- PTAB · Apr 16, 2024 · IPR2023-01416 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood of success for method claims 16–20 under Genossar and Barratt ’470.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memorandum”), available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. Accordingly, because Petitioner has offered a stipulation like that in Sotera, we do not discretionarily deny institution under Fintiv.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’477 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’477 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose an explicit claim construction for any term, asserting that, “[u]nless otherwise specified, for purposes of this Petition, the terms should receive their respective plain and ordinary meaning as understood by a [person of ordinary skill in the art].” Pet. 6. Patent Owner asserts that “[n]o claim construction is necessary to deny institution because [Patent Owner] General Access’s arguments for denial do not hinge on any disputed issues of claim interpretation.” Prelim. Resp. 10. For the reasons set forth below, we determine that, as to the independent apparatus claim, Petitioner has not met its burden on its challenges as articulated by Petitioner, but we determine that Petitioner has met its burden for the independent method claim. We need not reach any claim construction issues to make those determinations. Accordingly, on this record and for purposes of this decision, we determine that no claim terms require express construction. However, the parties’ respective positions regarding the anticipation grounds suggest that there may be claim construction disputes regarding terms in independent apparatus claim 1.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 5. Patent Owner states that, “[f]or purposes of this preliminary Response only, Patent Owner does not dispute the Petitioners’ definition of a person of ordinary skill in the art.” Prelim. Resp. 4 (citing Pet. 5). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,947,477 - PTAB · Feb 18, 2022 · IPR2021-01325 · APJ Jameson Lee · IPR · Institution
Instituted IPR on all grounds for claims 70–80, 84, 89–97, 99, 103, and 107; petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. Upon consideration of the contentions and the evidence of record at this juncture, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability at least one challenged claim of the ’457 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’457 patent on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“exercise discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review in view of parallel district court proceeding. Prelim. Resp. 37–44 (citing, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). Petitioner asserts, in its Preliminary Reply, however, that the circumstances have changed with respect to parallel litigation in district court, because as of January 10, 2022, “Patent Owner is no longer asserting the ’457 Patent.” Prelim. Reply 1. Patent Owner, in its Preliminary Sur-Reply, confirms that “the ’457 patent is no longer asserted in the co-pending litigation.” Prelim. Sur-Reply 1. Because the ’457 patent is no longer being asserted in parallel district court litigation initially noted by the parties in the Petition and in the Preliminary Response, discretionary denial as originally requested by Patent Owner in its Preliminary Response is moot and need not be reached. Patent Owner asserts that under Fintiv Factor 6, “the Board should deny institution of trial because the merits of this Petition are particularly weak.” Prelim. Sur-Reply 1. The assertion is misplaced where, as here, there is no longer any parallel litigation involving the ’457 patent. The Fintiv factors are not at issue in this circumstance.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s use of the qualifier “at least” renders Petitioner’s articulation vague and potentially overlapping with the level of skill of an expert. On this record, we adopt Petitioner’s articulation of the level of ordinary skill, but delete the qualifier “at least” for the level of education and for the amount of experience, to keep the level from being vague and overbroad and extending into the level of an expert. What remains appears consistent with what is reflected by the content of the applied prior art 2001) (the applied prior art may reflect an appropriate level of skill). In summary, one with ordinary skill in the art at the pertinent time period would have had a Bachelor’s degree in an academic area emphasizing electrical engineering, computer science, or a similar discipline, and two years of experience in the field working with, teaching, or researching stereoscopic and/or virtual/augmented reality (VR/AR) display technologies. C.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In related litigation proceedings, Petitioner and Patent Owner agreed to construe “cursor” as “an indicator movable within a three-dimensional image, image space, and volume.” MS-1025. For the purposes of this petition, Petitioner will use this construction. It follows then that a “3D cursor” is a “3D indicator movable within a three-dimensional image, image space, and volume.” MS-1003, ¶[49]. Pet. 8 (footnote omitted). Patent Owner has not proposed a construction for either “cursor,” “3D cursor,” or “three-dimensional cursor.” Nor has Patent Owner expressed disagreement in this proceeding with Petitioner’s proposed construction for “three-dimensional cursor.” On this record, we see no error with Petitioner’s proposed construction for “three-dimensional cursor” and will, for purposes of institution, adopted it as the construction for “three-dimensional cursor.” indicator movable within a three-dimensional image, image space, and volume.”9” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,795,457
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.