• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentable
  PTAB · Oct 16, 2024 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, and 8 were not proven unpatentable: Rauhala does not disclose the required simultaneous signal-strength determinations, and Masaaki does not cure the deficiency for claim 4.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Following institution, Patent Owner maintained the same level of ordinary skill proposed in its preliminary response and did not address our discussion of the level of ordinary skill in the art in the Institution Decision. PO Resp. 24–25; see also Prelim. Resp. 24. For the reasons discussed in the Institution Decision, we adopt and apply for this Decision the level of ordinary skill articulated by Petitioner and used previously in our Institution Decision. See Dec. 8–10. In light of our review of the complete record, we find that this formulation is consistent with the ’825 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Ex. 1002 ¶¶ 27– 31. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner that the desired signal and interferer signal must be received at the same time. The plain language of the claim requires the wireless transceiver to “receiv[e] a wireless signal having a desired signal and an interferer signal,” the determining of a signal strength of the interferer signal and the determining of a signal strength of the desired signal must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. The specification supports this understanding. “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:20–22; see also id. at 5:31–33 (“FIGS. 2A and 2B illustrate examples of desired signals, interferers, and noise that may be received by one of the various circuits in a” slip op. at 21

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Rauhala does not state that the signal strengths are measured simultaneously or at the same time. Indeed, as discussed above, Rauhala indicates unequivocally in the same paragraph the opposite—that detector DET provides to control unit 42 “an indication about either the receive channel signal strength RSS or the strength of any signal on the reception band.” Ex. 1004 ¶ 17. Rauhala describes that “control unit 42 provides two one-bit control signals cA and cM” based on indications received from detector DET. Id. Importantly, Rauhala indicates that “at the same time as” describes how the control unit 42 uses the received inputs RSS and RSSn shown in Figure 4, which are described earlier in paragraph 17 as indications of either RSS or RSSn from detector DET. Id. (“Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the 11 Dr. Baker’s reply declaration correctly quotes Rauhala paragraph 17 but cites to paragraph 18. We deem this harmless error. same time smaller than Sn. . . . Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Otherwise, signal cM is 0.”). The burden remains on Petitioner to demonstrate by a preponderance of the evidence that Rauhala discloses the disputed limitations as arranged or combined in the claim. Petitioner does not persuasively reconcile these “either/or” statements regarding the functioning of detector DET with the “at the same time as” statements regarding control signals output by control unit 42 in paragraph 17. We do not find persuasive Petitioner counsel’s position expressed at the hearing that Rauhala’s “either/or” statements are “simply an imprecise description” (Tr. 16:22–24). We do not see a lack of precision in Rauhala’s “either/or” statements.” slip op. at 30

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “When asked at his deposition to explain Rauhala’s use of the word “or” regarding the functioning of detector DET, Dr. Baker asserted that “[detectors] can be designed to determine RSS or RSSn.” Ex. 2016, 85:5– 12. We find Dr. Baker’s testimony that “it’s reasonable that if you can design . . . the detector to detect one or the other, you can also design it to detect both” to be without factual support. Id. at 85:13–16. He points to no textbook or other independent evidence to support that would have led one of ordinary skill to design such a detector or to support that one of ordinary skill would have understood Rauhala’s detector to be so designed. Furthermore, Dr. Baker recognizes that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. We give little weight to Dr. Baker’s unsupported testimony that one could design a detector to detect both RSS and RSSn from the same wireless signal. See 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., No. IPR2022-00624, 2022 WL 3648989, at *6 (PTAB 2022) (precedential) (Director affirming because “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight”).” slip op. at 31

  Patent outcomesUS 10,129,825 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,129,825
• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentable
  PTAB · Oct 16, 2024 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 7–11, 13, and 19–21 were not shown unpatentable because Rauhala does not disclose simultaneous desired and interferer signal-strength determinations, defeating anticipation and the obviousness combination.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we were persuaded, on the preliminary record, that both Petitioner’s and Patent Owner’s proposals were consistent with the problems and solutions in the ’202 patent and the prior art of record, on balance, we determined that Petitioner’s proposal was a better reflection of the level of skill in the prior art, and we therefore adopted it for our Institution Decision. See Institution Dec. 12–13. For this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used previously in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’202 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Baker I Decl. ¶¶ 28–32. Our Decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “85:13–16. He admits that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. He points to no textbook or other independent evidence that would have led a person of ordinary skill to design such a detector. Our Trial Practice Guide cautions against crediting such unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Patent Trial and Appeal Board Consolidated Trial Practice Guide 35 (Nov. 2019).7 We therefore give Dr, Baker’s unsupported testimony on this issue little weight.” slip op. at 24

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe these terms to resolve a dispute.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “requirement.” Pet. Reply 5. We do not agree with Petitioner. We find that the language of the claims supports Patent Owner’s argument that the desired signal and the interferer signal are received together. As discussed infra, claim limitations 7.7 and 7.8 recite determining a signal strength of the interferer signal and determining a signal strength of the desired signal. These determinations must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. See Larson II Decl. ¶ 70; Baker II Decl. ¶¶ 48–49 (explaining that consideration of signal strengths detected at the same time would be “essential”). The specification of the ’202 patent further supports this finding: “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:22–24; see also Figs. 2A, 2B (showing interferer signals and desired signals together).” slip op. at 17

  Patent outcomesUS 10,524,202 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 10,524,202
• Tiktok Inc. v. Cellspin Soft, Inc.Instituted
  PTAB · Oct 1, 2024 · IPR2024-00767 · APJ Cynthia M Hardman · IPR · Institution

  The Board instituted inter partes review of claims 1–16 on all asserted grounds, finding a reasonable likelihood that the claims are obvious over either asserted combination.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. See 10 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). 11 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (Dec. 1, 2020) (“Sotera”). Ex. 1034 (Guidance) 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 11

  • Other 314aDecided for petitioner

    “Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 14

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “On this record, we find that Petitioner has adequately demonstrated that the Examiner erred in a manner material to patentability. This follows from our finding that on the current record, Petitioner has shown a reasonable likelihood that the challenged claims are not entitled to a priority date earlier than December 4, 2021 and would have been obvious over Singh129 and Singh906. See infra Section III.F. We find Patent Owner’s assertion that the Examiner understood that “[a]dding the Bluetooth feature to the existing mobile application is the reason for [the] ‘incorporated reference’ in Cellspin’s disclosure” is not supported on this record, including because Patent Owner does not cite any portion of the prosecution history that reflects this alleged understanding. Prelim. Resp. 21. For the above reasons, we decline to exercise our discretion to deny inter partes review under § 325(d).” slip op. at 17

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “3. Conclusion – Ground 1 After considering the arguments and cited evidence of record, we determine that for purposes of institution, Petitioner sufficiently shows that the combination of Hiroishi, Kahn, and Bluetooth teaches or suggests each limitation of claims 1–16, and that a person of ordinary skill in the art would have had a reason to combine the teachings of these references with a reasonable expectation of success. See, e.g., Pet. 16–60. Accordingly, on this record, Petitioner shows a reasonable likelihood of prevailing on Ground 1, and on this basis, we institute an inter partes review of all challenged claims. See 37 C.F.R. § 42.208(a).” slip op. at 49

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,659,381
• Tiktok Inc. v. Cellspin Soft, Inc.Instituted
  PTAB · Oct 1, 2024 · IPR2024-00768 · APJ Cynthia M Hardman · IPR · Institution

  The Board instituted IPR on claims 1–10 because Petitioner showed a reasonable likelihood of prevailing on both obviousness grounds: Hiroishi, Kahn, Endsley, and Bluetooth; and Singh129 with Singh906.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has 9 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). 10 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (Dec. 1, 2020) (“Sotera”). issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. See Ex. 1034 (Guidance) 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 10

  • Other 314aDenied

    “Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 13

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “On this record, we find that Petitioner has adequately demonstrated that the Examiner erred in a manner material to patentability. This follows from our finding that on the current record, Petitioner has shown a reasonable likelihood that the challenged claims are not entitled to a priority date earlier than August 6, 2019, and would have been obvious over Singh129 and Singh906. See infra Section III.F. We find Patent Owner’s assertion that the Examiner understood that “[a]dding the Bluetooth feature to the existing mobile application is the reason for [the] ‘incorporated reference’ in Cellspin’s disclosure” is not supported on this record, including because Patent Owner does not cite any portion of the prosecution history that reflects this alleged understanding. Prelim. Resp. 21. For the above reasons, we decline to exercise our discretion to deny inter partes review under § 325(d).” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time the invention was made. See Graham, 383 U.S. at 17–18. Petitioner contends that a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”) would have had: at least a bachelor’s degree in electrical engineering, computer engineering, or computer science, and two years of experience in the field consumer electronics, with exposure to digital camera technology and wireless communications. Superior education could compensate for a deficiency in work experience, and vice-versa. Pet. 6–7 (citations omitted) (citing Ex. 1030 (Lett Decl.) ¶¶ 94–95). Patent Owner does not provide an explicit definition of a POSITA. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,234,121
• Tiktok Inc. v. Cellspinsoft, Inc.Instituted
  PTAB · Sep 30, 2024 · IPR2024-00770 · APJ Michael A Valek · IPR · Institution

  The Board instituted IPR on claims 1, 2, 4–7, and 9–18 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has 8 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). 9 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (Dec. 1, 2020) (“Sotera”). issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1034, 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The analyze this issue under the following two-part framework set forth in Advanced Bionics: (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 [the] 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. Advanced Bionics, IPR2019-01469, Paper 6, 8.” slip op. at 10

  • Other 314aDenied

    “Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition, notwithstanding its merits, based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 12

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “iii. Conclusion – Grounds 1A–B After considering the arguments and cited evidence of record, we determine that for purposes of institution, Petitioner sufficiently shows that both the combination of Hiroishi, Takahashi and Bluetooth in Ground 1A and the combination of Hiroishi, Kahn, and Bluetooth in Ground 1B teach or suggest each limitation of claims 1, 2, 4–7 and 9–18,20 and that a person of ordinary skill in the art would have had a reason to combine the teachings of these references with a reasonable expectation of success. See, e.g., Pet. 11– 68. Accordingly, on this record, Petitioner shows a reasonable likelihood of prevailing on Grounds 1A–B, and on this basis, we institute an inter partes review of all challenged claims. See 37 C.F.R. § 42.208(a). 19 While the term “WMTP” appears in these figures, it does not seem to be defined or discussed elsewhere in Kahn. 20 At this stage, Patent Owner does not make any additional arguments against Petitioner’s showing for the dependent claims.” slip op. at 42

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,904,030
• Tiktok Inc. v. Cellspinsoft, Inc.Instituted
  PTAB · Sep 30, 2024 · IPR2024-00759 · APJ Michael A Valek · IPR · Institution

  The Board instituted IPR of claims 1–26 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1025, 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 8

  • Other 314aInstitution denied discretionary otherDenied

    “Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 10

  • Skill levelSkill level petitioner adoptedOther

    “B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art (“POSITA”) as of December 28, 2007 would have “had at least a Bachelor of Science in electrical engineering, computer engineering, computer science, or a related field, with at least two years of relevant work experience in wireless communications and/or networking systems, or equivalents thereof.” Pet. 3 (citing Ex. 1003 ¶ 21). Patent Owner does not dispute or otherwise respond to Petitioner’s description of a POSITA in its Preliminary Response. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “On the current record, Patent Owner’s claim construction arguments are unpersuasive for several reasons. First, in addition to reciting a “user identifier,” claim 1 separately recites “wherein said user identifier uniquely identifies a particular user of the web service.” Ex. 1001, 11:66–67. The fact that the surrounding claim language specifies that the “user identifier” must uniquely identify a user “strongly implies” that such a requirement is not required by the term itself. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (explaining that the context in which a claim term is used “can be highly instructive” and that the fact that “the claim in this case refers to ‘steel baffles’ . . . strongly implies that the term ‘baffles’ does not inherently mean objects made of steel”); Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012) (“the reference in some claims to a ‘registration server being further characterized in that it is free of content managed by the architecture’ strongly implies that the term ‘registration server,’ standing alone, does not inherently mean a server that is free of managed content”). Moreover, there is no need to construe “user identifier” to include a requirement that it identify uniquely a user of a web service, as in Patent Owner’s proposed construction, because that requirement is apparent from the surrounding claim language. Second, Patent Owner has not shown that the authentication requirement in its construction, i.e., that the user identifier be a “text string” that “contains sufficient information to authenticate a user of the web service,” is supported by the intrinsic record. Patent Owner’s authentication requirement is not apparent from the claim language, nor has Patent Owner attempted to show that a POSITA would have understood the ordinary meaning of “user identifier” to require such. The only intrinsic support Patent Owner cites are figures and related disclosure describing a preferred embodiment in the ’802 application.9 This disclosure uses different terms, e.g., “user preferences” and “login information,” which on this record Patent Owner has not sufficiently connected to the “user identifier” in claim 1. See Ex. 2009 ¶¶ 18, 23, 25–26. Even if that connection had been shown, the disclosure Patent Owner cites is permissive in nature, stating, e.g., that “user preferences may comprise authentication credentials,” and not that authentication credentials are required. Id. ¶ 23. Thus, on the current record, we decline Patent Owner’s invitation to import an authentication requirement into the claims through the construction of “user identifier.”” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,862,757
• Tiktok Inc. v. Cellspinsoft, Inc.Instituted
  PTAB · Sep 30, 2024 · IPR2024-00757 · APJ Michael A Valek · IPR · Institution

  The Board instituted IPR on claims 1–5 because the Petition showed a reasonable likelihood of prevailing on obviousness over Aaltonen and Drescher.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1025, 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 8

  • Other 314aInstitution denied discretionary otherDenied

    “Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art (“POSITA”) as of December 28, 2007 “would have had at least a Bachelor of Science in electrical engineering, computer engineering, computer science, or a related field, with at least two years of relevant work experience in wireless communications and/or networking systems, or equivalents thereof.” Pet. 3 (citing Ex. 1003 ¶ 21). Patent Owner does not dispute or otherwise respond to Petitioner’s description of a POSITA in its Preliminary Response. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “On the current record, Patent Owner’s claim construction arguments are unpersuasive for several reasons. First, in addition to reciting a “user identifier,” claim 1 separately recites “wherein each user identifier uniquely identifies a particular user of the web service.” Ex. 1001, 12:10–13. The fact that the surrounding claim language specifies that the “user identifier” must uniquely identify a user “strongly implies” that such a requirement is not required by the term itself. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (explaining that the context in which a claim term is used “can be highly instructive” and that the fact that “the claim in this case refers to ‘steel baffles’ . . . strongly implies that the term ‘baffles’ does not inherently mean objects made of steel”); Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012) (“the reference in some claims to a ‘registration server being further characterized in that it is free of content managed by the architecture’ strongly implies that the term ‘registration server,’ standing alone, does not inherently mean a server that is free of managed content”). Moreover, there is no need to construe “user identifier” to include a requirement that it identify a user of a web service, as in Patent Owner’s proposed construction, because that requirement is apparent from the surrounding claim language. Second, Patent Owner has not shown that the authentication requirement in its construction, i.e., that the user identifier be a “text string” that “contains sufficient information to authenticate a user of the web service,” is supported by the intrinsic record. Patent Owner’s authentication requirement is not apparent from the claim language, nor has Patent Owner attempted to show that a POSITA would have understood the ordinary meaning of “user identifier” to require such. The only intrinsic support Patent Owner cites are figures and related disclosure describing a preferred embodiment in the ’802 application.10 This disclosure uses different terms, e.g., “user preferences” and “login information,” which on this record Patent Owner has not sufficiently connected to the “user identifier” in claim 1. See Ex. 2009 ¶¶ 18, 23, 25–26. Even if that connection had been shown, the disclosure Patent Owner cites is permissive in nature, stating, e.g., that “user preferences may comprise authentication credentials,” and not that authentication credentials are required. Id. ¶ 23. Thus, on the current record, we decline Patent Owner’s invitation to import an authentication requirement into the claims through the construction of “user identifier.”” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,756,336
• Tiktok Inc. / Byedance Inc. et al. v. Cellspinsoft, Inc.Instituted
  PTAB · Sep 30, 2024 · IPR2024-00769 · APJ Gregg I Anderson · IPR · Institution

  The Board instituted inter partes review of claims 1–15 on all asserted grounds, finding a reasonable likelihood that the claims are unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1034,8 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 11

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “Section 325(d) provides discretion to “reject the petition” if “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The analyze this issue under the following two-part framework set forth in Advanced Bionics: (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 [the] first part of the framework is 9 Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). satisfied, 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, 8.” slip op. at 12

  • Other 314aDecided for petitioner

    “Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition, notwithstanding its merits, based on the policy considerations and concerns Patent Owner alleges.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill in the Art Petitioner alleges a person of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering, computer engineering, or computer science, and two years of experience in the field of consumer electronics, with exposure to digital camera technology and wireless communications. . . . Superior education could compensate for a deficiency in work experience, and vice-versa. Pet. 6 (citing Ex. 1030 ¶¶ 94–95). Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. Petitioner’s proposal is supported by the Lett Declaration and is consistent with the ’766 patent. Accordingly, we apply Petitioner’s articulation.” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,900,766
• Tiktok Inc. v. Cellspin Soft, Inc.Instituted
  PTAB · Sep 30, 2024 · IPR2024-00760 · APJ Gregg I Anderson · IPR · Institution

  The Board instituted IPR on claims 1–18, finding a reasonable likelihood that at least claim 1 is obvious over Aaltonen and Drescher.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1023,8 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 14

  • Other 314aDenied

    “Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we discern no discretion under § 316(b) to deny the Petition based on the policy considerations and concerns Patent Owner alleges.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill in the Art Petitioner alleges a person of ordinary skill in the art would have had at least a Bachelor of Science in electrical engineering, computer engineering, computer science, or a related field, with at least two years of relevant work experience in wireless communications and/or networking systems, or equivalents thereof. []. Superior education could compensate for a deficiency in work experience, and vice-versa. []. Pet. 3–4 (citing Ex. 1003 ¶ 21). Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. Petitioner’s proposal is supported by the testimony of Dr. Traynor and is consistent with the ’260 patent. Accordingly, we apply Petitioner’s articulation.” slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “On the current record, Patent Owner’s claim construction arguments are unpersuasive. First, Patent Owner has not shown that the authentication requirement in its construction is supported by the intrinsic record. Patent Owner’s proposed construction requires that the user identifier be a “text string” that “contains sufficient information to authenticate a user of the web service.” Prelim. Resp. 35. Patent Owner’s authentication requirement is not a part of the claim language, nor has Patent Owner attempted to show that a person of ordinary skill in the art would have understood the ordinary meaning of “user identifier” to require such. Authentication does appear in the ’260 patent in the context of BT. Specifically, BT “can crypto graphically authenticate the identity of another BT device.” Ex. 1001, 3:61– 63. Authentication of the user does not appear in the specification. The only intrinsic evidence support Patent Owner cites are figures and related disclosure describing a preferred embodiment in the ’802 application.9 The disclosure uses different terms, e.g., “user preferences” and “login information,” which on this record Patent Owner has not sufficiently connected to the “user identifier” in claim 1. See Ex. 2009 ¶¶ 18, 23, 25–26. Even if that connection had been made, the disclosure Patent Owner cites is permissive in nature, stating, e.g., that “user preferences may comprise authentication credentials” and not that authentication credentials are required. Id. ¶ 23. Thus, on the current record, we decline Patent Owner’s invitation to import an authentication requirement into the claims through the construction of “user identifier.”” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,898,260
• Orthocision, Inc. v. PTL Opco LLCNo claims unpatentable
  PTAB · Sep 18, 2024 · IPR2023-00625 · APJ Ryan H Flax · IPR · Final written decision

  Claims 1, 2, 9, and 10 were not shown unpatentable under any asserted § 103 ground because Petitioner did not adequately explain how or why the prior art would be combined.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not specifically address Petitioner’s proposed definition. See generally Resp. Patent Owner’s witness, Dr. Bovinet, uses a slightly different, but not materially so, definition of the ordinarily skilled artisan than Petitioner. See Ex. 2005 ¶ 13. Thus, the parties appear to agree on who the person of ordinary skill in the art would have been in terms of education and field of work experience. We accept and adopt Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’129 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[]” evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). B.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “3. Summary on Claim Construction We maintain our earlier constructions of “open tip” and “releasing means . . . .” See DI 16–24. We determine that no other express construction of any claim term is necessary for purposes of rendering this Decision. See Nidec Motor Corp., 868 F.3d at 1017. Although we maintain here our constructions of “open tip” and “releasing means . . . ,” we do so only for the sake of completeness. These claim constructions, ultimately, are not determinative of the outcome of this proceeding because, regardless of the meaning of any claim term, including these disputed terms, we find that Petitioner fails to adequately explain why any claim would have been obvious under the asserted grounds. We explain this in detail below. C.” slip op. at 29

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Ex. 1001, 6:28–38 (emphasis added). However, the language of claim 1 is very clear on the functionality of the “open tip,” expressly reciting that “the open tip cuts bone tissue away from the sacrum or the ilium.” Id. at 13:19– 20. Thus, the claim language itself provides the required functionality of the “open tip,” and we do not agree with Petitioner that additional functionality relating to where bone tissue might go once cut, as discussed in the Specification, should be read into the claims as a limitation. Patent Owner’s newly proposed interpretation is similar to Petitioner’s in that it requests addition of functionality discussed as an example in the Specification, but not recited in the claim’s expressly recited functional language relating to the “open tip.” We disagree with Patent Owner that the concept of dislodged tissue entering a void defined by the open tip is necessary to understanding the claim element. And, once more, Patent Owner reads too much structure from the written description into the claim language as a limitation because it is not apparent that the recited “open tip” language requires that we further clarify that any interior void defined by the open tip is on the interior of the abrading head, and behind the exterior abrading surfaces, or between interior surfaces of a first pair of opposing sides, as proposed by Patent Owner. “[W]hile it is true that claims are to be interpreted in light of the specification . . . , it does not follow that limitations from the specification may be read into the claims. . . . [T]he claims define the invention.” Sjolund v. Musland, 847 F.2d 1573, 1581–82 (Fed. Cir. 1988).” slip op. at 18

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “A claim limitation is presumed to invoke 35 U.S.C. § 112(f) (or pre- AIA § 112 ¶ 6) if, as here, it explicitly uses the term “means” and includes functional language; this presumption is overcome if the limitation further includes the structure, material, or acts necessary to perform the recited function. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). Here, the word “means” is recited, followed by functional language, and the claim recites no structure associated with the means or function. Moreover, the parties agree that this is a means plus function limitation. See Pet. 19–20; Resp. 9. We find “releasing means” is a means plus function limitation and, based on the plain language of the claim, the recited “releasing means” is a part of the also recited “slide hammer assembly,” as the above-quoted claim language defines. Ex. 1001, 13:10–17. Construing a claim term under 35 U.S.C. § 112(f) involves two steps: (1) identifying the claimed function; and then (2) determining what structure, if any, disclosed in the Specification corresponds to the claimed function. Williamson, 792 F.3d at 1351. In conducting this analysis, we may not incorporate structure from the written description beyond that which is necessary to perform the claimed function. See Micro Chemical, Inc. v. Great Plains Chemical Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).” slip op. at 20

  Patent outcomesUS 11,020,129 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,020,129

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.