- Eis GmbH v. Novoluto GmbHNo claims unpatentablePTAB · Sep 23, 2021 · IPR2020-00007 · APJ Susan L C Mitchell · IPR · Final written decision
Claims 1–3, 5, 7, 8, 11, 14, 15, and 17–26 were not shown unpatentable under the Taylor anticipation or Taylor-based obviousness grounds.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedDenied
“disclosure of a suction cup “sealingly” receiving the vulva occurs when the vacuum is applied, not before. See Ex. 2034 ¶ 121. We disagree with Petitioner’s conclusion that “Taylor discloses that arm 26 ‘compresses . . . and then expands bellows 160’ after member 156 ‘sealingly’ engages the vulva.” Reply 9. The single statement in Taylor on which Petitioner relies states, with reference to Figure 3 set forth above in Section II.D.1, “[t]he first stimulator 154 includes a suction cup member 156 that conformingly and sealingly receives the upper portion of the vulva.” Ex. 1004, 5:29–31. We agree with Dr. Jensen that this does not support Petitioner’s conclusion that a seal is achieved before the vacuum is applied, and credit Dr. Jensen’s testimony that reads as follows as consistent with Taylor’s disclosure.” slip op. at 35
- ExcludeMotion to exclude, deniedDenied
“5. Conclusion For the reasons set forth above, we deny the portion of Petitioner’s” slip op. at 73
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“7 Petitioner presents argument that the term “pressure field generator” should be construed as a means-plus-function term limited to the following structure: at least one first chamber, at least one second chamber, and at least one connection element. Reply 25–26. As we find that it is not necessary to construe this term to resolve the issues before us, we do not address these arguments presented by Petitioner.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“disclosure of a suction cup “sealingly” receiving the vulva occurs when the vacuum is applied, not before. See Ex. 2034 ¶ 121. We disagree with Petitioner’s conclusion that “Taylor discloses that arm 26 ‘compresses . . . and then expands bellows 160’ after member 156 ‘sealingly’ engages the vulva.” Reply 9. The single statement in Taylor on which Petitioner relies states, with reference to Figure 3 set forth above in Section II.D.1, “[t]he first stimulator 154 includes a suction cup member 156 that conformingly and sealingly receives the upper portion of the vulva.” Ex. 1004, 5:29–31. We agree with Dr. Jensen that this does not support Petitioner’s conclusion that a seal is achieved before the vacuum is applied, and credit Dr. Jensen’s testimony that reads as follows as consistent with Taylor’s disclosure.” slip op. at 35
Patent outcomesUS 9,849,061 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,849,061 - Intel Corporation v. Pact XPP Schweiz AGAll claims unpatentablePTAB · Sep 8, 2021 · IPR2020-00540 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–6, 9, 24, 26, 27, 29, 30, 32, 42, 44, 73, and 74 are unpatentable as obvious under § 103.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“At least with respect to the portions of Dr. Mazumder’s declaration that supports Intel’s arguments on which we rely for our decision, and any cross-examination relevant to that testimony, we disagree that Dr. Mazumder was improperly recalcitrant, or demonstrated a lack of knowledge of the subject matter to the extent that it would discredit him as a credible expert witness. Given the circumstances, we also do not fault Dr. Mazumder for refreshing his recollection during cross-examination. Thus, we do not agree with PACT that we should, as a general proposition, disregard or give less credit to Dr. Mazumder’s testimony for these reasons.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Intel argues that a person of ordinary skill in the art “would have had at least an M.S. degree in electrical engineering, and at least three years of experience with multiprocessor systems design.” Pet. 14 (citing Ex. 1001 ¶ 72). Dr. Mazumder testifies that this level of skill “was the typical level of experience of persons working with multiprocessor systems, including the design of processor, cache, memory, and bus architectures, at the time of the alleged invention.” Ex. 1001 ¶ 72. Dr. Wolfe does not disagree, and in his declaration he applies Dr. Mazumder’s proposed articulation of the level of ordinary skill. See Ex. 2026 ¶ 40. For this decision, we adopt Dr. Mazumder’s uncontested declaratory testimony, which we find consistent with the level of technical expertise assumed by the ’807 patent disclosure and the asserted prior art references.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither Intel nor PACT argues that any claim terms need an explicit construction. See Pet. 5 (“Intel does not believe any terms need to be construed to resolve the prior art issues presented in this Petition.”). However, according to Intel, in the co-pending litigation the parties “stipulated that the preambles are not limiting” for all independent claims challenged in the Petition. Id. (citing Ex. 1014). PACT does not challenge this statement, and whether the preambles are limiting does not appear to be material to Intel’s contentions in the Petition. Absent a controversy, we do not need to explicitly construe any terms for our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that our decision involves interpreting claim language, we discuss that language below in our analysis of the claim limitations.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“(quoting Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)). Indicia on the face of the reference, such as a copyright date or ISBN number, “are considered as part of the totality of evidence.” Id. at 17–18 (citing Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1377 (Fed. Cir. 2018)). Based on the evidence as a whole, Intel has shown persuasively that the IEEE published the Barroso article in 2000 as part of a physical volume accessible to researchers in the field. In addition to having a copyright notice dated 2000, Barroso is part of a non-consecutively paginated article, bearing the ISBN number “1-58113-232-8.” Ex. 1005, 282. The document also provides instructions for copying and republication, and specifies a copying fee of $5.00. See id. We also find it credible that Mr. Grenier would be familiar with the publication practices of the IEEE in 2000, and the IEEE’s practices with respect to maintaining publication metadata for articles such as Barroso. Although we would reach this conclusion without the new evidence that Intel submitted with its Reply, this new evidence also supports our finding. We find credible the librarian testimony that copies of Barroso were publicly available in two university libraries before the earliest priority date of the ’087 patent. See Exs. 1053, 1054. We also find credible the testimony of Dr. Colwell that Barroso was well-known in the field, and that it is standard practice to submit a physical, bound copy of proceedings at the ISCA conference. Ex. 1055 ¶ 10. So the evidence suggests that about 230 people would have received a bound copy of Barroso at that time. See id. ¶ 9. Dr. Annavaram’s testimony, as a witness appearing on behalf of PACT in another case, corroborates this, although according to him, attendees to the ISCA conferences might have received an electronic copy rather than a bound copy. See Ex. 1051, 165:6–166:5. Thus, we find that Barroso was a printed publication at the time of the claimed invention.” slip op. at 21
Patent outcomesUS 9,037,807 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,037,807 - Intel Corporation v. Pact XPP Schweiz AGSome claims unpatentablePTAB · Sep 8, 2021 · IPR2020-00539 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1, 5, 6, 8, 12, 14–24, 28, 30, and 33 are unpatentable under the Nicol and Nicol–Bhatia obviousness grounds; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“2. Reason to combine Nicol and Bhatia Intel argues that a person of ordinary skill in the art “would have been motivated to combine the complementary teachings of Nicol and Bhatia” for the following four reasons: (1) both references “are directed to interrelated thermal and power management aspects that are critical and ubiquitous in processor-based systems,” Pet. 52–53 (citing Ex. 1008, code (54); Ex. 1009, 1:6–8; Ex. 1001 ¶¶ 231–233); (2) the references “both describe a flexible multiprocessor architecture in which software residing in a controller is programmed to selectively control the power supply of each processor, notably by dynamically adjusting the processor’s clock frequency during operation,” Pet. 53–54 (citing Ex. 1008, 2:18–27, 3:13–18; Ex. 1009, 1:57– 59, 2:28–31, 3:23–28, 3:33–38, 12:26–37; Ex. 1001 ¶¶ 231–233); (3) since Nicol “does not discuss over-temperature protection,” which is “critical for high-performance systems such as Nicol’s multiprocessor system,” a person of ordinary skill in the art “would have been motivated to consult Bhatia, which discusses well-known techniques of providing over-temperature protection,” Pet. 54–55 (citing Ex. 1008, 3:9–20, 4:11–13; Ex. 1009, 2:18– 22, 3:33–46; Ex. 1001 ¶¶ 231–233); and (4) a person of ordinary skill in the art “would have been motivated to consult Bhatia [to implement] low activity states in Nicol’s system as . . . means to further minimize power consumption,” Pet. 55 (citing Ex. 1009, 12:58–64; Ex. 1001 ¶¶ 231–233). In its Response, PACT argues that Intel’s four arguments “amount to little more than a suggestion that Nicol and Bhatia manage aspects of a computer system and it would be beneficial to combine these aspects,” which, “without any showing of actual motivation is plainly insufficient,” and “evidences application of impermissible hindsight bias.” PO Resp. 43– 44 (citing Ex. 2027 ¶ 110; Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018)). PACT also argues that Intel “makes no attempt to explain how a system combining Nicol and Bhatia would function, likely due to the fact that managing a plurality of metrics to create an efficient processing system is extremely difficult.” PO Resp. 44 (citing Ex. 2027 ¶ 111). Citing Dr. Mangione-Smith’s testimony, Patent Owner contends that a person of ordinary skill in the art “might spend their entire career developing intricate systems for managing processor temperature and clock frequency among a plurality of processors, and [Intel] dismisses it as a mere triviality.” Id. at 44–45 (citing Ex. 2027 ¶ 111).” slip op. at 58
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). For a combination of known elements that are not explicitly found together in the prior art, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). A successful petition must “articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR, 550 U.S. at 418); see also 35 U.S.C. § 322(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4) (2020).” slip op. at 16
Patent outcomesUS 9,552,047 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,552,047 - Intel Corporation v. Pact XPP Schweiz AGAll claims unpatentablePTAB · Sep 7, 2021 · IPR2020-00542 · APJ Sally C Medley · IPR · Final written decision
Claims 1–5, 8, 9, and 12–18 are unpatentable as obvious over the applied Song-based grounds; the Board did not reach the remaining grounds.
RulingsFinal written decision- 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) (citation omitted). Petitioner relies on the declaration testimony of Dr. Paul Franzon, who testifies that a person having ordinary skill in the art “would have been a person having at least a Master’s degree in Electrical Engineering, Computer Engineering or Computer Science with three years of industry experience in coupled processors, multi-level caches, and caches.” Pet. 14 (citing Ex. 1001 ¶ 39). Patent Owner’s declarant adopts Petitioner’s definition of a person having ordinary skill in the art. Ex. 2051 ¶¶ 16–17.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Claim 1 recites “an algorithm list buffer.” Ex. 1003, 169:9. Both parties agree that the plain meaning of an “algorithm list buffer” is a buffer that stores a list of algorithms. PO Resp. 14; Pet. Reply 4. We disagree with Patent Owner that an “algorithm list buffer” must be in the form of an interlinked list that points to tables that include instructions and data for the algorithm. PO Resp. 11–13 (citing Ex. 1003, code (57), 10:36–40, 19:22– 56, 19:32–59, Fig. 2). Claim 1 does not recite a list that points to tables that include instructions and data for the algorithm, and we decline the invitation to limit claim 1 to unclaimed features. See Ventana Med. Sys., Inc. v. BioGenex Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006) (“[E]ach claim does not necessarily cover every feature disclosed in the specification [and] it is improper to limit the claim to other, unclaimed features.”). Moreover, and importantly, claim 1 additionally recites that an algorithm “comprises a set of instructions for joint execution.” Ex. 1003, 169:2–4 (emphasis added). Patent Owner overlooks this lexicographic 13 Petitioner alternatively argues that to the extent the claimed “algorithm list buffer” requires “stor[ing] algorithm pointers” as Patent Owner alleges, Song’s fetch unit contains control flow instructions like “Jump to Subroutine” that a POSITA would have understood to point to a new subroutine to be executed. Id. at 5–6. For purposes of this Decision, we need not and do not consider this argument, because we determine that “algorithm list buffer” does not require “storing algorithm pointers.” definition of “algorithm” in presenting its arguments. Taking into account the additional claim limitation that an algorithm “comprises a set of instructions for joint execution,” and the parties’ agreement that an “algorithm list buffer” is a buffer that stores a list of algorithms, claim 1’s “algorithm list buffer” is a buffer that stores a list comprising sets of instructions for joint execution. Claim 1 does not, however, impose any particular organization on how sets of instructions may appear, or be organized, within such a list, or require that the sets have any particular structure at all, apart from appearing in the list and being “for joint execution.”” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“(citing Ex. 1013, 1:62–66; Ex. 1001 ¶¶ 99–100), 46–47 (citing Ex. 1013, 4:32–66, 5:42–6:20, Fig. 2; Ex. 1001 ¶ 103). Petitioner directs attention to Arimilli’s description that a multi-level cache allows the lower level cache (L2) to act as “an intermediary between memory 16 and the on-board caches, and can store a much larger amount of information (instructions and data) than the on-board caches can, but at a longer access penalty.” Id. at 45 (quoting Ex. 1013, 1:63–66). Petitioner further contends that the multi-level cache allows the L1 cache to be rapidly accessed for a small amount of data, and the L2 cache to be accessed for a larger amount of data but at a slower pace. Id. (citing Ex. 1001 ¶ 100). Petitioner argues, and we agree, that to the extent Song does not teach a “multi-level cache,” “[a]dding a second level of cache to Song’s system, like that disclosed in Arimilli, will allow it to ‘store a much larger amount of information’ (Ex. 1013, 1:62–66) than Song’s cache subsystem, and improve efficiency of data transfer by avoiding long memory access.” Pet. 45 (citing Ex. 1001 ¶ 100). Petitioner further argues that a POSITA would have been motivated to “include Arimilli’s cache slices within Song’s caches.” Id. at 46–47. Petitioner argues, and we agree, that read-write operations are improved when the cache is divided into a plurality of slices by allowing “more efficient read and write operations if parallelized into slices rather than serially with the entire cache.” Id. at 47 (citing Ex. 1013, 4:43–66; Ex. 1001 ¶ 103). Petitioner further argues, and we agree, that Arimilli’s sliced cache presents itself as a single cache, confirming that a POSITA would easily integrate Arimilli’s cache slices into Song with a reasonable expectation of success. Id. (citing Ex. 1013, 5:42–6:20, Fig. 2; Ex. 1001 ¶ 103).” slip op. at 45
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Franzon’s testimony that the prior art discloses an “algorithm list buffer,” because “his declaration simply parrots the Petition and he was purposefully evasive and nonresponsive throughout his deposition.” PO Resp. 23–27; Sur-reply 12. We have reviewed the arguments provided by Patent Owner and determine such arguments are insufficient for us to give little weight to Dr. Franzon’s declaration. Rather, it is within our discretion to assign the appropriate weight to be accorded evidence. See 37 C.F.R. § 42.65(a); see also, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); and Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”). Based on the record before us, we are not persuaded that we should give Dr. Franzon’s testimony little weight. For example, Patent Owner faults Dr. Franzon for merely “track[ing]” the Petition and failing to provide any independent analysis of the term “algorithm list buffer.” PO Resp. 23. First, we do not find that Dr. Franzon merely copied the Petition, rather, it is most likely that Petitioner incorporated his testimony into the Petition. Pet. Reply 9. Moreover, Patent Owner first raised the meaning of “algorithm list buffer” in connection with its Patent Owner Response, which came after Dr. Franzon’s initial declaration. PO Resp. 14–17. Accordingly, it is not unusual that Dr. Franzon did not analyze the term “algorithm list buffer” in his original declaration, as he all along applied the plain meaning of the term. Ex. 2053, 37:13–24. Lastly, we do not find that the few parts of Dr. Franzon’s cross-examination testimony that Patent Owner points to justifies us concluding that Dr. Franzon was so evasive in answering questions that we should not consider his testimony altogether.” slip op. at 28
Patent outcomesUS 9,170,812 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,170,812 - Intel Corporation v. Pact XPP Schweiz AGAll claims unpatentablePTAB · Aug 31, 2021 · IPR2020-00541 · APJ Sally C Medley · IPR · Final written decision
Claims 1–6 are unpatentable as obvious over Nicol and Kling; the Board did not decide the withdrawn grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“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) (citation omitted). Petitioner relies on the declaration testimony of Dr. Carl Sechen, who testifies that a person having ordinary skill in the art “would have been a person with at least a Master’s degree in Electrical or Computer Engineering (or equivalent), and three years of experience with processor design.” Pet. 10 (citing Ex. 1001 ¶¶ 83–85). Patent Owner adopts Petitioner’s definition of a person having ordinary skill in the art. PO Resp. 19. We accept the assessment offered by Petitioner and adopted by Patent Owner as it is consistent with the ’605 patent and the asserted prior art. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“Subsequent to the Decision to Institute, the District Court determined that the phrase “each of the plurality of data processing units . . . adapted for sequentially processing data” means “[s]equential data processors that pass results to one or more additional data processing units to perform additional computations.” Ex. 2026, 17, 19. The parties appear to agree with that construction. PO Resp. 8–9; Pet. Reply 8, 27. Petitioner’s showing in the Petition is consistent with the District Court’s construction, because the construction is similar to Patent Owner’s proffered construction and neither party indicates that there is a substantive difference between Patent Owner’s proffered construction and the District Court’s construction for purposes of deciding the issues in this proceeding. Pet. 30–32; PO Resp. 8–9; Pet. Reply 8, 27. Accordingly, for purposes of this Decision, we adopt the District Court’s claim construction for “each of the plurality of data processing units . . . adapted for sequentially processing data.”” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner’s arguments focus too narrowly on the individual embodiments shown and described in Nicol Figures 2 and 4, and do not adequately address Petitioner’s showings, which rely on Nicol as a whole. Pet. 25–29, 35–38, 40. For example, the Petition relies on an annotated Figure 4 to show and label different PEs (PE1 and PE2) for purposes of showing the claimed “a first processor” and “a second processor.” Pet. 36, 40. Notably, Petitioner does not rely on the passages related to Figure 4 that Patent Owner points to in arguing that Petitioner improperly mixes and matches embodiments, e.g., Exhibit 1009, 5:60–61, 5:67–6:2. Pet. 35–41. Furthermore, the Petition makes clear that Figure 3, which Petitioner primarily relies on to show setting of the clock frequency for the annotated Figure 4 system illustrates how the claim limitations are met. Id. Patent Owner’s incompatibility arguments are based on glossing over the teachings of Figure 3 altogether, while rigidly focusing only on certain descriptions of Figures 2 and 4. PO Resp. 17–19, 28–30. Indeed, Dr. Mangione-Smith’s testimony regarding the incompatibility of Nicol’s Figure 2 and Figure 4 embodiments does not mention Nicol Figure 3 at all. Ex. 2024 ¶¶ 37, 48–51. With this in mind, we address Patent Owner’s incompatibility arguments.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“motivated and found it obvious to combine the teachings of Nicol and Kling. Pet. 23–25, 42–45. For example, Petitioner contends, and we agree, that a POSITA would have been motivated to combine Kling’s over-temperature protection to Nicol’s multiprocessor system because it was known that overtemperature protection was critical for high-performance multiprocessor systems. Id. at 24, 42 (citing Ex. 1001 ¶ 127; Ex. 1009, 2:18–22, 3:9–20; Ex. 1010, 1:38–46; Ex. 1001 ¶¶ 127, 129, 182). Petitioner further contends, and we agree, that a POSITA would have been motivated to use temperature measurements to improve voltage scaling (taught in Nicol) and for over-temperature protection (taught in Kling). Id. at 42–43 (citing Ex. 1001 ¶ 186). Patent Owner first argues that “[m]ere benefit without any showing of actual motivation is plainly insufficient to suggest a POSITA would combine these reference[s].” PO Resp. 54–55 (citing Ex. 2024 ¶ 82). We are not persuaded by this conclusory argument, because “[i]f a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). In any event, Petitioner explains that a POSITA would have been motivated to combine Kling’s over-temperature protection to Nicol’s multiprocessor system because it was known that over-temperature protection was critical for high-performance multiprocessor systems. Pet. 24, 42 (citing Ex. 1001 ¶ 127; Ex. 1009, 2:18– 22, 3:9–20; Ex. 1010, 1:38–46; Ex. 1001 ¶¶ 127, 129, 182). We find, and it is not disputed, that over-temperature protection was critical for high-performance multiprocessor systems. Ex. 1010, 1:42–47 (explaining that if thermal monitoring is not included “the processor may destroy itself by its own heat”). Nicol describes that temperature tracking would be desirable in its power management system (see, e.g., Ex. 1009, 4:11–13 (explaining that “the operating system can reduce the supply voltage even further by tracking temperature and process variations”). Nicol, however, does not specifically provide details, and we give substantial weight to Dr. Sechen’s testimony that a POSITA would have been motivated to consult Kling and implement Kling’s over-temperature protection, which was known to be “critical for high-performance systems.” Ex. 1001 ¶ 127.” slip op. at 41
Patent outcomesUS 9,075,605 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,075,605 - Amazon.Com, Inc. / Amazon.Com LLC et al. v. VB Assets, LLCRehearing deniedPTAB · Apr 19, 2021 · IPR2020-01374 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show the panel misapprehended or overlooked a matter or abused its discretion.
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) (2019). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 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 Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).” slip op. at 2
NonePatents in suitUS 8,886,536 - PTAB · Mar 4, 2021 · IPR2020-00344 · APJ Barry L Grossman · IPR · Rehearing
The Board denied rehearing and upheld denial of institution because Grounds 7, 8, 11, and 12 lacked particularity, justifying denial of the entire petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. REQUEST FOR REHEARING When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of 1 The PTAB E2E docket system correctly identifies the denial of POP review as Paper “11,” dated “October 26, 2020.” This document itself, however, incorrectly states that it is “Paper 10.” In fact, “Paper 10” in the PTAB E2E docket system for this IPR proceeding is Patent Owner’s “RESPONSE TO PETITIONER’S REQUEST FOR REHEARING,” filed on August 21, 2020 See Paper 10. We note that Patent Owner was not authorized to file this response. See Consolidated Office Patent Trial Practice Guide (“Consolidated Practice Guide”), November 2019, 90 (“The opposing party should not file a response to a request for rehearing absent a request from the Board.”). No such request was made by the Board. Accordingly, Paper 10 will be expunged from this record and will not be considered in deciding Petitioner’s Request for Rehearing. discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). If an inter partes review is instituted, a final written decision under 35 U.S.C. § 318(a) must decide the patentability of all claims, and all grounds, asserted in the petition. SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition fails to identify with particularity what disclosure is relied on from each of the references in Grounds 7, 8, 11, and 12, how it would be combined with the other disclosures, and why the proposed combination would have been obvious to a person of ordinary skill in the relevant technology. Without any explanation as to what, how, and why the references would have been combined in Grounds 7, 8, 11, and 12, we, and the Patent Owner, are left to speculate as to the specific details of asserted unpatentability based on combining the references to arrive at the claimed invention. See Paper 7 (“Decision” or “Dec.”), 14 (citation omitted). We determined that “[t]he lack of particularity [in Grounds 7, 8, 11, and 12] infects the proceeding sufficiently that we do not institute an inter partes review.” Id. at 16–17.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“asserted unpatentability of the claims challenged in Grounds 7 and 8, and why it would have been obvious to combine selected disclosures from each of the three references. We have not been directed to any persuasive evidence that the Petition met this burden.” slip op. at 10
- Other 314aInstitution denied discretionary otherDenied
“Petition, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” See, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 6 (PTAB Mar. 20, 2020) (Precedential). Apple v. Fintiv was decided in the context of evaluating the factors related to a co-pending parallel district court proceeding. The same holistic view applies equally to situations where some claims meet the requirements for instituting a trial and some do not. While we consider the number of claims that fail to meet the statutory and other requirements to institute an inter partes review, as well as the number of claims that meet these requirements, there is no fixed threshold or ratio of claims that meet the requirements compared to those that do not meet the requirements that controls our determination, as suggested by Petitioner (see Req. Reh’g 2. The Patent and Trademark Office addressed this issue in its “SAS Q&As”, which stated: D3. Q: Will the Board institute a petition based on the percentage of claims and grounds that meet the reasonable likelihood standard, e.g., 50%? A: No. The Board does not contemplate a fixed threshold for a sufficient number of challenges for which it will institute. Instead, the panel will evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system (see 35 USC § 316(b)), the entire petition should be denied under 35 USC § 314(a). Ex. 3003, 8. As explained in our TPG, If a panel determines that a petition meets the standards for institution in relation to fewer than all the challenges presented, or where deficiencies in the petition (such as a failure to provide a construction under 35 U.S.C. § 112(f)) affect only a portion of the challenges presented, the panel will evaluate all the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied. TPG, 64. Where no trial is instituted, a decision to that effect will be provided, as was done in this proceeding. “The Board expects that the decision will contain a short statement as to why the standards were not met, although this may not be necessary in all cases.” Id. at 64–65.” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,918,801 - Amazon.Com, Inc. / Amazon.Com LLC et al. v. VB Assets, LLCInstitution deniedPTAB · Feb 24, 2021 · IPR2020-01388 · APJ Sean P O’Hanlon · IPR · Institution
Institution was denied for claims 1–23 because the Petition did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Institution of an inter partes review is authorized by statute only when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner will prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) “would have at least a Bachelor-level degree in computer science, computer engineering, electrical engineering, or a related field in computing technology, and two years of experience with automatic speech recognition and natural language understanding, or equivalent education, research experience, or knowledge.” Pet. 4 (citing Ex. 1002 ¶¶ 26–29). Patent Owner does not contest Petitioner’s definition or proffer an alternate definition. See generally Prelim. Resp. The level of ordinary skill in the art often is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Patent Owner also argues that the Petition does not set forth adequate rationale for modifying Cohen to include Yonebayashi’s alleged recognition of pronouns because Cohen’s system presents a “yes-no question” to the user and the “yes” answer is enough for Cohen’s system to reserve a rental car. Prelim. Resp. 18–19. We agree. Petitioner relies on Cohen’s disclosure of presenting to the user questions the answers to which are one word. Pet. 22 (citing Ex. 1012, 19:1–10, 19:24–31), 25 (citing Ex. 1012, 19:8–13, 19:24–34). In each of these examples cited by Petitioner, the user responds by saying “yes.” Ex. 1012, 19:11, 19:32. Petitioner does not explain persuasively why it would be obvious to change this one-word response to include additional words, including pronouns, or why this modification would be of any benefit. Furthermore, even if a user’s utterance were to include the other words as suggested by Petitioner, Petitioner does not explain persuasively why it would be obvious to modify Cohen’s system to look to those additional words instead of the uttered “yes” to which Cohen’s system already responds and which remains in Petitioner’s modified utterances. See Pet. 27 (suggesting that the user respond by saying “Yes, I need that” or “Yes, reserve it” (emphases omitted)).” slip op. at 20
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,269,097 - Amazon.Com, Inc. / Amazon.Com LLC et al. v. VB Assets, LLCInstitution deniedPTAB · Feb 4, 2021 · IPR2020-01380 · APJ Robert L Kinder · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 7–15, 21–24, and 30–33 obvious over Cohen, Hao, and Kennewick-II.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden of persuasion to prove unpatentability, by a preponderance of the evidence, of the claims challenged in the Petition. 35 U.S.C. § 316(e). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition and Patent Owner’s Preliminary Response shows that there is a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the Petition. 35 U.S.C. § 314(a).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) “would have at least a Bachelor-level degree in computer science, computer engineering, electrical engineering, or a related field in computing technology, and two years of experience with automatic speech recognition and natural language understanding, or equivalent education, research experience, or knowledge.” Pet. 4. Patent Owner does not contest Petitioner’s definition or proffer an alternate definition. See generally Prelim. Resp. The level of ordinary skill in the art can be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision.” slip op. at 8
- BurdenNot shown unpatentable
“Based on the record before us, we determine that Petitioner has not established that the combination of Cohen, Hao, and Kennewick-II teaches two limitations required by each of claims 1, 15, and 30. Our analysis below focuses on these two limitations.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Based on the record before us, Petitioner has not persuasively established a rational basis for this combination, nor does Petitioner show a reasonable expectation of success. Petitioner’s underlying premise is that Kennewick-II could “enhance how context is determined” in Cohen and Hao, but as explained above, Cohen and Hao do not disclose any determination of context based on the words “Yes” and “need.” Dr. Smyth testifies that “Hao and Cohen could implement Kennewick’s scoring algorithm to determine the most likely context of the user’s utterance where a word may have multiple possible interpretations.” Ex. 1002 ¶ 104. This logic fails for similar reasons. As noted, the relied-on portion of Hao is not even a spoken utterance. Further, we are not persuaded that the words “Yes” and “need” could have multiple interpretations such that applying Kennewick’s scoring algorithm to Cohen and/or Hao makes sense. We are not persuaded that a person of ordinary skill in the art would have found it obvious to incorporate Kennewick-II to “enhance how context is determined,” as there is nothing to enhance. We agree with Patent Owner that Petitioner never suggests that Cohen and Hao be modified to include context determination in the first instance. See Prelim. Resp. 21. Similarly, Petitioner does not explain persuasively how Kennewick’s scoring algorithm would improve the alleged context determinations based on the single words “Yes” and “need.” Id. Petitioner does not persuade us that Cohen or Hao’s ability to recognize “Yes” and “need” and act upon those words needs context determination. Petitioner has not shown how Kennewick-II would improve the interaction.” slip op. at 21
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,626,703 - Amazon.Com, Inc. / Amazon.Com LLC et al. v. VB Assets, LLCInstitution deniedPTAB · Feb 4, 2021 · IPR2020-01381 · APJ Robert L Kinder · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that Cohen, Hao, and Kennewick-II, with or without Partovi, taught required limitations of the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden of persuasion to prove unpatentability, by a preponderance of the evidence, of the claims challenged in the Petition. 35 U.S.C. § 316(e). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition and Patent Owner’s Preliminary Response shows that there is a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the Petition. 35 U.S.C. § 314(a). A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, any objective evidence of non-obviousness.1 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) “would have at least a Bachelor-level degree in computer science, computer engineering, electrical engineering, or a related field in computing technology, and two years of experience with automatic speech recognition and natural language understanding, or equivalent education, research experience, or knowledge.” Pet. 4. Patent Owner does not contest Petitioner’s definition or proffer an alternate definition. See generally Prelim. Resp. The level of ordinary skill in the art can be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner does not identify any claim term that requires construction. Pet. 7–8. Likewise, Patent Owner does not identify any specific term requiring construction to reach a resolution. Prelim. Resp. 3. For purposes of this Decision, and based on the record before us, we determine that no express construction of any term is necessary.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Based on the record before us, Petitioner has not persuasively established a rational basis for this combination, nor does Petitioner show a reasonable expectation of success. Petitioner’s underlying premise is that Kennewick-II could “enhance how context is determined” in Cohen and Hao, but as explained above, Cohen and Hao do not disclose any determination of context based on the words “Yes” and “need.” Dr. Smyth testifies that “Hao and Cohen could implement Kennewick’s scoring algorithm to determine the most likely context of the user’s utterance where a word may have multiple possible interpretations.” Ex. 1002 ¶ 112. This logic fails for similar reasons. As noted, the relied-on portion of Hao is not even a spoken utterance. Further, we are not persuaded that the words “Yes” and “need” could have multiple interpretations such that applying Kennewick’s scoring algorithm to Cohen and/or Hao makes sense. We are not persuaded that a person of ordinary skill in the art would have found it obvious to incorporate Kennewick-II to “enhance how context is determined,” as there is nothing to enhance. We agree with Patent Owner that Petitioner never suggests that Cohen and Hao be modified to include context determination in the first instance. See Prelim. Resp. 22. Similarly, Petitioner does not explain persuasively how Kennewick’s scoring algorithm would improve the alleged context determinations based on the single words “Yes” and “need.” Id. Petitioner does not persuade us that Cohen or Hao’s ability to recognize “Yes” and “need” and act upon those words requires context determination. Petitioner has not shown how Kennewick-II would improve the interaction.” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,626,703
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.