- Xilinx, Inc. v. Polaris Innovations LimitedInstitution deniedPTAB · Sep 18, 2023 · IPR2023-00517 · APJ Minn Chung · IPR · Institution
The Board denied institution on all challenged claims because neither Slemmer alone nor Slemmer with Gasbarro showed a reasonable likelihood of proving the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review may not be authorized unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we conclude that the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any challenged claim of the ’473 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that “[f]or the limited purpose of this Preliminary Response, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so if trial is instituted.” Prelim. Resp. 11. For purposes of this Decision, based on our review of the ’473 patent, the types of problems and solutions described in the ’473 patent, and cited prior art, we adopt and apply Petitioner’s unopposed definition of a person of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“because it is not dispositive—the art teaches the claims under any construction.” Pet. 9. Patent Owner addresses constructions for two claim terms recited in claims 1 and 20—“outputting data to said bus that is other than data which would be output to said bus during normal operation” and “outputting no data to the bus.” Prelim. Resp. 11–16. Patent Owner asserts that the term “outputting data to said bus that is other than data which would be output to said bus during normal operation” should be construed to mean “instead of the data which would be output to the bus by the circuit component during normal operation, outputting data to the bus that is other than the data which would be output to the bus during normal operation.” Id. at 11–12. As for the claim term “outputting no data to the bus,” Patent Owner argues that the term should be interpreted to mean “outputting no data to the bus when and so long as the circuit component is being tested.” Id. at 12–16. Based on the record presented, we do not discern a need to construe explicitly any claim terms because doing so would not change the outcome of the analysis below. 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
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“not teach “outputting no data to said bus” “during testing” as recited in claim 1 (limitation [1.3]) or “while testing” as recited in claim 20 (limitation [20.3]). Prelim. Resp. 29–34. We agree with Patent Owner that none of the operations in Figure 9 of Slemmer cited by Petitioner describe any operation performed “during testing” or “while testing,” as recited in limitation [1.3] or limitation [20.3]. As discussed above in Section III.C.2, Slemmer describes that line T is used to enable the special test mode “prior to such time as special test operations are performed.” Ex. 1005, 35:22–30 (emphasis added). Slemmer also describes that “upon the entry into a special test mode at time t3 of FIG. 9, line T is driven by test mode enable circuitry 29 to a high logic level.” Id. at 36:22–24 (emphasis added). Slemmer further describes that “with line 32 from parallel test circuitry 28 remains high (i.e., the parallel test either passed, or has not taken place),” terminals DQ “go into an active state at time t4” to present a low impedance state. Id. at 36:26–32 (emphasis added). Thus, Slemmer discloses that the enabling of the special test mode at time t3 or time t4 described in Figure 9—which Petitioner relies on as teaching “outputting no data to said bus” (at time t3) and “outputting data to said bus that is other than data which would be output to said bus during normal operation” (at time t4)—takes place before the test operations are performed.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,701,473 - PTAB · Sep 15, 2023 · IPR2023-00516 · APJ Minn Chung · IPR · Institution
The Board instituted review of claims 1, 2, and 8–13 on all petition grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments and evidence presented in Patent Owner’s Preliminary Response, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’589 patent, based on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing testimony from Dr. Melvin, Petitioner asserts a person of ordinary skill in the art (“POSITA”) at the relevant time would have had “a Bachelor’s degree in Electrical Engineering or Computer Science and two years of experience” or “equivalent education, work, or experience in this field.” Pet. 21 (citing Ex. 1003 ¶¶ 31–34). According to Dr. Melvin, “[m]ore education could substitute for experience, and vice versa.” Ex. 1003 ¶ 33. Patent Owner states that “[f]or the limited purpose of this Preliminary Response, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so in the event that trial is instituted.” Prelim. Resp. 11. For purposes of this Decision, based on our review of the ’589 patent, the types of problems and solutions described in the ’589 patent, and cited prior art, we adopt and apply Petitioner’s unopposed definition of a person of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “construction of terms is unnecessary because it is not dispositive to this case—the art teaches the limitations under any construction under the Phillips standard.” Pet. 21. Patent Owner states that we need not construe any claim term for purposes of this Decision. See Prelim. Resp. 11. Based on the record presented, we need not construe any claim term for purposes of this Decision. 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))). C. Asserted Grounds of Unpatentability Based on Lee or the Combination of” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“motivation to combine the references because “[w]hile Lee does expressly illustrate the ‘circuitry’ that is initialized by the reset signal ϕRST output from its initialization circuit, Iketani illustrates and describes in detail the various circuits, including the control circuit, that receive and are initialized by such an initialization signal.” Pet. 59 (emphasis added) (citing Ex. 1003 ¶ 140). Petitioner further asserts that the proposed combination “amounts to a simple substitution of one component (i.e., Lee’s initialization circuit) for another (i.e., Iketani’s power on reset circuit), and a POSITA would have understood that this substitution would yield predicable results.” Id. at 61 (citing Ex. 1003 ¶ 143).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,157,589 - PTAB · Sep 14, 2023 · IPR2023-00513 · APJ Barbara A Parvis · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 5, 6, 9, and 10 on all petitioned grounds, finding a reasonable likelihood of unpatentability over Bains and JESD79-2A.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“i) Conclusion—Claim 1 After consideration of the arguments and the evidence of record at this early stage, we determine that Petitioner has shown sufficiently, for purposes of institution, that the combination of Bains and JESD79-2A teaches all recitations in claim 1. Also, at this juncture, we are persuaded that Petitioner has articulated sufficiently persuasive reasoning, based on the evidence of record, as to why one of ordinary skill in the art would have made 6 In light of our determination, we need not making findings as to whether Bains alone teaches element 1.6. Petitioner’s proposed modifications. Petitioner’s arguments that a person having ordinary skill in the art would have had a reasonable expectation of success also are sufficient for purposes of institution. We find that Patent Owner’s arguments do not undermine Petitioner’s showing at this early stage. Accordingly, we conclude that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over the combination of Bains and JESD79-2A.” slip op. at 29
- Skill levelSkill level petitioner adoptedOther
“We find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal. With that exception, on the current record, we preliminarily find Petitioner’s proposal is consistent with the level of skill reflected in the ’523 patent Specification and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We, therefore, adopt Petitioner’s proposal, with the “at least” phrase omitted.” slip op. at 8
- BurdenInstituted
“early stage, we determine that Petitioner has shown sufficiently, for purposes of institution, that the combination of Bains and JESD79-2A teaches all recitations in claim 1. Also, at this juncture, we are persuaded that Petitioner has articulated sufficiently persuasive reasoning, based on the evidence of record, as to why one of ordinary skill in the art would have made 6 In light of our determination, we need not making findings as to whether Bains alone teaches element 1.6. Petitioner’s proposed modifications. Petitioner’s arguments that a person having ordinary skill in the art would have had a reasonable expectation of success also are sufficient for purposes of institution. We find that Patent Owner’s arguments do not undermine Petitioner’s showing at this early stage. Accordingly, we conclude that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over the combination of Bains and JESD79-2A.” slip op. at 29
- Expert testimonyOther
“articulated reasons with rational underpinnings, especially as to the relevant features of the claims.” Prelim. Resp. 37. At this stage in the proceeding, we find that Petitioner’s argument contains sufficient specificity with respect to elements 1.5 and 1.6. Pet. 29–33, 49–60. For instance, we find that Petitioner’s fifth argument and Dr. Baker’s related testimony that the proposed combination would have permitted “for more complex termination schemes and more customizable termination” (see, e.g., Pet. 50; Ex. 1003 ¶¶ 124–125) relates to customizable termination and element 1.5 requires that the control circuit “selectively terminate the terminal . . . in response to the termination signal.” Patent Owner also argues that “[n]either the Petition, nor Dr. Baker’s declaration, provides any support as to how a POSITA would implement the ODT pin disclosed in JESD79-2A with the memory system of Bains.” Prelim. Resp. 37. Patent Owner argues that “JESD79-2A and Bains have distinct control schemes for the resistor switches in the ODT.” Id. at 37–38. Petitioner provides detailed explanations of how the teachings of Bains and JESD79-2A would have been combined. Pet. 54–56, 59–60. Petitioner also presents arguments that Bains and JESD79-2A teach similar termination circuits. Pet. 50–53, 55. Based on the preliminary record, we find that Petitioner explains sufficiently for purposes of institution how the teachings of Bains and JESD79-2A would have been combined and provides sufficient argument and evidence preliminarily showing that the ordinary skilled artisan would have had reasonable expectation of success.” slip op. at 16
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,532,523 - PTAB · Sep 1, 2023 · IPR2023-00733 · APJ Larry J Hume · IPR · Institution
The Board instituted inter partes review of claims 1–24 on five Heil-based grounds and granted Cisco et al.’s motion to join the Google IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In view of the identity of the issues in the instant Petition and the petition in the Google IPR and the already-considered arguments that Patent Owner made in the Google IPR, we determine that this proceeding warrants institution on the grounds presented in the Petition for the same reasons stated in our Decision on Institution in the Google IPR. See IPR2023- 00120, Paper 7. Accordingly, we proceed with the IPR.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We find that Petitioner timely filed its Joinder Motion in accordance with 37 C.F.R. § 42.122(b). We further determine that Petitioner has met its burden of showing that joinder is appropriate, at least because, as set forth above, the Petition here: (1) is substantively identical to the petition in the Google IPR; (2) contains the same grounds based on the same evidence; and (3) relies on the same declaration of Dr. Paul Franzon, Ph.D. Mot. 1, 3–9; Ex. 1004. Petitioner also represents that it “agrees to take an ‘understudy’ role.” Mot. 8. Petitioner clarifies that, “[o]nly if Google ceases participation in the proceeding . . . Petitioner would assume a primary role, meaning it would take over the role previously filled by Google” Id. at 9.” slip op. at 5
NonePatents in suitUS 10,154,092 - Google LLC v. Spacetime3d, Inc.InstitutedPTAB · Aug 7, 2023 · IPR2023-00577 · APJ Hubert C Lorin · IPR · Institution
The Board instituted review of claims 1–18 on all petition grounds and granted Google’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’048 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 13–18.7 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“same arguments as those included in its preliminary response filed in the Apple IPR. Compare Prelim. Resp., with Apple IPR, Paper 6 at 1–2, 8–59. Although the Preliminary Response additionally incorporates Patent Owner’s arguments regarding discretionary denial under 35 U.S.C. § 325(d) from Patent Owner’s Preliminary Sur-reply in the Apple IPR (compare Prelim. Resp. 2–7, with Apple IPR, Paper 8 at 1–6), no new arguments are presented by Patent Owner’s Preliminary Response in this proceeding with respect to discretionary denial under § 325(d) or the patentability of the challenged claims.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we find that the Petition here: (1) is substantively identical to the petition in the Apple IPR; (2) contains the same grounds based on the same evidence as the Apple petition; and (3) relies on the same declaration of Henry Fuchs, Ph.D., relied upon in the Apple petition. Mot. 2, 5; Ex. 1003. And no new grounds or patentability issues are presented by the Petition. Petitioner also represents that it “will assume an understudy role” in the joined proceeding. Mot. 2. Specifically, Petitioner agrees that: Petitioner will: 1. Adhere to all applicable deadlines in the Apple IPR; 2. Submit “consolidated” filings with the Apple, as set forth above in the statement of precise relief requested; 3. Refrain from requesting or reserving any additional depositions or deposition time; 4. Refrain from requesting or reserving additional oral hearing time; and 5. Assume a second-chair role as long as Apple remains in the proceeding. Id. at 6. In addition, Petitioner asserts that “joinder would not adversely impact the trial schedule, briefing, or discovery in the Apple IPR.” Id. at 8.” slip op. at 7
Discretionary denialPatents in suitUS 8,881,048 - Google LLC v. Spacetime3d, Inc.InstitutedPTAB · Aug 7, 2023 · IPR2023-00579 · APJ Minn Chung · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all asserted grounds and granted Google’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Consequently, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’654 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 11–18.5 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Consequently, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’654 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 11–18.5 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we find that the Petition here: (1) is substantively identical to the petition in the Apple IPR; (2) contains the same grounds based on the same evidence as the Apple petition; and (3) relies on the same declaration of Henry Fuchs, Ph.D., relied upon in the Apple petition. Mot. 2, 5; Ex. 1003. And no new grounds or patentability issues are presented by the Petition. Petitioner also represents that it “will assume an understudy role” in the joined proceeding. Mot. 2. Specifically, Petitioner agrees that Petitioner will: (1) assume “a second-chair role as long as Apple remains in the proceeding”; (2) adhere to all applicable deadlines in the Apple IPR; (3) submit “consolidated” filings with Apple for all substantive papers; (4) refrain from requesting or reserving any additional depositions or deposition time; and (5) refrain from requesting or reserving additional oral hearing time. Id. at 6. In addition, Petitioner asserts that “joinder would not adversely impact the trial schedule, briefing, or discovery in the Apple IPR.” Id. at 8.” slip op. at 7
Discretionary denialPatents in suitUS 9,304,654 - Google LLC v. Spacetime3d, Inc.InstitutedPTAB · Aug 7, 2023 · IPR2023-00578 · APJ Minn Chung · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all asserted grounds and granted Google’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Consequently, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’868 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 12–19.6 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Consequently, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’868 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 12–19.6 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we find that the Petition here: (1) is substantively identical to the petition in the Apple IPR; (2) contains the same grounds based on the same evidence as the Apple petition; and (3) relies on the same declaration of Henry Fuchs, Ph.D., relied upon in the Apple petition. Mot. 2, 5; Ex. 1003. And no new grounds or patentability issues are presented by the Petition. Petitioner also represents that it “will assume an understudy role” in the joined proceeding. Mot. 2. Specifically, Petitioner agrees that Petitioner will: (1) assume “a second-chair role as long as Apple remains in the proceeding”; (2) adhere to all applicable deadlines in the Apple IPR; (3) submit “consolidated” filings with Apple for all substantive papers; (4) refrain from requesting or reserving any additional depositions or deposition time; and (5) refrain from requesting or reserving additional oral hearing time. Id. at 6. In addition, Petitioner asserts that “joinder would not adversely impact the trial schedule, briefing, or discovery in the Apple IPR.” Id. at 8.” slip op. at 7
Discretionary denialPatents in suitUS 9,696,868 - PTAB · Jul 18, 2023 · IPR2023-00255 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR on claims 1, 4, 5, and 8–23 on all asserted grounds, finding a reasonable likelihood of prevailing on multiple obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson3 factors that address discretion to deny when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; 3 Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton, Dickinson”). during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. Factors (a), (b), and (d), relate to whether the same or substantially the same art or arguments were previously presented to the Office, and factors (c), (e), and (f) relate to whether the petitioner demonstrates that the Office erred in a manner material to the patentability of the claims. Advanced Bionics, Paper 6 at 9–11. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether the petitioner has demonstrated a material error by the Office. Id.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’287 patent. Accordingly, we institute an inter partes review of claims 1, 4, 5, and 8–23 of the ’287 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) “would have possessed a bachelor’s degree in a pertinent discipline, such as mechanical engineering, physics, product design, or a related field” and “2–4 years of experience in working with electronic displays and have an understanding of product design issues and failure modes associated with electronic displays.” Pet. 7 (citing Ex. 1002 ¶ 37). In the alternative, Petitioner argues that “a POSITA would have had 5–7 years of experience in the field working with electronic displays and have a similar understanding of product design issues and failure modes associated with electronic displays.” Id. (citing Ex. 1002 ¶ 37). At this stage of the proceeding, Patent Owner does not propose a different level of skill in the art, or address Petitioner’s proposed definition. For purposes of this Decision, and based on the current record, we adopt the uncontested assessment offered by Petitioner.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We construe each 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). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Based on the record before us, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,629,287 - Apple Inc. v. Spacetime3d, Inc.InstitutedPTAB · Jul 17, 2023 · IPR2023-00344 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on claims 1–20 on all petitioned grounds, finding a reasonable likelihood that Apple would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, Preliminary Response, Preliminary Reply, and Preliminary Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’868 patent, based on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director Memo”). Under the Director Memo, “[c]onsistent with Sotera Wireless, Inc.,[3] 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.” Director Memo 3; see also id. at 9 (“[T]he 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.”).” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Under the specific facts of this case, we agree with Petitioner’s emphasis on the combined teachings of Anthony and Hanggie in Petitioner’s challenges to the claims of the ’868 patent. To paraphrase an expression, this is one case where the combination of the teachings of the prior art is greater than the sum of its parts. As discussed below in Section III.F.3, Petitioner’s proposed combination of Anthony and Hanggie is fundamental to Petitioner’s theory of obviousness, relying on the combined teachings of Anthony and Hanggie in nearly all elements of the challenged claims. Thus, 5 U.S. Patent Application Publication No. 2002/0033848 A1 (Ex. 2009, “Sciammarella”). 6 U.S. Patent No. 6,725,427 B2 (Ex. 2007, “Freeman”). 7 U.S. Patent No. 6,768,999 B2 (Ex. 2008, “Prager”). 8 U.S. Patent Application Publication No. 2003/0179231 A1 (Ex. 2011, “Kamiwada”). 9 U.S. Patent Application Publication No. 2001/0050687 A1 (Ex. 2010, “Iida”). we find that our § 325(d) inquiry in this case must consider the combination of Anthony and Hanggie to meaningfully evaluate the Becton, Dickinson factors under the Advanced Bionics framework. During the prosecution of the ’868 patent (or the ’708 application that led to the ’868 patent), the Examiner did not reject any claims but instead allowed the claims as filed in the applicant’s preliminary amendment. See Ex. 1002, 27–29, 50–66, 68–80. In view of this record, although the ’868 patent lists on its face a number of prior art references cited by the Examiner, we agree with Petitioner that no combination of prior art substantially similar to the asserted combination of Anthony and Hanggie was considered during the prosecution of the ’868 patent.” slip op. at 15
- Skill levelSkill level petitioner adoptedOther
“Although Patent Owner acknowledges Petitioner’s statement, Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill. Prelim. Resp. 20 (citing Pet. 10). Nor does Patent Owner propose a definition of its own at this time. Id. Instead, Patent Owner states: “at least the inventor of the ‘868 Patent, E. Eddie Bakhash, is a POSITA, and [Patent Owner] reserves the right to further address this issue at a later point in time if necessary.” Id. For purposes of this Decision, based on our review of the ’868 patent, the types of problems and solutions described in the ’868 patent, and the cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,696,868 - Apple Inc. v. Spacetime3d, Inc.InstitutedPTAB · Jul 6, 2023 · IPR2023-00343 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on claims 1–19, finding a reasonable likelihood that claims 1–5, 7, 8, 10–13, 15–17, and 19 are obvious over Anthony and Hanggie, and claims 6, 9, 14, and 18 over Anthony, …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, Preliminary Response, Preliminary Reply, and Preliminary Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’654 patent, based on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Our analysis of discretionary denial under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director Memo”). Under the Director Memo, “[c]onsistent with Sotera Wireless, Inc.,[3] 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.” Director Memo 3; see also id. at 9 (“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.”).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“were presented to the Office.” The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). “Previously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent.” Id. at 7–8. “[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The non-exclusive Becton, Dickinson factors are: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph). Becton, Dickinson factors (a), (b), and (d) relate to the first part of the Advanced Bionics framework, i.e., whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics at 10. Factors (c), (e), and (f) relate to the second part of that framework, i.e., “whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. 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 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 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing testimony from Dr. Fuchs, Petitioner asserts that a person of ordinary skill in the art (“POSITA”) as of September 13, 2005 (the earliest possible priority date of the ’654 patent) would have had “at least a Bachelor’s degree in electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with 2D and 3D graphical user interfaces.” Pet. 10 (citing Ex. 1003 ¶¶ 31–32). Petitioner further states that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Id. (citing Ex. 1003 ¶¶ 31– 32). Although Patent Owner acknowledges Petitioner’s statement, Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill. Prelim. Resp. 20 (citing Pet. 10). Nor does Patent Owner propose a definition of its own at this time. Id. Instead, Patent Owner states: “at least the inventor of the ‘654 Patent, E. Eddie Bakhash, is a POSITA, and [Patent Owner] reserves the right to further address this issue at a later point in time if necessary.” Id. For purposes of this Decision, based on our review of the ’654 patent, the types of problems and solutions described in the ’654 patent, and the cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,304,654
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.