- Apple Inc. v. Masimo CorporationInstitutedPTAB · Jul 9, 2024 · IPR2024-00244 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–5, 7–14, and 16–25 on all asserted grounds, finding a reasonable likelihood of prevailing on the Sarantos-based obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the Delaware Litigation. Prelim. Resp. 17–34; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there is a parallel district court proceeding). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”).8 Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like that in Sotera, i.e., a stipulation to “not pursue for the instituted claims, in [the Delaware 7 US 8,446,275 B2, issued May 21, 2013 (Ex. 1006, “Utter”). 8 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_m emo_20220621_.pdf. Litigation], the same grounds as in the IPR2024-00244 petition or any grounds that could have reasonably been raised in that Petition” (Ex. 1078, 1), we do not discretionarily deny institution under Fintiv. Patent Owner argues that Petitioner’s stipulation “does not carry the benefits underlying the Director’s Guidance” because it was filed “only after the parties and the court conducted extensive and costly fact and expert discovery, and fully briefed and argued dispositive motions.” Prelim. Sur-reply, 2. This argument is not persuasive because the Director’s Guidance does not afford discretion to discount a Sotera stipulation based on how far a parallel district court litigation has progressed when the stipulation was made. Director’s Memo, 7 (explaining, without qualification, that “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition”); see also NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13 (Vidal Sept. 7, 2022) (precedential) (explaining that the only appropriate time for a petitioner to offer a stipulation related to Fintiv factor 4 is prior to the Board’s decision on institution). Accordingly, we decline to deny institution based on the Delaware” slip op. at 10
- Parallel petitionsDecided for petitioner
“First, we agree with Petitioner that the two petitions are not redundant and contain material differences that, in this case, support Petitioner’s argument that two petitions challenging the ’159 patent are warranted. The -243 IPR presents three grounds, all built on a combination of Iwamiya and Sarantos. -243 IPR, Paper 2, 1. In that case, Petitioner relies on Iwamiya as the primary reference that discloses a number of limitations, including the light shaping aspect of claim 1. See id. at 13–27. In this case, Petitioner relies on Sarantos alone for all of the limitations in claim 1, including the light shaping limitation, or a combination of Sarantos and Shie, with Shie allegedly disclosing the light shaping limitation. See Pet. 1, 7–14, 35–38. Petitioner also seeks to add the dark colored coating of Sarantos to Iwamiya in the -243 IPR, but relies on Sarantos alone for that limitation in this case. See Notice 2. In addition, because the combinations are different, they are supported by different motivations to combine and different underlying expert testimony. See, e.g., Pet. 30–35, 44–46; -243 IPR, Paper 2, 7–13. The material differences between the challenges presented in the two cases are readily apparent, and are underscored by Patent Owner’s arguments in its Preliminary Responses. For example, in the -243 IPR, Patent Owner does not contest Petitioner’s assertion that Iwamiya discloses the light shaping functionality (upon which Petitioner relies on Sarantos, here), but argues (for claim 1) that the combination fails to disclose the “opening” and “pass through the surface” limitations, and argues against the motivation to combine Iwamiya and Sarantos. See -243 IPR, Paper 6, 34– 48. Patent Owner raises none of those arguments in this case, and instead focuses on the alleged failure of Petitioner to establish that Sarantos alone, or Sarantos and Shie, disclose the claimed light shaping functionality, and that Petitioner fails to establish an adequate reason to combine Sarantos and Shie. See Prelim. Resp. 34–50. The arguments made by Patent Owner highlight the differences in the challenges in a manner that suggests the outcome of each case will turn on independent issues related to the application of the different prior art to different claim limitations, as presented in each case. We disagree with Patent Owner’s argument that the two petitions “are redundant” merely because Petitioner relies on Sarantos for some of the same limitations in both cases—here, despite some overlap in assertions regarding Sarantos, we determine that these petitions are not redundant of another, for the reasons discussed above. See Notice Response 2. Under these circumstances, we find the second petition at issue here to be non-redundant and materially different than that in the -243 IPR, which weighs in favor of considering the second petition here. Second, we are persuaded by Petitioner’s contention that it could not fit its arguments into a single petition due to word count restraints, and that the number and nature of claims challenged (25 claims in the -243 IPR and 23 claims here) supports the need for two petitions. See Notice 5; Pet. 88 (certifying word count of 13,991 words, just under 14,000 word limit); -243, Paper 2, 91 (certifying word count of 13,970 words). Patent Owner does not dispute Petitioner’s contention, but argues instead that Petitioner need not have challenged so many claims in its IPRs, when only five claims were asserted against it in the Delaware Litigation. Notice Response 5. We do not agree with that argument because petitioners are not required to challenge only those claims that are currently asserted against it in co-pending litigation. Third, we disagree with Patent Owner’s argument that consideration of the 23 challenged claims here is unnecessary given that Petitioner challenged all 25 claims of the ’159 patent in the -243 IPR. Id. at 5. That argument puts form over substance. Petitioner could have split up its two petitions differently such that a first petition could have addressed one subset of claims, e.g., claims 1–13, and the second petition could have addressed a different subset of claims, e.g., claims 14–25, with all prior art challenges directed to each set of claims appearing in both petitions. The end result would be the same as presented here, i.e., the number of claims challenged and the challenges raised against them would remain the same, even though it would more closely align with Patent Owner’s logic that a second petition must challenge claims not challenged in a first petition. We do not view the manner in which Petitioner divided its argument across these two petitions as a sound basis to deny institution of the second petition here. Fourth, we agree with Petitioner that the additional burden to the Board and Patent Owner, necessary to address the issues raised in this second proceeding, are minimized by the overlap with the -243 IPR and other proceedings. See Notice 3–4. For example, Sarantos, the primary reference in this proceeding, is used as a secondary reference (to teach the light shaping functionality of the claims) in the -243 IPR and has been at issue in several other IPRs. See id.; -243 IPR, Paper 2, 1. As such, the Board and Patent Owner are familiar already with Sarantos and its contents, mitigating against the burden of considering it here.” slip op. at 16
- Skill levelSkill level petitioner adoptedOther
“On the present record, Petitioner’s definition of a POSITA is consistent with the level of skill reflected in the ’159 patent and the asserted prior art. Accordingly, for purposes of this Decision, we adopt Petitioner’s description. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as 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)). We note that we would reach the same outcome in this Decision under either definition of a POSITA. If the parties continue to propose differing levels of ordinary skill in the art during trial, they should state whether any issue in the case turns on those differences.” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
“Based on the current record, we agree with Patent Owner that this claim limitation in claims 1 and 19 refers to different shapes rather than merely different sizes of the same shape. See Prelim. Resp. 14–16. At this stage of the proceeding, we determine that the language of the claim and the plain and ordinary meaning of “shape” seems to compel this result. As Patent Owner notes, two circles of different size still have the same circular shape. See id. at 14. We disagree, however, with Patent Owner’s argument that we should deny institution because Petitioner failed to apply this construction to the claims or intentionally withheld the parties’ district court agreement on this issue. Prelim. Resp. 12–13. Patent Owner does not point to any portion of the Petition that contends that different sizes amount to different shapes. See id. Patent Owner also seems to assume that Petitioner must have applied a construction that encompasses different sizes rather than different shapes when alleging that the prior art discloses the limitation, but Petitioner makes no such allegation in the Petition. See id. at 13, 16–17; Pet. 9–10. Patent Owner may ultimately prevail on this limitation. But, on the present record, we see no support for the argument that Petitioner implicitly used an incorrect construction and that the failure to expressly disclose the proper construction warrants denial of institution.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,722,159 - Apple Inc. v. Masimo CorporationInstitutedPTAB · Jul 9, 2024 · IPR2024-00243 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–25 on all asserted obviousness grounds, finding a reasonable likelihood that Apple would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the Delaware Litigation. Prelim. Resp. 16–33; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there is a parallel district court proceeding). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum, issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”).6 Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like that in Sotera, i.e., a stipulation to “not pursue for the instituted claims, in [the Delaware Litigation], the same grounds as in the IPR2024-00243 petition or any grounds that could have reasonably been raised in that Petition” (Ex. 1078, 1), we do not discretionarily deny institution under Fintiv.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this point in the proceeding, we do not find it necessary, to expressly construe the term “opening” in order to reach a decision on institution and, under the circumstances, we do not find a basis for denying institution in Petitioner’s application of the claim language requiring an “opening.” But see infra Section F.3.b (identifying a potential issue that may benefit from record development on claim construction). Neither party offers an express construction of the term “opening” to the prior art. Pet. 5; Prelim. Resp. 12–15 (arguing inconsistency but declining to offer an express claim construction). On the present record, we are persuaded that the plain and ordinary meaning of “opening” encompasses Iwamiya’s optical filter 17 as mounted within light shielding frame 18. See Pet. 23–24; see infra at Section F.3.b. This is consistent with Patent Owner’s position, in the Delaware Litigation, that a solid material can provide an opening, and with the finding of the panel in the Final Written Decision in IPR2022-01291. Ex. 2035, 26 (Final Written Decision in IPR2022-01291); Ex. 2037 ¶¶ 463–465 (report by Petitioner’s expert, Dr. Sarrafzadeh in the Delaware Litigation, regarding non-infringement, reproducing an image that Petitioner represents is from Patent Owner’s expert, Dr. Madisetti, in which Dr. Madisetti labeled transparent material an “Opening in Dark-Colored Coating,” and in which Dr. Sarrafzadeh asserts that “every space that Dr. Madisetti . . . identified is” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner
“prosecution history of a parent application, this language should be construed to exclude “arrangements of two or three detectors.” Prelim. Resp. 15 (citing Ex. 2057, 322 (prosecution history of U.S. Patent Application No. 15/195,199 (“the ’199 Application”))). Patent Owner notes that the panel in IPR2022-01291 adopted this construction for “a nearly identical limitation in Claim 15 of the related ’745 Patent.” Id. at 15–16 (citing Ex. 2035, 109–112). On this preliminary record, we agree with Patent Owner that, due to statements made during prosecution of a parent application, this claim language should be construed to exclude arrangements of two or three detectors. During prosecution of the ’199 Application, application claim 1 was amended to recite: a “tissue measurement site . . . having an at least partially circular shape bounded by a light block”; the light block comprising “an annular ring having a circular shape”; and a “plurality of detectors . . . arranged in an array having a spatial configuration corresponding to the shape of the irradiated portion of the tissue measurement site.” Ex. 2057, 311. Patent Owner argued to the Examiner that the “array” limitation had support in the ’199 Application specification because: The ordinary meaning of the claim term “correspond” means to “have a close similarity; match or agree almost exactly” or “be analogous or equivalent in character, form, or function” or “represent.” New Oxford American Dictionary, 390 (3rd Edition 2010). Consistent with this exemplary definition and the originally-filed application, the phrase “arranged in an array having a spatial configuration corresponding to the shape of the irradiated portion of the tissue measurement site” . . . would be understood by a person having ordinary skill in the art as requiring a sufficient number of detectors such that, when arranged together in an array, can “match,” “have a close similarity,” or “represent” the “at least partially circular shape” of the irradiated portion of the tissue measurement site. . . . In order for the claimed “plurality of detectors” to “match” or “represent” an “at least partially circular shape” or an “annular shape,” the “plurality of detectors” must include sufficient detectors to represent such shapes. For example, six or more detectors could be arranged in an annular shape and meet the recited limitation. However, two detectors, for example, can only be arranged in a spatial configuration representing a line and three detectors, for example, can only be arranged in a spatial configuration representing a line or a triangle. Thus, when read in view of the originally-filed application, the recited “plurality of detectors” would be understood by a person having ordinary skill in the art as including a sufficient number of detectors to represent the desired geometric shape.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On the present record, Petitioner’s definition of a POSITA is consistent with the level of skill reflected in the ’159 patent and the asserted prior art. Accordingly, for purposes of this Decision, we adopt Petitioner’s description. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining “the prior art itself [may] reflect[] an appropriate level” as 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))). We note that we would reach the same outcome in this Decision under either definition of a POSITA. If the parties continue to propose differing levels of ordinary skill in the art during trial, they should state whether any issue in the case turns on those differences.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,722,159 - PTAB · May 25, 2023 · IPR2023-00384 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 9–12 on all petitioned grounds and granted Amazon’s motion to join the Meta IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“delegation of authority . . . ) determine whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314.” Id. “Second, to effect joinder, § 315(c) requires the Director to exercise [her] discretion to decide whether to ‘join as a party’ the joinder applicant.” Id. 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 the information presented in the petition and any preliminary response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The patentability challenges in the Meta IPR met the “reasonable likelihood” standard of § 314(a). IPR2022-01064, Paper 7, 33. The Petition here presents the same patentability challenges as those for which a trial was instituted in the Meta IPR. See Mot. 1 (“[The] Petition is essentially a copy of the petition filed in the [Meta IPR].”); compare Pet. 5–73, with IPR2022- 01064, Paper 2, 7–73. According to Petitioner, the “Petition relies on the same grounds of unpatentability of claims 9, 10, 11, and 12 of the ’615 Patent that were instituted in the Meta IPR.” Mot. 3 (citing IPR2022-01064, Paper 7). In the present proceeding, Patent Owner did not file a preliminary response to dispute the merits of Petitioner’s patentability challenges. For the reasons set forth in the Meta IPR, we conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the challenged claims of the ’615 Patent. See IPR2022-01064, Paper 7, 7–33. We accordingly determine that the Petition warrants institution under § 314, and turn to Petitioner’s request for joinder.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“institution of the Meta IPR. See 37 C.F.R. § 42.122(b). Petitioner asserts that the Motion should be granted because the joinder would have little, if any impact on the Meta IPR. See Mot. 3–4. Petitioner also agrees to take an “understudy” role in the Meta IPR. See Mot. 4–5. Specifically, Petitioner agrees that, as long as petitioner Meta Platforms, Inc. [“Meta”] remains a party to the Meta IPR, Petitioner will not (1) “make any substantive filings and shall be bound by the filings of Meta, unless a filing concerns termination and settlement, or issues solely involving Petitioner”; (2) “present any argument or make any presentation at oral hearing unless an issue solely involves Petitioner, or when addressing Board approved motions that do not affect Meta”; (3) “seek to cross-examine or defend the cross-examination of any witness, unless the topic of cross-examination concerns issues solely involving Petitioner, within the time permitted by Meta alone and with Meta’s agreement”; (4) “seek discovery from Patent Owner, unless issues arise that are unique to, and only applicable to, Petitioner”; and (5) “rely on expert testimony beyond that submitted by Meta unless and until Meta is terminated as party to the proceedings, prior to any necessary depositions.” Id. As mentioned before, Patent Owner did not file an opposition to the Motion. Because Petitioner will take an understudy role that will not impact the Meta IPR which was instituted on identical grounds, we determine that it is appropriate under these circumstances to join Petitioner as a party to the Meta IPR.” slip op. at 9
NonePatents in suitUS 9,830,615 - Meta Platforms, Inc. v. Almondnet, Inc.InstitutedPTAB · Nov 30, 2022 · IPR2022-01064 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 9–12 on all petition grounds, finding a reasonable likelihood that claims 9–12 would be shown obvious over Meyer, Zeff, Edlund, and Fisher.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine there is a reasonable likelihood Petitioner would prevail in showing that claims 9–12 are unpatentable under 35 U.S.C. § 103 over Meyer, Zeff, Edlund, and Fisher. E. Challenge to Claims 9–12 over Meyer, Zeff, Edlund, Fisher, and Tittel” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. The Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the art would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web). A person could also have qualified with more formal education and less technical experience, or vice versa. Pet. 10 (citing Ex. 1002 ¶¶ 10–14). Patent Owner does not comment on Petitioner’s definition at this time, and does not offer an alternate definition. See Prelim. Resp. For the purpose of this decision, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’615 Patent Specification and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard as applied in federal courts in a civil action under 35 U.S.C. § 282(b), which is generally referred to as the Phillips standard. See 37 C.F.R. § 42.100(b) (2021); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the Phillips standard, “words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips, 415 F.3d at 1312. Petitioner asserts that it “does not believe an express claim construction is necessary at this time for this IPR.” Pet. 11. Patent Owner” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“For the purpose of this decision and based on Petitioner’s citations to Meyer, Zeff, and Mr. Schmandt’s testimony (Ex. 1002), 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 to modify Meyer to include electronically transferring a price cap that the BT company is willing to pay. See Pet. 45–47; KSR, 550 U.S. at 418. Petitioner asserts that Zeff discloses that auctions are a good place to buy and sell excess ad inventory, advertisers can usually get pretty good prices on well-recognized sites, and it is a way to generate revenue on inventory that would otherwise go unsold. See id. at 46 (quoting Ex. 1004, 81; citing Ex. 1002 ¶ 149). Petitioner contends that using an auction and bidding system in Meyer could have resulted in a substantially lower price than the account provider might otherwise have paid. See id. (citing Ex. 1002 ¶ 148). According to Petitioner, [a]n ordinarily skilled artisan would have also appreciated that using an auction would have solved a problem for the service provider in deciding how much to charge for advertising. A known benefit of auctions is their ability to obtain the most appropriate price based on direct purchaser feedback through competitive bidding. Id. at 46–47 (citing Ex. 1002 ¶ 147).” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,830,615 - PTAB · Jul 14, 2022 · IPR2022-00365 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR of claims 1–18 on all five grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We will not discretionarily deny institution in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. See Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, 3, 7–8.7 Here, Petitioner offers such a stipulation. Prelim. Reply 1, 6 (citing Ex. 1047). Petitioner states: With respect to U.S. Patent No. 10,663,071, Kerr Machine Co. stipulates that if the Patent Trial and Appeal Board institutes a trial in IPR2022‐00365, Kerr will not pursue in the N.D. Texas district court litigation (C.A. No. 4:21‐cv‐01191‐O) any of the grounds raised in its IPR Petition (i.e., Grounds 1–5 as summarized on pages 2–3 of the Petition) against any of the challenged claims as originally issued, or on any other ground 7 available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf that Kerr reasonably could have raised during the IPR under 35 U.S.C. § 311(b) (i.e., a ground raised under §§ 102 or 103 only on the basis of prior art consisting of patents or printed publications). Ex. 1047. We, thus, decline to exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “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 discussed below, we determine that Petitioner shows a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we institute inter partes review of U.S. Patent No. 10,663,071 B2.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’071 patent would have had the following education and experience: “a bachelor’s degree in mechanical engineering, and approximately 3–5 years of work experience in the design or manufacture of reciprocating pumps or their components.” Pet. 11 (citing Ex. 1002 ¶ 64). Petitioner adds that “a POSITA with additional relevant education might have fewer years of work experience, e.g., someone with advanced mechanical engineering degrees would also qualify as a POSITA.” Id. At this stage of the proceeding, Patent Owner does not contest Petitioner’s definition of the level of skill or offer its own definition. See generally Prelim. Resp. For purposes of this decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“1. “seating surface,” “inner surface,” “tungsten carbide,” “tungsten carbide nickel,” and “tungsten carbide cobalt” Petitioner proposes explicit constructions for the following terms: “seating surface,” “inner surface,” “tungsten carbide,” “tungsten carbide nickel,” and “tungsten carbide cobalt.” Pet. 12–21. Patent Owner responds that we need not explicitly construe any claim term and that these terms should be given their “ordinary and customary meaning in light of the claims, specification, and file history of the ’071 Patent as would have been read by a person of ordinary skill in the art (‘POSITA’) for the purpose of this proceeding.” Prelim. Resp. 13–14. We need not explicitly construe any of these term in order to decide whether to institute inter partes review. 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 resolve the controversy).” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,663,071 - Allstate Insurance Company v. Atos, LLCInstitutedPTAB · Jan 25, 2022 · IPR2021-01209 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR of claims 1–25 on all asserted grounds, finding a reasonable likelihood that Kim anticipates at least claims 1–3, 9, 11, and 25.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “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). After considering the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’609 patent. Accordingly, we institute an inter partes review of claims 1–25 of the ’609 patent on all grounds asserted in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“standard that would be used in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2019). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). Petitioner proposes constructions for “operation indicator” and “on- board component.” Pet. 7–10. Patent Owner disputes Petitioner’s proposed construction for “operation indicator” and proposes its own construction, and argues that we need not construe “on-board component” at all. Prelim. Resp. 7–13. We agree with Patent Owner that we need not construe “on-board component” because, at this time, no issue turns on our construction of that limitation. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We limit our analysis to the construction of “operation indicator.”” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“agree with Petitioner’s proposed construction and disagree with Patent Owner’s contention that “operation indicators” mean something more than the output of a sensor measurement based on signals from the environment. First, the plain language of the claims does not support Patent Owner’s construction. In claim 1, the limitation appears in a step requiring “monitoring at least one operation indicator . . . wherein the . . . operation indicator is created by an on-board component,” i.e., created by the sensor the specification describes. See Ex. 1001, 3:54–58, 11:4–6. Nothing in that limitation or its analogous limitation in claim 25 suggests anything more than “monitoring” the operation indicator created by the on-board component—no extra converting of that output appears in the claim suggests that mere monitoring of the indicator requires further conversion prior to the monitoring. In addition, to the extent that sensor output such as vibrations per second do not indicate something meaningful enough about the vehicle in Patent Owner’s view, later limitations in the claims provide additional information about the operation of the vehicle, suggesting that the “operation indicators” themselves need not contain all of the information as to the vehicle’s state. See PO Sur-reply 2; Ex. 1001, 11:9–12 (setting forth steps in claim 1 that require detecting when the operation indicator meets predetermined criteria and determining operational states of the vehicle based on that criteria). The specification also supports Petitioner’s construction by equating “operation indicator” with a sensor’s output. Ex. 1001, 3:57–60 (“[A] vibration sensor may measure forces over time (i.e. the signals) and convert them into number of vibrations measured per second (operation indicators).”). The only converting the specification describes in the context of operation indicators involves converting signals from the environment, not converting the output of the sensor as Patent Owner argues. Id. Patent Owner contends that the specification’s description of sensor output in vibrations per second, an operation indicator, may involve some additional converting of sensor output within a two-part sensor, but the specification does not describe such a two-part sensor or the extra conversion step. See PO Sur-reply 3–4; Ex. 1001, 3:52–66, Fig. 1. To the extent that the specification describes conversion of sensor output into something different, it occurs in later steps after the “monitoring” step, and not before the sensor creates operation indicators. See Ex. 1001, 4:12–20 (describing operation of state detector unit that determines operational state of a vehicle after receiving operation indicators from monitoring unit). Finally, although the specification describes a sensor measurement converted from environmental signals and Petitioner’s proposal uses the phrase “determined from signals from the environment,” we view the phrases “converted from” and “determined from” as providing no meaningful distinction as applied to the prior art in this case. See Pet. 7. Patent Owner uses the same phrase in its own proposal when discussing the sensor’s actions on signals from the environment, and we do not view Petitioner’s use of that phrase in its construction as problematic. See Prelim. Resp. 8 (describing a portion of proposed construction as “determined from signals from the environment” (emphasis omitted)). To the extent the parties find the distinction between “converted” and “determined” meaningful, they can address the issue further during the trial.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To anticipate a claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’609 patent has an effective filing date before the effective date of the applicable AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and 103. Our decision would not differ based on applying either preor post-AIA law. 3 KR 10-0775006, published June 4, 2007 (Ex. 1005, “Kim”). 4 US 8,065,508 B2, filed November 10, 2008 (Ex. 1006, “Rubin”). 5 Mitrovic, D., Reliable Method for Driving Events Recognition, IEEE Transactions on Intelligent Transportation Systems, Vol. 6, No. 2 (June 2005) (Ex. 1008, “Mitrovic”). 6 US 7,505,784 B2, published March 29, 2007 (Ex. 1007, “Barbera”). 7 US 6,236,937 B1, issued May 22, 2001 (Ex. 1013, “Kohli”). That “single reference must describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.” Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002).” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,152,609 - Allstate Insurance Company v. Atos, LLCInstitutedPTAB · Jan 10, 2022 · IPR2021-01118 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR of claims 1–18 on all asserted grounds after finding a reasonable likelihood that Kim anticipates at least claims 1, 10, and 13.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “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). After considering the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’140 patent. Accordingly, we institute an inter partes review of claims 1–18 of the ’140 patent on all grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the invention “would have been someone with a bachelor’s or master’s degree in the field of mechanical engineering, electrical engineering, or physics, or with a bachelor’s or master’s degree in a related field, and at least three years of experience in designing or developing portable device systems.” Pet. 4 (citing Ex. 1003 ¶ 52). Patent Owner does not address Petitioner’s proposal or offer a competing definition of the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’140 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for “operation indicator” and “on- board component.” Pet. 7–10. Patent Owner disputes Petitioner’s proposed construction for “operation indicator” and proposes its own construction, and argues that we need not construe “on-board component” at all. Prelim. Resp. 8–13. We agree with Patent Owner that we need not construe “on-board component” because, at this time, no issue turns on our construction of that limitation. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We limit our analysis to the construction of “operation indicator.”” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“First, the plain language of the claim does not support Patent Owner’s construction. The limitation in question appears in a step requiring “monitoring at least one operation indicator . . . wherein the . . . operation indicator is created by an on-board component,” i.e., created by the sensor the specification describes. See Ex. 1001, 3:49–52, 10:65–11:2. Nothing in that limitation suggests anything more than “monitoring” the operation indicator created by the on-board component—no extra converting of that output appears in the claim or suggests that mere monitoring of the indicator requires further conversion prior to the monitoring. In addition, to the extent that sensor output such as vibrations per second do not indicate something meaningful enough about the vehicle in Patent Owner’s view, later limitations in the claims provide additional information about the operation of the vehicle, suggesting that the “operation indicators” themselves need not contain all of the information as to the vehicle’s state. See PO Sur-reply 2; Ex. 1001, 11:3–6 (setting forth steps in claim 1 that require detecting when the operation indicator meets predetermined criteria and determining operational states of the vehicle based on that criteria). The specification also supports Petitioner’s construction by equating “operation indicator” with a sensor’s output. Ex. 1001, 3:51–56 (“[A] vibration sensor may measure forces over time (i.e. the signals) and convert them into number of vibrations measured per second (operation indicators).”). The only converting the specification describes in the context of operation indicators involves converting signals from the environment, not converting the output of the sensor as Patent Owner argues. Id. Patent Owner contends that the specification’s description of sensor output in vibrations per second, an operation indicator, may involve some additional converting of sensor output within a two-part sensor, but the specification does not describe such a two-part sensor or the extra conversion step. See PO Sur-reply 3–4; Ex. 1001, 3:45–61, Fig. 1. To the extent that the specification describes conversion of sensor output into something different, it occurs in later steps after the “monitoring” step, and not before the sensor creates operation indicators. See Ex. 1001, 4:7–16 (describing operation of state detector unit that determines operational state of a vehicle after receiving operation indicators from monitoring unit). Finally, although the specification describes a sensor measurement converted from environmental signals and Petitioner’s proposal uses the phrase “determined from signals from the environment,” we view the phrases “converted from” and “determined from” as providing no meaningful distinction as applied to the prior art in this case. See Pet. 7. Patent Owner uses the same phrase in its own proposal when discussing the sensor’s actions on signals from the environment, and we do not view Petitioner’s use of that phrase in its construction as problematic. See Prelim. Resp. 8 (describing a portion of proposed construction as “determined from signals from the environment”). To the extent the parties find the distinction between “converted” and “determined” meaningful, they can address the issue further during the trial. Based on the foregoing, we construe “operation indicator” to mean “a sensor measurement determined from signals from the environment.” D. Anticipation of Claims 1, 5, 10, 13, and 15 by Kim” slip op. at 12
Claim construction§ 102 anticipationcites Phillips · KSR · GrahamPatents in suitUS 8,527,140
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.