- PTAB · Apr 30, 2024 · IPR2024-00132 · APJ David C Mckone · IPR · Institution
The Board instituted inter partes review of claims 1–9 on all asserted grounds, finding a reasonable likelihood that PLR would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim of the ’202 patent. Our factual findings, conclusions of law, and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. This is not a final decision as to the patentability of claims for which inter partes review is instituted. Our final decision will be based on the record as fully developed during trial. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review is instituted as to claims 1–9 of the ’202 patent on all of the grounds set forth in the Petition; and” slip op. at 34
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Petitioner. The prior Board decision observed that Willis discloses sending advertising content based on physical geographic location but does not teach “checking what updated video-game content to send based on one of the factors including a type of the mobile 3 Patent Owner argues that Petitioner’s reply arguments are improper new arguments, beyond the scope of the Petition, and should not be considered. Prelim. Sur-reply 1, 3. We disagree, as Petitioner’s reply arguments are responsive to Patent Owner’s Preliminary Response. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding . . . patent owner preliminary response . . . .”). Furthermore, we expressly authorized Petitioner to file a reply addressing Patent Owner’s Section 325(d) arguments. communication device, a telecom service associated with the mobile communication device, and a service provider of the telecom service.” Ex. 1002, 41–42. As explained in detail below, Petitioner shows persuasively, at least on the current record, that both Hays and Levkovitz teach the limitation the prior Board decision found missing from Willis. Patent Owner does not contend that Willis includes disclosure similar to the disclosure Petitioner cites to in Hays or Levkovitz for this limitation. Accordingly, we conclude that the same or substantially the same art and arguments were not previously presented to the Office, and, accordingly, the first part of Advanced Bionics is not satisfied. We need not reach the second part. We are not persuaded that we should exercise our discretion to deny the Petition under Section 325(d).” slip op. at 14
- Strike new argumentNew argument consideredDecided for petitioner
“3 Patent Owner argues that Petitioner’s reply arguments are improper new arguments, beyond the scope of the Petition, and should not be considered. Prelim. Sur-reply 1, 3. We disagree, as Petitioner’s reply arguments are responsive to Patent Owner’s Preliminary Response. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding . . . patent owner preliminary response . . . .”). Furthermore, we expressly authorized Petitioner to file a reply addressing Patent Owner’s Section 325(d) arguments. communication device, a telecom service associated with the mobile communication device, and a service provider of the telecom service.” Ex. 1002, 41–42. As explained in detail below, Petitioner shows persuasively, at least on the current record, that both Hays and Levkovitz teach the limitation the prior Board decision found missing from Willis. Patent Owner does not contend that Willis includes disclosure similar to the disclosure Petitioner cites to in Hays or Levkovitz for this limitation. Accordingly, we conclude that the same or substantially the same art and arguments were not previously presented to the Office, and, accordingly, the first part of Advanced Bionics is not satisfied. We need not reach the second part. We are not persuaded that we should exercise our discretion to deny the Petition under Section 325(d).” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“1 Patent Owner contends that Dr. Zagal’s Declaration “simply parrots the Petition” and, thus, should not be entitled to any weight. Prelim. Resp. 28– 33. The testimony quoted by Patent Owner (Prelim. Resp. 30–32) includes citations to the prior art to support the opinions set forth and, thus, “disclose[s] the underlying facts or data on which the opinion is based” (37 C.F.R. § 42.65(a)). See Ex. 1003 ¶¶ 95, 103, 118, 165–166 (citing Ex. 1005 ¶¶ 25, 51; Ex. 1008 ¶¶ 5, 6, 123, 127). We decline, at this stage of the proceeding, to discount Dr. Zagal’s testimony in its entirety and will give that testimony the appropriate weight on the points for which it is offered.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,731,202 - PLR Worldwide Sales Ltd. v. Flip Phone Games Inc.Institution deniedPTAB · Apr 29, 2024 · IPR2024-00133 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent necessary, we address the parties’ implicit claim constructions in the context of the arguments on the merits of the Petition.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art at the time of the invention would have had “an undergraduate degree in game design, computer science, computer engineering, or a related field, with at least two years of experience working with computer gaming systems or software application development,” and that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Pet. 12 (citing Ex. 1003 ¶¶ 67–72). Petitioner’s recitation of the level of ordinary is consistent with the invention disclosed in the ’089 patent. It is also not disputed by Patent Owner at this time. See Prelim. Resp. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art, with the exception of the open-ended phrase “at least” which we change to “about.”” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Figure 3 above is an example of the embodiment of Ho showing a wings button, a car, and a hamburger monster in the foreground. Ex. 1004, 5:1–5, Fig. 3. Ho describes how the various interactive information elements are used for game play. See id. at 5:11–38. For example, hamburger monster 56 may be engaged when character 52 fights and successfully slays the hamburger monster, car 58 may be engaged when character 52 enters the car, and “wings” button 54 may be engaged (for example when character 52 wishes to fly) by clicking on icon 54 using a pointer, or by using an enclosure moving between different icons to highlight icon 54 to engage the icon. Id. Because Petitioner has not shown persuasive evidence that a user would not have expected those objects to be ones that the user could interact with, Petitioner has not shown them to be background objects. Petitioner also argues that Ho teaches that activating the interactive information elements “does not disrupt gameplay” and is therefore “outside the primary focus of game play.” Pet. 31–32 (quoting 5:36–38). We do not find that argument persuasive for two reasons. First, we do not see how the fact that activating an element without disrupting game play means the element is in the background. Petitioner and its expert simply make a statement without any explanation. See id.; Ex. 1003 ¶ 122. Such conclusory statements are not persuasive. Second, the language in Ho Petitioner relies on is not about the interactive information element, which Petitioner maps to the hotspot. Instead, Ho describes a sub-screen that appears after the user interacts with one of the interactive information elements, namely when the user slays the hamburger monster: “Similarly, making the character 52 slay the hamburger monster 56 may generate a sub-screen showing an advertisement of a chain of fast food restaurants. The sub-screen may also be overlain on the game environment and may not be disruptive to gameplay.” Ex. 1004, 5:35–38. Petitioner does not persuasively explain how a nondisruptive sub-screen that appears after an interaction with an object makes the object a background object.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,688,089 - PTAB · Apr 25, 2024 · IPR2023-01267 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1–10 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Wager and TS25.321.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“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”)11 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. LG has submitted such a stipulation. Prelim. Reply 1; Ex. 1300. Thus, we do not exercise discretion to deny institution under § 314(a).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Later, when considering what would ultimately become claim 1 of the ’809 patent, the Examiner did not explicitly address whether the ’985 provisional application supported the applicant’s newly introduced reference to two distinct buffers (i.e., a E-DCH buffer and a HARQ buffer). See Ex. 1002, 152–59, 365–83; see also Pet. 15 (“While Wager was discussed during the ’104’s prosecution . . . , it was not substantively addressed for the ’809; . . . the Claims recite, e.g., ‘HARQ buffer’ elements that are not in the ’104’s claims.” (bolding omitted)). For reasons we discuss more fully below, see infra Section IV.C, we determine that the Examiner erred by failing to revisit, in light of the added reference to a HARQ buffer, whether the ’985 provisional application supported the claims that issued in the ’809 patent. This error was material to the patentability of the challenged claims because the applicant’s arguments responding to the Examiner’s Wager rejections depend on Wager not being prior art. See Ex. 1027, 387–88, 560–62, 754; see also Pet. 15–16 (“The Examiner . . . erred by not rejecting the ’809 Claims over Wager.”). Because we determine, under the second part of the Advanced Bionics framework, that the Examiner erred in a manner material to patentability of the challenged claims, we need not address the first part of the Advanced Bionic framework. Thus, we decline to deny institution discretionarily under § 325(d).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“LG argues that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical and computer engineering, computer science, or the equivalent thereof, and . . . two years of experience with networking and wireless communications systems,” and that “[m]ore education can supplement practical experience, and vice-versa.” Pet. 18 (citing Ex. 1003 ¶¶ 53–54). Pantech does not presently contest this. See Prelim. Resp. LG’s proposed articulation is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’809 patent. See Ex. 1001, 1:25–38. Thus, we adopt the above articulation of the level of ordinary skill for this decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party argues that we should construe any particular claim terms, but the parties agree that the claim preambles of independent claims 1 and 6 are limiting. Pet. 18–19 (citing Ex. 1003 ¶¶ 55–57); Prelim. Resp. 17. We agree that, for our decision, we do not need to construe any of the terms explicitly. 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))). We discuss the claim terms below in the context of the prior art.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,313,809 - PTAB · Apr 22, 2024 · IPR2024-00015 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–14 over all petitioned grounds, finding a reasonable likelihood of prevailing and declining to deny institution under §325(d).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. 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 the information presented in the Petition and the Preliminary Response shows “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 institute an inter partes review of all challenged claims on all grounds raised in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“subject matter. Pet. 40–42. As noted above, Petitioner argues that Cheng discloses that frame 20 supports touch panel 10 using support 50. Pet. 40 (citing Ex. 1004, Fig. 1; Ex. 1002 ¶ 142). Petitioner relies on Han for teaching the parabolic curvature that is recited in limitation f, and Petitioner relies on Zhao for teaching a process that induces curvature during installation of the panel. See Pet. 27 (“[I]t would have been obvious for a [person of ordinary skill in the art] to combine the touch screen display device and frame elements of Cheng, with the parabolically curved touch screen elements of Han and the curvature-inducing frame elements of Zhao.” (citing Ex. 1002 ¶ 118)).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“2. Advanced Bionics Part Two In the second part of the Advanced Bionics framework, we consider Becton, Dickinson factors (c), (e), and (f) to determine whether the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, Paper 6 at 10. Factor (c) focuses on the record developed by the Office in previously reviewing the art or arguments. It informs, therefore, the petitioner’s showing under factors (e) and (f), which focus on the petitioner’s evidence of previous Office error regardless of the context in which the same or substantially the same art or arguments were previously presented. For example, if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under factors (e) and (f). On the other hand, if the alleged error is a disagreement with a specific finding of record by the Office, then ordinarily the petitioner’s required showing of material error must overcome persuasively that specific finding of record. Advanced Bionics, Paper 6 at 10–11. For the reasons explained below, we find that Petitioner has shown the Office erred.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“had “at least a bachelor-of-science or comparable degree in mechanical engineering or an equivalent discipline and at least five years of experience designing touch sensors, provided that the educational level can offset the experience level, and vice versa.” Pet. 18 (citing Ex. 1002 ¶¶ 23–24). Patent Owner does not comment on the level of ordinary skill in the Preliminary Response. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, which appears consistent with the ’935 patent and the asserted prior art, except that we delete the qualifier “at least.”” slip op. at 5
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,775,935 - PTAB · Apr 22, 2024 · IPR2024-00014 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–5, finding a reasonable likelihood that claims 1–5 are obvious over Cheng, Han, and Zhao.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary 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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim, and we institute inter partes review as to all of the challenged claims of the ’335 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“limitation, where it would have been obvious for a person of ordinary skill in the art “to modify Cheng’s plate to incorporate Han’s parabolic touch screen curvature along Ax and Ay directions to improve touch detection accuracy.” Pet. 46 (citing Ex. 1033 ¶ 165). Petitioner contends that it would have been obvious to modify Cheng’s frame with Zhao’s curved mounting surfaces and frame, which would induce curvature into the plate. Id. at 47–48 (citing Ex. 1004, Fig. 1; Ex. 1005, Fig. 2; Ex. 1012, Fig. 1; Ex. 1033 ¶¶ 166–167). Petitioner argues that “Cheng’s modified curved plate touch surface would be curved relative to a flat plane defined in part by the short and long edges of frame 20.” Id. at 50. Petitioner asserts that “[a] flat plane would be defined (at least in part) by Cheng’s modified curved edges,” as shown in annotated Figure 1 of Zhao, reproduced below. Id.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“the “focus” of factor (c) and “informs” the petitioner’s showing under factors (e) and (f). As to factor (c), Petitioner asserts, and the record shows, Han, Cao, Shin, and Zhao were only listed or cited to in IDSs and were not addressed in any Office Actions. See Ex. 1032. Further, as Petitioner notes, there were 810 total references, and these references were cited in a single IDS containing 129 additional references. Id. at 76–82; Ex. 1031, code (56). Petitioner further points out that the record reflects that the Examiner only initialed the IDSs, which contained these many references, and did not issue Office Actions, which is sufficient to demonstrate that there is no evidence that the asserted art was substantively evaluated during examination. See Pet. Prelim Reply 3–5. As Advanced Bionics recognizes, a showing of material error varies depending on the degree to which the previously-presented art was substantively addressed by the Office. Advanced Bionics at 10–11. Turning to factor (e), as Petitioner notes, the record is silent as to how the Examiner viewed the prior art listed in IDSs which is asserted here. We recognize that it is difficult to characterize error in a silent record. In this light, we find that Petitioner’s assertion that the Examiner failed to adequately consider the references, which should have resulted in an Office Action because the references clearly disclose the ’335 patent claimed subject matter, serves as sufficient identification of error under factor (e). Pet. Prelim. Reply 5. Moreover, as discussed above and relevant to factor (f), the evidence presented in the Petition is meritorious, which further demonstrates that the combination of the cited prior art was overlooked during prosecution. Accordingly, under the second part of the Advanced Bionics framework, we decline to exercise our discretion to deny institution of trial under § 325(d).” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For the purposes of this Decision, we adopt the assessment offered by Petitioner, except for the inclusion of “at least,” because that articulation is consistent with the ’335 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,281,335 - PTAB · Apr 22, 2024 · IPR2024-00013 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–15, finding a reasonable likelihood that claims 1 and 2, 5–7, and 9–15 are obvious over Chen ’975 and Klein.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary 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.”” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“At this juncture, we do not find support for Petitioner’s proposed interpretation of the plain meaning of the term “sealing element” to include a carve-out of “protection from some, but not necessarily all, dirt, water and other contaminants.” First, we discount Petitioner’s reliance on Patent Owner’s contentions in a related litigation for this interpretation—the claim term in the litigation is for a different patent and relates to a different term. See Ex. 1011, 71. Second, Petitioner’s references to the ’338 patent Specification for the support of this interpretation are directed to sealing window 126, and in the cited descriptions of it, we do not discern any support for the limited view that the protection provided is only from “from some” contaminants. Ex. 1001, 8:12–19, 16:27–34, 16:61–66 (cited in Pet. 42). Instead, the Specification states that “sealing window 126 provides sealing” and “[t]his means sealing window 126 prevents ingress of dirt, water and other contaminants into the interior of the touch sensing apparatus 100.” Ex. 1001, 16:30–33 (emphasis added). This description appears to be consistent with the ordinary meaning of “seal.” For instance, “seal” is defined in the Oxford English Dictionary10 as “means of preventing the passage of gas or liquid into or out of something, esp. at a place where two surfaces meet.” Ex. 3001, 6.d. Accordingly, on this preliminary record, we decline to adopt Petitioner’s proposed carve-out for the ordinary meaning of the term; instead, for the purposes of this decision we use of the ordinary meaning of the term “sealing element” as an element to provide sealing (preventing the passage of contaminants). The parties are invited to provide additional briefing on this issue during trial.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner argues that a person of ordinary skill in the art would have been motivated to use Klein’s optical overlay 10 in the touch display of Chen ’975 for several reasons. Pet. 33 (citing Ex. 1003 ¶ 77). Petitioner asserts that Chen ’975 does not disclose the effectiveness of filter strip 44 as a barrier to contaminants and that the reference provides only minimal details on how to implement filter strip 44. Id. (citing Ex. 1005 ¶ 39). Petitioner contends that a person of ordinary skill in the art would look to Klein, which discloses more details on optical overlay 10, including suitable materials. Id. (citing Ex. 1003 ¶ 77). Specifically, Petitioner points to how Klein discloses features of mounting and assembly and discloses how the optical overlay 10 functions in a way that “[s]ignals from the transmitters 34 may be collimated by the lens 42 of the outer wall 16 on one side of the overlay 10 and focused onto a receiver 36 by the lens 42 on the opposite side of the overlay 10.” Id. at 34 (citing Ex. 1006, 3:37–39, 7:34–38). Petitioner contends that these implementation details are missing from Chen ’975 and that a person of ordinary skill in the would have therefore been motivated to implement Chen ’975’s filter strip 44 using the optical overlay 10 disclosed in Klein. Id. When discussing groove and gasket use in Klein, Petitioner asserts that person of ordinary skill in the art “would have been motivated to implement Chen ’975’s filter strip 44 with the features of Klein’s optical overlay 10 to achieve this ‘sealing or weatherproofing.’” Pet. 35 (citing Ex. 1003 ¶ 81). Petitioner argues that a person of ordinary skill in the art would have recognized that this sealing/weatherproofing would have advantageously enabled Chen ’975’s filter strip 44 to provide “a more robust system that would last longer and/or require less maintenance (e.g., putting in new emitters/detectors when the old ones break)”; “usability in less hospitable environments that may have more contaminants (e.g., outdoors)”; “better performance (e.g., detectors/emitters operating at peak performance without contaminants”; and “the ability to collimate the light from the emitters and focus to at the detectors.” Id. at 35–36.” slip op. at 22
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“[a] two-part framework: (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”); see also Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (listing factors to consider in evaluating the applicability of § 325(d)) (“Becton, Dickinson”). The non-exclusive factors set forth in Becton, Dickinson “provide useful insight into how to apply the framework” of Advanced Bionics under § 325(d). Advanced Bionics at 9. Those non-exclusive factors include: (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 at 17–18. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics at 10.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,281,338 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Apr 17, 2024 · IPR2023-00203 · APJ Jon M Jurgovan · IPR · Final written decision
Claim 16 is unpatentable as obvious over Ellsberry; the Board did not reach the Perego-422 or Perego-422 and Amidi grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we accept Petitioner’s statement of the level of ordinary skill in the art except that we omit the qualifiers “at least” before years of education and experience because they render the level ambiguous and may encompass levels that are beyond ordinary. Otherwise, we find Petitioner’s statement of the level of ordinary skill in the art consistent with the ’912 patent and the applied prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“However, the subsequent emphasized sentences (id. at 8:54–60) could only be understood in favor of Petitioner’s interpretation. If “the command signal is passed through to both associated ranks” and “the command signal is sent to both memory devices,” each rank must have only one memory device. Thus, we agree with Petitioner that this passage means that a rank may have only one memory device. Patent Owner argues that this paragraph of the ’912 patent (id. at 8:44–64) must be read in conjunction with its Figures which show multiple memory devices per rank. PO Resp. 7 (citing Ex. 1001, 6:31–38, 20:64–65, 22:34–35, Figs. 1A, 1B, 2A, 3A; Ex. 2062 ¶¶ 106–107). However, the disputed paragraph refers to “certain embodiments” which do not necessarily correspond exactly to what the Figures depict, and the Figures are described as “exemplary” and “compatible with” or “in accordance with certain embodiments described herein.” See, e.g., Ex. 1001, 3:32–48. We find no statement here or elsewhere in the ’912 patent that a rank must include multiple memory devices, and cannot include a single memory device.” slip op. at 18
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“We agree with Petitioner that the ’244 provisional does not provide written description support under § 112 ¶ 1 for claim 16 of the ’912 patent. There is no mention of “bank address” signals in the ’244 provisional. In order to find that “bank address” signals are present, according to Patent Owner’s arguments and the evidence presented, one would have to (1) assume at least that the ’244 provisional pertains to DDR memory modules (when there is no mention of DDR and there were other types of DRAM devices on the market) because Figure 1 suggests them by its use of chip select signals and the term “rank,” and because they were the most common at the time; (2) understand that DDR DRAMs use bank address signals according to the JEDEC standards; (3) recognize that bank address signals are not mentioned in the ’244 provisional; (4) infer that bank address signals would be included as part of the control signals (even though the other address signals are explicitly mentioned and set out separately); and (5) infer that the bank address signals are used for rank multiplication (when row/ and column/address could have been used for this purpose). This is a chain of inferences too long and speculative to show that the ’244 provisional demonstrates that the inventors had possession of the subject matter of claim 16.” slip op. at 29
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“We agree with Petitioner on this issue, which is currently on appeal before the Court of Appeals for the Federal Circuit. Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., Appeal No. 23-2346, Doc. 14, page 15 (Fed. Cir. Jan. 10, 2024). In an inter partes review, a petitioner “may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). Ellsberry is a printed publication, having been published in December 2006, as Patent Owner acknowledges. See Ex. 1037, code (43) (publication date of Dec. 7, 2006); see also PO Resp. 54 (acknowledging publication in December 2006). Ellsberry is prior art at least under 35 U.S.C. § 102(e)(1), being “an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent.” See Ex. 1037, code (22) (filing date of June 1, 2005). Thus, Petitioner asserts a permissible ground of unpatentability under 35 U.S.C. § 311(b) because it argues that claim 16 is unpatentable under 35 U.S.C. § 103(a) on the basis of prior art (Ellsberry), which is a printed publication. Accordingly, we determine that Ellsberry is prior art to the ’912 patent at least under pre-AIA 35 U.S.C. § 102(e)(1).” slip op. at 35
Patent outcomesUS 7,619,912 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,619,912 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Apr 17, 2024 · IPR2022-00615 · APJ Jon M Jurgovan · IPR · Final written decision
Claim 16 is unpatentable as obvious over Ellsberry; the Board did not reach the Perego-422 grounds because Ground 3 was dispositive.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“We entered an Order for Petitioner to complete the additional discovery as authorized by the Director, and for the parties to propose a briefing schedule for the additional discovery. Paper 42. Petitioner filed the authorized additional discovery as exhibits and a Summary of Responses to the Additional Discovery (Paper 46) along with a Motion to Seal (Paper 43), which we granted (Paper 49). We then authorized a schedule for the parties to brief the applicability of the additional discovery to the issue of whether Google was a real party in interest and the Petition thus time-barred under 35 U.S.C. § 315(b). Papers 51–57. After consideration of the evidence, we determined by Order on Remand from the Director (Paper 62 (parties and Board), Paper 64 (public)) that Google was not a real party in interest and that this proceeding thus was not time-barred.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“After briefing on the additional discovery but before our Order on Remand from the Director, Micron Technology, Inc., Micron Semiconductor Products, Inc., and Micron Technology Texas, LLC (“the Micron entities”) filed a petition and requested joinder to this proceeding. IPR2023-00203, Papers 1, 3. We granted the Micron entities’ petition for inter partes review and joined them as parties on the petitioner side of this case. Id. at Paper 8. A copy of that institution decision was entered in this proceeding. Paper 58. We refer to Samsung and the Micron entities together as “Petitioner” in this Decision.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we accept Petitioner’s statement of the level of ordinary skill in the art except that we omit the qualifiers “at least” before years of education and experience because they render the level ambiguous and may encompass levels that are beyond ordinary. Otherwise, we find Petitioner’s statement of the level of ordinary skill in the art consistent with the ’912 patent and the applied prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“However, the subsequent emphasized sentences (id. at 8:54–60) could only be understood in favor of Petitioner’s interpretation. If “the command signal is passed through to both associated ranks” and “the command signal is sent to both memory devices,” each rank must have only one memory device. Thus, we agree with Petitioner that this passage means that a rank may have only one memory device. Patent Owner argues that this paragraph of the ’912 patent (id. at 8:44–64) must be read in conjunction with its Figures which show multiple memory devices per rank. PO Resp. 7 (citing Ex. 1001, 6:31–38, 20:64–65, 22:34–35, Figs. 1A, 1B, 2A, 3A; Ex. 2062 ¶¶ 106–107). However, the disputed paragraph refers to “certain embodiments” which do not necessarily correspond exactly to what the Figures depict, and the Figures are described as “exemplary” and “compatible with” or “in accordance with certain embodiments described herein.” See, e.g., Ex. 1001, 3:32–48. We find no statement here or elsewhere in the ’912 patent that a rank must include multiple memory devices, and cannot include a single memory device.” slip op. at 18
Patent outcomesUS 7,619,912 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,619,912 - PTAB · Apr 9, 2024 · IPR2023-01270 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–20 on all petition grounds, finding a reasonable likelihood that LG would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. 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 the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District 4 US 20030076783 A1, filed Oct. 19, 2001, published Apr. 24, 2003 (Ex. 1009). 5 US 2004/0223507 A1, filed May 7, 2003, published Nov. 11, 2004 (Ex. 1006). 6 US 6,359,877 B1, filed July 21, 1998, issued Mar. 19, 2002 (Ex. 1008). Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)7 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. Ex. 1300; Paper 24 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“framework is met because Kuchibhotla and Liu were cited in an Information Disclosure Statement (IDS) and because “the relevant teachings of Lucent are substantively similar to those of Khan (Ex. 1010).” Prelim. Resp. 28–29. We agree with Patent Owner that the citation of Kuchibhotla and Liu satisfies the first part of the Advanced Bionics framework. See Advanced Bionics, Paper 6 at 7–8 (“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.”); see also Ex. 1002, 34 (IDS listing Kuchibhotla), 36 (IDS listing Liu); Paper 24 at 2–3 (Petitioner’s acknowledgement that Kuchibhotla and Liu were cited). In the second part of the Advanced Bionics framework, we consider Becton, Dickinson factors (c), (e), and (f) to determine whether Petitioner has demonstrated a material error by the Office. Advanced Bionics, Paper 6 at 10. The Examiner did not substantively discuss Kuchibhotla and Liu and, therefore, factor (c) (the extent to which the asserted references were evaluated during prosecution, including whether a rejection rested on any reference) weighs against denying institution. Furthermore, as explained below in § II.F.1, we agree, on this record, with Petitioner’s contentions as to disputed limitation 1.e and, therefore, determine that factor (f) (the extent to which additional evidence and facts presented in the petition warrant reconsideration of the asserted references or arguments) weighs against denying institution.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a bachelor’s degree in electrical or computer engineering, computer science, or the equivalent thereof, and at least two years of experience with wireless communication systems.” Pet. 13 (citing Ex. 1003 ¶¶ 38–41). Petitioner also contends that “[m]ore education can supplement practical experience, and vice-versa.” Pet. 13 (citing Ex. 1003 ¶¶ 38–41). Patent Owner does not comment on the level of ordinary skill in the Preliminary Response. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, which appears consistent with the ’247 patent and the asserted prior art, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,869,247 - PTAB · Apr 9, 2024 · IPR2023-01269 · APJ Daniel J Galligan · IPR · Institution
Instituted IPR on claims 2 and 3 over all petition grounds; the Board found a reasonable likelihood of prevailing, including on obviousness over Tenny and TS36.300.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“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”)7 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. Ex. 1300; Paper 24 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 view of Marinier’s disclosures and in view of the Examiner’s allowance of the claims despite the Examiner’s findings and the applicant’s apparent failure to respond to those findings during prosecution, we determine that the Office erred in a manner material to the patentability of the challenged claims by allowing the claims over Marinier in combination with Yoo and Narasimha, and we do not deny institution under 35 U.S.C. § 325(d).” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Determination for Claim 2 For the reasons discussed above and based on Petitioner’s contentions and evidence, summarized above, we are persuaded, on this record, that Petitioner shows a reasonable likelihood of prevailing in demonstrating that claim 2 is unpatentable as obvious over the combined teachings of Tenny and TS36.300. Because we are sufficiently persuaded by Petitioner’s obviousness showing, we need not rely on Petitioner’s anticipation ground based on Tenny, which we address above.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, which appears consistent with the ’545 patent and the asserted prior art, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,854,545
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.