- PTAB · Jul 22, 2024 · IPR2024-00282 · APJ Zhenyu Yang · IPR · Institution
The Board instituted review of claims 1–4 and 7–9 on all asserted grounds after finding a reasonable likelihood that claims 1–3 and 7–9 are obvious over Edwards-’535 and Stern.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Accordingly, we institute inter partes review of all challenged claims based on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS Level of Ordinary Skill in the Art Petitioner argues that an ordinarily skilled artisan at the relevant time would have had (1) a Doctor of Medicine (M.D.) or at least a bachelor of science degree in engineering or a related discipline and (2) at least three years of experience in the clinical use, design, development, and/or testing of medical devices, including medical devices that deliver energy to tissue. Pet. 17 (citing Ex. 1002 ¶¶ 24–28). Patent Owner does not address the skill level in its Preliminary Response. At this stage, we find Petitioner’s definition of the level of ordinary skill in the art sufficiently supported by the record and apply it for purposes of this Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Under that standard, the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Petitioner argues that the preamble of claim 1 “to treat rhinitis” is not limiting. Pet. 18. According to Petitioner, the body of claim 1 recites a structurally complete apparatus, and the preamble only states an intended use for the device without limiting the claimed structure. Id. at 18–19. Patent Owner does not propose any claim construction. On this record, we find Petitioner’s argument persuasive and determine that the preamble of claim 1 “to treat rhinitis” is not limiting. On this record and for purposes of this Decision, we see no need to expressly construe any other claim term.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We still “must further consider the factual questions of whether a person of ordinary skill in the art would be motivated to combine those references, and whether in making that combination, a person of ordinary skill would have had a reasonable expectation of success.” Dome Patent L.P. v. Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015). Based on the current record, and for purposes of this Decision, we find Petitioner has shown sufficiently that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citations omitted). slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,766,286 - PTAB · Jul 22, 2024 · IPR2024-00278 · APJ Michael A Valek · IPR · Institution
The Board instituted inter partes review of claims 1, 4–6, 9, 10, 12, 13, and 15–17 on all grounds presented in the Petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Considering the arguments and evidence of record, we determine that the Petition demonstrates “a reasonable likelihood that [P]etitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art (“POSITA”) would have had (1) a Doctor of Medicine (M.D.) or at least a bachelor of science degree in engineering or a related discipline and (2) at least three years of experience in the clinical use, design, development, and/or testing of medical devices, including medical devices that deliver energy to tissue. Pet. 19–20 (citing Ex. 1002 ¶¶ 24–28). Patent Owner does not respond to Petitioner’s description of a POSITA in its Preliminary Response. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends “the Board need not construe any terms because the Challenged Claims are invalid under any reasonable interpretation.” Pet. 20. At this stage, Patent Owner does not respond to this contention, nor propose any express claim construction of its own. For this decision, and given that neither party seeks any express claim construction, we determine that no express claim construction is necessary. To the extent our consideration of Petitioner’s grounds touches on any implicit issues of claim construction, those are addressed in our analysis below.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“several reasons. First, Petitioner’s reasoning for combining Edwards-535 and Stern is supported by testimony from Dr. Martin who identifies multiple, specific reasons for the combination. Ex. 1002 ¶¶ 103–122, 129–148. This testimony is not conclusory and is supported with numerous citations to other evidence of record. Id. Patent Owner does not offer any countervailing testimony with its Preliminary Response, electing instead to rely on attorney argument at this stage. Second, Patent Owner’s assertions that Petitioner’s reasoning is insufficient because Stern describes treating the endometrium and ablating different tissue, i.e., surface versus underlying tissue, are undermined by Edwards-535’s citation to Baker. As Petitioner points out, “Edwards-’535 points a POSITA” to, and incorporates teachings from, Baker. Pet. 47. This is true even though Baker, like Stern, is largely focused on treating the uterus and describes preferred embodiments for delivering RF energy to the endometrium. See, e.g., Ex. 1011, Abstr., 3:5–9, 5:50–65. Moreover, Petitioner offers evidence to show that Baker and Stern depict similar devices, including the figure from Dr. Martin’s declaration reproduced below. See Ex. 1002 ¶¶ 117–119, 144–147. Dr. Martin’s figure above is a side-by-side comparison of Figure 8 of Baker and Figure 4a of Stern, depicting devices that, at least on their face, appear to share a similar shape and configuration. See id. ¶¶ 119, 146 (testifying that the comparison above shows “Baker and Stern both depict very similar devices”). At this stage, Patent Owner does not dispute that Petitioner’s comparison is apt, nor otherwise address Petitioner’s reliance on Baker as evidence of a motivation to combine Stern. Thus, on the current record, we agree with Petitioner that Edwards-535’s express citation to Baker suggests that a POSITA would have been motivated to combine the similar teachings Petitioner identifies in Stern. Third, Stern also contradicts Patent Owner’s assertion that a POSITA would have considered its teachings to be inapplicable to treating the nasal concha as taught in Edwards-535. While Stern is primarily concerned with endometrial ablation applications, that does not mean its teachings are limited to such. Indeed, Stern explains that its “electrode partitioning structure” may be used to treat “other body organs or tissues either externally or internally” and that its “principles with respect to the delivery of controlled RF energy” can be applied “not only for controlled destruction of tissue but also for controlled heat treatment of tissue.” Id. Such teachings further support the testimony of Dr. Martin that “[a] POSITA would have known that technology from ablation devices for one part of the body would be applicable to devices used in other areas of the body.” Pet. 41 (citing Ex. 1002 ¶ 117–121; Ex. 1033, 18:27–40). We also disagree with Patent Owner’s argument that “Edwards-535 and Stern are so in conflict with one another that they rise to the level of teaching away.” Prelim. Resp. 21. A teaching away requires that the reference “criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). But Patent Owner has not shown that any of the references cited here discourage the articulated combination of Stern’s electrode configuration, i.e., multiple pairs of bipolar electrodes connected to separate radiofrequency output channels, with Edwards-535’s device. To the contrary, Stern expressly states that its “electrode partitioning structure” can be used for other applications (see Ex. 1033, 18:27–40), which on the current record would seem to include Edwards-535’s device for ablating nasal tissue.” slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,033,318 - PTAB · Jul 22, 2024 · IPR2024-00277 · APJ Michael A Valek · IPR · Institution
Instituted IPR of claims 1–4, 6–12, and 16 on all asserted grounds; the Board found a reasonable likelihood of prevailing on the Edwards-535, Kong, and Stern obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Considering the arguments and evidence of record, we determine that the Petition demonstrates “a reasonable likelihood that [P]etitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had (1) a Doctor of Medicine (M.D.) or at least a bachelor of science degree in engineering or a related discipline and (2) at least three years of experience in the clinical use, design, development, and/or testing of medical devices, including medical devices that deliver energy to tissue. Pet. 20–21 (citing Ex. 1002 ¶¶ 27–29; Ex. 1004 ¶¶ 24–28). Patent Owner does not respond to Petitioner’s description of a POSITA in its Preliminary Response. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends “the Board need not construe any terms because the Challenged Claims are invalid under any reasonable interpretation.” Pet. 21. At this stage, Patent Owner does not respond to this contention, nor propose any express claim construction of its own. For this decision, and given that neither party seeks any express claim construction, we determine that no express claim construction is necessary. To the extent our consideration of Petitioner’s grounds touches on any implicit issues of claim construction, those are addressed in our analysis below.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“On the current record, Patent Owner’s arguments are unavailing for several reasons. First, Petitioner’s reasoning for combining Edwards-535 and Stern is supported by testimony from its declarants who identify multiple, specific reasons for the combination. Ex. 1002 ¶¶ 93–94; Ex. 1004 ¶¶ 75–97. This testimony is not conclusory and is supported with numerous citations to other evidence of record. Id. Patent Owner does not offer any countervailing testimony with its Preliminary Response, electing instead to rely on attorney argument at this stage. Second, Patent Owner’s assertions that Petitioner’s reasoning is insufficient because Stern describes treating the endometrium and ablating a different tissue, i.e., surface versus underlying tissue, are undermined by Edwards-535’s citation to Baker. As Petitioner points out, “Edwards-’535 instructs a POSITA to look to Baker for how to dispose electrodes on the surface of a membrane.” Pet. 47. This is true even though Baker, like Stern, is largely focused on treating the uterus and describes preferred embodiments for delivering RF energy to the endometrium. See, e.g., Ex. 1011, Abstr., 3:5–9, 5:50–65. Moreover, Petitioner offers evidence, including the figure reproduced below, to show that “Baker and Stern depict similar devices for ablating tissue.” Pet. 46. Petitioner’s figure above is a side-by-side comparison of Figure 8 of Baker and Figure 4a of Stern, depicting devices that, at least on their face, appear to share a similar shape and configuration. Petitioner offers a similar figure showing that both Baker and Stern teach the arrangement of “electrodes in rows.” See id. at 47 (showing side-by-side comparison of Figure 8 of Baker to Figure 19 of Stern). At this stage, Patent Owner does not dispute that Petitioner’s comparisons are apt, nor otherwise address Petitioner’s reliance on Baker as evidence of a motivation to combine Stern. Thus, on the current record, we agree with Petitioner that Edwards-535’s express citation to Baker suggests that a POSITA would have been motivated to combine the similar teachings Petitioner identifies in Stern.” slip op. at 21
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,241,271 - Intuit Inc. v. Samesurf, Inc.All claims unpatentablePTAB · Jun 25, 2024 · IPR2023-00339 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1–18 are unpatentable as obvious over Lebrun and Wang; the Board did not reach the separate Prajapat and Wang challenge.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the parties, we found that a person of ordinary skill in the art (“POSITA”) “would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, or a similar field, and (2) at least two years of work experience in software development and/or web-based software,” which reflected Petitioner’s proposal. Dec. 11–12; see Dec. 9–12 (discussing the respective proposals and level of ordinary skill reflected in the challenged patent and asserted prior art). Patent Owner accepts this level of ordinary skill in the art. PO Resp. 42. Accordingly, we apply this determination of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“information related to a shared web browsing interaction” is interchangeable with “web browsing interaction data” and, as a result, this portion of the specification should limit the claim term. PO Resp. 18–19 (quoting Ex. 2004 ¶ 40). The quoted portion of Mr. Friedman’s testimony, however, addresses other terms in the specification and not “information related to a shared web browsing interaction.” PO Resp. 18–19 (quoting Ex. 2004 ¶ 40). As such, the testimony cited by Patent Owner does not support Patent Owner’s position. Accordingly, we determine that the patentee has not acted as a lexicographer to set forth a definition of “web browsing interaction data” in the written description. c. Plain and Ordinary Meaning Because the patentee has not acted as a lexicographer to set forth a definition of “web browsing interaction data,” we look to the plain and ordinary meaning of the term. See Edwards Lifesciences LLC v. Cook Inc., from the ordinary meaning will be adopted “when the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history” (internal quotation marks omitted)); Pet. Reply 5 (Petitioner arguing that “web browsing interaction data” should be afforded its plain and ordinary meaning) (citing Ex. 1034 ¶ 13). Notably, both Dr. Lieberman and Mr. Friedman agree that the plain and ordinary meaning of “web browsing interaction data” is sufficient to inform how one of ordinary skill would have understood the term. Ex. 1034 ¶ 13 (Dr. Lieberman testifying: “The plain meaning of ‘web browsing interaction data’ is data related to web browsing interactions. No additional definition or limitation is required in my opinion, nor is there any special or specific meaning given to the term in the specification of the ’145 patent.”); Ex. 1033, 171:5–16 (Patent Owner’s expert, Mr. Friedman, testifying that “the plain and ordinary meaning is sufficient.”). According to Petitioner, the plain and ordinary meaning is “data related to web browsing interactions.” Pet. Reply 5 (citing Ex. 1034 ¶ 13); Ex. 1034 ¶ 13 (“The plain meaning of ‘web browsing interaction data’ is data related to web browsing interactions.”). Patent Owner’s expert declined to opine on what the plain and ordinary meaning of “web browsing interaction data” other than it excludes webpages and partially filled webpages related to a web browsing interaction. See Ex. 1033, 171:5–16. slip op. at 27
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Accordingly, we conclude that the plain language of the claims does not require “web browsing interaction data” to be limited to data describing interaction performed on a website by a host device. We turn to the specification because the meaning of “web browsing interaction data” is informed “not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. The written description does not provide a definition or clear meaning for “web browsing interaction data.” Patent Owner acknowledges the term is not expressly used in the written description. PO Resp. 17. Patent Owner, however, identifies “information related to a shared web browsing interaction” as a term that is interchangeable with “web browsing interaction data.” PO Resp. 18, 29. We recognize the specification term “information related to a shared web browsing interaction” is substantially similar10 to Petitioner’s proposed plain and ordinary meaning of “web browsing interaction data” as “data related to web browsing interactions.” 11 Patent Owner identifies three passages that each describe the present invention as receiving information related to a shared web browsing interaction performed by a host device and performing the shared web browsing interaction based on the received information. PO Resp. 17–18 (block quoting Ex. 1001, Abstract, 3:10–24). The identified passages, however, do not show intention to manifestly limit “web browsing interaction data” to data describing interactions” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“forth by Petitioner (Pet. 22–34) discloses or suggests all limitations recited by claim 1, we consider Petitioner’s conclusion that it would have been obvious to combine Lebrun and Wang in the manner proposed to arrive at the claimed invention. See Pet. 19–22. (i) Articulated Reasoning To demonstrate obviousness, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. Petitioner contends that one of ordinary skill would have been motivated to combine Wang’s activating a session invitation with Lebrun’s invitation to join a group-surfing session. Pet. 28. Specifically, Petitioner contends that “activating an invitation via a designated URL address would further enable” Lebrun’s group-surfing server “to coordinate and manage the group-surfing session, which would further Lebrun’s objective of providing an ‘improved technique for group access to web sites.’” Pet. 28 (citing Ex. 1005, 7:1). We agree with Petitioner that activating an invitation via a designated URL address would be a technique that helps coordinate a group-surfing session and would enable multiple related users being able to access “substantially the same” slip op. at 63
Patent outcomesUS 9,185,145 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,185,145 - Kinderfarms LLC v. Genexa Inc.InstitutedPTAB · Mar 25, 2024 · PGR2023-00051 · APJ Deborah Katz · PGR · Institution
Instituted PGR of claims 1–24 on all asserted grounds; the Board found the §103 challenges more likely than not to render claim 1 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” See 35 U.S.C. § 324(a).” slip op. at 6
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Skill Each party puts forth a characterization of the ordinarily skilled artisan in the field of the claims of the ’795 patent. (See Pet. 13 (citing Crowley Decl., Ex. 1003, ¶¶ 90–91); see Prelim. Resp. 3–4.) The parties’ proposed characterizations of the ordinarily skilled artisan are sufficiently similar that adoption of either would lead to the same result, institution. Thus, for the purposes of this Decision only, we adopt Patent Owner’s characterization of the ordinarily skilled artisan as having a bachelor of science degree in a relevant life sciences field, such as, chemistry, biochemistry, or pharmacy, with at least two years of work or laboratory experience in pharmaceutical formulations, and access to one or more team members having experience in pharmaceutical formulation and pharmaceutical regulatory approvals, or, in the alternative, at least three to four years of work or laboratory experience in pharmaceutical formulations, and access to one or more team members having experience in pharmaceutical formulation and pharmaceutical regulatory approvals. (See Prelim. Resp. 3–4.) We also note that the level of skill of an ordinarily skilled artisan is revealed by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that the absence of specific findings on the level of skill in the art does not give rise to reversible error “the prior art itself reflects an appropriate level and a need for testimony is not shown.” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163, 225 USPQ 34, 38 (Fed.Cir.1985)).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Petitioner puts forth constructions of certain terms used in the claims of the ’795 patent. (See Pet. 14–19.) Patent Owner does not dispute any of these constructions specifically, but at this point, argues that we need not construe any terms “to resolve the present controversy.” (Prelim. Resp. 2.) We agree that an express construction is not required at this point in the proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Thus, at this point in the proceeding, Patent Owner’s argument is not persuasive because it does not address the teachings in the prior art that Petitioner asserts would render the formulations claimed in the ’795 patent obvious.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 11,617,795 - PTAB · Mar 22, 2024 · IPR2023-01294 · APJ Michael J Fitzpatrick · IPR · Institution
The Board instituted IPR on claims 1–20 over all asserted grounds, finding a reasonable likelihood of success on claims 1, 11, and 16 under the Downs/EDACS and Kim grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“A. Discretion Under 35 U.S.C. § 314 Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) and deny the Petition in view of the related lawsuit in the Eastern District of Texas. Prelim. Resp. 25 (citing Apple Inc. v. Fintiv, Inc., No. IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”); Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Interim Procedure”)). However, Petitioner has since filed a Sotera stipulation, so named based on Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). See Ex. 1035. Thus, pursuant to the Interim Procedure, we will not discretionarily deny the Petition based on the related lawsuit. See Interim Procedure at 3 (“Consistent 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.”).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In assessing whether to exercise the Board’s authority to deny institution under § 325(d), the Board considers a two-part analysis. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, No. IPR2019-01469, Paper 6 at 8–9 (Feb. 13, 2020) (precedential). First, in Part One, the Board considers whether “the same or substantially the same” art or arguments were previously presented to the Office. Id. at 8. If so, in Part Two, the Board then considers whether the petition demonstrates that the Office “erred in a manner material to the patentability of the challenged claims.” Id. In applying the two-part framework, the Board considers several nonexclusive factors set forth in Becton, Dickinson & Co. v. B. Braun Melsungen AG, No. IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“status of a channel,” “having or collecting information on ongoing communications,” and “providing call access to entities” does not constitute “monitoring media streams,” as recited in claims 1, 11, and 16. See Prelim. Resp. 10–11 (citing Pet. 29). Patent Owner does not, however, propose a construction for “monitoring media streams,” let alone one that might elucidate the distinction Patent Owner is advancing. Nor is such a distinction apparent based on the claim language. For example, the plain and ordinary meaning of “monitoring media streams” appears to encompass, among other things, Down’s disclosure that “[t]he dispatcher console is informed of the individual transmitters and channels that are being used and of the status of other transmitters and receivers in the system.” Ex. 1004, 2:20–22; see also id. at 3:17–26 (explaining that the display provides caller, volume, and, if applicable, emergency status of each individual communication). The plain and ordinary meaning of “monitoring media streams” appears to also encompass EDACS’s disclosure that its “system receives [an emergency] request and assigns the emergency call to a free channel.” Ex. 1005, 25.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“status of a channel,” “having or collecting information on ongoing communications,” and “providing call access to entities” does not constitute “monitoring media streams,” as recited in claims 1, 11, and 16. See Prelim. Resp. 10–11 (citing Pet. 29). Patent Owner does not, however, propose a construction for “monitoring media streams,” let alone one that might elucidate the distinction Patent Owner is advancing. Nor is such a distinction apparent based on the claim language. For example, the plain and ordinary meaning of “monitoring media streams” appears to encompass, among other things, Down’s disclosure that “[t]he dispatcher console is informed of the individual transmitters and channels that are being used and of the status of other transmitters and receivers in the system.” Ex. 1004, 2:20–22; see also id. at 3:17–26 (explaining that the display provides caller, volume, and, if applicable, emergency status of each individual communication). The plain and ordinary meaning of “monitoring media streams” appears to also encompass EDACS’s disclosure that its “system receives [an emergency] request and assigns the emergency call to a free channel.” Ex. 1005, 25.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,831,664 - PTAB · Mar 21, 2024 · IPR2023-01295 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1–5, 7–19, and 21–24 on both § 103 grounds: Shaffer with Saylor, and Gogic with Opitz.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We disagree with Patent Owner’s characterization of the prosecution history. After the Examiner issued a final rejection of then-pending claim 1 (Ex. 1003, 125–138), Applicant amended claim 1 by adding the following limitations:” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“informing the Board of the stipulation Petitioner made to Patent Owner on December 27, 2023. Paper 8, 5 (citing Ex. 1034). The Stipulation reads: Motorola Solutions, Inc. stipulates that, if the Patent Trial and Appeal Board institutes an IPR proceeding for U.S. Patent No. 8,994,830 on the grounds presented in the petition in IPR2023- 01295, Motorola Solutions, Inc. will not pursue an invalidity defense in the district court action (STA Group LLC v. Motorola Solutions, Inc., Case No. 2:22-cv-00381 (E.D. Tex.)) that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR. Id. Petitioner has filed a stipulation that it “will not pursue an invalidity defense in the district court action (STA Group LLC v. Motorola Solutions, Inc., Case No. 2:22-cv-00381 (E.D. Tex.)) that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR.” Ex. 1034. Petitioner contends that its “Sotera stipulation moots Patent Owner’s (‘PO’) Fintiv arguments.” Prelim. Repl. 1 (citing Ex. 1034; Ex. 1032, 3). Patent Owner does not respond, in the Preliminary Sur-reply, to Petitioner’s Reply argument regarding discretionary denial or argue that we nevertheless should deny the Petition in light of Petitioner’s stipulation. See, generally, Prelim. Sur-Reply. Upon consideration of these factors and the parties’ arguments, we decline to exercise our discretion to deny the Petition in light of Petitioner’s Sotera stipulation. See Guidance Memo 7.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d. Conclusion as to Independent Claim 1 We have considered all of the evidence and arguments presented by the parties with respect to independent claim 1. Based on the record before us, we are persuaded that Petitioner has demonstrated sufficiently for purposes of institution that the combined teachings of Shaffer and Saylor meet all the limitations of independent claim 1 and that a person of ordinary skill in the art at the time of the claimed invention would have had reason to combine their teachings in the manner described, and would have had a reasonable expectation of success in so doing.” slip op. at 53
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person of ordinary skill in the art as a person having “at least (a) a bachelor’s degree in computer science, electrical engineering, or a similar field, and (b) approximately 2 years industry experience in networking or communication systems, including interoperating different types of networks that include video feeds.” Pet. 13 (citing Ex. 1002 ¶¶ 45–47). Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 6–7. Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’830 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Polish. See Ex. 1002 ¶ 46. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. D. Claim Construction” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,994,830 - Apple Inc. v. Ald Social LLCInstitutedPTAB · Mar 18, 2024 · IPR2023-01399 · APJ Phillip A Bennett · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that Wolfe renders claim 1 obvious under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The asserted prior art, like the challenged patent, presents high-level schematics and functional descriptions of various system components used in monitoring events and crowd behavior using location-based services. These system components largely include servers, websites, and mobile telephones utilizing wireless technologies, such as Wi-Fi, cellular, and global positioning system (GPS) to communicate and generate location data regarding mobile devices, as well as the use of databases to store historical information related to location-based services. The prior art and the patent provide description of monitoring crowd behavior by tracking the location of groups of mobile devices. Neither the challenged patent nor the asserted” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“we agree with Petitioner that “[t]he specification does not provide any explicit definition.” Pet. 14. The written description, however, indicates “[a] viral event is defined as occurring when one or more predefined parameter thresholds have been surpassed, as determined in the exemplary embodiment in the Network Monitor 302.” Ex. 1001, 4:45–48. As Petitioner notes, the written description also provides examples of predefined parameter thresholds used by Network Monitor 302 “to determine if the monitored network indicates that a viral event may be occurring or impending.” Ex. 1001, 5:14–16; Pet. 14 (citing Ex. 1001, 5:16–20). Examples of predefined parameter thresholds include an excessive number of wireless devices in an area, excessive use of wireless devices in an area, two highly dense clusters of wireless devices converging at a significant rate of speed, and the difference in the number of wireless devices in an area exceeds a threshold over consecutive time periods. Ex. 1001, 5:15–20, 5:31–35, 5:41–42 (“to assess the number . . . of wireless devices”), 5:55–57; see Pet. 15 (citing Ex. 1001, 5:31–36, 5:51–57). As such, the written description describes parameter thresholds related to number, use, and movement of wireless devices being used to determine whether a viral event may be occurring.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“institution. On this preliminary record, Petitioner has sufficiently shown that responsive to the network monitor observing a significant aggregation of devices in a particular area, application 322 functions as a crowd risk determinant because the application 322 assesses the needs arising from the aggregation of devices in that area. Ex. 1004, ¶¶ 46. Additionally, although the example provided in Wolfe relates to determining the number of pizza slices needed based on how many devices are in particular location, on this preliminary record, we agree with Petitioner that a person of ordinary skill in the art would have found it obvious to implement a similar risk analysis to determine that police patrols would be needed in a particular area, as taught by Wolfe, based on the determination of crowd’s location, activity, and movement. Id. at 14.” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,402,158 - Apple Inc. v. Ald Social, LLCInstitutedPTAB · Mar 18, 2024 · IPR2023-01398 · APJ Barbara A Benoit · IPR · Institution
The Board instituted inter partes review of claims 1–14 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Wolfe and Pfeffer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS A. Legal Standards Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information in the Petition shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314(a).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on declaration testimony from Dr. Guy (Ex. 1003), Petitioner asserts that a person of ordinary skill in the art “would have been someone knowledgeable and familiar with the field of crowd analysis and location-based computing” and would have had “at least a bachelor’s degree in computer science/computer engineering, or equivalent training, and approximately two years of experience working in the field of crowd analysis and location-based computing.” Pet. 12 (citing Ex. 1003 ¶¶ 19–21). Petitioner further notes that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. For purposes of this Institution Decision, we adopt the assessment offered by Petitioner as it is consistent with the challenged patent and the asserted prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“agree with Petitioner that “[t]he specification does not provide any explicit definition” for “indication of a viral event.” Pet. 13. The written description, however, indicates “[a] viral event is defined as occurring when one or more predefined parameter thresholds have been surpassed, as determined in the exemplary embodiment in the Network Monitor 302.” Ex. 1001, 4:40–43. As Petitioner notes, the written description also provides examples of predefined parameter thresholds used by Network Monitor 302 “to determine if the monitored network indicates that a viral event may be occurring or impending.” Ex. 1001, 5:9–12; Pet. 13–14 (citing Ex. 1001, 5:9–15). Examples of predefined parameter thresholds include an excessive number of wireless devices in an area, excessive use of wireless devices in an area, two highly dense clusters of wireless devices converging at a significant rate of speed, and the difference in the number of wireless devices in an area exceeds a threshold over consecutive time periods. Ex. 1001, 5:12–14, 5:27–31, 5:35 (“to assess the number . . . of wireless devices”), 5:48–51; see Pet. 14 (citing Ex. 1001, 5:26–31, 5:45–51). As such, the written description describes parameter thresholds related to number, use, and movement of wireless devices being used to determine whether a viral event may be occurring.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“4. The Combination of Wolfe and Pfeffer To demonstrate obviousness, Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. More specifically, to prevail, Petitioner must demonstrate by a preponderance of evidence that “a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Regarding the required articulate reasoning, Petitioner contends that “[a]lthough Wolfe teaches providing relevant crowd information to police, Wolfe does not provide the details for how to alert and notify the police.” Pet. 24 (citing Ex. 1004 ¶ 14). “Pfeffer, however, fills in Wolfe’s details by specifically teaching techniques for receiving information about crowds, evaluating the information, and alerting first responders when needed,” according to Petitioner. Pet. 24 (citing Ex. 1005, Abstract, ¶¶ 6, 40–41). Petitioner also contends that the combination would provide additional benefits to Wolfe’s system from Pfeffer’s additional features, such as providing “continuous updates to the incident scenario model saved for future use, recommendations for the most effective methods to respond to the incident based on past responses and current trends, and determining if an incident should be elevated based on the number of people involved in the incident.” Pet. 26 (citing Ex. 1003 ¶ 77; Ex. 1005 ¶¶ 28, 77, 85). Regarding the required expectation of success, Petitioner contends that “[a] POSITA would have found the combination of Wolfe and Pfeffer predictable” because they are similar in that “both systems analyze crowd information to identify safety risks.” Pet. 25 (citing Ex. 1003 ¶ 75; Ex. 1004, Abstract, ¶¶ 11, 14; Ex. 1005 ¶ 28). Petitioner further asserts that “[a] POSITA would have had a reasonable expectation of success when combining Wolfe and Pfeffer because [they] are implemented in the same manner,” with both being implemented on servers and with Pfeffer indicating that its techniques could be “any combination of software and/or hardware that is configured to perform one or more tasks.” Pet. 25–26 (citing Ex. 1003 ¶ 78; Ex. 1004 ¶ 70, 74; Ex. 1005 ¶¶ 37, 32). Petitioner also contends “the combination would use known techniques (Pfeffer’s implementation details of an incident response method) to improve a similar system (Wolfe’s crowd detection and incident response system) in the same way (providing crowd details and incident information to first responders so that they may better respond to comprised crowd safety).” Pet. 26–27 (citing Ex. 1003 ¶¶ 77–79). Petitioner’s showing (Pet. 23–27) of articulated reasoning to support” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,198,054 - PTAB · Mar 13, 2024 · IPR2023-01293 · APJ Michael J Fitzpatrick · IPR · Institution
The Board instituted review of claims 1–14 on both § 103 grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review requires “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Determining whether a reasonable likelihood has been met has been delegated to the Board. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the Petition, Preliminary Response, Preliminary Reply, and Preliminary Sur-reply, and for the reasons explained below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one claim. Accordingly, we grant the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) and deny the Petition in view of the related lawsuit in the Eastern District of Texas. Prelim. Resp. 26 (citing Apple Inc. v. Fintiv, Inc., No. IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”); Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Interim Procedure”)). However, Petitioner has since filed a Sotera stipulation, so named based on Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). See Ex. 1039. Thus, pursuant to the Interim Procedure, we will not discretionarily deny the Petition based on the related lawsuit. See Interim Procedure at 3 (“Consistent 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.”).” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in computer science, electrical engineering, or a similar field, and would have had approximately three years industry experience in networking or communication systems, in particular addressing interoperability between different types of networks and satellite communications. Ex[1002], ¶52. Additional education in the fields of electrical engineering or computer science may serve as a substitute for experience in the field. Id. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. Pet. 10. Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. Indeed, Patent Owner witness Michael Crane explicitly “accept[s]” it. Ex. 2001 ¶28. Because Petitioner’s formulation of the level of ordinary skill in the art appears consistent with the ’134 patent and the asserted prior art, and because there is no argument to the contrary at this stage of the proceeding, we apply it in our analysis below.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner construes two terms that are not actually recited in the claim. First, Petitioner states that “[m]ulticast” means “the delivery of information to a group of destinations simultaneously using the most efficient strategy.” Pet. 11 (citing Ex. 1001: 1:14–16). None of the challenged claims recite “multicast,” but each of the independent claims recite “multicasting.” This decision does not turn on the meaning of “multicasting,” as Patent Owner does not contest that the cited art teaches such a feature. Accordingly, we need not and do not construe explicitly “multicasting.”” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,489,134
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.