- PTAB · Dec 13, 2024 · IPR2024-00896 · APJ Andreas Baltatzis · IPR · Institution
The Board instituted review of claims 25–29 on all petitioned grounds, finding a reasonable likelihood that the claims would have been obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review to be instituted unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-Reply, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of claims 25–29 of the ’120 patent, based on all of the grounds identified in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“raised in the petition and in the parallel proceeding.” Fintiv, Paper 11 at 12. Petitioner stipulates that “[i]f the PTAB institutes the pending IPR in IPR2024-00896 challenging the patentability of claims 25–29 of the ’120 Patent, then Samsung will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR” in the co-pending district court litigation. Ex. 1046 (citing Sotera, Paper 12, 16–19) (emphasis added). Petitioner’s stipulation is not identical to that in Sotera and we decline to expand the categorical resolution of Fintiv outside the Director’s clear language. See Fintiv Guidance. Nevertheless, Petitioner’s stipulation here mitigates certain concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions. Thus, factor 4 weighs strongly in favor of not exercising discretion to deny institution.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“For this reason, we find there is a material difference between the asserted art (Li) and the prior art involved during examination (Xu). See Becton, Dickinson, 17–18. Additionally, we do not agree with Patent Owner that substantially the same argument—that Li teaches the “idle power consumption” limitation—was considered by the Examiner. Rather, the Examiner’s finding that the prior art did not teach the “idle power consumption” limitation in the reasons for allowance (Ex. 1004, 189) indicates the absence of overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art. See Becton, Dickinson, 17–18. Because there is a material difference between Li and Xu, and Li raises an issue not previously identified by the Examiner, we are not persuaded that the same or substantially the same art or the same or substantially the same arguments previously were presented to the Office.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“On this record and for the purposes of institution, we preliminarily adopt Petitioner’s interpretation of the plain and ordinary meaning of the claims as consistent with the intrinsic evidence. Specifically, we preliminarily interpret “idle power consumption” as including power consumption during which the transceiver may be waiting to send data, whether the transceiver is on or off. The ’120 patent Specification refers to idle time as time during which the transceiver may be waiting to send data, whereby “[e]ven if the idling transceivers turn off their transmission chains, some idle power may be consumed due to leakage current or other effects.” Ex. 1001, 2:60–66, 3:5–7. The ’120 patent does not appear to define “idle power consumption” as requiring the circuitry to be powered on while “waiting to send data” nor exclude circuitry that is powered off while claims. We invite the parties to further address this issue at trial.13” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,798,120 - Commscope Technologies LLC v. Belden, Inc.No claims unpatentablePTAB · Dec 11, 2024 · IPR2023-01056 · APJ Kimberly Mcgraw · IPR · Final written decision
CommScope did not prove claims 1–3, 9–14, and 16–18 unpatentable; the asserted anticipation and obviousness grounds failed on the barrier tape’s conductive material extending to the lateral edges.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“would have had a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in connection with designing, manufacturing, and testing of twisted-pair data cables,” and an “individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1-2 years).” Pet. 15 (citing Ex. 1006 ¶ 12). Prior to institution, Patent Owner’s declarant asserted that a POSITA would have had at least a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in the telecommunications industry and disagreed that industry experience specifically with respect to twisted-pair data cables was necessary to qualify as having ordinary skill in the art. Ex. 2001 ¶ 26 (cited at Prelim. Resp. 22 n.6). Patent Owner stated, however, that any differences between the parties’ proposed definitions “are insubstantial and do not impact the analysis of the issues presented.” Prelim. Resp. 22 n.6. In our Decision on Institution, we adopted Petitioner’s proposal of a person of ordinary skill in the art (POSITA) as someone that “would have had a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in connection with designing, manufacturing, and testing of twisted-pair data cables,” and an “individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1-2 years).” Inst. Dec. 7–8. During the trial, neither party disputed our definition of a POSITA nor argued that the outcome of this case would differ based upon our adoption of any particular definition of a POSITA. See generally Reply; PO Resp. 12 n.4 (agreeing the POSITA definition does not impact analysis of issues presented). Upon review of the full record, we see no reason to modify, and we thus maintain, the definition of a POSITA applied in our Decision on Institution.” slip op. at 10
- Expert testimonyDecided for patent owner
“Petitioner’s arguments are not persuasive. Mr. Cornelison’s testimony that a POSITA would understand that the tape shown in Figure 13C “has three layers aligned along the side edges” is not credible. See, e.g., Ex. 1006 ¶ 138. Mr. Cornelison’s testimony that Figure 13C is only “intended to identify and illustrate the three different layers of the multi-layer tape,” not to show the relative positions of the layers relative to each other (id. ¶ 137), is belied by his own testimony, in which he states that Figure 13C shows “metallic layer 133 extends to the front edges of dielectric layers 135 and 137 (id. ¶ 136). Additionally, neither Petitioner nor Mr. Cornelison provide persuasive evidence to support the contention that it would take “much more time and be more complex to make all three layers” in Figure 13C offset from each other or that it would be more costly to make than using the customary slitting processes. See Ex. 1006 ¶ 138. Although Mr. Cornelison provides evidence as to how the slitting process can be used to manufacture barrier tape, he does not provide any evidence to support his contention that the proposed slitting processes is in fact less expensive or complex than other methods. See Ex. 1006 ¶ 138. Indeed, Mr. Cornelison does not address the particular methods disclosed in Glew to manufacture the disclosed multi-layer tapes nor persuasively explain why these disclosed methods would be more costly or complex as compared to the “slitting” process. Ex. 1008 ¶¶ 199–201 (stating the multi-layer tapes can be manufactured in a “variety of ways” including bonding the various layers using adhesive or other bonding agents,” mechanically affixing or bonding the layers, needlepunching, thermal bonding, ultrasonic welding, or calendar bonding). We determine that this portion of Mr. Cornelison’s testimony is conclusory and unsupported and is entitled to little weight. Accordingly, Petitioner has not sufficiently shown that Glew discloses conductive material that extends to the lateral edges of the dielectric material as required by claims 1 and 18. As such, Petitioner has not shown a by a preponderance of the evidence that Glew anticipates independent claims 1 or 18 or the challenged claims that depend therefrom.” slip op. at 42
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Thus, although the Specification does not use the term “lateral edge,” the Specification and figures of the ’030 patent make clear, that in the embodiments having a conductive layer that extends to the edges of the dielectric layers of the tape, the referred to “edge” is the edge of the “long side” of the tape that extends in the longitudinal direction. See, e.g., Ex. 1001, 7:49–51 (stating in some embodiments conductive layer 302 may not extend to the edge of tape 110), 8:1–25 (stating, inter alia, pairs 102 could electrically couple to the corresponding edge 306 resulting in increased ANEXT), 8:41–46, 10:30–36 (stating that the tape edge lies over a pair of conducts and the pair generates more ANEXT). Our construction of term “lateral edge” is supported by Roberts, which also refers to the edges of the long side of the tape extending in the longitudinal direction as the “lateral edges.” See, e.g., Ex. 1009, 2:20–24 (“a shield made from a plurality of tapes helically disposed, the lateral edges of which overlap adjacently lying tapes”), 2:42–46 (“a shield composed of a plurality of …, the lateral edges of which overlap adjacently disposed tapes”), 4:27–33 (“the plastic-coated metal foil shield (15) [FIG. 2] has lateral edges that overlap,” “the lateral edges of the shield overlapping one another”), 4:34–40 (“The lateral edges of the helically disposed tapes [of FIG. 3] overlap adjacently lying tapes.”), 5:65-75 (“the shield (15) [of FIG. 10] is made up of a plurality of tapes, the lateral edges of which overlap adjacently disposed like tapes”), Figs. 2, 3, 10. We credit Dr. Eldering’s testimony that these disclosures of Roberts shows that a POSITA would understand that a tape’s “lateral edges” are the edges running along the sides of the tape parallel to the longitudinal direction. See Ex. 2001 ¶¶ 64–65; see also Thales Visionix, Inc. v. United States, 415 F.3d 1335, 1348 (Fed. Cir. 2020) (considering whether the proposed claim construction is “consistent with the prior art’s usage of that term”).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“contentions set forth in its Petition are insufficient to show that Cook discloses a barrier tape having a conductive material contained between two layers of dielectric material where the conductive material extends to each lateral edge of the two layers of the dielectric material, as required by claims 1 and 18, and further that the conductive material be continuous as required by claim 1. We agree with Patent Owner that Petitioner relies on multiple disparate embodiments of Cook for each of these limitations without sufficiently articulating how a single embodiment satisfies the requirements of claim 1 or 18 or articulating how the disparate embodiments may be combined to arrive at claim 1 or 18. See, e.g., PO Resp. 18–25; Pet. 18–21; see also NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (stating in order to establish anticipation, “it is not enough that the prior art reference . . . include multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention” and that the “reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference”).” slip op. at 29
Patent outcomesUS 9,991,030 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,991,030 - PTAB · Nov 22, 2024 · IPR2024-00885 · APJ Jamie T Wisz · IPR · Institution
The Board instituted review of claims 1–4 and 15–25 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), the Board “may not authorize an inter partes review to be instituted unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Preliminary Reply and Sur-Reply, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of claims 1–4 and 15–25 of the ’515 patent, based on all of the grounds identified in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSA”) as of the claimed priority date would have “had at least a bachelor’s degree in animal science, biological engineering, electrical engineering, or computer science, or a related or equivalent field, and three or more years of experience researching, developing, designing and/or evaluating RFID tracking and sensor systems for livestock management.” Pet. 5–6 (citing” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“c) Analysis At this preliminary stage, we agree with Patent Owner’s arguments as to the plain and ordinary meaning of “implanted in an animal,” meaning implanted within the animal rather than on the animal. Although we agree encompassing RFIDs attached or implanted “on or within” an animal, the plain language of the claim expressly recites “in,” which, on the present record, we determine corresponds to “within” as described by the ’515 patent Specification. We apply that understanding to our discussion of Petitioner’s challenges below.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. Additional Claim Terms For purposes of this Decision, we determine that no other claim terms require express construction. See 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,823,515 - PTAB · Nov 22, 2024 · IPR2024-00875 · APJ Andreas Baltatzis · IPR · Institution
The Board instituted IPR on claims 1–4, 6, and 17–20 on all petitioned grounds, finding a reasonable likelihood that at least one claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), the Board “may not authorize an inter partes review to be instituted unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Preliminary Reply and Sur-Reply, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of claims 1–4, 6, and 17–20 of the ’206 patent, based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSA”) as of the claimed priority date would have “had at least a bachelor’s degree in animal science, biological engineering, electrical engineering, or computer science, or a related or equivalent field, and three or more years of experience researching, developing, designing and/or evaluating RFID tracking and sensor systems for livestock management.” Pet. 6 (citing 4 In the present record, neither party presents arguments or evidence relating to secondary considerations. characterization. See Prelim. Resp. 13. On this record and for the purposes of institution, we determine this level of skill, with the exception of the open-ended phrases “at least” and “or more,” which we remove from Petitioner’s proposal, comports with the qualifications a person would have needed to understand and implement the teachings of the ’206 patent and the prior art of record.” slip op. at 18
- BurdenDecided for petitioner
“regarding alternative constructions of limitation 1[E].6 See Prelim. Resp. 13– 15. Instead, Patent Owner asserts that Petitioner’s presentation of arguments relating to alternative constructions is an independent reason to deny the Petition under 37 C.F.R. § 42.104(b). Id. at 14–15 (citing 37 C.F.R. §42.104(b)(3)–(4) (“[E]very petition must identify ‘[h]ow the challenged claim is to be construed’ and ‘[h]ow the construed claim is unpatentable.’”)). Patent Owner argues that Petitioner does “not inform the Board which of the two constructions they believe to be correct, nor do they provide any substantive argument as to how the Board should proceed with construing the terms.” Id. at 14. c) Analysis We are not persuaded by Patent Owner’s argument to deny the Petition under 37 C.F.R. § 42.104(b). Rule 42.104(b) requires identifying how the challenged claims are to be construed and how the construed claims are unpatentable. Petitioner presents arguments and evidence alleging claims 1 and 17 are unpatentable under either of the constructions it discusses.7 Accordingly, on this record and for the purposes of institution, Petitioner has met the requirements of Rule 42.104(b).” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningTerm construed patent owner constructionDecided for patent owner
“Patent, the ‘sensed animal information’ must be retrieved from an ‘RFID device’ that is ‘implanted in an animal’ or ‘implanted in a plurality of animals.’” Prelim. Resp. 51; see e.g., Ex. 1001, 18:45 (claim 2), 20:29 (claim 17). Patent Owner asserts that “implanted in an animal” requires “implantation inside of an animal.” Prelim. Sur-Reply 2. Patent Owner argues that this interpretation is consistent with the plain meaning of the claims and the ’206 patent Specification. See id. at 2–3. For example, Patent Owner argues that the ’206 patent Specification “distinguishes between implanted ‘on’” and “implanted ‘within’ (i.e., ‘in,’ as recited in the claims).” Id. at 3 (citing Ex. 1001, 8:8–13).” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,844,206 - PTAB · Nov 22, 2024 · IPR2024-00723 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–12 on both asserted obviousness grounds, finding a reasonable likelihood that Petitioner would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review unless the information in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’384 patent on all grounds of unpatentability presented.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Hunleth are natural extensions of Kim that provide additional details about user interface design and generation, and that it would have been obvious for one of ordinary skill in the art to use the teachings of the other references on Kim’s apparatus for details regarding the selection of a CP provider, with predictable results and a reasonable expectation of success. Id. at 19–21 (citing Ex. 1003 ¶¶ 112–119). Additionally, Petitioner argues that the combination uses metadata to provide a user interface appropriate to the type of content selected by a user that would have been made by one of skill in the art, and that the user would have had a reasonable expectation of success in this combination. Id. at 55 (citing Ex. 1003 ¶¶ 185–186, 197–200). At this time, Patent Owner does not dispute Petitioner’s assertions regarding the combination of Kim, TechnoBuffalo, MissingRemote, Hunt, and Hunleth. Nor, at this time, does Patent Owner rebut Petitioner’s assertion that one of ordinary skill in the art would have been motivated to make this combination and would have had a reasonable expectation of success in doing so. reasonable likelihood that it will prevail in showing one of ordinary skill in the art would have combined and used the details regarding a content provider user interface provided in TechnoBuffalo, MissingRemote, Hunt, and Hunleth, and would have used the relevant teachings of these references to provide details relating to the user interfaces provided by a CP provider on an intelligent television, such as that of Kim. See Ex. 1003 ¶¶104–106, 109–110, 112. We additionally determine that Petitioner has shown a reasonable likelihood that it will prevail in showing that one of ordinary skill in the art would have been motivated to make this combination, and would have had a reasonable expectation of success in doing so. See id. ¶¶ 113– 119.” slip op. at 23
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“On the preliminary record, no claim construction of “digest view” has been requested, and to the extent Patent Owner indirectly presents a claim construction argument, we decline to read the exemplary description of a digest view in the ’384 patent specification into limitations 1.6 and 1.7. Rather, in our view, the plain language of claim 1 controls because it recites that a digest view “presents information about a set of the VOD content that are associated with a series,” as recited in limitation 1.6. Ex. 1001, 56:55– 57. We find that Petitioner has sufficiently shown on this record that each of the TechnoBuffalo 1:03 view, the TechnoBuffalo 1:09 view, and the MissingRemote 1:54 view teaches or suggests the presentation of series,” as recited. Patent Owner agrees that the TechnoBuffalo 1:03 view is a digest view. Petitioner sufficiently shows the TechnoBuffalo 1:09 view is a digest view as it presents the “year, rating, number of episodes . . . , [and] episode lengths” for the displayed series. See Pet. 42 (citing Ex. 1003 ¶ 165). Similarly, Petitioner sufficiently shows that MissingRemote 1:54 view presents episode titles about episodes in the displayed season. See id. at 44 (citing Ex. 1003 ¶ 171). Petitioner argues alternatively that each of these would have been presented upon selection of a series in its proposed combination. Pet. 42–43, 44. We determine, in both cases, that presenting information regarding multiple individual episodes to be a sufficient showing that each presents “information about a set of the VOD content that are associated with a series,” as required by claim 1 for a digest view. Additionally, even if we were to adopt Patent Owner’s proposed strictures on “digest view,” the TechnoBuffalo 1:03 view constitutes a digest view under such a construction, as, for example, the “synopsis of entire season” on that view teaches the presentation of information about a set of the VOD content that are associated with the series. Ex. 1003 ¶ 164 (cited at Pet. 41); see Prelim. Resp. 15 (acknowledging that this view is a digest view). The Petition does not assert that the proposed combination would result in a system in which either the TechnoBuffalo 1:03 or the TechnoBuffalo 1:09 view would be displayed upon the selection of a series (as Patent Owner asserts, Prelim. Resp. 19), but rather that the TechnoBuffalo 1:03 view is taught as being presented in TechnoBuffalo as a result of a series selection and, that, “[a]lternatively,” one of ordinary skill would have made the design choice to display the TechnoBuffalo 1:09 view as a direct result of the selection of a series. Pet. 42–43; Ex. 1003 ¶ 167.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) in August of 2012 would have been knowledgeable and familiar with [user interfaces] in consumer products that are pertinent to the ’384 Patent. A POSITA would have had a bachelor’s degree in Electrical, Software, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television and/or digital video systems, human-computer interaction, or related technologies. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 15 (citing Ex. 1003 ¶ 21). At present, Patent Owner does not dispute this definition. Prelim. Resp. 9–10. The definition proposed by the Petitioner appears to be consistent with the problems and solutions in the ’384 patent and prior art of record and is supported by expert testimony. We adopt this definition for the purpose of this Decision.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,578,384 - Vizio, Inc. v. Multimedia Technologies Pte. Ltd.Institution deniedPTAB · Nov 22, 2024 · IPR2024-00722 · APJ Sharon Fenick · IPR · Institution
The Board denied institution because it could not determine with reasonable certainty the scope of “a different user interface device” to assess the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“an analysis to assess “whether the prior art discloses rendering something other than the second navigation bar” if a second user interface cannot contain that second navigation bar. Prelim. Reply 3–4. But our goal would not be to determine whether the prior art teaches or suggests “rendering something other than the second navigation bar” (Prelim. Reply 3), but rather whether the prior art teaches or suggests “rendering a different user interface device” (Ex. 1001, 55:26–29). In Samsung, the Federal Circuit notes that “the proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for the purposes of assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on keeping with this general direction from our reviewing court, and because no exception curing the impossibility of reaching a determination regarding unpatentability appears in this case, we do not institute an inter partes review. Given our conclusion that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability, we decline to institute inter partes review on the grounds presented.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“After considering the determinations in the District Court Order, we agree with the district court that we cannot ascertain with reasonable certainty the scope of the claim term “a different user interface device.” See Ex. 2001, 25 (the district court explaining that “‘user interface device’ in the claim and in view of the intrinsic evidence, as emphasized by counsel’s 3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated . reasonable certainty those skilled in the art about the scope of the invention.”). As the district court found, the ’168 patent specification uses the term “user interface device” inconsistently, for example, describing “four different user interface devices” in a navigation bar including the “movies user interface device 2204” in Figure 22A. Id. at 23 (citing Ex. 1001, 45:19–20, 45:27–29). Additionally, the specification appears to describe user interface devices with reference to the rows in Figure 22B, and other parts of the specification also describe selectable interface elements as “user interface device[s].” Ex. 1001, 45:33–37 (cited at Ex. 2001, 23–24), 41:31– 45, 46:67–47:2, 47:18–21, 48:18–20. Still further, the specification appears to describe a menu as a type of user interface device. Id. at 49:3–5 (cited at Ex. 2001, 24), 51:17–19 (same). In addition to these citations from the District Court Order, we note that the term “user interface device” is used when describing a user selecting a specific year from a display of years provided on a user interface: “If user selection 1460 is selected by the user using a user interface device, a new user interface presentation is provided.” Id. at 40:39–46 (emphasis added). On the record before us, we agree with the district court that, based on the ambiguity in the specification, “it is indiscernible what subset of the user interface, if any, is the user interface device.” Ex. 2001, 24. Therefore, we conclude that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability.” slip op. at 13
- BurdenNot reached
“an analysis to assess “whether the prior art discloses rendering something other than the second navigation bar” if a second user interface cannot contain that second navigation bar. Prelim. Reply 3–4. But our goal would not be to determine whether the prior art teaches or suggests “rendering something other than the second navigation bar” (Prelim. Reply 3), but rather whether the prior art teaches or suggests “rendering a different user interface device” (Ex. 1001, 55:26–29). In Samsung, the Federal Circuit notes that “the proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for the purposes of assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on keeping with this general direction from our reviewing court, and because no exception curing the impossibility of reaching a determination regarding unpatentability appears in this case, we do not institute an inter partes review. Given our conclusion that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability, we decline to institute inter partes review on the grounds presented.” slip op. at 16
Claim constructioncites KSR · GrahamPatents in suitUS 9,232,168 - Motorola Mobility LLC v. Largan Precision Co., Ltd.Institution deniedPTAB · Oct 28, 2024 · IPR2024-00688 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 would have been obvious over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We determine, on the record before us, that Petitioner does not have a likelihood of success of showing that the “prolonged” etching process that Petitioner proposes to arrive at the structure of limitation 1.6 to be “unusually simple” nor is “the technology particularly straightforward.” CN182’s etching process uses an alkali (sodium bicarbonate) solution with a concentration from 5% to 35% at a temperature of 35 to 55°C stirred for a period of 3 to 5 hours in an ultrasonic generator with power of 300 to 500 watts. Ex. 1004 ¶¶ 7–12. This is done in CN182 to create a matte structure on the inner surface of the body composed of plastic material (polyethylene terephthalate (PET)) between two antistatic coatings comprised of carbon powder layers. See, e.g., Ex. 1004 ¶¶ 5–6. Petitioner does not indicate how much time beyond CN182’s stated range of 3 to 5 hours would be required for the “prolonged” etching process it proposes to achieve a minimum depth of 2.0 μm relative to the outer carbon powder layer, nor whether a POSITA would have considered the prolonged time to be practically viable. Petitioner also does not explain what the reaction is, what its etch rate is, whether its effect would be diminished or exhausted as reactants are consumed or affected by other substances present, or whether other variables, such as the alkali concentration, temperature, or power and frequency of the ultrasonic generator, would need to be changed and how much over the course of the “prolonged” etching process.” slip op. at 30
- Skill levelSkill level petitioner adoptedOther
“Petitioner states as follows: The person of ordinary skill in the art in November 2016 (“POSITA” or “POSA”) would have held a bachelor’s degree in physics, optical sciences, or a closely related field, and approximately three years’ experience in optical system design, including stray light suppression. More education would compensate for less work experience and vice versa. POSITAs understood the fundamentals of stray light suppression. Pet. 35–36 (citing Ex. 1008, 587:18–20, 167, 595:32–33, xiii:24–26; Ex. 1003 ¶¶ 31–37). Petitioner further asserts that various texts in the record reflect the knowledge of a POSITA. Id. at 36 (citing Exs. 1007–1010). Petitioner alleges that a POSITA could be part of a team that includes a lens designer and a stray light specialist. Id. (citing Ex. 1007, 120; Ex. 1003 ¶¶ 33, 36, 38–41). Patent Owner states that Patent Owner “does not dispute Motorola’s articulation of the level of skill in the art in November 2016.” Prelim. Resp. 12–13 (citing Pet. 35–36). For this Decision, we adopt Petitioner’s undisputed proposal for the level of ordinary skill in the art as consistent with the evidence of record, including the ’660 patent and the prior art references on which Petitioner relies. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 9
- Expert testimonyPetitioner expert discountedOther
“Patent Owner correctly argues that the evidence does not show that Petitioner’s declarant, Dr. Milster, has expertise in etching of plastic materials such as PET which CN182 discloses for use as the inner substrate layer. Prelim. Resp. 15 (citing Ex. 1003 ¶¶ 31–37). Dr. Milster states that he has “education, knowledge, skills, and experience in the fields of optics and lens design.” Ex. 1003 ¶ 29. This statement does not provide any evidence of expertise in etching plastic materials. Nor does he indicate that he has any expertise in this field in his curriculum vitae. Ex. 1003, Appendix A. Consequently, on this record, Dr. Milster’s testimony on the subject of etching plastic materials is entitled to little or no weight.” slip op. at 33
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes that the plain and ordinary meaning of the claim terms applies, and does not propose any specific construction for any claim term. Pet. 36. Patent Owner agrees with Petitioner’s statement regarding claim construction, i.e., that the plain and ordinary meaning applies and no express construction is required. Prelim. Resp. 12 (citing Pet. 36–37; Ex. 1003 ¶¶ 82–87). As Petitioner and Patent Owner do not dispute the meaning of any claim term, we decline to expressly construe any claim term, and instead apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b). See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,997,660 - Samsung Electronics Co., Ltd. v. Dodots Licensing Solutions LLCAll claims unpatentablePTAB · Oct 22, 2024 · IPR2024-00145 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1–4, 7–11, 13–16, and 19–23 as obvious over Brown; claims 5, 6, 17, and 18 as obvious over Brown and Beer.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 10–11. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 9) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–20. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with this construction and we adopt it herein.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. “client computing device” Patent Owner requests construction of the term “client computing device.” PO Resp. 9–10. We do not construe this claim term because its construction is not necessary to resolve the controversy before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We determine that Patent Owner has not shown that it is entitled to the presumption of nexus. That is, Patent Owner has not shown that product “is the invention disclosed and claimed.” Fox Factory, 944 F.3d at 1374 (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). Petitioner is correct that Patent Owner did not discuss in its Patent Owner Response whether the claims of the ’407 patent are coextensive with the DoDots patent. We examine Patent Owner’s contentions in its Sur-reply of coextensiveness, including Patent Owner’s contention that “[t]he ‘gist’ of the inventions centered around the NIM template” (PO Sur-reply 23), to determine if the DoDots product was coextensive or, even if not, if “the unclaimed features amount to nothing more than additional insignificant features,” in which case the presumption of nexus may still be appropriate. See Fox Factory, 944 F.3d at 1373 (“Although we do not require the patentee to prove perfect correspondence to meet the coextensiveness requirement, what we do require is that the patentee demonstrate that the product is essentially the claimed invention.”); Teva Pharms., 8 F.4th at 1361–63 (discussing the “spectrum” of coextensiveness, from one in which unclaimed features are insignificant, which might not disturb the presumption, to one in which a critical feature is unclaimed, which would not show coextensiveness). We determine that the record evidence shows that at least the feature of the “developer ecosystem” was significant and not coextensive with the claims. John Kembel’s testimony describes “a whole developer ecosystem” including a “dev Dot” that allows “web developers to become Dot developers.” Ex. 1031, 59:2–17. Patent Owner contends that NIMs and NIM templates, as claimed, are the only critical features of the DoDots products, but the testimony of John Kembel confirms the criticality of the developer ecosystem: “[Y]ou could collect Dots, you could share Dots, you could organize them into packs based on your different work products, but the gist and the magic of the invention really comes down to the concept of a Dot, the Dot definition, and the server infrastructure that enabled those to be defined, collected, developed, and distributed.” Id. at 19:16–22 (emphasis added); see Ex. 2021 ¶¶ 36–43; Ex. 2027, 6 (discussing the “DevDot”); Ex. 2029.” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersObjective indicia outweighedDecided for petitioner
“art had a recognized need for a solution to the problem, and that others had tried and failed to find a solution to that problem. Millennium Pharms., Inc. v. Sandoz Inc., 862 F.3d 1356, 1369 (Fed. Cir. 2017). We have reviewed the cited evidence presented by Patent Owner, and find that it does not evince strong evidence of a long-felt but unsolved need that Patent Owner contends was addressed by the DoDots products.” slip op. at 34
Patent outcomesUS 8,510,407 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,510,407 - Samsung Electronics Co., Ltd. v. Dodots Licensing Solutions LLCAll claims unpatentablePTAB · Oct 22, 2024 · IPR2023-00701 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1–4, 7–11, 13–16, and 19–23 as obvious over Brown; claims 5, 6, 17, and 18 as obvious over Brown and Beer.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Pet. 5 (citing Ex. 1003 ¶¶ 20–21). Patent Owner, citing our prior decision in the -01279 IPR and the declaration testimony it submitted of Dr. Ted Selker (Ex. 2010), states: A POSITA would have a bachelor’s degree in Computer Engineering, Computer Science, or a related field and have three or more years of corresponding industry work experience. PO Resp. 9 (citing Ex. 1012, 8; Ex. 2010 ¶¶ 24–25). The parties have not addressed the differences in these definitions. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 10–11. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 9) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–20. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with this construction and we adopt it herein.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. “client computing device” Patent Owner requests construction of the term “client computing device.” PO Resp. 9–10. We do not construe this claim term because its construction is not necessary to resolve the controversy before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As noted above, our construction requires “a fully configurable frame, with one or more controls, through which content is presented to the user.” We decline to adopt the construction Patent Owner urges—that the content presented to the user must itself be fully configurable. See PO Resp. 38–39. Rather, our construction derives from language in the specification, which is immediately followed by language describing the advantage of a fully configurable frame: “[t]he fully configurable frame utilized in accordance with the invention stands in contrast to present web browsers, which are branded by the browser vendor and which have limited means by which to alter the controls associated with the browser.” Ex. 1001, 5:21–28; Ex. 1012, 9–10 (citing Ex. 1001, 5:21–24). Patent Owner itself quotes a portion of the specification that describes the “shortcomings” (PO Resp. 4) of prior art browsers, namely “controls associated with a browser are not fully configurable” and developers “have limited control over the user experience” (Ex. 1001, 2:3–29 (quoted at PO Resp. 4)). The Federal Circuit also quoted the language contrasting the “fully configurable” NIM with then-current web browsers (branding and limited alteration of browser controls) in its decision affirming the claim construction of “NIM template” in the -01279 IPR. Ex. 1014, 3 (quoting language from a related patent that is substantively identical to Ex. 1001, 5:24–28). Patent Owner’s argument regarding the configurability of the presented content (as opposed to the frame) asks us to consider the ’407 patent specification’s disclosure that “[t]he developer has full control over all aspects of the appearance and functionality of NIM frame.” PO Resp. 38 (quoting Ex. 1001, 17:32–43). However, we do not agree that this statement requires that the developer of the NIM must be able to make the content within the frame appear “differently” from the source, as argued; rather, in context, this statement again relates to the appearance and operation of the NIM frame, not the content. Neither Patent Owner nor its declarant provides any additional discussion or support for the assertion that the content received from a website (if that is the content presented in the frame) must be capable of being displayed differently than on the website. Ex. 2010 ¶ 106. We find persuasive, and credit, Dr. Schmidt’s testimony that Brown’s desktop components are fully configurable frames because Brown describes that the desktop components may be positioned at any location on the desktop and can be resized, and Brown presents examples of desktop components with different frame controls, in its depiction of two desktop components, one with horizontal and vertical scroll bars, and one with no such controls. Ex. 1003 ¶ 51 (citing Ex. 1005, 7:24–26, 12:64–65, Fig. 3A (elements 306, 310)). This testimony is supported by the cited teachings and is consistent with our claim construction.” slip op. at 17
Patent outcomesUS 8,510,407 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,510,407 - Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentablePTAB · Oct 16, 2024 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1, 3, 4, and 8 were not proven unpatentable: Rauhala does not disclose the required simultaneous signal-strength determinations, and Masaaki does not cure the deficiency for claim 4.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Following institution, Patent Owner maintained the same level of ordinary skill proposed in its preliminary response and did not address our discussion of the level of ordinary skill in the art in the Institution Decision. PO Resp. 24–25; see also Prelim. Resp. 24. For the reasons discussed in the Institution Decision, we adopt and apply for this Decision the level of ordinary skill articulated by Petitioner and used previously in our Institution Decision. See Dec. 8–10. In light of our review of the complete record, we find that this formulation is consistent with the ’825 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Ex. 1002 ¶¶ 27– 31. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the desired signal and interferer signal must be received at the same time. The plain language of the claim requires the wireless transceiver to “receiv[e] a wireless signal having a desired signal and an interferer signal,” the determining of a signal strength of the interferer signal and the determining of a signal strength of the desired signal must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. The specification supports this understanding. “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:20–22; see also id. at 5:31–33 (“FIGS. 2A and 2B illustrate examples of desired signals, interferers, and noise that may be received by one of the various circuits in a” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Rauhala does not state that the signal strengths are measured simultaneously or at the same time. Indeed, as discussed above, Rauhala indicates unequivocally in the same paragraph the opposite—that detector DET provides to control unit 42 “an indication about either the receive channel signal strength RSS or the strength of any signal on the reception band.” Ex. 1004 ¶ 17. Rauhala describes that “control unit 42 provides two one-bit control signals cA and cM” based on indications received from detector DET. Id. Importantly, Rauhala indicates that “at the same time as” describes how the control unit 42 uses the received inputs RSS and RSSn shown in Figure 4, which are described earlier in paragraph 17 as indications of either RSS or RSSn from detector DET. Id. (“Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the 11 Dr. Baker’s reply declaration correctly quotes Rauhala paragraph 17 but cites to paragraph 18. We deem this harmless error. same time smaller than Sn. . . . Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Otherwise, signal cM is 0.”). The burden remains on Petitioner to demonstrate by a preponderance of the evidence that Rauhala discloses the disputed limitations as arranged or combined in the claim. Petitioner does not persuasively reconcile these “either/or” statements regarding the functioning of detector DET with the “at the same time as” statements regarding control signals output by control unit 42 in paragraph 17. We do not find persuasive Petitioner counsel’s position expressed at the hearing that Rauhala’s “either/or” statements are “simply an imprecise description” (Tr. 16:22–24). We do not see a lack of precision in Rauhala’s “either/or” statements.” slip op. at 30
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“When asked at his deposition to explain Rauhala’s use of the word “or” regarding the functioning of detector DET, Dr. Baker asserted that “[detectors] can be designed to determine RSS or RSSn.” Ex. 2016, 85:5– 12. We find Dr. Baker’s testimony that “it’s reasonable that if you can design . . . the detector to detect one or the other, you can also design it to detect both” to be without factual support. Id. at 85:13–16. He points to no textbook or other independent evidence to support that would have led one of ordinary skill to design such a detector or to support that one of ordinary skill would have understood Rauhala’s detector to be so designed. Furthermore, Dr. Baker recognizes that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. We give little weight to Dr. Baker’s unsupported testimony that one could design a detector to detect both RSS and RSSn from the same wireless signal. See 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., No. IPR2022-00624, 2022 WL 3648989, at *6 (PTAB 2022) (precedential) (Director affirming because “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight”).” slip op. at 31
Patent outcomesUS 10,129,825 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,129,825
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.