- PTAB · Jan 5, 2023 · IPR2022-01117 · APJ Charles J Boudreau · IPR · Institution
The Board instituted IPR on claims 1–9, 11–26, and 28–30 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Applying those standards, and upon consideration of the arguments and evidence presented, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim, and accordingly, we institute an inter partes review as to all challenged claims of the ’731 patent on the grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “at least a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and 1–2 years of experience in the design or development of electronic devices or technology related to location management, or the equivalent.” Pet. 5 (citing Ex. 1003 ¶ 21). The words “at least” result in an unbounded skill level. With the exception of those words and for purposes of this Decision, we apply Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner contends that the claim phrase “at least one of . . . and,” which is recited, inter alia, in each of the independent claims, should be construed as “only one item from the list, or any combination of items in the list,” arguing that such construction is consistent with the use of that phrase throughout the ’731 patent specification and in statements made by the applicant during prosecution. Pet. 6 (citing Ex. 1001, 8:29–36, 9:9–19, 11:53–13:55; Ex. 1002, 144–45 (’731 patent prosecution file); Ex. 1003 ¶¶ 70–72). Petitioner further contends that no express constructions are necessary for any other claim terms and that all claim terms should be construed according to the Phillips standard. Id. at 5–6. Based on the current record and without any opposition from Patent Owner, we see no need for express construction of any term at this stage of the proceeding.” slip op. at 10
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,253,731 - PTAB · Jan 3, 2023 · IPR2022-00971 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–7, 9, 13, and 19 on all petitioned grounds, finding a reasonable likelihood that Gelvin anticipates at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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 arguments and evidence presented by Petitioner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“record, and does not expressly dispute Petitioner’s definition of a person of ordinary skill in the art. See gen. Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’771 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioner argues that even though the Board construed these terms under the broadest reasonable standard in the Motorola IPR, “[f]or purposes of this Petition, the Phillips standard does not require any different construction, and Petitioner’s proffered grounds are consistent with the above constructions.” Id. at 11. Patent Owner does not provide any express claim constructions nor dispute Petitioner’s proposed constructions from the Motorola IPR. At this preliminary stage of the proceeding, at least for the sake of consistency at institution, we rely on the Board’s earlier constructions in the Motorola IPR. We acknowledge that Patent Owner has not yet provided any substantive claim construction in its Preliminary Response, however Patent Owner has the opportunity to address this matter in its Patent Owner’s Response should it desire to do so.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted
“We consider Patent Owner’s argument, and agree to an extent, that Gelvin describes the PDA in Figure 5 as “coupl[ing] to the Internet 599 through a service provider that specializes in low-rate communications,” rather than through WINS network architecture 500. Ex. 1005, 9:48–50. But read in context, Gelvin does not appear limited to this embodiment. For example, after describing the three ways that Gelvin’s WINS network architecture 500 can couple to the internet, Gelvin broadly describes that “[t]he WINS vehicle internetwork of an embodiment includes functionality that enables convenient and secure coupling of diverse networks and devices.” Id. at 9:58–60. Also, Gelvin explains other ways in which the vehicle network connects with the Internet. Gelvin for instance, describes with respect to Figure 6 that “[i]n operation, the vehicular network 602 tries to select the most cost-effective communication alternative that provides the desired level of service.” Id. at 10:20–22. When connecting to an external ISP (Internet Service Provider), Gelvin explains that one option is “the ISP uses the vehicle’s cellular phone number to attempt to establish a coupling over the telephone network, and tunnel the packet through. While the cell associated cost, and thus the reason for attempting other means of communication.” Id. at 10:35–40. Gelvin’s disclosure does not, on the record at this stage of the proceeding, appear limited to the PDA communicating via the internet on its own network. Particularly, where Gelvin provides various embodiments and communication methods and explains that given the WINS architecture, “[p]otentially, any number of available methods of communication can be attempted.” Id. at 10:40–41.” slip op. at 20
Claim construction§ 102 anticipationPatents in suitUS 7,382,771 - Toyota Motor Corp. v. Intellectual Ventures II LLCInstitution deniedPTAB · Jan 3, 2023 · IPR2022-01127 · APJ Scott A Daniels · IPR · Institution
The Board denied institution because Toyota did not show a reasonable likelihood that any challenged claim was unpatentable, including because Peisa did not disclose selecting data from fewer than all radio bearers.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), 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 arguments and evidence presented by Petitioner, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The following limitation 1[g], however, provides that “in the first iteration . . . data is selected from a subset of the plurality of radio bearers.” Id. at 14:10–11 (emphasis added). This clause does not simply reiterate “the plurality of radio bearers,” but expressly adds “a subset.” The word “subset” plainly modifies “a plurality of radio bearers,” and must have some limiting meaning. For example, if we were to interpret “subset” as encompassing all or less than all of the radio bearers as Petitioner asserts, than the word, i.e., limitation, “subset” is entirely unnecessary, given that the claim already provides such broader meaning. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in claims superfluous). See Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim”). Indeed, if “a subset” can include data selected from all the radio bearer’s then Petitioner’s interpretation reads the term “subset” essentially, if not entirely, out of the claim.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“This argument and Dr. Akl’s testimony is problematic because it does not explain technically, or logically, why input flows that transmit less than “a determined fair distribution” are “non-selected.” Neither the arguments in the Petition, nor Dr. Akl’s testimony, fully address this particular jump in logic. Even if the input flow transmits less than its fair distribution of bandwidth, (and a backlog counter is incremented to reflect that the input flow has buffered data that was not transmitted), this does not explain that a particular radio bearer is excluded from being allocated bandwidth resources such that it is “non-selected,” i.e., that resources are applied only to less than all of the radio bearers. The Petition even tacitly acknowledges that each input flow in Peisa transmits data, explaining that “[w]hen the scheduling algorithm does reach step 445 in the first iteration, it will ‘update’ the ‘backlog counters’ for each input flow that did not get to transmit all of its data during the first iteration.” Id. at 49 (citing Ex. 1004, 9:1–34).” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“Apart from “a processor,” Petitioner does not discuss or analyze any additional limitations, including limitations 1[g] and 8[h], with respect to obviousness. See Pet. 63 (“Thus, the “processor” and ‘processor configured to . . .’ limitations of claims 1 and 8 would have at least been obvious based on Peisa.”). Petitioner relies on its evidence and arguments with respect to ground 1 for the remainder of the obviousness ground. See id. (The Petitioner states “given the above-discussed disclosures of Peisa in Ground 1 for the other limitations of claims 1–4, 6–11 and 13–14, Peisa would have at least rendered obvious claims 1–4, 6–11 and 13–14) (citing Ex. 1003 ¶¶ 169–73). Petitioner’s obviousness ground based on Peisa, thus does not provide persuasive evidence or arguments that a person of ordinary skill in the art would have understood Peisa to disclose the limitations in limitations 1[g] and 8[h]. Accordingly, based on the arguments and evidence of parties on the record before us, we determine that Petitioner has not established a reasonable likelihood of showing any of the challenged claims as obvious over Peisa.” slip op. at 31
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,292,138 - PTAB · Nov 3, 2022 · IPR2022-00922 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR on claims 10, 38, and 101 on all asserted grounds, finding a reasonable likelihood that claim 10 is unpatentable over Heller.
RulingsInstitution decision- Parallel petitionsDenied
“This summary reflects that the pair of petitions do not overlap in the claims challenged, but rather overlap in the sense that both petitions include two “families” of challenges to claims, Heller-based challenges and Gross-based challenges. Patent Owner argues that Petitioner should have presented its Heller-based challenges in one petition and the Gross-based challenges in another petition so that we could have separately decided whether to institute review of each family of challenges. Patent Owner’s argument has merit insofar as presenting each family of challenges against all 11 of the claims that are collectively challenged may have resulted in fewer words overall. We would have preferred Patent Owner’s suggested approach. Nevertheless, we institute review in both proceedings for two primary reasons. First, we find Petitioner’s explanation for why it could not fit both families of challenges into the word-count allocated to one petition reasonable. For example, Petitioner spent a substantial portion of its allocated word-count addressing issues of discretionary denial under §§ 314 and 325(d) on the chance that Patent Owner would request such a denial. See, e.g., Pet. 80–88. Doing so, trimmed the space available to address the merits of its challenges, the subject matter that forms the basis of inter partes review. Ultimately, Patent Owner chose not to request discretionary denial on the issues Petitioner addressed. We consider it reasonable for Petitioner to have used space to address these issues of discretionary denial, with the result that addressing all issues of patentability could not fit in one petition. Petitioner also devoted considerable space explaining the relevant prosecution history and educating the panel on concepts that were within the background knowledge of an ordinarily skilled artisan relating to calibration of glucose monitoring devices and methods. Pet. 8–15, 30–35. These portions of the Petition provide critical context for deciding the merits of all the challenges presented. The merits of Petitioner’s challenges as collectively presented in the ’921 Petition and this Petition warrant an inter partes review, and a trial will resolve the dispute over all those challenges with estoppel effect. Second, we find that material differences exist between the Heller- based and Gross-based challenges that require independent analyses. These material differences are apparent from even a high-level review of the arguments presented in the Petitions and Preliminary Responses. We agree with Patent Owner that substantial overlap exists between the two Petitions when comparing the Heller-based challenges in the two petitions or the Gross-based challenges in the two petitions. Ranking Resp. 2–3. But this overlap reduces the burden that the Patent Owner will bear in responding to those challenges and the burden that we will face in adjudicating them. Accordingly, we discern no undue burden placed upon us or the parties in having a trial in both proceedings so that the merits of the Heller-based and Gross-based challenges can be resolved with estoppel effect by a final written decision. Collectively, the two petitions reasonably challenge the patentability of 11 claims based on two different primary references. We discern nothing unusual about the scope of this dispute that justifies considering only the challenges set forth in the ’921 Petition.” slip op. at 8
- BurdenDecided for petitioner
“Regarding Patent Owner’s first argument, Petitioner persuades us that Heller’s “factory-determined calibration measurements” are reasonably likely to constitute “prior calibration information” that includes “prior sensitivity information associated with the transcutaneous glucose sensor.” First, that the calibration measurements are “factory-determined” implies “prior” generation of the information. Second, Heller expressly describes its processing circuit 109 using this calibration data to “correct signals from sensor 42.” Ex. 1005, 77:6–7. Second, Dr. Smith strongly supports his testimony regarding what an ordinarily skilled artisan “would have recognized” about Heller’s calibration measurements by citing numerous examples of objective evidence that appear to be highly probative based on our initial review. Third, Patent Owner offers no expert testimony at all much less testimony that refutes Dr. Smith’s opinion or establishes that the objective evidence upon which he relies fails to support his opinion. Instead, Patent Owner merely responds with argument from its attorneys and their implied opinion about what an ordinarily skilled artisan “would have recognized” about Heller’s factory-determined calibration measurements. Accordingly, we find Dr. Smith’s testimony to be unopposed at this stage of the proceeding and more than sufficient to meet Petitioner’s burden to establish a reasonable likelihood that Heller describes limitation 10d.” slip op. at 21
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“of the challenged claims expressly recites “means” and all are presumed not to contain terms that are subject to interpretation under § 112, ¶ 6. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). The Federal Circuit explained the procedure for rebutting the presumption against interpreting a claim term that does not recite “means” as a means-plus-function limitation as follows: The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. . . . When a claim term lacks the word “means,” the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to “recite sufficiently definite structure” or else recites “function without reciting sufficient structure for performing that function.” Id. at 1349 (internal citations omitted). At this stage of the proceeding, neither party has presented evidence probative of whether an ordinarily skilled artisan would understand “processor programmed to calibrate . . .” as recited in claim 1 has a “sufficiently definite meaning as the name for structure.” In the absence of such evidence, we must presume that the term is not interpreted as a means-plus-function limitation, just as Petitioner proposes. See Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018) (vacating conclusion that “program that can operate” and “code being configured to” were means-plus-function limitations when challenger failed to adduce evidence probative of the understanding of ordinarily skilled artisan). We discern no requirement in Rule 42.104(b)(3) to require Petitioner to advance” slip op. at 12
- Other 314aInstitution denied discretionary otherDenied
“Recognizing that the briefing and evidence before us may not result in a violation of Rule 42.104(b) because the parties place no issue in dispute on whether § 112, ¶ 6 applies, the dissent concludes that we should deny the Petition in our discretion. The exercise of discretion would be warranted to promote the interests of: “efficiency in the patent system, improvement of patent quality, and reduction of counterproductive litigation costs.” Dissent 11–12. We disagree. The District Court of Delaware has stayed its consideration of all issues of patent infringement, patent invalidity, and unenforceability pending resolution of Petitioner’s defense of non-infringement due to license and counterclaim for breach of license. Ex. 1089, 2. Trial in the District Court on the issues not stayed has been set for July 10, 2023. Id. at 12. In effect, the District Court of Delaware likely will not reach the merits of Petitioner’s obviousness arguments until after we enter a final written decision in this proceeding. Petitioner provides the evidence necessary to decide the issues it has presented, and Patent Owner will have a full and fair opportunity to meet that evidence. If Patent Owner wishes to make a case that § 112, ¶ 6 applies to the processor limitations, it is free to do so. After we enter a final written decision, Petitioner will be estopped under 35 U.S.C. § 315(e) from litigating an invalidity defense that it raised or could have raised before us. Assuming that Petitioner were to press an indefiniteness defense based on § 112, ¶ 6 applied to the processor limitations in the District Court, that Court will be able to decide whether positions taken by Petitioner before us would preclude it from advancing that defense in that forum. Simply, we find it to be most efficient for us to resolve the issues of patentability presented by both parties during a trial before the Board and for the District Court to resolve the legal issues presented by the parties in that forum when the time comes, which will exclude invalidity defenses that were or could have been raised by Petitioner here. For all these reasons, we do not discretionarily deny the Petition. D. Legal Standards” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,993,642 - PTAB · Nov 3, 2022 · IPR2022-00921 · APJ Mitchell G Weatherly · IPR · Institution
Instituted IPR on all challenged claims and grounds after finding a reasonable likelihood that claim 1 would be unpatentable as obvious over Heller and Flaherty.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(Paper 5, “Pet.”) to institute an inter partes review of claims 1, 5, 7, 8, 66, 67, 89, and 91 (the “challenged claims”) of U.S. Patent No. 10,993,642 B2 (Ex. 1001, “the ’642 patent”). 35 U.S.C. § 311. DexCom, Inc. (“Patent Owner”) timely filed a Preliminary Response. Paper 11 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on our review of the record, we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- BurdenDecided for petitioner
“(1) Heller does not expressly describe “prior calibration information generated before insertion” that “comprises prior sensitivity information,” Prelim. Resp. 19–22; (2) Dr. Smith’s testimony regarding what an ordinarily skilled artisan would have “recognized” about Heller’s “factory-determined calibration measurements” impermissibly modifies Heller without identifying differences between Heller and the other prior art cited by Dr. Smith and fails to demonstrate any motivation for modifying Heller, id. at 23–25; and (3) Petitioner fails to prove that an ordinarily skilled artisan would have had a reasonable expectation of succeeding in modifying Heller, id. at 25–26. None of Patent Owner’s arguments are persuasive on the record before us.” slip op. at 18
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Second, claim 1 does not expressly recite “means” and is thus presumed not to be subject to interpretation as a means-plus-function limitation. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). The Federal Circuit explained the procedure for rebutting the presumption against interpreting a claim term that does not recite “means” as a means-plus-function limitation as follows:” slip op. at 9
- Strike new argumentNot reached
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,993,642 - Abbott Diabetes Care Inc. v. Dexcom, Inc.Institution deniedPTAB · Nov 3, 2022 · IPR2022-00917 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on all challenged claims and grounds because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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) (2018). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons set forth below, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of the challenged claims in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art at the relevant time would have had a “bachelor’s degree in biomedical engineering, mechanical engineering, chemical engineering, or materials science and engineering (or a related or equivalent field), and two or more years of experience researching, developing, designing, and/or evaluating (or supervising the same) medical devices for measuring analyte levels, e.g., analyte sensors, or equivalent experience.” Pet. 12 (citing Ex. 1003 ¶¶ 17–21). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’452 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“given their plain and ordinary meaning.” Pet. 30. Presumably because the plain meaning applicable to all of the claim terms in the ’452 patent is readily apparent, Petitioner does not provide any particular construction for any of the claim terms. See generally id. Patent Owner likewise offers no particular construction for any of the claim terms. See generally Prelim. Resp. Patent Owner does argue, however, that the claimed inventions (specifically, independent claims 1, 19, and 62) are distinguishable from the various structural configurations Petitioner relies upon in the prior art when the plain meaning of “over” and “at least partially surrounds” are applied appropriately. See Prelim. Resp. 39–46. Thus, rather than disputing the meaning Petitioner proposes for the claim terms, Patent Owner disputes whether Petitioner properly applied the plain meaning of all the claim terms in the unpatentability contentions that the Petition presents. Claims are construed only to the extent necessary to resolve a dispute. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, both parties rely on the plain and ordinary meaning for all of the terms used in the claims challenged in the Petition and neither party suggests a particular meaning beyond what is clearly conveyed by the claim terms in the context of the ’452 patent. Therefore, we need not construe expressly any of the claim terms.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not shown sufficiently that Cheney/Lord discloses a sealing member that is at least partially located over the contact holder. Cheney’s Figure 2 and 3 show connector block 26, which Petitioner alleges is a sealing member, as being supported solely by its sides within aperture 40 of housing member 34, which Petitioner alleges is a contact holder, and no portion of the connector block 26 is above or over any portion of housing member 34. Petitioner has not demonstrated sufficiently that the plan and ordinary meaning of the term “over” in the context of the ’452 patent would have been understood to encompasses such a configuration.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,980,452 - Abbott Diabetes Care Inc. v. Dexcom, Inc.Institution deniedPTAB · Nov 3, 2022 · IPR2022-00918 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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) (2018). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons set forth below, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of the challenged claims in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts, with the support of its expert, that a person of ordinary skill in the art at the relevant time would have had a “bachelor’s degree in biomedical engineering, mechanical engineering, chemical engineering, or materials science and engineering (or a related or equivalent field), and two or more years of experience researching, developing, designing, and/or evaluating (or supervising the same) medical devices for measuring analyte levels, e.g., analyte sensors, or equivalent experience.” Pet. 11 (citing Ex. 1003 ¶¶ 17–21). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’452 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that, for its Petition, all claim terms “should be given their plain and ordinary meaning.” Pet. 27. Presumably because the plain meaning applicable to all of the claim terms in the ’452 patent is readily apparent, Petitioner does not provide any particular construction for any of the claim terms. See generally id. Patent Owner likewise offers no particular construction for any of the claim terms. See generally Prelim. Resp. Patent Owner does argue, however, that the claimed inventions (specifically, independent claim 41) are distinguishable from the various structural configurations Petitioner relies upon in the prior art when the plain meaning of “over” and “at least partially surrounds” are applied appropriately. See Prelim. Resp. 16–31. Thus, rather than disputing the meaning Petitioner proposes for the claim terms, Patent Owner disputes whether Petitioner properly applied the plain meaning of all the claim terms in the unpatentability contentions that the Petition presents. Claims are construed only to the extent necessary to resolve a dispute. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, both parties rely on the plain and ordinary meaning for all of the terms used in the claims challenged in the Petition and neither party suggests a particular meaning beyond what is clearly conveyed by the claim terms in the context of the’452 patent. Therefore, we need not construe expressly any of the claim terms.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We find merit in Patent Owner’s arguments. When considering the disclosures of Cheney, Lord, and Shah in their entirety, as we must, we are not persuaded Petitioner has identified sufficiently a rational underpinning that supports the reasoning for why a skilled artisan would have modified Cheney/Lord in the manner claimed. Petitioner proposes modifying Cheney/Lord by adding a sealing layer, such as the one Shah discloses, to the opposite side of the sensor proximal segment 20 that is connected to connector block 26 to further enhance the seal around the sensor and provide the sensor additional protection against moisture. At first glance this may seem like a valid reason, but further inspection of Cheney, Lord, and Shah demonstrates that those references provide no evidentiary support for the alleged reason. Cheney/Lord describe the sensor proximal segment 20 as being a flexible thin film sensor including elongated thin film conductors embedded or encased between upper and lower layers of insulative material, which has openings for exposing the conductive contact pads 22 that electrically interconnect with the corresponding connective strips 40 in connector block 26, which sealingly engages with sensor proximal segment 20 to hermetically seal the contact pads against moisture ingress. Ex. 1006, 2:11– 23, 3:16–24, 3:34–40, 3:51–4:3; Ex. 1005, 1:33–42, 3:45–57. We find nothing in Cheney/Lord that even suggests a skilled artisan would have had a need for improving the sealing characteristics of the insulative material on the side of the sensor proximal segment 20 that is opposite of the side connected to connector block 26. On the contrary, Cheney/Lord teaches that a hermetic seal can be created by connecting connector block 26 to only the side of the sensor proximal segment 20 with exposed conductive contact pads 22; Cheney/Lord teaches that the other side is already fully embedded or encased within an insulative material. Shah is no more availing as evidence supporting Petitioner’s reasoning. Rather than suggesting a need to further enhance the seal covering the sensor proximal segment 20 on the side opposite of the side with exposed conductive contact pads 22, Shah teaches that it sealing layer 25 is intended “to seal the location where the needle penetrates” mounting base 10 to reach the infusion site and provide “a more sanitary infusion site by keeping the infusion site insulated.” Ex. 1019 ¶ 39, Figs. 2, 3B. As Patent Owner correctly argues, Petitioner’s proposed modification would completely thwart the ability of sealing layer 25 to perform that intended function because the sensor proximal segment 20 is located a significant distance away from the needle penetration area, thus, preventing sealing layer 25 from offering any insulating protection to the infusion site. And contrary to suggesting adding a sealing layer to the unexposed side of the sensor proximal segment 20, Shah suggests there is no importance to having a sealing layer over the sensor’s unexposed side by stating that sealing layer 25 “may be located so that it is only covering the needle insertion area.” Ex. 1019 ¶ 39 (emphasis added). Mr. Leinsing also offers little, if any, support to Petitioner’s reasoning. In fact, the declaration of Mr. Leinsing is largely duplicative of the contentions Petitioner argues in the Petition. Compare Pet. 60–64 with Ex. 1003 ¶¶ 376–388. Most notably, Mr. Leinsing does not even suggest (let alone provide a reasoned basis to show) a skilled artisan would have appreciated the need to further tighten/enhance the seal above the sensor and connector block in Cheney/Lord and provide additional protection of the sensor/connector against moisture; instead, Mr. Leinsing simply states “it would have been obvious to use the sealing layer of Shah on the opposite side of the sensor from Cheney/Lord’s connector block to further tighten/enhance the seal around the sensor and thus provide additional protection of the sensor/connector against moisture.” Ex. 1003 ¶ 386. As a result, we give little persuasive weight to the testimony of Mr. Leinsing. Therefore, we find Petitioner has not demonstrated sufficiently a reasonable likelihood of proving that Cheney/Lord in view of Shah discloses a seal member that “at least partially surrounds the electrical contact and at least a portion of the transcutaneous glucose sensor when the transcutaneous glucose sensor is operably connected to the sensor electronics,” as recited in independent claim 41. Furthermore, as noted above, Petitioner’s contentions regarding the Lord/Shah combination is substantively the same and, as such, the same reasons and result apply.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,980,452 - PTAB · Nov 2, 2022 · IPR2022-00909 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–5, 12, 19, and 23 on all asserted grounds after finding a reasonable likelihood that claim 1 would be obvious over the Guide, alone or with Harper.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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 arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not expressly dispute Petitioner’s asserted level of ordinary skill in the art asserting that “the Petition fails even if Petitioner’s POSA definition is adopted.” Prelim. Resp. 8. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’215 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The claim limitations which Patent Owner desires Petitioner to construe read clearly and unambiguously. Limitation 1[b] recites the step: evaluating sensor data using a second function to determine whether a parameter indicative of glucose value meets one or more non user settable second criteria; Ex. 1001, 48:39–41. The plain and ordinary meaning of this phrase is that the claimed “second function,” “determine[s] whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Id. At this stage of the proceeding neither party has indicated that this phrase or any specific terms in the phrase cannot be understood by a person of ordinary skill in the art, nor has either party provided an express claim construction for the Board to consider. Patent Owner contends that [i]n its claim construction briefing in the related litigation, DexCom explained that “second function” should be construed as a “function that provides a predictive alert/alarm” in part because the specification’s statement that “the present systems and methods relate to providing accurate predictive alarms” (Ex[1001], 1:30–33) limits the scope of the invention. Prelim. Resp. 14 (citing Ex. 1024, 15) (emphasis added). Patent Owner’s argument is that the Board should read the term “predictive” from the specification into the meaning of the “second function,” although neither independent claim recites the word “predictive.” Id. What is not clear at this point in the proceeding is why we should read the term “predictive” into claim 1. Patent Owner argues, for example, that Petitioner’s “[g]round 1 reads the ‘second function’ onto an alleged Guide function that does the same thing the alleged first function does – it compares a real-time glucose value against a threshold.” This characterization of the plain meaning of the claim language and the first and second functions is not entirely accurate however. The “second function” in claim 1 is determined based on “non user settable second criteria,” and is readily distinguishable from the “first function” determined based on “user settable second criteria.” See Ex. 1001, 48:36–41. On the evidence and arguments at this stage of the proceeding, we find persuasive Petitioner’s position that the Guide discloses a “first function” that alerts the user as to low and high glucose levels based on user settable thresholds. See Ex. 1004, 54 (“One of the benefits of the DexCom™ STS™ System is your ability to select high and low glucose alerts that will tell you when your glucose values are out of your target range.”). Also, we are persuaded that the Guide teaches a “second function,” “[w]hen the STS Sensor detects a glucose level below 55 mg/dL (3.1 mmol/L) your STS Receiver will vibrate to notify you of a very low glucose value by displaying the following screen:” Ex. 1004, 56. The Guide states that “[y]ou cannot change or turn off the Low Glucose Alarm.” Id.” slip op. at 25
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“unavailable as of October 2006, instead Patent Owner disputes that the Petition “allege[s] facts sufficient to establish the Guide was a printed publication.” Prelim. Resp. 10 (citing Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018)). Petitioner however, expressly describes the archived Guide scraped by the Wayback Machine and refers the reader to the declarations of Hall and Hall-Ellis for supporting testimonial evidence as to the asserted public availability of the archived Guide. Pet 11 (citing Ex. 1010; Ex. 1011; Ex. 1014; Ex. 1015). LKQ has made a sufficient evidentiary showing for purposes of institution that the Guide qualifies as prior art under § 102. See Ex. 1010 ¶¶ 7–8, see also Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039 (PTAB Dec. 20, 2019) (Paper 29) (holding that under 35 U.S.C. § 311(b), for purposes of institution, a petitioner must show a reasonable likelihood that an asserted reference qualifies as a printed publication) (Precedential), see also, Sandoz Inc. v. Abbvie Biotechnology Ltd., No. IPR2018-00156, 2018 WL 2735468, *4-5 (P.T.A.B. June 5, 2018) (finding Wayback Machine screenshot and expert testimony adequate evidence to establish FDA website as a prior art printed publication). In addition, Petitioner provides corroborating exhibits, including U.S. Food & Drug Administration Premarket Approval Order indicating, consistent with the Internet Archive records, that DexCom STS Continuous Monitors received pre-market approval on March 24, 2006. Ex. 1014. Also, consistent with both the Internet Archives evidence and the FDA Approval Order, Petitioner provides a June 2006 JP Morgan research paper discussing the American Diabetes Association scientific session in Washington, DC stating that “[h]ighlights included the results of two studies using Abbotts FreeStyle Navigator and two more from Dexcom involving its recently approved STS device.” Ex. 1015, 1. Overall, we determine that Petitioner has shown a reasonable likelihood that the Guide was publicly available more than one year before, October 30, 2012, the filing date of the earliest filed application in the priority chain for the ’215 patent. Patent Owner is in the best position to show when and to whom the Guide was available and may present additional arguments, evidence, and testimony to support its position during trial.” slip op. at 23
Claim construction§ 102 anticipationPatents in suitUS 10,702,215 - Toyota Motor Corp. v. Intellectual Ventures II LLCInstitution deniedPTAB · Oct 26, 2022 · IPR2022-00710 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on claims 1–20 because the Petition did not show a reasonable likelihood that either Ikeda or Nakajima disclosed the limitations of independent claims 1, 9, and 15.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“whether an individual asserted fact is indisputable or whether a preponderance of the evidence supports Petitioner. Our review is to determine whether the totality of the information presented in the Petition and Preliminary Response shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. For the above reasons, we determine Petitioner has not established a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the ’158 patent. Therefore, we deny inter partes review of the ’158 patent on all challenged claims and all grounds asserted in the Petition. See 35 U.S.C. § 314(a). IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of the ’158 patent is denied.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, and based on the current record, we adopt Petitioner’s characterization of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least,” as that language is vague and open-ended. However, we note Patent Owner’s proposed characterization of a skilled artisan is not meaningfully different than the one proposed by Petitioner without the “at least” language. Because we find the parties’ characterizations to be consistent with the ’158 patent and the asserted prior art, we apply in our analysis below Petitioner’s characterization, as modified by the Board, for the level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“phrase “wherein each optics component of the plurality of optics components is configured to pass light to a sensor of the plurality of sensors” requires each optics component to pass light separately to a distinct sensor of the plurality of sensors.6 Ex. 1001, 25:34–36. This is so because the phrase expressly singles out “each optics component” from “the plurality of optics components” and associates it with passing light to “a sensor” that is 6 In the context of the ’158 patent, a sensor may be an array of photo-detectors and multiple sensors may be formed on a single semiconductor substrate or chip. Ex. 1001, code (57), 4:18–21, 4:67–5:3, 7:17–39, 11:62– 676, 14:45–47, 15:46–65, 16:8–15, Figs. 2, 3, 9, 14, 15. distinguished from “the plurality of sensors.” Id. (emphasis added). As a result, claim 1 requires each optics component to have a configuration that allows it to pass light separately to an individual sensor distinct from the other sensor(s) in the plurality of sensors.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“We agree. For the reasons discussed above (supra §II.C.1), “each optics component of the plurality of optics components is configured to pass light to a sensor of the plurality of sensors,” as recited in claim 1, requires each of the plurality of optics components to be configured to pass light separately to a distinct sensor of the plurality of sensors and cannot rely on a common optics component to pass light to all of the sensors. Although Petitioner provides little guidance, the only two structures in Figure 11 of Ikeda that can even arguably be optics components “configured to pass light” are lens 1 and prism 23. And Ikeda discloses those structures as functioning as a single unit that is common to the three disclosed sensors. See Ex. 1005, 11:62–12:1. As such, Ikeda only discloses a single optical component/unit configured to pass light to a plurality of sensors, rather than a plurality of optical components/units that are each able to pass light to their respective sensor(s) out of the plurality of sensors. In fact, the only structure included in Figure 11 that Petitioner’s expert, Dr. Bovik, suggests is configurable to pass light to a sensor is the lens. See Ex. 1004 ¶¶ 39–41, 49, 66. For example, Dr. Bovik describes that, during operation of the device Ikeda discloses, the light from an object enters lens 1, which then passes the light through filters to projects the light upon an image sensing device. Id. ¶ 39. Although the Petition and Dr. Bovik lump “a lens 1, a prism 23, optical low-pass filters 2, and a color filter 20 (all purple)” together and refer to them collectively as “provid[ing] a ‘light path’ to pass light (yellow) from an object image to be ‘projected upon the first, second, and third image sensing devices 18, 3, and 19’” (Pet. 16, Ex. 1004 ¶ 66), Ikeda suggests that lens 1 is the only structure configured to pass light (i.e., establish the light path) to a sensor. This is evidenced by the fact that Ikeda describes the prism, optical low-pass filters, and a color filter as all being “provided at the intermediate position of the light path” that begins at lens 1. Ex. 1005, 13:34–38, 13:59– 63 (emphasis added). In order for the prism, optical low-pass filters, and a color filter to be at an intermediate position of the light path, the light path must necessarily have been established before reaching them. Consistent with this understanding, Dr. Bovik only describes lenses as being configurable to pass light to a sensor (i.e., to zoom and focus incident light); the diaphragms, irises, and neutral density (ND) filters are described as “varying the amount of incident light” that has been passed; the optical low pass filters are described as “combat[ing] high-frequency moiré patterns” in the light that has been passed; and the color filters and filter arrays are described as “filtering specific wavelengths, or colors” of light that has been passed. Ex. 1004 ¶ 40. Therefore, because Ikeda only discloses a single optical component” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,232,158 - PTAB · Oct 12, 2022 · IPR2022-00708 · APJ Matthew S Meyers · IPR · Institution
The Board instituted IPR on claims 1–20 over all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“[W]here the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) 4–5 (“Interim Procedures”).9 Further, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we agree with Petitioner that “[t]he petition presents ‘compelling evidence of unpatentability.’” Pet. Reply 1 (citing Interim Procedures 1). As Petitioner notes, “despite the centrality of the merits to the Fintiv analysis, the POPR is silent on the substance of the petition.” Id. For the reasons below in our analysis, we determine that the merits of Petitioner’s anticipation grounds based on Fernandez appear to be particularly strong for the independent claims and for the dependent claims for this ground. See infra § III.G (explaining that, on the current record, slip op. at 7
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“were co-defendants in the District Court litigation and were accused of infringing the [challenged] patent based on HTC’s VIVE devices that incorporate technology licensed from Valve.” Id. By contrast, here Petitioner asserts that it “has no control over the [429] IPR, did not participate or provide input into the [429] IPR, and had no knowledge of the [429] IPR until after it was filed.” Pet. 15; see also Pet. Reply 2. Although we agree with Patent Owner that Unified’s subscription fees provide an incentive to challenge patents asserted against its members, and recognize that Unified has challenged at least eight patents asserted against Petitioner in the past (Prelim. Resp. 25–27), that alone does not create the type of “significant relationship” that was found in Valve to favor denying institution.10 Moreover, the Director recently initiated a sua sponte Director review “to clarify the application of General Plastic.” IPR2022-00861, Paper 18 at 3 (PTAB Aug. 23, 2022). There, the Director determined that “factors 1–3 only weigh in favor of discretionary denial when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.” Id. at 5. The Director stated that “‘road-mapping’ concerns are minimized when, as in this case, a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those in the previously-filed petition and the later petition is not refined based on lessons learned from 10 See, e.g., Netflix Inc. and Hulu, LLC v. DivX, LLC, IPR2020-00052, Paper 42 at 8–11 (PTAB May 14, 2020); Mercedes-Benz USA, LLC v. Carucel Investments, L.P., IPR2019-01404, Paper 12 at 12–13 (PTAB Jan. 22, 2020) (finding petitioner’s membership in Unified did not amount to a relationship that justifies discretionary denial in light of other General Plastic factors); Apple, Inc. v. Uniloc 2017 LLC, IPR2019-01667, Paper 7 at 7–8 (PTAB Apr. 21, 2020). later developments.” Id. Here, road-mapping is minimized because the present Petition was filed less than two months after the petition in the 429 IPR, no patent owner preliminary response was filed at that time, and no decision to institute was issued to refine the later petition. See Pet. 16. This is further evident from our below discussion of General Plastic factors 2 and 3.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 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 response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one of claims 1–20. Accordingly, we institute an inter partes review of all challenged claims on all asserted grounds pursuant to 35 U.S.C. § 314. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–1360 (2018) (requiring institution on all claims, if any); see also Patent Trial and Appeal Board” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Having considered Petitioner’s unrebutted position, we conclude that, at this stage of the proceeding, Petitioner has shown a reasonable likelihood that it would prevail in challenging the patentability of independent claim 1. 3. Dependent Claims 2 and 4–7 Petitioner contends that the additional limitations of dependent claims 2 and 4–7 are disclosed by Flick. Pet. 27–32. Patent Owner does not specifically dispute Petitioner’s contentions for dependent claims 2 and 4–7 at this time. See generally Prelim. Resp. Petitioner has made a sufficient showing that Flick discloses the limitations of these dependent claims by providing an analysis of each limitation and a comparison of the limitations to the disclosure of Flick. See Pet. 27–32. We have reviewed Petitioner’s cited evidence and explanation regarding why Flick anticipates claims 2 and 4–7, and find it sufficient at this stage. For example, claim 2 requires that “the information about the vehicle comprises one or more of a location of the vehicle, a time that the vehicle was at a location, or a speed of the vehicle.” Ex. 1001, 10:59–62. Flick discloses (“‘vehicle speed and location that the speeding started and how long speeding accrued’ (Detected from GPS).”) Ex. 1005 ¶ 147. On this record, we determine that Petitioner has shown a reasonable likelihood of success that Flick anticipates claims 2 and 4–7.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,291,475
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.