- PTAB · Aug 14, 2023 · IPR2023-00818 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR of claims 1–19 on all petitioned grounds and granted AT&T’s motion to join the Ericsson IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. SoftView, LLC, IPR2013- 00004, Paper 15 at 4 (PTAB Apr. 24, 2013). We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition (1) is substantially identical to the Ericsson petition, (2) contains the same grounds based on the same evidence, and (3) relies on the same declaration of Henry Houh, Ph.D. (Ex. 1012). Mot. 1, 4–5. Petitioner represents that joinder will not impact the Ericsson IPR schedule. Id. at 5 (listing reasons as to why “joinder will not impact any schedule that may issue or otherwise prejudice the Patent Owner.”). Petitioner also represents that it “will maintain only an ‘understudy’ role in the proceeding, if joined.” Id. at 6.” slip op. at 8
NonePatents in suitUS 10,334,499 - PTAB · Jul 21, 2023 · IPR2023-00466 · APJ Sharon Fenick · IPR · Institution
The Board instituted review of claims 7–9, 11, 15, 17, 18, 20, and 21 on all asserted grounds, finding a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [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.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) would have had a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in wireless communications networks and engineering, including some knowledge of or experience with distributed antenna systems. An individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1-2 years). Pet. 19 (citing Ex. 1003 (Declaration of Dr. Anthony Acampora) ¶ 24). Patent Owner proposes substantially the same level of skill, but does not require the industry experience in wireless communications networks and engineering to include “some knowledge of or experience with [distributed antenna systems].” Prelim. Resp. 8–9 (citing Ex. 2001 (Declaration of Dr. Daniel Foty) ¶ 13); Ex. 1025, 9–10). For purposes of this Decision, we apply Petitioner’s definition of the level of ordinary skill in the art. Our decision would not be different if we adopted Patent Owner’s proposed level of skill.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“On the present record and for the purpose of this Decision, we agree with Petitioner that the proper construction of “communications unit” encompasses multiple DRUs or antenna units. Although Patent Owner is correct that not every embodiment needs to be reflected in every claim, and indeed, some embodiments may not appear in any claim, we do not agree that there is evidence supporting Patent Owner’s argument that the construction of “communications unit” should be narrowed to the embodiment requiring only one DRU/antenna. The cited claims do not indicate that multiple units may not transmit at the sets of frequencies recited. Additionally, although Patent Owner cites claim 16 as requiring that each communications unit is a single DRU, if that were a correct reading of claim 16, it is not clear what the claim recitation would add, as it would not narrow the prior recitation of a “communications unit” from claim 15. Such interpretations are disfavored. See Cat Tech LLC v. TubeMaster, Inc., 528 F.3d 871, 885 (Fed. Cir. 2008) (refusing to adopt a claim construction that would render a claim limitation meaningless); Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (explaining that “claims are interpreted claim 16 uses the inclusive “comprises” in its recitations, which is an open-ended term and does not exclude the possibility of other DRUs in a communication unit. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.”).” slip op. at 14
- Prior constructionPrior construction adoptedDecided for petitioner
“Additionally, with respect to claim 20, Petitioner argues that “the first frequency band” and “the second frequency band” recited in claim 20 lack antecedent bases and are indefinite. Pet. 42, 64. This issue was addressed in the Eastern District of Texas cases claim construction order that construed “the first frequency band and the second frequency band” as “the first frequency range and the second frequency range.” Ex. 1037, 19–20. For the purposes of this Decision, we agree with and adopt the reasoning and this determination is preliminary and for the purposes of this Decision; the parties may address it further in future briefing in accordance with our rules.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,197,358 - PTAB · Jun 30, 2023 · IPR2023-00646 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 1–12 over all petition grounds and granted AT&T’s motion to join IPR2022-01212, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). Under 35 U.S.C. § 314(a), an inter partes review may not be authorized unless the information in the Petition and any 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.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’338 patent on all grounds of unpatentability presented. We also grant Petitioner’s Motion.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. SoftView, LLC, IPR2013- 00004, Paper 15 at 4 (PTAB Apr. 24, 2013). We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition (1) is substantially identical to the Ericsson petition, (2) contains the same grounds based on the same evidence, and (3) relies on the same declaration of Henry Houh, Ph.D. (Ex. 1003). Mot. 1, 4–5. Petitioner also represents that joinder will not impact the Ericsson IPR schedule. See, e.g., Mot. 6 (“[A]llowing [Petitioner] to assume an understudy role to Ericsson, will also have little, if any, impact on the Ericsson IPR because no new grounds will be added, the schedule will not be affected, no additional briefing or discovery will be required, and no additional burdens will be placed on Patent Owner.”).” slip op. at 10
NonePatents in suitUS 8,682,338 - Intuit Inc. v. Samesurf, Inc.InstitutedPTAB · Jun 28, 2023 · IPR2023-00342 · APJ Phillip A Bennett · IPR · Institution
The Board instituted IPR of claims 1–18 on all asserted grounds, finding a reasonable likelihood that claims 1 and 10 would be obvious over Lebrun and Wang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Expert testimonyDecided for patent owner
“To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). Patent Owner is correct that Dr. Lieberman’s CV on its face does not include two years in a position titled as software developer, web-based developer, or the like. See generally Ex. 1004. Dr. Lieberman, however, has a degree in “Informatique” from the University of Paris VI (Sorbonne), as Patent Owner acknowledges (Prelim. Resp. 34), and this degree is in addition to Dr. Lieberman’s Bachelor of Science degree from the Massachusetts Institute of Technology (MIT). Ex. 1004, 12–13. This University of Paris VI (Sorbonne) degree is additional education beyond the required bachelor’s degree and could have substituted for some amount of professional experience, as we note in our determination of the level of ordinary skill for this institution decision in Section II.A. slip op. at 42
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“creation message to the group-surfing server 140 to create a group-surfing session (Ex. 1005, 32:9–11), a second web client 110 can “add itself to the session” by sending “a session-join message 151 to the group surfing server 140” (id. at 33:2–3). The session creation message sent by second web client, which corresponds to the recited guest device, is sufficient to teach or suggest detecting an activation associated with the synchronized browsing session at this preliminary juncture. Lebrun differs from the detecting limitation in that it does not expressly describe that the session creation message is sent by activating a hyperlink. However, Wang’s description of a second client device joining a group session via the myURL address is sufficient at this preliminary stage to address the deficiency in Lebrun. On this preliminary record, Petitioner’s showing of a rationale to combine Lebrun and Wang is also sufficient for purposes of institution. Specifically, the proffered reasoning that utilizing Wang’s designated URL address to activate a session join invitation would enable Lebrun’s group-surfing server to coordinate and manage the group-surfing session and further Lebrun’s goal of providing improved group access to web sites (see Pet. 25), is sufficient at this early stage. Patent Owner does not address Petitioner’s showing as to this limitation. See generally Prelim. Resp.” slip op. at 18
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,527,591 - Intuit Inc. v. Samesurf, Inc.InstitutedPTAB · Jun 28, 2023 · IPR2023-00341 · APJ Barbara A Benoit · IPR · Institution
Instituted IPR of claims 1–16 on all asserted grounds after finding a reasonable likelihood that Lebrun and Wang render at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard employed in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2020). Under the principles set forth by our reviewing court, the “words of a claim ‘are generally given their ordinary and customary meaning,’” as would have been understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither Petitioner nor Patent Owner propose express constructions for any claim terms. Pet. 12; Prelim. Resp. 34. For purposes of this decision, we agree that no claim terms need be expressly construed. Patent Owner arguments regarding the asserted grounds of unpatentability, however, raise particular claim scope contentions, particularly regarding “information related to the shared web browsing interaction” recited in each of the independent claims. We preliminarily address issues of claim scope in our later discussion of the asserted grounds of unpatentability.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Accordingly, based on this preliminary record, we find Patent Owner’s assessment of “internet web browsing software development, web connectivity software development, or networking software development” to be too narrow in view of the asserted prior art that describes in large measure requesting and receiving web pages from web servers. Thus, we find that Petitioner’s assessment of “software development and/or web- based software” more appropriate for purposes of institution on this limited record. We also agree with Petitioner that additional education could have substituted for professional experience, and significant work experience could have substituted for formal education. For the purpose of this decision, for these reasons, we find that a person of ordinary skill in the art would have had (1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar field, and (2) at least two years of work experience in software development and/or web-based software. We apply that level of ordinary skill in this decision. Our decision, however, would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Accordingly, there is evidence to consider in making a determination whether Dr. Lieberman possesses the requisite ordinary level of skill. We, however, need not make such a determination for purposes of this decision because it has not been necessary for us to rely on Dr. Lieberman’s declaration in this decision. “No rule requires a Petition to be accompanied by any declaration, let alone one from an expert guiding the Board as to how it should read prior art.” Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1079 (Fed. Cir. 2015). “[E]xpert testimony is not required when the references and the invention are easily understandable.” Id. (quoting Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010)). “Board members, because of expertise, may more often find it easier to understand and soundly explain the teachings and suggestions of prior art without expert assistance.” Id. Here, the invention and prior art are presented in high-level functional terms and are easily understandable, as we indicated previously in Section II.A and as shown by our discussion of the invention and prior art throughout this decision. To determine that the Petition met the institution threshold of showing “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition,” we have not relied on Dr. Lieberman’s declaration testimony. Patent Owner, of course, may raise the issue of Dr. Lieberman’s qualifications during trial.” slip op. at 58
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,483,448 - Intuit Inc. v. Samesurf, Inc.InstitutedPTAB · Jun 28, 2023 · IPR2023-00339 · APJ Barbara A Benoit · IPR · Institution
Instituted review of claims 1–18 on all asserted grounds because the petition showed a reasonable likelihood that at least one challenged claim was obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Accordingly, based on this preliminary record, we find Patent Owner’s assessment of “internet web browsing software development, web connectivity software development, or networking software development” to be overly narrow in view of the asserted prior art that describes in large measure requesting and receiving web pages from web servers. Thus, we find that Petitioner’s assessment of “software development and/or web-based software” more appropriate for purposes of institution on this limited record. We also agree with Petitioner that additional education could have substituted for professional experience, and significant work experience could have substituted for formal education. For the purpose of this decision, for these reasons, we find that a person of ordinary skill in the art would have had (1) at least a bachelor’s a similar field, and (2) at least two years of work experience in software development and/or web-based software. We apply that level of ordinary skill in this decision. Our decision, however, would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 11
- Expert testimonyDecided for petitioner
“Accordingly, there is evidence to consider in making a determination whether Dr. Lieberman possesses the requisite ordinary level of skill. We, however, need not make such a determination for purposes of this decision because it has not been necessary for us to rely on Dr. Lieberman’s declaration in this decision. “No rule requires a Petition to be accompanied by any declaration, let alone one from an expert guiding the Board as to how it should read prior art.” Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1079 (Fed. Cir. 2015). “[E]xpert testimony is not required when the references and the invention are easily understandable.” Id. (quoting Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010)). “Board members, because of expertise, may suggestions of prior art without expert assistance.” Id. Here, the invention and prior art are presented in high-level functional terms and are easily understandable, as we indicated previously in Section II.A and as shown by our discussion of the invention and prior art throughout this decision. To determine that the Petition met the institution threshold of showing “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition,” we have not relied on Dr. Lieberman’s declaration testimony. Patent Owner, of course, may raise the issue of Dr. Lieberman’s qualifications during trial.” slip op. at 46
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner propose express constructions for any claim terms. Pet. 12; Prelim. Resp. 32. For purposes of this decision, we agree that no claim terms need be expressly construed. Patent Owner particular claim scope contentions regarding “web browsing interaction data” recited in each of the independent claims. We preliminarily address those issues of claim scope in our later discussion of the asserted grounds of unpatentability.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,185,145 - PTAB · Jun 28, 2023 · IPR2023-00326 · APJ Jane E Inglese · IPR · Institution
The Board instituted inter partes review of claims 1–16 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Considering the totality of the information presented in the record before us, we conclude that the Petitioner has shown a reasonable likelihood of prevailing in its challenge to the patentability of claim 12.” slip op. at 31
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Considering the totality of the information on the record before us, we determine that Deane, Dubois, and Hill previously were presented to the Examiner during prosecution, and Berntson is cumulative to Cole, which previously was presented to the Examiner during prosecution. 2. Advanced Bionics Part 2: Becton, Dickinson factors (c), (e), and (f) Having determined that the same or substantially the same art previously was presented to the Office, we turn to the second part of the Advanced Bionics framework and consider Becton, Dickinson factors (c), (e), and (f) to determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, IPR2019-01469, Paper 6 at 7–8, 10.” slip op. at 40
- Skill levelSkill level board ownOther
“The Petitioner proposes that a person of ordinary skill in the art “would have had at least a bachelor’s degree, or the equivalent degree, in mechanical engineering, chemical engineering, or a related field, and 2–3 years of experience in the research, design, or development of portable oxygen concentrators and related hardware, software, and firmware, or equivalent experience.” Pet. 21 (citing Ex. 1003 ¶¶ 226–229). The Petitioner further proposes that “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Id. At this stage of the proceeding, the Patent Owner does not dispute the Petitioner’s proposed definition of a person of ordinary skill in the art. Prelim. Resp. 14. We find, at this stage, that the asserted prior art itself is sufficient to demonstrate the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply the Petitioner’s unopposed definition for purposes of determining whether to institute review, because it is consistent, on this record, with the disclosures of the asserted prior art references.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Petitioner presents express constructions for three claim terms: “separation cartridge,” “receptacle,” and “selectively removable.” Pet. 21– 26. Although the Patent Owner contests the Petitioner’s proposed constructions of these terms, the Patent Owner proposes an alternative construction of only the term “separation cartridge.” Prelim. Resp. 14–23, particularly 20. Nonetheless, the Patent Owner further indicates that construction of “separation cartridge,” “receptacle,” and “selectively removable” is not needed at this stage because the Petitioner’s proposed constructions are “not related to any controversy in this IPR proceeding.” Prelim. Resp. 14–23, particularly 16. Taking into consideration the information presented, we determine that none of the claim terms requires express construction for purposes of deciding whether to institute review.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,389,614 - LG Electronics Inc. / LG Electronics USA, Inc. v. Image Processing Technologies, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00104 · APJ Barbara A Benoit · IPR · Institution
The Board denied institution on claim 1, finding the petition presented the same or substantially the same art or arguments previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“under 35 U.S.C. § 325(d) to deny institution of an inter partes review. See 37 C.F.R. § 42.4(a) (The Director delegated her authority to determine whether trial should be instituted to the Board.). Section 325(d) of Title 35 of the United States Code states, in relevant part: “In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We use a two-part framework for evaluating arguments under § 325(d): (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.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“applied the construction of “the [at least two] calculation units being configured to form a histogram representative of the parameter” (the “common parameter” limitation) as meaning “the histogram calculation units being configured to each form a histogram representative of at least one common parameter.” Ex. 1005 (IPR 336 Final Written Decision), 12– 14; see Ex. 1006 (IPR 1189 Decision Denying Institution), 9; Ex. 1007 (Reexam 056 Decision finding claim 1 patentable), 8.” slip op. at 11
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 6,959,293 - PTAB · Apr 13, 2023 · IPR2022-01577 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–10 on all petitioned grounds, finding a reasonable likelihood that claim 1 was anticipated by the HDI 3000 Manual.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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.” For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’157 patent is unpatentable, we institute an inter partes review of all challenged claims based on all grounds raised in the Petition. 37 C.F.R. § 42.08(a).” slip op. at 2
- 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: would have a degree in electrical engineering, biomedical engineering, or a related discipline, along with relevant experience (at least 2–3 years for a Ph.D., 3–5 years for a Master’s, and 5+ years for a Bachelor’s) researching or developing ultrasound systems or other medical imaging devices. EX1008, ¶¶21–26. The POSA would have general knowledge of ultrasound systems and related technologies as of January 15, 2001. Id. Pet. 7–8. Patent Owner applies Petitioner’s definition for purposes of its Preliminary Response. Prelim. Resp. 5. We adopt the parties’ accepted definition for purposes of this Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In this case, Patent Owner’s assertion that its proposed construction is “consistent with the specification” fails to articulate or apply the proper standard. For example, any interpretation whose scope is equal to or narrower than a proper construction would logically be consistent with that proper construction. Thus, Patent Owner could only establish that its proposed interpretation is equal to or narrower in scope than the proper interpretation. Comparing the claims to prior art using a claim construction potentially narrower than what is claimed would not be a fruitful exercise because the claim could read on the prior art but not on the unduly narrow interpretation. Cf. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001) (holding that a broad claim is anticipated by any narrow disclosure falling within the broad claim). Patent Owner’s assertion that its proposed construction is consistent with examples in the specification is also not persuasive, and no more persuasive than its prior implication that its proposed construction is not inconsistent with the specification. i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 843–44 (Fed. Cir. 2010) (“[A] claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a clear intention to limit the claim’s scope with words or expressions of manifest exclusion or restriction.” (internal quotation omitted)). Similar to the situation in i4i, Patent Owner here has failed to explain how the claim is clearly limited to the examples in the specification. Instead, we construe “information of object” to be an identification of the object to be studied in the ultrasound examination, based on its plain language in the context of the claimed ultrasound device. We are not apprised of any language, on this record, in the ’157 patent or prosecution history that otherwise constrains what types of “object” would be inspected by the claimed device. For example, there is no indication that the machine is less capable than other ultrasound machines in a way that limits its use to examinations of certain things in a body such as a liver or a heart, but not simpler things in a body such as blood vessels or more complex things such as a fetus. Accordingly, we see no reason to constrain “object” to something other than those things in a body that a person of ordinary skill in the art would investigate during an ultrasound examination.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“It does not appear necessary at this time to specifically construe any other claim terms. 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 9
Claim construction§ 102 anticipationcites Phillips · KSRPatents in suitUS 6,901,157 - PTAB · Apr 13, 2023 · IPR2022-01576 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–3 on all petitioned grounds, finding a reasonable likelihood that claim 1 is unpatentable over Petruzzelli.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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.” For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’985 patent is unpatentable, we institute an inter partes review of all challenged claims based on all grounds raised in the Petition. 37 C.F.R. § 42.08(a).” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have a degree in electrical engineering, computer science, or a related discipline, along with relevant experience (at least 1– 2 years for a Ph.D., 2–3 years for a Master’s, and 3+ years for a Bachelor’s) researching or developing graphical user interfaces (GUIs) for ultrasound systems or other medical imaging devices. EX1007, ¶¶14–19. The person would have general knowledge of GUIs for ultrasound systems or other medical imaging devices as of April 18, 2014. Id.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Petitioner asserts that no claim terms require construction at this stage. Pet. 15. Patent Owner does not offer any claim constructions, but does challenge Petitioner’s choice not to offer any claim constructions, and suggests that we should deny the Petition on that basis. Prelim. Resp. 75– 77. We find Patent Owner’s arguments unavailing. First, we note that the parties have not offered competing claim constructions, such that there is no specific claim construction issue between the parties at this time. Second, we note that we consider Petitioner’s interpretation of the claims sufficiently clear based on their application of the claims on the art. Thus, we are able to proceed without explicitly construing any claim terms, and we are not persuaded to deny on that basis. In view of the above, we do not construe any claim terms. 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 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To establish anticipation, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,538,985
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.