- Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Dec 5, 2023 · IPR2023-00405 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Harris, the FBDIMM Standards, and Amidi; the Board did not reach the Spiers grounds.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“the combination of Harris and FBDIMM Standards and relies on the Declaration of Dr. Andrew Wolfe (Ex. 1003) in support. Pet. 14–40. For the reasons that follow, we are persuaded that the evidence, including Dr. Wolfe’s testimony, supports Petitioner’s showing and establishes by a preponderance of the evidence that these claims are unpatentable.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person of ordinary skill in the art “would have had an advanced degree in electrical or computer engineering, or a related field, and two years working or studying in the field of design or development of memory systems, or a bachelor’s degree in such engineering disciplines and at least three years working in the field.” Pet. 7–8 (citing Ex. 1003 ¶ 61). Petitioner contends that additional training can substitute for educational or research experience, and vice versa. Id. at 8. Petitioner asserts that such a hypothetical person would have been familiar with the JEDEC industry standards, and knowledgeable about the design and operation of standardized DRAM and SDRAM memory devices and memory modules and how they interacted with a memory controller and other parts of a computer system, including standard communication busses and protocols, such as PCI and SMBus busses and protocols. Id. Petitioner further contends that such “a hypothetical person would also have been familiar with the structure and operation of circuitry used to access and control computer memories, including sophisticated circuits such as ASICs, FPGAs, and CPLDs, and more low-level circuits such as tri-state buffers.” Id. Petitioner further asserts that such “a hypothetical person would further have been familiar with voltage supply requirements of such structures (e.g., memory modules, memory devices, memory controller, and associated access and control circuitry), including voltage conversion and voltage regulation circuitry.” Id. Patent Owner indicates “[f]or the purposes of this [Response], Patent Owner is applying the level of ordinary skill in the art proposed by Petitioner.” Resp. 2. The evidence that Petitioner presents mostly applies to the educational level and experience of workers in the field, but also touches upon other factors as well, including problems and solutions in the prior art and complexity of the technology. See Pet. 7–8. We find Petitioner’s proposal is consistent with the level of skill in the art reflected by the ’054 patent and the prior art of record, and, therefore, we adopt Petitioner’s proposed level of ordinary skill in the art, with the exception of the open-ended language “at least,” which introduces ambiguity and may encompass skill levels beyond ordinary.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“The District Court’s Claim Construction Order (Ex. 2032) issued after our Institution Decision (Paper 11). Although Petitioner argued in the District Court litigation that the claim preambles were not limiting, Petitioner does not appear to maintain that argument here following the District Court’s determination that the preambles are limiting. Ex. 2032, 35. Since the term is recited in both the preambles and bodies of these claims, there is evidence that the inventors of the ’054 patent intended the term to limit the claim, as the District Court determined. See Catalina Mktg. Int’l., Inc. v. Coolsavings,com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Bell Commc’ns Rsch., Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.”)).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Petitioner’s contention that “memory module” is not limited to “main memory modules . . . designed to connect to the primary memory controller.” See Reply 2. The ’054 patent states In certain embodiments, the device contains a high density Flash memory with a low density DRAM, wherein the DRAM is used as a data buffer for read/write operation. The Flash serves as the main memory. Ex. 1001, 11:3–6 (emphases added). This is the only mention of “main memory” in the ’054 patent. That the Flash memory serves as “main memory” in “certain embodiments” implies that there may be other embodiments in which this is not the case. Accordingly, we agree with Petitioner that the term “memory module” is not limited to “main memory modules . . . designed to connect to the primary memory controller.” We agree with Patent Owner that the “memory module” includes structure to connect with a “host system” including its memory controller. See, e.g., Ex. 1001, code (57), 12:52–59. The claims do not mention a “memory controller,” but they do mention that the “memory module” has an “interface” to connect with a “host system.” Ex. 1001, 38:20–25 (claim 1), 39:63–65 (claim 16), 41:6–8 (claim 24). That the “memory module” has structure for connecting to the host system’s memory controller may thus be implied from the claims. We agree with Petitioner that the District Court’s determination was that the preambles (presumably of claims 1, 4, 6, 11, 16 and 25) are limiting. Ex. 2032, 35. To the extent that the District Court’s determination construed “memory module” to include structure necessary to connect to a memory controller, our construction of “memory module” is consistent.” slip op. at 16
Patent outcomesUS 11,232,054 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,232,054 - Universal Electronics, Inc. / Gemstar Technology (Qinzhou) Co. Ltd. et al. v. ROKU, Inc.Some claims unpatentablePTAB · Oct 23, 2023 · IPR2022-00818 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–5, 8–10, and 14 are unpatentable over RadioShack; claim 11 was not shown unpatentable over Wouters and Verzulli because the combination did not disclose the claimed combining and installing steps.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“disseminated to the interested public, ‘public accessibility’ has been called the touch-stone in determining whether a reference constitutes a ‘printed publication’ . . . .” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is considered “publicly accessible” if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Id. at 1355–56 (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). Petitioner treats this requirement as having two aspects, namely (1) whether a person of ordinary skill could reasonably have found RemoteCentral.com and (2) whether such a skilled artisan could reasonably have found RadioShack on RemoteCentral.com. Reply 8–13; see also Tr. 33:25–34:8 (Patent Owner asserting that there are two aspects to the analysis on public accessibility: “The first is whether a [person of ordinary skill in the art] would have known to arrive at the website containing the prior art reference. The second one is . . . , [a]ssuming the [person of ordinary skill in the art] would have done so, would the [person of ordinary skill in the art], exercising reasonable diligence, have located the prior art reference on the site? And these are separate and distinct requirements, and if you fail one of them, the document is not publicly accessible.”).” slip op. at 27
- Strike new argumentNew argument consideredDecided for petitioner
“addressed squarely by the principles set forth in Hulu, which addresses the standards at the institution stage and during the trial for evaluating evidence proffered to show asserted art qualifies as a printed publication. Specifically, after a petitioner has presented “evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent,” such that trial is instituted, “some limited opportunities exist for the petitioner to present new evidence later.” Hulu at 13–14. These “limited opportunities” include “in a reply to the patent owner response,” provided that the additional evidence is “responsive to the prior briefing” and provided that the additional evidence does not require “completely reopen[ing] the record, by, for example, changing theories after filing a petition.” Id. at 14–15. Although Patent Owner contends that “[t]his is not an example of permissible rebuttal evidence, but rather a belated attempt to fill a gap in the evidence in the Petition,” we disagree. See Sur-reply 6. Rather, the 7 Patent Owner appears to refer incorrectly to Exhibit 1040 instead of Exhibit 1041 when identifying “articles allegedly referring to RemoteCentral.com.” See Sur-reply 5–6. progression within the instant proceeding comports well with the Hulu framework. During the preliminary proceeding, Petitioner came forth with “evidence sufficient to establish a reasonable likelihood that [RadioShack] was publicly accessible before the critical date of the challenged patent,” just as Hulu demands. Hulu at 13; Inst. Dec. 23 (“[W]e determine that Petitioner’s showing regarding public accessibility of RadioShack is sufficient under the standard we apply at this stage of the proceeding.”). Patent Owner challenges RadioShack’s status as a printed publication in its Response, just as Hulu contemplates. Hulu at 15; PO Resp. 28–41. And Petitioner submits additional evidence that replies to that challenge without changing its theory that RadioShack qualifies as a printed publication by virtue of its accessibility on the RemoteCentral.com web site and in light of date indicia on RadioShack itself.8 See Hulu at 15–16; Reply 7–13. Moreover, in determining that Petitioner’s additional evidence directed at RemoteCentral.com is properly considered, we are further mindful of the Federal Circuit’s endorsement that “the petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner.” Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1830–81 (Fed. 8 In its Reply, Petitioner also relies on evidence of publication of RadioShack on Radio Shack’s own public website and on “a third location,” hifi-remote.com. Reply 14. As we discuss below, we determine that the presence of RadioShack on RemoteCentral.com is sufficient to qualify RadioShack as a printed publication. We therefore do not reach the issue of whether presence on either the Radio Shack web site or on hifi-remote.com is an improper new theory raised by Petitioner in its Reply. See Tr. 8:13– 9:23 (Petitioner discussing whether reliance on hifi-remote.com presents a different theory than set forth in the Petition). Cir. 2018); see also Vidstream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020) (“The Board denied VidStream’s Motion to Exclude, holding that it was appropriate to permit Twitter to respond to VidStream’s challenge [to the status of Bradford as a printed publication] by providing additional evidence to establish the Bradford publication date. We conclude that the Board acted appropriately, for the Board permitted both sides to provide evidence concerning the reference date of the Bradford book, in pursuit of the correct answer.”). We accordingly give due weight to Petitioner’s additional evidence of RadioShack’s accessibility on the RemoteCentral.com web site.” slip op. at 25
- ExcludeMotion to exclude, deniedDenied
“1 Patent Owner objected to Petitioner’s demonstrative slides 45 and 68 as presenting a new argument that was not previously made with respect to challenged claims 2 and 10. Paper 27; see Paper 26 (Petitioner’s demonstratives), 45, 68. At the oral hearing, we reserved ruling on the objections. Tr. 5:23–6:3. Both slides reproduce the same portions of Exhibits 1002 and 1025, with the statement that “A press and hold for an auto-scan or brand-scan is admitted prior art.” Paper 26, 45, 68. As explained below, we do not reach the predicate position upon which the objections are based. See Tr. 5:8–11 (Petitioner stating that “this Board only needs to resolve this objection if it accepts Roku’s claim construction argument that the claims cover a press and hold of a single button, but that they do not cover pressing multiple buttons to present that argument in the alternative. So, if you reject that argument, you don’t even have to resolve the objection.”). We accordingly dismiss the objections as moot.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with this assessment, and the parties do not specifically advocate for one articulation over the other in this proceeding. See Pet. 8 (Petitioner asserting that “[t]he Challenged Claims are unpatentable under both proposed levels”); PO Resp. 5 (Patent Owner stating its “position that the challenged claims are unpatentable under either proposed level of ordinary skill”). We adopt Patent Owner’s proposed statement of the level of ordinary skill as advanced in the related ITC Investigation. But we note that we would reach the same ultimate conclusion that Petitioner shows, by a preponderance of the evidence, that all challenged claims are unpatentable were we to adopt Petitioner’s proposal instead.” slip op. at 12
Patent outcomesUS 8,378,875 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,378,875 - PTAB · Aug 2, 2023 · IPR2023-00455 · APJ Daniel J Galligan · IPR · Institution
The Board instituted inter partes review of claims 1–29 on all asserted grounds, finding a reasonable likelihood of success on the Perego and JESD79-2 obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution in view of the district court litigation. Prelim. Resp. 53–56. A Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)6 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation for all claims in this proceeding, which are all of the claims of the ’215 patent. Ex. 1093; Paper 8 at 1; Paper 9 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On this record, we are sufficiently persuaded by Petitioner’s argument that a person of ordinary skill in the art would have combined the teachings of Perego and JESD79-2. As Petitioner correctly points out (Pet. 32), Perego discloses using DDR2 memory devices. Ex. 1071, 10:56–59 (“Other memory devices may be implemented on module 400, for example, Double Data Rate 2 (DDR2) DRAM devices and Synchronous DRAM (SDRAM) devices.”). On this record, we find this teaching to use DDR2 sufficiently supports Petitioner’s rationale to combine Perego with JESD79-2, which is the JEDEC DDR2 SDRAM Specification. Ex. 1064, 1 (cover page); see also Prelim. Resp. 44 (parenthetical noting that “JESD79-2 is a specification for individual DDR2 SDRAMs”). As to Patent Owner’s argument that Rambus memories lack a chip select network (Prelim. Resp. 25–26), the reference on which Patent Owner relies discloses that chip select information is still used in the particular Rambus devices described. See Ex. 1069, 11 (“[I]n the Rambus bus organization, all addresses, commands, data, and chip-select information are sent on the same bus lines.”), 12 (“[T]he example system uses a total of nine (9) lines to carry all necessary information, including addresses, commands, chip-select information, and data.”). Thus, on this record, Patent Owner’s focus on the lack of a chip select network, which is not recited in the claims of the ’215 patent, appears misplaced. We address Patent Owner’s more specific arguments below in the discussion of individual claim recitations.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Claim 21 is method claim and recites similar structure in the preamble. Petitioner cites this claim language in support of its position that a rank can have just one memory device. Pet. 28 (citing Ex. 1001, 37:32–38 (portion of claim reproduced above)). On this record, we determine that the claim language supports Petitioner’s position. Claim 1 recites “at least one first memory integrated circuit in the first rank and at least one second memory integrated circuit in the second rank.” This language is met if there is one memory integrated circuit in each rank because “at least one” includes just one. On this record, we disagree with Patent Owner’s argument that this claim language “do[es] not define the term ‘rank’” but, rather, “provide[s] context that a claimed ‘buffer’ can be, but need not be, coupled to multiple memory devices in the rank.” See Prelim. Resp. 9–10. Claim 1 recites “a buffer coupled between the at least one first memory integrated circuit and the memory bus, and between the at least one second memory integrated circuit and the memory bus,” and it further recites “enabl[ing] communication of the first data burst between the at least one first memory integrated circuit and the memory controller through the buffer” and “enabl[ing] communication of the second data burst between the at least one second memory integrated circuit and the memory controller through the buffer.” If there is only one memory device in each rank, then the buffer will only be connected to the one memory device in each rank. If two memory devices are the “at least one first memory integrated circuit in the first rank” then the buffer would be “coupled between the [two memory devices] and the memory bus.”” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,858,215 - Crowdstrike, Inc v. Open Text Inc.InstitutedPTAB · Jul 21, 2023 · IPR2023-00289 · APJ Patrick M Boucher · IPR · Institution
The Board instituted IPR on claims 1–30 over the petition’s § 103 grounds, finding a reasonable likelihood that CrowdStrike would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“even if we institute trial, there has been no actual denial of a stay as contemplated by Fintiv to weigh this factor against exercising discretion to deny institution. See Fintiv at 6–7. Conversely, we recognize that Patent Owner cites certain routine (nonbinding) Board decisions that have weighed this factor in favor of discretionary denial, even in the absence of any stay motion. See Prelim. Resp. 5–6. While we have considered such decisions, we find them of limited relevance to the specific facts before us, as applied within Fintiv’s binding guidance. We treat this factor as neutral.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Ex. 1002, 633–634. Divorced from the context of the rejection the Examiner was reconsidering, namely over the combination of Dozortsev and Kester, this argument conceivably supports Patent Owner’s position. But within that context, the Examiner evidently found convincing that it would not have been obvious to modify Dozortsev to automate mask generation in light of Kester’s teachings. It is not apparent that the Examiner considered whether it would have been obvious to modify Kester to incorporate such automation, particularly in light of the teachings of an additional reference that was not before the Examiner. See id. at 802–803 (Examiner declining to provide specific reasons for allowance). That is, we agree with Petitioner that the challenges it advances over Kester and Honig are different in character from the combination of Dozortsev and Kester that the Examiner considered. See Pet. 6. We necessarily consider the Applicant’s argument against the backdrop of the Dozortsev-Kester rejection that was at issue during prosecution, not how that argument might be differently perceived if it had been made with respect to the Kester-Honig challenge presented by Petitioner. We conclude that substantially the same art or arguments were not previously presented to the Office, such that the first part of the Advanced Bionics framework is not satisfied. We accordingly do not reach the second part of that framework in our evaluation, and we decline to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition.” slip op. at 21
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“f. Summary For the reasons discussed above, we conclude that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Kester and Honig.” slip op. at 41
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). But we note that we would reach the same ultimate conclusion to institute inter partes review if we were to adopt Patent Owner’s proposal. See Ex. 2001 ¶ 65 (Dr. Medvidovic testifying that the “minor variations” in the parties’ proposals “would not alter [his] opinions”).” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,418,250 - Crowdstrike, Inc. v. Open Text Inc.InstitutedPTAB · Jun 15, 2023 · IPR2023-00124 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted inter partes review of claims 1–4, 7–10, 12, and 15–18 on all asserted grounds; Morris-based grounds met the institution threshold, while Capalik-based grounds did not.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution.” Fintiv at 9. The parties agree that, according to median time-to-trial statistics in the Western District of Texas, where the related litigation is pending, the expected trial date for the related litigation is mid-July 2024. Pet. 70; Prelim. Resp. 9. This is generally consistent with the currently scheduled trial date of August 19, 2024. See Ex. 2007, 9 (District Court Order Granting Third Amended Scheduling Order); Prelim. Resp. 9–10. Although Petitioner contends that the complexity of the related litigation is likely to delay the trial further, the currently scheduled date is already about two months later than the deadline for the Board to issue a final written decision. See Pet. 71. This time difference is sufficient for this factor to weigh against exercising discretion to deny institution, and we need not speculate whether a further trial delay in the related litigation is likely. We accordingly treat this factor as weighing against exercising our discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Under § 325(d), we apply a two-part analysis, first assessing whether the same or substantially the same art or arguments were previously presented to the Office, and, if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (Feb. 13, 2020) (precedential).” slip op. at 16
- BurdenInstitutedInstituted
“3. Summary In view of the foregoing, we determine that Petitioner has demonstrated a reasonable likelihood of showing that independent claims 1, 8, and 16 would have been obvious over Morris alone as well as over Petitioner’s proposed combination of Morris and van Oorschot. Claims 2–4, 9, 10, and 12 depend from claims 1 or 8. Having reviewed Petitioner’s arguments asserting that claims 2, 4, 9, 10, and 12 would have been obvious over Morris alone as well as Petitioner’s arguments asserting that claims 2– 4, 9, 10, and 12 would have been obvious over Morris in combination with van Oorschot, (see Pet. 25–30, 32–35), we also determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions as to these dependent claims.” slip op. at 39
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“On the record before us, at this stage of the proceeding, there does not appear to be any claim construction dispute. Accordingly, for purposes of this Decision, we conclude that no claim term requires express interpretation at this time to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,578,045 - Netflix, Inc. v. Robocast, Inc.Institution deniedPTAB · May 11, 2023 · IPR2023-00081 · APJ David C Mckone · IPR · Institution
The Board denied institution because Netflix had not shown a reasonable likelihood of proving claims 1, 2, 37, or 38 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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.” For the reasons explained below, we decline to institute an inter partes review of the ’451 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not see a substantial difference between the parties’ proposals. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). However, our Decision would be the same under Patent Owner’s proposal.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for patent owner
“we consider whether that construction was intended to encompass varying durations during the creating step or the displaying step. In its opinion, the Microsoft court observed that the defendants in that case argued that “before created,” and that “the ‘duration information’ is a parameter that the user can then interact with in order to vary the display of each resource.” Ex. 1014, 22. Patent Owner, the court continued, argued that “all that is required is for the user to maintain control over the actual presentation of the resource during the ‘displaying’ step, and that no duration information need be provided during the ‘creating a show structure of nodes’ step.” Id. at 22–23. The Microsoft court “agree[d] with [Patent Owner] that the user should be able to vary the duration of the content during show structure playback. This is the ‘interactive’ component of the claim.” Id. at 23; see also Prelim. Resp. 29 (arguing that this reasoning supports Patent Owner’s position that “the claim language expressly requires that the end user be able to ‘vary said duration’ for how long resource content currently ‘is being displayed’ to the user in ‘accordance with said show structure’ to which the resource belongs”). Here, the Microsoft court expressly states that the duration is varied during show structure playback, which is a clear reference to claim 1’s step of “displaying a content corresponding to each of said resources automatically in accordance with said show structure.” The Microsoft court “also finds that some duration information must be provided when the show structure of nodes is created,” that “‘parameter’ is a helpful concept for construction,” and that “the ‘duration information’ may be understood to be synonymous with a ‘parameter,’ as that timing information is the variable that will specify how long a particular content will be displayed.” Ex. 1014, 23. Thus, the Microsoft court construed claim 1 to require providing a variable duration parameter in the creating” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“As noted above, the Microsoft court construed “interactively variable duration information” to mean “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1014, 22. The construction itself suggests that the duration information is varied during display, because it is in the context of resources being displayed sequentially and “the viewer of the content can change the parameter.” As to Escobar, Petitioner contends that “[w]hen playing decision lists/timelines in the authoring tool using Button 174 (invoking subroutine E), the user is the viewer of the content.” Pet. 49 (citing Ex. 1004, 6:40–45). Thus, Petitioner appears to contend that, during the process of creating a show structure, the creator is a viewer if the creator can view the edited content corresponding to a node as the show structure is being created. Here, Petitioner would satisfy the “viewer” aspect of the Microsoft court’s construction by pointing to a creator viewing a piece of the show structure during the creating step, although Escobar does not teach that the creator can vary the duration of content while viewing it or that durations can be varied while a show structure (as opposed to a node being created) is being displayed in the displaying step, as discussed in more detail below.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,155,451 - Crowdstrike, Inc. v. Webroot Inc.InstitutedPTAB · May 5, 2023 · IPR2023-00126 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of claims 1–4, 7–8, 10–13, and 16–19 on all presented grounds; Morris-based challenges met the reasonable-likelihood threshold, while Capalik challenges did not.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, 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 Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. We accordingly institute an inter partes review of claims 1–4, 7–8, 10–13, and 16–19 of the ’224 patent on all presented challenges. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018) (“The agency cannot curate the claims at issue but must decide them all.”). B.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“7. Assessment As discussed above, the second, third, fourth, and fifth Fintiv factors weigh against exercising our discretion to deny institution; and the first and sixth factors are neutral. Given the parties’ relatively modest investment thus far in the related litigation and the likelihood that trial will occur in the related litigation several months after we reach a Final Written Decision in this proceeding, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny the Petition. B.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We apply a two-part analysis under § 325(d), first assessing whether the same or substantially the same art or arguments were previously presented to the Office, and if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (Feb. 13, 2020) (precedential).” slip op. at 16
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We have reviewed the portions of the district court complaint that Patent Owner cites. Although Patent Owner characterizes those passages as “providing evidence” of a long-felt need, they cite only to the ’224 patent itself. See Ex. 2015, 72–82. We do not discern evidence with the kind of specificity for objective indicia of nonobviousness, notably including evidence of a nexus with the merits of the challenged claims, that would cause us to fault Petitioner for failing to address the evidence in its Petition. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33, 31–35 (PTAB Jan. 24, 2020). We accordingly decline to deny the Petition on this basis alone. The parties will have an opportunity during the trial to develop Patent Owner’s evidence of objective indicia of nonobviousness so that it may be fully considered. D.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,257,224 - Google LLC v. Defenders Of The American Dream, LLCInstitution deniedPTAB · May 18, 2022 · IPR2022-00112 · APJ Aaron W Moore · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–17 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because Petitioner has not sufficiently shown that Silva discloses “an image recognition task [that] comprises an instruction to select one image corresponding to the selected image category from the matrix of non-overlapping randomly selected images,” we find that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that claims 1–17 would have been obvious in view of Silva, either alone or in combination with Osborn or Osborn and Pinkas.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science or a related field with coursework relating to computer science, plus two years’ academic and/or industry experience in computer security and/or artificial intelligence” and that “[m]ore education could substitute for experience, and vice versa.” Pet. 6 (citing Ex. 1003 ¶¶ 34–39). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, and because we find it generally consistent with the disclosures of the ’578 patent and the prior art, we adopt it for purposes of this analysis. C.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Construction Petitioner asserts that it interprets the claims “using the standard used in civil actions under 35 U.S.C. § 282(b), in accordance with the ordinary and customary meaning as understood by a POSA and the patent’s prosecution history,” but does not identify any constructions. Pet. 6. Patent Owner does not address claim construction in the Preliminary Response. Under these circumstances, we find that we need not engage in formal claim construction, although we do address some claim language in the course of the obviousness analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). D.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“Moreover, the prosecution history removes any doubt about whether these claims are limited to an instruction to select only one image. As explained above, the applicant changed “an instruction to select an image” to “an instruction to select one image” in response to a rejection in which the Examiner was relying on the Pratte reference for the instruction. See Ex. 1002, 404, 427. The applicant then argued that Pratte failed to teach the “image recognition task” because “Pratte does not instruct a user to select ‘one image,’ but instead ‘instructs a user to select all images that are associated with animals.’” Id. at 435. We conclude that the amendment and associated argument evidence a clear and unmistakable narrowing of the claims to systems with instructions to select one image corresponding to the category, and excluding systems, like Pratte, in which the user is instructed to select all images associated with a category. See Genuine Enabling Tech. LLC v. Nintendo Co., Ltd., 29 F.4th 1365, 1374 (Fed. Cir. 2022) (explaining that “for a statement during prosecution to qualify as a disavowal of claim scope, it must be ‘so clear as to show reasonable clarity and deliberateness’ and ‘so unmistakable as to be unambiguous evidence of disclaimer’”) (quoting Omega Engr., Inc, v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003)); see, e.g., SpeedTrack, Inc. v. Amazon.com, 998 F.3d 1373, 1379 (Fed. Cir. 2021) (limiting claims where “the applicants argued that [the prior art] had a ‘hierarchical’ relationship between fields and values that fell outside the scope of the amended claims”). The disclaimer arises even though the applicant made other arguments in the same response. See SpeedTrack, 998 F.3d at 1380. Silva, like Pratte, instructs the user to select all images that fall into a category––see Ex. 1005, 1325 (“The user is then asked to identify, from each column available in the test, which image relates to the label.”)––and thus does not meet the claim language requiring an instruction to select “one” image. Notably, this problem cannot be cured by mapping the claimed “matrix” to a single column of Silva, because the claims also require that the “matrix” comprise at least one of each of the three categories of images, and Silva has three columns that are a mix of images known to be in the category and known to not be in the category, and a fourth column that consists of entirely unknown images. See Ex. 1005, 1325 (“One special column will contain all those images whose relation to the current label we want to verify, while all the others contain the remaining images whose relation to the label the system is confident about, i.e. they certainly do or do not relate to the label.”).” slip op. at 25
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,621,578 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Jan 18, 2022 · IPR2021-01113 · APJ Thu A Dang · IPR · Institution
The Board denied institution of IPR challenging claims 14–16 and 20–25 under § 325(d), finding the same or substantially the same arguments were previously presented and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Under § 325(d), in “determining whether to institute [an inter partes review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Here, Petitioner has the burden to show that the Examiner erred in determining that Chu ’330 incorporated by reference the ’886 provisional. Advanced Bionics, Paper 6 at 8.” slip op. at 17
§ 102 anticipationDiscretionary denial - PTAB · Dec 8, 2021 · IPR2021-00608 · APJ Thu A Dang · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving institution denied under § 325(d) because the same or substantially the same arguments were previously presented and examiner error was not shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in its petition. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Advanced Bionics, we exercised our discretion under 35 U.S.C. § 325(d) and determined not to institute inter partes review. Dec. 7−26 (citing Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte Gmbh, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)). As to Part 1 of the Advanced Bionics framework, we determined that the same or substantially the same arguments were presented previously to the Office. Id. at 10−13. Under Part 2 of the Advanced Bionics framework, we determined that Petitioner failed to show that the Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the claims in the ’654 patent. Id. at 14−26.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s arguments are new arguments raised for the first time in its Rehearing Request. Petitioner acknowledges that “NRG and Hollmer were not cited in the Petition.” Req. Reh’g 10. Nevertheless, Petitioner alleges that it “could not have anticipated the Patent Owner’s mischaracterization of the Droplets decision, nor the Board’s reliance on this mischaracterization,” and that Petitioner was not authorized to file a reply to the Patent Owner Preliminary Response. Id.; see also id. at 2−3, fn.1. Petitioner’s new arguments in connection with Hollmer and NRG are improper. As we discussed above, Patent Owner did not mischaracterize and we did not misapprehend Droplets. It was not necessary to authorize Petitioner to file a reply, as we were capable of determining whether Patent Owner mischaracterizes Droplets. As discussed above, Petitioner fails to recognize that the language relied upon by Patent Owner in Droplets is consistent with 37 C.F.R. § 1.57 and MPEP § 608.01(p). Although Petitioner relies on MPEP § 608.01(p) in its Petition, Petitioner now in its Rehearing Request for the first time suggests that we should ignore MPEP § 608.01(p) and the case law cited in MPEP § 608.01(p). Pet. 11–12; Req. Reh’g 6−7. A request for rehearing is not an opportunity to submit new arguments, after the decision has noted the deficiencies in the petitioner’s original analysis. 37 C.F.R. § 42.71(d). It is Petitioner’s burden to identify specifically all matters we misapprehended or overlooked in our Decision to Institute. We could not have misapprehended or overlooked the new arguments that were not presented in the record until after the Decision.” slip op. at 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Contrary to Petitioner’s contentions, section 1.57 of Title 37 of the Code of Federal Regulations is not a “statute,” but a regulation that became effective on September 21, 2004. See 69 Fed. Reg. 56,482. The ’882 application, which incorporated Chu ’886 by reference, was filed on September 8, 1998, and issued as Chu ’330 on February 5, 2002. Ex. 1005, codes (21), (22), (45), (60), 6:1–7. The ’654 patent, which incorporated the ’882 application by reference, is a reissue of Application No. 09/312,199 (“the ’199 application”) filed on May 14, 1999, now U.S. Patent No. 6,634,777 (“the ’777 patent”), issued on November 4, 2003. Ex. 1001, codes (63), (64); 5:63–67. Both the ’882 application (issued as Chu ’330) and the ’199 application (reissued as the ’654 patent) were filed and issued as patents prior to the effective date, September 21, 2004, of 37 C.F.R. § 1.57. Petitioner does not explain why the applicant should have complied with 37 C.F.R. § 1.57, which did not exist at the time of filing of those applications or issuance of those patents that incorporated by reference Chu ’886 and the ’882 application. Pet. 7–8, 10−17; Req. Reh’g 1−12. We decline to apply 37 C.F.R. § 1.57 retroactively to the incorporation by reference statements submitted in the ’882 application and the ’199 application.” slip op. at 6
§ 102 anticipationDiscretionary denial
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.