- PTAB · Sep 6, 2024 · IPR2024-00430 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary 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.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’690 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSITA6 would have had a bachelor’s degree in electrical engineering, computer engineering, or a similar discipline, and three to four years of experience working in signal processing and/or communication systems/networks. Additional education may substitute for experience, and significant work experience may substitute for formal education. Pet. 6 (citing Ex. 1002 ¶¶ 115–120). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (stating that the applied prior art may reflect an appropriate level of skill). For this stage of the proceeding, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Since the parties apply what they contend is the plain and ordinary meaning of the claim terms in their briefs, and have stipulated in the Cox case that the plain and ordinary meaning applies, and Patent Owner argues that the district court’s construction in the Charter case is the plain and ordinary meaning, there is no controversy concerning claim terms that we need to resolve in this Decision. Pet. 6; Prelim. Resp. 10; Ex. 1005, 104–105; Ex. 2001, 2. 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)). At this stage of the proceeding, therefore, we apply the plain and ordinary meaning to the claim terms consistent with their ordinary and customary meaning under 37 C.F.R. § 42.100(b). We note, however, that Patent Owner seems to consider the court’s construction in the Charter case to require that the claimed “probe” must be of a type that can be compared with a reference signal. Prelim. Resp. 10. We question whether all of the different types of probes mentioned and claimed in the ’690 patent would require comparison with a reference signal. See, e.g., Ex. 1001, 2:7–19. However, this is a matter best resolved, if necessary, on a full record at trial.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableUnpatentableMixed
“Prelim. Resp. 23 (citing Ex. 1013, 37) (annotated in red by Patent Owner). IEEE-802.16’s Table 5 shows that the CID is a field of a generic MAC header. Petitioner does not show sufficiently that the CID, located in the header, specifies content payload of a MAC message, as required by limitation 1A. Petitioner alternatively relies on IEEE-802.16’s ranging code index that it contends is another example of data that is in a ranging request parameter and is used for the ranging response payload. Pet. 15 (citing Ex. 1013, 49–51, 204–213, 576–579, 665–66; Ex. 1002 ¶ 149). Patent Owner asserts that the portions of IEEE-802.16 that Petitioner cites do not disclose that the ranging code index is sent as part of a ranging request message. Prelim. Resp. 25. Although the parts of IEEE-802.16 that Petitioner cites disclose that the ranging code index is sent from the SS to the BS and is included in a ranging response (Ex. 1013, 49–51, 204–213, 576–579, 665–66), the cited parts do not disclose that the SS sends the ranging code index to the BS in a ranging request. Consequently, Petitioner has not established that IEEE- 802.16 anticipates a ranging code index that is a parameter of a ranging request specifying the content payload of the ranging response corresponding to limitation 1A. For the foregoing reasons, on this record, we determine that Petitioner has not shown a reasonable likelihood to prevail in showing that claim 1 is anticipated by IEEE 802.16.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,284,690 - Hunter’S Manufacturing Company, Inc. D/B/A Tenpoint Crossbow Technologies v. Ravin Crossbows, LLCInstitutedPTAB · Jul 10, 2023 · IPR2023-00407 · APJ Robert J Silverman · IPR · Institution
The Board instituted IPR on claim 1 on all asserted grounds because Grounds 7 and 8 met the reasonable-likelihood threshold.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/ default/files/documents/interim_proc_discretionary_denials_aia_parallel_dis trict_court_litigation_memo_20220621_.pdf (“Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”)). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. In this proceeding, Petitioner offers a stipulation employing language nearly identical to that prescribed in the Interim Procedure: “Petitioner hereby stipulates that it will not pursue in the parallel district court proceeding the same grounds as in this Petition or any grounds that could have reasonably been raised as to claim 1 in this Petition.” Pet. 6–7.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Interpretation In an inter partes review, we construe claims using the same standard applied in a district court. See 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). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“’015 Patent pertains “would be a technical person who has at least some experience working in the field of archery, reviewing crossbows or engineering related to bows and/or crossbows, and is generally familiar with prior art crossbows” and “would likely have at least a bachelor’s degree in mechanical engineering or, alternatively, would have several years of experience in the field of archery or engineering related to bows and/or crossbows.” Pet. 28 (citing Ex. 1016 ¶ 17). Patent Owner states: “Solely for purposes of this Preliminary Response, Patent Owner does not dispute Petitioner’s proposed qualifications of a person of ordinary skill in the art (‘POSA’).” Prelim. Resp. 2. For the purposes of the present Decision, we adopt Petitioner’s description of a person of ordinary skill in the art pertinent to the ’015 Patent. E.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The Federal Circuit has explained that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden, Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Petitioner relies upon a portion of KSR in which the Supreme Court stated: When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSR, 550 U.S. at 421. Yet, in the analysis of Ground 2, Petitioner does not address the predicate factual determinations that the Supreme Court identifies — e.g., that there would have been “a design need or market pressure,” that there were “identified” and “predictable” solutions. Id. Therefore, based upon the present record, and for the purposes of the present Decision, Petitioner does not provide a sufficient reason for modifying Stanziale ’302, in order satisfy the identified limitation of claim 1. F.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,354,015 - PTAB · Feb 8, 2022 · PGR2021-00103 · APJ Patrick R Scanlon · PGR · Institution
The Board instituted PGR on claims 1–28 and all petition grounds, finding the Luharuka, API 674, and Karassik challenge more likely than not to prevail on claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may not 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.” After considering the Petition and Patent Owner’s Preliminary Response, as well as all supporting evidence, we determine that Petitioner has satisfied the burden under 35 U.S.C. § 324(a) to show that it is more likely than not that at least one of the challenged claims is unpatentable.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“These arguments are not persuasive, however, because Patent Owner does not explain adequately how the disclosures of Oehring and Shampine are cumulative of the disclosure of Mu. In this case, the mere fact that 8 We note that Exhibit 2007 does not have ¶ 95 cited by Patent Owner. not mean necessarily that the references are cumulative of Mu. For instance, Petitioner relies on Mu for allegedly disclosing several claim limitations including “receiving a demand hydraulic horse power (HHP) signal,” “the first output power being in the range of approximately 70% to 100% of a maximum continuous power (MCP) level,” and “the second output power . . . being in the range of approximately 70% of the MCP level to approximately a maximum intermittent power (MIP) level.” Pet. 19–41. Patent Owner does not direct us to any disclosure in Oehring or Shampine that are cumulative of these alleged teachings in Mu. Accordingly, we do not agree with Patent Owner that either of Oehring or Shampine is cumulative of Mu. As such, we determine that Petitioner’s reliance on Mu does not involve the same or substantially the same art or arguments previously presented to the Office, and the first part of the Advanced Bionics framework is not satisfied with respect to Mu. And although Crowe is cited in the ’764 patent (see Ex. 1001, code (56)), Petitioner’s reliance on Crowe is minimal. The ground based on Mu and Crowe, thus, does not implicate § 325(d).” slip op. at 8
- Skill levelOther
“This dispute presents a factual issue best decided on a complete record. Accordingly, for purposes of the Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Lastly, on the current record, we disagree with Patent Owner’s argument that Mr. Marscher is not qualified to serve as an expert in this proceeding. See Prelim. Resp. 8. Mr. Marscher’s declaration and curriculum vitae show that he has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004.” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,815,764 - PTAB · Feb 8, 2022 · PGR2021-00102 · APJ Patrick R Scanlon · PGR · Institution
The Board instituted PGR on claims 1–28 on all asserted grounds, finding a sufficient likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may not 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.” After considering the Petition and Patent Owner’s Preliminary Response, as well as all supporting evidence, we determine that Petitioner has satisfied the burden under 35 U.S.C. § 324(a) to show that it is more likely than not that at least one of the challenged claims is unpatentable.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“These arguments are not persuasive, however, because Patent Owner does not explain adequately how the disclosures of Oehring and Shampine are cumulative of the disclosure of Mu. In this case, the mere fact that 8 We note that Exhibit 2007 does not have ¶ 95 cited by Patent Owner. not mean necessarily that the references are cumulative of Mu. For instance, Petitioner relies on Mu for allegedly disclosing several claim limitations including “receiving a demand hydraulic horse power (HHP) signal,” “the first output power being in a selected range of a maximum continuous power (MCP) level,” and “the second output power . . . being in a selected range of the MCP level to a maximum intermittent power (MIP) level.” Pet. 19–41. Patent Owner does not direct us to any disclosure in Oehring or Shampine that are cumulative of these alleged teachings in Mu. Accordingly, we do not agree with Patent Owner that either of Oehring or Shampine is cumulative of Mu. As such, we determine that Petitioner’s reliance on Mu does not involve the same or substantially the same art or arguments previously presented to the Office, and the first part of the Advanced Bionics framework is not satisfied with respect to Mu. And although Crowe is cited in the ’459 patent (see Ex. 1001, code (56)), Petitioner’s reliance on Crowe is minimal. The ground based on Mu and Crowe, thus, does not implicate § 325(d).” slip op. at 8
- Skill levelOther
“This dispute presents a factual issue best decided on a complete record. Accordingly, for purposes of the Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionTerm construed board ownOther
“We agree with Patent Owner that Petitioner has not explained sufficiently what a “maximum power output value” means in the context of the ’459 patent. Nor has Petitioner explained sufficiently why “maximum intermittent power” should be tied to the “maximum power output value.” In contrast, Patent Owner’s proposed construction is supported by the Specification, although we do not agree with the last clause of the construction because the references to “typical” values do not assist in understanding the claim language. Accordingly, for purposes of this Decision, we preliminarily construe “maximum intermittent power” to mean “an elevated operating output level that the pump unit may operate intermittently throughout its operating life without excessive damage to the pump unit.”” slip op. at 14
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · Graham · NautilusPatents in suitUS 10,907,459 - Motorola Mobility LLC v. Intellectual Ventures II LLCRehearing deniedPTAB · Jul 22, 2020 · IPR2014-00504 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Motorola’s rehearing request, leaving intact the remand decision that claims 1–4, 7, and 18 were not shown unpatentable on the instituted grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 3
- Expert testimonyPatent owner expert creditedDecided for patent owner
“that Dr. Tewfik’s testimony is not credible because he has “no personal knowledge” and “merely parrots the inventor’s claim chart.” Req. 6. We disagree, because we considered and analyzed expressly Petitioner’s argument and the basis for Dr. Tewfik’s testimony. Remand Dec. 27, 30. We determined that Dr. Tewfik’s testimony was credible, in that it was testimony concerning his opinion with respect to the claim chart, and also that his testimony was based, at least in part, on his personal experience with Windows 98 and its functionalities. Id. at 30. Indeed, the Federal Circuit noted that the rule of reason requires us to consider all pertinent evidence, and then noted explicitly that Dr. Tewfik’s testimony was one example of such pertinent evidence that needed to be considered. See Intellectual Ventures II, 692 F. App’x at 627–628. For these reasons, we are not persuaded that we misapprehended or overlooked the credibility of Dr. Tewfik’s testimony.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“not have changed the outcome of our Decision. In Figure 4, Kellerer shows a block with a central control unit, address management, routing, an application server, and network managers. Exhibit 1007, 45. This block diagram, however, does not specifically address whether or not Internet access requires an external service controller. Moreover, Petitioner provides no citations to any passages that describe the functions of the central control unit, address management, routing, the application server, and the network managers. See generally Req. 9–13. We are not persuaded that Kellerer teaches all of the components that are necessary to enable Internet access based on Figure 4 alone. That these components are located inside the car, as shown in Figure 3, also does not specifically address whether or not Internet access requires an external service controller. Accordingly, we are not persuaded that Figures 3 and 4 render the stand-alone system limitation obvious.” slip op. at 12
§ 103 obviousnessPatents in suitUS 7,382,771
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.