- Mercedes-Benz USA, LLC v. Daedalus Prime LLCSome claims unpatentablePTAB · Feb 4, 2025 · IPR2023-01335 · APJ William V Saindon · IPR · Final written decision
Claims 1–5, 7, and 13 are unpatentable over Conroy and Finkelstein or Conroy; claims 14–18 were not shown unpatentable over the asserted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are not inclined to adopt Patent Owner’s proposal to require a specific number of years (or a fully bounded range) in the definition of the level of ordinary skill in the art. First, Patent Owner has not offered any legal authority supporting or justifying its position. Second, using the term “at least [X] years” is common practice and generally understood to be an approximation regarding the minimum level of skill of a hypothetical person—in other words, no precision can truly be expected of the specific number of years in this context. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“The person of ordinary skill in the art is a hypothetical person.”). The point of the exercise is to provide context for a holistic obviousness analysis. See id. (setting out “various factors” used to analyze the level of ordinary skill); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”); Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1453 (Fed. Cir. 1984) (the hypothetical person is an “an imaginary being possessing ‘ordinary skill in the art’ created by Congress to provide a standard of patentability”). We are not persuaded of a need for strict precision in the number of years of experience of a hypothetical person used in our analysis in this case. Third, Patent Owner asks for no particular relief based upon its argument. That is, even if we agreed to remove “at least,” Patent Owner does not argue that the outcome of the Decision would be any different.1 In conclusion, we apply Petitioner’s proposed level of ordinary skill because it is reasonably consistent with the level of skill implied in the disclosure of the ’833 patent and the cited prior art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Pet. 10. Patent Owner provides a construction for the term “independent” of claim 1. PO Resp. 12–18. For context, claim 1 requires first and second domains, wherein “each of the first and second domains [] operate at an independent voltage and frequency.” Patent Owner provides its analysis and concludes that claim 1 requires that the voltage and frequency of the first and second domains to be “controlled separately from one another.” PO Resp. 14, 15. We disagree with Patent Owner’s conclusion. In particular, we note that Patent Owner is attempting to add a “control” limitation to the claim. The claim does not require independent control of the first and second domains, it requires them “to operate at an independent voltage and frequency.” That is, by the plain language of the claims, what is independent is the voltage and frequency of the first domain compared to the voltage and frequency of the second domain. Patent Owner identifies many passages in the ’833 patent specification allegedly supporting its position, but we do not find any of these passages persuades us to agree with Patent Owner’s position. See PO Resp. 12–14 (citing Ex. 1001, 1:13–17, 1:63–66, 7:59–62, 8:27–31, 8:38– 46, 10:4–8). These passages mostly state that the domains are independent, which we understand to mean “separate” in this context. Ex. 1001, 1:63–66, 7:59–62, 8:27–31, 8:38–46, 10:4–8; accord PO Resp. 14 (summarizing these citations and concluding that “the term ‘independent’ is used in its ordinary sense to mean ‘separate.’”); Ex. 2002 ¶ 33 (same). One passage is similar to the claim language, and recites that a core can be “of an independent power domain and can be configured to operate at an independent voltage and/or frequency.” Id. at 8:27–31. We see nothing in these passages that would require independent control as opposed to “operate at an independent voltage and frequency” as claimed. Instead, in the one passage that is similar to the claim language, it is clear that what is “independent” is the “voltage and/or frequency.” Id. at 8:27–31. Patent Owner then cites to another batch of passages from the ’833 patent and concludes that “a person of ordinary skill in the art would recognize that the ’833 patent is describing a situation in which voltages and/or frequencies of the different domains are controlled separately from one another.” PO Resp. 14–15 (citing Ex. 1001, 1:56–60, 1:63–66, 2:22–25, 2:32–36, 5:9–12, 5:21, 5:27–44, 7:20–24, 8:38–42, Fig. 1; Ex. 2002 ¶ 33). Most of these passages describe the domains being allocated portions of a power budget. See Ex. 1001, 1:56–60, 2:22–25, 5:28–40, 7:20–24, 8:38–42. One passage is similar to the prior batch of citations, stating that the domains themselves are independent. Id. at 1:63–66. Other passages describe a power control unit doing the allocation, and refers to this as “control.” Id. at 2:32–36, 5:27–26, 5:21, 5:40–44. Last cited by Patent Owner is Figure 1, which has a box labeled “Control First and Second Domains Frequency and Voltage.” Id., Fig. 1 (item 130). Reviewing the cited passages and the figure, we find that the power control unit allocates or controls power. However, the claim is not directed to the power control unit and it does not use the word “control.” The claim requires the first and second domains to have independent voltages and frequencies, and we fail to see any support in the specification to add an additional requirement for independent control of the first and second domains. In view of the above, we are not persuaded by Patent Owner’s” slip op. at 9
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“claim 13, it is the domain that is allocated the power budget (as opposed to the domain’s individual cores). See Ex. 1001, 12:57–59 (“allocate a variable power budget between the . . . domains”), 1:56–66 (explaining domains— “the term ‘domain’ is used to mean a collection of hardware and/or logic that operates at the same voltage and frequency point”). We agree with Patent Owner and credit its expert that Nussbaum is concerned with the power settings of each individual core, GPU, or other computational unit. Ex. 2003 ¶ 63. Even if, in one passage, Nussbaum talks about power reallocation in “computational units, such as the CPU or [GPU],” in context it is clear that the allocations remain on the individual, e.g., core, level. Ex. 1007 ¶¶ 19– 20, 21 (Table 1), 23 (Table 2), 24. First, in the sentence just cited, Nussbaum disparages treating units homogenously, i.e., adjusting them in groups or domains (as required by claim 13). Id. ¶ 19. Then, Nussbaum praises distributing power “among the active cores or other computational units,” i.e., on an individual or core level. Id. In this phrase, Nussbaum is not using “computational units” as a word meaning “CPU,” because Nussbaum already directly references the “cores” in the phrase. Id. Nussbaum later discusses figuring out how each core reacts to power changes, in order to determine which cores can better exploit additional power. Id. ¶¶ 25–28. For these reasons, we credit the testimony of Patent Owner’s expert that Nussbaum does not disclose allocating power to a plurality of cores as a single domain (Ex. 2002 ¶ 63), which is consistent with the above-noted disclosures of Nussbaum.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“not address these passages of the Petition. See generally PO Resp. 57–59, Sur-reply 17–18. Instead, Patent Owner challenges a separate, general rationale that Petitioner made at the beginning of its ground. See Pet. 69. Rationales that are broad and general may be persuasive. Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797 (Fed. Cir. 2021) (“[R]ationale[s] [are] not inherently suspect merely because [they’re] generic in the sense of having broad applicability or appeal. Quite the opposite.”). We need not evaluate Petitioner’s general rationale here, however, because we find Petitioner’s unrebutted, specific rationale arguments about providing a user interface to edit or revise the power sharing values to be persuasive. See Pet. 77–78 (citing, e.g., Ex. 1029 ¶ 236). In particular, we agree with Petitioner that providing a user interface to allow a user to edit the power tables, as taught in Finkelstein, would have been a routine and obvious modification to Conroy. As Petitioner’s expert points out, even beyond the teachings of Finkelstein, it was known in the art to allow users control over power allocation. Ex. 1029 ¶ 236 (citing Ex. 1026, 11:13–27 (describing a “user preferences database” containing “parameters and procedures for how to apportion power among various devices”); Ex. 1028 ¶ 17 (“The [power allocation] preference might be determined . . . based on a selection by a user of the system (e.g., via a graphical interface).”)). Thus, Petitioner’s proposed combination is an example of using a known feature to provide a known benefit. The known feature is a user interface, and the known benefit is allowing the user to indicate their preferences through the interface. See Ex. 1029 ¶ 236; KSR, 550 U.S. at 417 (“[A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.”). Based on the record before us, we determine that Petitioner has established a reason with rational underpinnings for combining the user level control interface of Finkelstein with the power management system of Conroy.” slip op. at 33
Patent outcomesUS 8,775,833 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,775,833 - Mercedes-Benz USA, LLC v. Daedalus Prime LLCAll claims unpatentablePTAB · Jan 24, 2025 · IPR2023-01344 · APJ Gregg I Anderson · IPR · Final written decision
Claims 1–17 are unpatentable: claims 1, 3–7, 11–13, and 15–17 over Sinharoy; claims 2 and 10 over Sinharoy and Xu; and all challenged claims under the listed Tang grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“In the Institution Decision we determined Petitioner’s description was consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of that decision, we adopted Petitioner’s proposal in the Institution Decision. Inst. Dec. 10–11. Now Patent Owner argues for a “more precise definition” offered in the Horst Declaration and adopted in the Brogioli Declaration. PO Resp. 6–7 (citing Ex. 2002 ¶ 25). effects any patentability issue. The only difference between the two is the addition of “two years of experience working with multicore processor systems, central processing unit (CPU) , cache, and memory systems” as the experience level of a person of ordinary skill in the art. Compare Inst. Dec. 10–11 (citing Pet. 8) and Ex. 1007 ¶ 30 and Ex. 2001 ¶ 25. No mention of the difference between the two levels of ordinary skill is made in any of the papers filed. Regardless, inasmuch as both experts agree to the level of ordinary skill, we find the experience associated with the level of ordinary skill is “two years of experience working with multicore processor systems, central processing unit (CPU) , cache, and memory systems.” The level of education is unchanged from the Institution Decision.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We are not persuaded to change our preliminary construction. First, Patent Owner misstates our construction of “single caching agent” by adding the language “each associated with a corresponding one of the plurality of cores.” That language is present in the claim as a separate limitation. See Section I.E (limitation [1g]) above. This added language is not present in our preliminary construction, which states only that a “single caching agent” means “one caching agent for the processor, which may be formed from distributed portions.” Inst. Dec. 12. Thus, that each “single caching agent” is “associated with a corresponding one of the plurality of cores” is a separate limitation. Second, none of the above citations to the ’895 patent is contrary to our construction. Our construction states that a “single caching agent” is recited. That is what is repeated in Patent Owner’s citations. Third, the ’895 patent’s description of Figure 6 explains that a “single caching agent” may be formed from distributed portions, as do the claim limitations in question. See Ex. 1001, 6:35–37. Other than tacking on the second recitation of “distributed portions” to the “single caching agent” portions” part of our construction is incorrect. The Brogioli Declaration repeats the above citations to the ’895 patent” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“In an IPR, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication.” Nobel Biocare Services AG v. Instradent USA, Inc., 903 F. 3d 1365, 1375 (Fed. Cir. 2018) (citing Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)). “A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it.” Medtronic, 891 F.3d at 1380 (citations, quotations, and alterations omitted). The evidence of record supports our finding that Xu was publicly available at an IEEE conference occurring from November 14 through 15, 2011. Ex. 1013 ¶¶ 8–11, Ex. A (Xu). Xu has a copyright date of 2011 which, although not dispositive of the date of public accessibility, is relevant evidence of public accessibility at the conference. Ex. 1005, 1. Exhibit 1014 confirms the conference dates of November 14–15, 2011, which antedates the December 31, 2011, critical data that Patent Owner asserts for the ’895 patent (PO Resp. 26; see Reply 13–14) and the December 13, 2011, priority date of the ’895 patent (Ex. 1001, at code [63], 1:5–7). Ex. 1014. Whether or not Exhibit 1019 is hearsay or authenticated, the MacPherson Declaration and IEEE Explore evidence is sufficient to show that Xu was available at the November 14–15, 2011 conference. The Motion to exclude Exhibit 1019 is denied as moot. slip op. at 41
- ExcludeMotion to exclude, deniedDenied
“The evidence of record supports our finding that Xu was publicly available at an IEEE conference occurring from November 14 through 15, 2011. Ex. 1013 ¶¶ 8–11, Ex. A (Xu). Xu has a copyright date of 2011 which, although not dispositive of the date of public accessibility, is relevant evidence of public accessibility at the conference. Ex. 1005, 1. Exhibit 1014 confirms the conference dates of November 14–15, 2011, which antedates the December 31, 2011, critical data that Patent Owner asserts for the ’895 patent (PO Resp. 26; see Reply 13–14) and the December 13, 2011, priority date of the ’895 patent (Ex. 1001, at code [63], 1:5–7). Ex. 1014. Whether or not Exhibit 1019 is hearsay or authenticated, the MacPherson Declaration and IEEE Explore evidence is sufficient to show that Xu was available at the November 14–15, 2011 conference. The Motion to exclude Exhibit 1019 is denied as moot.” slip op. at 41
Patent outcomesUS 9,575,895 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,575,895 - PTAB · Jan 8, 2025 · IPR2024-00799 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1–36 on all asserted grounds, finding a reasonable likelihood of success on at least one claim based on obviousness over Nguyen, Zadesky, Oda, and Gettemy.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). CTPG, 59. Nonetheless, the Consolidated Trial Practice Guide recognizes that more than one petition may be necessary “for example, when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references. In such cases two petitions by a petitioner may be needed, although this should be rare.” Id. The present circumstance is consistent with the exception referenced in the Consolidated Trial Practice Guide. There is a dispute about the effective filing date of the ’602 patent (see IPR2024-00798), which requires arguments to be made under multiple prior art references. Although Patent Owner cites some non-precedential cases denying multiple petitions when there was a priority dispute (Prelim. Resp. 52), we do not find the reasoning in those cases persuasive. Instead, we find the reasoning in the cases Petitioner cites to be persuasive. See Medtronic, Inc. v. Teleflex Innovs. S.A.R.L, IPR2020-00130, Paper 20 at 11–13 (PTAB June 26, 2020); NRG Energy, Inc. v. Midwest Energy Emissions Corp., IPR2020-00832, Paper 17 at 16–18 (PTAB Oct. 26, 2020). Additionally, we do not believe that considering the two petitions will unduly burden the Board. Moreover, the arguments presented in the Petition regarding the combination of Nguyen, Zadesky, Oda, and Gettemy, based on the current record, are compelling. See Section II.F.5. Accordingly, we decline to exercise our discretion to deny institution of the Petition.8” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We also do not agree that Gettemy is substantially the same as either Oda US Pub or Hoshi. According to Patent Owner, “Gettemy, at best, teach[es] a stacked configuration of engine and battery, and art teaching a stacked configuration of engine and battery was considered and specifically distinguished during prosecution of the ’602 Patent, and are thus even further cumulative of the considered art.” Prelim. Resp. 42 (citing Ex. 2001 ¶ 136). Patent Owner argues that Oda US Pub and Hoshi also teach a “stacked configuration of battery and engine such that the input buttons are not above and adjacent the battery as well as the engine.” Prelim. Resp. 42–44. However, as discussed below in Section II.F.5.f, we do not agree with Patent Owner’s argument that Gettemy teaches a stacked battery and engine. Instead, based on the current record, we determine that Gettemy teaches that “a user input section located above the engine section and a battery” and that “the user input section is located adjacent the battery and the engine section.” Id. Because that design materially differs from Oda US Pub and Hoshi, Gettemy is not substantially the same as those references.11 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics 11 Because Gettemy is not substantially the same as a reference that was previously considered by the Office, we need not consider Patent Owner’s remaining arguments regarding other references Petitioner is relying on. framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although Patent Owner proposes a different formulation of the person having ordinary skill in the art than Petitioner, Patent Owner argues that it “does not believe the ultimate definition of a [person having ordinary skill in the art] impacts the issues presented herein for the purposes of Institution.” Prelim. Resp. 11 (citing Pet. 11). Accordingly, “Patent Owner does not dispute Petitioner’s definition.” Id. Petitioner’s recitation of the level of ordinary skill is consistent with the invention disclosed in the ’602 patent. It is also not disputed by Patent Owner at this time. Prelim. Resp. 10. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.6” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,473,602 - PTAB · Jan 8, 2025 · IPR2024-00798 · APJ Scott B Howard · IPR · Institution
Instituted IPR of claims 1–36 because Petitioner showed a reasonable likelihood of proving at least one challenged claim obvious over McClure-997.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Petitioner filed a document which ranks the petitions in the instant case and IPR2024-00799. Paper 4 (Statement Regarding Multiple Petitions). Specifically, Petitioner ranks this Petition as the first petition we should consider. Id. at 1. Additionally, Petitioner argues that we should consider multiple petitions because (1) the two petitions are based on different prior art based on the ’602 patent having different effective filing dates and (2) there are a large number of claims. Id. at 1–5. Patent Owner argues that the Board routinely denies institution of multiple petitions even when there is a dispute as to the effective filing date. Prelim. Resp. 45–47. Patent Owner further argues that Petitioner has not sufficiently explained why it could not have addressed all of the claims in a single petition. Id. at 47. Because this is the first ranked petition (Paper 4, 1), we do not exercise our discretion to deny this petition on the basis of multiple parallel petitions. Although Patent Owner has presented arguments why Petitioner may not be entitled to two petitions,12 Patent Owner does not persuasively argue why we should not institute on at least one of the ranked petitions.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner argues that a person having ordinary skill in the art “would have had either (1) a bachelor of science in industrial design or mechanical engineering and three years of experience designing mobile phones or (2) a master of science in industrial design or mechanical engineering and two years of experience in designing mobile phones.” Prelim. Resp. 9–10 (citing Ex. 2001 ¶ 24). Patent Owner further argues that “[a] person with a different degree but with additional relevant experience could still qualify if the additional experience compensates for the different educational background.” Id. at 10 (citing Ex. 2001 ¶ 24). Alternatively, Patent Owner argues that “[a] person with less experience designing mobile phones could still qualify if the person has additional education that compensates for their lesser experience.” Id. (citing Ex. 2001 ¶ 24). Although Patent Owner proposes a different formulation of the person having ordinary skill in the art than Petitioner, Patent Owner argues that it “does not believe the differences in the definition of a [person having ordinary skill in the art] impact the issues presented herein for the purposes of Institution.” Prelim. Resp. 10 (citing Pet. 16). Accordingly, “Patent Owner does not dispute Petitioner’s definition.” Id. Petitioner’s recitation of the level of ordinary skill is consistent with the invention disclosed in the ’602 patent. It is also not disputed by Patent Owner at this time. Prelim. Resp. 10. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.6” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that the “[c]laims should be construed according to the ordinary and customary meaning as understood by a” person having ordinary skill in the art. Pet. 16. Petitioner also proposes a construction of the term “housing . . . forming enclosed exterior lateral sides and a rear side.” Id. at 17. “Patent Owner agrees that the claims should be construed according to the ordinary and customary meaning as understood by a” person having 6 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. ordinary skill in the art. Prelim. Resp. 10. Patent Owner further argues that there is no need to construe the “housing” limitation at this time. Id. at 11. For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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))).7” slip op. at 10
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,473,602 - Mercedes-Benz USA, LLC v. Daedalus Prime LLCNo claims unpatentablePTAB · Jan 8, 2025 · IPR2023-01343 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–7, 13–15, 17, and 18 were not shown unpatentable because Bose and White, alone or in the asserted combinations, failed to teach claimed workload comparisons or workload monitoring.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We are persuaded and find for the reasons given that Petitioner fails to prove by a preponderance of the evidence that White teaches or suggests “receiving a bus workload for a communication bus and a first processing element workload for a first processing element based on an integrated circuit reaching a limit.” Patent Owner’s expert Dr. Brogioli testifies that “[t]he workload is a function of the demands imposed by, e.g., applications running on the system, and may or may not be subject to direct control, whereas the conditions under which that workload is processed are controlled directly.” Brogioli Decl. ¶ 66. We agree with Dr. Brogioli and find that White’s frequency and voltage monitoring and adjustments do not result in the power management logic receiving the bus workload as recited in claim element 4[a]. Id. ¶¶ 64–66. We find the testimony of Mr. Wyatt on this issue unconvincing. Wyatt Decl. ¶ 103. In support of his opinion that “monitoring the operating voltages and frequencies of the logic core 120A and common logic bridge 110 is monitoring the workload of those components,” he states: “It was well understood that operating frequency and voltage of a component reflect the activity and use, or workload, of that component.” Id. However, he does not provide any evidentiary support for this statement. We, therefore, give it little weight. See PTAB Consolidated Trial Practice Guide 40 (Nov. 2019)5 (“Opinions expressed without disclosing the underlying facts or data may be given little or no weight.”) (citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)).” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“response. Paper 9. At the institution stage, therefore, Patent Owner did not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 12–13. In its Response, Patent Owner states that it “uses this definition” in its analysis. PO Resp. 15 (citing Brogioli Decl. ¶ 25). In view of the foregoing, for this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’494 patent and the prior art of record, and is supported by the testimony of Mr. Wyatt. See Wyatt Decl. ¶ 21.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionGranted
“Post-institution, Patent Owner proposes a construction for the term “workload.” PO Resp. 15–16. Patent Owner contends that “[a] person of ordinary skill in the art would understand that in the ’494 patent, the term ‘workload’ means ‘an amount of activity over a quantum or period of time.’” Id. at 15. Dr. Brogioli’s testimony supports this construction, as does Mr. Wyatt’s. Brogioli Decl. ¶¶ 36–38; Wyatt Dep. 34:14–36:9. The ’494 patent also supports this construction. Ex. 1001, 8:20–22, 9:60–63. Petitioner does not dispute this proposed construction in its Reply. For the reasons given, we adopt Patent Owner’s construction for “workload.”” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Nowhere does Petitioner or its expert point to an explicit disclosure in Bose of making a comparison of the claimed “bus workload and a bus workload threshold.” Instead, Petitioner relies on its expert’s opinion as to what a person of ordinary skill might have known, without any additional supporting evidence. See, e.g., Pet. 26 (“[A person of ordinary skill] would have understood global PMCU compares a workload threshold as exemplified by the predicted power and performance of each power mode and the monitored workload to select and adjust the power mode of a component” (citing Wyatt Decl. ¶¶ 54–55)). This opinion is not supported by the record. The only disclosure of a comparison in Bose that we have been shown is the comparison of PowerTotal to PowerMax in step 303 of Figure 3, which Petitioner does not rely on to meet the “comparison” limitation in the claim. Hearing Tr. 17:16–20. Also without proper support is Petitioner’s assertion that “a [person of ordinary skill] would have understood that in Bose, selecting or adjusting power mode for a component entails comparing a workload threshold, such as predicted power and performance associated with each power mode with real time statistics, such as the monitored workload of a component.” Pet. 26 (citing Wyatt Decl. ¶¶ 55–56). We determine that for the reasons given, Petitioner fails to demonstrate by a preponderance of the evidence that the claimed comparison element 1[g] of claim 1 is taught or suggested by Bose. We find, therefore, that Petitioner has not demonstrated that claim 1 is anticipated by Bose, nor has Petitioner demonstrated that to a person of ordinary skill, claim 1 would have been obvious in light of Bose.” slip op. at 25
Patent outcomesUS 8,898,494 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,898,494 - Mercedes-Benz USA, LLC v. Daedalus Prime LLCAll claims unpatentablePTAB · Jan 8, 2025 · IPR2023-01333 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–24 are unpatentable as obvious over Sutardja, Sutardja and Rychlik, or Sutardja and Carmack; the Board did not reach the Mathieson-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 14–15.” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We decline to “throw out” Dr. Horst’s testimony for several reasons. First and foremost, Patent Owner has not moved or otherwise sought to exclude his testimony, or even filed an objection. Hearing Tr. 46:19–47:1. Thus, the issue of whether the testimony should be excluded is not properly before us. Further, Petitioner asserts that “[t]his distinction is irrelevant.” Pet. Reply 2. We agree. Patent Owner has not pointed to any opinion by Dr. Horst that turns on the alleged “flaw” in the definition of the person of ordinary skill. Id. at 46:19–48:3. Finally, there is no prejudice. Patent Owner’s expert used the definition proposed by Patent Owner in his analysis. See Brogioli Decl. ¶ 25. Nor could Patent Owner show us with specificity any place in the record where resolving this dispute would make a difference in this case. Hearing Tr. 46:3–47:3. For the reasons given, we do not see the need to modify our definition of a person of ordinary skill or to exclude or give little weight to Dr. Horst’s opinions.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionGranted
“operating system.” PO Resp. 12–13. Relying on the Microsoft Computer Dictionary, Patent Owner contends that “[a]n ‘operating system’ is, and would be understood by a person of ordinary skill in the art to be, ‘The software that controls the allocation and usage of hardware resources such as memory, central processing unit (CPU) time, disk space, and peripheral devices.’” PO Resp. 13 (citing Ex. 2007, 378). Dr. Brogioli’s testimony generally supports this construction, as does Dr. Horst’s. See Brogioli Dep. 8:17–22; Horst Dep. 32:3–8. Petitioner responds that the term “should be understood in accordance with its plain meaning,” and therefore does not require construction, but does not dispute Patent Owner’s proposed construction. Pet. Reply 2. For the reasons given, we adopt Patent Owner’s construction for “operating system.” However, we do not see this construction as dispositive of the central issue of whether the operating system in Sutardja controls the transition of the cores. See Section II.D.1, infra. slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“PMS module do not ‘control’ the core switching module or the hardware on which it runs. Instead, the kernel and the PMS module only make system calls to the core switching module.” PO Resp. 27. We disagree that this is not sufficient control to meet this claim limitation. As Dr. Horst’s testimony (quoted supra) explains, the PMS module and kernel modules “trigger a transition” by generating a call to the hypervisor module or a core switching module. Horst Decl. ¶ 124. Patent Owner’s argument fails because it assumes the claims require direct control, when the claims recite no such restriction (nor have we been asked by either party to construe the claims as such).” slip op. at 28
Patent outcomesUS 10,049,080 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,049,080 - PTAB · Jan 7, 2025 · IPR2024-01043 · APJ Gregg I Anderson · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “does not believe the ultimate definition of a [person of ordinary skill in the art] impacts the issues presented herein for the purposes of Institution.” Prelim. Resp. 11. Patent Owner proposes a similar description but “does not dispute Petitioner’s definition.” Id. (citing Ex. 2001 ¶ 25). At this stage, we agree that the level of ordinary skill is not at issue here. Petitioner’s undisputed definition is supported by the testimony of both experts and is consistent with the ’741 patent and the asserted prior art. Accordingly, for trial, we apply Petitioner’s articulation.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“distinguishes temporarily activated applications from “fully activated” applications. How a person of ordinary skill in the art would have understood “without fully activating the application” is not contradicted by Patent Owner’s arguments. The plain and ordinary meaning of the claim language does not require a change in the application, only that it is not “fully activated.” Petitioner’s understanding comports with the words of the claim. For purposes of this Decision, we find the term “without fully activating the application” included in limitation 1c is construed based on its plain and ordinary meaning, i.e., the application selected in the locked mode “cannot perform its full set of operations.”3 2. Remaining Terms We do not need to construe any remaining claim term at this time, and we apply the plain and ordinary meaning, as would have been understood by a person of ordinary skill in the art, in the context of the ’741 patent. Any other term that may require construction should be identified and construed during trial. Failure to do so may result in forfeiture of the issue for purposes of a final decision.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner argues a person of ordinary skill in the art “would have been motivated to apply Nirhamo’s user-selection teachings with Hassan because Hassan teaches the user selecting icons to determine whether or not the associated application or operation was permitted.” Pet. 28 (citing showings for limitations 1c/11c/17c; Ex. 1003 ¶ 63). Further, Petitioner argues “[i]f the user’s selection was not highlighted in some fashion, it would have been difficult for the user to navigate the device interface (e.g., computer interface), as there would not be a clear way for the user to discern whether the correct object had been selected.” Id. (citing Ex. 1003 ¶ 63). On this record, Petitioner has shown a rationale with sufficient underpinnings to combine Hassan and Nirhamo.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,918,741 - PTAB · Dec 11, 2024 · IPR2024-00848 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 10, 11, 15, 16, 20–22, 44, 47–49, 51–54, 58–60, and 62–64, finding a reasonable likelihood of unpatentability on all challenged grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 10, 11, 15, 16, 20–22, 44, 47–49, 51–54, 58–60, and 62–64 in the ’808 patent on all challenges included in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner has applied Petitioner’s description of an ordinarily skilled artisan because the Preliminary Response “does not depend on this skill level.” Prelim. Resp. 27. Patent Owner “reserves the right to argue in favor of different level of skill should trial be instituted.” Id. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’808 patent as well as the asserted references. See Ex. 1003 ¶ 24.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Based on the current record, we agree with the parties that the term “skip coding mode” includes “a coding mode in which a zero (non-active) motion vector or a non-zero (active) motion vector is associated with each skip mode macroblock, depending on the characteristics of the motion in image segments surrounding the macroblock in question.” See Ex. 1001, 17:45–52; Ex. 1022, 5–10, 15; Pet. 12–14; Prelim. Resp. 29. “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no other claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Analogous artInstituted
“Karczewicz teaches limitation 10a. See Pet. 17–25; Ex. 1003 ¶¶ 79, 155–174. As Petitioner asserts, Karczewicz discloses the following “coding options” or “coding modes” that collectively correspond to the claimed “skip coding mode”: (i) “[t]he segment may be represented as a prediction field only” that “may arise when the segment can be adequately represented in terms of the motion field of one or more of its previously coded neighbors and no refinement information is necessary, or in a case where the encoder has found it efficient to reduce the refinement field to zero”; and (ii) “[t]he segment can also be coded by using a zero motion vector field, e.g., a copy from the reference frame.” Ex. 1006, 17:8, 17:10–14, 31:22–24, 55:18–23; see Ex. 1003 ¶¶ 79, 158–161, 164, 169, 170–171; Pet. 21–22. For each of these “coding options” or “coding modes,” an encoder transmits no motion coefficients to a decoder and the MCI bit is zero, indicating the absence of motion coefficients. Ex. 1006, 17:8, 17:10–14, 31:22–24, 37:5–8, 37:12–13; see Ex. 1003 ¶ 169. Karczewicz also discloses “assigning” these “coding options” or “coding modes” based on a rate-distortion, best-match evaluation as follows: “a comparison between the amount of data of required a) to transmit motion coefficient data determined specifically for the second segment and b) that required if the second segment’s motion vector field is determined from a projection of the motion model of the first segment plus some ‘refinement’ information.” Ex. 1006, 15:15–20; see id. at 14:12–17, 15:22–25, 17:2–4, 19:2–5; Ex. 1003 ¶ 159. Based on the current record, an ordinarily skilled artisan would have found it obvious to combine these “coding options” or “coding modes” because the combination “minimizes the number of bits needed to encode the segment (e.g., utilizing the zero motion vector when appropriate, otherwise utilizing the prediction motion vector field, without refinement, when encoding motion information for the segment).” Ex. 1003 ¶ 170.” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,532,808 - PTAB · Dec 11, 2024 · IPR2024-00847 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1, 2, 6, 7, 9, 23–25, 28–30, 32, 34, 36, 39–41, 43, and 65, finding a reasonable likelihood of unpatentability on the petition’s § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1, 2, 6, 7, 9, 23–25, 28–30, 32, 34, 36, 39–41, 43, and 65 in the ’808 patent on all challenges included in the Petition.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Karczewicz teaches limitation 1a. See Pet. 17–24; Ex. 1003 ¶¶ 79, 93–115. As Petitioner asserts, Karczewicz discloses the following “coding options” or “coding modes” that collectively correspond to the claimed “skip coding mode”: (i) “[t]he segment may be represented as a prediction field only” that “may arise when the segment can be adequately represented in terms of the motion field of one or more of its previously coded neighbors and no refinement information is necessary, or in a case where the encoder has found it efficient to reduce the refinement field to zero”; and (ii) “[t]he segment can also be coded by using a zero motion vector field, e.g., a copy from the reference frame.” Ex. 1006, 17:8, 17:10–14, 31:22–24, 55:18–23; see Ex. 1003 ¶¶ 79, 96–99, 102, 110, 112–113; Pet. 21–22. For each of these “coding options” or “coding modes,” an encoder transmits no motion coefficients to a decoder and the MCI bit is zero, indicating the absence of motion coefficients. Ex. 1006, 17:8, 17:10–14, 31:22–24, 37:5–8, 37:12–13; see Ex. 1003 ¶ 111.” slip op. at 31
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“See Pet. 2 n.2, 3–4; Prelim. Resp. 18, 37 n.13. Patent Owner relies on the ’072 provisional to antedate Frojdh. Prelim. Resp. 37 & n.13. If a patent owner relies on an earlier application to antedate a reference, the patent owner must “show not only the existence of the earlier application, but why the written description in the earlier application supports the claim,” i.e., “all the limitations” in the claim. Tech. Licensing, 545 F.3d at 1327. Although Patent Owner notes that the ’808 patent claims the benefit of priority to the ’072 provisional’s March 15, 2002, filing date, Patent Owner does not the show why the ’072 provisional’s written description supports any of the challenged claims. See Prelim. Resp. 12–24, 37–39, 37 n.13. Based on the current record, Patent Owner has not shouldered its burden to antedate Frojdh’s November 27, 2002, filing date. See id. Hence, based on the current record, Petitioner establishes a reasonable likelihood that Frojdh qualifies as prior art because Frojdh’s November 27, 2002, filing date precedes the ’549 application’s March 14, 2003, filing date. See Ex. 1001, code (22); Ex. 1007, code (22).” slip op. at 46
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“how the combined disclosures in Frojdh and H.263 teach the claimed subject matter. See Pet. 65–75. Further, Petitioner identifies reasons that would have prompted an ordinarily skilled artisan to combine Frojdh’s teachings with H.263’s teachings with a reasonable expectation of success in achieving the claimed subject matter. See id. at 61–64. Dr. Havlicek’s testimony supports Petitioner’s positions. See Ex. 1003 ¶¶ 303–337.” slip op. at 61
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,532,808 - Tiktok Inc. v. Cellspin Soft, Inc.InstitutedPTAB · Oct 1, 2024 · IPR2024-00767 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted inter partes review of claims 1–16 on all asserted grounds, finding a reasonable likelihood that the claims are obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. See 10 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). 11 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (Dec. 1, 2020) (“Sotera”). Ex. 1034 (Guidance) 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 11
- Other 314aDecided for petitioner
“Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“On this record, we find that Petitioner has adequately demonstrated that the Examiner erred in a manner material to patentability. This follows from our finding that on the current record, Petitioner has shown a reasonable likelihood that the challenged claims are not entitled to a priority date earlier than December 4, 2021 and would have been obvious over Singh129 and Singh906. See infra Section III.F. We find Patent Owner’s assertion that the Examiner understood that “[a]dding the Bluetooth feature to the existing mobile application is the reason for [the] ‘incorporated reference’ in Cellspin’s disclosure” is not supported on this record, including because Patent Owner does not cite any portion of the prosecution history that reflects this alleged understanding. Prelim. Resp. 21. For the above reasons, we decline to exercise our discretion to deny inter partes review under § 325(d).” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Conclusion – Ground 1 After considering the arguments and cited evidence of record, we determine that for purposes of institution, Petitioner sufficiently shows that the combination of Hiroishi, Kahn, and Bluetooth teaches or suggests each limitation of claims 1–16, and that a person of ordinary skill in the art would have had a reason to combine the teachings of these references with a reasonable expectation of success. See, e.g., Pet. 16–60. Accordingly, on this record, Petitioner shows a reasonable likelihood of prevailing on Ground 1, and on this basis, we institute an inter partes review of all challenged claims. See 37 C.F.R. § 42.208(a).” slip op. at 49
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,659,381
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.