- Masimo Corporation v. Apple Inc.Institution deniedPTAB · Sep 18, 2023 · IPR2023-00728 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because Masimo did not show a reasonable likelihood that the claimed design was obvious over Paulke, Yuen with Mendelson and Bushnell, or Fong with Bushnell.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“respective constructions of the ’936 patent, i.e., that the claimed design incorporates two arc-shaped portions residing on a rear face of an electronic device, we observe that one point of disagreement centers on the proposed presence of an “outer continuous circle” as is advanced by Patent Owner. See Prelim. Resp. 4. Although we agree with Petitioner that the “sidewall” of the arcs does not appear to be a claimed feature, careful review of the figures of the ’936 patent, particularly Figure 4, does appear to bear out the conclusion that the arc-shaped portions do incorporate a continuous circle.2 Accordingly, we adopt the claim construction that is advanced by Patent Owner. See, e.g., supra § I.C.2. We note, however, that even were we to adopt Petitioner’s claim construction, the ultimate outcome of this proceeding would be the same. That is so because, for reasons discussed below, we conclude that Patent Owner has identified sufficient deficiencies in Petitioner’s proposed grounds that preclude institution of inter partes review irrespective of any claim construction.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In assessing the parties’ views as to level of skill of a designer of ordinary skill in the art, we conclude that they are effectively the same. Indeed, the parties do not identify any material difference between the parties’ proposed assessments. Nevertheless, for clarity and completeness, we adopt Petitioner’s proposed assessment. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION For the reasons set forth above, we conclude that Petitioner has not shown a reasonable likelihood that it would prevail with respect to the claimed design of the ’936 patent. IV. ORDER It is ORDERED that Petitioner’s request for an inter partes review of the claim of the ’936 patent is denied and no trial is instituted.” slip op. at 38
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“(see, e.g., Prelim. Resp. 21–24), the arc-shaped portions of the ’936 design are thinner than those of Paulke’s Figure 1G, and the spacing of the arc-shaped portions in the ’936 patent is noticeably smaller than in Paulke. That enlarged spacing in Paulke eliminates any appearance of an outer continuous circle formed by the outer ring of the arc-shaped portions, which is present in the ’936 design. In that respect, we find credible Patent Owner’s argument that “the Paulke arc-shaped components have the appearance of two separate features rather than the unified circular appearance of arcs of the ’936 patent. Prelim. Resp. 23 (citing Ex. 2001 ¶¶ 51–52). Additionally, the orientation of the arc-shaped portions in Paulke is rotated 90 degrees from that of the ’936 patent.5 In our view, there is a plausible argument to be made that the above-noted differences establish sufficient visual dissimilarities to remove Paulke from being considered a proper Rosen reference. Nevertheless, even were we to assume that Paulke is a proper Rosen reference, for the reasons discussed below, we do not find persuasive that a designer of ordinary skill in the art would have made Petitioner’s proposed modifications to Paulke’s biosensor module, so as to arrive at the design of the ’936 patent.” slip op. at 20
Claim construction§ 103 obviousness - PTAB · Sep 1, 2023 · IPR2023-00658 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on the sole claim and all petitioned grounds, finding a reasonable likelihood of unpatentability, including anticipation and obviousness over Iannaccone.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claim. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claim.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not, on this record, point to specific evidence of copying or quality. Id. And, Patent Owner’s contention that the claimed design resulted from “substantial and sophisticated design expertise,” is similarly unsupported by corroborating evidence at this point. We have before us at this point in the proceeding mainly the testimony of Petitioner’s declarant, Mr. Hatch, who testifies that without a bachelor’s degree in furniture design, “a little more than two years of practical design experience . . . is appropriate given the relatively simple nature of the design at issue, which involves little more than two boards forming a tabletop.” Ex. 1002 ¶¶ 34–35. Based on the present record, we adopt the Petitioner’s articulation of a designer of ordinary skill, which is supported by the testimony of Mr. Hatch. As of yet, Patent Owner has not provided any evidence to rebut Petitioner’s or Mr. Hatch’s assertions. We also note that, under the present record, our analysis of this case would be the same under either party’s definition. The parties are free to address this issue at trial if they so wish.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“At this stage of the proceeding, we agree with Patent Owner that a verbal construction is not necessary to describe the overall ornamental nature of the ’012 design as Figures 1–23 clearly show the claimed table top and that the best description of the ornamental features of the ’012 design comes from the drawings themselves. For example, Figures 1–23 clearly depict a table top having two rectangular portions/planks having different widths.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“analysis discussed above, we recognize in the test for design patent obviousness articulated in Durling and Rosen that a primary reference must be found, “the design characteristics of which are basically the same as the claimed design.” Durling, 101 F.3d at 103 (quoting Rosen, 673 F.2d at 391). And, that we must both “(1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates ‘basically the same’ visual impression.” High Point Design, 730 F.3d 1301, 1311–12 (Fed. Cir. 2013) (quoting Durling, 101 F.3d at 103). As to part (1), in our claim construction we have determined that the correct visual impression created by the patent design as a whole is “that the solid lines illustrating the design in Figures 1–23 of the ’012 patent provide an accurate representation and understanding of the claimed table top and that a verbal construction is not necessary.” Section II.D.; see also In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996) (The obviousness “inquiry focuses on the visual impression of the claimed design as a whole and not on selected individual features.”). That said, we recognize that some description of the claimed design may be helpful.” slip op. at 31
Claim construction§ 102 anticipation§ 103 obviousness - PTAB · Jul 10, 2023 · IPR2023-00438 · APJ Josiah C Cocks · IPR · Institution
The Board instituted inter partes review of claims 1–5, 7, 9, 12–14, and 17–19 on all petitioned grounds, finding a reasonable likelihood of success based on Amano and related combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“including Ceci, applied by the Petitioner as a part of its proposed grounds are cumulative of subject matter previously considered by the Examiner, we do not find them availing. In that regard, Patent Owner attempts to equate some selected teachings of prior art that previously were presented during prosecution of the ’072 application (e.g., Lubell, Henry,14 and Fabrizio15) with new prior art relied on in the Petition, and proceeds to argue that the new prior art teachings are inadequate to account for certain features of the challenged claims. See Prelim. Resp. 18–29. In effect, Patent Owner’s arguments, although presented under the guise of a request for discretionary denial, essentially amount to direct challenges to the merits of Petitioner’s proposed grounds. That is not a scenario that warrants dispositive exercise of discretion, which would foreclose actual evaluation of the merits of the proposed grounds. Rather, in our view, the situation suggests that the appropriate course of conduct is to consider whether Petitioner’s proposed grounds are persuasive, or not, in conveying a reasonable likelihood that the challenged claims are unpatentable. Moreover, as discussed below, we conclude that, with respect to at least some of the proposed grounds, including grounds based on prior art that was not presented during prosecution of the ’072 application (e.g., Amano), Petitioner actually has shown a reasonable likelihood of success that the challenged claims are” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A Person of Ordinary Skill in the art (“POSITA”) for the technology of the ’413 patent would have had (1) a bachelor’s degree in engineering, computer science, industrial design, biomechanics, or a related field, and (2) at least two years of experience researching, developing, designing, and/or testing fitness or physiological sensors, wearable devices, physiological or biomechanical devices, remotely-controlled systems or interfaces, network-based applications and/or equipment, or the equivalent experience or education. Pet. 18 (citing Ex. 1009 ¶ 41). Patent Owner indicates that “[f]or purposes of this Preliminary Response only, Nike applies lululemon’s proposed level of skill in the art.” Prelim. Resp. 14. For purposes of this Decision, we adopt Petitioner’s proposal of the level of ordinary skill in the art as reasonable and consistent with the prior art. See also 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 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose claim construction for any term. See Pet. 17. Patent Owner also indicates that no claim construction is necessary at this time. Prelim. Resp. 15. We conclude that, for purposes of deciding whether to institute an inter partes review, it is unnecessary to make explicit the meaning of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs, Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,620,413 - PTAB · Jul 10, 2023 · IPR2023-00424 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR on claims 1–10 and 12–19 on all petition grounds, finding a reasonable likelihood of success based on Acres and related combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“necessary to address the meaning of the term “data” that appears in each of independent claims 1 and 12. Although Patent Owner represents in the “Claim Construction” section of its Preliminary Response that it is not necessary to construe any claim terms at this time (see Prelim. Resp. 13), Patent Owner does present a construction of the term “data” within the body of its Response. See id. at 17. In that respect, Patent Owner points to a dictionary definition of “data” as constituting “[f]actual information, such as that derived from observation, experimentation, or calculation, especially that which is used for processing and/or further analysis.” Id. (citing Ex. 2002, 4). Based on that definition, Patent Owner contends that “the ordinary and customary meaning of ‘data’ is factual information, from which decisions and subsequent actions can be made.” Id. at 18. Patent Owner offers that meaning in an attempt to distinguish over a “command” action performed in the prior art. Id. at 17 (citing Ex. 2002, 3 (“defining ‘command’ as ‘[o]ne or more signals which actuate a device’ or ‘[a]n instruction that causes a computer action”)).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At the most elementary level, the Bug 601 takes control of compatible exercise machine parameters that determine exertion level. When the Bug 601 is used with a compatible treadmill 150, the treadmill speed is controlled by the Bug’s own processor 420. If the Bug 601 senses, based upon the exerciser’s heart rate, that exertion level should increase because the exerciser’s heart rate is below the target, the Bug 601 sends a command to the treadmill 150 telling it to increase speed by a specific amount. *** Alternatively, the Bug 601 can control both speed and incline to match the fitness goals of the exerciser. The Bug 601 can be configured to control any number of machine parameters. Ex. 1002 ¶¶ 89, 96. Thus, Acres discloses that based upon an exerciser’s heart rate, Bug 601 operates to send commands to treadmill 150 to control operational parameters of the treadmill, such as its speed and incline. Patent Owner is of the view that such commands do not constitute the required “first set of data” in claims 1 and 12 because those commands allegedly do not constitute “data.” See Prelim. Resp. 17–20. Patent Owner bases that view on its construction of the term “data” as being “factual information” that does not include Acres’s commands. See id. As discussed above in our Claim Construction section (§ II.C), however, on the record before us, it is not apparent why commands sent by Acres’s Bug that include information for controlling various operational parameters of a treadmill do not constitute data, even if data is something that is “factual information.” In other words, at this time, we question why the skilled artisan would have regarded the informational content of those commands being something other than “factual information” so as be excluded from being “data.”” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Thus, Acres discloses that based upon an exerciser’s heart rate, Bug 601 operates to send commands to treadmill 150 to control operational parameters of the treadmill, such as its speed and incline. Patent Owner is of the view that such commands do not constitute the required “first set of data” in claims 1 and 12 because those commands allegedly do not constitute “data.” See Prelim. Resp. 17–20. Patent Owner bases that view on its construction of the term “data” as being “factual information” that does not include Acres’s commands. See id. As discussed above in our Claim Construction section (§ II.C), however, on the record before us, it is not apparent why commands sent by Acres’s Bug that include information for controlling various operational parameters of a treadmill do not constitute data, even if data is something that is “factual information.” In other words, at this time, we question why the skilled artisan would have regarded the informational content of those commands being something other than “factual information” so as be excluded from being “data.” With respect to limitation [1C], Patent Owner contends that even if Acres’s commands are regarded as disclosing the “first set of data” required by limitation 1B, Petitioner has not accounted for the “first set of activity data” of limitation 1C under a theory that Petitioner has impermissibly used a single element in the prior art to account for two different claim limitations. See Prelim. Resp. 21–22. To wit, Patent Owner proposes that to the extent those commands are a “first set of data” (limitation [1B]) then that data is based on a user’s heart rate, yet the recited “first set of activity data” (limitation [1C]) also is based on a user’s heart rate, so Petitioner is said to improperly rely on the same heart rate data to satisfy both of the data limitations. Patent Owner’s proposal, however, is misplaced. There is no dispute that Acres’s heart rate data is activity data per limitation [1C]. The informational content of Acres’s commands as satisfying limitation [1B] is reasonably understood to be something different than heart rate data. As something different than heart rate data, those commands are not the same prior art element. Thus, this premise under which Patent Owner challenges Petitioner’s ground based on Acres is inapt. Even if there were some prohibition in some situations in which a prior art element cannot constitute multiple limitations of a claim, that is not the circumstance present here. Patent Owner does not present any further challenges to the grounds proposed by Petitioner based on Acres, including the ground involving both Acres and Pyles. We have considered Petitioner’s proposed grounds based on Acres alongside Patent Owner’s challenges to those grounds. On the record before us, we conclude that Petitioner has established adequately a reasonable likelihood of success in prevailing in its challenges to claims 1– 10 and 12–19 based on those grounds.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,923,225 - PTAB · Jun 30, 2023 · IPR2023-00349 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR on claims 1–5, 7, 11, and 13 on all petitioned grounds, finding a reasonable likelihood that claims 1–5, 7, 11, and 13 are obvious over Sirmans and Kobayashi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the” slip op. at 2
- BurdenDecided for patent owner
“3 goals in 3 consecutive days”) that on their face do not appear to explicitly or inherently disclose the features of the subject limitation, and we discern no explanation as to how or why the cited disclosure in Hoffman allegedly discloses such limitation (or whether Petitioner is relying on a particular claim construction to give effect to its argument). Likewise, Petitioner does not cite to any expert testimony or other evidence showing how or why the cited statements in Hoffman allegedly disclose such limitation. Indeed, Petitioner appears to place the onus on Patent Owner—and the Board—to ascertain how or why the cited statements (i.e., paragraph 198) allegedly discloses limitation 1[d]. The burden of proof here lies with Petitioner, not Patent Owner, and we do not ourselves create and adopt unpatentability arguments on behalf of Petitioner as to whether or how Hoffman might disclose the subject limitation. See Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify with particularity the evidence that supports the grounds for the challenge to each claim.” (quoting Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016))); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (“[W]e find no support for the PTO’s position that the Board is free to adopt arguments on behalf of petitioners that could have been, but were not, raised by the petitioner during an IPR.”); DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“activity time periods into Sirmans’ protocol criteria,” and “[i]n view of the combined teachings of Sirmans and Kobayashi, it would [have been] easy to implement determining whether the received athletic activity data exceeds the first activity goal for a predetermined number of consecutive activity time periods.” Pet. 62–63 (citing Ex. 1006 ¶¶ 124–128). Based on the present record, we find Petitioner’s arguments persuasive.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Patent Owner argues Petitioner’s challenge based on the combination of Sirmans and Kobayashi is “rife with hindsight reasoning.” Prelim. Resp. 31–33. “Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1313–14 (CCPA 1971). Here, Patent Owner does not direct us to any knowledge gleaned only from applicant’s disclosure that Petitioner allegedly relies upon to support its obviousness rationale. See Prelim. Resp. 31–33.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,259,615 - PTAB · Jun 30, 2023 · IPR2023-00348 · APJ Stephen E Belisle · IPR · Institution
Instituted IPR of claims 1, 5–7, and 12 on all petition grounds after finding a reasonable likelihood that claims 1 and 5–7 are anticipated by Lofi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). 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. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’930 patent is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we institute an inter partes review as to all Challenged Claims of the ’930 patent on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not present an alternative definition at this stage of the proceeding. See Prelim. Resp. 13 (“For the purposes of this Preliminary Response only, [Patent Owner] applies [Petitioner’s] proposed level of skill in the art.”). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’930 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Fischer (Ex. 1005 ¶ 44).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. 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))). Petitioner submits “no constructions are necessary to resolve any disputes identified in this Petition” (Pet. 14), and “[Patent Owner] agrees,” contending that “[a]ll terms and phrases in the ’930 patent have their ordinary and customary meanings, which are readily apparent, and no further construction is required” (Prelim. Resp. 14). In determining whether Petitioner has demonstrated a reasonable likelihood of establishing unpatentability of at least one challenged claim in this case, we need not and do not construe expressly any claim terms. See Nidec, 868 F.3d at 1017.4 4 Although Patent Owner contends that it is not providing a construction of any claim term, we are cognizant that Patent Owner presents what amounts to an interpretation of the claim term “first athletic movement” within the body of its Preliminary Response in alleging deficiencies in the prior art vis- à-vis the claims of the ’930 patent. See, e.g., Prelim. Resp. 16–18.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“interpretation of a “first athletic movement” in claim 1 to mean a “single athletic movement” is belied by the Specification and lacks sufficient support in the record before us. Indeed, the ’930 patent explicitly defines an “athletic movement” to “include[] movements [plural] relating to fitness, exercise, flexibility, including movements that may be part of one or more single and multiple participant athletic competitions, exercise routines, and/or combinations thereof” (Ex. 1001, 4:7–11 (emphases added)), and explains that “[t]he athletic movement may comprise a plurality of drills configured to test a plurality of fitness attributes and/or a plurality of athleticism attributes of the user” (id. at code (57) (emphases added)). The ’930 patent explains that “[a] combinatory score, a component sub-score, or values utilized in determining a score and/or sub-score . . . may be calculated or derived from the user’s performance during [ ] physical movements with predefined criteria, such as predefined drills or tests [both plural].” Ex. 1001, 22:43–48 (emphases added). The ’930 patent also explains that “system 100 may prompt user 124 to perform one or more exercises that are part of a drill,” where “[a] drill may include a predetermined number of exercises (e.g., pushups, squats, lunges, etc.) where system 100 prompts the user to perform a number of repetitions of each exercise.” Id. at 22:54–59 (emphases added). In addition, the ’930 patent states, “[c]alculation of the combinatory score and/or the sub-scores may be based upon combining a plurality of drill scores.” Id. at 24:63–65 (emphasis added). Patent Owner does not address any of these explicit disclosures in the ’930 patent in proffering, in conclusory form, that “a first athletic movement” means a “single” athletic movement or exercise. Based on the foregoing disclosures in the ’930 patent, and contrary to Patent Owner’s arguments, we preliminarily find that a “first athletic movement” does not exclude multiple “movements,” exercises, or drills, performed in response to “multiple” instructions (or a set of instructions directed to such multiple movements, exercises, or drills). See Ex. 1001, 26:57–60 (Dependent Claim 6: “[W]herein the first instructions and the second instructions include a plurality of drills configured to test a plurality of fitness attributes of the user and a plurality of athleticism attributes of the user.” (emphases added)). In other words, we preliminarily find that multiple “movements,” exercises, or drills may constitute a “first athletic movement,” and that activity data representing such multiple movements, exercises, or drills collectively may constitute “first activity data.” See Ex. 1005 ¶ 106 (“It should be noted that there is nothing in the ’930 patent limiting the athletic activity or athletic movement to a single drill or test.”), ¶ 65 (“The ’930 patent makes it clear that it is NOT necessary to generate a single combined number or score, and that ‘In certain embodiments, the combinatory score may be represented by the two individual sub-scores.’” (quoting Ex. 1001, 22:34–36) (emphasis altered)).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,188,930 - Reboot Labs LLC v. Lpi, Inc.Institution deniedPTAB · May 18, 2023 · IPR2023-00134 · APJ Cynthia L Murphy · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were anticipated or obvious over the asserted prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R § 42.4(a). Petitioner bears the burden of demonstrating this reasonable likelihood. 35 U.S.C. § 314(a). slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“A. water heating device The challenged claims all require a water heating device. Ex. 1001, 12:28, 13:1, 13:48, 14:31. A person of ordinary skill would understand that a “water heating device” is a device that actually heats water, as opposed to, for example, a device that merely interacts with already heated water. This claim construction aligns with the disclosure of the ’161 Patent. See, e.g., Ex. 1001, 6:39–45.6 Consequently, the claim term “water heating device” would not be met by a device that merely interacts with already hot water.” slip op. at 6
- Skill levelDecided for patent owner
“V. LEVEL OF ORDINARY SKILL IN THE ART Petitioner’s prior art arguments all hinge, one way or another, on what would have been known, understood, envisioned, or obvious to a person of ordinary skill in the art. See, e.g., Pet. 4, 12, 27, 28, 29, 31, 32, 33. Yet Petitioner does not discuss, much less provide us with a proposed definition of, the level of ordinary skill in the art. Petitioner’s omission of any discussion whatsoever about the level of ordinary skill in the art, alone, makes us question the likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Although the prior art can be used to establish the level of ordinary skill, here, Petitioner does not give any indication that its position is based upon a level of ordinary skill established in this manner. This, at best, introduces conjecture into Petitioner’s prior art arguments because, as indicated above, they all hinge on what would have been known, understood, envisioned, or obvious to a person of ordinary skill in the art.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“In the circuit diagrammed in Petitioner’s annotated drawing, water is conveyed through heating device 46, through cross-feed line 80, into cold tub chamber 14, out of cold tub chamber 14, through cooling device 67, into tub cold chamber 14, through weir 19, into hot water tub 16, out of hot water tub 16, and back to heating device 46. Thus, in Petitioner’s diagrammed circuit, water is conveyed to both the heating device 46 and the cooling device 67 only by passing through tub chambers 14/16 therebetween. As discussed above in Section IV, the specific coupled-in-series arrangement required by the challenged claims is not met by an arrangement in which water is conveyed to both the heating device and the cooling device only by passing through the tub therebetween. Consequently, Hargrove does not disclose the specific coupled-in-series arrangement required by the challenged claims. Thus, Petitioner has not shown a reasonable likelihood that it would prevail in showing that independent claims 1 and 15 are anticipated by Hargrove.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,712,161 - PTAB · May 17, 2023 · IPR2023-00147 · APJ Josiah C Cocks · IPR · Institution
The Board instituted inter partes review of claims 8–23 on all grounds in the Petition, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner presents the following assessment as to the level of skill in the art: As Mr. Zatkovich explains, for purposes of the ’792 Patent, a POSITA[8] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, credit card and smartcard payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. 7 At this stage, neither party presents any objective indicia of non-obviousness. 8 Person of ordinary skill in the art. Pet. 15 (citing (Ex. 1002 ¶¶ 101–103); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“To the extent “transaction controller” is limiting, Petitioner contends the following: As Mr. Zatkovich explains a POSITA would have understood, based for example on his or her knowledge and based on reading feature explanations such as the above, “transaction controller” as used in claims 8-23 with reference to such description of feature would include: (1) a mobile communication device” and (2) a processor (corresponding to processing chip 210 in the disclosure), that comprises a data channel. Pet. 13. (citing Ex. 1002 ¶ 94).9 Petitioner further contends that “a POSITA would understand that [‘transaction controller’] means ‘a mobile user interface device and a processor that comprises a data channel being adapted to wirelessly communication transaction data between said processor and a third party terminal.” Id. (citing Ex. 1002 ¶¶ 90, 95). For purposes of this Decision, we adopt Petitioner’s proposal as to the meaning of “transaction controller.”” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“4. Remaining claim terms We conclude that, for purposes of deciding whether to institute an inter partes review, it is unnecessary to make explicit the meaning of any other claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 constructioncites Phillips · KSR · GrahamPatents in suitUS 7,110,792 - PTAB · May 17, 2023 · IPR2023-00146 · APJ Josiah C Cocks · IPR · Institution
The Board instituted review of claims 1–7 and 24–31 on all petition grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the record before us, and having not yet heard from Patent Owner, we determine that Petitioner, for purposes of instituting an inter partes review, has adequately accounted for all the features required by claims 1–7 and 24–31. See Pet. 27–73. III. CONCLUSION Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As Mr. Zatkovich explains, for purposes of the ’792 Patent, a POSITA[7] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, credit card and smartcard payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 15 (citing (Ex. 1002 ¶¶ 101–103); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“and 24. Petitioner contends that, to the extent “smartlink module” is limiting, a person of ordinary skill in the art would understand that it means “a device that includes (1) a processor, (2) a wireless data channel to wirelessly communicate transaction data between said processor and a third party terminal, and (3) a second data channel electronically coupled to a mobile communication device.” Pet. 12 (citing Ex. 1002 ¶¶ 69–70).8 Petitioner also contends that such meaning is consistent with the disclosure of the ’792 patent. Id. at 12–13. For purposes of this Decision, we adopt Petitioner’s proposal as to the meaning of “smartlink module.” Petition also contends that a person of ordinary skill in the art “would understand the ‘module’ [in dependent claims 2–7 and 25–31] to be referring to the ‘smartlink module’ [in their respective independent claims].” Pet. 13 (citing Ex. 1002 ¶¶ 68, 78). We also accept that understanding.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. Remaining claim terms We conclude that, for purposes of deciding whether to institute an inter partes review, it is unnecessary to make explicit the meaning of any other claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,792 - ROKU, Inc.Institution deniedPTAB · May 5, 2023 · IPR2022-01552 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of IPR challenging claims 17–21, 25–35, 59–69, 85–89, and 93–99 because the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Ex. 2011, 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential)). Roku’s stipulation, however, falls far short of a Sotera-type stipulation that would bar Roku from pursuing any grounds in the parallel district court proceeding that could have reasonably been raised before the Board. Thus, while Roku’s stipulation would prevent some overlap between this proceeding and the parallel district court proceeding, the scope of the stipulation does not rise to the level contemplated in the Fintiv Memo. Thus, although we find that the fourth Fintiv factor weighs somewhat against discretionary denial of institution, this does not end our analysis because Roku has declined to submit a Sotera-type stipulation.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“§ 42.4(a), we may only institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see also 37 C.F.R. § 42.108(c) (2022). However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“In particular, we find it a close issue whether Ozawa discloses a “portable device” as recited in unchallenged independent claims 1, 39, and 73, which is also part of the challenged dependent claims. In claims 1 and 39, the term “portable device” is introduced in the preamble and appears throughout the claims. See Ex. 1101, 32:46–33:30, 36:32–37:11. In claim 73, a “portable device” is recited as an element of the claimed system. See id. at 39:44–40:20. In its Petition, Roku assumes, for its arguments, that the claim preambles, including the term “portable,” are limiting. See Pet. 24, 27–28. In its Preliminary Response, IOENGINE argues that “[t]he term ‘portable device’ is limiting because it provides antecedent basis for 11 instances in the body of claim 1,” and because the specification specifically focused on portability as an important feature of the invention. Prelim. Resp. 11–13. We agree with IOENGINE that the claim preambles are limiting at least to the extent that “portable” is a necessary feature of the portable device recited in the claims. We also point out that in the parallel district court litigation, the court specifically held that the preambles of claims 1, 39, and 73 are limiting. See Ex. 2008, 29–31. We agree with the district court’s analysis.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“In light of IOENGINE’s preliminary arguments, we find the issue of whether Ozawa discloses a “portable device” to be a close issue. The 9 IOENGINE erroneously identifies the Preliminary Infringement Contentions as Exhibit 1116 rather than Exhibit 1118. evidence does not plainly support Roku’s position at this stage, and the question would need to be further developed at trial. Because the “portable device” limitation is part of all challenged claims, Roku would need to prevail on this issue to prevail on any claim at trial. Thus, we determine that Roku has not, at this stage, presented a “compelling, meritorious challenge[]” to any claim of the ’584 patent. Ex. 2011, 4. Accordingly, we find that the sixth Fintiv factor does not weigh against discretionary denial.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,972,584
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.