- PTAB · May 8, 2024 · IPR2024-00080 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–21 and all asserted grounds after finding a reasonable likelihood that claim 1 would be obvious over Schneider.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of Inter Partes Review Because we are persuaded that Petitioner has shown a reasonable likelihood of prevailing in showing that the subject matter of claim 1 would have been obvious over Schneider, we institute inter partes review of all claims and all challenges raised in the Petition. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2020) (35 U.S.C. § 314 “simply requires [the Director] to decide whether the petitioner is likely to succeed on ‘at least 1’ claim. Once that single claim threshold is satisfied, it doesn’t matter whether the petitioner is likely to prevail on any additional claims; the Director need not even consider any other claim before instituting review.”); 37 C.F.R. § 42.108(a).” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“35 U.S.C. § 314(a) to deny institution in deference to the two co-pending district court infringement litigations. See Pet. 4. In support, each Petitioner entity (Dropbox, Inc. and Microsoft Corporation) “stipulates that, if the Board institutes IPR, it will not pursue in its parallel district court proceeding the grounds raised, or which reasonably could have been raised, in” the Petition. Id. Petitioner asserts this stipulation means “the PTAB will not discretionarily deny institution in view of parallel district court litigation.” Id. (quoting USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)7 at 3, 7). Patent Owner does not address discretionary denial in its Preliminary Response. We do not exercise the authority to discretionarily deny institution.” slip op. at 36
- Skill levelSkill level petitioner adoptedDecided for petitioner
“held a bachelor’s degree in computer science, electrical engineering, computer engineering, or a closely related field, and one or more years of experience in the design and development of file management, restoration, and archival systems.” Pet. 13–14 (citing Ex. 1004 ¶¶ 29–32). Petitioner further asserts “[m]ore education, e.g., a Master’s or PhD could compensate for a lack of work experience and vice versa.” Id. Patent Owner does not dispute this assessment. See Prelim. Resp. 9 (“Patent Owner does not offer a competing definition at this time, because even under Petitioner’s proposed definition the Petition fails to present a reasonable likelihood of success.”). For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’850 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes any claim terms for construction. Petitioner states it “appl[ies] the plain and ordinary meaning of all claim terms.” Pet. 14. Patent Owner states it “does not believe any claim constructions are necessary based on the arguments presented by Patent Owner at this time.” Prelim. Resp. 26. We conclude, at this stage, that it is not necessary to address the construction of any claim terms or phrases. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,585,850 - PTAB · May 8, 2024 · IPR2024-00079 · APJ George R Hoskins · IPR · Institution
Instituted IPR of claims 1–6, 8–20, and 23–31 on both asserted obviousness grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have reviewed the preliminary record, and we conclude Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions at least for claim 1. First, we summarize the disclosures of Kenley and Long, then we consider the parties’ opposing contentions concerning the challenged claims.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“We conclude Petitioner has explained with supporting evidence how the combination of Kenley and Long would have motivated a person of ordinary skill in the art to practice the invention of claim 1 with a reasonable expectation of success and without hindsight, sufficiently to justify institution of review. In particular, on this record, we conclude a person of ordinary skill in the art would have been motivated to modify Kenley’s process of backing up files, by triggering the creation of an archive file whenever a file is modified using three successive backup memories per the teachings of Long. See Pet. 13, 18. Dr. Maier testifies in support that this would have been done to improve the reliability of Kenley’s file archiving process, by avoiding the potential loss of data created in between Kenley’s archiving of files at predetermined time intervals. See Pet. 13–15, 18; Ex. 1003 ¶¶ 49–50, 52–53, 58. Patent Owner does not materially dispute the increased reliability benefits achieved by modifying Kenley’s file-based backup process in this fashion, in the present preliminary record. Instead, Patent Owner pre-supposes that Petitioner’s case for obviousness is premised on the bodily incorporation of Long’s sector-based archiving process into Kenley’s file-based archiving process. However, that is not what Petitioner proposes, as summarized in detail above. Moreover, the test for obviousness is not whether the features of one reference (such as Long) may be bodily incorporated into the structure or process of the other reference (such as Kenley), but rather is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Further, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” and “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420–21. On the present record, we discern no reason why a person of ordinary skill in the art would have been deterred from modifying Kenley’s file archiving process to be triggered whenever a file is modified and to use three successive backup memories per the teachings of Long, or would not have expected success in doing so.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Even considering the merits of Patent Owner’s reliance on Schneider as teaching away as being pertinent to Petitioner’s Ground One, we find on the present record that Schneider discusses various differences between file-based backup processes and sector-based backup processes, including some pros and cons of each approach. See Ex. 1020, 2:23–3:2, 5:8–16, 6:1– 7, 6:18–22, 14:4–9, 24:20–27; Prelim. Resp. 22–23. For example, a sector-based backup is faster and requires less administration than a file-based backup (see Ex. 1020, 2:22–28, 6:18–22, 24:20–22), whereas a file-based backup can be restored more efficiently than a sector-based backup (see id. at 2:28–3:2). We conclude on the present record that Schneider does not criticize, discredit, or otherwise discourage file-based backup processes, as is required for a teaching away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Indeed, Schneider expressly recognizes that its methods may be used in connection with file-based backup processes. See Ex. 1020, 11:4–5 (“[T]he present invention can also be implemented as part of the operating system.”), 24:1–19 (“The present invention can be implemented either at the sector (disk) level or as part of an operating system’s filing system at the file level.”).” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We conclude Petitioner’s stipulation is commensurate in scope with a Sotera stipulation. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, at 13–14, 18–19 (PTAB Dec. 1, 2020) (precedential); Guidance Memo, at 3. The Guidance Memo states: Consistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB. Guidance Memo, 3, 7–8. For this reason, we do not deny institution in view of the two co-pending district court infringement litigations.” slip op. at 41
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,218,348 - PTAB · May 8, 2024 · IPR2024-00078 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR of claims 1–6 and 8–11 on all petitioned grounds, finding a reasonable likelihood of prevailing on at least claim 1 over Kenley and Long.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a). Applying that standard on behalf of the Director (37 C.F.R. § 42.4(a)), we institute an inter partes review to determine whether Petitioner demonstrates by a preponderance of the evidence that the challenged claims are unpatentable, considering all grounds in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We conclude Petitioner has explained with supporting evidence how the combination of Kenley and Long would have motivated a person of ordinary skill in the art to practice the invention of claim 1 with a reasonable expectation of success and without hindsight, sufficiently to justify institution of review. In particular, on this record, we conclude a person of ordinary skill in the art would have been motivated to modify Kenley’s process of backing up files, by triggering the creation of an archive file whenever a file is modified using three successive backup memories per the teachings of Long. See Pet. 19, 24–25. Dr. Maier testifies in support that this would have been done to improve the reliability of Kenley’s file archiving process, by avoiding the potential loss of data created in between Kenley’s archiving of files at predetermined time intervals. See Pet. 19–21, 24–25; Ex. 1003 ¶¶ 49–50, 52–53, 58. Patent Owner does not materially dispute the increased reliability benefits achieved by modifying Kenley’s file-based backup process in this fashion, in the present preliminary record. Instead, Patent Owner pre-supposes that Petitioner’s case for obviousness is premised on the bodily incorporation of Long’s sector-based archiving process into Kenley’s file-based archiving process. However, that is not what Petitioner proposes, as summarized in detail above. Moreover, the test for obviousness is not whether the features of one reference (such as Long) may be bodily incorporated into the structure or process of the other reference (such as Kenley), but rather is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Further, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” and “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420–21. On the present record, we discern no reason why a person of ordinary skill in the art would have been deterred from modifying Kenley’s file archiving process to be triggered whenever a file is modified and to use three successive backup memories per the teachings of Long, or would not have expected success in doing so.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Even considering the merits of Patent Owner’s reliance on Schneider as teaching away as being pertinent to Petitioner’s Ground One, we find on the present record that Schneider discusses various differences between file-based backup processes and sector-based backup processes, including some pros and cons of each approach. See Ex. 1020, 2:23–3:2, 5:8–16, 6:1– 7, 6:18–22, 14:4–9, 24:20–27; Prelim. Resp. 22–24. For example, a sector-based backup is faster and requires less administration than a file-based backup (see Ex. 1020, 2:22–28, 6:18–22, 24:20–22), whereas a file-based backup can be restored more efficiently than a sector-based backup (see id. at 2:28–3:2). We conclude on the present record that Schneider does not criticize, discredit, or otherwise discourage file-based backup processes, as is required for a teaching away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Indeed, Schneider expressly recognizes that its methods may be used in connection with file-based backup processes. See Ex. 1020, 11:4–5 (“[T]he present invention can also be implemented as part of the operating system.”), 24:1–19 (“The present invention can be implemented either at the sector (disk) level or as part of an operating system’s filing system at the file level.”).” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We conclude Petitioner’s stipulation is commensurate in scope with a Sotera stipulation. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, at 13–14, 18–19 (PTAB Dec. 1, 2020) (precedential); Guidance Memo, at 3. The Guidance Memo states: Consistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB. Guidance Memo, 3, 7–8. For this reason, we do not deny institution in view of the two co-pending district court infringement litigations.” slip op. at 41
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,473,478 - Masimo Corporation v. Apple Inc.Institution deniedPTAB · Apr 25, 2024 · IPR2024-00071 · APJ Robert L Kinder · IPR · Institution
The Board denied institution under § 314(a), finding substantial road-mapping concerns from Masimo’s staggered petition challenging claims 6 and 7.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“has modified its prior positions to account for both arguments made in preliminary responses, as well as concerns identified by the panel in the 745 IPR decision to institute. See Prelim. Resp. 11. Claims 6 and 7 depend from claims 1 and 4. Masimo has bolstered its analysis of Markel and Mills with respect to certain elements of claim 1 and its reasons for combining the references in this second Petition. For example, Petitioner added new mappings of the Markel-Mills combination to address claim 1 in direct response to concerns identified by Patent Owner and by the panel in the 745 IPR. See id. at 11–13. Addressing limitation 1[b(i)], Petitioner added a new mapping of Markel based on pushbuttons having electrodes as shown in Figure 2 of Markel. See Pet. 51–52. Petitioner even identified this discussion of Figure 2 as “a second mapping of the claims.” Id. This second mapping of claim 1 based on Figure 2, and the corresponding analysis, appear nowhere in the analysis of claim 1 (or claim 4) in Masimo’s 745 IPR petition. The new embodiments relied on and modified arguments addressing claim 1 of the ’257 patent suggest that Petitioner is using the prior proceedings as a roadmap to address issues to its first petition in the 745 IPR. Accordingly, this factor weighs strongly in favor of invoking our discretion to deny institution.” slip op. at 20
Discretionary denialPatents in suitUS 10,076,257 - Netflix Inc. v. Divx, LLCAll claims unpatentablePTAB · Apr 17, 2024 · IPR2020-00646 · APJ Iftikhar Ahmed · IPR · Remand
On remand, the Board held claims 1, 5, 8, 9, 13–15, 18, and 21–23 unpatentable as obvious over Zetts and Kaku, with claims 5, 18, and 21 also obvious over Zetts, Kaku, and Seo.
RulingsRemand decision- RemandDecided for petitioner
“the Federal Circuit. Paper 49. On September 11, 2023, the Federal Circuit issued a decision in the appeal vacating our Final Written Decision and remanding for further proceedings consistent with its decision. Netflix, 80 F.4th at 1362. The Federal Circuit determined that we abused our discretion in finding that Petitioner had failed to articulate a field of endeavor. Id. at 1359. The Federal Circuit remanded to allow us to decide the “factual question of whether Kaku is directed to the same field of endeavor as the patent-in-suit.” Id. at 1361. The Federal Circuit, however, did not address the other three issues raised by Patent Owner since we did not decide those issues in the Final Written Decision and they were not presented for appeal. See generally Netflix.” slip op. at 3
- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art In the Final Written Decision, we stated the following:” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Petitioner has not shown that one of the prior art references is analogous to the claimed invention.” Final Dec. 9. On remand, the construction of this claim is an issue that must be decided to reach a conclusion on the patentability of the Challenged Claims of the ’792 patent.” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“1. Analogous Art – Field of Endeavor Before turning to Petitioner’s analysis of the claims, we address” slip op. at 29
Patent outcomesUS 8,472,792 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,472,792 - Alivecor, Inc. v. Apple Inc.Institution deniedPTAB · Apr 3, 2024 · IPR2023-01434 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.
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 ’898 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that: A person of ordinary skill in the art (“POSITA”) at the time of the alleged invention would have been a person with a working knowledge of physiological monitoring technologies and human interface design. That person would have had a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to physiological monitoring technologies and human interface design (Ex. 1003, ¶45). Alternatively, that person could have also had a Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline (Ex. 1003, ¶45). More education can supplement practical experience and vice versa (Ex. 1003, ¶45). Pet. 5–6. Patent Owner does not address the level of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The general rule is that “the indefinite article ‘a’ means ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” Salazar v. AT&T Mobility LLC, 64 F.4th 1311 (2023); see also Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed. Cir. 2008) (“An exception to the general rule that ‘a’ . . . means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule.”). And, the use of “the” (as in “the detailed view”) indicates that the recited part of the claim is a reference back to the corresponding part of a previous recitation (i.e., “a detailed view”). Finjan LLC v. SonicWall, Inc., 84 F.4th 963, 974 (Fed. Cir. 2023) (“Similar to this court’s holding that ‘said’ indicates part of a claim limitation refers to the corresponding part of a previously claimed limitation, . . . , the use of ‘the’ also indicates the claimed term refers to an antecedent term.”). However, whether “a detailed view” means “one or more detailed views” is a separate issue from whether the claims require the same detailed view to have both of the recited components. See Finjan, 84 F.4th at 974 (“[T]hat is a separate issue from whether the claims require the same component to perform multiple functions or satisfy multiple limitations of a claim.”). The plain language of “a detailed view” followed by the recitation of “the detailed view” comprising two components suggests that the “detailed view” must be tied to both of those components. See id. (“In [Traxcell Techs., LLC v. Nokia Sols. & Networks Oy, 15 F.4th 1136, 1143–44 (Fed. Cir. 2021)], we explained that ‘[a]s a matter of plain language, reciting ‘a computer’ (or a ‘first computer’) that performs a function, and then further reciting that ‘the computer’ (or ‘said first computer’) performs multiple additional functions, suggests that such ‘computer’ must be tied to all those functions.’ . . . This same rationale is relevant in analyzing the claims here.”); see also id. (The court agreeing with SonicWall’s argument “that even if the reference to ‘a computer’ may mean ‘one or more computers,’ the subsequent references to ‘the computer’ can only be satisfied by the same ‘one or more computers’ that satisfied the first limitation.”); Salazar, 64 F.4th at 1317 (“We agree with the district court that while the claim term ‘a microprocessor’ does not require there be only one microprocessor, the subsequent limitations referring back to ‘said microprocessor’ require that at least one microprocessor be capable of performing each of the claimed functions.”). We determine that, even if plural detailed views are allowed, the claim requires a single one of those views to have both a graph representation and a selectable data sharing option.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. For the reasons discussed above, we construe independent claims 1 and 23 as requiring the “detailed view” to have both a graph representation and a selectable data sharing option. See supra Section II.C. Petitioner does not identify adequately any disclosure in Molettiere of displaying a single view having both components. Thus, Petitioner has not shown adequately that Molettiere is anticipatory. Additionally, we agree with Patent Owner’s argument that Petitioner does not articulate adequately any obviousness contentions regarding how or why a person of ordinary skill in the art would have combined the relied-on figures of Molettiere to arrive at the recited detailed view having both components. See Prelim. Resp. 9–10; Pet. 10–14. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to independent claim 1 and independent claim 23 as anticipated by or obvious over Molettiere. For the same reasons, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in its challenge to dependent claims 2– 11, 18, 20–22, 25–34, 41, and 43–45 as anticipated by or obvious over Molettiere. E. The Alleged Unpatentability of Claims 1, 3, 9, 10, 16, 18, 23, 26, 32, 33,” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,270,898 - Lululemon USA Inc. v. Nike, Inc.InstitutedPTAB · Mar 26, 2024 · IPR2023-01460 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR on claims 1–19, finding a reasonable likelihood that claims 1, 10, and 11 are obvious over Dua, Hong, and Lockwood.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“lululemon proposes, and Nike does not dispute, that one skilled in the art would have had “at least a bachelor’s degree in mechanical engineering, textile engineering, or similar technical degree and at least 3 years of experience working with knitted textiles for use in fabric-based articles, including apparel such as footwear.” Pet. 12–13 (citing Ex. 1002 ¶¶ 43–45); see also Prelim. Resp. 9 (“Nike applies lululemon’s proposed level of skill in the art.”). lululemon’s proposed definition is consistent with the problems and solutions in the ’484 patent and prior art of record. Accordingly, for purposes of institution, we adopt lululemon’s definition of the level of skill in the art.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“lululemon asserts that “the plain and unambiguous language of the claim[s] requires that the flat-knitted element having the claimed features must be formed from a flat-knitting process.” Pet. 13–14. Nike agrees with lululemon’s construction of the claims, i.e., “that the flat-knitted element, including the ‘domed, three dimensional structure,’ ‘must be formed from a flat-knitting process.’” Prelim. Resp. 9–10 (quoting Petition 13–14). In doing so, Nike explains that the claims do not cover “a flat knitted element with a three-dimensional structure formed only after the knitting process is complete.” Id. at 10. Thus, consistent with the parties’ reasoning, we construe the claims to require that the “central portion having a domed, three-dimensional structure” be formed during the flat-knitting process, and not afterward.” slip op. at 6
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Based on the current record, we credit the testimony of lululemon’s expert over that of Nike’s expert. lululemon’s expert points to Hong’s explicit disclosure that “knitting directly the 3D shapes can overcome fabric waste and diminish the labour cost inherent to the use of two-dimensional fabrics.” Ex. 1002 ¶ 91 (citing Ex. 1005, 5) (emphasis added). That disclosure clearly teaches or suggests that the 3D shape is accomplished as part of Hong’s flat-knitting process, and not as part of a post-knitting step. Hong makes this clear not only by its title, “The development of 3D shaped knitted fabrics . . . on a flat knitting machine,” but also throughout its description of the flat-knitting process: - “The use of a new electronic flat knitting machine (Shima Seiki SES 122FF) for producing three-dimensional shaped fabrics for technical purposes is described.” Ex. 1005, Abstract (emphasis added). - “This work describes the use of the new flat knitting machines to knit 3D structures.” Id. at 1 (emphasis added). - “It is not difficult to knit a spherical form in the SES 122FF flat knitting machine.” Id. at 4 (emphasis added). - “By exploiting the capacity of this [flat-knitting] machine, it is possible to knit more types of three-dimensional knitted fabrics.” Id. at 6 (emphasis added). Moreover, we find unpersuasive the testimony of Nike’s expert that Hong’s use of a 2D pattern in the knitting process necessarily means that the article being knitted is a 2D article as opposed to a 3D article. See Ex. 2002 ¶¶ 43–45. To the extent Hong uses a 2D pattern, it appears to be merely to establish the number of needles and courses to be used in the flat-knitting process that produces the actual 3D article. See, e.g., Ex. 1005, 4 (“it is necessary to start by transferring the three-dimensional concept to a two-dimensional pattern, . . . and then establishing the relation between the number of operating needles and the number of knitted courses.”). Nowhere does Hong appear to mention using the 2D pattern to make a 2D article. Rather, as discussed above, Hong is devoted entirely to describing a flat knitting machine that produces three-dimensional shaped fabric articles. We also find unpersuasive the testimony of Nike’s expert that “[t]he pattern shown in [Hong’s] Figure 5(2) . . . is not sufficient to produce the fully formed shape shown in Figure 5(3),” and, thus, one skilled in the art “would not know how to close the tubes shown in Figure 5(3).” Ex. 2002 ¶¶ 46–47. Hong explicitly states that “[d]uring knitting, the two smaller tubes are separately knitted with two cam systems.” Ex. 1005, 4. That disclosure, at this stage, persuades us that Hong teaches or suggests how its flat-knitting process closes the tubular knitted fabrics depicted in the figures. The parties are free to explore this issue further at trial.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“In sum, based on the preliminary record, lululemon sufficiently demonstrates that the asserted Dua-Hong-Lockwood combination teaches or suggests a “domed, three-dimensional structure” that is formed during the “flat knitting process,” as required by claims 1 and 11. Nike does not dispute lululemon’s showing as to the other elements of claims 1 and 11, nor does Nike dispute lululemon’s reason to combine the asserted references. See Prelim. Resp. 26–30. After reviewing lululemon’s showing, we conclude that the record evidence demonstrates a reasonable likelihood that claims 1 and 11 are unpatentable as obvious over the combined teachings of Dua, Hong, and Lockwood. Thus, lululemon meets the threshold for institution.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,730,484 - Askeladden L.L.C. v. Kioba Processing LLCAll claims unpatentablePTAB · Mar 25, 2024 · IPR2023-00147 · APJ Josiah C Cocks · IPR · Final written decision
Claims 8–22 are unpatentable as anticipated by Lauper or obvious over Lauper, ISO 7816-4, and ISO 14443; claim 23 is obvious over Lauper and Fu, with or without the ISO standards.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner presents the following assessment as to the level of skill in the art: 7 Neither party presents any objective indicia of non-obviousness. As Mr. Zatkovich explains, for purposes of the ’792 Patent, a POSITA[8] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, credit card and smartcard payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 15–16 (citing Ex. 1002 ¶¶ 101–103; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“C. Claim Construction We construe claims “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2020); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Petitioner offers claims construction for the following terms: “transaction controller” (claims 8–23); “smartcard chip” (claims 8, 9); “said processor” (claims 10, 14, 25); “mobile user interface device” (claims 8–11, 13, 15, 16, 18, 21). Pet. 11–15. For purposes of instituting trial, we adopted Petitioner’s proposed constructions for the above-noted terms. Inst. 8 Person of ordinary skill in the art. Dec. 10–12. Patent Owner has offered no challenges to any of those claim constructions as a part of this proceeding. After reviewing the record, we adopt Petitioner’s proposed constructions. See Ex. 1001, 31:39–54; Ex. 1002 ¶¶ 79–100; Pet. 12–15. For convenience, we reproduce them in table format below:” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We have considered the record and determine that Petitioner’s proposed grounds of unpatentability based on (1) Lauper alone, and, (2) Lauper, ISO 7816–4, and ISO 14443, find ample evidentiary support in the disclosures of the prior art. In particular, we are satisfied that Petitioner demonstrates that claims 8–22 are anticipated by Lauper and also rendered obvious based on Lauper, ISO 7816–4, and ISO 14443. See Pet. 16–64. We also credit Mr. Zatkovich’s unrefuted testimony offered in support of those proposed grounds of unpatentability. See, e.g., Ex. 1002 ¶¶ 318–456. For the foregoing reasons, we determine that Petitioner has shown that all the limitations of claims 8–22 are accounted for by either Lauper alone, or, alternatively, by Lauper taken with ISO 7816–4 and ISO 14443. We also determine that Petitioner has set forth adequate reason to combine the teachings of the prior art, with a reasonable likelihood of success in combining those teachings. Accordingly, we conclude that Petitioner has established by a preponderance of the evidence that claims 8–22 are unpatentable.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We have considered the record and determine that Petitioner’s proposed grounds of unpatentability based on (1) Lauper alone, and, (2) Lauper, ISO 7816–4, and ISO 14443, find ample evidentiary support in the disclosures of the prior art. In particular, we are satisfied that Petitioner demonstrates that claims 8–22 are anticipated by Lauper and also rendered obvious based on Lauper, ISO 7816–4, and ISO 14443. See Pet. 16–64. We also credit Mr. Zatkovich’s unrefuted testimony offered in support of those proposed grounds of unpatentability. See, e.g., Ex. 1002 ¶¶ 318–456. For the foregoing reasons, we determine that Petitioner has shown that all the limitations of claims 8–22 are accounted for by either Lauper alone, or, alternatively, by Lauper taken with ISO 7816–4 and ISO 14443. We also determine that Petitioner has set forth adequate reason to combine the teachings of the prior art, with a reasonable likelihood of success in combining those teachings. Accordingly, we conclude that Petitioner has established by a preponderance of the evidence that claims 8–22 are unpatentable.” slip op. at 17
Patent outcomesUS 7,110,792 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,792 - Askeladden L.L.C. v. Kioba Processing LLCAll claims unpatentablePTAB · Mar 25, 2024 · IPR2023-00146 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1–7 and 24–31 are unpatentable as anticipated by Lauper and, alternatively, as obvious over Lauper, ISO 7816-4, and ISO 14443.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner presents the following assessment as to the level of skill in the art: As Mr. Zatkovich explains, for purposes of the ’792 Patent, a POSITA[7] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, credit card and smartcard payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 15 (citing Ex. 1002 ¶¶ 101–103; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Cir. 2005) (en banc). Petitioner offers claim constructions for the following terms: “smartlink module” (claims 1 and 24); “the module” (claims 2–7 and 25–31); “smartcard chip” (claims 1, 5, 24, and 26–31); and “said smartcard processor chip” (claims 2, 5, and 7). Pet. 11–15. For purposes of instituting trial, we adopted Petitioner’s proposed constructions for the above-noted terms. Inst. Dec. 10–12. Patent Owner has offered no challenges to any of those claim constructions as a part of this proceeding. Upon review of the record, we adopt Petitioner’s proposed constructions as a part of this Final Written Decision. See Ex. 1002 ¶¶ 67– 78–88; Pet. 12–15. For convenience, we reproduce them in table format below: Claim Terms Petitioner’s Proposed Constructions “smartlink module” and “the “a device that includes (1) a module” processor, (2) a wireless data channel to wirelessly communicate transaction data between said processor and a third party terminal, and (3) a second data channel electronically coupled to a mobile communication device.” Pet. 12 (citing Ex. 1002 ¶¶ 69–70). “smartcard chip” and “said “a device including a processor and smartcard processor chip”” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“integrated circuit (communication controller 21’ . . . includes a processor and memory and processor executable code for providing data processing capability” and that a skilled artisan would understand that integrated circuit “includes all of the components called out in the claims the ’792 Patent which would be included in a ‘smartcard chip.’” Pet. 30 (citing Ex. 1005, Fig. 1, ¶¶ 18, 22, 23, 25; Ex. 1002 ¶¶ 169–172, 179–190). On the record, we are satisfied that Lauper’s integrated circuit constitutes the claimed smartcard chip. slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“does not constitute a smartcard chip, “it would have been obvious to a POSITA (as Ground 2) to modify Lauper to replace the ‘integrated circuit (communication controller 21)’ with a smartcard chip that conforms to the ISO standards.” Pet. 32 (citing Ex. 1002 ¶¶ 178–190) (emphasis omitted).8 In so contending, Petitioner points to disclosure in Lauper that it is “an aim of the present invention to propose a mobile telephone that is suited for the transmission of data with external devices according to a plurality of different standards.” Id. (quoting Ex. 1005 ¶ 5) (emphasis omitted). Petitioner also relies on the testimony of Mr. Zatkovich discussing the use of smartcard chips as a part of the ISO standards, such as ISO 7816-4 and ISO 14443, for the type of operations and functions disclosed in Lauper. Id. at 8 Petitioner makes the same alternative argument in connection with the “smartcard chip” recitation in independent claim 24. See Pet. 60–61. 32–34 (citing, e.g., Ex. 1002 ¶¶ 39–41, 42–45 124–125, 152, 174, 175, 177, 191, 192, 193; Ex. 1005 ¶¶ 23, 25, 32). Petitioner further explains that a skilled artisan would have had adequate reason to combine the teachings of Lauper, ISO 7816-4, and ISO 14443, with a reasonable likelihood of success in so combining those teachings. See id. We also are satisfied that Petitioner also accounts for the smartcard chip requirement of the claims as a part of the ground based on Lauper, ISO 7816-4, and ISO 14443.” slip op. at 15
Patent outcomesUS 7,110,792 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,792 - Netflix, Inc. v. Divx, LLCAll claims unpatentablePTAB · Mar 21, 2024 · IPR2020-00511 · APJ Bart A Gerstenblith · IPR · Remand
On remand, the Board held claims 1–3, 5, 6, 10–12, 14, and 15 unpatentable as obvious over the asserted combinations of Chen and Grab-333 with Candelore or Kocher.
RulingsRemand decision- RemandOther
“I. INTRODUCTION This case is on remand from the United States Court of Appeals for the Federal Circuit to address the patentability of claims 1–3, 5, 6, 10–12, 14, and 15 (“the Challenged Claims”) of U.S. Patent No. 9,184,920 B2 (Ex. 1001, “the ’920 patent). Netflix, Inc. v. DivX, LLC, No. 2022-1043, 2023 WL 3115576 (Fed. Cir. Apr. 27, 2023) (nonprecedential). For the reasons discussed herein, we determine that Petitioner has shown, by a preponderance of the evidence, that the Challenged Claims are unpatentable.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“F.2d 86, 91 (CCPA 1978)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in video encryption and cryptography or . . . a master’s degree in electrical engineering, computer science, or a similar field with a specialization in video encryption and cryptography.” See Inst. Dec. 9–10 (finding the same).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Response, Patent Owner does not propose a construction for any claim term or contest our preliminary findings regarding limitations 1[a] and 1[b]. See generally PO Resp. Accordingly, we maintain and reaffirm our preliminary determinations regarding the meaning of the recited “user encryption key” and “content encryption key.” [Inst.] Dec. 12– 15. Additionally, we need not construe other claim terms to resolve the present controversy before us.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the complete record before us, Petitioner has established, by a preponderance of the evidence, that claims 1, 3, 5, 6, 10, 12, 14, and 15 of the ’920 patent would have been obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 103
Patent outcomesUS 9,184,920 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,184,920
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.