- Snap Inc. v. Sanderling Management Ltd.All claims unpatentablePTAB · Oct 31, 2022 · IPR2021-00778 · APJ Richard H Marschall · IPR · Final written decision
Claims 1–12 are unpatentable: claims 1, 2, and 4–12 as obvious over Hogeg, and claim 3 as obvious over Hogeg and Arujunan.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “at the time of the alleged invention would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 21. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Id. (citing Parulski Decl. ¶¶ 173–174). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. PO Resp. 8. We find Petitioner’s proposal consistent with the level of skill reflected in the ’412 patent and the prior art of record. See GPAC Inc., 57 F.3d at 1579. We apply Petitioner’s proffered level of ordinary skill in the art in this Decision.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the patentee acted as his own lexicographer with the passage from column 6 discussed by the parties. Indeed, the sentence at issue begins with the exact same term—“distribution rule”—and continues by explaining what that term “is.” See Ex. 1001, 6:3–4 (“A distribution rule is a rule used in determining how to target a group of end-users . . . .” (emphasis added)); see also Ex. 1001, code (57) (the Abstract, providing that “[a] distribution rule is used to target a group of end users . . . ”). As Patent Owner persuasively argues, this language expresses an intent to define the “distribution rule” limitation. See PO Sur-reply 6 (citing Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) (stating that “the word ‘is,’ again a term used here in the specification, may ‘signify that a patentee is serving as its own lexicographer’”); see also Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“To act as a lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly express an intent to redefine the term.’” (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Further, we disagree with Petitioner’s assertion that the definition should include the rest of the passage in column 6 (i.e., the language from “for instance” to the end of the sentence). See Pet. Reply 4. By beginning with “for instance,” the express language of that portion of the sentence makes clear that it merely provides examples of “rule[s]” that fall within the definition previously provided in the sentence, as acknowledged by Petitioner and Mr. Parulski. Cf. id. (“The language following that clipped by [Patent Owner] (‘for instance . . . ’) is what provides ‘distribution rules’ examples.”); Parulski Reply Decl. ¶ 22 (“The language following that identified by [Patent Owner] (beginning with ‘for instance, a rule . . . ’) provides examples of what a ‘distribution rule’ may be.”).6 For these reasons, we construe “distribution rule” in claim 1 in the manner proposed” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“said network, a Global Positioning System (GPS) location indication from each of a plurality of mobile devices” to mean “an indication, determined by a Global Positioning System (GPS), for the location of each of a plurality of mobile devices at the time of distribution,” as Patent Owner argues. See PO Resp. 13 (emphasis added). Patent Owner’s construction requires receiving a GPS location of a plurality of devices at a specific time—at the time of distribution. This attempt to read in a temporal limitation lacks support for several reasons. First, and most importantly, the claim limitation at issue does not suggest any temporal limitation tied to the generation or receipt of GPS location indications. Instead, the claim requires receiving a GPS “location indication from each of a plurality of mobile devices” without addressing when each device acquires the GPS location indication in any way. Ex. 1001, 23:15–17. Further, the limitation merely requires receiving location indications “from” the devices, not “of” the devices as Patent Owner proposes in its construction. See id. Patent Owner does not adequately address or support this second deviation from the claim language in its proposal. See PO Resp. 11–13. Second, none of the other language in the claim addresses when the mobile devices acquire a GPS location indication. Patent Owner relies on later claim language in support of its construction that requires forwarding the processing function to a “mobile device having a GPS location indication which matches said geographic location,” but that limitation does not address when the device acquires the GPS location indication. See Ex. 1001, 23:27–29. The “device having a GPS location indication” refers back to one of the plurality of devices providing a GPS location indication without further modifying that limitation, and the “geographic location” refers back to a “distribution rule defining a geographic location,” which does not refer to when a device acquires a GPS location indication. See id. at 23:13–17, 23:27–29. Third, the specification of the ’412 patent does not require reading the limitation as Patent Owner proposes. As Petitioner points out, the ’412 patent depicts several steps in its process and suggests that the devices may acquire GPS location indications at the time a user captures images, which occurs prior to any time of distribution. See Pet. Reply 6–7 (referring to Ex. 1001, Fig. 7) (citing Parulski Reply Decl. ¶¶ 36–38). This disclosure conflicts with Patent Owner’s construction, and shows that the specification lacks any clear disclosure tying the device GPS location indication to the time of distribution. Patent Owner does not respond to this argument in its Sur-reply. See PO Sur-reply 6–8.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1361 (Fed. Cir. 2017). Above, based on the full record before us, we provide our factual findings regarding (1) the level of ordinary skill in the art, (2) the scope and content of the prior art, (3) any differences between the claimed subject matter and the prior art; and (4) objective indicia of nonobviousness. In particular, we find that (1) Petitioner’s proposed level of ordinary skill in the art is consistent with the art of record; (2) Petitioner establishes sufficiently that Hogeg discloses or renders obvious all the limitations of claim 1 for the reasons provided by Petitioner; and (3) the parties do not introduce or rely upon any objective indicia of nonobviousness. Weighing these underlying factual determinations, Petitioner has shown, by a preponderance of the evidence, that claim 1 of the ’412 patent is unpatentable as obvious over Hogeg.” slip op. at 51
Patent outcomesUS 9,355,412 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,355,412 - PTAB · Oct 18, 2022 · IPR2022-00878 · APJ Lynne H Browne · IPR · Institution
The Board instituted IPR on claims 55–72, 78–80, and 83–85 on all eight asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art would have been a mechanical engineer, medical device engineer, or an interventional cardiologist with a working knowledge of stent-based prostheses for use in a patient’s heart or vasculature to replace and/or repair a diseased valve, intravascular delivery systems for the delivery of such prostheses, and methods associated with the delivery and implantation of such prostheses in a patient. Pet. 31 (citing Ex. 1026 ¶ 27). Patent Owner “does not dispute Petitioners’ definition of a person of ordinary skill in the art.” Prelim. Resp. 3 (citing Pet. 31). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“On the record before us, we agree with Patent Owner that the term “folds” need not be construed at this time. We further agree with both parties that many claim terms are defined by the ’400 patent and these definitions control. Pet. 26; Prelim. Resp. 16. The meaning of the claim term “substantially conical” is central to our analysis of Grounds 5–8. Accordingly, we reproduce the definition of this term from the Specification of the ’400 patent below:” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“folds” need not be construed at this time. We further agree with both parties that many claim terms are defined by the ’400 patent and these definitions control. Pet. 26; Prelim. Resp. 16. The meaning of the claim term “substantially conical” is central to our analysis of Grounds 5–8. Accordingly, we reproduce the definition of this term from the Specification of the ’400 patent below: resembling a cone or a portion thereof at some point in the practical use of the structure with the specific property that the transverse (that is, on a plane of section generally perpendicular to the axis of flow of the valve) cross-sectional perimeter or area of said structure in the operationally closed position decreases monotonically moving from the level of the leaflet apposition to the proximal end of the valve. Ex. 1001, 12:47–54. We agree with Patent Owner and Petitioner that this definition of “substantially conical” applies to the claims at issue in this proceeding. issue in this proceeding for at least some of the challenges presented by Petitioner as will be discussed in Sections II.D–II.H below. As, however, construction of this claim term is not required for our institution decision, we invite the parties to brief this issue in their respective responses to this decision. slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“however, the references relied are the same or substantially the same as art presented to the Office. Prelim. Resp. 75.8 We thus determine under the first part of the Advanced Bionics framework that these references were previously presented to the Office. Accordingly, we proceed to the second part of the Advanced Bionics framework and consider whether Petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. See Advanced Bionics, Paper 6 at 10 (“[I]f the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something”). In Grounds 1–4, Petitioner explains how references meet the limitations of the claims at issue. Pet. 31–75. For the reasons discussed in Section II.D–II.G below, we find that Petitioner demonstrates that the Examiner erred by overlooking the specific teachings in the relevant prior art such that the error by the Office was material to the patentability of the challenged claims. See Advanced Bionics, Paper 6 at 21. Thus, with respect to Grounds 1–4, on this record, we determine that the totality of the evidence favors declining to exercise our discretion under § 325(d) to deny institution.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,737,400 - PTAB · Oct 4, 2022 · IPR2022-00851 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–19, 39, and 40 on all asserted § 103 grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“the claims challenged in this proceeding and in the ’293 IPR. Of the nine claims challenged in the ’293 IPR, seven are also challenged in this proceeding. Based on the overlap in the claims challenged in the ’293 IPR and this proceeding, the first factor weighs in favor of exercising our discretion to deny institution.” slip op. at 13
- BurdenInstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). 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. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “would have at least a Bachelor’s degree in mechanical or structural engineering, or related fields, and two years’ experience designing structures with comparable mechanical and/or structural elements to the ’511 Patent’s subject matter.” Pet. 10 (citing Jobin Decl. ¶¶ 23–26). Petitioner also states that “[a]dditional experience may compensate for less education.” Id. (citing Jobin Decl. ¶¶ 23–26). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 25
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“At this stage of the proceeding and based on the current record, we need not construe explicitly any of the claim language discussed in this section or any other claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 14 “VIPs” refers to vacuum insulated panels. need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).15” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,913,511 - PTAB · Sep 13, 2022 · IPR2022-00620 · APJ Frances L Ippolito · IPR · Institution
The Board instituted IPR of claim 8 on all five asserted §103 grounds, finding a reasonable likelihood that at least one ground would establish unpatentability.
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 the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with 1 This is the same reference as listed in Section I.D. below. 2 This is the same reference as listed in Section I.D. below. the arguments presented in the parties’ briefs, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in challenging claim 8 of the ’413 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review.” slip op. at 2
- BurdenInstitutedInstituted
“F. Obviousness based Sprague ’905 and Trainor – Claim 8 Petitioner asserts that claim 8 would have been obvious based on the teachings of Sprague ’905 and Trainor. Pet. 28–44. Patent Owner opposes. Prelim. Resp. 3–17. Having considered the arguments and evidence before us, we find that the record establishes a reasonable likelihood that Petitioner would prevail on this asserted ground of obviousness based on Sprague ’905 and Trainor for claim 8.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a POSITA at the time of the invention of the ’413 patent “would have had a bachelor’s degree in mechanical engineering or an equivalent field, plus at least two years of experience working in the field of mechanical design and product testing.” Pet. 8 (citing Ex. 1007 ¶¶ 34–36). Patent Owner does not dispute this level of skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Adverse judgmentDecided for petitioner
“With respect to a petition for an inter partes review, our reviewing court has determined that the doctrine of assignor estoppel does not bar an assignor from filing a petition. Arista Networks, Inc. v. Cisco Sys., Inc., 908 Board. The holding was based on 35 U.S.C. § 311(a), which provides “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent” (emphasis added), which the Federal Circuit concluded “unambiguously leaves no room for assignor estoppel in the IPR context.” Arista, 908 F.3d at 801–04. The Board has followed this precedent and issued its own precedential decision holding: Under the AIA, “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent.” 35 U.S.C. § 311(a) (emphasis added). Consequently, under the statute, an assignor of a patent, who is no longer an owner of the patent at the time of filing, may file a petition requesting inter partes review. This statute presents a clear expression of Congress’s broad grant of the ability to challenge the patentability of patents through inter partes review. Athena Automation Ltd. v. Husky Injection Molding Sys. Ltd., IPR2013- 00290, Paper 18 at 12–13 (PTAB Oct. 25, 2013) (precedential). We have, additionally, reviewed the Supreme Court decision in Minerva Surgical, Inc. v. Hologic, Inc., 141 S. Ct. 2298 (2021). There, the Supreme Court “clarif[ied] that [assignor estoppel] reaches only so far as the equitable principle long understood to lie at its core”; that is, the assignor is estopped from raising patent invalidity as a defense “when, but only when, the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.” Id. at 2302. Moreover, the Court determined that “[a]ssignor estoppel applies when an invalidity defense in an infringement suit conflicts with an explicit or implicit representation made in assigning patent rights. But absent that kind of assignor estoppel has no place.” Id. at 2311 (emphasis added). We note that Minerva involved a district court infringement suit; not an inter partes review. Further, we discern nothing in the Supreme Court decision that clearly overrules the holding in Arista identified above. For example, the Supreme Court did not address the language of 35 U.S.C. § 311(a). Therefore, based on the present record, Patent Owner has not presented persuasive arguments that we should decline to follow binding, precedential decisions. Accordingly, on this record and for this preliminary decision, we decline to apply assignor estoppel to deny this Petition.” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,074,413 - Edwards Lifesciences Corporation And Edwards Lifesciences LLC v. Colibri Heart Valve LLCInstitution deniedPTAB · Sep 6, 2022 · IPR2022-00611 · APJ Lynne H Browne · IPR · Institution
Institution was denied for claims 1–10 because the petition did not show a reasonable likelihood that any asserted obviousness combination rendered the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“compressed by squeezing water from the tissue. Ex. 1010 ¶ 37. Scott states that “if the tissue is fixed during or immediately after the compression, it will retain its reduced thickness even if re-introduced into an aqueous solution.” Id. Scott then states that “the tissue will not significantly rehydrate because it has been crosslinked and is no longer as porous as the fresh tissue.” Id. Petitioner does not convince us that tissue that is “not significantly rehydrated” and less porous than fresh tissue is necessarily the same as “dry” tissue in accordance with the definition of “dry” adopted in Section II B above. For this reason, we agree with Patent Owner that Scott does not disclose or suggest “a dry valve directly sutured to the stent member” as required by claims 1 and 6. Ex. 1001, 14:11, 14:37. The Petition does not rely on Chen to cure this deficiency in Scott.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“On the record before us, we agree with Patent Owner that in the context of the claimed invention a “dry” valve is one made of tissue from which water and other liquids are removed. This understanding is consistent with Petitioner’s initial position that a person of ordinary skill in the art “would have understood that the plain and ordinary meaning of ‘dry’ is ‘free or relatively free from water or liquid.’” Pet. 37 (citing Ex. 1003 ¶ 86 (citing Ex. 1033, 696)). We do not agree with Petitioner’s second position that a person of ordinary skill in the art “would have understood that the term ‘dry’ as that term is used in the ’945 Patent claims to describe a heart valve is where the tissue is substantially free from water” because neither the Petition nor Petitioner’s expert, Mr. Scott, cite any authority in support of this position or provide a reasoned explanation as to why this would be so. Pet. 37; Ex. 1003 ¶ 87. For purposes of this decision, we adopt Patent Owner’s definition of “dry” as “free or relatively free from water or liquid.” Prelim. Resp. 12 (citing Pet. 37).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner also proposes claim construction for “to decrease the molecular distance of collagen fibers” and “dry valve has been subjected to light and mechanical compression to decrease the molecular distance of collagen fibers.” Prelim. Resp. 12–16. Construction of these terms, however, is not required in order to resolve the controversy before us. Accordingly, we do not construe this claim language at this time.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Patent Owner contends that Scott does not disclose a dry valve subjected to light to decrease the molecular distance of the collagen fibers. Prelim. Resp. 32. Patent Owner contends further that Petitioner does not even allege that Scott or any other reference teaches subjecting tissue to light to decrease the molecular distance of collagen fibers. See id. at 35. On the record before us, we agree with Patent Owner that Petitioner does not adequately explain why a person of ordinary skill in the art would subject Scott’s dry valve to light to decrease the molecular distance of the collagen fibers. Scott describes the use of compression to decrease the molecular distance of the collagen fibers. Petitioner does not explain how subjecting the compressed tissue to light would further decrease the molecular distance of the collagen fibers as required by claims 1 and 6. Indeed, Petitioner merely asserts that such treatment was known and that is would decrease manufacturing time. Pet. 48–49. For this reason, we agree with Patent Owner that Scott does not disclose or suggest a dry valve “wherein the treated mammalian pericardium tissue forming the dry valve has been subjected to light and mechanical compression to decrease the molecular distance of collagen fibers.” as required by claims 1 and 6. Ex. 1001, 14:15–18, 14:42–45. The Petition does not rely on Chen to cure this deficiency in Scott.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,390,945 - Ironridge, Inc. v. Pegasus Solar, Inc.Institution deniedPTAB · Aug 10, 2022 · PGR2022-00024 · APJ Eric C Jeschke · PGR · Institution
The Board denied institution because the Petition did not show that any challenged claim 1–12 was more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324. Upon consideration of the evidence and arguments in the record, for the reasons below we determine that the information presented does not show that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of post-grant review. See 37 C.F.R. § 42.208(b) (“At any time prior to institution of post-grant review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute post-grant review.”).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Patent Owner’s counsel was sufficient to meet the service requirements of 37 C.F.R. § 42.205. Section (a) of that regulatory provision states that “[t]he petition and supporting evidence must be served on the patent owner at the correspondence address of record for the subject patent. The petitioner may additionally serve the petition and supporting evidence on the patent owner at any other address known to the petitioner as likely to effect service.” Section (b) adds that, “[u]pon agreement of the parties, service may be made electronically.” 37 C.F.R. § 42.205(b) (emphasis added). Although Petitioner does appear to have emailed the Petition to persons satisfying the requirements in § 42.205(a), there is nothing in the record indicating an agreement between the parties that service may be made electronically, as required by § 42.205(b). See, e.g., Ex. 1020 at 1 (showing an attorney for Petitioner in this proceeding asking Mr. Holm if Patent Owner would “agree to electronic service” without any showing of a subsequent agreement). Without an agreement between the parties as to sufficiency of electronic service, we find Petitioner’s emailing of the Petition to Mr. Holm and Mr. Fisher insufficient to effect service.” slip op. at 12
- PTAB / AIA Trials › Discretionary denialNot reached
“B. Discretion Under 35 U.S.C. § 324(a) and § 325(d) Patent Owner argues that we should exercise our discretion under § 324(a) and under § 325(d) to deny institution. See Prelim. Resp. 50–51 (discussing § 324(a)), 11–21 (discussing § 325(d)). Because we deny the Petition after considering the merits of each ground, we need not and do not reach Patent Owner’s arguments based on discretion.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art at the time of the alleged invention “would have had at least a bachelor’s degree in mechanical engineering, structural engineering, or similar technical field, with at least three years of relevant (metal fabrication, aluminum extrusion, architectural glass structural) product design experience.” Pet. 36 (citing Cinnamon Decl. ¶ 51). Petitioner adds that “[a]n increase in experience could compensate for less education.” Id. (citing Cinnamon Decl. ¶ 51). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,998,847 - MG Freesites Ltd v. Scorpcast, LLCSome claims unpatentablePTAB · Aug 3, 2022 · IPR2021-00510 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1, 9–11, 18–20, 22, 26, and 27 are unpatentable; claims 13 and 24 are not shown unpatentable, principally because the asserted references fail to disclose the claimed navigation sequence.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a skilled artisan “would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, or Computer Science (or equivalent) plus approximately two years of work experience with technologies relating to content annotation and/or content sharing among multiple users.” Pet. 17 (citing Ex. 1002 ¶¶ 1–33). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. See PO Resp. 10. We apply Petitioner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ’063 patent and the prior art of record.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We apply the same claim construction standard used by Article III federal courts and the International Trade Commission, both of which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. 37 C.F.R. § 42.100(b). Accordingly, we construe each challenged claim of the ’063 patent to generally be “the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.” slip op. at 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“Analysis Legal Standard for Corroborating Conception “Conception is a question of law predicated on subsidiary factual findings, one of which is the sufficiency of corroboration.” Apator Miitors ApS v. Kamstrup AS, 887 F.3d 1293, 1295 (Fed. Cir. 2018). We not reach the question of whether co-inventors Mr. Sreenath and Mr. Avedissian conceived of the claimed invention prior to June 4, 2009 unless “there is sufficient corroboration.” Kolcraft Enter., Inc. v. Graco Child.’s Prods., conception must be corroborated by other, independent information.” Id. (citations omitted). We examine all pertinent evidence under a rule of reason analysis “to determine whether the inventor’s testimony is credible.” Id. “Even under the ‘rule of reason’ analysis, however, the evidence of corroboration must not depend solely on the inventor himself.” Apator, 887 F.3d at 1295.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Petitioner supports its position that the display of the first and second images in Geer changes from the first segment to the second segment with the testimony of Dr. Porter. Ex. 1002 ¶ 185. Dr. Porter testifies that “when video playback is of the first video segment (e.g., corresponding to the first advertisement), the first image (e.g., image of MP3 player) is displayed both as product icon 312a and within the displayed advertisement, whereas the second image (e.g., image of sunglasses) is displayed only as product icon 312b.” Id. Dr. Porter further testifies that “[w]hen video playback is of the second video segment (e.g., corresponding to the second advertisement), the first image is displayed only as product icon 312a, whereas the second image is displayed both as product icon 312b and within the displayed advertisement.” Id. ¶ 186 (citing Ex. 1005 ¶¶ 47–48, Figs. 3A–3C). Dr. Porter also points to the text of paragraph 47 of Geer that “pop-out window contains a more detailed description of the product represented by the first ¶ 185 (quoting Ex. 1005 ¶ 47). We find that Dr. Porter’s testimony is entitled to substantial weight because it is focused on the actual claim language concerning the “display” of the first image and second image and is supported by the disclosure of Geer. In particular, he explains how the display of the product icons changes and the fact that a larger picture of the product appears when the icon is selected is particularly probative of a change in the “display” of the first image and the second image. This testimony is confirmed by Figures 3B and 3C. In Figure 3B, the sunglasses are displayed only as a small image in scrubber bar 306. In Figure 3C, the sunglasses are displayed both as a small image in scrubber bar 306 and as a larger image in the pop-out window 316. We credit Dr. Porter’s testimony over that of Dr. Valerdi because Dr. Valerdi’s testimony focuses on the images of product icons in the scrubber area, not on the display of the images.” slip op. at 59
Patent outcomesUS 9,899,063 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,899,063 - MG Freesites Ltd v. Scorpcast, LLCNo claims unpatentablePTAB · Aug 3, 2022 · IPR2021-00512 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1, 5–8, 10, 11, 15–17, 20, 21, and 25–28 were not shown unpatentable because the asserted grounds failed to establish required claim limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a skilled artisan “would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, or Computer Science (or equivalent) plus approximately two years of work experience with technologies relating to content annotation and/or content sharing among multiple users.” Pet. 16–17 (citing Ex. 1002 ¶¶ 1–28). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. See PO Resp. 9. We apply Petitioner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ‘463 patent and the prior art of record.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with the determination in IPR2020-01697 that not all areas in the recited “scrubber area” must perform scrubbing functionality for the following reasons. First, claim 1 recites “the scrubber area comprising a scrubber that includes a draggable scrubber control that indicates video playback progress via a scrubber timeline . . . and which is manipulable to control playback of the first video file by dragging the scrubber control.” Ex. 1001, 50:61–67. The use of the open-ended transition “comprising” indicates the scrubber area may include more than the draggable scrubber control. Second, the Specification of the ’463 patent describes “scrubber area” as including a “scrubber bar” and optionally “an area adjacent to the scrubber bar.” Id. at 2:48–54. But, the description of the optional area the adjacent area must include scrubbing functionality. See id. Third, our determination that the area adjacent the scrubber control does not necessarily include scrubbing functionality is consistent with Figure 10 of the ’463 patent where the right-hand side of scrubber area 1002 includes items unrelated to scrubbing functionality, e.g., volume control.10 For the foregoing reasons, we do not adopt the EDTX construction of scrubber area because doing so would require us to read a limitation into “scrubber area” that, in our view, is not supported by the evidence.” slip op. at 32
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Pet. 46. We note, however, that Roberts does not use the terms “scrubber” or “scrubber area.” See generally Ex. 1004. Dr. Porter testifies that the red rectangles added to Figures 9 and 13 represent a “scrubber area” but, he cites no persuasive evidence from Roberts to support his opinion concerning the size and shape of the alleged scrubber areas in Roberts’ Figures 9 and 13, nor does he explain why images 904 and 1004 are “adjacent” the timeline. Ex. 1002 ¶¶ 78–79. Therefore, his testimony is entitled to little, if any, weight. See 37 C.F.R. § 42.65(a). In order to satisfy this limitation, Petitioner creates different size scrubbing areas in Figures 9 and 13 of Roberts to fit its obviousness theory. Image 904 in Roberts’ Figure 9 is near the timeline but does not border the timeline. In addition, only one image, not the first plurality of images, is shown in the scrubber area Petitioner identifies in Figure 9. In Roberts’ Figure 13, images 904 and 1004 are shown within Petitioner’s larger proposed scrubbing area, but neither image borders the timeline. In Figure 13, image 904 is further from the timeline than image 1004 and further from the timeline than in Figure 9. Ex. 1004, Figs. 9, 13. Petitioner, however, fails to explain why image 904, which is positioned differently in Figure 9 and Figure 13, is adjacent the timeline in both. See Pet. 45–48.” slip op. at 34
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Analysis The language of limitation 1.5 recites that “at least partly in response to detecting that a user . . . select[s] the first image . . . causing the playback of the first video file to jump to a segment of the first video file corresponding to the first image.” Ex. 1001, 51:1–11. Both parties agree that this language imposes a temporal requirement that the user selects the first image and, then after the user selection, the playback of the first video file jumps to a segment of the first video file corresponding to the first image. Tr. 58:8–18, 109:9–10.” slip op. at 48
Patent outcomesUS 9,703,463 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,703,463 - Merchsource, LLC v. Hyper Ice, Inc.Institution deniedPTAB · Jul 28, 2022 · IPR2022-00533 · APJ James J Mayberry · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–12 were unpatentable under either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the current record, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having ordinary skill in the art had “a bachelor’s degree in mechanical engineering or industrial design and at least 2-3 years of experience in consumer product design, production, development, and/or manufacturing, or equivalent experience.” Pet. 24 (referencing Ex. 1002 ¶ 33). Patent Owner does not challenge Petitioner’s characterization of the level of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 12. For the purposes of this Decision, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’708 patent, based on our review of the current record.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record.9 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)). To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next. 9 The parties’ joint claim construction statement, filed in the parallel district court litigation between the parties, identifies the following disputed terms: “a handle attached to the main enclosure,” “an outer gripping surface,” “a charge condition,” and “a charge indication display.” Ex. 1013, 2–3. As will be evident from our analysis below, none of these claim terms are implicated in our Decision.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“demonstrated that a person having ordinary skill in the art would have modified Shaanxi’s teachings to include a battery in the handle of Shaanxi’s massager to arrive at the subject matter of the “battery” limitation of claim 1, given that Shaanxi teaches its motor is located in the handle. Although we agree with Petitioner that Shaanxi’s electric massager would need a source of electricity (Pet. 25), Petitioner fails to address the implication of modifying Shaanxi’s teachings of a massager with a motor located in its handle to include a battery in the handle. See Pet. 28–30 (discussing Horie’s disclosure of a power tool with a battery in the handle by providing no analysis of why a person having ordinary skill in the art would have modified Shaanxi to include a battery in the handle); Ex. 1002 ¶¶ 77–80, 88–93 (testifying as to why a person having ordinary skill in the art would have looked to using a rechargeable battery, but not addressing why an artisan of ordinary skill would have modified Shaanxi as proposed given that the massager has a motor in the handle). Specifically, neither Petitioner nor its declarant provides any reasoning as to why a person having ordinary skill in the art would have modified a massager with a motor in the handle to also include a battery in the handle beyond stating that an electrical power source would be needed. Obviousness, however, requires “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (emphasis added); see also id. (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”); Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 13 (PTAB October 16, 2018) (“Moreover, it is Petitioner’s burden to demonstrate ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” (quoting Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016)) (emphasis added) (informative).” slip op. at 22
Claim construction§ 103 obviousnessPatents in suitUS 10,912,708 - PTAB · Jun 8, 2022 · IPR2022-00293 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1, 2, 7–11, 30, and 31 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a twopart framework in determining whether to exercise its discretion under § 325(d): (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. See Advanced Bionics, LLC v. Med- El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB 9 US 2004/0226309 A1, published November 18, 2004 (Ex. 1012, “Broussard”). Feb. 13, 2020) (precedential). In applying this framework, we consider several non-exclusive factors, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph). If, after review of factors (a), (b), and (d), we determine that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, Paper 6 at 10.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). 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. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “would have at least a Bachelor’s degree in mechanical engineering, structural engineering, or a related field, and two years of experience designing structures with comparable mechanical and/or structural elements to the subject matter of the ’511 Patent.” Pet. 12 (citing Jobin Decl. ¶¶ 22–25). Petitioner also states that “[a]dditional experience may compensate for less education.” Id. (citing Jobin Decl. ¶¶ 22–25). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See Prelim. Resp. 10; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, the Board interprets claim language using the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. Neither Petitioner nor Patent Owner proposes express constructions for any claim terms. See Pet. 11. At this stage of the proceeding and based on the current record, we do not discern a need to construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,913,511
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.