- PTAB · Feb 21, 2024 · IPR2023-01287 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood of success on at least one claim based on the obviousness challenges.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“restriction region” should not be limited to an “exclusionary zone” or “an area where the vehicle is excluded from entry,” as asserted by SZ DJI. See Prelim. Resp. 9; Prelim. Sur-reply 2. Upon reviewing the specification of the ’121 patent, it states the following: “[i]n some embodiments, a flight response measure may include allowing the UAV to remain in the flight restriction region, but imposing certain restrictions on the operation of the UAV within the flight restriction region. The UAV may be forced to remain within the flight restriction region.” Ex. 1001, 17:44–49. Construing the claim term “restriction region” in accordance with SZ DJI’s proposed construction as an “exclusionary zone” would exclude these embodiments, which allow the UAV to remain in the flight restriction region, or force the UAV to remain within the flight restriction region. See, e.g., Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (Although a preferred embodiment should not be read into claims as limitations, construction of a claim term that excludes a preferred embodiment “is rarely, if ever, correct and would require highly persuasive evidentiary support.”). In light of these embodiments, which do not comport with SZ DJI’s proposed construction, and lacking persuasive evidentiary support from the specification to support its narrow construction, the proper construction of the claim term “restricted region” is broader than SZ DJI would allow. At this stage of the proceeding, lacking a clear construction for the claim term “restriction region” in the Petition itself, we decline to adopt Textron’s implied construction for this claim term presented for the first time in the Preliminary Reply. See Prelim. Reply 1. Instead, for the purposes of institution, we preliminary construe the claim term “restricted region” in accordance with its plain and ordinary meaning as “any region in which it is possible to limit or affect operation of a ground vehicle.”3 Our preliminary construction finds support in various embodiments disclosed the specification, which include both confinement and exclusion. See, e.g., Ex. 1001, 17:48–49 (“The UAV may be forced to remain within the flight restriction region.”), 22:46–48 (“For instance, if the user is approaching a flight restriction region, the user may be alerted and may change course of the UAV to exit the flight restriction region.”). During trial, if the construction of the claim term “restriction region” remains in dispute, we invite the parties to provide arguments and evidence regarding the plain and ordinary meaning of this claim term. slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION We conclude that the information presented in the Petition demonstrates that there is a reasonable likelihood that Textron would prevail in challenging at least one of claims 1–30 of the ’121 patent as unpatentable. Accordingly, we institute an IPR as to all challenged claims and all the grounds raised in the Petition. See 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims or the construction of any claim term. IV. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), an IPR is hereby instituted as to all of the challenged claims and all of the grounds raised in the Petition; and” slip op. at 54
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Based on our initial review of Humphries, we are persuaded by SZ DJI’s argument that the reference does not disclose, either expressly or inherently, “private property,” such as residential and commercial buildings. See Ex. 1004. It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it, for example, if the prior art necessarily functions in accordance with, or includes, the claimed limitations. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). However, the fact that a certain thing may result from a given set of circumstances is not sufficient for inherent anticipation. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Figure 2 of Humphries does not meet the exacting standard of anticipation because there is nothing within the four corners of this reference indicating that the geofence objects 220 actually encompass the city of Clinton, Mississippi, much less that such a location would be associated with private property, such as residential or commercial buildings. Notwithstanding, we believe that Humphries, together with the general background knowledge of a person of ordinary skill in the art, teaches that the geofence annotated in Textron’s version of Figure 2 would encompass a real-world location, such as the city of Clinton, Mississippi, which at the very least includes “a location associated with a private property.” We address this below when addressing the asserted ground based on obviousness over Humphries. See infra Section II.C.2.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the preliminary record, the purported deficiencies identified by SZ DJI do not undermine Textron’s asserted obviousness ground based on the combined teachings of Humphries and Marcus. For example, it is not dispositive that both Humphries and Marcus relate to systems applicable to airborne vehicles, whereas the challenged claims require a ground vehicle, because Humphries explicitly contemplates that its system also is applicable to a ground vehicle. Ex. 1004, 4:26–31 (disclosing that tracked device 120 may be “associated with a vehicle such an automobile, truck or the like”), 5:44–46 (“The object being tracked as described in the present invention is a vehicle (e.g., cars, boats, trucks, trains).”). Moreover, as we explain in our preliminary claim construction analysis above, we decline to adopt SZ DJI’s narrow view of the claim term “restriction region” as limited to exclusion. Instead, we preliminary construe the claim term “restricted region” in accordance with its plain and ordinary meaning as “any region in which it is possible to limit or affect operation of a ground vehicle.” See supra Section II.A. Lastly, even if the user and roles in Humphries and Marcus are different or there are certain disclosures in Marcus that might create tension with its proposed combination with Humphries, this would not undermine Textron’s rationale to combine the teaching of these two reference. Textron does not seek to bodily incorporate all of Marcus into Humphries, but instead only relies on Marcus to teach specifying a location associated with private property. See Pet. 47–48 (citing Ex. 1005 ¶¶ 14, 17). In summary, Textron has shown a reasonable likelihood that it would” slip op. at 38
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,482,121 - PTAB · Dec 21, 2023 · IPR2023-01046 · APJ Jean R Homere · IPR · Institution
The Board instituted IPR on claims 1–14 and 16–19 on all asserted grounds, finding a reasonable likelihood of success on the obviousness grounds based on Chalom and Aslan, with Grau or Pace for certain claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a) (2023). Based on the current record, and for the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute inter partes review. slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proffered definition of the level of ordinary skill in the art, but offers a definition of its own. Prelim. Resp. 9. Patent Owner contends that a person having ordinary skill in the art at the time of the invention “would have had at least a bachelor’s or master’s degree in electrical engineering, computer engineering, electrical and computer engineering, computer science, or similar educational background; or equivalent on-the-job training, including approximately two to three years of experience in machine learning and/or pattern recognition.” Id. (citing Ex. 2001 ¶ 21). Patent Owner asserts that the “level of skill is approximate and more experience would compensate for less formal education and vice versa.” Id. (citing Ex. 2001 ¶ 21). We note that the differences between the parties’ descriptions are immaterial and find Petitioner’s description to be consistent with the problems and solutions disclosed in the ’985 patent and prior art of record, and adopt it as our own for purposes of this Decision, albeit without the two instances of “at least,” which introduce ambiguity. See, e.g., In re GPAC Inc., 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner contends that it “applied plain and ordinary meanings of all terms and no express constructions are required here.” Pet. 5. Patent Owner “agrees with Petitioner that there are no claim terms that require construction for purposes of the Board’s decision on institution.” Prelim. Resp. 9. At this stage in the proceeding, and without further argument from the parties, we determine that we do not need to expressly construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review). We note that this determination does not preclude the parties from arguing their proposed constructions of the claims during trial, as permitted by our rules and binding precedent. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“related fields, in that they disclose similar techniques of using machine learning for image processing (e.g., using image data to train MLAs to correct the gaze of a video-conferencing user). Pet. 41–42 (citing Ex. 1005, 3:21–32; Ex. 1007 ¶ 24). Petitioner also contends both “Chalom and Aslan are at least reasonably pertinent to a problem identified in the ’985 Patent of high accuracy MLAs often consuming more computational resources and being slower to run, as compared to efficient MLAs tending to provide less accurate predictions.” Id. at 42 (citing Ex. 1001, 16:24–30; Ex. 1007 ¶ 45). Thus, “Chalom and Aslan are at least reasonably pertinent to this efficiency- 4 It has been held that where the claimed subject matter involves more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement, a holding of obviousness must be based on “an apparent reason to combine the known elements in the fashion claimed.” KSR, 550 U.S. at 417–18. That is, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Such reasoning can be based on interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art. Id. at 417–18. versus accuracy problem. Id. (citing Ex. 1005, 1:16–25, 9:48–55, 10:40–60, Fig. 3; Ex. 1007 ¶ 45; Ex. 1001, 16:24–44, 17:14–17; Ex. 1003 ¶ 212). Petitioner shows sufficiently for institution that a POSITA would have been motivated to incorporate Aslan’s teacher-student architecture into Chalom’s image editing and training of its RFC to enhance the overall gains in efficiency and accuracy of the ensuing system. Id. at 42–44 (citing Ex. 1003 ¶¶ 213–222; Ex. 1007 ¶ 44). For purposes of institution, we find that Petitioner’s rationale, which is supported by the testimony of Dr. Karam, is a sufficient demonstration, at this stage, of a motivation to combine the references with a reasonable expectation of success. KSR, 550 U.S. at 417–18. However, we note that Patent Owner’s arguments may have some merit, and encourage the parties to further develop this issue at trial.” slip op. at 37
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,740,985 - Apple Inc. v. Mozido, Inc.InstitutedPTAB · Jan 4, 2023 · IPR2022-01150 · APJ Kristen L Droesch · IPR · Institution
Instituted IPR on claims 1–21 and all petition grounds; claims 1–3, 6–10, 13–17, 20, and 21 met the institution threshold under § 103 over Easterly and Luz.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For all of the foregoing reasons and based on the record before us, we determine there is a reasonable likelihood Petitioner would prevail in showing that claims 1–3, 6–10, 13–17, 20, and 21 are unpatentable under 35 U.S.C. § 103 over Easterly and Luz. We, however, determine that there is not a reasonable likelihood Petitioner would prevail in showing that claims 4, 5, 11, 12, 18, and 19 are unpatentable under 35 U.S.C. § 103 over Easterly and Luz. In any event, because Petitioner has satisfied the threshold for institution as to at least one claim, we institute inter partes review on all claims and all grounds raised in the Petition. See 37 C.F.R. § 42.108(a). III. CONCLUSION For the foregoing reasons, we determine there is a reasonable likelihood that Petitioner would prevail in showing at least one of the challenged claims of the ’785 Patent is unpatentable. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–21 of the ’785 Patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“For the purposes of institution and based on Petitioner’s citations to Easterly, Luz, and Dr. Houh’s testimony (Ex. 1003), we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art at the time of the invention to include a total payment amount that is to be paid in the embedded payment information of Easterly’s barcode. See Pet. 21–25; KSR, 550 U.S. at 418. Petitioner contends that the combination is an example of combining prior art elements according to known methods to yield predictable results. See Pet. 21 (citing Ex. 1003 ¶ 50). Petitioner also asserts that the combination is explicitly suggested because “Easterly’s barcode ‘contains all of the data required to authenticate, authorize, clear, and settle a transaction’” and “‘incorporate[s] information sufficient to identify the parties to a transaction and all other ¶¶ 18, 20) (emphasis omitted), 22 (quoting Ex. 1005 ¶ 18) (emphasis omitted). According to Petitioner, “because Easterly notes that price is pertinent to the transaction, and that the barcode includes all the data required to process the transaction, or relevant to the transaction, it would have been obvious for the barcode to include the total price.” Id. at 21 (citing Ex. 1003 ¶ 51). Petitioner also asserts that a person of ordinary skill in the art “would have understood that transaction information such as the items subject to the transaction would be important and thus obvious to include within the barcode that is used at point-of-sale terminals.” Id. at 22 (citing Ex. 1003 ¶ 52). Petitioner further contends that Luz provides an explicit example of putting information regarding a product or a service, a cost of the product or the service, a tax amount, and a total price; purchase payment information, merchant information, purchaser information, in a barcode. See Pet. 22 (quoting Ex. 1006 ¶ 40, claim 6; citing Ex. 1006, claim 12; Ex. 1003 ¶ 53). According to Petitioner, [g]iven Easterly’s suggestion that the barcode includes the total price and items subject to a transaction, along with Luz’s explicit teaching of a barcode including such information, a [person of ordinary skill in the art] would have found it obvious for Easterly’s barcode to include price and items of the transaction. Including such information as the total price would have yielded the predictable result of having the barcode include data that is relevant to the transaction.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art in August of 2012 would have had a working knowledge of the software arts that are pertinent to the ’785 patent. That person would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of software programming. Lack of work experience can be remedied by additional education, and vice versa. Pet. 12 (citing Ex. 1003 ¶¶ 20–22). Patent Owner offers essentially the same definition of the level of skill in the art as Petitioner, asserting that a person of ordinary skill in the art as of the effective filing date of the ’785 Patent would have had a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development involving network-based monetary transaction systems. . . . Lack of work experience can be remedied by additional education, and vice versa. . . . Appropriate experience could substitute for education. Prelim. Resp. 4–5 (citing Ex. 2001 ¶ 35). For the purposes of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it appears to be consistent with the level of skill reflected by the ’785 Patent Specification and the asserted prior art, and does not materially differ from Patent Owner’s definition.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner contends that there is no disclosure in Easterly that a debit network is selected based on location. See Prelim. Resp. 16 (citing Ex. 2001 ¶ 69), 19 (citing Ex. 2001 ¶ 82), 21 (citing Ex. 2001 ¶ 95). Patent Owner asserts that Easterly discloses in paragraph 24 “that the customer’s the customer, but there is no disclosure that location plays any role at all in selecting a debit network.” Id. at 16 (citing Ex. 2001 ¶ 70). According to Patent Owner, “[e]ven if Easterly discloses that different merchants can have different debit network preferences, there is no disclosure that such a preference is based on the location where the payment is initiated, and certainly no disclosure that any selection is based on location.” Id. (citing Ex. 2001 ¶ 70). We agree with Patent Owner that Easterly does not teach or suggest selecting a debit network based on a merchant’s location or otherwise based on a location where a payment is initiated. See Prelim. Resp. 16. On this record, we are not persuaded by Petitioner’s contentions that Easterly teaches or suggests selecting a debit network based on a location at which the payment is initiated based on Easterly’s disclosure of considering merchant’s preferences in selecting a debit network, and due to the fact that different merchants may be located in different locations. For example, Petitioner does not direct us to, nor can we find, a disclosure in Easterly that a merchant’s preferences will reflect a preference based on the location of the merchant. Accordingly, for purposes of institution and based on the record before us, Petitioner does not establish sufficiently that the subject matter of dependent claims 4, 11, and 18 would have been obvious over the combination of Easterly and Luz.” slip op. at 27
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,189,785 - ADT LLC v. Vivint, Inc.InstitutedPTAB · Feb 15, 2022 · IPR2021-01374 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted review of claims 1–3 and 6–11 on anticipation by Oh and obviousness over Oh, and claims 4, 5, and 12–17 as obvious over Oh, Forbes, and TS23.141.
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 it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art would have had a bachelor’s degree in computer science, electrical engineering, or computer engineering (or equivalent experience) and two years of experience in monitoring or telecommunications systems. Pet. 6 (citing Ex. 1017 ¶ 25). Patent Owner did not file a preliminary response and, therefore, does not dispute Petitioner’s proposal at this stage of the proceeding. We determine, on the current record, that the level of ordinary skill proposed by Petitioner is consistent with the ’739 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt that level in deciding whether to institute trial.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner proposes constructions for “presentity,” “personal presentity,” “watcher,” and “aggregate presence service.” Pet. 7–10. In particular, Petitioner contends, a person of ordinary skill in the art “would have understood ‘presentity’ to mean an entity that has presence information associated with it, such as information regarding whether a visitor is present at a resident’s door,” and “would have understood ‘personal presentity’ to mean a presentity that is associated with the presence of a person (e.g., a human visitor).” Id. at 7–8 (citing Ex. 1017 ¶¶ 59–63). Petitioner also contends a person of ordinary skill in the art “would have understood ‘watcher’ to mean an entity (person or otherwise) that requests and/or receives presence information regarding a presentity.” Id. at 8–9 (citing Ex. 1017 ¶¶ 64–67). Petitioner further contends a person of ordinary skill in the art “would have understood ‘aggregate presence service’ to mean a service that receives, stores and provides presence-related information.” Id. at 9–10 (citing Ex. 1017 ¶¶ 68–71). Patent Owner did not file a preliminary response and, therefore, does not challenge Petitioner’s proposed constructions at this stage of the proceeding. We determine we need not explicitly construe any claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As discussed above (supra Section III.E.1.c, III.E.1.e), we determine that, for the purposes of institution, Oh teaches or suggests “determining a current location of the watcher” and “storing data related to a current location of the watcher,” as recited in claim 1, and the related limitation in claim 8. We question, however, whether the evidence presented as to these limitations supports Petitioner’s assertion of anticipation of claims 1 and 8. See Net MoneyIN, 545 F.3d at 1369–71. For example, Petitioner’s anticipation ground turns on the construction of “current location,” which has not been fully developed on the current record. Petitioner relies on the IP address of Oh’s wireless communication terminal as being indicative of the physical location of the watcher/user. See Pet. 18–20, 25. Alternatively, Petitioner contends that a person of skill in the art would have recognized that Oh’s home gateway could readily have been modified to store GPS location data associated with the wireless terminal. Id. at 19 (citing Ex. 1017 ¶ 106). We are therefore not persuaded, on the current record, that Oh expressly or inherently discloses the claim limitations related to the watcher/user’s current location and location information. Accordingly, at this stage of the proceeding and without prejudging our ultimate determination with respect to this ground at the conclusion of this proceeding, we determine that Petitioner has not shown a reasonable likelihood of prevailing in establishing that Oh anticipates independent claims 1 and 8, and dependent claims 2, 3, 6, 7, and 9–11 of the ’739 patent.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,956,739 - PTAB · Jan 21, 2022 · IPR2021-01249 · APJ Christopher L Ogden · IPR · Institution
Instituted review of claims 1, 6, 11, 16, 19, 24, 26, 27, and 30 on all petitioned grounds; the Board found a reasonable likelihood of success on the Dimov–Kovac and Park–Kovac obviousness grounds.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Under the circumstances, we disagree with Patent Owner that the Petition is deficient under § 42.104(b)(3) because of how Petitioner addresses claim construction. Petitioner’s main argument is that we do not even need to construe “chamber” or “retaining position” explicitly in this proceeding. See Pet. 9, 12. We agree that neither term needs an explicit construction, at least for our decision to institute trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))). That Petitioner alternatively offers two explicit constructions with which it does not agree—and which are, effectively, irrelevant at this stage because we do not need to construe these terms—does not render the Petition insufficient. We do not discern any substantial ambiguity or lack of clarity in how Petitioner applies the terms “chamber” and “retaining position” to the asserted prior art. To the extent that it may become necessary to construe any terms explicitly at trial, we will consider evidence on both sides, and as usual, Petitioner will have the burden of persuasion. 35 U.S.C. § 316(e).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Meinhart’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering, chemical engineering, biomedical engineering, molecular biology, (bio)chemistry, or an equivalent degree relevant to microfluidic biological cell analysis, and three to five years of experience with the construction of and application of microfluidic devices to cell culture and analysis.” Pet. 8–9 (citing Ex. 1002 ¶ 40). Patent Owner does not dispute this proposed level of ordinary skill in its Preliminary Response. See Prelim. Resp. 7. Because it is supported by testimonial evidence and appears reasonable at this stage in light of the subject matter of the ’408 patent, we adopt Petitioner’s proposed level of ordinary skill in the art for this decision. If Patent Owner proposes a different articulation at trial, we will consider any evidence that Patent Owner submits, in light of the full trial record.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“To establish anticipation, a petitioner must find each and every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Further, an anticipating prior art reference must be enabling and must describe the “claimed invention sufficiently to have placed it in possession of a person of ordinary skill in the field of the invention.” See Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000). We do, however, consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)). Based on these principles, we agree with Patent Owner that Petitioner has not identified within the four corners of Dimov a sufficient disclosure of selectively recovering a cell based on the response in the monitoring step. Although Dimov discloses non-selective recovery, and although Petitioner has identified techniques that might theoretically be used for selective recovery, Dimov itself does not appear, based on the preliminary record, to disclose selective recovery based on a prior monitoring step. We also agree with Patent Owner that Petitioner’s reliance on Kennametal is misplaced. “Kennametal does not permit the Board to fill in missing limitations simply because a skilled artisan would immediately envision them.” Nidec II, 851 F.3d at 1274–75. Thus, on the present record, Petitioner has not shown sufficiently that Dimov anticipates claim 1.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). For a combination of known elements that are not explicitly found together in the prior art, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). A successful petition must “articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR, 550 U.S. at 418); see also 35 U.S.C. § 322(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4) (2020). We base our obviousness inquiry on factual considerations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) any objective indicia of obviousness or non-obviousness that may be in evidence.9 See Graham, 383 U.S. at 17–18. Based on these factors, we conclude that Petitioner has not made a sufficient showing that claim 1 would have been obvious over Dimov. Petitioner’s proposed modification of Dimov, though remarkably similar to the process of aspirating cells disclosed in the ’408 patent, does not seem to appear expressly in Dimov (see supra part II.B), nor has Petitioner demonstrated persuasively that one of ordinary skill in the art would have been motivated to make the proposed modification with a reasonable 9 At this stage, the parties do not identify any objective indicia of obviousness or non-obviousness, so this does not factor into our decision to institute an inter partes review. expectation of success based on Dimov alone. Thus, on the present record, Petitioner has not shown sufficiently that claim 1 would have been obvious over Dimov without combination with another prior art reference.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,087,408 - PTAB · Mar 4, 2016 · IPR2015-01417 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing, finding the petition did not show a reasonable likelihood of prevailing on the anticipation challenge to claim 4 because its mapping was inadequately explained.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing, we review the Decision Granting Institution for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision Granting Institution should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable
“with respect to the anticipation ground,] Takizawa discloses semiconductor material being disposed at the drain bus line/gate bus line overlap, in addition to other regions in the thin film transistor matrix device. Petition (“Pet.”) at 19–26; Ex. 1012 at ¶¶ 55, 61.” Reh’g Req. 4. We disagree because such evidence was not explained adequately in the Petition. The Petition states, without further explanation, that “Takizawa also teaches formation of semiconductor layers at the crossover location. Ex. 1012, ¶ 61.” Pet. 21–22. Nevertheless, the Petition contains no further explanation supporting that statement. Id. The Petition merely cites the Chiang declaration and does not explain sufficiently the significance of the cited testimony. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Takizawa would anticipate the limitation to operative semiconductor formed where said gate bus line overlaps said drain bus line in the Petition itself, the citations to the Chiang Declaration amount to incorporation by reference of arguments made in that declaration that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). Thus, we did not overlook or misapprehend Petitioner’s arguments or evidence in the Petition. Thus, we are not persuaded by this argument.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“with respect to the anticipation ground,] Takizawa discloses semiconductor material being disposed at the drain bus line/gate bus line overlap, in addition to other regions in the thin film transistor matrix device. Petition (“Pet.”) at 19–26; Ex. 1012 at ¶¶ 55, 61.” Reh’g Req. 4. We disagree because such evidence was not explained adequately in the Petition. The Petition states, without further explanation, that “Takizawa also teaches formation of semiconductor layers at the crossover location. Ex. 1012, ¶ 61.” Pet. 21–22. Nevertheless, the Petition contains no further explanation supporting that statement. Id. The Petition merely cites the Chiang declaration and does not explain sufficiently the significance of the cited testimony. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Takizawa would anticipate the limitation to operative semiconductor formed where said gate bus line overlaps said drain bus line in the Petition itself, the citations to the Chiang Declaration amount to incorporation by reference of arguments made in that declaration that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). Thus, we did not overlook or misapprehend Petitioner’s arguments or evidence in the Petition. Thus, we are not persuaded by this argument.” slip op. at 3
- BurdenDecided for patent owner
“teaches formation of semiconductor layers at the crossover location. Ex. 1012, ¶ 61.” Pet. 21–22. Nevertheless, the Petition contains no further explanation supporting that statement. Id. The Petition merely cites the Chiang declaration and does not explain sufficiently the significance of the cited testimony. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Takizawa would anticipate the limitation to operative semiconductor formed where said gate bus line overlaps said drain bus line in the Petition itself, the citations to the Chiang Declaration amount to incorporation by reference of arguments made in that declaration that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). Thus, we did not overlook or misapprehend Petitioner’s arguments or evidence in the Petition. Thus, we are not persuaded by this argument.” slip op. at 3
§ 102 anticipationPatents in suitUS 5,966,589
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.