- PTAB · Jul 26, 2023 · IPR2023-00539 · APJ James P Calve · IPR · Institution
The Board instituted inter partes review of claims 1–18 and 20–22 on all four § 103 grounds because the petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). 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). Upon consideration of the evidence and arguments in the record, 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 therefore grant institution of an inter partes review. See 37 C.F.R. § 42.108(a) (“When instituting . . . 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
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“An ordinary meaning of “heuristic” is “involving or serving as an aid to learning, discovery, or problem-solving by experimental and especially trial-and-error methods.” Merriam-Webster.com at “http://www.merriam-webster.com/dictionary/heuristic” (accessed June 12, 2023) (Ex. 3001). Heuristics in the ’673 patent are (1) empirical data used to correlate sensed bearing adapter temperature to bearing temperature, (2) correlating sensed pressure in a trainline to brake pressure, (3) converting bolster/side frame displacement to load, (4) estimating a temperature of tank contents from inner jacket temperature, (5) using dynamic bearing data at an adapter with a fast Fourier transform (FFT) algorithm to isolate dominant modes, and amplify at rolling frequency to indicate faults, (6) converting radial acceleration to vehicle speed using dynamics and wheel and axle diameters, (7) using dynamic bearing data at an adapter and kurtosis in a time domain with a probability density function to indicate bearing damage, (8) applying a probability density function and kurtosis to dynamic data at a bearing adapter and other truck components to indicate track defects, (9) using a simple FFT algorithm with data from adapters to isolate known hunting frequencies or detect flange impacts to identify hunting, and (10) correlate wheel temperature to tread temperature using empirical data. Ex. 1001, 8:20–12:39 (chart of sensed parameter, sensor type, output, and heuristic). Interpreted in light of the ’673 patent specification, a “heuristic” is a rule, algorithm, function, formula, graphing function, or similar mechanism applied to data to assist in analyzing and/or interpreting the data.” slip op. at 7
- Skill levelSkill level patent owner adoptedDecided for patent owner
“II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or mechanical engineering or a related field with at least two years’ experience designing monitoring systems for railcar components, or monitoring systems for similar industrial equipment with rotating components,” and “[l]ess work experience could be compensated by a higher level of education, such as a master’s degree, and vice versa.” Pet. 14 (citing Ex. 1003 ¶ 45). 2 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. § 103 that became effective on March 16, 2013. Changes made to 35 U.S.C. § 103 in the AIA do not apply to any application for patent filed before March 16, 2013. Because the ’673 patent has an effective filing date before March 16, 2013, we refer to the pre-AIA versions of § 103. 3 US 2007/0152107 A1, published July 5, 2007 (Ex. 1005, “LeFebvre”). 4 US 2007/0208841 A1, published Sept. 6, 2007 (Ex. 1007, “Barone”). 5 US 2011/028540 A1, published Nov. 17, 2011 (Ex. 1006, “Armitage”). Patent Owner contends that a skilled artisan “is a person with at least a B.S. degree in electrical or computer science or a related field, with at least two years’ experience with sensing systems for railcars or similar industrial equipment, including familiarity with wireless networks and heuristics and statistical data analysis for failure prediction,” and “[l]ess work experience could be compensated for by a higher level of relevant education and vice versa.” Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 36–40). We adopt Patent Owner’s proposed level as more consistent with the ’673 patent and prior art, but our analysis is the same under either proposal.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“We apply the following two-part framework under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (Feb. 13, 2020) (precedential). To determine whether the Petition presents “the same or substantially the same” art or arguments previously presented to the Office, we consider the factors set forth in Becton, Dickinson.6 Id. at 7 n.8. Becton, Dickinson provides a non-exclusive set of factors to use in applying the framework of 35 U.S.C. § 325(d).” slip op. at 49
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,981,673 - Rideco Inc. v. Via Transportation, Inc.No claims unpatentablePTAB · Jun 23, 2023 · IPR2022-00286 · APJ Richard H Marschall · IPR · Final written decision
Claims 1–20 were not shown unpatentable because the asserted combinations failed to teach or render obvious system-selected virtual bus stops and a pair of associated stops.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Discussion We have considered the parties’ arguments and evidence of record, and we adopt Petitioner’s asserted level of ordinary skill because it is consistent with the problems identified and solutions provided in the ’824 patent and the prior art. In particular, we agree with Petitioner that the relevant field of art is not limited to backend artificial intelligence components in a ride-sharing system as Patent Owner contends. See Pet. Reply 10–11; see also PO Resp. 31–32. We disagree with Patent Owner’s assertions that the ’824 patent is directed towards a complex artificial intelligence system far beyond the scope of traditional navigation systems. See PO Resp. 31–32. Neither Patent Owner nor its expert, Dr. Jacquillat, cites to the patent in determining the relevant skill in the art to explain why the art of the ’824 patent is limited to artificial intelligence components. See id.; Ex. 2022 ¶¶ 41–51. As Patent Owner acknowledges, the ’824 patent makes no reference to “artificial intelligence” directly, and Patent Owner instead relies upon declarant testimony to argue that the patent is directed towards an advancement in artificial intelligence. PO Sur-reply 11. Patent Owner claims, without support, that “programming a computer to make decisions in the place of humans is a form of artificial intelligence.” Id. Regardless, we need not determine the precise definition of artificial intelligence to determine the relevant skill in the art pertaining to a patent that never uses the term. We agree with Petitioner that an artisan with an understanding of computer programming and navigation systems as well as two to four years of experience in location-based systems would understand the “computer-implemented transportation system” of the ’824 patent. In summary, we find that the relevant level of ordinary skill in the art “would have been a person having (i) a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field[;] (ii) a working knowledge of computer programming and navigation systems; and (iii) two to four years of experience with location-based systems, user interfaces and databases.” Pet. 5–6 (citing Ex. 1003 ¶ 37).” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Having addressed the relevant skill in the art, we address Patent Owner’s contention that Mr. Andrews “is not qualified to offer opinions concerning the artificial intelligence components of a ride-sharing system that are at issue in the ’824 patent.” PO Resp. 37. As discussed previously, we disagree with Patent Owner’s proposed qualifications for a person of ordinary skill in the art, and have adopted Petitioner’s position. Patent Owner does not offer an opinion as to whether Mr. Andrews would be qualified as a person of ordinary skill in the art under Petitioner’s definition. The record reflects that Mr. Andrews possessed an advanced degree in electronic engineering, had a working knowledge of computer programming and navigation systems, and had more than two years of experience with location-based systems, user interfaces, and databases at the time of the ’824 patent. See, e.g., Ex. 1003 ¶¶ 4–19; Ex. 1009. Therefore, we find that Mr. Andrews is qualified to offer opinions as a person of ordinary skill in the art for the ’824 patent under the relevant definition. Additionally, we find that Mr. Andrews’s background would qualify him as a person of ordinary skill in the art even if we adopted Patent Owner’s proposed level of ordinary skill in the art. Under Patent Owner’s proposal, a person of ordinary skill in the art would have a “degree in computer science, operations research, industrial engineering, applied mathematics, or a related field with at least two years of experience with optimization modeling, large scale optimization algorithms, or artificial intelligence solutions in the context of ride-sharing systems.” PO Resp. 30 (emphasis added). The record demonstrates that Mr. Andrews meets these qualifications. Mr. Andrews possesses a Bachelor of Science degree in Electrical Engineering and a Master of Science degree in Electronic Engineering, which we find to be in a “related field.” Ex. 1003 ¶ 6. Additionally, Mr. Andrews has significantly more than two years of experience in the fields Patent Owner suggests are relevant as evidenced by, for example, Mr. Andrews testimony that he has experience in “location-based systems,” and “work[ing] in database dispatch systems for fleet management.” Ex. 2023, 44:2–9; 44:15–19. Furthermore, given Mr. Andrews’s advanced degree, Patent Owner’s definition would allow Mr. Andrews to have less than two years of experience in the pertinent fields. PO Resp. 30; Ex. 1003 ¶ 6.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“Under these circumstances, where the parties now agree that the ordinary meaning should apply to “virtual bus stops” and the district court adopted the same approach, we see no reason to depart from applying the ordinary meaning in this proceeding. We therefore apply the plain and ordinary meaning proposed by the parties, where “virtual bus stops” means “pickup and dropoff locations selected by the ride-sharing system itself.” As to the construction of dependent claim 8, we agree with Patent Owner that we need not formally construe the term to resolve the issues before us. 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))). As to Petitioner’s remaining arguments, we do not read artificial intelligence or other limitations into the claims as Petitioner warns against, and Petitioner does not argue for any specific construction in relation to these arguments that would require us to resolve a specific claim construction dispute. See Pet. Reply 4–10.” slip op. at 16
- Strike new argumentNew argument disregardedDecided for patent owner
“Ex. 1004, 4:17–23. The Petition does not cite to any declarant support, additional prior art, other embodiments in Lambert, or any obviousness analysis when addressing “virtual bus stops.” See Pet. 25. Although for later aspects of claim 1 the Petition relies on Poykko and an obviousness analysis when arguing that it would have been obvious to configure Lambert’s server to operate in a certain way (e.g., to access memory that includes a database of locations as taught by Poykko), the Petition does not rely on such an analysis when first addressing “virtual bus stops” alone. See id. The combination of Lambert’s statement above with Poykko and other aspects of Lambert, potentially with allegedly obvious modifications of Lambert, may serve as the basis of Petitioner’s arguments for these later limitations involving “virtual bus stops,” but these later allegations do not reach back and redefine Petitioner’s more limited argument with respect to “virtual bus stops” in isolation.8 To the extent Petitioner argues in its Reply that a combination of Lambert and Poykko or other obviousness arguments 8 In our Institution Decision, we noted that Patent Owner, at that stage of the proceeding, failed to properly address Petitioner’s proposed combination of Lambert and Poykko for various “virtual bus stop” limitations. Inst. Dec. 22–23. That said, we do not view the Petition’s arguments and evidence as to “virtual bus stops” limitation in isolation, prior to addressing the “memory” limitation and adding Poykko and obviousness to the analysis, as relying on a combination of Lambert and Poykko or obviousness. See Pet. 25. satisfy the “virtual bus stops” limitation, we agree with Patent Owner that this introduces an improper new theory in the Reply. See PO Sur-reply 20– 22.” slip op. at 29
Patent outcomesUS 9,816,824 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,816,824 - Nanobebe US Inc. v. Mayborn (UK) LimitedInstitutedPTAB · Jun 16, 2023 · IPR2023-00467 · APJ Michael L Woods · IPR · Institution
Instituted review of claims 14, 16, 17, and 19 on all asserted grounds; the Meyers and Sepehr obviousness challenge met the reasonable-likelihood threshold.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Here, the record does not support a finding that Comotomo and Nanobebe have any relationship, let alone a “significant” one. We credit the testimony of Petitioner’s co-founder and executive chairman, Mr. Lanternari, that Petitioner “was not involved in the preparation and/or filing of the Comotomo IPR petitions, nor was Comotomo involved in the preparation and/or filing of [Petitioner’s] petitions.” Ex. 1023 ¶¶ 1, 14. Additionally, Patent Owner accused Petitioner and Comotomo of patent infringement based on different products. See id. ¶ 14. This difference further distinguishes the facts from Valve Corporation. See Valve Corp. 9–10.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’930 patent. Accordingly, we institute an inter partes review of claims 14, 16, 17, and 19 of the ’930 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“engineering, industrial design, or similar technical field, and with 2 or more years of practical experience related to the design of infant feeding products or comparable industry.” Pet. 15–16 (citing Ex. 1005 ¶ 47). Petitioner further submits that “[a]dditional education could compensate for less practical experience and vice versa.” Id. at 16 (citing Ex. 1005 ¶ 47). Patent Owner does not dispute Petitioner’s definition of a POSITA. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it appears consistent with the ’930 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
- Prior constructionPrior construction adoptedDecided for patent owner
“The Markman Order provided a thorough and reasoned explanation of the construction, citing evidence and argument submitted by both parties. See Ex. 2008, 12–15. For purposes of this Decision, we adopt the District Court’s construction, and conclude that “domed configuration” shall mean “wide circular bottom with an arc-shaped cross-sectional profile.” Id. at 15. If either party disagrees with this construction, that party shall explain why the construction is in error in its next substantive brief. 2. “teat portion” In the Markman Order, the District Court adopted the parties agreed- upon construction that “teat portion” shall mean “the entire part projecting generally perpendicular to the mouth of the vessel and disposed above the areola portion.” Ex. 2008, 5 (citing transcript from Markman hearing). For purposes of this Decision, we adopt the District Court’s construction. 37 C.F.R. § 42.100(b). If either party disagrees with this construction, that party shall explain why the construction is in error in its next substantive brief.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,952,930 - Nanobebe US Inc. v. Mayborn (UK) LimitedInstitutedPTAB · Jun 16, 2023 · IPR2023-00465 · APJ Ulrike W Jenks · IPR · Institution
The Board instituted IPR on claims 21–24, 26, and 27, finding a reasonable likelihood of obviousness over Ishimaru and Kurkjian; it also instituted the Ishimaru–Atkin ground under the all-or-nothing rule.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“Absent a “significant relationship” between Petitioner and Comotomo, on this record, the General Plastic factors are of “little probative value.” Cf. Samsung Elecs. Co. v. Scramoge Tech. Ltd., IPR2022-00284, Paper 12 at 12 (PTAB Jun. 22, 2022) (finding Factor 2 “of little probative value” where “there is no significant relationship” between petitioners). Furthermore, “[a]ny ‘implicit’ relationship created merely by challenging the same claims of the same patent with similar allegations of unpatentability is not the sort of ‘significant relationship’ contemplated by Valve [Corporation].” See Ebates Performance Mktg., Inc. v. IBM, IPR2022-00646, Paper 10 at 9 (PTAB Oct. 25, 2022).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSITA” or “POSA”) “would have a B.S. in Mechanical or Industrial Engineering; Materials Science, Product Design, or equivalent field, with 3-5 years of academic or industry experience with fluid dynamics, or a comparable industry.” Pet. 15 (citing Ex. 1005 ¶ 47). Petitioner further submits that “[a]dditional education could compensate for less practical experience and vice versa.” Id. (citing Ex. 1005 ¶ 47). Patent Owner does not dispute Petitioner’s definition of a POSITA. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it appears consistent with the ’244 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction” slip op. at 11
- Prior constructionPrior construction adoptedDecided for petitioner
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“(i) Domed Shape We are not persuaded by Patent Owner’s repeated arguments that Kurkjian is a narrow nipple and bottle design and thereby cannot meet the dome shaped limitation as recited in claim element 21(H) (Prelim. Resp. 29, 34, 38); and that Petitioner has not provided “argument and evidence as to how the prior art applies to the construed term ‘domed shape.’” See Prelim. Resp. 26. Petitioner identifies that Kurkjian has a nipple and collar design where “the edge of the collar that has the widest circumference” and a sloping outer contour, thereby, meeting the domed shape limitation. Pet. 41 (citing Ex. 1005 ¶ 415). Changes in the size and proportion do not render a product patentable unless it performs differently. See In re Rose, 220 F.2d 459, 463 (CCPA 1955) (Claims directed to a lumber package “of appreciable size and weight [ ] requiring handling by a lift truck” were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.). The ’244 patent Specification does not define “wide” but suggests that the base portion of the teat be shaped like a breast. Ex. 1003, 4:3–5 (“The shape of the teat is also similar to the human breast, the base portion 116 being shaped like a breast and having a wide, domed configuration.”), see also id. at 7:17, 8:19. Suggesting that the design is intended to be shaped like a natural breast says nothing about the requisite width of the dome because breasts come in all shapes and sizes. Increasing the diameter of Kurkjian’s bottle and corresponding nipple and collar would not be expected to change the function of the feeding bottle. We are not persuaded by Patent Owner’s contention that the” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,207,244 - Yita LLC / Jinrong (SH) Automotive Accessory Industrial Development Co. Ltd. v. Macneil IP LLCInstitutedPTAB · Jun 13, 2023 · IPR2023-00173 · APJ Arthur M Peslak · IPR · Institution
The Board instituted review of claims 1–6 on the asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review under 35 U.S.C. § 314(a). See also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We need not explicitly construe the term “vehicle floor tray” or any other claim term for the purposes of this decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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)). However, we offer the following reasons for not adopting Patent Owner’s proposed construction. Claim 1 recites the term “vehicle floor tray” but does not recite any specific structural details of the tray. Ex. 1001, 19:42–60. Thus, nothing in the claim language suggests the structural aspects of a vehicle floor tray included in Patent Owner’s proposed construction.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering, industrial design, or a closely related field, or equivalent formal training, education, or practical experience in a field relating to product design, CAD, or manufacturing.” Pet. 13 (citing Ex. 1003 ¶¶ 27–28). Petitioner further contends that the person of ordinary skill in the art “would also have a minimum of three to five years of experience in plastics engineering, CAD, manufacturing, plastic product design, or a related industry,” but that “a higher level of training or practical experience might make up for less education, and vice-versa.” Id. Patent Owner does not, at this stage of the proceeding, dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 12. For the purposes of this Decision, we apply Petitioner’s proposed level of skill in the art because it appears consistent with the problems addressed in the ’917 patent and the prior art.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In his testimony concerning background prior art, Mr. Perreault relies on two prior art patents that disclose “floor mats” described similarly to Patent Owner’s description of a “vehicle floor tray.” See Ex. 1003 ¶¶ 29–30 (citing Ex. 1013 (“Bailey”); Ex. 1015 (“Tyler”)). Bailey describes a “floor mat” that is “molded or otherwise preformed into a tray-like shape which conforms to the contour of a portion of the carpeted automobile floor. The mat is dimensioned and configured to nest within and abut against the sides of a carpeted floor well of the vehicle.” Ex. 1013, 2:37–42, Fig. 6. Tyler describes “contoured vehicle floor mats” that “mate[] with the vehicle floorboard to hold the mat in place.” Ex. 1013, code (57), 1:52–54. Based on these exhibits, we find that Mr. Perreault’s testimony is not conclusory and not based on an improper definition of floor tray. Based on the present record and after considering Patent Owner’s contentions, Petitioner sufficiently establishes that Stanesic discloses the subject matter of the preamble. In particular, Stanesic discloses “a tray-like central area” and “the raised wall 22 has two walls that rise about one to about two inches from the base 15” (Ex. 1005, 2:61–62), which sufficiently supports Petitioner’s contention that Stanesic discloses, or at least suggests, a vehicle floor tray.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,138,917 - Yita LLC / Jinrong (SH) Automotive Accessory Industrial Development Co. Ltd. v. Macneil IP LLCInstitutedPTAB · Jun 13, 2023 · IPR2023-00172 · APJ Arthur M Peslak · IPR · Institution
The Board instituted inter partes review of claims 1–6 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review under 35 U.S.C. § 314(a). See also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“and Cicotte, the dispute for the first prong of the Advanced Bionics framework revolves around whether Rothkop is cumulative of Exhibits 2001, 2002, 2003, and 2004 cited in an IDS considered by the Examiner. Petitioner does not dispute that Cicotte is cumulative of Exhibit 2005 or 2006. See Prel. Reply. For the purposes of the § 325(d) analysis, we will assume, without deciding, that Rothkop is cumulative of at least one of the references Patent Owner relies on, i.e., Exhibits 2001, 2002, 2003, and 2004. We, thus, assume, without deciding, that the first prong of the Advanced Bionics framework is satisfied and move to the second prong. 4. Advanced Bionics Framework, Prong Two: Has Petitioner Demonstrated that the Office Erred in a Manner Material to the Patentability of the Challenged Claims? The ’655 patent issued from an application filed on August 6, 2014.” slip op. at 45
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the following reasons, we do not adopt Patent Owner’s proposed construction. Claim 1 recites a “vehicle floor tray” but does not recite any specific structural details of the tray. Ex. 1001, 19:46–2:2. Thus, nothing in the claim language suggests the aspects of a vehicle floor tray included in Patent Owner’s proposed construction. Patent Owner does not direct us to an explicit lexicographic definition of the term “vehicle floor tray” in the Specification of the ’655 patent. Rather, Patent Owner relies on descriptions of aspects of the embodiment disclosed in Figure 1 of the ’655 patent. For example, the ’655 patent generally describes that “[f]loor trays have sidewalls.” Ex. 1001, 1:58. The ’655 patent states that in an “aspect” of the invention, “a vehicle floor tray has a central panel for the placement on the floor of a vehicle foot well, and at least first and second upstanding panels.” Id. at 5:28–30. In column 7, the ’655 patent describes that “[d]isposed around the central or floor panel 102 are a series of upstanding side panels, which will vary in number and configuration from one vehicle model to the next.” Id. at 7:47–49 (emphasis added). These portions of the Specification suggest that the term “vehicle floor tray” should not be limited to any particular number of side panels or any particular configuration such as the side panels are joined to the floor panel and each other. In the Summary of the Invention, the ’655 patent discloses “a vehicle” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“For the following reasons, Patent Owner’s contentions are unavailing based on the present record. First, as discussed above, Patent Owner’s attempt to draw a distinction between floor trays and floor mats is unavailing based on the present record and undercut by its own exhibits describing Patent Owner’s vehicle floor trays as “mats.” See Ex. 2010; Ex. 2012; Ex. 2013; Ex. 2014. Second, as discussed above, the fact that Petitioner has not shown that someone previously scanned a vehicle footwell is unavailing because this challenge is based on obviousness, not anticipation. Third, the sentence in Rothkop that Patent Owner contends discloses a kind of scanner, not what is to be scanned, is “[t]he data input device may comprise a scanner 12 for scanning a physical part such as an existing seat, frame, or vehicle.” Ex. 1006, 4:61– 63. Based on the present record, we do not agree that this sentence discloses a type of scanner. Fourth, Patent Owner’s arguments concerning the claimed invention creating a new product versus reverse engineering an existing product in Rothkop raises potential fact questions that are best resolved at trial based on a fully developed record. Petitioner provides numerous reasons why a person of ordinary skill in the art would have been motivated to combine Stanesic, Rothkop, and Cicotte in such a manner that teaches or suggests all limitations of claim 1. Pet. 29–34. Petitioner sufficiently supports this reasoning with the testimony of Mr. Perreault that he supports with reference to Stanesic, Rothkop, Cicotte, and other references showing the background art. Ex. 1003 ¶¶ 147–157. Further, Patent Owner does not dispute Petitioner’s conclusion that the combination of Stanesic, Rothkop, and Cicotte “would be nothing more than applying known techniques . . . to a known method of producing a custom-fit vehicle floor tray . . . that is ready for improvement, yielding the predictable result of generating a custom-fit floor tray.” Compare Pet. 33, with Prelim. Resp. Based on the present record and after considering all of Patent” slip op. at 32
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,899,655 - Painteq, LLC v. Orthocision, Inc.All claims unpatentablePTAB · May 24, 2023 · IPR2022-00335 · APJ Michael L Woods · IPR · Final written decision
Claims 26–28 and 31 are unpatentable; proposed substitute claims 32–35 are also unpatentable, so the revised motion to amend is denied.
RulingsFinal written decision- BurdenDecided for patent owner
“Accordingly, even in the absence of any argument from Patent Owner,” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“2. Claim 26 Claim 26 recites “[a] method for repairing a sacroiliac joint.” Ex.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“2. Combination of Stark and Stoffman In presenting this alternative challenge and combining Stark with” slip op. at 38
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Accordingly, Petitioner has shown, by a preponderance of the” slip op. at 87
Patent outcomesUS 10,426,539 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham · NautilusPatents in suitUS 10,426,539 - PTAB · Apr 3, 2023 · IPR2022-01605 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR of claims 1 and 2 on all asserted grounds, finding a reasonable likelihood that both claims would have been obvious over Schreibfeder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. 5 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. Interim Procedure 9 (emphasis added); see also PO Sur-Reply 5 (acknowledging that Petitioner stipulated after the Patent Owner’s Preliminary Response was filed). Under the Interim Procedure, “the PTAB will not deny institution of an IPR . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). This is what Petitioner stipulates. Ex. 1021; see Reply 4 n.1 (stating that Petitioner is filing a “Sotera stipulation,” which “precludes discretionary denial” under the Interim Procedure); Sur-Reply 5. Accordingly, we decline to deny institution under Fintiv.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“an inter 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.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under Section 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Turning to the first prong of Advanced Bionics, neither Schreibfeder nor Threlkel was cited during prosecution of the ’028 patent. See Ex. 1002; see also Ex. 1001, code (56). Further, we do not find anything in the prosecution history of the ’028 patent, such as an office action on the merits, that suggests the Examiner considered “the same or substantially the same prior art” as these references. See Ex. 1002. We disagree with Patent Owner that the Examiner considered “the same prior art” simply because Schreibfeder or Threlkel may have fallen within the same classes searched by the Examiner. See Sur-Reply 3. We are aware of no authority, and Patent Owner cites none, to support this position. Because we do not find that the same or substantially the same art or” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a minimum of a B.S. in engineering or a related field, as well as four to six years of industry experience designing or building amusement rides or motion simulator systems. Higher education by way of advanced degrees in a related field could substitute for years of experience. Pet. 6 (citing Ex. 1003 ¶ 43). Patent Owner does not dispute Petitioner’s definition of a POSITA. See generally, Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as we find that it is consistent with the ’028 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“controller” “should be construed as ‘one or more computer-based devices that issue control signals to engage and control the projector, the motor system, and actuator system.’” Pet. 7 (citing Ex. 1020). Patent Owner similarly proposes that the term “controller” should be construed as “one or more computer-based devices that issue control signals to engage and control the projector, the motor system, and actuator system.” See Prelim. Resp. 12. As both parties propose identical interpretations of the term “controller” (compare Pet. 7, with Prelim. Resp. 2), and Patent Owner at this time does not dispute that the asserted prior art (Schreibfeder) teaches the recited “controller,” this term is not in controversy, and we do not construe it in this Decision. See infra Section III.E.3.h; 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 12
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,266,028 - PTAB · Mar 22, 2023 · IPR2022-01263 · APJ Paul J Korniczky · IPR · Institution
The Board instituted IPR of claims 1, 2, 4–7, 10–12, 15, 16, 21, and 22 because Petitioner showed a reasonable likelihood that claim 1 is obvious over Ziff, Saito, and Ferrel.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). After considering the Petition and other evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims. Thus, we institute an inter partes review on all challenged claims on all asserted grounds. 37 C.F.R. § 42.108(a). Specifically, we grant Petitioner’s request to institute an inter partes review of claims 1, 2, 4–7, 10, 12, 15, 16, 21, and 22 of the ’576 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner states a person of ordinary skill in the art would have had (1) at least an undergraduate degree in electrical engineering, computer science, a closely related scientific field, or similar advanced post-graduate education in this area; (2) a working knowledge of electronic content distribution systems; and (3) at least two years of experience with such systems. Additional education may substitute for lesser work experience and vice-versa. Pet. 10 (citing Ex. 1003 ¶¶ 71–74). We adopt Petitioner’s definition of the level of ordinary skill for the purposes of institution.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In its Petition, Petitioner proposes that the “claim terms of the ’576 Patent [should] be given their ordinary and accustomed meaning.” Pet. 10– 11. For purposes of institution, we determine that we do not need to expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“According to Petitioner, because Ziff’s CPU 42 executes its software applications and Saito teaches a distributed processor system for cooperatively executing a plurality of disparate programs, a skilled artisan would have been motivated to make the simple modification allowing Ziff’s non-distributed subsystems to execute on distributed processors as taught by Saito. Id. at 37. Petitioner explains that “Ziff’s various software components are subsystems in a cooperative system, but Ziff does not expressly teach that each software application—which perform the respective functions of Ziff’s story creation subsystems—are implemented on separate processors.” Id. at 20. Petitioner states that, while Ziff expressly teaches its distinct subsystems are executed on the same CPU, a person of ordinary skill in the art would have been motivated to utilize the well-known benefits of Saito’s distributed processing architecture to implement Ziff’s subsystems. Id. at 20–21 (citing Ex. 1003 ¶¶ 104–114; Ex. 1004, 6:37–41). Petitioner further explains that Saito expressly teaches the benefit in distributed computer systems of being able to utilize distributed processors to take advantage of different computers’ “performance, load, and type.” Id. at 22 (citing Ex. 1005, 3:36–49; Ex. 1003 ¶ 112). According to Petitioner, a person of ordinary skill in the art would have understood that it would have been an obvious design choice to use either distributed or nondistributed processors to execute Ziff’s subsystems, and this skilled artisan would have understood that implementing a distributed system with multiple processors, as in Saito, would enhance Ziff’s goals of improving speed as well as efficiency. Id. at 21–22 (citing Ex. 1004, 2:45–60; Ex. 1003 ¶¶ 107– 110).” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,339,576 - PTAB · Mar 2, 2023 · IPR2022-01462 · APJ Jeffrey N Fredman · IPR · Institution
Instituted IPR of claims 1–3, 9–13, 16, and 17 on all petition grounds; Petitioner showed a reasonable likelihood of prevailing on obviousness over Keller ’574 and Yu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the preliminary record, Petitioner has met its institution burden and demonstrated to a reasonable likelihood that it will prevail in showing the claim 1 would have been obvious over Keller ’574 and Yu.” slip op. at 31
- Skill levelOther
“While we appreciate that the parties differ on the number of years of experience, we do not find a difference that affects our Decision. The parties may provide briefing at trial, if appropriate, to explain why adoption of one definition over the other changes the remaining analysis. We also note the level of ordinary skill in the art usually is evidenced by the prior art references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We agree with Patent Owner because on the current record, there is no controversy over the meaning of the term and Petitioner does not identify any way that claim construction impacts the decision. If the parties believe that further argument on any claim term’s interpretation is needed to resolve any disputed issue, they may and are encouraged to provide such argument in briefing permitted in trial.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“On this record, we agree with Petitioner that the ordinary artisan concerned with separation of the nozzle during operation, whether due to backpressure or other reasons, would have found it obvious based on Yu’s teaching to include Yu’s tangs to engage the nozzle and lock and seal at locations disclosed by Keller ’574. On this record, Patent Owner does not persuasively explain why the ordinary artisan would have found these disclosures of a locking location in Keller ’574 and tangs in Yu insufficient to select tang locations in Keller ’574 that would function to enforce locking and sealing of the combined device.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,010,578
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.