- Inductev, Inc. v. Witricity CorporationInstitutedPTAB · May 20, 2024 · IPR2024-00140 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1, 4–10, 12–16, 18, and 19 on all petitioned 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
“under 37 C.F.R. § 42.4(a), we may institute an inter partes review 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(a); see also 37 C.F.R. § 42.108(c). Applying that standard, we institute an inter partes review of all the challenged claims of the ’654 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“First, although InductEV disagrees that the word antenna would exclude coils found within a transformer-like structure, InductEV does not appear to dispute WiTricity’s proposed IEEE definition of antenna as “a device that radiates and/or receives radio waves.” See Prelim. Reply 2–3. We preliminary adopt that construction. But we agree with InductEV that nothing in this construction would exclude a coil found within a transformerlike structure, so long as it either transmits or receives radio waves. We also note that, although WiTricity relies on the generation of near-field flux lines into free space as a way to distinguish an antenna from a transformer, WiTricity does not point to any testimonial or other evidence that a transformer coil does not generate near-field flux lines into free space. See, e.g., Prelim. Resp. 8–16; Ex. 2001, 20–37. Second, we agree with InductEV that the preliminary evidence does not suggest (and WiTricity does not explicitly argue) that the terms transmitting antenna or receiving antenna depart from the ordinary and customary meanings of those terms. Pet. 2. The ’654 patent does refer to a “coupling-mode region” consisting of the area around antennas 114 and 118 of Figure 1 in which “near-field coupling may occur.” Ex. 1001, 2:38–40; see supra Section II.A. But this is the region in which “efficient energy transfer occurs by coupling a large portion of the energy in the near-field of the transmitting antenna to a receiving antenna rather than propagating most of the energy in an electromagnetic wave to the far field”—not a defining characteristic of either the transmitting or receiving antenna. See Ex. 1001, 2:31–38. Thus, for this decision, we preliminarily adopt InductEV’s proposed construction of transmitting antenna as “an antenna that transmits energy” and the proposed construction of receiving antenna as “an antenna that receives energy.” Prelim. Reply 1. This appears to be consistent with the ordinary and customary meaning of the terms and their usage in the ’654 patent. See, e.g., Ex. 1001, 2:26–40. As this is a preliminary construction solely for this decision, the parties may continue to offer evidence and arguments as to these or other claim terms at trial. We do not need to construe any of the other terms explicitly for 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))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show anticipation under § 102, a petitioner must locate each and every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In making this determination, we consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Alternatively, if WiTricity is correct that alignment based on the degree of coupling is not explicitly applicable to the “parked” embodiment, the preliminary evidence suggests that a person of ordinary skill in the art would have had reason to substitute such alignment for alignment based on the output of the sensors that Ross discloses, such as optical sensors, and that this would have predictably led to aligning the two coils regardless of whether the vehicle is parked temporarily on a roadway or parked in a loading/unloading zone. See Ex. 1003 ¶¶ 246–248 (opining that a person of ordinary skill would have understood that one may obtain the “optimum lateral position” of the vehicle coil by sensing the degree of coupling “[i]nstead of” using sensors (quoting Ex. 1007, 13:21))); KSR, 550 U.S. at 416 (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”); Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (“[I]f there’s a known technique to address a known problem using ‘prior art elements according to their established functions,’ then there is a motivation to combine.” (citing Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021))). We also find persuasive, on the present record, InductEV’s argument that claim 13 does not require control based on the degree of inductive coupling while the receiving antenna is being guided into the recited “first alignment position.” See Prelim. Reply 5. Whereas limitation 13[b] requires such control after the receiving antenna is already in the “first alignment position” (e.g., during fine alignment while Ross’s vehicle is parked in the loading/unloading zone), there is no such requirement in limitation 13[a] while the receiving antenna is being moved to the “first alignment position” (e.g., while Ross’s vehicle leaves the electrified roadway and parks in the loading/unloading zone).” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,466,654 - PTAB · Apr 26, 2024 · IPR2024-00064 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The Director’s Memo provides that “[c]onsistent with Sotera Wireless, Inc.,[7] 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’s Memo 3. With our authorization, Petitioner has filed a stipulation which stipulates that “[i]f the PTAB institutes the pending IPR in IPR2024-00064 . . ., then Samsung will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR in the . . . district court Case 2:22-cv-00462-JRG-RSP.” Ex. 1082, 1.8 We determine that the language of this stipulation sufficiently comports with the language of the Director’s Memo, consistent with Sotera Wireless, Inc. See Director’s Memo 3. We accordingly decline to” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art at the relevant time (“POSITA”) would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, or a related field, and two-three years of experience with multimedia and touch interface technologies, or the equivalent, with additional education substituting for experience and vice versa.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner construes the terms “interface regions,” “gesture,” “interface definition module,” “detection module,” and “action management module.” Pet. 8–10. Patent Owner agrees with some of these constructions and asserts that resolution of others are unnecessary at this stage. Prelim. Resp. 4–6. Because none of these terms are in dispute, none of these terms or any other terms require construction at this stage. 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))). The parties are free to present any proposed construction of any claim term in subsequent briefing.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“At this stage, we disagree with Patent Owner. As we understand Lee’041, the defined interface regions do not remain static, as Patent Owner argues. Rather, we agree with Petitioner at this stage that Slide-to-Lock feature 18 dynamically appears on the display “where a part of region 16 was previously.” Pet. 27. As can be seen from Figures 2A and 2B of Lee’041, reproduced above, Hold to Talk region 16 covers a bottom portion of the screen (shown with Petitioner’s pink annotation). When Hold to Talk region 16 in Figure 2A is pressed and held by the user’s finger, Slide-to- Lock feature 18 appears (in Figure 2B) in a part of the same area of the screen as Hold to Talk 16 region was displayed. See Ex. 1014, 3:33–36; Figs. 2A–2B. Comparing these two figures, the region 16 for Hold to Talk in Figure 2A shrinks in size in Figure 2B to accommodate Slide-to-Lock feature 18. Thus, Patent Owner’s assertion that “the function associated with each of the defined regions remains static” overlooks that the function of part of the Hold to Talk region 16 is changed to be a Slide-to-Lock feature 18. See Prelim. Resp. 8.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,552,030 - PTAB · Apr 12, 2024 · IPR2024-00056 · APJ Scott Raevsky · IPR · Institution
The Board instituted review of claims 1, 2, 4, 5, and 9 on all four asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Taken holistically, we find Patent Owner’s arguments for discretionary denial unavailing. Although there is no stay in the District Court, this factor weighs only marginally in favor of exercising our discretion to deny institution. The trial court date is set some months earlier than our projected statutory deadline, but the trial date may change, and the parties provide no statistics on median time to trial in the relevant district. Thus, the trial date weighs only slightly in favor of exercising our discretion to deny institution. See Director’s Memo (“[T]he proximity to trial should not alone outweigh all of those other factors.”). Further, although there is an overlap in claims asserted in the district court and before the Board, Patent Owner acknowledges that this proceeding “would not cover any of the references that Petitioner[] raised in the District Court Litigation,” so the lack of overlap in issues weighs against exercising discretion. See Prelim. Resp. 19. We also agree with Petitioner that there has been little activity in the District Court litigation, such as the issuance of any substantive orders. See Pet. 74; Fintiv, Paper 11 at 9–10. In sum, although there is no stay and an early trial date, we find that the uncertainty of that trial date, the current lack of progress of the District Court litigation, and the lack of overlapping issues weigh against exercising our discretion. See Director’s Memo 2 (“[T]he precedential import of Fintiv is limited to facts of that case.”). We therefore need not reach Petitioner’s assertion of compelling merits. See Pet. 74; CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 6 (Vidal Feb. 27, 2023) (precedential) (“The Board should first assess Fintiv factors 1–5; if that analysis supports discretionary denial, the Board should engage the compelling merits question.”).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’949 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that A person of ordinary skill in the art at the relevant time (“POSITA”) would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, or a related field, and two-three years of experience with multimedia and Internet-related communications technologies, or the equivalent, with additional education substituting for experience and vice versa. Pet. 7 (citing Ex. 1002 ¶¶ 28–30). Patent Owner agrees with Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 3. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’949 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner proposes constructions for the terms “multimodal message,” “service information,” “client application,” and “pointer.” Pet. 8–13. Patent Owner does not dispute any of these constructions. Prelim. Resp. 3–4. Patent Owner also asserts that Petitioner appears to treat the preamble of claim 1 as limiting and agrees that it is limiting. Id. at 4. Because none of these terms are in dispute, none of these terms require construction at this stage, and we need not determine whether the preamble of claim 1 is limiting. 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))). Petitioner also asserts that the term “interactive multimodal message” has its plain meaning, but Petitioner does not explain what that plain meaning is. Pet. 8–9. Patent Owner agrees with Petitioner that this term should have its plain meaning but also provides a construction for “interactive.” Prelim. Resp. 3; see also id. at 7. We address the meaning of this term in the context of the parties’ merits arguments below.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,929,949 - Medivis, Inc. v. Novarad Corp.Some claims unpatentablePTAB · Apr 12, 2024 · IPR2023-00045 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–4, 6, and 7 are unpatentable over Jones and/or Doo; claim 5 was not shown unpatentable because the obviousness grounds lacked adequate motivation to combine.
RulingsFinal written decision- Skill levelOther
“A. Level of Ordinary Skill in the Art” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“2. “augmentation tag” Petitioner proposes the following construction for “augmentation tag”” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Accordingly, Petitioner persuades us that Jones discloses limitation” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“reasoning why the POSITA would be motivated to combine, ‘what was known in the art at the relevant time,’ whatever that may be.” PO Resp. 42. We agree. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (citation omitted). Rather, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the” slip op. at 53
Patent outcomesUS 10,945,807 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,945,807 - Sonos, Inc. v. Google LLCAll claims unpatentablePTAB · Apr 4, 2024 · IPR2022-01592 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–3, 8–12, 14–18, and 20 are unpatentable: Rosenberger anticipates all challenged claims, and Rosenberger combined with Kim renders claim 11 obvious.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Decided for petitioner
“would be used in a civil action under 35 U.S.C. § 282(b), as articulated by the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and subsequent cases. See 37 C.F.R. § 42.100(b). Under the standard set forth in Phillips, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “Absent lexicography or disavowal, we do not depart from the plain meaning of the claims.” Luminara Worldwide, LLC v. Liown Elecs. Co. Ltd., 814 F.3d 1343, 1353 (Fed. Cir. 2016). In order for a patentee to act as its own lexicographer, it must “clearly set forth a definition of the disputed claim term” and “clearly express an intent to redefine the term.” Thorner, 669 F.3d at 1365 (internal quotation marks and citations omitted). Likewise, disavowal occurs only when there is a clear and unmistakable intent to limit the invention or exclude a particular feature from the claimed invention. Luminara, 814 F.3d at 1353. And, there is a “heavy presumption,” that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“would be used in a civil action under 35 U.S.C. § 282(b), as articulated by the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and subsequent cases. See 37 C.F.R. § 42.100(b). Under the standard set forth in Phillips, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “Absent lexicography or disavowal, we do not depart from the plain meaning of the claims.” Luminara Worldwide, LLC v. Liown Elecs. Co. Ltd., 814 F.3d 1343, 1353 (Fed. Cir. 2016). In order for a patentee to act as its own lexicographer, it must “clearly set forth a definition of the disputed claim term” and “clearly express an intent to redefine the term.” Thorner, 669 F.3d at 1365 (internal quotation marks and citations omitted). Likewise, disavowal occurs only when there is a clear and unmistakable intent to limit the invention or exclude a particular feature from the claimed invention. Luminara, 814 F.3d at 1353. And, there is a “heavy presumption,” that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Ex. 1001, 7:4–7, 21:57–67, 24:13–16, 29:18–20. We do not dispute that, without the microphone or some similarly functioning component, the device could not detect the input. However, Petitioner’s interpretation would be equally applicable if the limitation were “detect an input” and fails to give meaning to the modifier “voice” in the phrase “detecting a voice input” as recited. The abstract of the ’311 Patent explains that the device “detects a voice input” and “determines a first score of a criterion associated with the voice input.” Ex. 1001, code (57). Determining a score for the detected voice input implies some level of identification of the input as a voice, and not mere perceiving or sensing by the microphone. And, the Specification states that “in accordance with some implementations, a voiceactivated device determines whether the surrounding noise is sufficiently interfering with detection of spoken hotwords for waking up the device . . . or other spoken voice inputs.” Id. at 5:65–6:5. Thus, the ’311 Patent discloses that the device distinguishes between background noise and the detection of specific voice inputs like hotwords. We conclude that the ordinary and common meaning of “detecting a voice input” in the context of the claims and Specification of the ’311 Patent requires the device to identify the input as voice.6 In sum, we conclude that the ordinary and common meaning of “detecting a voice input” requires a process for identifying that an audio input includes voice and does not exclude speech recognition.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Id. at 4:6–14, 8:17–24, 9:57–61, 14:10–18. Cited Figure 4 is a flowchart in which the first step is “Speech Trigger or Command Recognized.”7 In these passages, Rosenberger discloses a method and device utilizing embedded software and circuitry that receives and recognizes a spoken trigger phrase (such as “Hello Voice Control”) and takes action based thereon. Thus, Rosenberger discloses a process for identifying that an audio input includes voice or “detecting a voice input” as recited.” slip op. at 24
Patent outcomesUS 11,024,311 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,024,311 - Sonos, Inc. v. Google LLCAll claims unpatentablePTAB · Mar 15, 2024 · IPR2022-01594 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–3, 5–8, 10–13, and 15 are unpatentable: Rosenberger anticipates all challenged claims, and Rosenberger combined with Kim renders claims 5, 10, and 15 obvious.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“PO Resp. 12–15; PO Sur-reply 1–6. Petitioner also does not argue either lexicography or disavowal. Tr. 8:9–17. We do not find either (1) lexicography or (2) disavowal, because (1) there is no clearly set forth definition of “detecting a voice input’ in the ’128 patent or (2) evidence of a clear and unmistakable intent to disavow the ordinary and customary meaning of “detecting a voice input.” Accordingly, we apply the ordinary and customary meaning of “detecting the voice input” in light of the language of the claims, specification, and file history (the intrinsic evidence). Thorner, 669 F.3d at 1365. In the Response and Reply, the parties assert different views of the ordinary and customary meaning of “detecting the voice input” as recited in the independent claims of the ’128 patent.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a “POSITA [(person of ordinary skill in the art)] in the technology field of the ’128 Patent would have had the equivalent of a four-year degree from an accredited institution (typically denoted as a B.S. degree) in electrical or computer engineering, or a related field, and approximately 2–4 years of experience in the field of voice and/or audio processing, or an equivalent level of skill, knowledge, and experience.” Pet. 22 (citing Ex. 1002 ¶¶ 63– 65.). Patent Owner does not present a position on the level of ordinary skill in the art at the time of the invention. See generally PO Resp. Petitioner’s proposal is consistent with the technology described in the Specification of the ’128 patent and the cited prior art. We adopt Petitioner’s proposed level of skill in the art.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Id. at 4:6–14, 8:17–24, 9:57–61, 14:10–18. Cited Figure 4 is a flowchart in which the first step is “Speech Trigger or Command Recognized.”12 In these passages, Rosenberger discloses a method and device utilizing embedded software and circuitry that receives and recognizes a spoken trigger phrase (such as “Hello Voice Control”) and takes action based thereon. Thus, Rosenberger discloses a process for identifying that an audio input includes voice or “detecting a voice input” as recited.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Id. at 63, 65–66. We find Petitioner’s articulated reasons for combining the relevant teachings of Rosenberger and Kim to be well-supported. The Response contains this single sentence criticizing Petitioner’s showing of motivation to combine: “[A]ll of the Petition’s motivations to combine are clearly rooted in hindsight because, in Rosenberger, only devices that recognize a particular command (i.e., the devices that a voice command is intended for in the disclosure of Kim) need to participate in the arbitration process.” PO Resp. 30 (citing Ex. 2012 ¶ 87). This argument is not developed or explained and it contradicts the disclosure of Rosenberger. In Rosenberger, all the devices that detect and recognize a voice input (the trigger phrase) participate in the coordination or arbitration process. See, e.g., Ex. 1003, 9:57–10:33. This argument lacks merit. We find that the combination of Rosenberger and Kim teaches all the limitation of claims 5, 10, and 15 of the ’128 patent and that a motivation to combine the relevant teachings of these references existed. We conclude that a clear preponderance of the evidence establishes that claims 5, 10, and 15 of the ’128 patent are unpatentable as obvious.” slip op. at 30
Patent outcomesUS 9,812,128 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,812,128 - Medivis, Inc. v. Novarad Corp.No claims unpatentablePTAB · Mar 6, 2024 · IPR2023-00042 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–6 and 11–20 were not shown unpatentable: Doo did not disclose the claimed volume, the Doo-Amira combination lacked a persuasive rationale, and the other references were not shown publicly accessible.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“We adopt Petitioner’s proposed level of skill, except that we excise part of Petitioner’s definition to produce the following modified version: a bachelor’s degree in computer science, electrical engineering, or a related field with several years of experience in the design, development, and study of augmented reality devices and . . . familiarity with conventional medical imaging data and visualization of data for medical procedures . . . . Our edit removes the alternative of “working with a team including someone with such familiarity” because one’s role in a team may be tangential to their personal experience with medical imaging. Regardless, had we adopted Petitioner’s original definition, our decision would not have changed.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties propose constructions for the claim terms “three- dimensional (3D) data,” “inner layer(s) of the patient,” “confined within a virtual 3D shape,” and “being having.” Pet. 11–14; PO Resp. 11–18. We do not need to construe any of these claim terms in order to resolve the issues presented in this proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“First, neither the Petition nor Dr. Kazanzides explains how Doo’s curved plane teaches the claimed “volume.” See Pet. 36–37; Ex. 1012 ¶¶ 74–75 (essentially repeating the Petition). The Petition merely asserts that Doo’s image in Figure 7 “is confined within the volume of the virtual 3D shape illustrated in Figure 9,” without explaining how the shape of Figure 9 has a “volume.” Pet. 37. The Reply does no better, asserting that “Doo’s shape 532 in Figure 9 and shape 432 in Figure 7 are virtual 3D shapes.” Reply 18. This statement is conclusory and does not explain how Doo’s “false 3D” shapes have volume. Petitioner further attempts to establish that Doo’s disclosure of Figure 9’s shape 532 as “mimic[ing] the surface curvature of the patient’s body” is evidence that Doo discloses a 3D shape. Id. (citing Ex. 1008 ¶ 76). This argument, however, is unpersuasive because it takes Doo’s statement out of context. Doo explains that Figure 9’s warped “two-dimensional image 532 . . . mimic[s] the surface curvature of the patient’s body,” not that it has volume. See Ex. 1008 ¶ 76 (emphasis added). In other words, even though Doo’s shape 532 of Figure 9, when projected on a patient’s body (as in Figure 7) may appear to a surgeon like a 9 Our Institution Decision did not rely on Petitioner’s theory based on Doo Figures 7–9. We discuss our Institution Decision’s reasoning below under Petitioner’s second theory based on Doo Figures 6 and 11. half-cylinder shape having a volume, Doo’s technique avoids rendering a 3D shape like a half-cylinder (hence calling these “false 3D shapes”) because it instead simulates the body’s curvature with a mere curved two-dimensional plane. Second, we find that Doo’s curved plane does not, in fact, have a volume.10 Instead, Doo’s curved plane is a 2D plane merely “wrapped around an axis.” See Ex. 1008 ¶¶ 75–76. As Patent Owner persuasively argued at the hearing, Doo’s curved plane is not “half of a cylinder. It’s just a wrapped piece of paper.” Tr. 33:14–15. Just as curving a piece of paper would not give the curved paper a half cylinder’s volume, neither does curving Doo’s flat 2D plane create a half cylinder with volume. Viewed another way, curving a 2D plane does not impart volume to the plane any more than curving a 1D line into a parabola would impart area to the 1D line.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“The U.S. Supreme Court has emphasized that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Petitioner’s argument fails this standard. Petitioner asserts a generic rationale that one of ordinary skill in the art would have applied Amira to Doo “to take advantage of the visualization technology disclosed in Amira (or any similar visualization software).” Pet. 41. But Petitioner’s assertion contains no explanation why one of ordinary skill would have taken advantage of Amira’s technology in the context of Doo. Petitioner’s rationale is so vague and broad that it could be applied to combine any two references because it merely asserts that one reference would “take advantage of the . . . technology disclosed in” another. See, e.g., In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017) (explaining that “a finding that a combination of prior art would have been . . . ‘intuitive’ is no different than merely stating the combination ‘would have been obvious’”). This approach wholly misses KSR’s “articulated reasoning” standard. See KSR, 550 U.S. at 418. The Reply’s assertion that reducing a surgeon’s cognitive load in Doo “suggests an improvement on conventional medical imaging displays, such as disclosed in Amira,” fares no better. Reply 20. This assertion again fails to explain why one of ordinary skill in the art would have combined Amira with Doo. For instance, Petitioner provides no explanation as to how Amira’s display would further reduce cognitive load. See Reply 19–20 (only vaguely referring to Amira’s “[t]racking capabilities [that] allow for . . . interaction with the visualization” (Ex. 1005, 14, 26)). Not only that, but Doo itself presents a solution for the cognitive load problem. See Ex. 1008 ¶ 14 (“The present invention is particularly adapted to manage the multitude of medical images needed to be viewed by a surgeon during an operation so that a surgeon is not required to look away from the patient, so that the surgeon does not have to sustain heavy cognitive loading.”). Petitioner does not persuasively explain why one of ordinary skill in the art would turn to yet another reference (like Amira) for an additional solution, or even what that solution would be.” slip op. at 23
Patent outcomesUS 11,004,271 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,004,271 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · Feb 20, 2024 · IPR2023-01208 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR of claims 1–18 on all asserted grounds after finding a reasonable likelihood that the Cook and Bennett combination renders the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted 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.” 35 U.S.C. § 314(a). Further, when instituting an inter partes review, we “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). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the following 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 [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 5
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two years of industry or equivalent research experience in the field of wireless energy transfer.” Pet. 6 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37–41. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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). Neither party proposes an express construction for any claim terms. Pet. 7. We determine that no claim terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,912,687 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · Feb 20, 2024 · IPR2023-01182 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR on claims 16 and 17 for all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the following 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 [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 5
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two to three years of industry of equivalent research experience in the field of wireless energy transfer.” Pet. 7–8 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37– 41. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted 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.” 35 U.S.C. § 314(a). Further, when instituting an inter partes review, we “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). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,461,719 - Sonos, Inc v. Google LLCInstitution deniedPTAB · Feb 8, 2024 · IPR2023-01288 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that Rosenberger anticipated any challenged claim or that Rosenberger and Jang rendered claims 2, 3, 9, 10, and 12 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Technology, Inc., 815 F.3d 1358, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art “would have had the equivalent of a fouryear degree from an accredited institution (typically denoted as a B.S. degree) in electrical or computer engineering, or a related field, and approximately 2-4 years of experience in the field of speech processing, or an equivalent level of skill, knowledge, and experience.” Pet. 8 (citing Ex. 1002 ¶¶ 36–39). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the asserted prior art. 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).” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“construction in a footnote addressing “perform[ing] speech recognition.” Prelim. Resp. 14 n.1 (“Patent Owner does not concede to the correctness of the ITC’s construction of ‘perform[ing] speech recognition,’ particularly its finding that ‘hotword[6] detection’ necessarily includes speech 5 In the Initial Determination of Violation of Section 337 and Recommended Determination on Remedy and Bond (Ex. 2001 (“Initial Determination”)), the plain and ordinary meaning of “perform speech recognition” was construed “to include[] hotword detection” (id. at 49). 6 According to the ’748 patent, a “hotword” is a predetermined audio command or audio trigger such as “Hello phone,” “Okay car,” “Hello device,” “Give me directions,” “what’s the time,” “make a call,” “go silent,” or “play.” Ex. 1001, 2:66–67, 4:12, 5:14–15, 5:40, 9:61–62, 10:6–7, 20:16– recognition.”). Although Patent Owner does not “concede to the correctness” of this construction in this proceeding, Patent Owner does not argue what, if anything, is wrong with this construction. Before the ITC, Patent Owner argued that the plain and ordinary meaning of “[perform/performing] speech recognition” was not broad enough to cover “hotword detection.” See Ex. 2001, 30. The ITC found Patent Owner’s position to be “untenable” because hotword detection “is a form of speech recognition in every ordinary sense.” Id. at 31. We agree with the ITC that the plain and ordinary meaning of performing speech recognition includes hotword detection. Moreover, the ’748 patent describes using speech recognition for hotword detection. Ex. 1001, 4:57–63 (“[A]udio input modules may be operable to utilize speech recognition techniques . . . to determine whether the obtained audio input includes a predetermined audio command.”). We apply the plain and ordinary meaning and consider the meaning of “perform/performing speech recognition” to include hotword detection. 17, 20:20–21, 24:29–30, 24:38–39, 24:40–41, 24:43–44, 24:51, 25:3–4. The ’748 patent further provides:” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“positions relating to this limitation. See Pet. 33–34 (Ex. 1003, 8:20–39); Prelim. Resp. 4–5 (citing Ex. 1003, 8:20–32). The cited passage in Rosenberger states: Upon receiving and recognizing a speech trigger phrase and determining that it is in a better position to handle subsequent user interaction than any other device that simultaneously recognized the same speech trigger phrase (see device coordination discussion below) . . . the device beeps, changes its status light 34 or plays a prerecorded or synthesized audio message (e.g. "How may I help you?") through speaker 19 and/ or 20 to prompt the user to say one of the speech commands from a known vocabulary or grammar stored in the speech pattern memory 14. Ex. 1003, 8:20–32 (emphasis added). This passage indicates speech recognition to recognize the trigger phrase (i.e., hotword detection) is performed by all the devices that receive the trigger phrase prior to any coordination determination. This passage supports Patent Owner’s argument and contradicts Petitioner’s contention that Rosenberger discloses this limitation. We agree with Patent Owner that the flaw in Petitioner’s reasoning is that the devices disclosed in Rosenberger upon receiving a spoken audio input do not make any determination as to whether speech recognition, particularly hotword detection, should be performed. All the devices perform speech recognition by performing hotword detection before the coordination determination is made. See Ex. 1003, 8:20–32.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,632,748
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.