• Luminex International Co., Ltd. v. Signify Holdings B.V.Instituted
  PTAB · Sep 9, 2024 · IPR2024-00101 · APJ Steven M Amundson · IPR · Institution

  Instituted IPR of claims 1–20 on all petition challenges because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.

  RulingsInstitution decision

  • Director reviewDirector review, grantedGranted

    “On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar institution. Id. Additionally, the Director declined to exercise discretion under § 314(a) to deny institution in view of the Wisconsin case because Petitioner submitted a Sotera stipulation. Id.; see Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)1 at 3, 7–8 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Further, the Director remanded the case to the panel and instructed the panel “to determine whether the Petition presents a reasonable likelihood of prevailing with respect to at least one of the challenged claims under 35 U.S.C. § 314(a), and to determine whether to institute inter partes review accordingly.” Paper 12, 5–6. As noted above and explained in the patentability analysis below, we determine that there is a reasonable likelihood Petitioner would prevail with respect to at least one of the challenged claims. See supra § I; infra §§ III.E–III.H.” slip op. at 4

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar institution. Id. Additionally, the Director declined to exercise discretion under § 314(a) to deny institution in view of the Wisconsin case because Petitioner submitted a Sotera stipulation. Id.; see Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)1 at 3, 7–8 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)).” slip op. at 4

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar” slip op. at 4

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDecided for petitioner

    “On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar institution. Id. Additionally, the Director declined to exercise discretion under § 314(a) to deny institution in view of the Wisconsin case because Petitioner submitted a Sotera stipulation. Id.; see Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)1 at 3, 7–8 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)).” slip op. at 4

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,299,336
• Apple Inc. v. RJ Technology, LLCInstituted
  PTAB · Aug 20, 2024 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Institution

  The Board instituted review of claims 1–18 on all asserted grounds and granted Apple’s motion to join IPR2023-01183.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition. And, for the reasons set forth below, we grant Petitioner’s Motion for Joinder.” slip op. at 2

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20197 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. at 11–12 (citing Ex. 1002 ¶¶ 50–51). Upon review of the prior art of record and the Petitioner’s arguments, we adopt Petitioner’s uncontested definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the ’641 patent and the prior art of record.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner provides constructions for the terms “A method for improving . . . characterized in that,” “ratio of positive electrode material to negative electrode material as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V” (claim 5), “as calculated by a specific capacity with a charge voltage limited to 4.2 V” (claim 1), and “at least 7500 of capacity” (claim 11). Pet. 8–11. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 7,749,641
• Duration Media LLC v. Rich Media Club LLCNo claims unpatentable
  PTAB · Aug 19, 2024 · IPR2023-00953 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1–10 were not proven unpatentable under either §103 ground because the evidence did not show the claimed viewability determination.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We find Patent Owner’s argument persuasive. Indeed, it is unclear how Petitioner’s proposal accounts for the types of problems encountered in the art or prior art solutions to those problems. See Daiichi Sankyo, 501 F.3d at 1256 (identifying these factors, among others, as “a guide to determining the level of ordinary skill in the art”). Nor does Petitioner, in its Reply, address, let alone rebut, Patent Owner’s arguments that a person of ordinary skill in the art would have had some experience and/or knowledge in internet advertising. See generally Pet. Reply. Patent Owner proposes that a “person of ordinary skill in the art would have a bachelor’s degree in computer science or a similar major involving computer programming (or at least four years of practical computer programming experience) and at least two years of experience (in or out of college) in the field of internet advertising.” PO Resp. 12 (citing Ex. 2045 ¶54). We agree that a person of ordinary skill in the art would have some experience in internet advertising, although we fail to see why one year would not be enough to familiarize sufficiently a computer scientist and/or programmer with the types of problems encountered in the art or prior art solutions to those problems. Based on the competing proposals, arguments, and evidence before us, we adopt and apply the following level of skill in assessing Petitioner’s challenges to the patentability of the claims of the ’329 patent: a person that would have had a bachelor’s degree in computer science, computer engineering, or electrical (or similar) engineering with about three years of experience being in the field of internet advertising.” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “Petitioner’s resurrected argument is based on a fundamental misunderstanding of § 311(b). Section 311(b) provides: “A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed cancel the claims of the ’329 patent on the basis of Badros, Harkins, and Krassner. Pet. 11. Petitioner did not base its request, in whole or in part, on the Krassner publication. Id. Krassner clearly is a patent. It issued on August 13, 2019, far too late to be § 102(b) prior art. Even if we assume Krassner is also a “printed publication” withing the meaning of § 311(b), the same date would apply: August 13, 2019. Petitioner has not presented any evidence that the document that is Krassner was published prior to when it issued on August 13, 2019. That another document (the Krassner publication), which published much earlier, may contain the same or similar disclosure is not relevant to when Krassner was patented or published. In sum, Krassner is not prior art under 35 U.S.C. § 102(b). b) Whether Krassner is Prior Art Under 35 U.S.C. § 102(e) Although Krassner is not prior under 35 U.S.C.§ 102(b), we” slip op. at 13

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Petitioner responds that, contrary to Patent Owner’s argument, “Harkins teaches that its invention can be used in web pages.” Pet. Reply 18 (citing Ex. 1004 ¶30). Although Petitioner’s citation is off by one paragraph, Petitioner’s response about what Harkins teaches is correct. See Ex. 1004 ¶29 (“The present invention may be implemented for provision of virtually any type of advertising (e.g., print, radio, television, Internet, billboard, etc.) via any type of advertising medium (e.g., newspaper, magazine, radio broadcast, Web pages, billboards, etc.) without departing from the scope of the present invention.”). We find that Harkins is from the same field based on its express statement that it is applicable to “virtually any type of advertising” and “any type of advertising medium,” including “Web pages.” Ex. 1004 ¶29. Further, even if this were insufficient to place Harkins in the same field as the ’329 patent, we find that Harkins is reasonably pertinent to the particular problems with which the ’329 patent inventors were involved. In sum, we find that Harkins is analogous art to the ’329 patent.” slip op. at 19

  • Strike new argumentNew argument disregardedGranted

    “Paper 60 (“PO Mot. To Exclude”), 9–10.6 Patent Owner is correct in this regard and, thus, we grant Patent Owner’s Motion to Exclude with respect to the testimony in the second Smedley Declaration and the Madansky Declaration opining that Badros teaches the determination limitation. Paper 60, 9–12. Petitioner, in its Opposition to the Motion to Exclude, argues that Patent Owner’s arguments about the “viewability test” were “surprising.” Paper 62, 8. We are not persuaded by Petitioner’s argument. The “viewability test” is a claim limitation. Petitioner should have anticipated that Patent Owner would argue that limitation. See In re Gardner, 449 F. App’x 914, 916 (Fed. Cir. 2011) (“This court has held that when evaluating claims for obviousness under 35 U.S.C. § 103, all the limitations of the claims must be considered and given weight.” (citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983)); Univ. of Strathclyde v. 6 Patent Owner’s Motion to Exclude seeks to exclude, in part or in whole, Exhibits 1020–1022, 1025–1030, and 1034–1040, which were submitted with Petitioner’s Reply, of which Exhibits 1026 and 1027 are the declaration by Dr. Madansky and the second declaration by Dr. Smedley, respectively. Mot. To Exclude. The Motion to Exclude also seeks to exclude “Exhibits” 1017 and 1018, which are not filed or of record in this case but which are referenced in the Reply. Id. For example, Exhibit 1017 is the Krassner publication, which Petitioner unsuccessfully moved to add to the record as supplemental information. See Paper 21, 3 n.1 (expunging the Krassner publication and stating that it “need not -- and indeed may not -- be re-filed under a new exhibit number”). Apart from the portions of Dr. Smedley’s second declaration and Dr. Madansky’s declaration opining that Badros teaches the “determination” limitation, we dismiss the Motion to Exclude as moot. obviousness determination generally requires a finding that “all claimed limitations are disclosed in the prior art’.” (citing PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014)). Petitioner argues that “[v]iewability tests were well known for well over a decade prior to the ’329 patent’s priority date.” Reply 9. If that were the case, then Petitioner should have made its argument in the Petition. Section 312(a) of Title 35 is titled “Requirements of Petition,” and it specifies that a petition must identify, among other things, “the evidence that supports the grounds for the challenge to each claim, including . . . (B) affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions.” 35 U.S.C. § 312(a)(3); see also 37 C.F.R. § 42.104(b)(4)–(5) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon; and . . . the supporting evidence relied upon to support the challenge.”). Thus, “Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Board’s Consolidated Trial Practice Guide, 73 (Nov. 21, 2019).7 Dr. Smedley’s testimony in his second declaration, that “Badros discloses Patent Owner’s ‘viewability test’” (Ex. 1027 ¶11), is clearly evidence to make out a prima facie case of unpatentability. The same is true of Dr. Madansky’s testimony that she agrees with Dr. Smedley in this regard. Ex. 1026 ¶4.” slip op. at 25

  Patent outcomesUS 11,443,329 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 11,443,329
• Interactive Communications International, Inc. v. Blackhawk Network Inc.Instituted
  PTAB · Jul 24, 2024 · IPR2024-00465 · APJ Bart A Gerstenblith · IPR · Institution

  The Board instituted IPR on claims 1–24 on all petition grounds, finding a reasonable likelihood that Irwin renders at least one challenged claim obvious.

  RulingsInstitution decision

  • Other 314aInstitution denied discretionary otherDenied

    “Even assuming Linq3 is a real party in interest to Petitioner and assuming we may exercise our discretion to deny institution based on unclean hands (see Kavo Dental Techs, LLC v. Osseo Imaging, Inc., IPR2020-00659, Paper 10 at 19 (PTAB June 10, 2020)), Patent Owner essentially asks us to resolve multiple factual issues related to its contract dispute with Linq3 to justify denial of institution. See, e.g., Prelim. Resp. 1– 26. Many, if not all, of these issues appear to be involved in the contract dispute, which will be resolved by the Arizona state court. We are not in a good position to make determinations about these particular issues at this stage of the proceeding, on the limited record before us. Rather, we find that the state court is better suited to address the conduct of Linq3 of which Patent Owner complains. Accordingly, we leave these matters for the state court. To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party in interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response, and the parties may brief and argue the issue during trial.” slip op. at 10

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied

    “We disagree. First, we agree with Patent Owner that the fact pattern presented here is not the typical situation in which the factors from General Plastic are considered. In particular, this proceeding challenges claims of a different patent than the patents at issue in PGR2020-00084 and IPR2023- 01235. Challenging claims of different patents significantly distinguishes the facts here from those in General Plastic, and we decline Patent Owner’s invitation to extend General Plastic in this regard. Accordingly, we do not exercise our discretion to deny institution.” slip op. at 11

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “Even assuming Linq3 is a real party in interest to Petitioner and assuming we may exercise our discretion to deny institution based on unclean hands (see Kavo Dental Techs, LLC v. Osseo Imaging, Inc., IPR2020-00659, Paper 10 at 19 (PTAB June 10, 2020)), Patent Owner essentially asks us to resolve multiple factual issues related to its contract dispute with Linq3 to justify denial of institution. See, e.g., Prelim. Resp. 1– 26. Many, if not all, of these issues appear to be involved in the contract dispute, which will be resolved by the Arizona state court. We are not in a good position to make determinations about these particular issues at this stage of the proceeding, on the limited record before us. Rather, we find that the state court is better suited to address the conduct of Linq3 of which Patent Owner complains. Accordingly, we leave these matters for the state court. To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party in interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response, and the parties may brief and argue the issue during trial.” slip op. at 10

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “5. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that Irwin would have rendered the subject matter of claims 1–9 and 11–24 of the ’451 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 38

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,488,451
• Shanghai Hongene Biotech Corp. v. Chemgenes Corp.All claims unpatentable
  PTAB · Jul 18, 2024 · IPR2023-00490 · APJ John G New · IPR · Final written decision

  Claims 1–5 are unpatentable: claim 1 is anticipated by Reddy; claims 2–4 are obvious over the stated combinations; claim 5 is anticipated by Gaur.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “However, we prefer Patent Owner’s definition of the required 2–3 years of experience in “the development and syntheses of nucleosides, nucleotides, and nucleic acids, including, but not limited to, the syntheses of oligonucleotides through solid phase oligonucleotide synthesis (‘SPOS’)” to Petitioner’s more generalized requirement of having experience in “medicinal chemistry, synthetic organic chemistry, and nucleic acid chemistry, including the development of oligonucleotide therapeutics, diagnostics, or building blocks.” Both parties acknowledge that the level of skill in the art is very high. See, e.g., Resp. 17; Reply 2. We find that, to achieve a level of ordinary skill in the art, a person with the requisite educational background would require 2–3 years of experience for one possessing a doctorate in the relevant field, or 3–5 years for one with a lesser degree (to compensate for the additional educational experience gained by achieving a doctorate) in the specific techniques recited by Patent Owner. We reject the terminal clause “pursuant to P(III) chemistry” proposed by Patent Owner as redundant in that a person engaged for a number of years in “the development and syntheses of nucleosides, nucleotides, and nucleic acids” including SPOS, would likely have an operant knowledge of P(III) chemistry. Consequently we adopt the following definition of a person of ordinary skill in the art: “A person of ordinary skill in the art having a Ph.D. (or equivalent degree) in organic or medicinal chemistry, and 2 to 3 years of post-graduate work experience in the development and syntheses of nucleosides, nucleotides, and nucleic acids, including, but not limited to, the syntheses of oligonucleotides through solid phase oligonucleotide synthesis (‘SPOS’)” and, alternatively, “a person of ordinary skill in the art would have a Bachelor’s or Master’s degree in organic or medicinal chemistry who had at least 5 years of extensive work experience in these fields.”” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “As for Dr. Baran, we are not persuaded by Patent Owner’s argument that Dr. Baran is not sufficiently experienced or qualified to opine with respect to the claimed subject matter. A review of Dr. Baran’s extensive curriculum vitae (Ex. 1003, 79–137), indicates that he is deeply experienced and extensively published in the field of oligonucleotide synthesis. Patent Owner’s argument that Dr. Baran is principally experienced in P(V) techniques presupposes that experience in that technique indicates an ignorance of P(III) methodologies. We do not find this position consistent with the breadth of Dr. Baran’s C.V. We will weigh Dr. Baran’s testimony, and that of Dr. Hrdlicka, against the cumulative weight of the evidence of record in this inter partes review in assessing the credibility and probative value of their respective testimonies.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “Both parties agree that the terms of the challenged claims should be given the ordinary and customary meaning of such terms as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. Pet. 17; PO Resp. 15 (both citing 37 C.F.R. § 42.100). Accordingly we see no need for explicitly construing any of the terms of the challenged claims beyond that standard.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Furthermore, both Petitioner and Patent Owner agree that clear errors exist in the wording of challenged claims 3–5. Both parties agree that a person of ordinary skill in the art would have recognized that the limitation reciting “where M is selected from the group consisting of succinyl, oxalyl, and hydroquinolynyl” should properly read “where M is selected from the group consisting of ethyl, oxalyl, and hydroquinolynyl.” Pet. 18–20; PO Resp. 15. Both parties further agree that the language of claim 5 mistakenly omits the italicized portions of the limitation reciting “NH is capable of being attached to a solid support with a spacer selected from the group consisting of C1–C20 alkyl, ethyloxyglycol, and a combination of alkyl and ethyleneglycoxy,” as is expressly recited in claims 3 and 4. Pet. 21–22 (citing Ex. 1003 ¶ 158); PO Resp. 15. We agree with both parties’ reasoning with respect to these errors, and we construe the claims as reciting the corrected language, such that claims 3–5 read, in relevant part “where M is selected from the group consisting of ethyl, oxalyl, and hydroquinolynyl” and claim 5 additionally reads “NH is capable of being attached to a solid support with a spacer selected from the group consisting of C1–C20 alkyl, ethyloxyglycol, and a combination of alkyl and ethyleneglycoxy.” See Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1119–20 (Fed. Cir. 2020) (holding that the Board erred in not correcting a “conspicuous” and undisputed error in claim).” slip op. at 8

  Patent outcomesUS 9,884,885 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,884,885
• Apple Inc. / Google LLC v. Spacetime3d, Inc.All claims unpatentable
  PTAB · Jul 2, 2024 · IPR2023-00344 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over the listed combinations of Anthony, Hanggie, Matthews, and Robertson.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “The Board instituted an inter partes review of the challenged claims pursuant to 35 U.S.C. § 314. Paper 11 (“Dec.”). We joined Google LLC as a party to the proceeding (collectively, with Apple Inc., “Petitioner”) based on a petition and motion for joinder filed in IPR2023-00578. Paper 14.” slip op. at 2

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “1 Google LLC, which filed a petition in IPR2023-00578, has been joined as a petitioner in this proceeding. See Paper 14, 8.” slip op. at 1

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “1. “3D space” and “two-dimensional (2D) space” The parties agree that the claim terms “3D space” and “two-” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “use of items in 2D space and difficulties in finding files, this argument is based on Anthony’s prior art discussion offered to identify the need for improvements that are solved by its 3D invention. See Ex. 1007 ¶¶ 6, 8. But the issue identified as the problem with 2D items, that is, difficulties in finding 2D files, is not at issue in the combination of the prior art that Petitioner proposes. As discussed, in the combination that Petitioner asserts, with the selection of a maximize button on a 3D window, the window would be displayed in 2D and would occupy all or most parts of the screen—so in that combination, difficulties in finding the 2D files would not be an issue. Pet. 57 (citing Ex. 1003 ¶ 111). Further, Petitioner offers the advantages that this presentation in 2D space would conserve power and allow certain users to interact with an application in a 2D environment. Ex. 1003 ¶¶ 66, 69. Accordingly, we credit Dr. Fuchs’s testimony that Petitioner’s proposed “specific experience [of the combination] would not deter a user from replacing images in 3D space with an object in 2D space.” Ex. 1033 ¶ 48. We also do not find persuasive Patent Owner’s argument that Anthony’s approach is different from the claimed invention because its method for” slip op. at 65

  Patent outcomesUS 9,696,868 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,696,868
• Delta Electronics, Inc. v. Vicor CorporationInstitution denied
  PTAB · May 17, 2024 · IPR2024-00134 · APJ Georgianna W Braden · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged, undisclaimed claim was unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “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; see also 37 C.F.R § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). 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). For the reasons provided below and based on the record before us, we determine Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we decline to institute inter partes review on any of the alleged grounds of unpatentability.” slip op. at 2

  • Adverse judgmentAdverse judgmentOther

    “it filed with the Office a statutory disclaimer of claims 22, 24, 39, and 40 of the challenged patent pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2028, 1; see Prelim. Resp. 7 n.1. The disclaimer of a claim “shall . . . be considered as part of the original patent.” 35 U.S.C. § 253(a). The language “considered as part of the original patent” means that a patent subject to a disclaimer under § 253(a) “is treated as though the disclaimed claims never existed.” Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in section 253 to mean that the patent is treated as though the disclaimed claims never existed.”) (citing Altoona Publix Theatres v. Am. Tri-Ergon Corp., 294 U.S. 477, 492 (1935)); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (holding that the Board’s interference jurisdiction under 35 U.S.C. § 291 required “the existence of an interference, and a claim that ‘never existed’ [due to a statutory disclaimer] cannot form the basis for an interference”); Facebook, Inc. v. Skky, LLC, CBM2016- 00091, Paper 12 at 8 (PTAB Sept. 28, 2017) (precedential as to § II.B.2) (“The Federal Circuit has held consistently that claims disclaimed under § 253(a) should be treated as though they never existed.”). Thus, even though claims of the challenged patent existed at the time the Petition here was filed, we must now treat the challenged patent as if it had never included those claims. Accordingly, no inter partes review will be instituted for disclaimed claims 22, 24, 39, and 40 of the ’950 patent. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”). Nevertheless, our analysis continues because not all of the claims challenged in the Petition have been disclaimed by Patent Owner.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Based on our review of the record, we do not construe any limitations or terms of the challenged claims because construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy” and we do not discern any such controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12

  • Skill levelSkill level petitioner adoptedOther

    “Here, Petitioner asserts a person of ordinary skill in the art at the time of the ’950 patent would have had “at least a Master’s degree in electrical engineering and two or more years of work experience relating to power electronics and the design of switching power converters, with more experience potentially substituting for education or vice versa.” Pet. 7 (citing Ex. 1003 ¶ 29; Ex. 1009 ¶¶ 35–38; Ex. 1010, 80). Patent Owner does not assert a different level of skill in the art at the time of the alleged invention at this time. See generally Prelim. Resp. Additionally, Dr. Rivas-Davila applies Petitioner’s definition in his declaration. Ex. 2001 ¶ 64. For the purposes of this Decision, we adopt Petitioner’s level of ordinary skill in the art because it appears consistent with (1) the problems addressed in the ’950 Patent and (2) the level of ordinary skill in the art reflected by the prior art of record. See Okajima, 261 F.3d at 1355.” slip op. at 15

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,199,950
• Delta Electronics, Inc. v. Vicor CorporationInstitution denied
  PTAB · May 17, 2024 · IPR2024-00187 · APJ Kara L Szpondowski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 22, and 31–35 were unpatentable under any asserted § 103 ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In an [inter partes review], the petitioner has the burden from the 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)); see also Intelligent Bio-Sys., 821 F.3d at 1369. This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combination of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art “would have at least a Master’s degree in electrical engineering and two or more years of work experience relating to power electronics and the design and control of switching power converters, with more experience potentially substituting for education, or vice-versa.” Pet. 14 (citing Ex. 1017, 79; Ex. 1003 ¶ 29).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly construe any term, or decide whether the preamble of claim 1 is limiting, for purposes of this Decision.” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner cites to Dr. Hopkins’ Declaration, which repeats nearly verbatim the contentions in the Petition, and then adds testimony that “[t]he resonant period and frequency is what the ’481 Patent refers to as the ‘standard’ operating period and frequency.” Pet. 32 (citing Ex. 1003 ¶ 81). Dr. Hopkins, however, does not provide any citation to the ’481 patent to support this testimony, nor any further explanation as to how or why the resonant period and frequency teaches the “standard operating period and frequency” recited in limitation 1[c]. Therefore, “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory 17 As discussed below, Petitioner also relies on this theory for all of the remaining six challenges in the Petition, and does not provide further explanation in any of those challenges. Accordingly, as explained below, each of Petitioner’s remaining challenges is insufficient for the same reasons described here. assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,166,481
• Micron Technology, Inc. v. Katana Silicon Technologies LLCAll claims unpatentable
  PTAB · May 13, 2024 · IPR2023-00072 · APJ Julia Heaney · IPR · Final written decision

  Claims 1, 2, 6, 7, 9, 10, 12–19, 23–26, 30, and 32 are unpatentable as obvious over the asserted combinations of prior art.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Nevertheless, based on our review of the ’806 patent, the types of problems and solutions described in the ’806 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionGranted

    “On the fully developed record, we find that Petitioner’s construction, “a layer that adheres,” is more strongly supported by the evidence than Patent Owner’s construction, “a pre-formed layer that is adhered.”” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Petitioner shows persuasively that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Mostafazadeh with Ball and Fogal. Pet. 32–33. The evidence discussed above concerning reasons to combine supports a reasonable expectation of success. We are also persuaded by Dr. Suhling’s testimony that the “combination of Ball, Fogal, and Mostafazadeh would require no modification of the multichip modules in Ball and Fogal: rather Mostafazadeh merely explains in more detail methods known in the art for creating chips with adhesive surfaces.” Ex. 1002 ¶ 239; see also id. ¶¶ 62– 69 (describing prior art methods for applying adhesive to the backside of a wafer). For the foregoing reasons, we find that Petitioner has demonstrated that a person of ordinary skill in the art would have had a reasonable expectation of successfully combining Ball, Fogal, and Mostafazadeh.” slip op. at 46

  • ExcludeOther

    “We do not discuss or cite any of these exhibits in this Decision, or rely on any of them in reaching our determination that all of the challenged claims are unpatentable. Because their presence in the record would not affect our analysis in this Decision, we dismiss as moot Petitioner’s motion with respect to these exhibits.” slip op. at 72

  Patent outcomesUS RE38,806 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
• Fortinet, Inc. / Palo Alto Networks, Inc. v. Lionra Technologies Ltd.Instituted
  PTAB · May 9, 2024 · IPR2024-00158 · APJ William V Saindon · IPR · Institution

  The Board instituted review of claims 1–4, 7–14, 16, 17, 21, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Pham and Wu, and granted joinder.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “4. Conclusion for Claim 1 Having reviewed the Petition and Preliminary Response, we determine that Petitioner has a reasonable likelihood of success in showing that the subject matter of claim 1 would have been obvious in view of Pham and Wu. E. Conclusion on the Merits of the Petition We have found that the Petition warrants institution based on Petitioner’s showings for claim 1. We have reviewed Patent Owner’s arguments about the other grounds, but they largely rely on the earlier unpersuasive arguments for claim 1. On whole, we determine that Petitioner has shown that the Petition warrants institution.” slip op. at 18

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “FURTHER ORDERED that the Motion for Joinder with IPR2023- 00703 is granted, and Palo Alto Networks, Inc. and Fortinet, Inc. are joined as a party in IPR2023-00703;” slip op. at 27

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “based on the related district court matters identified above. Opp. Mot. Join 4–12. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the copending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Reply Mot. Join 4–5), we do not discretionarily deny institution under Fintiv.” slip op. at 21

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner

    “factor one necessarily outweighs the other General Plastic factors.”) (Director Review). Patent Owner focuses its analysis on factor 5 and proposed factor 8. Id. at 13–15. As to factor 5, which looks for an explanation of the time between petition filing, we determine that Petitioner sufficiently explained the time between Cisco’s petition and its own when it noted that it merely filed its petition and request for joinder when the statute permitted it. Reply Mot. Join 6 (citing 37 C.F.R. § 42.122(b)). In particular, the statute requires the earlier petition to be instituted before joining a party. 35 U.S.C. § 315(c) (requiring joinder to be to instituted proceedings). Thus, the time elapsed between filings is motivated by the statutory and regulatory procedures. See also 37 C.F.R. § 42.122(b) (requiring the joinder motion to be filed “no later than one month after the institution date of any inter partes review for which joinder is requested”). As to proposed factor 8, we agree with Petitioner that the present situation does not apply. Reply Mot. Join. 6–7; see also Shenzhen, IPR2018-00761, Paper 15, 18–19 (Saindon, concurring) (“There are legitimate reasons why a petition may be filed after [a decision on institution)].”). Proposed factor 8 analyzes situations where a second petitioner strategically waits to file its petition to see what happens to an earlier filed petition. Shenzhen, IPR2018-00898, Paper 9 at 7. If both of the petitioners were sued at or around the same time, but one waits until the other goes first, it can lead to an inference that the delay in filing a different petition was to gain an unfair advantage. Id. at 14 (looking with disfavor on a wait-and-see strategy to use the first petition as a “test case”). That is not the case here, where the second petition is a copycat petition. The Petition here cannot be said to have been filed second in order to glean knowledge from the first petition because it is the same petition. Thus, we do not see this Petition as being a strategic attempt to use Cisco’s petition as a “test case,” and do not consider factor 8 to weigh toward denial. Finally, reviewing factor 6, we do not find that granting Petitioner’s motion to join would cause an undue burden on the Board. Petitioner is serving as an “understudy” and thus, from our perspective, Petitioner’s presence does not change the existing Cisco IPR. Patent Owner argues that if Cisco were to settle then Petitioner would continue the proceeding. Opp. Mot. Join. 15. We do not see this as an undue burden in this situation. Petitioner’s Motion for Joinder serves to lessen our burden (as well as Patent Owner’s) compared to the scenario of it filing its own unique petition. We do not see the present case as similar to the Apple case, in which a copycat joinder petition was denied. See Apple, IPR2020-00854, Paper 9. That case, in our view, turned on the fact that the petitioner had already filed a petition that was denied on the merits. See id. at 4 (“In effect, it would be as if [the petitioner] had brought the second challenge to the patent in the first instance,” and labeling this a “serial attack.”). The situation here is not analogous to the Apple case because this is Petitioner’s only petition against the ’436 patent. The Petition is not a “serial attack” on the ’436 patent, it is merely Petitioner’s statutorily required vehicle to join as a party to an existing petition. Accordingly, we do not find factor 6 to weigh towards denial. Reviewing the General Plastic factors as a whole, including proposed factor 8, we find no factors to weigh toward denial and decline to exercise our discretion to deny institution.” slip op. at 24

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,566,612

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.