- Intel Corporation v. Acqis LLCInstitution deniedPTAB · Dec 6, 2021 · IPR2021-01108 · APJ Thu A Dang · IPR · Institution
The Board denied institution for claims 1–3, 7–9, 13–17, 19, 20, 25, and 33–35 under § 325(d), finding the same arguments were previously presented and no material examiner error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [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 at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [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 at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“II. ANALYSIS 35 U.S.C. § 325(d) Petitioner relies upon Chu ’330 in both of the asserted grounds.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Decided for patent owner
“As such, we find that Petitioner has failed to show (1) the ’768 patent is not entitled to a priority date before April 15, 2011, (2) the ’436 patent’s parent applications in the’768 patent family did not properly incorporate by reference the ’886 provisional, and (3) the amendments adding the subject matter from the ’886 provisional improperly introduced new matter. Pet. 18−30.” slip op. at 23
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 9,529,768 - PTAB · Dec 6, 2021 · IPR2021-00605 · APJ Thu A Dang · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving institution denied under § 325(d) because the same or substantially the same arguments were previously presented and material Examiner error was not shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in its petition. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under Part 2 of the Advanced Bionics framework, Petitioner has the burden to show that “[t]he Examiner erred by not realizing that Chu ’330, Chu ’185, and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the ’768 Patent claims,” as Petitioner alleges in its § 325(d) analysis. Pet. 7, 9−18. Upon consideration of Petitioner’s Request for Rehearing, we are not persuaded by Petitioner’s arguments of Examiner error.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s arguments are new arguments raised for the first time in its Rehearing Request. Petitioner acknowledges that “Hollmer and NRG were not cited in the Petition.” Req. Reh’g 10. Nevertheless, Petitioner alleges that it “could not have anticipated the Patent Owner’s mischaracterization of the Droplets decision, nor the Board’s reliance on this mischaracterization,” and that Petitioner was not authorized to file a reply to the Patent Owner Preliminary Response. Id.; see also id. at 2−3, fn.1. Petitioner’s new arguments in connection with Hollmer and NRG are improper. As we discussed above, Patent Owner did not mischaracterize and we did not misapprehend Droplets. It was not necessary to authorize Petitioner to file a reply, as we were capable of determining whether Patent Owner mischaracterizes Droplets. As discussed above, Petitioner fails to recognize that the language relied upon by Patent Owner in Droplets is consistent with 37 C.F.R. § 1.57 and MPEP § 608.01(p). Although Petitioner relies on MPEP § 608.01(p) in its Petition, Petitioner now in its Rehearing Request for the first time suggests that we should ignore MPEP § 608.01(p) and the case law cited in MPEP § 608.01(p). Pet. 11; Req. Reh’g 6−7. A request for rehearing is not an opportunity to submit new arguments, after the decision has noted the deficiencies in the petitioner’s original analysis. 37 C.F.R. § 42.71(d). It is Petitioner’s burden to identify specifically all matters we misapprehended or overlooked in our Decision to Institute. We could not have misapprehended or overlooked the new arguments that were not presented in the record until after the Decision.” slip op. at 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“codes (21), (22), (45), (60), 6:1–7. The initial parent application in the ’768 patent’s priority chain, U.S. Application No. 09/569,758 (“the ’758 application”), which incorporated the ’882 application by reference, was filed on May 12, 2000, and issued as U.S. Patent No. 6,718,415 B1 (“the ’415 patent”) on April 6, 2004. See Ex. 1001, code (63); Ex. 1008, code (45), 4:50–53. Both the ’882 application (issued as Chu ’330) and the ’758 application (issued as the ’415 patent) were filed and issued as patents prior to the effective date, September 21, 2004, of 37 C.F.R. § 1.57. Petitioner does not explain why the applicant should have complied with 37 C.F.R. § 1.57, which did not exist at the time of filing of those applications or issuance of those patents that incorporated by reference Chu ’886 and the ’882. Pet. 7, 9−18; Req. Reh’g 1−13. We decline to apply 37 C.F.R. § 1.57 retroactively to the incorporation by reference statements submitted in the ’882 application and the ’758 application.” slip op. at 7
§ 102 anticipationDiscretionary denialPatents in suitUS 9,529,768 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Dec 3, 2021 · IPR2021-01107 · APJ Thu A Dang · IPR · Institution
The Board denied institution for claims 4–6 and 10–12 under § 325(d), finding the same or substantially the same arguments had been presented and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [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 at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“As such, we find that Petitioner has failed to show (1) the ’768 patent is not entitled to a priority date before April 15, 2011, (2) the ’436 patent’s parent applications in the’768 patent family did not properly incorporate by reference Chu ’886, and (3) the amendments adding the subject matter from Chu ’886 improperly introduced new matter. Pet. 36−49.” slip op. at 22
§ 102 anticipationDiscretionary denialPatents in suitUS 9,529,768 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Dec 2, 2021 · IPR2021-01111 · APJ Joni Y Chang · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding substantially the same arguments were previously presented and Petitioner did not show material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under § 325(d), the Board uses the following two-part framework: (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, Paper 6 at 8. If the petitioner fails to show that the Office erred, the Director may exercise his or her discretion not to institute inter partes review. Id.; see also Becton, Dickinson, Paper 8, 24 (exercising discretion where “Petitioner has not pointed to error by the Examiner”). slip op. at 7
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“For the foregoing reasons, the ’882 application identified Chu ’886 with particularity and would have directly led an ordinarily skilled artisan to 18 the document intended to be incorporated. Accordingly, we determine that Petitioner fails to show that the Examiner erred in determining that the ’882 application (Chu ’330) incorporated Chu ’886 by reference. In addition, as discussed above, Petitioner admits that the ’758 application (the initial parent application) incorporated by reference the ’882 application. Pet. 25; see also Ex. 1013, 4:50−53. It also is undisputed that each subsequent application in the priority chain identified each preceding application as required by 35 U.S.C. § 120 and incorporated by reference the prior applications and the ’882 application. See, e.g., Ex. 1001, 1:13−37, 9:66−10:2; Ex. 1008, 1:12−27, 9:27−29. As such, we also find that Petitioner has failed to show (1) the ’750 patent is not entitled to a priority date before April 15, 2011, (2) the ’436 patent’s parent applications did not properly incorporate by reference Chu ’886, and (3) the amendments adding the subject matter from Chu ’886 improperly introduced new matter. Pet. 17−31.” slip op. at 18
§ 102 anticipationDiscretionary denialPatents in suitUS 9,703,750 - PTAB · Nov 22, 2021 · IPR2021-00917 · APJ Brent M Dougal · IPR · Institution
Instituted inter partes review of claims 7–13 on all grounds in the Petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For all of these reasons, we determine that the Petition has established a reasonable likelihood of success with respect to claim 7. c) Claims 8, 9, and 12 Petitioner argues that Numazaki anticipates dependent claims 8, 9, and 12. Pet. 41–42. Patent Owner does not contest Petitioner’s assertions regarding these claims at this stage. See generally Prelim. Resp. We have reviewed Petitioner’s assertions and the supporting evidence, and determine that Petitioner has established a reasonable likelihood of prevailing with respect to claims 8, 9, and 12.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“We agree that the preamble of claim 7 is limiting. This is primarily because the last clause of claim 7 refers back to the preamble and is understood with reference thereto. The last clause states: “means for how these constructions are impacted by the District Court Claim Construction Memorandum and Order (Ex. 2004) which was issued after the pre-institution briefing was submitted. controlling a function of said apparatus using said information.” Ex. 1001, 26:4–5 (emphasis added). “Said apparatus” derives antecedent basis from “[h]andheld computer apparatus” recited in the preamble. Moreover, the “means for controlling a function of said apparatus” can be understood because of this reference to the handheld computer apparatus. Thus, we agree that the preamble recites essential structure and is “necessary to give life, meaning, and vitality” to claim 7.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“c) “camera means associated with said housing for obtaining an image using reflected light of at least one object positioned by a user operating said object” Petitioner asserts that claim 7’s limitation of “camera means associated with said housing for obtaining an image using reflected light of at least one object positioned by a user operating said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 14. Petitioner argues that the limitation’s function “is obtaining an image using reflected light of at least one object positioned by a user operating said object” and the corresponding structure “is one or more TV cameras (e.g., TV camera 815) or other suitable electro-optical sensors, and equivalents thereof.” Id. (citing Ex. 1001, 3:15–29; Ex. 1003 ¶¶ 50–51). As noted above, Patent Owner does not contest Petitioner’s constructions. Prelim. Resp. 5. For the purposes of institution, we accept Petitioner’s construction. d) “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” Petitioner contends that claim 7’s limitation of “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 15. Petitioner argues that the limitation’s function “is analyzing an image to determine information concerning a position or movement of an object” and the corresponding structure “is a general purpose computer programmed with an algorithm to cause the general purpose computer to: (1) analyze target image(s) of an object captured by the camera means; and (2) determine position(s) of the object.” Id. (citing Ex. 1001, 6:9–18, 7:22–29, 12:1–9, 12:46–52, 17:34–50; Ex. 1003 ¶¶ 53–36). As noted above, Patent Owner does not contest Petitioner’s constructions. Prelim. Resp. 5. For the purposes of institution, we accept Petitioner’s construction.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“The function of the photo-detection sensor unit is taught in a number of locations in Numazaki. For example, Numazaki at 52:8–14 (cited at Pet. 37) teaches that “a window 712 is provided for the lighting unit and the photo-detection sensor unit” to enable the function of “lighting and photo-detecting on an external body.” The paragraph continues to teach that “[a] position of a cursor 714 on the screen can be controlled by moving a finger 713 in front of this window 712.” Ex. 1007, 52:14–16. Thus, the function of the photo-detection sensor unit is taught by Numazaki. Further, this description of the function of the photo-detection sensor unit is consistent with Numazaki’s more detailed discussion of the reflected light extraction unit and photo-detection optics, which teaches obtaining an image. See Ex. 1007, 10:33–35, 11:11–15 (“an image is formed on a photo-detection plane of the reflected light extraction unit 102 by a photo-detection optics 107.”); Pet. 37. Patent Owner also argues that, because they “hav[e] different names, Numazaki’s ‘photo-detection sensor unit’ and Numazaki’s ‘reflected light extraction unit’ must be different units with different functions.” Prelim. Resp. 21. Patent Owner’s argument misunderstands Petitioner’s position. The Petition equates Numazaki’s photo-detection sensor unit with Numazaki’s reflected light extraction unit (102) and photo-detection optics (107). Pet. 37. At the same time, Patent Owner is trying to equate Numazaki’s photo-detection sensor unit with only Numazaki’s reflected light extraction unit, which does appear to reflect the teachings of Numazaki or the position in the Petition. For the above reasons, Patent Owner’s arguments do not identify any shortcomings in the showing by Petitioner that Numazaki teaches all the aspects of the camera means claim element.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 7,933,431 - Hulu, LLC v. Pucs, Inc.InstitutedPTAB · Oct 8, 2021 · IPR2021-00811 · APJ Joni Y Chang · IPR · Institution
The Board instituted IPR on claims 1–7, finding a reasonable likelihood they would have been shown obvious over Santangelo alone and over Santangelo combined with Zigmond.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, we determine that the Petition and evidence in this record establish that there is a reasonable likelihood that Petitioner would prevail in challenging claims 1−7 of the ’619 patent based on the grounds discussed above. At this juncture, we have not made a final determination with respect to the patentability of the challenged claims, nor with respect to claim construction. IV. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review is hereby instituted for the following asserted grounds: Claims Challenged 35 U.S.C. § References 1−7 103 Santangelo 1−7 103 Santangelo, Zigmond” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Here, citing to the Declaration of Stephen Gray for support, Petitioner asserts that a person of ordinary skill in the art of the ’619 patent would have had “a bachelor’s degree in computer science or a similar field with at least four years of experience in delivery of media content and advertising over the Internet,” or “a master’s degree in computer science or a similar field.” Pet. 17 (citing Ex. 1003 ¶¶ 59–61). At this juncture, Patent Owner does not proffer any assessment regarding the knowledge of an ordinarily skilled artisan. To the extent necessary, and for purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, with the exception of the open-ended language “at least,” because it is consistent with the ’619 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposed claim construction for the term “over-the-top data delivery system” as it is consistent with Specification and Mr. Gray’s testimony. Notably, the Specification discloses that “OTT systems can include any one or more systems or elements of a larger system that use publicly accessible internet connections to deliver video streams.” Ex. 1001, 9:26−31. Mr. Gray also explains that “the [S]pecification uses ‘over-the-top’ or ‘OTT’ in various embodiments to describe systems that are able to access the internet and deliver media streams, or access the internet and establish a connection with an ad engine.” Ex. 1003 ¶ 64 (citing Ex. 1001, 1:22−27 (describing prior art “Thomas does not disclose analyzing the media content and user data to queue advertisements to over-the-top (OTT) internet signals”), 9:32−34 (disclosing that “OTT systems advantageously allow digital content to be accessible by any devices that can access the internet and establish a connection with ad engine 110”)). Moreover, as Mr. Gray testifies, Petitioner’s proposed claim construction is further supported by Santangelo’s description of “over-the-top” in the context of providing content over a network: “network services are sent ‘over the top’ of other provider’s infrastructure, thereby making the service network substantially network-agnostic” (Ex. 1004 ¶ 102). See Ex. 1003 ¶ 64. In light of the Specification and the evidence in this record, we determine for purposes of this Decision that the term “over-the-top data delivery system” as used in the preamble of claim 1 encompasses a system “sending data over another’s network, which includes using publicly accessible internet connections to deliver media streams,” adopting Petitioner’s proposed claim construction. Pet. 18.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“suggests each limitation of the claims and provides reasons to combine the prior art teachings. Id. For example, Petitioner explains that Santangelo teaches Element 1f (“retrieving an advertisement rule associated with the user”) as discussed in Ground 1, obviousness based on Santangelo alone. Pet. 68. Petitioner asserts that, to the extent Patent Owner argues that Santangelo does not sufficiently disclose this “advertisement rule” element, Zigmond would have rendered this element obvious by expressly teaching using “ad selection rules” based on “identifying characteristics of viewer” to select advertisement “specifically associated with characteristics of the viewer or the household,” such as recent advertisement content, permitted themes (e.g., parental locks), etc. Pet. 68−71 (citing Ex. 1005, 4:24−34, 9:56−10:3, 10:36−63, 11:30−53, 11:66−12:14, 12:62−66, 13:51−58, 14:13−20). Petitioner also asserts that a person of ordinary skill in the art would have been motivated to modify Santangelo’s method to include Zigmond’s additional monitoring functions and selection rules because it would “provide advertisers and users greater control on what advertisements to display,” furthering Santangelo’s goals for selecting user tailored advertisement. Id. at 61−64 (citing Ex. 1003 ¶¶ 18−20, 173−178). Upon review of the parties’ arguments and evidence, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing in showing that claims 1−7 are unpatentable under § 103 as obvious over Santangelo and Zigmond. As discussed above, Petitioner has shown sufficiently for purposes of instituting a review that Santangelo teaches or suggests all of the limitations in these challenged claims. Petitioner also has articulated a sufficient reason to combine the teachings of Santangelo and Zigmond for purposes of this Decision.” slip op. at 27
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,728,619 - PTAB · Oct 7, 2021 · IPR2021-00607 · APJ Joni Y Chang · IPR · Institution
The Board denied institution for claims 14–38 under § 325(d), finding the same or substantially the same arguments were previously presented and Petitioner failed to show material Examiner error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“[U]nder § 325(d), the Board uses the following two-part framework: (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, Paper 6 at 8. If the petitioner fails 7 to show that the Office erred, the Director may exercise his or her discretion not to institute inter partes review. Id.; see also Becton, Dickinson, Paper 8, 24 (exercising discretion where “Petitioner has not pointed to error by the Examiner”). 1. Part I – whether the same or substantially the same arguments previously were presented to the Office slip op. at 7
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Fourth, Petitioner argues that, because the subject matter added from Chu ’886 was not included in any of the applications in the ’140 patent’s priority chain before it was added by amendment in the ’138 application and then filed with the U.S. Application No. 13/294,108 (“the ’108 application”), the earliest possible priority date for any of the ’140 patent claims relying on this subject matter for written description support under 35 U.S.C. § 112, ¶ 1, is the date of filing the ’108 application, November 10, 2011. Pet. 14−17. However, the amendments to the ’138 application were proper because, as discussed above, “[w]hen claims were added to the ’138 application that transformed previously non-essential material into allegedly essential material, Patent Owner submitted an amendment to explicitly set forth the material in the specification,” in accordance with the procedure set forth in 37 C.F.R. § 1.57(g) (2007) and MPEP § 608.01(p), 8th Ed. Rev. 8 (July 2010). See Prelim. Resp. 26−30. Petitioner has not shown sufficiently that the ’777 patent and the applications in the ’140 patent’s priority chain did not properly incorporate by reference Chu ’330 and Chu ’886, or that the examiner erred in entering the amendments that added the subject matter from Chu ’886 to the ’138 application. As such, we are not persuaded by Petitioner’s argument that the earliest possible priority date for the challenged claims of the ’140 patent is November 10, 2011. For the foregoing reasons, we determine that the same or substantially the same arguments previously were presented to the Office and that Petitioner fails to show that “the Examiner erred by not realizing that Chu 21 ’330 and Chu ’886 qualify as prior art under 35 U.S.C. § 102(b) and are material to the patentability of the claims in the ’140 Patent.” Accordingly, we exercise our discretion not to institute inter partes review. Advanced Bionics, Paper 6 at 8; see also Becton, Dickinson, Paper 8, 24.” slip op. at 21
§ 102 anticipationDiscretionary denial - PTAB · Oct 7, 2021 · IPR2021-00670 · APJ Joni Y Chang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 14–38 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We are not persuaded that a “graphics controller” is merely a graphics interface in the context of the ’140 patent. As Patent Owner explains, “[t]he ‘graphics controller’ of the ’140 patent has graphics processing functionality, and is not just a connection to a separate component for processing graphics.” Prelim. Resp. 12 (emphasis added). Patent Owner’s declarant, Marc Levitt, Ph.D., testifies that a person of ordinary skill in the art would have recognized that a graphics interface is not a graphics controller because a graphics interface is “simply the interface for connecting an external graphics processor to the processor module” and the “graphics interface itself provides no actual graphics processing functionality.” Ex. 2001 ¶¶ 72−73. We credit Dr. Levitt’s testimony as it is consistent with the Specification and the general knowledge of an ordinarily skilled artisan. See, e.g., Ex. 1001, 19:10−13, Figs. 19, 20; Ex. 3001 (IEEE Dictionary), 3 (defining “interface” as “[a] hardware or software component” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“dispute the level of skill for a person of ordinary skill in the art.” Prelim. Resp. 4. For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’140 patent, prior art of record, and the testimony of Dr. Edwards.” slip op. at 11
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“interface in the context of the ’140 patent. As Patent Owner explains, “[t]he ‘graphics controller’ of the ’140 patent has graphics processing functionality, and is not just a connection to a separate component for processing graphics.” Prelim. Resp. 12 (emphasis added). Patent Owner’s declarant, Marc Levitt, Ph.D., testifies that a person of ordinary skill in the art would have recognized that a graphics interface is not a graphics controller because a graphics interface is “simply the interface for connecting an external graphics processor to the processor module” and the “graphics interface itself provides no actual graphics processing functionality.” Ex. 2001 ¶¶ 72−73. We credit Dr. Levitt’s testimony as it is consistent with the Specification and the general knowledge of an ordinarily skilled artisan. See, e.g., Ex. 1001, 19:10−13, Figs. 19, 20; Ex. 3001 (IEEE Dictionary), 3 (defining “interface” as “[a] hardware or software component” slip op. at 7
Claim construction§ 103 obviousnesscites KSR · Graham - PTAB · Sep 20, 2021 · IPR2021-00669 · APJ Thu A Dang · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that any claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review may not be authorized “unless . . . 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). Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner demonstrated a reasonable likelihood of prevailing in establishing unpatentability of the challenged claims of the ’654 patent. Accordingly, no trial is instituted.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“bit at a time on a single path.’” Prelim. Resp. 20 (quoting Ex. 2002, 11 (IEEE Dictionary) (defining “serial transmission”); citing Ex. 1001, 20:66−21:3 (“describing ‘bit based line’ ‘for transmitting serial bits’”); Ex. 2001 ¶ 76). Based on the evidence before us, we agree with Patent Owner’s proposed claim construction. Ex. 1001, 20:66−21:3; Ex. 2001 ¶ 76; Ex. 2002, 9, 11.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)(quoting Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). In that regard, relying on the declaration of Dr. Edwards, Petitioner contends that a person of ordinary skill in the art at the time of the ʼ654 patent’s invention would have had “at least a Master’s Degree in, or a related subject, or a Bachelor’s Degree in electrical engineering, computer science, or a related subject and three years of experience working with computer architecture, computer busses, and related technologies.” Pet. 9; Ex. 1003 ¶¶ 46–47.” slip op. at 18
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“teach the claimed “graphics controller,” citing Dr. Edwards’ testimony for support. Pet. 22−23 (citing Ex. 1004, 5:21–25, 23:54–57; Ex. 1003 ¶¶ 72– 73). However, as discussed above in our claim construction analysis, in the context of the ’654 patent, a “graphics controller” is a processing unit having graphics processing functionality (e.g., producing graphical video output), and thus, not merely a graphics interface. As Dr. Levitt testifies, a person of ordinary skill in the art would have recognized that a graphics interface is not a graphic controller, because “the graphics interface is simply the interface for connecting an external graphics processor to the processor module,” wherein “[t]he graphics interface itself provides no actual graphics processing functionality.” Ex. 2001 ¶ 72. We credit Dr. Levitt’s testimony as it is consistent with the Specification and the general knowledge of an 26 ordinarily skilled artisan. See, e.g., Ex. 1001, 7:4−17, 19:4−9, Figs. 3, 19, 20.” slip op. at 26
Claim construction§ 103 obviousnesscites KSR · Graham - PTAB · Sep 15, 2021 · IPR2021-00608 · APJ Thu A Dang · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same arguments had been presented before and Petitioner failed to show material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under § 325(d), in “determining whether to institute [an inter partes review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [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 at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“Institution of an inter partes review may not be authorized “unless . . . 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). For the reasons stated below, we decline to institute an inter partes review of the challenged claims of the ’654 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“3. § 325(d) Conclusion For the foregoing reasons, we determine that the same or substantially the same arguments previously were presented to the Office and that Petitioner fails to show that the Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the ’654 Patent claims. Accordingly, we exercise our discretion not to institute inter partes review. Advanced Bionics at 8; see also Becton, Dickinson, Paper 8, 24. III. CONCLUSION For the foregoing reasons, we exercise our discretion under § 325(d) to deny institution of an inter partes review. 26 IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 26
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Chu ’886 was not included in any of the applications in the ’654 patent priority chain before the amendments in the ’138 application, the earliest possible priority date for any of the ’654 patent claims relying on this subject matter for written description support under § 112, ¶ 1, is the filing date of the ’108 application, i.e., November 10, 2011, “the earliest possible priority date for any of the ’654 Patent claims relying on this subject matter.” Pet. 15−17. However, the amendments to the ’138 application were proper because, as discussed above, when claims were added to the ’138 application that transformed previously non-essential material into allegedly essential 25 material, Patent Owner submitted an amendment to explicitly set forth the material in the specification in accordance with the procedure set forth in 37 C.F.R. § 1.57(g) (2007) and MPEP § 608.01(p) (8th Ed. Rev. 8 July 2010). See Prelim. Resp. 28−33. Petitioner has not shown sufficiently that the ’777 patent and the applications in the ’654 patent priority chain did not properly incorporate by reference Chu ’330 and Chu ’886, or that the examiner erred in entering the amendments that added the subject matter from Chu ’886 to the ’138 application. As such, we are not persuaded by Petitioner’s argument that the earliest possible priority date for the challenged claims of the ’654 patent is November 10, 2011.” slip op. at 25
§ 102 anticipation§ 103 obviousnessDiscretionary denial
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.