- TCL Electronics Holdings Ltd. (F/K/A TCL Multimedia Technology Holdings, Ltd.) v. Maxell, Ltd.InstitutedPTAB · May 20, 2025 · IPR2025-00120 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 1–4 because Petitioner showed a reasonable likelihood that Acharya renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“asserted in the Texas litigation. Prelim. Resp. 14. Petitioner stipulates not to pursue in the Texas litigation “the same grounds or any grounds that could have reasonably been raised before the PTAB.” Pet. 68. Such a Sotera stipulation eliminates the substantive overlap between this proceeding and invalidity in the Texas litigation. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to § II.A). This factor weighs strongly against discretionary denial.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Petitioner points out differences between Acharya and Robbins, in that Robbins discloses Internet Protocol Television (IPTV) media distribution, whereas Acharya discloses a system for multiple users in a meeting to display media on a single display. Prelim. Reply 2. Petitioner asserts further that Robbins lacks the claimed communication path that bypasses the router, which is disclosed by Acharya. Id. at 2–3. And Petitioner points out that Acharya describes “the user’s ability to disconnect from the display and pass control to another participant—key to the ‘termination signal’ limitation.” Id. at 3.” slip op. at 10
- Skill levelSkill level petitioner adoptedOther
“educational background, such as a Bachelor of Science degree, in Electrical Engineering or Computer Engineering as well as some understanding of Wireless Communications” and “would have 2 years of practical experience in television or video display system development.” Pet. 12 (citing Ex. 1003 ¶¶ 50–51). Patent Owner adopts that proposed level of skill in the art. Prelim. Resp. 5–6. Petitioner’s proposed definition appears reasonable and consistent with the asserted prior art and the ’341 patent, and we adopt it here.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We follow the parties’ agreed construction here, as adopted by the district court. Neither that construction nor any other affects our decision. Thus we do not expressly construe any claim term. 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)). To the extent that the scope of a particular claim term impacts a party’s argument during trial, the party should propose an express construction and show how the record supports it.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,375,341 - SAP America, Inc. v. Cyandia, Inc.InstitutedPTAB · Apr 7, 2025 · IPR2024-01433 · APJ Jason W Melvin · IPR · Institution
The Board instituted review of claims 1–7, 10, 11, 13, 18, 19, 23, 29, 35, and 36 based on the PCT publication and Austin-Lane under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner’s Sotera stipulation will eliminate the overlap between this proceeding and invalidity at the district court. Unlike the other, related IPRs for which we discretionarily deny review (e.g., IPR2024-01432, -01495, & -01496), this proceeding does not involve references that fundamentally convey the same information as may be presented as system art in the Texas litigation. In light of the stipulation and nature of the asserted ground, we conclude that this ground strongly favors institution.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We conclude that the claim language reads on Austin-Lane’s disclosure of determining “a presentation method of the notification” such as “using an instant message to the notebook computer” (Ex. 1105 ¶¶ 39, 46), in combination with teachings regarding the device to which the notification is sent and the protocol used to deliver it. We further conclude that Petitioner has provided an adequate reason that skilled artisans would have looked to Austin-Lane’s teachings and combined them with the system described in the PCT publication, as discussed. We have further reviewed the uncontested aspects of the challenge to claim 1 (Pet. 43–58) and determine that Petitioner is reasonably likely to prevail proving obviousness of claim 1. IV. CONCLUSION For the reasons discussed above, we conclude that Petitioner has shown a reasonable likelihood of prevailing with respect to unpatentability of at least one claim. Accordingly, we institute inter partes review. V. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–7, 10, 11, 13, 18, 19, 23, 29, 35, and 36 of the ’948 patent is instituted on the grounds raised in the Petition; and” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of filing “would have had a bachelor’s degree in electrical engineering, computer science, or equivalent, with two or more years of experience developing and implementing graphical user interfaces for controlling server-based applications, including handling asynchronous notifications generated by those applications and web services, such as portal systems, or an equivalent amount of relevant work or research experience” and “would have been familiar with common approaches for presenting information on a graphical user interface, including various layouts for presenting multiple elements, such as icons, widgets, windows, etc.” Pet. 14–15. Petitioner describes further capabilities that such a person of ordinary skill in the art would have had. Id. at 15–16. Patent Owner asserts that a person of ordinary skill in the art at the time of filing “would have had a Bachelor’s degree in electrical engineering, computer science, or the like, and/or four or more years of experience in server-based applications” and that “[a]dditional experience may make up for a lack of education and vice versa.” Prelim. Resp. 14. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, we adopt it and use “skilled artisans” to refer to people with such skill at the time the invention was filed. We do not perceive a substantive distinction between the parties’ definitions, but note that Petitioner’s definition provides more detail about the capabilities of skilled artisans. Should either party believe that the definition of ordinary skill in the art affects a disputed issue in the trial, it should point out how and identify any potential dispute about the level of skill.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“We do not agree. Petitioner notes that certain disclosures added to the April 2011 CIP application describe a “notification manager” to “determine the best alert notification method.” Pet. 27 (quoting Ex. 1110 ¶ 131; citing id. ¶¶ 90–93, 130–132, 145–147, 160). That does not mean that Petitioner construes the claim language to require determining the best method, only that disclosing a mechanism that “determine[s] the best alert notification method” provides written-description support for a requirement to “determin[e] a notification method.” Petitioner is clear in its position that the May 2009 application “does not describe how to determine a notification method or how to use ‘session data’ in the manner required by this claim limitation.” Pet. 27–28. Patent Owner asserts that the May 2009 application discloses “determining a notification method” through a channel alert server that can “determine the active devices of the subscriber . . . to provide a visual or auditory alert in the channel.” Prelim. Resp. 32 (quoting Ex. 1106 ¶ 39). That disclosure appears to address the claim language requiring an alert “based on the current state of the at least one external device indicated by the session data.” It does not, however, address the claim language “determining a notification method.” Patent Owner recognizes that Petitioner asserts disclosures in the prior art for “determining which devices to send the alert to, the protocols used to send the alert, and how alerts are presented.” Id. at 34 (emphasis omitted). But when Patent Owner asserts that the May 2009 application discloses determining how alerts are presented, it points to paragraphs that do not support the assertion. Id. at 35 (citing Ex. 1106 ¶¶ 23, 39). The first, paragraph 23, states that a “trigger may cause the information channel to change its appearance or to take other actions that may be implemented by the developer” and that “one action that may be implemented is to provide a notification to the user.” Ex. 1106 ¶ 23. Nothing about that indicates the system determines how an alert is presented. The second, paragraph 39, states that the channel alert server may “provide a visual or auditory alert in the channel” and that the “alert can appear as defined on other platforms.” Nothing about that indicates the system determines how an alert is presented. Patent Owner has not shown how the May 2009 application discloses a determining a notification method, as claimed. In Patent Owner’s view, Petitioner admits that the May 2009 application (which is the same as the asserted PCT publication) describes determining a delivery mechanism because Petitioner compares it to Austin-Lane, stating that the PCT publication “already includes a channel alert server that determines the active devices of the user and delivers an alert to the user’s device” and “discloses setting the same type of alert (stock alert) and presenting it in the same way (visually) as Austin-Lane.” Prelim. Resp. 35 (quoting Pet. 54) (emphasis omitted). But simply delivering an alert does not necessarily mean the notification method for that alert was determined. We conclude that Petitioner’s statement does not show the PCT publication discloses “determining a notification method” as claimed.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,751,948 - PTAB · Mar 18, 2025 · IPR2024-01375 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 1–13 based on both §103 grounds, finding a reasonable likelihood that the asserted combinations render at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“35 U.S.C. § 325(d) because Amarenco and Mann previously were presented to the Office during prosecution of the ’742 patent. See Prelim. Resp. 17–18. According to Patent Owner, Petitioner has identified additional references that “supposedly teach[] only some of what was missing—stimulation of a branch of the posterior tibial nerve but not to treat overactive bladder or incontinence.” Id. at 18. Patent Owner’s argument is flawed for two reasons. First, neither Svihra nor Ponsford were previously presented to the Office. Because Patent Owner does not argue that we should deny institution of Petitioner’s Svihra-based ground under § 325(d), and because that ground relies on a combination of art not previously presented, Patent Owner’s § 325(d) argument is unpersuasive. In that regard, we determine that even if we were to conclude the Amarenco-based ground warranted discretionary denial, the Svihra-based ground would not be subject to such denial and may alone justify institution. See USPTO, SAS Q&As (June 5, 2018) at D1.11 Additionally, for the Amarenco-based ground, Petitioner relies on a combination including prior art that was not previously presented, and Patent Owner does not show that additional prior art is cumulative to art presented during prosecution. We determine that Petitioner’s Amarenco-based ground 11 Available at: https://www.uspto.gov/sites/default/files/documents/ sas_qas_20180605.pdf is not substantially the same as one previously presented to the Office. Thus, we decline to discretionarily deny institution under § 325(d).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of filing “would have had an undergraduate degree in the field of biomedical engineering or a related discipline, such as electrical engineering, and at least two years of experience in the design and/or analysis of biomedical devices” and that “[a]dditional work experience could substitute for a formal degree and vice versa.” Pet. 21 (citing Ex. 1003 ¶¶ 20–21). Patent Owner does not dispute Petitioner’s proposal. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, we adopt it, and use “skilled artisans” to refer to people with such skill at the time the invention was filed.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “no terms require construction for purposes of this Petition.” Pet. 22. Patent Owner does not contest Petitioner’s position. See generally Prelim. Resp. We agree and do not expressly construe any terms at this stage. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“It has long been recognized that the touchstone as to whether an asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,224,742 - PTAB · Jan 29, 2025 · PGR2024-00043 · APJ John G New · PGR · Institution
The Board instituted PGR on all challenged claims, finding a sufficient likelihood that claims are anticipated or obvious under Grounds 1–10; it found Ground 11’s enablement challenge insufficient.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324, the Board “may not authorize a post-grant review to be instituted unless … the information presented in the petition … if such information is not rebutted would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” For the reasons we explain below, we institute post-grant review of the ’943 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“priority benefit of the ’720 provisional application (at top center). See Ex. 1001, code (60) (listing “provisional application No. 5,995,873, filed on Oct. 2, 2006”). However, simply to claim the priority benefit of an earlier application is not necessarily to receive it. See In re NTP, Inc., 654 F.3d 1268, 1276 (Fed. Cir. 2011) (holding that “a patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority.… Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120.”). As the diagram shows (and as we have verified), the ’529 application was a continuation-in-part of the preceding ’329 application. See Ex. 1001, code (63). However, the ’529 application was abandoned on February 10, 2016 (See Ex. 1052), and the succeeding application, U.S. Patent Application Ser. No. 15,474,875 (the “’875 application”) which is listed in the ’943 patent as being a continuation-in-part of the ’529 application, was not filed until March 30, 2017. See Ex. 1001, code (63) (stating that “said application No. 15/474,875 is a continuation-in-part of application No. 12/508,529”). Put simply, the ’875 application was not filed until over a year after the ’529 application was abandoned. As 35 U.S.C. § 120 states, in relevant part: An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385, which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. (emphasis added). In other words, if there is a “break in the chain” of priority caused by the abandonment or termination of an application claiming priority prior to filing of a subsequent application, the subsequent application loses the priority benefit of the abandoned or terminated application, as well as the priority benefit of all applications that antedate that abandoned or terminated application. Such is the case presently before us. Based on the current record, we are persuaded that the abandonment of the ’529 application prior to filing of the continuation-in-part ’875 application broke the priority chain leading to the ’720 provisional application, and the ’943 patent cannot, therefore, claim the priority benefit of the ’720 provisional application’s October 2, 2006 filing date. Consequently, the earliest date of which the ’943 patent could possibly claim the priority benefit is that of U.S. Patent Provisional Application Ser. No. 61/403,680 (the “’680 provisional application”) (located at the top of the left branch of the “family tree” depicted above), which has a filing date of September 20, 2010. See Ex. 1001, code (60). Burnett (i.e., the ’329 application) was filed on October 2, 2007 and thus antedates the ’680 provisional application. Consequently, Patent Owner’s argument fails based on the current record, and Burnett is prior art to the ’943 patent.” slip op. at 55
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Patent Owner’s request that we exercise our discretion under § 325(d) is not tenable. In deciding whether to exercise our discretion under § 325(d) in situations where only some of the challenges fall within its scope, we evaluate the challenges and determine whether § 325(d) is sufficiently implicated that its statutory purpose would be undermined by instituting on all challenges. If so, the panel will evaluate whether the entire petition should be denied.” See USPTO, SAS Q&As (June 5, 2018) at D1, available at: https://www.uspto.gov/sites/default/files/ documents/ sas_qas_20180605.pdf; see also Kansas State Univ. Res. Found., PGR2022- 00021, Paper 11 at 7–8 & n.3 (Vidal Feb. 24, 2023) (holding that “the Board will further evaluate … whether § 325(d) is sufficiently implicated that its statutory purpose would be undermined by instituting review on all challenges presented in the Petition”). We having instituted post grant review based at least upon claim 1 of Ground 1 of the Petition. Even if the panel agreed with Patent Owner that Grounds 5–8 present “the same or substantially the same prior art or arguments” previously presented to the Office, § 325(d) would not be “sufficiently implicated” due to the 7 other asserted grounds. We therefore do not proceed with the § 325(d) analysis established in Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) and decline to exercise our discretion to deny the petition on that basis.” slip op. at 41
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites Phillips · KSRPatents in suitUS 11,844,943 - PTAB · Dec 11, 2024 · IPR2024-00907 · APJ Frederick C Laney · IPR · Institution
The Board instituted inter partes review on all challenged claims and all five §103 grounds, finding a reasonable likelihood that claim 1 is unpatentable over N93, Dua, and Herle.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“(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. . . . If, after review of [Becton Dickinson] factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8, 10 (PTAB Feb. 13, 2020) (Institution Decision) (precedential) (footnote omitted). Consequently, we first turn to an analysis of Becton Dickinson factors (a), (b), and (d) to determine 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.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“having “a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of wireless communications,” wherein “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1002 ¶ 28). Patent Owner does not contest Petitioner’s description of a person of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 19. Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’590 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Creusere. See Ex. 1002 ¶ 28. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. D. Claim Construction” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,129,590 - PTAB · Nov 8, 2024 · IPR2024-00777 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR on claims 16–27 based on the grounds set forth in the Petition, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“35 U.S.C. § 314(a) due to the advanced state of the parallel district-court action, which Patent Owner notes has scheduled trial date of May 19, 2025. See Prelim. Resp. 17. Petitioner, however, has stipulated not to pursue in the district court action “the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Paper 10, 1 (Petitioner’s Sotera Stipulation). The Office recognizes that such stipulations mitigate concerns of potentially conflicting decisions and duplicative efforts between the Board and the district court. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director’s Interim Procedure”),13 at 7–8. Thus, given Petitioner’s stipulation we decline to discretionarily deny institution under § 314(a) based on parallel litigation.” slip op. at 7
- Parallel petitionsDenied
“institution under § 314(a) because this is the second proceeding challenging the ’815 patent and Petitioner has not justified two such challenges. Paper 8 (Patent Owner’s Response to Petitioners’ Notice Ranking Multiple Petitions). Petitioner filed a Notice Ranking Petitions, noting that this proceeding involves a second petition challenging the ’815 patent, after a petition in IPR2024-00735 challenged claims 1–15. Paper 4 (“Pet. Ranking”). Petitioner’s Ranking asserts that the two petitions challenge different claims, and that the 27 collectively challenged claims are voluminous, occupying approximately six columns of the ’815 patent. Pet. Ranking 2. We note also that the independent claims challenged in this proceeding include limitations not present in the claims challenged in the -735 IPR, such as multiple user profiles and encrypted video information. See Ex. 1001, claims 16, 21. We conclude that the ’815 patent’s claims justify two petitions based on a combination of the number of 13 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. limitations and the number of claims. We therefore decline to discretionarily deny institution under § 314(a) based on multiple parallel petitions.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Kaplan and Bryant were included on an Information Disclosure Statement and thus were presented, but without a substantive discussion during prosecution, we cannot understand how the Office considered the references. Based on Petitioner’s contentions as discussed below, we are persuaded that the Examiner erred in considering Kaplan and Bryant. See Pet. 100. The Horn–Baumgartner–Candelore combinations were not presented during prosecution, and Patent Owner has not shown that Horn’s disclosures are cumulative to references that were considered. Patent Owner provides figures from Horn and Honkaniemi (Ex. 2012), a reference considered in a related prosecution (Prelim. Resp. 6–7), but those figures alone do not suffice to demonstrate sufficient similarity between the two references’ disclosures. Patent Owner makes a similarly unpersuasive showing for Baumgartner and Volk (Ex. 2013), a reference “considered during examination.” Prelim. Resp. 7–8. None of those assertions persuade us that art substantially the same as the Horn–Baumgartner–Candelore grounds previously were presented to the Office. As such, we do not discretionarily deny institution under § 325(d).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that ordinarily skilled artisans “would have held a bachelor’s degree in Computer Science, Electrical Engineering, and Computer Engineering, or a related field, and two years of practical experience in digital data management.” Pet. 5 (citing Ex. 1009, 9; Ex. 1002 ¶ 67). While Patent Owner acknowledges there are slight differences between their definition and Petitioner’s, Patent Owner concedes there is no practical difference between the two definitions. Prelim. Resp. 23. At this stage, we see no reason to depart from Petitioner’s proposed definition, as it appears reasonable and consistent with the asserted prior art and the ’815 patent.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,017,815 - PTAB · Nov 7, 2024 · IPR2024-00717 · APJ Kevin C Trock · IPR · Institution
The Board instituted review of claims 1–11 on all four §103 grounds, finding a reasonable likelihood that Samsung would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDenied
“On September 12, 2024, with the Board’s authorization, Petitioner filed such a stipulation. Paper 8. Petitioner’s stipulation reads: In accordance with the Board’s precedential decision in Sotera Wireless, Inc. v. Masimo Corp., IPR2020‐01019, Paper 12 at 18‐19 (PTAB Dec. 1, 2020), Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (Petitioners) stipulate that if the Board institutes inter partes review in this proceeding, IPR2024-00717, then Petitioners will not pursue in the parallel district court proceeding, Maxell Ltd. v. Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., Case No. 5:23-cv-00092-RWS, the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.. Id. Given that the language of Petitioner’s stipulation substantively tracks the stipulation language set out in the Guidance Memo, we decline to exercise discretion under 35 U.S.C. § 314(a) to deny institution. B.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“having “a Bachelors’ degree in electrical or computer engineering or a comparable field of study, plus approximately two to three years of professional experience with camera technology.” Pet. 5. Petitioner’s declarant, Mr. Guidash, provides supporting testimony as to the level of ordinary skill in the art. Ex. 1003 ¶¶ 27–30. Patent Owner does not contest Petitioner’s description of a person of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 14. Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’757 patent. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. C.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Moreover, the test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Accordingly, one cannot show non-obviousness by attacking references individually where, as here, the This is particularly relevant here, where Petitioner explains that its rationale to combine the teachings of Chinn, Takahashi, and EX-V7 derives, in part, from the teachings of the references themselves. See, e.g., Pet. 10–11 (“Moreover, both Chinn and Takahashi disclose delayed image capture after a voice command is given,” and therefore, a person of ordinary skill in the art “would have been motivated to look at Takahashi and EX-V7 to improve Chinn, and vice-versa.”). Based upon the current record, we are persuaded that Petitioner has demonstrated sufficiently for purposes of institution that a person of ordinary skill in the art at the relevant time period would have had a reasoned basis for combining the teachings of Chinn, Takahashi, and EX-V7 in the manner proffered and would have had a reasonable expectation of success in that endeavor.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,223,757 - PTAB · Nov 7, 2024 · IPR2024-00735 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 1–15 based on the petition’s asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. 35 U.S.C. § 314(a) Patent Owner requests that we discretionarily deny institution under 35 U.S.C. § 314(a) due to the advanced state of the parallel district court action. See Prelim. Resp. 15. Petitioner, however, has stipulated not to pursue in the district court action “the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Paper 10, 1 (Petitioner’s Sotera Stipulation). The Office recognizes that such stipulations mitigate concerns of potentially conflicting decisions and duplicative efforts between the Board and the district court. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director’s Interim Procedure”),10 at 7–8. Thus, given Petitioner’s stipulation we decline to discretionarily deny institution under § 314(a).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Kaplan and Bryant were included on an Information Disclosure Statement and thus were presented, but without a substantive discussion during prosecution, we cannot understand how the Office considered the references. Based on Petitioner’s contentions as discussed below, we are persuaded that the Examiner erred in considering Kaplan and Bryant. See Pet. 97. The Horn–Baumgartner combination was not considered during prosecution, and Patent Owner has not shown that Horn’s disclosures are cumulative to references that were considered. Patent Owner provides figures from Horn and Honkaniemi (Ex. 2012), a reference considered in a related prosecution (Prelim. Resp. 6–7), but those figures alone do not suffice to demonstrate sufficient similarity between the two references’ disclosures. Patent Owner makes a similarly unpersuasive showing for Baumgartner and Volk (Ex. 2013), a reference “considered during examination.” Prelim. Resp. 7–8. None of those assertions persuade us that art substantially the same as the Horn–Baumgartner grounds previously were presented to the Office. As such, we do not discretionarily deny institution under § 325(d).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the reasons discussed above, we conclude Petitioner has shown a reasonable likelihood of prevailing with respect to at least one claim. We have evaluated all of the parties’ submissions and determine that the record supports institution. This decision to institute trial is not a final decision as to patentability of any challenged claim, or any factual or legal issue underlying patentability. Any final decision will be based on the full record developed during trial. We expressly inform Patent Owner that any argument not asserted in a timely filed Response or another manner permitted during trial shall be deemed forfeited or waived, regardless of whether the argument was presented in the Preliminary Response. IV. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–15 of the ’815 patent is instituted on the grounds set forth in the Petition; and” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“bachelor’s degree in computer science, electrical engineering, or a related field, and two years of practical experience in digital data management.” Pet. 5 (citing Ex. 1009, 9; Ex. 1003 ¶ 67). While Patent Owner acknowledges there are slight differences between their definition and Petitioner’s, Patent Owner concedes there is no practical difference between the two definitions. Prelim. Resp. 23. At this stage, we see no reason to depart from Petitioner’s proposed definition, as it appears reasonable and consistent with the asserted prior art and the ’815 patent.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,017,815 - PTAB · Apr 15, 2024 · IPR2024-00029 · APJ Amee A Shah · IPR · Institution
The Board instituted IPR on claims 1, 3–5, 7–8, 10–14, and 16–25 on all grounds in the Petition, finding a reasonable likelihood of unpatentability on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“It is not disputed that Sim, Doi, and Herz were not previously presented to the Office. And, the prosecution record indicates that Sim and Doi were not listed on an Information Disclosure Statement by Application nor in a List of References or in an Office Action by the Examiner. See Ex. 1002, 9–10, 20–25, 69–74, 196–197, 346–347. Petitioner’s asserted Grounds 1 and 2 rely substantially on Sim and Doi to teach the steps of the claimed system and method. Petitioner’s asserted Grounds 4, 5, and 6 substantially rely on Herz. Sim, Doi, and Herz are meaningful to the prior art combinations set forth in the Petition. Therefore, the asserted combinations regarding Sim and Doi, Sim, Doi, and Waytena, and Waytena and Herz were not previously presented to the Office. It is also not disputed that Waytena was previously presented to the Office and considered by the Examiner. The prosecution history shows that throughout prosecution, the Examiner heavily considered and relied on Waytena for rejections under 35 U.S.C. §§102 and 103 in evaluating the application of the ՚983 patent. See, e.g., Ex. 1002, 9–10, 20–24, 69–73. At this point and based on the present record, we do not discretionarily deny under 35 U.S.C. § 325(d) because Petitioner has 7 The terms “POSITA,” “PHOSITA” or “skilled artisan” refer to a person of ordinary sill in the art. reasonable likelihood that at least one of the Challenged Claims is unpatentable. PGS Geophysical, 891 F.3d at 1360. However, based on the record before us, and because we reach the same conclusion as the Examiner regarding Waytena’s teachings, we find that Patent Owner has, on this record, sufficient support for its contentions that Waytena was previously presented to the Office and the Examiner’s evaluation on the merits regarding Waytena’s teachings was not in error.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); see also 37 C.F.R. § 42.108(a) (2023) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). Considering the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we determine that, at this stage based on the evidence presented, Petitioner has demonstrated that there is a reasonable likelihood that at least one of the Challenged Claims is unpatentable. Accordingly, we institute an inter partes review of all challenged claims and on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest or comment on Petitioner’s definition of the level of ordinary skill in the art or offer Patent Owner’s own definition of the level of ordinary skill. Prelim. Resp. 2. that the ’983 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’983 patent is consistent with the level of skill proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art.” slip op. at 17
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“Petitioner contends the claimed “presentation means” is a means-plus- function term under § 112, ¶ 6, that “can perform the function of (a) ‘receiv[ing] said itinerary from said computer’ and (b) ‘present[ing] said itinerary to said party.’” Pet. 8–9. Petitioner further contends the corresponding structure for performing the recited functions is display screen 130. Pet. 9. Patent Owner presents no argument against this contention. We agree that “presentation means” is a means-plus-function claim term. Because it is necessary to know what the structure and function are encompassed by the claim term in order to make a determination that the disagreement, we adopt Petitioner’s construction. Should either party believe that a different construction should apply in the instituted trial, it should explain the proposed construction, how the construction is supported by the record, and how the construction affects our unpatentability analysis.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,212,983 - Toast, Inc. v. Gratuity, LLCInstitutedPTAB · Mar 27, 2024 · IPR2023-01408 · APJ Cynthia L Murphy · IPR · Institution
Instituted IPR of claims 1–13 on all asserted grounds; the Board found a reasonable likelihood that claim 1 is unpatentable over Marshall.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. In particular, we determine that factors 2– 4 weigh against denial of institution and factor 5, which is the lone factor favoring denial of institution, does not outweigh factors 2–4. Factor 1 is neutral. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Marshall (alone and with Phillips and Webb) when addressing the claims added during prosecution that ultimately issued as the Challenged Claims.” Pet. 68. As pointed out by Petitioner, “Marshall was never considered by the Examiner” against the claims that ultimately issued as claims 1–13 of the ‘050 Patent. Pet. 67, see also Ex. 1008, 263–289, 323–353. As also pointed out by Petitioner, “even when the Examiner considered Marshall” against claims that were subsequently cancelled, “he considered Marshall only as a secondary reference.” Pet. 67, see also Ex. 1008, 203–236, 263–289, 323–353. Patent Owner argues that Petitioner “fails to provide an adequate explanation as to how the examiner erred.” Prelim. Resp. 22. Patent Owner contends that Petitioner’s explanation “makes no sense,” and is “both conclusory and uncompelling.” Id. We disagree with Patent Owner’s characterization of the Petitioner’s position, especially because it is supported by prosecution history of the ’050 Patent. (See Ex. 1008, 203–236, 263–289, 323–353.) Patent Owner also argues that the prosecution history of the ‘050 Patent “establishes that the Examiner reviewed Marshall thoroughly and applied it against the claims, some of which he rejected and other he later allowed.” Id. at 21. To support this argument, Patent Owner points to findings made by the Examiner during prosecution of the ‘050 Patent. See id. at 20. These findings, however, related to the Examiner’s rejections against claims that were subsequently cancelled. See Ex. 1008, 203–224. And these findings were made in conjunction with Marshall being applied as a secondary reference to reject those claims. See id. The Examiner rejected those claims over a combination of three prior art references (Kessler, Delany, and Tidwell), and added Marshall, in lieu of using official notice, to show that it was known in the art to configure a processor to execute computer executable instruction stored in a memory. See id. at 211–214. Thus, these findings do not contradict Petitioner’s position that overlooking Marshall as primary obviousness reference in connection with the Challenged Claims was a material error. The prosecution history does not sufficiently show that the Examiner considered Marshall, Philips, Web, or the combinations of these references asserted in the Petition, with respect to the claims that issued as the ’050 Patent. In particular, the Examiner asserted as Reasons for Allowance that the prior art did not teach” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Patent Owner argues that “Marshall fails to disclose a cloud-based computing system remote from a plurality of client business systems” as recited in independent claim 1. Prelim. Resp. 22. Per Patent Owner, the cited-by-Petitioner paragraphs in Marshall (Ex. 1004) say “nothing about ‘cloud computing,’ only data transmission.” Id. at 22–23. And, per Patent Owner, the cited-by-Petitioner paragraphs from a declaration (Ex. 1002), do not provide “any additional evidence” beyond Marshall’s cited paragraphs. Id. at 22. We disagree with Patent Owner’s characterization of the evidence presented by Petitioner. The cited paragraphs of Marshall talk not only about data transmission, but also data transmission to remote locations via the Internet. See Ex. 1004, ¶¶ 25, 110. Also, one of these paragraphs talks about data transmission to a remote location being performed “via uploading and downloading via HyperText Transfer Protocol (‘HTTP’), Extensible Markup Language (‘XML’), and/or HTML as is known in the art.” Id. ¶ 110. The 9 The ’050 Patent says that “[i]n some embodiments, [a] point of sale system 110 and/or [an] employee records system 112 may be implemented in cloud computing systems reducing the burden on businesses to host these systems using local computing resources.” Ex. 2002, 4:65–5:2. If so, “[t]he gratuity management system 100 may be similarly implemented in a cloud computing system that interfaced with cloud-based point of sale and/or employee record systems.” Id. at 5:2–5. The gratuity management system “is contemplated to operate in conjunction with both local and cloud-based point to sale and/or employee record systems.” Id. at 4:8–11. cited paragraphs from the declaration provide additional evidence that these “communication protocols describe by Marshall (HTTP, XML, HTML) support a cloud-based infrastructure” and that “cloud computing solutions were well known and commonly used in the art by 2012.” Ex. 1002, ¶ 148. Thus, collectively, Petitioner’s evidence adequately establishes for the purposes of institution that Marshall indicates to POSITA that Marshall’s gratuity management system would be a cloud computing system remote from the plurality of client business systems.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Patent Owner argues that “Marshall fails to disclose a cloud-based computing system remote from a plurality of client business systems” as recited in independent claim 1. Prelim. Resp. 22. Per Patent Owner, the cited-by-Petitioner paragraphs in Marshall (Ex. 1004) say “nothing about ‘cloud computing,’ only data transmission.” Id. at 22–23. And, per Patent Owner, the cited-by-Petitioner paragraphs from a declaration (Ex. 1002), do not provide “any additional evidence” beyond Marshall’s cited paragraphs. Id. at 22. We disagree with Patent Owner’s characterization of the evidence presented by Petitioner. The cited paragraphs of Marshall talk not only about data transmission, but also data transmission to remote locations via the Internet. See Ex. 1004, ¶¶ 25, 110. Also, one of these paragraphs talks about data transmission to a remote location being performed “via uploading and downloading via HyperText Transfer Protocol (‘HTTP’), Extensible Markup Language (‘XML’), and/or HTML as is known in the art.” Id. ¶ 110. The 9 The ’050 Patent says that “[i]n some embodiments, [a] point of sale system 110 and/or [an] employee records system 112 may be implemented in cloud computing systems reducing the burden on businesses to host these systems using local computing resources.” Ex. 2002, 4:65–5:2. If so, “[t]he gratuity management system 100 may be similarly implemented in a cloud computing system that interfaced with cloud-based point of sale and/or employee record systems.” Id. at 5:2–5. The gratuity management system “is contemplated to operate in conjunction with both local and cloud-based point to sale and/or employee record systems.” Id. at 4:8–11. cited paragraphs from the declaration provide additional evidence that these “communication protocols describe by Marshall (HTTP, XML, HTML) support a cloud-based infrastructure” and that “cloud computing solutions were well known and commonly used in the art by 2012.” Ex. 1002, ¶ 148. Thus, collectively, Petitioner’s evidence adequately establishes for the purposes of institution that Marshall indicates to POSITA that Marshall’s gratuity management system would be a cloud computing system remote from the plurality of client business systems.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,741,050
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.