- PTAB · Oct 21, 2024 · IPR2024-00697 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–5 on all petitioned grounds, finding a reasonable likelihood that Apple would prevail on at least one claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the degree. Pet. 4 (citing Ex. 1003 ¶ 30–31). Patent Owner contends a POSITA would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience. Prelim. Resp. 3. Additional relevant industry experience may compensate for lack of formal education or vice versa. Id. Patent Owner further contends this is similar to Petitioner’s POSITA contention. Id. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’767 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner contends “the preamble of claim 1 is limiting based on Petitioner’s assertion in the District Court and based on the District Court’s order.” Prelim. Resp. 6. Patent Owner also contends “the District Court agreed with Patent Owner and ordered that the ‘control component’ term has its plain and ordinary meaning and is not subject to means-plus-function treatment.” Id. Patent Owner finally contends “there is no need for the Board to make claim construction determinations about Section 112, Paragraph 6 to decide institution.” Id. As to the preamble, we agree, for purposes of this decision, that claim 1’s preamble is limiting. The parties agreed that this preamble is limiting in the District Court case. Dist. Ct. Const. 10.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed board ownTerm construed patent owner constructionMixed
“As to the “driving component” recitation, the parties agreed to a construction in the District Court case. Dist. Ct. Constr. 11. For purposes of this Decision, we adopt the parties’ agreed construction. Pet. 6. The parties agreed the “driving component” term is a means-plus-function term. Dist. Ct. Constr. 11. The function is “drives the moveable component in each of two opposite directions.” Id. Corresponding structure includes “coils 420, 514, 626, 1202, 1204, 1302, 1304, 1412, 1414, 1510 (also shown in Figs. 16–17); electromagnets shown in Figs. 10–11; and equivalents thereof.” Id. As to “control component,” the District Court held that the term is not a means-plus-function term because the claim defines the term structurally by requiring a “microprocessor,” “control program,” and “switch.” Dist. Ct. Constr. 17–22. For purposes of this Decision, we agree with the District Court that means-plus-function treatment does not apply to the “control component” recitation because structure in claim 1 defines the component. Given the context provided by claim 1 as a whole, a person having ordinary skill in the art would have understood the “control component” as identifying a specific structure (requiring a microprocessor, control program, and switch as claim 1 recites). See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (holding that the means-plus-function inquiry depends on “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for a structure”).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“With respect to other claim terms, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim based on the ordinary and customary meaning of these terms. Thus, no other claim terms require express construction for purposes of this Decision. See, e.g., 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)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,093,767 - PTAB · Jan 17, 2024 · IPR2023-01027 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of all challenged claims on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable over the cited prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons provided below, and based on the record as it now stands, we determine that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute inter partes review. B.” slip op. at 2
- BurdenMixed
“Regarding the claimed “predefined threshold value” or “predefined illuminance,” Petitioner asserts that “Alden’s system can ‘provide illumination to independently controlled segments [e.g., ‘subsections’] each operable within a range of intensities between the high and the low beam state” and that Alden’s “intensities in between high beam and low beam (e.g., medium) are the claimed ‘predefined threshold value’ which the low beam would be below and the high beam would be above.” Pet. 25. We tend to disagree with this analysis, as it does not appear that a “range of intensities” is a “predefined threshold value” or “predefined illuminance,” if those terms are given their ordinary meaning. We thus conclude that, on this record at least, Petitioner has not shown a reasonable likelihood that Alden anticipates these claims. Regarding obviousness in view of Alden alone, Patent Owner argues that Petitioner has “failed to establish or demonstrate multiple elements that are required to support an obviousness conclusion, including explaining how Alden must be modified (i.e., identifying the differences between the claimed invention and Alden) and explaining why a POSA would be motivated to so modify Alden (i.e., providing some articulated reasoning with some rational underpinning to support an obviousness conclusion).” Prelim. Resp. 37. We agree. It does not appear that Petitioner has provided any basis on which to account for differences between Alden and the challenged claims based on Alden’s disclosures alone.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the alleged invention “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems” and that more education could compensate for less experience and vice versa. See Pet. 8–9 (citing Ex. 1003 ¶ 33). Patent Owner “does not dispute Petitioner’s proposed skill level for a person of ordinary skill in the art” (Prelim. Resp. 7), and, as we generally agree that it is consistent with the subject matter disclosed in the ’503 patent and the prior art, we adopt it for purposes of this decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not seek construction of any claim terms and asserts that “all claim terms [discussed in the Petition] are given [their] ordinary and customary meaning.” Petition 8. Patent Owner asserts that “[n]o claim construction is necessary” at this time because its “arguments for denial do not hinge on the outcome of an actual controversy about claim interpretation.” Prelim. Resp. 7. There being no present dispute about the meaning of any claim term, we find that no express claim construction is necessary to resolve the issues addressed in this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,894,503 - PTAB · Jan 24, 2023 · IPR2022-01248 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR on all presented grounds for claims 1–21 and 23–30, finding a reasonable likelihood of proving at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. We accordingly institute an inter partes review of claims 1–21 and 23–30 of the ’653 patent on all presented challenges. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). B.” slip op. at 4
- BurdenMixed
“For the reasons above, based on the present record, Petitioner’s arguments do not show adequately that Yegoshin would have been understood to have multiplexed signals, or that Bernard “includes or operates as a multiplexer for combining the data packets” (Pet. 37). Because Petitioner does not sufficiently show multiplexed signals in any of the asserted references, Petitioner does not provide enough argument and evidence that its proposed combination of Yegoshin, Johnston, Billström, and Bernard would have “a single interface comprised of multiplexed signals from the plurality of wireless transmit and receive components,” as required by claim 1. For these reasons, we find that Petitioner has not shown a reasonable likelihood that it will prove claim 1 unpatentable over the combination of Yegoshin, Johnston, Billström, and Bernard. For the same reasons, we find that Petitioner has not shown a reasonable likelihood that it will prove dependent claims 2–13 unpatentable over the combination. However, because claim 1 will remain in the proceeding under SAS, we also provide our preliminary views on the dependent claims.” slip op. at 28
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Claim Construction Petitioner states that “no formal claim constructions are necessary in this proceeding.” Pet. 2. Patent Owner does not propose an interpretation for any term but, as discussed below in Section II.D, argues that Petitioner should have disclosed and applied the claim constructions it has advanced in related litigation. At this preliminary stage, we determine that the record does not require use to resolve any claim construction dispute to decide whether or not to institute. 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.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art “would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience related to the design or development of wireless communication systems, or the equivalent.” Pet. 3 (citing Ex. 1003 ¶¶ 27–28). Petitioner also states that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. (citing Ex. 1003 ¶¶ 27–28). Patent Owner does not propose a level of ordinary skill and does not dispute Petitioner’s proposal. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, and because we find it generally consistent with the disclosures of the ’653 patent and the prior art, we adopt it for purposes of this analysis. B.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,842,653 - PTAB · Dec 2, 2022 · IPR2022-00951 · APJ Stacey G White · IPR · Institution
Instituted review of claims 1–11 on all asserted §103 grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to all of the challenged claims of the ’240 patent on all of the asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“1 We apply the pre-AIA version of 35 U.S.C. § 103 because the claims at issue have an effective filing date prior to March 16, 2013, the effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). See Ex. 1001, code (22). 2 Petitioner does not list claim 1 in its table on page 3, but Petitioner provides argument as to claim 1 in its discussion of the ground. See Pet. 56– 57. 3 Petitioner does not list claims 1and 4 in its table on page 3, but Petitioner provides argument as to claims 1 and 4 in its discussion of the ground. See Pet. 73. 4 Petitioner argues that the Fintiv factors weigh against discretionary denial. Pet. 77–78; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5‒6 (PTAB Mar. 20, 2020) (precedential). Because Patent Owner does not argue for discretionary denial, we see no need to consider the issue further.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“educational level of active workers in the field.” Best Med. Int'l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quotation omitted). The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). The specification of the ’240 patent describes its technical field as relating to “‘secure documents’ …having RFID (radio frequency identification) chips …operating in contactless mode (ISO 14443) including dual interface (‘DI’, or ‘DIF’) cards which can also operate in contact mode (ISO 7816-2), and more particularly to improving coupling between components within the smart card …and consequent improvements in interacting with external RFID readers.” Ex. 1001, 1:24–34. The specification discusses both inductive and capacitive coupling. See e.g., id. at 6:55–58. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 20035, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, on the record currently before us, we are not persuaded that the level of 5 Our citations are to the native page numbers in the document and not Patent Owner’s numbering. devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1– 2 years of experience researching and developing antennas used in RFID applications.” See Pet. 8.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“B. Dr. van der Weide’s Level of Experience Patent Owner argues that we should not give substantial weight to the testimony of Petitioner’s declarant, Dr. van der Weide, because he “lacks relevant experience to provide opinions through the lens of a [person having ordinary skill in the art].” Prelim. Resp. 27–28 (citing Ex. 2001 ¶¶ 71–72. According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. at 27. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Based on the current record, Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,165,240
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.