. 1014 ¶ 24). Patent Owner does not dispute Petitioner’s definition for one of ordinary skill in the art nor provide a proposed definition of its own. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s undisputed proposal regarding the level of one of ordinary skill in the art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“336. The applicant explained that not all combinations of shrink films and light blocking materials are recyclable. Id. at 335. The applicant explained that films can be compatible with PET recycling in two ways, (1) the film can float in water and be separated from PET that sinks in water or (2) the PET films crystallize and “can be recovered with the PET stream.” Id. at 336 (citing “A Resource Document by the Association of Plastic Recyclers (APR)”) (found at Ex. 1002, 323–332) (emphasis omitted). The applicant explained that “removing the label before or during the recycling process is not evidence of the recyclability of the label” and that “[r]emoving the label during the recycling process is not equivalent to actually recycling the label.” Id. at 335. As such, a POSITA reading the prosecution history would understand that a label is not recyclable with a PET container, as recited by the independent claims, by removing the label from the PET recycle stream before or during the recycling process.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“To determine how a person skill in the art would determine if a shrink label is “recyclable” as recited in the independent claims, we look to how the Specification of the ’422 Patent describes or defines recyclable shrink labels. For example, the ’422 Patent states that PET shrink films are generally considered recyclable if no inks are retained on the film after a caustic wash cycle typically used in PET reclaiming processes. Ex. 1001, 6:61–65. The ’422 Patent further states that labels are fully recyclable if the polymers used are clear, preferably clear PET, and the labels include inks that can be washed off in a “typical PET recycling wash (caustic wash).” Id. at 11:44– 49; see also id. at 11:49–54 (describing embodiments in which the labels are free or substantially free of inks that cannot be washed off in a caustic wash or where the labels are free or substantially free of color plastics that cannot be recycled). The ’422 Patent further discusses “industry standards” for determining whether various embodiments of shrink labels are recyclable. See, e.g., id. at 11:29–53. For example, the Specification states that the “Association for Plastic Recyclers (APR) Critical Guidance Protocol for Clear PET Articles with Labels and Closures (PET-CG-02)” (Ex. 1005) can certify that a film is fully recyclable with a container or bottle. Id. at 11:34– 38. Additionally, the Specification states that labels “are recyclable according to the Evaluation of the Near Infrared (NIR) Sorting Potential of a Whole Plastic Article (SORT-B-01)” (Ex. 1010) and/or the “Evaluation of Sorting Potential for Plastic Articles Utilizing Metal, Metalized, or Metallic Printed Components (SORT-B-03)” (Ex. 1011). Ex. 1001, 11:39–44. The ’422 Patent further states that embodiments of the labels “are fully recyclable. For example, the labels may include inks that can be washed off in a typical PET recycling wash (caustic wash) and the polymers” are preferably clear PET. Id. at 11:44–48. The ’422 Patent thus provides various descriptions or standards to determine the recyclability of shrink labels. For the purposes of addressing the anticipation and obviousness grounds, we determine that any of these standards can be used to determine if a shrink label is “recyclable.” We note that our construction is preliminary and is based on the present record. We invite the parties to further the address the construction of “wherein the recyclable shrink label is recyclable with a PET container” during trial.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · NautilusPatents in suitUS 11,961,422 - PTAB · Sep 18, 2024 · IPR2024-00603 · APJ Sheldon M Mcgee · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on claim 1 over Honermann and Cline.
RulingsInstitution decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Pet. 5–6 (citing Ex. 1003 ¶ 50). Petitioner further states “that more education could compensate for less experience and vice versa.” Id. at 6. Petitioner’s position is, therefore, consistent with Patent Owner’s proffered level of skill in the art which reflects less education and more experience in substantially the same fields. Specifically, Patent Owner asserts that such a skilled artisan “would have at least a bachelor’s degree in mechanical or automotive engineering and/or five or more years of experience in the automotive industry designing, developing, testing, and engineering automotive components or practical experience servicing, assembling, repairing, and/or developing internal combustion engines and/or engine oil filters.” Prelim. Resp. 4. On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Patent Owner’s definition because it is consistent with the disclosures of the asserted prior art references. We note, however, that we would reach the same conclusion under either parties’ definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that all non-“means” terms in the challenged claims should be afforded their plain and ordinary meaning, and that the “means” limitations recited in claims 1 and 15 should not be construed as means-plus- function terms pursuant to 35 U.S.C. § 112(6). Pet. 7. According to Petitioner, claims 1 and 15 include additional limitations that denote structure for those “means” limitations and furthermore do not recite a function corresponding to the recited means. Id. Patent Owner asserts that “the Board need not make a determination on claim construction in assessing whether to institute” trial. Prelim. Resp. 5. After review of the preliminary record, we determine that no claim terms require an express construction for purposes of institution. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“2. Advanced Bionics Prong One: whether “the same or substantially the same art or arguments previously were presented to the Office” As Petitioner acknowledges, a Japanese-language version of Yokoyama was cited in an IDS without an English translation. Pet. 19; Ex. 1002, 34 (indicating that an English translation was not provided by virtue of the absence of a checkmark in the “T” column on the far right of the PTO/SB/08a form).4 The Yokoyama reference relied on in the Petition (Ex. 1008) however, includes an English language translation of the text in 4 It is also not readily apparent that Patent Owner complied fully with the “Content Requirements for an Information Disclosure Statement” as set forth in MPEP § 609 in its IDS submission dated March 30, 2015. Specifically, § 609.04(a)(III) states that “[e]ach information disclosure statement must further include a concise explanation of the relevance . . . of the information listed that is not in the English language.” (italicized emphasis added, underlining in original); see also § 609.01 B.3 (stating this requirement). It does not appear that any concise explanation was filed with respect to either Japanese reference filed in the IDS. See Ex. 1002, 13–38 (IDS documents pertaining to Yokoyama reference); Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1376 (Fed. Cir. 2000) (“[A]lthough MPEP Section 609[] allows the applicant some discretion in the manner in which it phrases its concise explanation, it nowhere authorizes the applicant to intentionally omit altogether key teachings of the reference.”). addition to the Drawings that also appear in the untranslated Japanese-language version of Yokoyama submitted during prosecution. Compare Ex. 1007 (containing Japanese text with Figures 1–7c), with Ex. 1008 (containing English text along with Figures 1–7c). As such, the Yokoyama reference relied on in the Petition––being in English––contains roughly ten pages of more readily discernible information than the Japanese-language version of this reference submitted during prosecution. Significantly, Petitioner relies on textual disclosure in the English-translated version of Yokoyama in its challenges. Pet. 28–51, 54, 58, 59 (citing Ex. 1008 repeatedly). Such English-translated disclosure was not previously before the Examiner. Ex. 1002, 13–38. In view of this additional disclosure before us in English, i.e., disclosure that was not presented previously to the Office, we find that the English translated version of Yokoyama relied on here (Ex. 1008) is not “the same or substantially the same art” that was previously presented to the Office (Ex. 1007).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionary denial, we must also consider whether the Petition presents compelling merits. IPR2022-01242, Paper 23 at 4–5. As set forth above, we have considered the circumstances and facts before us in view of Fintiv factors 1–5, and determine that: Factor 1 is neutral, Factor 2 weighs heavily against discretionary denial, Factor 3 is neutral, Factor 4 weighs against discretionary denial, and Factor 5 weighs in favor of discretionary denial. Factors 1–5, considered as a whole, collectively weigh against exercising discretion to deny institution. As such, we need not undertake a “compelling merits” analysis as set forth under CommScope. The Merits Even though we do not consider here whether the merits are “compelling,” we do consider the merits of the Petition under Fintiv factor 6. As set forth below, we determine that Petitioner has satisfied the reasonable likelihood standard for purposes of institution. Such satisfaction weighs further against discretionary denial of the Petition.” slip op. at 19
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 9,023,203 - PTAB · Jun 24, 2024 · IPR2024-00380 · APJ Sheldon M Mcgee · IPR · Institution
The Board instituted IPR on claims 1–5, 7, and 9–14 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“because they are premised on a misapplication of our precedent. Providing a document to the Office in an Information Disclosure Statement is sufficient to satisfy AB prong one as long as that “previously presented” art is “the same or substantially the same” as that presented in the Petition. See Advanced Bionics, 7–8 (holding that “[p]reviously presented art includes . . . art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent”). As we have already found, there are no material differences between the asserted art and the prior art involved during examination under BD factor (a). Petitioner provides no authority that requires us to interpret “involved during examination” under BD factor (a) as “used in a rejection” or “mentioned by the examiner” (Pet. 60), and we are aware of none. Patent Owner’s position, in that regard, appears to conflate the first AB prong (whether the art previously was presented to the Office) with an aspect of the second AB prong (the extent to which the Examiner considered that art).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 findings and conclusions set forth in this Decision are provided for the exclusive purpose of explaining our determination that Petitioner has met that standard on this record. slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had “at least a bachelor’s degree in a field such as chemistry, physics, or chemical engineering, as well as at least two years of experience with plasma-polymerization techniques.” Pet. 20 (citing Ex. 1002 ¶¶ 22–29). Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See Prelim. Resp., generally. On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Petitioner’s proposed unchallenged definition because, on this record, it is consistent with the disclosures of the asserted prior art references.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that the claimed term “aryl” should be construed to mean “an aromatic ring system.” See Pet. 20–23. Patent Owner does not propose a different claim construction at this stage of the proceeding. See Prelim. Resp., generally. After review of the preliminary record, we determine that no claim terms need to be construed for purposes of institution. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,041,087 - PTAB · Sep 15, 2023 · IPR2023-00516 · APJ Minn Chung · IPR · Institution
The Board instituted review of claims 1, 2, and 8–13 on all petition grounds, finding 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
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments and evidence presented in Patent Owner’s Preliminary Response, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’589 patent, based on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing testimony from Dr. Melvin, Petitioner asserts a person of ordinary skill in the art (“POSITA”) at the relevant time would have had “a Bachelor’s degree in Electrical Engineering or Computer Science and two years of experience” or “equivalent education, work, or experience in this field.” Pet. 21 (citing Ex. 1003 ¶¶ 31–34). According to Dr. Melvin, “[m]ore education could substitute for experience, and vice versa.” Ex. 1003 ¶ 33. Patent Owner states that “[f]or the limited purpose of this Preliminary Response, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so in the event that trial is instituted.” Prelim. Resp. 11. For purposes of this Decision, based on our review of the ’589 patent, the types of problems and solutions described in the ’589 patent, and cited prior art, we adopt and apply Petitioner’s unopposed definition of a person of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “construction of terms is unnecessary because it is not dispositive to this case—the art teaches the limitations under any construction under the Phillips standard.” Pet. 21. Patent Owner states that we need not construe any claim term for purposes of this Decision. See Prelim. Resp. 11. Based on the record presented, we need not construe any claim term for purposes of this Decision. 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))). C. Asserted Grounds of Unpatentability Based on Lee or the Combination of” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“motivation to combine the references because “[w]hile Lee does expressly illustrate the ‘circuitry’ that is initialized by the reset signal ϕRST output from its initialization circuit, Iketani illustrates and describes in detail the various circuits, including the control circuit, that receive and are initialized by such an initialization signal.” Pet. 59 (emphasis added) (citing Ex. 1003 ¶ 140). Petitioner further asserts that the proposed combination “amounts to a simple substitution of one component (i.e., Lee’s initialization circuit) for another (i.e., Iketani’s power on reset circuit), and a POSITA would have understood that this substitution would yield predicable results.” Id. at 61 (citing Ex. 1003 ¶ 143).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,157,589 - PTAB · Sep 14, 2023 · IPR2023-00513 · APJ Barbara A Parvis · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 5, 6, 9, and 10 on all petitioned grounds, finding a reasonable likelihood of unpatentability over Bains and JESD79-2A.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“i) Conclusion—Claim 1 After consideration of the arguments and the evidence of record at this early stage, we determine that Petitioner has shown sufficiently, for purposes of institution, that the combination of Bains and JESD79-2A teaches all recitations in claim 1. Also, at this juncture, we are persuaded that Petitioner has articulated sufficiently persuasive reasoning, based on the evidence of record, as to why one of ordinary skill in the art would have made 6 In light of our determination, we need not making findings as to whether Bains alone teaches element 1.6. Petitioner’s proposed modifications. Petitioner’s arguments that a person having ordinary skill in the art would have had a reasonable expectation of success also are sufficient for purposes of institution. We find that Patent Owner’s arguments do not undermine Petitioner’s showing at this early stage. Accordingly, we conclude that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over the combination of Bains and JESD79-2A.” slip op. at 29
- Skill levelSkill level petitioner adoptedOther
“We find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal. With that exception, on the current record, we preliminarily find Petitioner’s proposal is consistent with the level of skill reflected in the ’523 patent Specification and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We, therefore, adopt Petitioner’s proposal, with the “at least” phrase omitted.” slip op. at 8
- BurdenInstituted
“early stage, we determine that Petitioner has shown sufficiently, for purposes of institution, that the combination of Bains and JESD79-2A teaches all recitations in claim 1. Also, at this juncture, we are persuaded that Petitioner has articulated sufficiently persuasive reasoning, based on the evidence of record, as to why one of ordinary skill in the art would have made 6 In light of our determination, we need not making findings as to whether Bains alone teaches element 1.6. Petitioner’s proposed modifications. Petitioner’s arguments that a person having ordinary skill in the art would have had a reasonable expectation of success also are sufficient for purposes of institution. We find that Patent Owner’s arguments do not undermine Petitioner’s showing at this early stage. Accordingly, we conclude that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over the combination of Bains and JESD79-2A.” slip op. at 29
- Expert testimonyOther
“articulated reasons with rational underpinnings, especially as to the relevant features of the claims.” Prelim. Resp. 37. At this stage in the proceeding, we find that Petitioner’s argument contains sufficient specificity with respect to elements 1.5 and 1.6. Pet. 29–33, 49–60. For instance, we find that Petitioner’s fifth argument and Dr. Baker’s related testimony that the proposed combination would have permitted “for more complex termination schemes and more customizable termination” (see, e.g., Pet. 50; Ex. 1003 ¶¶ 124–125) relates to customizable termination and element 1.5 requires that the control circuit “selectively terminate the terminal . . . in response to the termination signal.” Patent Owner also argues that “[n]either the Petition, nor Dr. Baker’s declaration, provides any support as to how a POSITA would implement the ODT pin disclosed in JESD79-2A with the memory system of Bains.” Prelim. Resp. 37. Patent Owner argues that “JESD79-2A and Bains have distinct control schemes for the resistor switches in the ODT.” Id. at 37–38. Petitioner provides detailed explanations of how the teachings of Bains and JESD79-2A would have been combined. Pet. 54–56, 59–60. Petitioner also presents arguments that Bains and JESD79-2A teach similar termination circuits. Pet. 50–53, 55. Based on the preliminary record, we find that Petitioner explains sufficiently for purposes of institution how the teachings of Bains and JESD79-2A would have been combined and provides sufficient argument and evidence preliminarily showing that the ordinary skilled artisan would have had reasonable expectation of success.” slip op. at 16
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,532,523 - PTAB · Sep 1, 2023 · IPR2023-00733 · APJ Larry J Hume · IPR · Institution
The Board instituted inter partes review of claims 1–24 on five Heil-based grounds and granted Cisco et al.’s motion to join the Google IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In view of the identity of the issues in the instant Petition and the petition in the Google IPR and the already-considered arguments that Patent Owner made in the Google IPR, we determine that this proceeding warrants institution on the grounds presented in the Petition for the same reasons stated in our Decision on Institution in the Google IPR. See IPR2023- 00120, Paper 7. Accordingly, we proceed with the IPR.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We find that Petitioner timely filed its Joinder Motion in accordance with 37 C.F.R. § 42.122(b). We further determine that Petitioner has met its burden of showing that joinder is appropriate, at least because, as set forth above, the Petition here: (1) is substantively identical to the petition in the Google IPR; (2) contains the same grounds based on the same evidence; and (3) relies on the same declaration of Dr. Paul Franzon, Ph.D. Mot. 1, 3–9; Ex. 1004. Petitioner also represents that it “agrees to take an ‘understudy’ role.” Mot. 8. Petitioner clarifies that, “[o]nly if Google ceases participation in the proceeding . . . Petitioner would assume a primary role, meaning it would take over the role previously filled by Google” Id. at 9.” slip op. at 5
NonePatents in suitUS 10,154,092 - Google LLC v. Spacetime3d, Inc.InstitutedPTAB · Aug 7, 2023 · IPR2023-00577 · APJ Hubert C Lorin · IPR · Institution
The Board instituted review of claims 1–18 on all petition grounds and granted Google’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’048 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 13–18.7 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“same arguments as those included in its preliminary response filed in the Apple IPR. Compare Prelim. Resp., with Apple IPR, Paper 6 at 1–2, 8–59. Although the Preliminary Response additionally incorporates Patent Owner’s arguments regarding discretionary denial under 35 U.S.C. § 325(d) from Patent Owner’s Preliminary Sur-reply in the Apple IPR (compare Prelim. Resp. 2–7, with Apple IPR, Paper 8 at 1–6), no new arguments are presented by Patent Owner’s Preliminary Response in this proceeding with respect to discretionary denial under § 325(d) or the patentability of the challenged claims.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we find that the Petition here: (1) is substantively identical to the petition in the Apple IPR; (2) contains the same grounds based on the same evidence as the Apple petition; and (3) relies on the same declaration of Henry Fuchs, Ph.D., relied upon in the Apple petition. Mot. 2, 5; Ex. 1003. And no new grounds or patentability issues are presented by the Petition. Petitioner also represents that it “will assume an understudy role” in the joined proceeding. Mot. 2. Specifically, Petitioner agrees that: Petitioner will: 1. Adhere to all applicable deadlines in the Apple IPR; 2. Submit “consolidated” filings with the Apple, as set forth above in the statement of precise relief requested; 3. Refrain from requesting or reserving any additional depositions or deposition time; 4. Refrain from requesting or reserving additional oral hearing time; and 5. Assume a second-chair role as long as Apple remains in the proceeding. Id. at 6. In addition, Petitioner asserts that “joinder would not adversely impact the trial schedule, briefing, or discovery in the Apple IPR.” Id. at 8.” slip op. at 7
Discretionary denialPatents in suitUS 8,881,048 - Google LLC v. Spacetime3d, Inc.InstitutedPTAB · Aug 7, 2023 · IPR2023-00579 · APJ Minn Chung · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all asserted grounds and granted Google’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Consequently, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’654 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 11–18.5 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Consequently, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’654 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 11–18.5 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we find that the Petition here: (1) is substantively identical to the petition in the Apple IPR; (2) contains the same grounds based on the same evidence as the Apple petition; and (3) relies on the same declaration of Henry Fuchs, Ph.D., relied upon in the Apple petition. Mot. 2, 5; Ex. 1003. And no new grounds or patentability issues are presented by the Petition. Petitioner also represents that it “will assume an understudy role” in the joined proceeding. Mot. 2. Specifically, Petitioner agrees that Petitioner will: (1) assume “a second-chair role as long as Apple remains in the proceeding”; (2) adhere to all applicable deadlines in the Apple IPR; (3) submit “consolidated” filings with Apple for all substantive papers; (4) refrain from requesting or reserving any additional depositions or deposition time; and (5) refrain from requesting or reserving additional oral hearing time. Id. at 6. In addition, Petitioner asserts that “joinder would not adversely impact the trial schedule, briefing, or discovery in the Apple IPR.” Id. at 8.” slip op. at 7
Discretionary denialPatents in suitUS 9,304,654 - Google LLC v. Spacetime3d, Inc.InstitutedPTAB · Aug 7, 2023 · IPR2023-00578 · APJ Minn Chung · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all asserted grounds and granted Google’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Consequently, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’868 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 12–19.6 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Consequently, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’868 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 12–19.6 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we find that the Petition here: (1) is substantively identical to the petition in the Apple IPR; (2) contains the same grounds based on the same evidence as the Apple petition; and (3) relies on the same declaration of Henry Fuchs, Ph.D., relied upon in the Apple petition. Mot. 2, 5; Ex. 1003. And no new grounds or patentability issues are presented by the Petition. Petitioner also represents that it “will assume an understudy role” in the joined proceeding. Mot. 2. Specifically, Petitioner agrees that Petitioner will: (1) assume “a second-chair role as long as Apple remains in the proceeding”; (2) adhere to all applicable deadlines in the Apple IPR; (3) submit “consolidated” filings with Apple for all substantive papers; (4) refrain from requesting or reserving any additional depositions or deposition time; and (5) refrain from requesting or reserving additional oral hearing time. Id. at 6. In addition, Petitioner asserts that “joinder would not adversely impact the trial schedule, briefing, or discovery in the Apple IPR.” Id. at 8.” slip op. at 7
Discretionary denialPatents in suitUS 9,696,868 - PTAB · Jul 18, 2023 · IPR2023-00255 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR on claims 1, 4, 5, and 8–23 on all asserted grounds, finding a reasonable likelihood of prevailing on multiple obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson3 factors that address discretion to deny when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; 3 Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton, Dickinson”). during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. Factors (a), (b), and (d), relate to whether the same or substantially the same art or arguments were previously presented to the Office, and factors (c), (e), and (f) relate to whether the petitioner demonstrates that the Office erred in a manner material to the patentability of the claims. Advanced Bionics, Paper 6 at 9–11. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether the petitioner has demonstrated a material error by the Office. Id.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’287 patent. Accordingly, we institute an inter partes review of claims 1, 4, 5, and 8–23 of the ’287 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) “would have possessed a bachelor’s degree in a pertinent discipline, such as mechanical engineering, physics, product design, or a related field” and “2–4 years of experience in working with electronic displays and have an understanding of product design issues and failure modes associated with electronic displays.” Pet. 7 (citing Ex. 1002 ¶ 37). In the alternative, Petitioner argues that “a POSITA would have had 5–7 years of experience in the field working with electronic displays and have a similar understanding of product design issues and failure modes associated with electronic displays.” Id. (citing Ex. 1002 ¶ 37). At this stage of the proceeding, Patent Owner does not propose a different level of skill in the art, or address Petitioner’s proposed definition. For purposes of this Decision, and based on the current record, we adopt the uncontested assessment offered by Petitioner.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Based on the record before us, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,629,287
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.