• Unified Patents, LLC v. Rosen Technologies LLCInstituted
  PTAB · Mar 23, 2023 · IPR2022-01402 · APJ Jason W Melvin · IPR · Institution

  The Board instituted IPR on claims 1, 3, 4, 14, and 16–20, finding a reasonable likelihood of prevailing on obviousness over Geiwitz and, for claims 19–20, Geiwitz and Cardio Manual.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “which Patent Owner asserts the ’318 patent, but that litigation does not involve Petitioner. Ex. 2002 (infringement contentions from Rosen Technologies LLC v. Lennox International Inc., Case No. 3:22-cv-00732 (N.D. Tex.)). As Fintiv notes, the Board generally disfavors discretionary denial when litigation did not involve the petitioner, unless “the issues are the same as, or substantially similar to those already or about to be litigated, or other circumstances weigh against redoing the work of another tribunal.” Fintiv, IPR2020-00019, Paper 11, 13–14. We consider the Fintiv factors. Id. at 6.” slip op. at 7

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

    “B. REAL PARTY IN INTEREST Patent Owner asserts that Petitioner fails to name Lennox and Ecobee, the litigation parties, as real parties in interest. Prelim. Resp. 26–27. Because no time bar would apply to either allegedly unnamed real party in interest (see Prelim. Reply 1), we decline to address Patent Owner’s assertions at this stage. See SharkNinja Operating, LLC v. iRobot Corp., IPR2020-00734, Paper 11, 18 (Oct. 6, 2020) (precedential).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. LEVEL OF SKILL IN THE ART Petitioner asserts skilled artisans “would have had at least a Bachelor’s degree in Electrical Engineering or a similar degree and at least two years of professional experience,” and would have been “familiar with the circuitry and operation of programmable, touchscreen thermostats having liquid crystal displays.” Pet. 7 (citing Ex. 1003 ¶ 48). Patent Owner does not dispute that definition, and offers that skilled artisans “would have had a bachelor’s degree in electrical engineering or a related field, and at least two years of experience in working with HVAC systems or thermostat systems.” Prelim. Resp. 5. We perceive no distinction between how the two definitions might affect our analysis. We adopt Petitioner’s definition, as it is supported by expert testimony.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “First, the claim language requires that the control program establish on the liquid crystal display both “a representation of a first virtual button” and “a first legend indicative of a first control function of said thermostat.” Ex. 1001, 13:28–39 (claim 1), 15:1–9 (claim 16), 16:18–26 (claim 19). The claims do not require that the legend is part of the button, or any other specific relationship between the legend and button. Thus, the claim language does not support the construction Patent Owner seeks. Second, the Summary of the Invention states that “an image representative of a first virtual button may be shown on the touch screen display with graphics (alphanumeric characters and/or icons) on or closely associated with the first virtual button.” Id. at 3:53–56. By using a disjunctive, “or,” the Specification establishes that the legend (e.g., 4 Although Patent Owner seeks construction of “a first legend indicative of a first control function,” its proposed construction only addresses “legend,” while maintaining the other claim language. Prelim. Resp. 5–9. We address “legend” in the context of the other claim language and therefore need not address the full phrase. alphanumeric characters) need not be located on the button to which it corresponds. Accordingly, we decline to adopt Patent Owner’s asserted construction at this stage. No other aspect of the challenged claims requires construction for purposes of institution. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 7,156,318
• Logan Outdoor Products, LLC, D/B/A Camp Chef v. Lifetime Products, Inc.Institution denied
  PTAB · Mar 22, 2023 · IPR2022-01467 · APJ Robert L Kinder · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable under the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “Based on the record before us, Petitioner has not shown sufficiently how Dahle’s distinct embodiments would have been combined to teach each limitation of claims 1, 10, and 15. First, Petitioner has not established sufficiently that insert 26, which is capable of burning charcoal or other burnable elements, discloses the claimed “wood pellet heat source.” Ex. 1004 ¶¶ 34, 42. Dahle’s insert 26 is designed to hold charcoal or similar burnable elements, and Petitioner does not explain how the insert discloses a wood pellet heat source. Dr. Stevick testifies that “[p]ellet grills are the types of grill that integrate the use of wood smoking in place of gas burners or charcoal to cook food.” Ex. 1003 ¶ 58 (emphasis added). Dr. Stevick explains that pellet grills may utilize a pellet reservoir that feeds pellets to an auger, which then transports them to a pellet burner, also referred to as a fire pot. Id. ¶ 62; see also Ex. 1001, 2:51–53 (“The wood pellet burner may include a cylindrical structure configured to receive wood pellets from the wood pellet reservoir via an auger.”). But none of this explains why Petitioner believes that Dahle’s insert 26 (depicted below in Figure 3) is a wood pellet burner.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner disagrees with the Petitioner’s statements regarding a person of ordinary skill in the art, but does not provide a proposed alternative. See Prelim. Resp. 14. Patent Owner further notes that the disagreement does not have any bearing on its contentions. Id. The level of ordinary skill in the art can be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)

    “First, Petitioner has not established sufficiently that insert 26, which is capable of burning charcoal or other burnable elements, discloses the claimed “wood pellet heat source.” Ex. 1004 ¶¶ 34, 42. Dahle’s insert 26 is designed to hold charcoal or similar burnable elements, and Petitioner does not explain how the insert discloses a wood pellet heat source. Dr. Stevick testifies that “[p]ellet grills are the types of grill that integrate the use of wood smoking in place of gas burners or charcoal to cook food.” Ex. 1003 ¶ 58 (emphasis added). Dr. Stevick explains that pellet grills may utilize a pellet reservoir that feeds pellets to an auger, which then transports them to a pellet burner, also referred to as a fire pot. Id. ¶ 62; see also Ex. 1001, 2:51–53 (“The wood pellet burner may include a cylindrical structure configured to receive wood pellets from the wood pellet reservoir via an auger.”). But none of this explains why Petitioner believes that Dahle’s insert 26 (depicted below in Figure 3) is a wood pellet burner.” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found

    “Petitioner first observes that both references are directed to dual-fuel grilling systems that utilize both gas burners and wood pellet burners. Pet. 93. Even presuming this to be true, it does not provide a rational basis for modifying Sauerwein as proposed on its own; it is merely an observation that the references are analogous art. The mere fact that two references may be analogous art, however, is not adequate to demonstrate motivation to combine, even at this stage of the proceeding. See Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10–11 (PTAB Oct. 16, 2018) (Decision Denying Institution) (informative) (“Demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim.”). Petitioner next states that Dahle teaches that dual-fuel source grills can be configured for different purposes. Pet. 93–94. Although we generally agree with this statement, it does not explain why a person of ordinary skill in the art would have considered it obvious to add a burner or shorten Sauerwein’s cooking surface and also move its wood pellet heat source directly below the gas heat source.” slip op. at 30

  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,292,531
• Revcontent, LLC v. Integrated Advertising Labs, LLCInstitution denied
  PTAB · Mar 22, 2023 · IPR2022-01511 · APJ Ken B Barrett · IPR · Institution

  Institution was denied for claims 1–9 because the Petition did not show a reasonable likelihood of prevailing on either asserted obviousness ground.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’121 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Patent Owner has the better claim construction position. The “non-” in “non-sponsored posts” indicates that the phrase means “not” or “other than” “sponsored posts.” See Ex. 3001 (https://www.merriam-webster.com/ dictionary/non- (accessed March 21, 2023) (defining “non-” as “not: other than: reverse of: absence of”)). In terms of Petitioner’s proposed construction for “sponsored posts,” “non-sponsored posts” are content not from an advertiser. Construing the phrases in terms of the content source rather than whether it is “regular” content, as Petitioner implies, is consistent with the Specification’s description of Figure 6. See Ex. 1001, 13:44–55. The Specification distinguishes post types based on source—posts by members of the forum and press release posts from the advertisers. See id. On this record and for purposes of this decision, we determine that “non-sponsored posts” means content not from an advertiser.” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Petitioner’s contentions are based in large part on the assertion that “[Koeppel’s] provider content represents the ‘non-sponsored posts,’ e.g., the regular content provided on the site.” Id. at 35 (citing Ex. 1003 ¶¶ 125– 126). As discussed above in the claim construction section, we do not adopt Petitioner’s implied claim construction position, and construe “non-sponsored posts” as content not from an advertiser, rather than simply regular content provided on the site. Both Koeppel references describe the “provider” as one that markets goods and services. See, e.g., Ex. 1005 (Koeppel), 2:34–36 (“Providers associate the users ‘browsing’ these Web pages as potential consumers for the products and services they provide.”); Ex. 1006 (Koeppel-II), 9:46–47 (“The provider governing the Web server determines the types of content it wishes to market.”); see also Prelim. Resp. 26–27 (noting the Petition at page 35, in quoting Koeppel, utilizes ellipses to omit the explanation that the “content selected by a provider” “[m]ay represent alternate products or renderings of existing products or services offered by the provider” (Ex. 1005, 8:41–45)). Figure 4A is consistent with this understanding by depicting Capital One credit card marketing information in the boxes labeled 410, 420, and 425. See Ex. 1006, 9:60–65 (Koeppel-II describing elements 410, 420, and 425 as offers for credit cards offered by “the provider”). Thus, the provider content in Figure 4A—that which Petitioner characterizes as “regular content”—is marketing content, and Petitioner has not explained adequately how that is not content from an advertiser, i.e., “non-sponsored posts.” Petitioner’s contention that elements 420 and 425 are sponsored posts and element 410 is a non-sponsored post also is based on the discussion in Koeppel-II of third party advertising fees. See Pet. 40 (citing Ex. 1006, 22:7–12; Ex. 1003 ¶¶ 144–147); see also id. at 36 (addressing the preamble). Koeppel-II utilizes windows 420 and 425 in Figure 4A as examples of different ad formats for determining how much to charge third party advertisers. Ex. 1006, 22:5–14 (“[The] fee may be altered based on whether the third party content was fully in-view or partially in-view. . . . Assume for purposes of this example that windows 420 and 425 are advertisement content provided by a third party entity 180.”). Koeppel-II is not distinguishing third party ads and non-sponsored content, as Petitioner implies. Pet. 36–37, 39–40; cf. id. at 35 (contending that “Koeppel discloses that ‘sponsored posts,’ or information from an advertiser, is included with the non-sponsored posts” but only identifying a sponsored post (in the form of a third party banner ad), and not identifying a non-sponsored post). Rather, Koeppel-II is distinguishing the amount of content viewable in the two windows for fee-setting purposes. Ex. 1006, 22:8–9 (“Window 425 is in partial view, while window 420 is in full view.”). Even if the Koeppel references were deemed to disclose third party advertisements inserted alongside Capital One’s “regular” marketing content, the pre-existing nature of that “regular” marketing content does not convert it into non-sponsored posts. We determine that Petitioner has not adequately explained how Koeppel, Koeppel-II, or the combination thereof discloses or suggests displaying a sponsored post among non-sponsored posts on a web page. Accordingly, Petitioner has not demonstrated a reasonable likelihood in” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “by Google and were filed within months of each other, and contends that a person of ordinary skill in the art “reviewing Haveliwala would have naturally looked to other work done by Google engineers, such as Bharat, for further guidance and insight as to the work Google was doing around personalized Web advertising.” Pet. 76 (citing Ex. 1003 ¶ 259). Petitioner’s reasoning is too generalized. The existence of a common assignee or that a person of ordinary skill in the art might look to another reference in the same broadly characterized field does not provide adequate reasoning as to why such a person would combine the specific relied-on teachings of the two references so as to arrive at the claimed subject matter. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine elements in the way the claimed new invention does.”).” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,147,121
• Unified Patents, LLC v. Mcom IP, LLCAll claims unpatentable
  PTAB · Feb 8, 2023 · IPR2022-00055 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1, 3–7, 9–13, 15, 16, and 18–20 are unpatentable as obvious over the four combinations of prior art listed in the decision.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art at the time of the invention “would have had at least (i) a Bachelor of Science in Computer Science, Computer Engineering, Information Systems, or the equivalent, and (ii) approximately two years of experience with data/content selection and transmission-related fields.” Pet. 14–15 (citing Jestice Decl. ¶¶ 31–32). In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating that it “appears consistent with the record at th[at] stage of the proceeding, including the prior art.” Dec. Inst. 12. In the Response, Patent Owner also adopts Petitioner’s proposed level. See PO Resp. 11. We maintain the definition of the level of ordinary skill in the art adopted at institution.” slip op. at 8

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

    “Petitioner states that, “[f]or purposes of this Petition, no specific claim construction (beyond plain and ordinary meaning) is necessary.” Pet. 15. Patent Owner responds that the terms of the challenged claims “are clear on their face.” PO Resp. 6 (citing Landers Decl. ¶¶ 21–22). Based on the complete record, we do not discern a need to construe explicitly any claim terms because doing so would not change the result of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We do, however, address certain claim construction issues in the discussion of elements 1.A and 1.I below.” slip op. at 9

  • Expert testimonyPetitioner expert creditedOther

    “In the cited testimony, Mr. Jestice explains why the system of Lawlor would be “inoperable” without “at least one computer system configured with at least one control console” at member banks 64 and bank 74. See Jestice Decl. ¶ 87 (“[One of ordinary skill in the art] would have understood that with at least one computer system configured with at least one control console, as without one neither banks nor the operator of Lawlor’s system would have any access to the Lawlor’s system and, thus, it would be inoperable. After all, if the transaction cannot be processed and the advertisement cannot be loaded into Lawlor’s system, the system will not be able to operate as described.”). We find this assertion supported by the record. For example, we are persuaded by Petitioner’s position that it would be illogical for a bank to not have a computer and control console at the location of the bank itself to input necessary data for its operations. See Pet. Reply 6 (“It is nonsensical that banking institutions would not be able to have access to its own customer data to perform its basic functions, and would instead be required to share a control console at a common server.”). Further, as noted by Petitioner (see Pet. Reply 6), the testimony of Mr.” slip op. at 19

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

    “Petitioner discusses why the proposed combination of Lawlor, Bouve, De Leo, and Looney discloses each limitation and discusses why one of ordinary skill in the art at the time of the invention would have had reason to combine the relied-upon aspects of Lawlor, Bouve, De Leo, and Looney as proposed. See Pet. 15–16, 24–49; Jestice Decl. ¶¶ 79–83, 104–194. The record evidence, as presented, supports Petitioner’s position as to the additional limitations in independent claim 1. Patent Owner does not present arguments addressing these limitations. We find, based on the complete record, that Petitioner has demonstrated by a preponderance of the evidence that the proposed combination of Lawlor, Bouve, De Leo, and Looney discloses the remaining limitations in claim 1.12 We also determine that Petitioner has adequately explained why one of ordinary skill in the art would have had reason to combine the relied-upon aspects of Lawlor, Bouve, De Leo, and Looney as proposed and that there would have been a reasonable expectation of success.” slip op. at 28

  Patent outcomesUS 8,862,508 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,862,508
• Med-El Elektromedizinische Geräte Ges.M.B.H. v. Advanced Bionics AGAll claims unpatentable
  PTAB · Feb 3, 2023 · IPR2021-00044 · APJ Eric C Jeschke · IPR · Remand

  Claims 1–24 are unpatentable under §103 based on AAPA, Petersen, and Zilberman, and on other grounds shown in the decision.

  RulingsRemand decision

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

    “Petitioner responds that (1) the phrase “closed case” should be construed as a “case that does not currently permit user passage or entry” and that (2) the term “permanently” need not be construed, but if it is, it means “in such a manner that one would not expect it to be removed in the normal course of use.” First Pet. Reply 5 (with emphasis to show differences from Patent Owner’s positions); Second Pet. Reply 6–7 (same except without “user” in (1)). For the reasons below, the record more strongly supports Petitioner’s construction of “closed case” and Patent Owner’s proposed construction of “permanently.”” slip op. at 23

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Resp. 41–42; First Pet. Reply 20. Dr. Young’s cited testimony does not remedy these deficiencies. See First Young Decl. ¶¶ 110–112, cited at First PO Resp. 41–43. Accordingly, without any nexus, we find Patent Owner’s arguments unconvincing. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1372 (Fed. Cir. 2019), cert. denied, 141 S. Ct. 373 (2020).” slip op. at 65

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part

    “motion to consolidate the two proceedings, each of which challenges claims 1–24 of the ’746 patent. See First IPR, Paper 25; Second IPR, Paper 17. Over Patent Owner’s oppositions (First IPR, Paper 26; Second IPR, Paper 18), we granted in part the motions to consolidate, maintaining the two proceedings as administratively separate proceedings. First IPR, Paper 30; Second IPR, Paper 23. In the motions to consolidate, Petitioner also requested a good-cause extension of the one-year statutory deadline for the final written decision in the First IPR, which was granted. First IPR, Papers 28 & 29.” slip op. at 3

  Patent outcomesUS 8,155,746 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,155,746
• Med-El Elektromedizinische Geräte Ges.M.B.H. v. Advanced Bionics AGAll claims unpatentable
  PTAB · Feb 3, 2023 · IPR2020-01016 · APJ Eric C Jeschke · IPR · Remand

  Claims 1–24 are unpatentable under § 103(a), based on the AAPA–Petersen–Zilberman and Crosby–Petersen grounds.

  RulingsRemand decision

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

    “Petitioner responds that (1) the phrase “closed case” should be construed as a “case that does not currently permit user passage or entry” and that (2) the term “permanently” need not be construed, but if it is, it means “in such a manner that one would not expect it to be removed in the normal course of use.” First Pet. Reply 5 (with emphasis to show differences from Patent Owner’s positions); Second Pet. Reply 6–7 (same except without “user” in (1)). For the reasons below, the record more strongly supports Petitioner’s construction of “closed case” and Patent Owner’s proposed construction of “permanently.”” slip op. at 23

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Resp. 41–42; First Pet. Reply 20. Dr. Young’s cited testimony does not remedy these deficiencies. See First Young Decl. ¶¶ 110–112, cited at First PO Resp. 41–43. Accordingly, without any nexus, we find Patent Owner’s arguments unconvincing. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1372 (Fed. Cir. 2019), cert. denied, 141 S. Ct. 373 (2020).” slip op. at 65

  • RemandFwd all claims unpatentableUnpatentable

    “challenges claims 1–24 of U.S. Patent No. 8,155,746 B2 (Ex. 10012, “the ’746 patent”), which is assigned to Patent Owner, Advanced Bionics AG. We have jurisdiction under 35 U.S.C. § 6, and we issue this Final Written Decision on Remand under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons below, we conclude that Petitioner has proven, by a preponderance of the evidence, the unpatentability of all of the challenged claims.” slip op. at 2

  Patent outcomesUS 8,155,746 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,155,746
• Flowco Production Solutions, LLC v. Well Master CorporationInstitution denied
  PTAB · Jan 20, 2023 · IPR2022-01385 · APJ Eric C Jeschke · IPR · Institution

  The Board denied institution because Flowco did not show a reasonable likelihood of proving claims 3–17 obvious over Victor and Yerian, with or without Davis.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of inter partes review. See 37 C.F.R. § 42.108(b) (“At any time prior to a decision on institution of inter partes review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute inter partes review.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, 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.” Id. (internal quotation marks and citation omitted).” slip op. at 8

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

    “We need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “may address the same or similar problems is not adequate to demonstrate motivation to combine, even at this stage of the proceeding. See PO Resp. 22–24; see also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (concluding that prior art padlocks were analogous art because they “were clearly directed toward the same problem the inventor was trying to solve in the” patent at issue); Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10–11 (PTAB Oct. 16, 2018) (Decision Denying Institution) (informative) (“Demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim.”). Even so, Patent Owner provides persuasive argument and evidence through its expert, Mr. Cosby, that Victor and Yerian address very different problems and solve these problems in very different ways. See Prelim. Resp. 23–27 (citing Ex. 2002 ¶¶ 56–100). Petitioner’s conclusory attorney arguments do not address these differences and how they would impact the motivation to combine the teachings of Victor and Yerian, despite these differences.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,395,865
• Flowco Production Solutions, LLC v. Well Master CorporationInstitution denied
  PTAB · Jan 20, 2023 · IPR2022-01384 · APJ Eric C Jeschke · IPR · Institution

  The Board denied institution on claims 1–16 because the Petition did not show a reasonable likelihood of proving obviousness over Victor and Yerian, with or without Davis.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of inter partes review. See 37 C.F.R. § 42.108(b) (“At any time prior to a decision on institution of inter partes review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute inter partes review.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art at the time of the alleged invention “would have [had] at least a bachelor’s degree in physics or an appropriate engineering discipline, as well as at least three years of experience in designing well plungers.” Pet. 7. Patent Owner “does not dispute” Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the current record, including the prior art. See Prelim. Resp. 11; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 8

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

    “Petitioner “proposes that all claim terms be given their ordinary and customary meanings and that no explicit constructions are necessary.” Pet. 8. Patent Owner does not dispute that position. See Prelim. Resp. 11. We need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “As noted by Patent Owner, however, the mere fact that two references may address the same or similar problems is not adequate to demonstrate motivation to combine, even at this stage of the proceeding. See PO Resp. 21–23; see also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (concluding that prior art padlocks were analogous art because they “were clearly directed toward the same problem the inventor was trying to solve in the” patent at issue); Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10–11 (PTAB Oct. 16, 2018) (Decision Denying Institution) (informative) (“Demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim.”). Even so, Patent Owner provides persuasive argument and evidence through its expert, Mr. Cosby, that Victor and Yerian address very different problems and solve these problems in very different ways. See Prelim. Resp. 23–27 (citing Ex. 2002 ¶¶ 56–100). Petitioner’s conclusory attorney arguments do not address these differences and how they would impact the motivation to combine the teachings of Victor and Yerian, despite these differences.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,793,728
• Carlisle Fluid Technologies, Inc. v. Akurate Dynamics, LLCAll claims unpatentable
  PTAB · Jan 11, 2023 · IPR2021-01256 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1–5, 11, and 17–20 as obvious over Kogelbauer; claims 8–10 and 13–16 over Kogelbauer and Cline; claim 7 over Kogelbauer and Kropfield; claims 6 and 12 over Kogelbauer and Kukesh.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner asserts that a person of ordinary skill in the art at the relevant time would have had “at least a bachelor’s degree in chemical engineering or a similar discipline, and three years of experience in the research, design, or implementation of systems for controlling the feed rates of multiple components.” Pet. 27 (citing Ex. 1003 ¶ 70). Dr. Rockstraw repeats verbatim the identical one-sentence conclusion stated by Petitioner. Ex. 1003 ¶ 70. Dr. Rockstraw does not provide any facts, data, or analysis to support his opinion. His opinion on the level of ordinary skill is entitled to no probative weight. 37 C.F.R. § 42.65 (a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Merely repeating a conclusory argument from the Petition in the declaration testimony of a proposed expert does not give that argument enhanced probative value. Patent Owner does not propose a level of ordinary skill, nor does Patent Owner comment on Petitioner’s proposed ordinary level of skill. The asserted prior art reflects knowledge of chemistry, chemical engineering, mechanical engineering (such as pumps and sensors), electrical engineering (signal communication), and computer science (such as computer processors). Accordingly, consistent with the uncontested level of ordinary skill adopted in our Decision to Institute this proceeding, and based on the asserted prior art in the record before us, we determine a person of ordinary skill in the relevant technology at the relevant time would have had a bachelor’s degree in one or more of the areas of chemistry, chemical engineering, mechanical engineering, electrical engineering, or computer science, and two years of relevant experience. A recipient of other academic degrees may qualify as a person of ordinary skill if they have taken coursework or have experience in the pertinent technology. Additional education, such as an advanced degree, could offset less work experience; additional work experience could offset less education or coursework.” slip op. at 19

  • Skill levelSkill level board ownDecided for patent owner

    “Petitioner asserts that a person of ordinary skill in the art at the relevant time would have had “at least a bachelor’s degree in chemical engineering or a similar discipline, and three years of experience in the research, design, or implementation of systems for controlling the feed rates of multiple components.” Pet. 27 (citing Ex. 1003 ¶ 70). Dr. Rockstraw repeats verbatim the identical one-sentence conclusion stated by Petitioner. Ex. 1003 ¶ 70. Dr. Rockstraw does not provide any facts, data, or analysis to support his opinion. His opinion on the level of ordinary skill is entitled to no probative weight. 37 C.F.R. § 42.65 (a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Merely repeating a conclusory argument from the Petition in the declaration testimony of a proposed expert does not give that argument enhanced probative value. Patent Owner does not propose a level of ordinary skill, nor does Patent Owner comment on Petitioner’s proposed ordinary level of skill. The asserted prior art reflects knowledge of chemistry, chemical engineering, mechanical engineering (such as pumps and sensors), electrical engineering (signal communication), and computer science (such as computer processors). Accordingly, consistent with the uncontested level of ordinary skill adopted in our Decision to Institute this proceeding, and based on the asserted prior art in the record before us, we determine a person of ordinary skill in the relevant technology at the relevant time would have had a bachelor’s degree in one or more of the areas of chemistry, chemical engineering, mechanical engineering, electrical engineering, or computer science, and two years of relevant experience. A recipient of other academic degrees may qualify as a person of ordinary skill if they have taken coursework or have experience in the pertinent technology. Additional education, such as an advanced degree, could offset less work experience; additional work experience could offset less education or coursework.” slip op. at 19

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Patent Owner does not propose any claim constructions. Given the lack of dispute on this record, we need not construe the claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claims are construed only to the extent necessary to resolve a dispute).” slip op. at 21

  • BurdenFwd all claims unpatentableUnpatentable

    “3. Conclusion for Claims 1 and 20 Based on Kogelbauer We agree with and adopt Petitioner’s uncontested assertions and Dr. Rockstraw’s uncontested opinions concerning claims 1 and 20. Our analysis above applies to the apparatus in independent claim 1, and the method in independent claim 20. Based on the evidence and analysis above, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1 and 20 would have been obvious based on Kogelbauer.” slip op. at 33

  Patent outcomesUS 10,159,996 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,159,996
• Unified Patents, LLC v. Ak Meeting IP LLCInstituted
  PTAB · Jan 9, 2023 · IPR2022-01142 · APJ Ryan H Flax · IPR · Institution

  Instituted IPR of claims 1–14 on all asserted grounds: anticipation by or obviousness over Roy or Chang, and obviousness over Simonoff and Naef.

  RulingsInstitution decision

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

    “institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions, we conclude Petitioner demonstrates a reasonable likelihood it would prevail in showing that claims of the ’124 patent are unpatentable under the presented grounds. Therefore, we institute inter partes review of all challenged claims (1–14) under the grounds raised in the Petition, pursuant to 35 U.S.C. § 314. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 7 (citing Ex. 1003 ¶¶ 28–30).9 Patent Owner states that it “adopt[s] Petitioner’s proposed level of ordinary skill in the art because it comports with the technology and claims of the ’124 Patent as well as the asserted prior art.” Prelim. Resp. 5. Patent Owner adds that “[t]he expert witnesses of the parties are persons of (at least) ordinary skill in the art of the ’124 Patent and its claims.” Id. We accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’124 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[]” evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). B.” slip op. at 17

  • Expert testimonyPetitioner expert creditedOther

    “In re Merck for this point). And, further, when considering obviousness, the prior art must be considered for all of its teachings, including unpreferred embodiments. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). With this precedent in mind, we restate that Simonoff’s disclosure appears to fully include Naef’s disclosure. Ex. 1006, 3:24–29. Further, both references apparently identify the existence and general functionality of central-server systems for remote computer collaboration where the server is in charge of updating all networked computers’ displays, even if Naef’s disclosed invention is not such a system, but instead puts a client computer in control. See generally Ex. 1006; Ex. 1007. Finally, Petitioner’s witness, Dr. Terveen, testifies that the person of ordinary skill in the art would have had good reason to “improve Simonoff’s similar collaboration system” by having its server return update/annotation messages back to the source client along with the other clients during its “multi-casting,” as suggested by Naef, because this would “avoid[] conflicts between user inputs and [would] allow[] the source client to see the edits as the other clients would see them. Ex. 1003 ¶73 (citing Ex. 1015, 12:56–67; Ex. 1008, 45; Ex. 1006, 24:22–27). At this stage of the proceedings, we credit Dr. Terveen’s testimony and find Petitioner’s position reasonable. We are not persuaded by Patent Owner’s arguments or evidence at this stage (we are not entirely sure what qualifies Mr. Sunatori’s as a reliable witness at this point) so as to dissuade us from instituting trial on this ground.” slip op. at 52

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

    “Owner’s positions on claim construction, both identifying that claim construction is unnecessary and then proposing the above-indicated claim construction. Prelim. Reply 1. Petitioner argues that neither the disputed claim language itself nor the Specification supports Patent Owner’s proposed claim construction because the claims simply state “that the output message includes information defining the content to be shared, not the input message itself or a copy of it.” Id. Petitioner cites two portions of the ’124 patent’s written description that contradict Patent Owner’s narrow definition of the claim language––the first indicating that input messages and output messages may be in different formats and have different data and that the output messages can be generated once the input messages are read (Ex. 1001, 14:27–33), and the second indicating that the output messages could combine multiple input messages, and that output messages represent input messages that themselves represent computer input such as a mouse drag (id.at 33:1–9). We agree with Petitioner that the record does not support narrowing the meaning of the disputed claim language as argued by Patent Owner and, based on the present record, we do not expressly construe this claim language.” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,963,124

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.