- Cerebras Systems Inc. v. Rex Computing, IncNo claims unpatentablePTAB · Oct 11, 2023 · IPR2022-00741 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–19 were not shown unpatentable under § 103 because the cited combinations failed to teach required router retention, scratchpad memory, or optimal square-versus-linear tile assignment limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the time the ’975 patent was filed. Pet. 6. Relying upon the Conte Declaration, Petitioner asserts a person of ordinary skill in the art would have had “a Bachelor of Science degree in electrical engineering, computer engineering, or a related subject matter, plus at least two years of professional experience in the field of microprocessor design or a similar field . . . and more experience would compensate for less formal education, and vice versa.” Id. (citing Ex. 1002 ¶¶ 27–30). Patent Owner applies this 2 Patent Owner does not identify any secondary considerations to be considered. assessment in its Response. Resp. 8. Based on the fully developed record, we accept the assessment offered by Petitioner because it is supported by the Conte Declaration and is consistent with the ’975 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“[W]e need only construe terms ‘that are in controversy, 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) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that no constructions are required for the above-disputed terms. slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed patent owner constructionDecided for patent owner
“above-described manner to store data. But Dr. Conte’s direct testimony does not address other statements in the ’975 patent specification that describe the scratchpad memory as an alternative to a cache. See Ex. 1001, 8:27–33 (“each of the cores includes a scratchpad memory . . . . As a result, conventional L-level caches may not be used in the architecture 299 because the scratchpad memories . . . provide data storage”); see also id. at 3:21–4:35 (describing drawbacks of prior art architectures that rely on caches), 5:14–20 (stating that each core may include a scratchpad memory instead of a cache). As Dr. Bagherzadeh stated, “Dr. Conte never reconciled [his] opinion with the ’975 Patent’s disclosure, which, as I described, connects the concept of using a scratchpad memory to a cache-less architecture.” Ex. 2001 ¶ 92 (citing Ex. 1001 Fig. 3). Dr. Conte’s deposition testimony did not clarify this issue, stating that the issue of cacheless architecture was “disconnected” from whether a microprocessor has a scratchpad. Ex. 2002, 40:10–15. The ’975 patent specification’s description of a scratchpad memory module as an alternative to cache memory is evidence that an ordinary artisan, upon reading the entirety of the ’975 patent, would not have considered the scope of the claimed scratchpad memory to include a cache memory. Dr. Conte has relied upon the ’975 patent specification for general properties seemingly common to both caches and scratchpad memory, but has not explained why the ’975 patent specification’s statements distinguishing a scratchpad memory from a cache should not limit the scope of the claimed “scratchpad memory.” As a result, Dr. Conte’s testimony does not significantly assist in construing “scratchpad memory” in any manner relevant to the pertinent issue; i.e., whether it may be taught by a prior art cache memory.” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“data “occurs in the router’s input buffer” (Pet. Reply 10 (emphasis added)), but Petitioner does not support this assertion with analysis or evidence. To the contrary, Petitioner has clarified that the “input” on which words wait is “the input of the processor,” not the router. Pet. Reply 12. Claim 1 requires that a router must be operable to retain such data (limitation [1g]), and that the processor cores are distinct from the routers (limitation [1a]). Thus, to the extent that MIT2002 teaches data waiting at the input of the processor, Petitioner has not pointed to evidence or reasoning persuasively showing that the claimed router is operable to retain a data packet, even if a buffer at the input of the processor is able to do so. Instead, Petitioner primarily relies on our preliminary determination, and on Patent Owner’s lack of argument to the contrary. Id. at 11–12. Neither of these act to satisfy Petitioner’s burden to show that MIT2002, in combination with the other applied references, teaches a router operable to retain data packets in the event of a traffic condition. Consequently, we are not persuaded that retention of data in the Raw system occurs at the router’s input buffer. For the above described reasons, we determine that Petitioner has not shown by a preponderance of evidence that the combined teachings of the applied references of this ground teach or suggest the “each router is operable to retain a data packet in the event of a traffic condition” limitation of [1g]. Accordingly, Petitioner has not demonstrated by a preponderance of the evidence that the subject matter of claim 1 would have been obvious.” slip op. at 24
Patent outcomesUS 10,355,975 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,355,975 - Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentablePTAB · Sep 1, 2023 · IPR2022-00650 · APJ Brian D Range · IPR · Final written decision
Claims 1–3, 5–8, 11–14, and 16 are unpatentable over the asserted anticipation and obviousness grounds.
RulingsFinal written decision- Additional discoveryAdditional discovery, deniedDenied
“To succeed, a motion to submit supplemental information pursuant to 37 C.F.R. § 42.123(b) must meet two requirements. First, the motion must show why the supplemental information reasonably could not have been obtained earlier. 37 C.F.R. § 42.123(b). Second, the motion must show that consideration of the supplemental information would be in the interest of justice. Id. As we explain below, Patent Owner’s motion fails to meet either requirement.” slip op. at 10
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“B. Patent Owner’s Objections to Petitioner’s Demonstrative Slides Patent Owner objects to a number of Petitioner’s demonstratives for oral argument because, for example, the demonstratives constitute evidence that Petitioner did not reference or discuss in a prior paper. See, e.g., Paper 29 passim. We have considered the objections. Demonstratives for oral argument, however, are not evidence. Paper 24, 2 (Order Setting Oral Argument); see also Consolidated Trial Practice Guide 84, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Demonstrative exhibits used at the final hearing are aids to oral argument and not evidence.”). We do not rely on demonstratives as evidence in our decision making; instead, we rely solely on the arguments properly presented in the parties’ briefs and the evidence of record. Because demonstratives do not affect our decision making, Patent Owner’s objections to the demonstratives likewise do not affect our decision making. We dismiss Patent Owner’s objections as moot.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennas used in RFID devices versus developing antennas used in RFID devices for inductive coupling). The specification of the ’304 patent describes its technical field as relating to a smart card that may comprise an RFID (radio frequency identification) chip with antenna components for operating in contactless modes. Ex. 1001, 1:37–54. The specification discusses both inductive and capacitive coupling. See, e.g., id. at 3:14–39. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be used by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Id. Thus, we are not persuaded that the level of ordinary skill should be confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Pet. 7.9” slip op. at 18
- Expert testimonyPetitioner expert creditedDecided for petitioner
“F. Dr. van der Weide’s Testimony Patent Owner argues that we should not give substantial weight to the testimony of Petitioner’s declarant, Dr. van der Weide, for several reasons. PO Resp. 45–51. Patent Owner first argues that Dr. van der Weide lacks relevant experience to provide opinions through the lens of a person having ordinary skill in the art. Id. at 45–46 (citing Ex. 2003 ¶ 96). According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. at 45. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. van der Weide’s experience exceeds even Patent Owner’s articulation of the level of ordinary skill in the art. Pet. Reply 25–27 (citations omitted). Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 19
Patent outcomesUS 9,633,304 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,633,304 - PTAB · Aug 16, 2023 · IPR2023-00272 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1–6, 8–12, and 14–18 are obvious over the Jing and Huang based combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB. Guidance Memo 3. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). Petitioner has offered to submit a Sotera stipulation in the parallel proceeding. See Ex. 1009. In addition, on July 17, 2023 the parties filed a Joint Motion to Stay All Deadlines and Notice of Settlement in the Current Action. See Current Action, Paper 96. The district court granted the motion” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“XI. CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will succeed on its challenges to claim the following challenges to patentability: Claims 1–3, 8, 9, 14, and 15 as obvious over Jing and Huang; Claim 4 as obvious over Jing, Hunag, and Foo Claims 10 and 16 as obvious over Jing, Huang, and Zhao Claims 5 and 6 as obvious over Jing, Huang, Foo, and Deng; and Claims 11, 12, 17, and 18 as obvious over Jing, Huang, Zhao and Deng. The factual findings and conclusions of law in this Decision are preliminary and based on the current record. They are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Our final decision as to the patentability of challenged claims will be based on the full record developed during trial, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in such a response may be deemed waived. XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes” slip op. at 35
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner describes a person of ordinary skill in the art (“POSITA” or “ordinarily skilled artisan”) at the time of the ’397 patent’s earliest claimed priority date as having “a Bachelor’s degree in electrical engineering, or an equivalent field, as well as at least 1-2 years of academic or industry experience in lighting design, including knowledge of light emitting diodes (LEDs) and related technology for driving LEDs.” Pet. 5 (citing Ex. 1004 ¶ 24). Petitioner also notes that “[a] person of ordinary skill in the art with a higher level of education may have fewer years of academic or industry 3 Chinese Patent No. CN203036295U to Jing (Certified Translation) (Ex. 1002). 4 US Patent No. 9,151,475 B2 (Ex. 1003). 5 US Patent No. 9,206,970 B2 (Ex. 1008). 6 PCT Publication No. WO2013/152485 A1 (Ex. 1005). 7 US Patent No. 9,970,640 B2 (Ex. 1007). 8 Chinese Patent No. CN203797412U to Deng (Certified Translation) Ex. 1006. experience, or vice versa.” Id. Patent Owner does not comment on the level of ordinary skill. See generally, Prelim. Resp. The level of ordinary skill in the art usually 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). As Petitioner’s description of an ordinarily skilled artisan appears to be commensurate with the subject matter of the ’397 patent and the references, we apply it for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“A. Disposed on Petitioner asserts that the term “disposed on” does not require explicit construction, but contends that the term “should be understood to include the possibility of an intervening structure, such as an adhesive.” Id. at 13. Petitioner notes that the Specification describes an embodiment in which the LED strip is described as disposed on an inner surface of the light tube and an embodiment in which a diffusion film is coated on an inner surface of the lamp tube, the LED light strip is disposed on an inner surface of the lamp tube, and a reflective film is described as disposed on an inner surface of the lamp tube. Id.; Ex. 1001, 4:30–31, 4:37–44, 12:21–25 (diffusion covering but not in contact with LED sources), Figs. 30–31. Petitioner’s unopposed construction is consistent with the use of the term “disposed on” in the Specification. For purposes of this Decision, we apply the construction proposed by Petitioner.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,830,397 - PTAB · Aug 16, 2023 · IPR2023-00271 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on challenged claims 1, 2, 6, 9–11, 13–15, 29–34, 36, and 39–41, finding a reasonable likelihood of success on the listed obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“C. Analysis Determining whether a non-party is a “real party in interest” demands a flexible approach that takes into account both equitable and practical considerations, with an eye toward determining whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner. Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018). Privity “is an equitable rule that takes into account the ‘practical situation,’ and should extend to parties to transactions and other activities relating to the property in question.” Id. at 1349 (emphasis Kyl)). Nevertheless, the mere existence of a relationship between Petitioner and Ruising is not sufficient—that relationship must be related to the lawsuit and be sufficiently close that it can be fairly said the petitioner had a full and fair opportunity to litigate the validity of the patent in that lawsuit. See WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1319 (Fed. Cir. 2018). On the record before us, the weight of the equities does not favor finding that the Petition is time-barred on the basis that Ruising is a privy, or real party in interest or because Petitioner is acting as a proxy for Ruising.” slip op. at 6
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“There is no evidence that Ruising is a real party in interest in this proceeding or that Petitioner pursued this proceeding as a proxy for Ruising. The outcome of the CH Lighting Action is independently on appeal to the Federal Circuit. Reply 2–3. The outcome of that appeal will affect Ruising directly. As Petitioner was not a party to the CH Litigation, Petitioner is not a party in the appeal. The Petition before us was filed only after Patent Owner sued Petitioner, and we determine that Petitioner is acting in its own defensive interest, not as a proxy for Ruising. Id. at 1. Petitioner also emphasizes that, notwithstanding any indemnity obligations, Petitioner prepared the Petition without any input or participation from Ruising and that Ruising has no control over this proceeding. Id. at 1, 5.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“exercise our discretion to deny the Petition in favor of the Current Action. Prelim. Resp. 19–26. The Board has held that the advanced state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Trial Practice Guide, 58 & n.2. We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” A decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and the associated evidence presented in the Petition and the Preliminary Response, for the reasons described below, we institute inter partes review.” slip op. at 2
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,295,125 - Apple Inc. v. Fintiv, Inc.InstitutedPTAB · Jul 10, 2023 · IPR2023-00398 · APJ George R Hoskins · IPR · Institution
Instituted IPR of claims 1–22 on the sole § 103 ground, finding a reasonable likelihood of prevailing on at least claim 1 over Dill, Vadhri, and Akashika.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Conclusion as to Claim 1 Based on the present record, we conclude Petitioner has provided sufficient argument and evidence in relation to the proposed obviousness of claim 1 over Dill, Vadhri, and Akashika, to demonstrate a reasonable likelihood that Petitioner would prevail with respect to this challenge at trial.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’196 patent “would have had a working knowledge of mobile payment systems and techniques,” as well as “a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development with a basic knowledge of accounting.” Pet. 4; Ex. 1003 ¶¶ 21–23. Further according to Petitioner: “Lack of work experience can be remedied by additional education, and vice versa.” Pet. 4; Ex. 1003 ¶ 22. The Preliminary Response does not dispute this aspect of the Petition. For purposes of this Decision, we determine a person of ordinary skill in the art “would have had a working knowledge of mobile payment systems and techniques” and “a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development with a basic knowledge of accounting,” as Petitioner proposes. Pet. 4. We are satisfied that this definition generally comports with the level of skill necessary to understand and implement the teachings of the ’196 patent and the asserted prior art. See Ex. 1003 ¶ 22; Ex. 2001 ¶¶ 33–35 (agreeing with this articulation of the level of ordinary skill).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner argues we should construe the term “mobile device” to mean a “physical device that is mobile, such as a phone or tablet.” Prelim. Resp. 8; Ex. 2001 ¶¶ 39–41. Patent Owner cites passages of the ’196 patent specification to support this argument. See Prelim. Resp. 8 (citing Ex. 1001, 11:32–33, 12:27–36); Ex. 2001 ¶¶ 40–41. Patent Owner proffers this claim construction because, according to Patent Owner, “the Petition (through its mappings [of the ’196 patent to Dill]) has implicitly raised the possibility that a ‘mobile device’ need not be a physical device, and need not even be mobile.” Prelim. Resp. 9–10 (citing Pet. 22–23, 33; Ex. 1005, Fig. 9); Ex. 2001 ¶¶ 39–41. At this stage, we agree with Patent Owner’s understanding of the “mobile device” claim term. Patent Owner’s construction generally accords with the term’s plain and ordinary meaning and is supported by the ’196 patent specification. See, e.g., Ex. 1001, 11:32–35, 12:27–36 (identifying a phone and a tablet as “mobile device” examples). We therefore apply Patent Owner’s construction in this Decision. Nonetheless, we disagree with Patent Owner’s argument that this construction leads to a deficiency in the Petition’s contentions concerning Dill, for reasons provided in Section III.G.1(a) below. In this Decision, for purposes of institution, we construe the term “mobile device” to mean a “physical device that is mobile, such as a phone or tablet.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Patent Owner argues we should construe the term “mobile wallet application” to mean a “wallet application installed on a SIM card or elsewhere on a mobile device.” Prelim. Resp. 10; Ex. 2001 ¶¶ 42–43. Patent Owner contends this corresponds to an express definition of the term in the ’196 patent specification. See Prelim. Resp. 10 (citing Ex. 1001, 7:14–16); Ex. 2001 ¶ 42. Patent Owner asserts its proffered construction also is consistent with the ’196 patent claims and specification, taken as a whole. See Prelim. Resp. 10–11 (citing Ex. 1001, Fig. 2, 11:32–40, 12:27–33). Patent Owner suggests that applying its proffered construction leads to a deficiency in the Petition’s contentions concerning Dill. See Prelim. Resp. 11, 18–19; Ex. 2001 ¶¶ 43, 51–52. At this stage, we agree with Patent Owner’s understanding of the “mobile wallet application” claim term. The ’196 patent specification states: “As used herein, a mobile wallet application is a mobile wallet application installed on a SIM card or elsewhere on a mobile device.” Ex. 1001, 7:14–16 (emphases added). For purposes of institution, we conclude this is an express definition of the claim term “mobile wallet application.” We therefore apply Patent Owner’s construction in this Decision. Nonetheless, we disagree with Patent Owner’s argument that this construction leads to a deficiency in the Petition’s contentions concerning Dill, for reasons provided in Section III.G.1(b) below. In this Decision, for purposes of institution, we construe the term “mobile wallet application” to mean a “wallet application installed on a SIM card or elsewhere on a mobile device.”” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,438,196 - Apple Inc. v. Fintiv, Inc.InstitutedPTAB · Jul 10, 2023 · IPR2023-00399 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted review of claims 1–22 on the ground that they would have been obvious over Dill, Vadhri, and Akashika.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“purposes of institution) that Dill, Vadhri, and Akashika, in combination, teach or suggest each limitation of independent claim 1, and that an ordinary artisan would have been motivated to combine these references in the manner proposed by Petitioner. We have considered Patent Owner’s arguments, but those arguments are unavailing at this stage for the reasons explained above. Accordingly, we are persuaded that Petitioner has shown a reasonable likelihood that it would prevail in establishing that the subject matter of claim 1 would have been obvious over Dill, Vadhri, and Akashika. As a result, we institute an inter partes review.” slip op. at 39
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to “a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development with a basic knowledge of accounting.” Pet. 4. Petitioner also asserts that an ordinary artisan “would have had a working knowledge of mobile payment systems and techniques pertinent to the ’488 patent,” and that a “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. at 3–4 (citing Ex. 1003 ¶¶ 21–23).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“On this record, we preliminarily determine that the term “mobile wallet” is a stored value account or prepaid access account that allows its owner to pay for goods and services. This construction is based on the Specification’s express definition of this term: The term “mobile wallet” or “mobile wallet account” refers to a stored value account or prepaid access account (PPA) that allows the owner (or “subscriber”) to pay for goods and services on the mFS platform from his or her mobile wallet account. Ex. 1001, 9:9–13; see id. at 6:30–35 (“mFS” refers to “mobile financial services”). Our construction is also consistent with the construction recently adopted by a district court. See Fintiv, Inc. v. PayPal Holdings, Inc., 6:22- cv-00288, Dkt #60 (W.D. Tex.) (claim construction order; included in the record as Exhibit 3002). At this stage, we discern no need to construe the larger phrase identified by Petitioner.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“purposes of institution) that Dill, Vadhri, and Akashika, in combination, teach or suggest each limitation of independent claim 1, and that an ordinary artisan would have been motivated to combine these references in the manner proposed by Petitioner. We have considered Patent Owner’s arguments, but those arguments are unavailing at this stage for the reasons explained above. Accordingly, we are persuaded that Petitioner has shown a reasonable likelihood that it would prevail in establishing that the subject matter of claim 1 would have been obvious over Dill, Vadhri, and Akashika. As a result, we institute an inter partes review.” slip op. at 39
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,208,488 - Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentablePTAB · Jul 6, 2023 · IPR2022-00417 · APJ Brian D Range · IPR · Final written decision
Claims 1, 2, 4–8, 10–12, and 18 are unpatentable as obvious over Takeda-322.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). The Specification of the ’250 patent describes its technical field as relating to a smart card that may comprise an RFID (radio frequency identification) chip with antenna components for operating in contactless modes. Ex. 1001, 1:37–54. The Specification discusses both inductive and capacitive coupling. See, e.g., id. at 3:14–39. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, we are not persuaded that the level of ordinary skill should be narrowly confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Pet. 7.5” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“testimony of Petitioner’s declarant, Dr. van der Weide, for several reasons. Patent Owner first argues that Dr. van der Weide lacks relevant experience to provide opinions through the lens of a person having ordinary skill in the art. PO Resp. 27–38 (citing Ex. 2003 ¶ 71). According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. Van der Weide’s experience exceeds even Patent Owner’s articulation of the level of ordinary skill in the art. Pet. Reply 22–23 (citations omitted). Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededTerm construed board ownMixed
“appears in independent claims 1 and 18) should be construed as “a component in a booster antenna for coupling with a module antenna connected to an integrated circuit.” PO Resp. 15–16. We determine that it is unnecessary to construe this claim term for purposes of this Decision. See, e.g., Nidec Motor Corp., 868 F.3d at 1017 (“[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))). As we explain herein, the preponderance of the evidence supports that Takeda-322 renders the recited “coupler coil” obvious even under Patent Owner’s proposed construction. See Section III(G)(2)(b), infra.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“to the extent Takeda-322 does not expressly teach a single wire implementation, such an implementation would have been obvious because it was a known, conventional, technique and because it would lead to obvious and predictable results while avoiding drawbacks of multiple wires. Id. at 11–12 (citing Ex. 1003 ¶¶ 59–63; Ex. 1012, 3:54–60, 4:26–36, 5:35– 60 (Ayala suggesting use of single wire)). Petitioner further argues, with supporting evidence, that a person of ordinary skill in the art would have had a reasonable expectation of success in achieving this implementation. Id. The preponderance of the evidence supports Petitioner’s argument that a person of ordinary skill in the art would have had both reason and a reasonable expectation of success in achieving this implementation, and Patent Owner does not dispute the argument. We, thus, determine that a single-wire embodiment of Takeda-322 would have been obvious.” slip op. at 26
Patent outcomesUS 9,033,250 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,033,250 - Linkedin Corporation v. Ebuddy Technologies B.V.No claims unpatentablePTAB · Jun 30, 2023 · IPR2022-00164 · APJ Jason M Repko · IPR · Final written decision
LinkedIn did not prove claims 1–3 and 6–10 unpatentable on any asserted Eaton- or Kim-based anticipation or obviousness ground.
RulingsFinal written decision- ExcludeOther
“In its Motion to Exclude, Patent Owner seeks to exclude Petitioner’s Exhibits 1017–1020, 1022–1026, 1030, 1032, 1033, 1034, and 1036. Mot. 1. Even without excluding any of these exhibits, Petitioner has not proven that any challenged claims are unpatentable. Thus, we dismiss Patent Owner’s Substitute Motion to Exclude as moot.” slip op. at 36
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s alternative definition that “a PHOSITA[3] would possess equivalent additional formal education such as graduate studies, or work experience to replace formal education” is unclear or, at best, does not meaningfully contribute to the first definition. See id. For example, Petitioner does not explain whether or how additional graduate studies would be both equivalent and additional to the education described in the first definition. See id. Patent Owner does not propose an alternative definition. See generally PO Resp.; Sur-reply. Thus, in this decision, we apply Petitioner’s proposed definition, without the alternative qualifier about “equivalent additional formal education . . . or work experience.” See Pet. 6. We determine that Petitioner’s definition is supported by the testimony of Dean Willis. Ex. 1004 ¶¶ 32–35.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We need only construe terms that are in controversy and only to the extent necessary to resolve the dispute. 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)). We need not construe any terms to resolve the issues in this case.” slip op. at 6
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We credit Dr. Rajeev Surati’s testimony6 (Ex. 2020 ¶ 2053) on this issue over Dean Willis’s testimony (Ex. 1004 ¶¶ 211–13) because Dr. Rajeev Surati’s testimony is more consistent with Kim’s disclosure and Dean Willis’s Declaration lacks an adequate explanation. Thus, Petitioner has not shown that Kim discloses the associating step.” slip op. at 16
Patent outcomesUS 8,230,135 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,230,135 - Linkedin Corporation v. Ebuddy Technologies B.V.No claims unpatentablePTAB · Jun 30, 2023 · IPR2022-00165 · APJ Jameson Lee · IPR · Final written decision
Claims 1–3 and 6–10 were not shown unpatentable because Eaton and Kim each failed to disclose the claimed array and alternative-title limitations, and the obviousness grounds did not cure those deficiencies.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“alternative” or “alternative title.” Neither party contends that “alternative” or “alternative title” is a term of art with an art recognized meaning. In plain English, “alternative” as an adjective designates something that is another option, another choice. Dictionary.com (accessed June 23, 2022), https://www.dictionary.com/browse/alternative (Ex. 3002) (“affording a choice of two or more things, propositions, or courses of action,” “(of two things, propositions, or courses) mutually exclusive so that if one is chosen the other must be rejected: The alternative possibilities are neutrality and war.”). The specification of the ’179 patent also consistently uses the word “alternative” to mean something in lieu of or in place of another choice. For instance, the ’179 patent describes: Advantageously, data associated with the event can also (or in the alternative) be provided to the title provisioning engine 616. Ex. 1001, 8:15–17 (distinguishing “also” from “alternative”). A given event may cause the title provisioning engine 616 to rewrite the entire title array 618 with title strings associated with the most recent events. Alternatively, a given event may cause the title provisioning engine 616 to append title strings to the end of the title array 618. Id. at 8:24–28 (using “alternative” in mutually exclusive context). slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“During oral hearing, counsel for Petitioner clarified that the index to an array may start from “0” rather than “1” and that the index also need not be a number. Tr. 18:13–19:19. With that clarification, counsel for Patent Owner indicated that there no longer is any dispute with regard to the meaning of “array.” Tr. 61:14–25. Accordingly, we have no need to construe the term “array.” 4. “event” The term “event” is recited in independent claim 1. The specification” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“reproduced above, are “event messages / strings 300 (shaded in green).” Pet. 30 (citing Ex. 1006 ¶ 31). But the cited evidence does not support that assertion. Paragraph 31 of Eaton describes the referenced column simply as “associated event 300.” Ex. 1006 ¶ 31. Further, even if the column stores associated event messages, Petitioner cites nothing to show that the associated messages in server memory column 300 are the event presence notification messages discussed above in the context of limitation 1[ii]. Alternatively, Petitioner relies on Eaton’s Figure 6 embodiment. Pet. 31. Petitioner asserts (id.) that in the Figure 6 embodiment server memory 160 stores an array of event notifications, referencing an annotated version of Eaton’s Figure 6, reproduced below: Figure 6 is a block diagram of an alternate embodiment of a server memory for use within a server of the instant message communication system, and Petitioner has shaded the EVENT AN–NN column green and the words “SERVER MEMORY” red. Ex. 1006 ¶ 19. Petitioner asserts that both the TOPIC N column 540 and the EVENT AN-NN column 670 as the stored event notifications. Pet. 31 (citing Ex. 1006 ¶¶ 56–58). But the assertion is not supported by the cited evidence. Paragraphs 56–58 of Eaton do not indicate that either topic entries 540 or event entries 670 are the event presence notification messages discussed above in the context of limitation 1[ii]. In its Reply, Petitioner asserts that event presence notification message EPNM “is associated with the character strings labelled Topics [1]- [N], and using ‘Topic N’ as the example, it is tied to ‘Event[s] AN-NN’ (representing the ‘events’ from the plurality of events 180 discussed in Claim 1[i]).” Reply 22. Even assuming that there is an association, Petitioner still has not shown that EPNM is any of Topics [1]-[N] in Figure 6. Similarly, Petitioner has not shown that EPNM is any of Event [1]-[N] in Figure 2.” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“’179 Patent as provided above in Ground 1. To the extent that there are arguably any meaningful differences between those claims and Eaton’s disclosures, those differences would have been trivial and obvious modifications to make for a PHOSITA.” Pet. 49. This conclusory assertion of obviousness does not specifically identify any difference between the claimed invention and Eaton, and does not provide any reasoning or rational underpinning to support the assertion. Conclusory assertions of obviousness are insufficient to satisfy Petitioner’s burden of proof. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Petitioner asserts that to the extent that Eaton discloses various, “distinct” embodiments, it would have been obvious to one with ordinary skill in the art to combine Eaton’s teachings into a single system. Pet. 49. Petitioner also asserts that one with ordinary skill in the art “would understand that Eaton discloses possible configurations and/or operations of the same system, and to the extent that it is argued or found otherwise, the functions would have been entirely obvious to combine for [one of ordinary skill in the art] given Eaton’s express disclosures.” Id. It is uncertain what distinct embodiments are referred to by Petitioner. However, even assuming that the disclosures of Eaton’s embodiments, already discussed by Petitioner, are properly combinable, there still remains the deficiencies, discussed above in the alleged anticipation of claim 1 by Eaton, relating to the step of storing the event notification in an array, the step of providing the event notification from the array to a process executed by a processor, and the step of providing an alternative title from the array to the process. Accord Inst. Dec. 57.” slip op. at 33
Patent outcomesUS 8,402,179 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,402,179 - Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentablePTAB · Jun 12, 2023 · IPR2022-00235 · APJ Stacey G White · IPR · Final written decision
Claims 1–7 are unpatentable: claims 1–7 over Takeda-322 under §§ 102 and 103, claims 1–6 over Murayama under § 102, and claim 7 over Murayama under §§ 102 and 103.
RulingsFinal written decision- Adverse judgmentDecided for patent owner
“Under the circumstances of this case, we do not agree that adverse judgment with respect to the disclaimed claims is appropriate. Our Rules, provide that a party may request judgment against itself. 37 C.F.R. § 42.73(b). Here, Patent Owner is not requesting adverse judgment against itself. While it is true that 37 C.F.R. § 42.73(b) provides that “[a]ctions construed to be a request for adverse judgment include . . . (2) [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial” (emphasis added), we decline to construe Patent Owner’s statutory disclaimer as a request for adverse judgment in this proceeding because Patent Owner does not disclaim all challenged claims and the majority of the challenged claims remain in this trial.” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). Petitioner points out that “the claims are not limited to a [Booster Antenna (BA)] operating at any particular frequency range.” Reply 25. In addition, Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, we are not persuaded that the level of ordinary skill should be narrowly confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1– 2 years of experience researching and developing antennas used in RFID applications.” Pet. 87.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“testimony of Petitioner’s declarant, Dr. van der Weide, because he “he lacks relevant experience, his testimony runs counter to fundamental principles of the RFID technology disclosed in the ’932 patent, and his testimony evidences a lack of candor.” PO Resp. 46. According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. Van der Weide’s experience exceeds even Patent 7 We further note that our final determination, on the merits, would be the same even under Patent Owner’s definition of the level of ordinary skill in the art. Owner’s articulation of the level of ordinary skill in the art. Reply 25–27. Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner asserts that “[n]o claim term requires an exact outer boundary construction, because the prior art relied upon herein meets the claim terms under any reasonable interpretation.” Pet. 9. Patent Owner proposes constructions for the claim terms “booster antenna,” “card antenna component,” “coupler coil component,” and “extension antenna component.” PO Resp. 25–45. According to Patent Owner, Petitioner also has proposed its own constructions for these terms, despite stating that no claim term requires construction. Id. at 25–26. We address “booster antenna” and “extension antenna” below.8 It is unnecessary to construe “card antenna component” or “coupler coil component” in this Decision 8 Patent Owner also argues that Petitioner belated construes “card body” in Petitioner’s Reply. Sur-Reply 16–18. We do not construe “card body” because this construction is not necessary to resolve this matter. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). because none of the parties’ disputes turn on the meaning of either term. See, e.g., Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 13
Patent outcomesUS 9,195,932 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,195,932
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.