- Apple Inc. v. Sonrai Memory LimitedInstitutedPTAB · Nov 21, 2023 · IPR2023-00819 · APJ John D Hamann · IPR · Institution
Instituted IPR on claims 1, 3, 5, 7, 11–13, and 15 on all asserted grounds; the Board found a reasonable likelihood of prevailing and compelling merits for at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.108 (2022). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’014 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We have considered the circumstances and facts before us in view of Fintiv factors 1–5. Because our analysis is fact driven, no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a). Considering these Fintiv factors as part of a holistic analysis, we are persuaded that the interests of the efficiency and integrity of the system 6 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 13–14 (PTAB Dec. 1, 2020) (precedential). institution. Thus, we now turn to a compelling merits analysis under factor six. See CommScope Technologies LLC v. Dali Wireless, Inc., IPR2022- 01242, Paper 23, at 5 (PTAB Feb. 27, 2023) (precedential, decision upon Director review) (“In circumstances where . . . the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner argues that one of ordinary skill in the art “would have been motivated in light of Joy to configure the system in Asano so that its multiple processors are ‘mounted on a single die.’” Id. According to Petitioner, “[s]uch an implementation would have been a straightforward combination of well-known technologies using known methods and would have had predictable results.” Id. at 23–24 (citation omitted). In particular,” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“After reviewing Petitioner’s arguments and evidence, which are not addressed by Patent Owner at this stage of the proceeding, we are persuaded that Petitioner demonstrates, for purposes of this institution decision, that Asano teaches “[a] multiprocessing system.” In light of our finding, we need not, and thus do not, reach whether claim 1’s preamble is limiting. 2. Multiple Processors Petitioner argues that the combination of Asano and Joy teaches “multiple processors mounted on a single die,” as recited in claim 1. Pet. 22–30. More specifically, Petitioner argues that Asano teaches “a computer system that includes a processor group 110 that includes multiple processors.” Id. at 22 (citing Ex. 1005 ¶¶ 30–31); see also id. at 22–23 (citing Ex. 1005 ¶ 31, Fig. 1 (annotating processors 11a, 11b . . . 11n); Ex. 1002 ¶ 73). As to Joy, Petitioner argues that Joy teaches having “multiple processors are mounted on a single die.” Id. at 23 (citing Ex. 1002 ¶¶ 74–75); see also id. (citing Ex. 1006, 7:4–6) (arguing same). Petitioner argues that one of ordinary skill in the art “would have been motivated in light of Joy to configure the system in Asano so that its multiple processors are ‘mounted on a single die.’” Id. According to Petitioner, “[s]uch an implementation would have been a straightforward combination of well-known technologies using known methods and would have had predictable results.” Id. at 23–24 (citation omitted). In particular, die in a multi-processor system (such as the system in Asano) were well known in the art before the ’014 patent.” Id. at 27 (citing Ex. 1002 ¶ 84); see also id. at 27–28 (citing Ex. 1008,8 1; Ex. 1009,9 Abstract; Ex. 1010,10 1:48–60; Ex. 1011,11 292); id. at 28–29 (citing Ex. 1001, 1:34–44, Fig. 2; Ex. 1002 ¶ 85) (arguing that the ’014 patent acknowledges that “using multiple processors mounted on a single die in a computer system as conventional and beneficial”). Moreover, Petitioner argues that one of ordinary skill in the art” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 6,874,014 - K/S Himpp v. Bragi GmbHInstitutedPTAB · Nov 13, 2023 · IPR2023-00901 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–16 and all petitioned grounds, finding a reasonable likelihood that the challenged claims would be shown unpatentable under the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.108 (2022). For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“effective filing date of the claimed invention “would have had a Bachelor’s Degree in Electrical Engineering or Computer Science, or equivalent experience, and one to two years of experience in the field of wireless electronic devices and/or graphical user interfaces, particularly as those systems relate to software applications used to interface with wireless earpieces.” Pet. 23 (citing Anthony Decl. ¶ 22). Patent Owner does not address this issue. See generally Prelim. Resp. We find Petitioner’s proposal to be consistent with the level of ordinary skill in the art that is reflected by the ’385 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner submits that no claim terms need to be construed. Pet. 12. Patent Owner does not address this issue. See generally Prelim. Resp. For this Decision, we do not address any claim construction issues.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Although the statement in the Petition of non-reliance on the filing dates of the Hensen Provisional and Hensen CIP was infelicitous, Petitioner’s sole reliance in the Petition on the filing date of the Hensen Patent met its initial burden of production in establishing that the Hensen 3 Petitioner also provides a chart comparing Hensen Patent claim 1 to the disclosures of the Hensen CIP. Reply 3–4. However, under the AIA, this is not necessary. See Penumbra, at 29–32. Petitioner also disputes that the asserted public disclosures that Patent Owner relies on pursuant to 35 U.S.C. § 102(b)(2)(B) were not by, or obtained from, the inventor, and further argues that some aspects of the subject matter of the Hensen Patent are the not the same as that of the earlier disclosures. Id. at 4–5. We need not address these arguments for purposes of this Decision. Patent was prior art. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). Given Petitioner’s citation of the Hensen Patent and its filing date, the burden of production then shifted to Patent Owner to antedate the reference; upon the occurrence of which in the Preliminary Response, the burden of production returned to Petitioner to prove that the Hensen Patent was entitled to the benefit of an earlier filing date. Dynamic Drinkware, 800 F.3d at 1380. We authorized Petitioner to file a Reply to respond to Patent Owner’s assertion of priority, by which Petitioner asserted reliance on the Hensen Provisional and Hensen CIP filing dates. Ex. 1026. Thus, we determine that Petitioner has not waived reliance on those earlier filing dates. In addition, our review of the portions of the Hensen CIP referenced by Petitioner in its comparison to the disclosures relied on in the Hensen Patent (at Reply 2) reveals that they are substantially identical, notwithstanding Patent Owner’s unsupported attorney argument to the contrary. Patent Owner’s assertion regarding the disclosures of the Hensen Provisional compared to the Hensen Patent are also without merit given that the latter incorporates the Hensen CIP by reference. Ex. 1009 ¶ 36. Accordingly, having reviewed the Parties’ arguments and evidence in this present record, we determine Petitioner demonstrates a reasonable likelihood that the Hensen Patent is prior art pursuant to 35 U.S.C. § 102(a)(2).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,635,385 - PTAB · Nov 6, 2023 · IPR2022-01421 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–30, finding a reasonable likelihood that the challenged claims are obvious over the specified combinations of prior art.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Institution Decision and directed us to revisit our analysis regarding Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Paper 14 (“Remand Decision,” “Remand Dec.”), 4–8. The Director agreed that our determination that the first part of the Advanced Bionics framework was met (id. at 5 (citing Orig. Inst. Dec. 9– 10)), but with respect to the second part of the Advanced Bionics framework, the Director stated: I find that Petitioner’s arguments and cited evidence establish that the Office erred in a manner material to patentability under the particular circumstances of this case. Specifically, Petitioner’s arguments and cited evidence establish there is substantial overlap in the subject matter described in the ’009 patent and the ’148 patent[1] (subject to the ʼ148 FWD)[2], generally, and the claimed subject matter recited by the challenged claims of the ’009 patent and of the ’148 patent, specifically. Remand Dec. 6 (citing Pet. 15–68; Ex. 1010; Ex. 2001). The Director further found that “the Office erred by overlooking the significance of the ’148 FWD as it pertains to the patentability of the claims of the ’009 patent.” Id. at 7. Lastly, the Director determined that, “under the specific circumstances of this proceeding, I find the second part of the Advanced Bionics framework is satisfied,” such that “the facts here do not warrant exercising discretion to deny institution under 35 U.S.C. §325(d).” Id. at 8. As such, given that the only discretionary issues argued by the parties were directed to denial under 35 U.S.C. §325(d) (see Pet.; Prelim. Resp.), we proceed to consider the merits of the grounds of unpatentability raised in the Petition. Further, as set forth below, we determine that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Thus, we institute an inter partes review in this proceeding.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that at least one claim of the ’009 Patent is unpatentable. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review is hereby instituted as to claims 1–30 of the ’009 Patent on the following asserted grounds: Claims 1–5, 8–24, and 26–30 under 35 U.S.C. § 103(a) as unpatentable over Roese, Golnabi, Huima, and Hayter; and Claims 6, 7, and 25 under 35 U.S.C. § 103(a) as unpatentable over Roese, Golnabi, Huima, Hayter, and Esbensen;” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of industry experience and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber- 3 U.S. Patent Publication No. 2006/0048142 A1 (filed Sept. 2, 2004) (published Mar. 2, 2006) (Ex. 1005, “Roese”). 4 K. Golnabi et al., Analysis of Firewall Policy Rules Using Data Mining Techniques, 2006 IEEE/IFIP Network Operations and Management Symposium, NOMS 2006, 10th IEEE/IFIP, 305–315 (2006) (Ex. 1008, “Golnabi”). 5 U.S. Patent Publication No. 2004/0015905 A1 (filed Oct. 26, 2001) (published Jan. 22, 2004) (Ex. 1006, “Huima”). 6 U.S. Patent No. 7,320,022 B2 (filed July 25, 2002) (issued Jan. 15, 2008) (Ex. 1007, “Hayter”). 7 U.S. Patent No. 5,226,141 (filed Nov. 18, 1991) (issued July 6, 1993) (Ex. 1009, “Esbensen”). attacks.” Pet. 5 (citing Ex. 1003 ¶¶ 37). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision.” slip op. at 7
- PTAB / AIA Trials › §315(e) estoppelDecided for patent owner
“Issue preclusion [(i.e., collateral estoppel)] is appropriate only if: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action.” In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994); see also MaxLinear, Inc., 880 F.3d at 1377 (citing Blonder-Tongue Labs., Inc. v. Univ. of Illinois Found., 402 U.S. 313, 91 S. Ct. 1501, 28 L.Ed. 2d 788 (1971) (finding collateral estoppel applies to a patentee who had a full and fair opportunity to litigate the validity of a patent in a prior federal case.)). With respect to the language of the instant challenged claims, we agree with Patent Owner on the issues of collateral estoppel. As Patent Owner points out, the prior determinations were made with respect to a different claim construction standard. Additionally, although the claims of the ’148 Patent and ’009 Patent are similar in scope, the recitations are not identical. Therefore, we evaluate the arguments and evidence presented in the Petition to determine whether Petitioner has demonstrated a reasonable likelihood that at least one of the challenged claims is unpatentable, rather than assuming that Patent Owner is generally estopped from asserting patentability of the challenged claims over previously presented art. Nonetheless, where appropriate, we consider the Petition’s citations to the ’148 FWD, which is part of the evidence of record in this proceeding. More particularly, we agree with Petitioner that certain issues were decided by the ’148 FWD, having been resolved against Patent Owner and affirmed by the Federal Circuit, and are binding in this proceeding. Pet. 11. Given that the ’009 Patent is a continuation of the ’148 Patent, sharing an identical Specification, we agree that Roese, Golnabi, Huima, Hayter, and Esbensen are acknowledged as prior art, that there would have been motivation to combine the references, and that combinations of those references demonstrate the obviousness of all claims of the ’148 Patent. See Id. at 11–12. slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,681,009 - Google LLC v. Mira Advanced Technology Systems, Inc.All claims unpatentablePTAB · Oct 20, 2023 · IPR2022-00742 · APJ Stacey G White · IPR · Final written decision
Claims 1–7 are unpatentable as obvious under § 103(a) over Dunton, Barchi, and Bedingfield.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Here, Petitioner asserts that a person having ordinary skill in the art “in the technology field of the ’854 Patent had a bachelor’s degree in Computer Science, Computer Engineering, or Electrical Engineering, or an equivalent course of study, as well as 2 or more years of academic or industry experience in the field of wireless communication devices and location-based services.” Pet. 12 (citing Ex. 1003 ¶ 65). Patent Owner “generally agrees with Petitioner” as to the level of ordinary skill in the art and does not propose any changes to Petitioner’s definition. PO Resp. 8. Petitioner’s description is consistent with the prior art and patent specification currently before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For purposes of our Decision, we adopt Petitioner’s description.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction In an inter partes review proceeding, a patent claim shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (as amended Oct. 11, 2018). Our rule adopts the same claim construction standard used by Article III federal courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. See Phillips, 415 F.3d at 1312–13. Petitioner “interpret[s] all claim terms in accordance with their ordinary and customary meaning.” Pet. 12. Patent Owner has not put forth any arguments in its papers related to claim construction.13 See PO Resp. 2. We determine that no claim terms require express construction for purposes of this Decision. 13 At the oral hearing, Patent Owner’s counsel indicated that a formal claim construction would be useful, but he also stated that “it’s too late to do anything like claim construction.” Tr. 43:1–6, 34:8–12. Notwithstanding Patent Owner’s comments at the oral hearing, we find that the issues in the case are amenable to resolution without an express claim construction.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do not agree with Patent Owner’s assertions. We find Petitioner’s rationale for the combination to be well supported. Petitioner points out that “Dunton itself states that ‘[t]echniques to improve management of [] tasks may result in more productivity and better time management’ and that ‘[a]ccordingly, there may be a need for such techniques in a device or network.’” Reply 17 (citing Ex. 1006 ¶ 1; Ex. 1003 ¶ 133) (alternations in original). Mr. Schmandt supports Petitioner’s arguments by opining that “[a person of ordinary skill in the art] looking to obtain additional information regarding where and when to perform tasks to improve management of tasks (as discussed in Dunton) would be motivated to look to references like Barchi that teach methods to obtain additional contact information using techniques like the reverse phone number lookup or use of other databases.” Ex. 1003 ¶ 135. Thus, we agree with Petitioner and find that Dunton provides a rationale for looking to the other cited references to provide techniques to improve task management. As such, we find Petitioner’s rationale for the combination to be persuasive and well supported.” slip op. at 33
Patent outcomesUS 10,594,854 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,594,854 - Netflix, Inc. v. VL Collective IP LLCInstitutedPTAB · Oct 3, 2023 · IPR2023-00630 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted inter partes review of claims 1–24 on all asserted grounds after finding a reasonable likelihood that Netflix would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in electrical or computer engineering, or a closely related scientific field such as computer science, and two years of work experience with multimedia content transmission and management.” Pet. 10. “Alternatively, any lack of experience could be remedied with additional education (e.g., a master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 4–5 years).” Id. Patent Owner does not address the level of ordinary skill. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision. slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner contends that “no claim terms require specific construction to resolve the unpatentability issues presented” in the Petition. Pet. 15–16. For purposes of this decision, we do not construe any claim terms.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“to combine the teachings of Cassin and Huston because both references concern controlling delivery of content to a remote device over a network, and the combination provides the benefit of Cassin’s media content delivery system with a differencing engine to determine whether this is content to delete from the remote client and sending a command to delete such content as taught by Huston. Pet. 32–35 (citing Ex. 1003, Wechselberger Decl. ¶¶ 202–204). Petitioner also contends that a person of ordinary skill would have had a reasonable expectation of success in combining the teachings of Cassin and Huston because adding a delete command to a server was a known technique and would have been straightforward to a person of ordinary skill in the art. Pet. 35–36 (citing Ex. 1003 ¶ 205). Huston discloses a differencing engine to detect whether a more recent version of a data item stored in cache is available, and if so, to delete the current version and store the more recent version in order to increase the accuracy and coherence of the cache. Ex. 1005, Abstract, 3:37–44. On this record, we are persuaded by Petitioner, that a person of ordinary skill would have updated data items stored by the remote client of Cassin by deleting old versions in order to yield the benefits of increasing accuracy and coherency as taught by Huston. For purposes of this Decision, we are sufficiently persuaded that Petitioner cites sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Cassin and Huston.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,440,559 - Cisco Systems, Inc. v. Netsocket, Inc.InstitutedPTAB · Sep 26, 2023 · IPR2023-00606 · APJ Stacey G White · IPR · Institution
Instituted inter partes review on claims 1–9 over all six asserted § 103 grounds; the Board found a reasonable likelihood of prevailing and compelling merits for claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown at least a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Here, factors 1 and 3 are neutral. However, factors 2 and 4 weigh in favor of not denying institution, while factor 5 favors denying institution. Thus, we conclude this factor weighs in favor of discretionary denial. In this case, we find the merits compelling for the reasons stated below, and as such we need not determine the extent to which other relevant circumstances not discussed in the other factors could have impacted this analysis. Below, we address the merits of the patentability challenges set forth in the Petition. We then address whether the Petition presents compelling merits.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In determining whether to deny institution under § 325(d), we use the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Under the first part of the Advanced Bionics framework, we consider “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Id. It is undisputed that the same art was not presented to the Office. The question before us is whether substantially the same art or arguments were previously presented. The Schelén Thesis is cited on the face of the ’601 patent. See Ex. 1001, code (56). The Schelén Thesis has a common author with Schelén-1997, Schelén-1999, and Degermark. See Prelim. Resp. 21. Patent Owner states that there are “similarities in subject,” but does not direct us to specific overlap in the content of the Schelén Thesis and the art cited in the Petition. Id. In addition, Patent Owner does not indicate that any arguments made during prosecution are “substantially similar” to those before us in this proceeding. Overlap in authorship on its own is not sufficient to persuade us that the same or substantially the same art or arguments previously were presented to the Office. As a result, Patent Owner has not satisfied the first part of the Advanced Bionics framework. Accordingly, for the reasons discussed above, we decline to deny institution under § 325(d).” slip op. at 14
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art: would have had a working knowledge of the mobile telecommunication network art that is pertinent to the ’601 patent. A POSITA would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of experience working with wireless communication systems, including cellular networks that utilize IP-based core networks. Lack of work experience can be remedied by additional education, and vice versa. Pet. 11 (citing Ex. 1003 ¶¶ 19–21). Patent Owner does not challenge Petitioner’s description of the level of ordinary skill in the art. Prelim. Resp. 6. We are persuaded that Petitioner’s description is consistent with the prior art and patent specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we adopt Petitioner’s description.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,616,601 - Cisco Systems, Inc. v. Netsocket, Inc.InstitutedPTAB · Sep 26, 2023 · IPR2023-00607 · APJ Richard M Lebovitz · IPR · Institution
The Board instituted IPR on claims 1–9, finding a reasonable likelihood that claims 1–5, 7, and 8 are obvious over Xiao, Schelen-1, and Gibson, and claims 4–8 over those references and Schelen-2.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely filed response may be deemed waived.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“about one or two months after the projected final written decision deadline. Thus, in view of the likelihood that a final written decision will precede the trial date, Fintiv factor 2 weighs in favor of not denying institution, particularly because if the final written decision precedes the district court date, Petitioner would be estopped under 35 U.S.C. § 315(e)(2) from raising at trial any grounds that were raised or reasonably could have been raised in this proceeding.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In determining whether to deny institution under § 325(d), we use the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Under the first part of the Advanced Bionics framework, we consider “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Id. It is undisputed that the same art was not presented to the Office. The question before us is whether substantially the same art or arguments were previously presented.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We find Petitioner has sufficiently shown, on the present record and for the purposes of institution, that a person of ordinary skill in the art would have had a reason to combine the teachings of Xiao, Schelen-1, and Gibson, and that the combined teachings of these references disclose every limitation of claim 1. Therefore, Petitioner has demonstrated at least a reasonable likelihood of showing that claim 1 is unpatentable over Xiao, Schelen-1, and Gibson. 4. Dependent claims 2–5, 7, and 8 Petitioner asserts that dependent claims 2–5, 7, and 8 are unpatentable under 35 U.S.C. § 103 as obvious over Xiao, Schelen-1, and Gibson. Pet. 71–76. We have reviewed Petitioner’s arguments and evidence and we find them to be persuasive. Patent Owner’s Preliminary Response does not separately address these dependent claims. See Prelim. Resp. 8–11. Petitioner has shown sufficiently for purposes of this Decision that the combination of Xiao, Schelen-1, and Gibson teaches or suggests all of the limitations recited in claims 2–5, 7 and 8, and has articulated sufficient reasoning to combine these references. Therefore, Petitioner has demonstrated a reasonable likelihood of showing that these claims are unpatentable over Xiao, Schelen-1, and Gibson.” slip op. at 53
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,190,698 - Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentablePTAB · Sep 1, 2023 · IPR2022-00650 · APJ Brian D Range · IPR · Final written decision
Claims 1–3, 5–8, 11–14, and 16 are unpatentable over the asserted anticipation and obviousness grounds.
RulingsFinal written decision- Additional discoveryAdditional discovery, deniedDenied
“To succeed, a motion to submit supplemental information pursuant to 37 C.F.R. § 42.123(b) must meet two requirements. First, the motion must show why the supplemental information reasonably could not have been obtained earlier. 37 C.F.R. § 42.123(b). Second, the motion must show that consideration of the supplemental information would be in the interest of justice. Id. As we explain below, Patent Owner’s motion fails to meet either requirement.” slip op. at 10
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“B. Patent Owner’s Objections to Petitioner’s Demonstrative Slides Patent Owner objects to a number of Petitioner’s demonstratives for oral argument because, for example, the demonstratives constitute evidence that Petitioner did not reference or discuss in a prior paper. See, e.g., Paper 29 passim. We have considered the objections. Demonstratives for oral argument, however, are not evidence. Paper 24, 2 (Order Setting Oral Argument); see also Consolidated Trial Practice Guide 84, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Demonstrative exhibits used at the final hearing are aids to oral argument and not evidence.”). We do not rely on demonstratives as evidence in our decision making; instead, we rely solely on the arguments properly presented in the parties’ briefs and the evidence of record. Because demonstratives do not affect our decision making, Patent Owner’s objections to the demonstratives likewise do not affect our decision making. We dismiss Patent Owner’s objections as moot.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennas used in RFID devices versus developing antennas used in RFID devices for inductive coupling). The specification of the ’304 patent describes its technical field as relating to a smart card that may comprise an RFID (radio frequency identification) chip with antenna components for operating in contactless modes. Ex. 1001, 1:37–54. The specification discusses both inductive and capacitive coupling. See, e.g., id. at 3:14–39. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be used by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Id. Thus, we are not persuaded that the level of ordinary skill should be confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Pet. 7.9” slip op. at 18
- Expert testimonyPetitioner expert creditedDecided for petitioner
“F. Dr. van der Weide’s Testimony Patent Owner argues that we should not give substantial weight to the testimony of Petitioner’s declarant, Dr. van der Weide, for several reasons. PO Resp. 45–51. Patent Owner first argues that Dr. van der Weide lacks relevant experience to provide opinions through the lens of a person having ordinary skill in the art. Id. at 45–46 (citing Ex. 2003 ¶ 96). According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. at 45. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. van der Weide’s experience exceeds even Patent Owner’s articulation of the level of ordinary skill in the art. Pet. Reply 25–27 (citations omitted). Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 19
Patent outcomesUS 9,633,304 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,633,304 - Google LLC v. Parus Holdings, Inc.All claims unpatentablePTAB · Aug 1, 2023 · IPR2022-00358 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–15 are unpatentable under § 103 over Wise and Shaffer, with Burrows added for claims 3–15; the Board did not reach the Kovatch-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 4–5. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Mr. Lipoff supports this articulation, and neither Patent Owner nor Mr. Winters proposes any different articulation. See Ex. 1002 ¶ 74; Ex. 2063 ¶ 41 (Mr. Winters stating factors considered in defining a person of ordinary skill in the art, without stating the education or experience held by such a person). Because we find Petitioner’s proposal reasonable, uncontroverted, consistent with the level of skill reflected by the prior art, and supported by Mr. Lipoff’s testimony, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party proposes any express construction of any term. Pet. 5 (“Petitioner does not believe that any express constructions are necessary to resolve the invalidity issues presented in this petition”); PO Resp. 1 (“Patent Owner believes that claim construction is unnecessary and all terms of the Challenged Claims should be given their plain and ordinary meanings.”). On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Ex. 1001, 19:64–20:5. For this “sequential access” limitation, Petitioner relies on Shaffer’s disclosure of sequentially accessing websites according to a list, until a user is satisfied with what has been returned or the list is exhausted. Pet. 55–56. Supported by Mr. Lipoff’s testimony, Petitioner reasons that a person of ordinary skill in the art would combine Shaffer’s sequential access technique with Wise’s system “because it would have been beneficial to maximize the likelihood of finding the desired information more quickly and efficiently use computing resources, by searching in the most likely sources first, and proceeding through Wise’s index list until the user is satisfied or the list is exhausted.” Id. at 56 (citing Ex. 1002 ¶ 243). Patent Owner does not specifically dispute Petitioner’s reasons for effecting the combination of teachings from Wise and Shaffer, which we find sufficiently articulated and supported; instead, Patent Owner contends that the combination does not meet the sequential access limitation. See PO Resp. 78 (“Assuming, arguendo, this is a combination a [person of ordinary skill in the art] would consider, this combination does not disclose this claim limitation.”). Patent Owner makes two points in this respect. First, Patent Owner reiterates its contention, addressed above, that “Mr. Lipoff expressly does not rely on the Wise search index (option 1) for his opinion of the Wise disclosure of a plurality of websites.” PO Resp. 78. For the reasons we discuss in the preceding subsection, we agree with Petitioner that Patent Owner’s argument relies on “a misinterpretation of out-of-context deposition testimony.” Reply 6. As Petitioner adds, Wise discloses that an “index may be stored as one or more documents preferably in a hierarchical order” and “[t]he user may use the navigation commands to traverse the index and invoke a link to a source document.” Id. at 8; Ex. 1007, 10:7–10. Second, Patent Owner takes the position that the claim language precludes user interaction or instructions during the process of the sequential search. See PO Resp. 80. But Patent Owner provides insufficient evidentiary support for that position, and we agree with Petitioner that Patent Owner’s interpretation invokes a negative limitation that is unsupported by the plain and ordinary meaning of the claim language. See Reply 8. “While a negative limitation need not be recited in the specification in haec verba, there generally must be something in the specification that conveys to a skilled artisan that the inventor intended the exclusion.” Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1017 (Fed. Cir. 2022). In this instance, both parties and both experts agree that the specification of the ’941 patent is silent with respect to user participation during sequential access. PO Resp. 81 (Patent Owner asserting that “[t]he ’941 patent is silent as to the participation of a user in the sequential search process”); Ex. 2063 ¶” slip op. at 25
- Strike new argumentNew argument disregardedDecided for petitioner
“Based on these facts, we find insufficient reason to exclude user interaction from the plain and ordinary meaning of the sequential access limitation. We thus determine that Shaffer—which clearly involves user interaction, see Ex. 1011, 6:3–29—meets the limitation. We also determine that Petitioner articulates sufficient reason, supported by rational underpinning, to achieve the combination of teachings it proposes. We accordingly determine that Petitioner makes a sufficient showing for the sequential access limitation. 5 In its Sur-reply, Patent Owner asserts that “[a]s discussed in the [Patent Owner Response], the ’941 specification teaches against the notion of user interaction in the claim limitations involving sequentially accessing.” Sur-Reply 6 (citing PO Resp. 80–81). We disagree with this characterization of the Patent Owner Response, and treat this assertion as a new argument impermissibly raised for the first time in the Sur-reply. See 37 C.F.R. § 42.23(b) (“A sur-reply may only respond to arguments raised in the corresponding reply”). Regardless, even if we considered this argument, we would find it unpersuasive. Based on our independent review of the specification of the ’941 patent, in agreement with both experts, and in agreement with other statements of both parties, we find the specification to be “silent” on user interaction. See also Tr. 48:25–49:23 (Patent Owner conceding at oral hearing that the specification “is silent” on this issue).” slip op. at 27
Patent outcomesUS 7,881,941 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,881,941 - Google LLC v. Parus Holdings, Inc.All claims unpatentablePTAB · Aug 1, 2023 · IPR2022-00523 · APJ Thu A Dang · IPR · Final written decision
Claims 1–15 are unpatentable: claims 1–2 as obvious over Wise and Shaffer, and claims 3–15 as obvious over Wise, Shaffer, and Burrows.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Mr. Lipoff, contends that a POSITA “would have had a Bachelor’s Degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing,” wherein “[m]ore education could substitute for less experience, and vice versa.” Pet. 4–5 (citing Ex. 1002 ¶¶ 40, 61–74). Patent Owner does not contest Petitioner’s proposal or offer an alternative. See generally PO Resp. 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’402 patent was filed before March 16, 2013, the effective date of the relevant amendment, the pre-AIA version of § 103 applies. claimed invention because, based on the record, this proposal is consistent with the ’402 patent, the asserted prior art, and is supported by the testimony of Mr. Lipoff.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner proposes any claim construction. See Pet. 5; See generally PO Resp. We do not perceive a need to construe any claim terms of the ’402 patent to resolve the disputed issues before us. See, e.g., 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) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”))); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“While a negative limitation need not be recited in the specification in haec verba, there generally must be something in the specification that conveys to a skilled artisan that the inventor intended the exclusion.” Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1017 (Fed. Cir. 2022). Here, Patent Owner does not provide sufficient evidentiary support that conveys an intended exclusion of user interaction during sequential access. Instead, both parties and both experts merely point out that the specification of the ’402 patent is silent with respect to user participation during sequential access. PO Resp. 73 (Patent Owner asserting that “the ’402 patent is silent as to the participation of a user in the sequential search process”); Ex. 2063 ¶ 289 (Mr. Winters testifying that “there is no disclosure in the specification of the ’402 patent related to user interaction in the sequential search process”); Pet. Reply 5 (Petitioner asserting that Patent Owner is “[i]mporting a requirement that user interaction is precluded by the claims—a negative limitation, when the specification is wholly silent on it”); Ex. 2061, 107:15–22 (Mr. Lipoff agreeing that “there’s no specific mention of the user interacting” in the portion of the specification related to “the sequential search”). As the Federal Circuit explained in Novartis, silence is not sufficient support for a negative limitation. See Novartis, 38 F.4th at 1017. interaction from the plain and ordinary meaning of the sequential access limitation. Instead, we are persuaded by Petitioner’s reliance on Shaffer for disclosing the sequential access limitation as recited. See Ex. 1011, 6:3–29. In particular, Shaffer discloses determining whether a system is at the end of a list of sites to visit, and sequentially visiting the sites until the user is satisfied. Ex. 1011, 6:3–29. Furthermore, Wise’s system accesses web pages relating to a subject phrase to retrieve user-requested information. Ex. 1007, 6:31–49. We credit the supporting testimony of Mr. Lipoff, which is consistent with the teachings of Wise and Shaffer, in which he testified that a POSITA would have been motivated to modify Wise’s system that accesses websites to retrieve user-requested information based on Shaffer, resulting in a system that accesses websites sequentially/subsequently until information is found. See Ex. 1002 ¶ 200. We disagree with Patent Owner that the ’402 patent’s specification “teaches against the notion of user interaction in the claimed ‘sequentially accessing’ operation,” which “is time consuming and inefficient.” PO Resp. 73–75. A given course of action often has simultaneous advantages and disadvantages, which “does not necessarily obviate motivation to combine.” Allied Erecting v. Genesis Attachments, 825 F.3d 1373, 1381 (Fed. Cir. 2016). Here, Petitioner has articulated sufficient reason, supported by rational underpinning, to effect the combination of teachings it proposes. We credit Petitioner’s contention, which is supported by Mr. Lipoff’s testimony, that a POSITA would have been motivated “to apply Shaffer’s sequential search technique when retrieving information from websites in Wise’s ranked index” in order to “maximize the likelihood of finding the desired information and efficiently use computing resources by searching in slip op. at 24
Patent outcomesUS 8,185,402 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,185,402
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.