- PTAB · May 20, 2024 · IPR2024-00208 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood of success on the asserted obviousness grounds and declining discretionary denial under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Office conducted any analysis or evaluation of Wu. There is no mention of Wu by the Examiner and no articulated consideration of Wu by the Office. As noted above, Advanced Bionics provides that “[a]t bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Advanced Bionics, Paper 6 at 9 (emphasis added). Here, despite Wu (or more precisely, the substantially identical Wu. Publ.) having been previously presented to the Office, we are not directed to, and we cannot find, any analysis or evaluation by the Office of Wu in the file history. See generally Ex. 1002.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(“Petitioner”) filed a Petition for inter partes review of claims 1–20 of U.S. Patent No. 11,010,709 B2 (Ex. 1001, “the ’709 patent”). Paper 2 (“Pet.”) at 1. SES-Imagotag Inc. (“Patent Owner”) filed a Preliminary Response. Paper 11 (“Prelim. Resp.”). With our authorization, Petitioner filed a Preliminary Reply (Paper 12, “Prelim. Reply”) and Patent Owner filed a Preliminary Sur-reply (Paper 13, “Prelim. Sur-reply”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“necessary to resolve the controversy involved in this IPR, and the terms of the ’709 Patent should be given their ordinary and customary meaning.” Pet. 4. Patent Owner does not propose any claim constructions. See generally Prelim. Resp. At this stage, no need exists to expressly construe any claim terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))).” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“planogram” (id. at 37). We determine that these contentions lack merit and Petitioner has sufficiently shown that Wu discloses these limitations.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,010,709 - PTAB · May 20, 2024 · IPR2024-00188 · APJ Terrence W Mcmillin · IPR · Institution
Instituted IPR of claims 1–15 on both §103 grounds because Petitioner showed a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition, the Preliminary Response, the Reply, and the Sur-reply “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 that follow, we institute an inter partes review as to claims 1–15 of the ’669 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“systems, or an equivalent field with two or more years of work experience in electrical engineering, wireless telecommunication systems, computer engineering, or an equivalent field.” Pet. 8–9 (citing Ex. 1003 ¶ 33). Petitioner further notes that “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. at 9. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art at this time. Prelim. Resp. 18 n.5 (“For purposes of this [Preliminary Response] only, Patent Owner applies Petitioner’s articulation of the level of skill in the art.”). For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art.5 It is supported by the testimony of Dr. Tentzeris and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art references. Cf. 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 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“the ‘communication stage’ recited in element [1.3] is simply a ‘communication module or unit’ that communicates data.” Reply 8 (citing Ex. 1001, 1:49–50, 2:19–20, 3:24–28, 3:63–65; Ex. 1003 ¶¶ 75–76). In response, Patent Owner argues that “Petitioner offers a brand-new claim construction for ‘communication stage,’” which “the Petition never offered,” and also that “Petitioner offers its new construction based exclusively on attorney argument without the benefit of evidence in support.” Sur-reply 6, 9. To the extent necessary to determine whether to institute trial, we address these arguments as part of our unpatentability analysis below. See infra § II.D.3. For purposes of this Decision, we determine that no claim terms require express construction. See, e.g., 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“supposed well-recognized need in synchronizing video displays and that “[t]he only evidence Petitioner offers to explain why a POSITA would have modified Swafford with Masumoto relies on hindsight and two references besides Swafford and Masumoto—Yamada (Ex. 1010) and Kipp (Ex. 1006).” Prelim. Resp. 34–35. At least at this stage, as Petitioner’s contentions are supported by evidence including an expert declaration and Patent Owner’s contrary arguments are unsupported attorney argument, we give more weight to Petitioner’s contentions and find them sufficient to support the asserted combination of teachings. However, we do agree with Patent Owner that Petitioner’s contention that the cited combination of teachings is supported “because of the structural similarity between Swafford’s and Masumoto’s devices” (Pet. 54– 55) does not provide a motivation to combine. Prelim. Resp, 35–36. The only structural similarity relied on by Petitioner in support of this argument is that Swafford and Masumoto both disclose use of LCDs. See Pet. 54–55. Petitioner provides an inadequate explanation as to how or why the use of LCDs which are a common form of video displays would motivate the combination of the relied-upon teachings. But, this deficiency does not undermine the persuasiveness of Petitioner’s overall showing of motivation to combine. We determine that Petitioner shows sufficiently, for the purpose of institution, that a person of ordinary skill in the art would have been motivated to combine the relied-upon teachings of Swafford and Masumoto with a reasonable expectation of success.” slip op. at 41
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,405,669 - PTAB · May 20, 2024 · IPR2024-00189 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–9 on all asserted §103 grounds, finding a reasonable likelihood of success based on Fujiwara, Fujiwara and Arntzen, Bandy and Fowler, and Bandy, Fowler, and Arntzen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will succeed on all its challenges to patentability, namely: claims 1–9 as obvious over Fujiwara; claims 1–9 as obvious over the combined teachings of Fujiwara and Arntzen; claims 1– 5 and 8–9 as obvious over the combined teachings of Bandy and Fowler; and claims 1–5 and 8–9 as obvious over the combined teachings of Bandy, Fowler, and Arntzen. XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’340 Patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial;” slip op. at 52
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan”) as one having “at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s Degree, or higher degree).” Pet. 9 (citing Ex. 1009, Tentzeris Decl. ¶ 34). Petitioner also states that “[a]lternatively, a POSITA would have had a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field with two or more years of work experience in electrical engineering, wireless telecommunication systems, computer engineering, or an equivalent field” and that “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of these requirements.” Id. (citing Ex. 1009, Tentzeris Decl. ¶ 34). Patent Owner does not comment of the level of ordinary skill in the art. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As the subject matter of the ’340 patent and the references appears to be consistent with the level of ordinary skill in the art described by Petitioner, we apply Petitioner’s description for purposes of the Decision. slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner proposes that the terms of the ’340 patent claims should be given their plain and ordinary meaning as understood by a person of ordinary skill in the art. Pet. 3. Patent Owner contends that Fujiwara does not use the term “planogram” and that Petitioner has not demonstrated Fujiwara discloses the claimed planogram. Prelim. Resp. 19–22. The ’340 patent states “[a] planogram lists the locations of all the electronics labels [3] and of the items on sale in a sales area.” Ex. 1001, 6:35–37. Patent Owner also notes that Fowler states that “[a] planogram is a diagram of fixtures and products that illustrates how and where retail products should be displayed, usually on a store shelf, bin or counter in order to influence consumer selection.” Prelim. Resp. 30 (citing Ex. 1007 ¶ 221). In view of these descriptions of a planogram, we agree with the parties that no further construction of this term is required. slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,674,340 - Affordable Wire Management, LLC v. Cambria County Association For The Blind And Handicapped, Inc.InstitutedPTAB · May 13, 2024 · IPR2024-00139 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds; it found a reasonable likelihood that the CAB Website and CAB Whitepaper render claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the evidence currently of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’551 patent.” slip op. at 2
- Skill levelSkill level board ownOther
“had a bachelor’s degree in a pertinent discipline, such as electrical engineering, civil engineering, mechanical engineering or equivalent with 2– 3 years of experience in electrical utility systems, planning, and design” and “the number of years of experience could be higher or lower given the level of education and vice versa.” Pet. 23. Patent Owner contends Petitioner’s 6 The parties have not directed our attention to any objective evidence of obviousness or non-obviousness. level of ordinary skill is too high. Prelim. Resp. 32. According to Patent Owner, a person of ordinary skill in the art would have had “an associate degree in an engineering discipline, and 1–2 years’ experience in electrical power systems” and “[a] lack of work experience can be remedied by additional education, and vice versa.” Prelim. Resp. 31 (citing Ex. 2001 ¶ 21). At this stage, we do not discern a meaningful difference between the parties’ positions regarding the level of ordinary skill in the art, and we preliminarily determine a person of ordinary skill in the art would have had a bachelor’s degree in an engineering discipline and two years of experience in electrical power systems.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Although we determine it is unnecessary to expressly construe “multi- function line” at this stage, we present the following discussion and encourage the parties to further address the term in future briefing. As an initial matter, we note that the specification distinguishes the claimed “multifunction line” from messenger wires of the prior art. First, the specification states that in the prior art, “a conductor or grounding wire [was] disposed adjacent the messenger wires; hereinafter, such a wire is identified as a grounding conductor.” Ex. 1001, 1:67–2:3.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“unpatentable based on the CAB Website and the CAB Whitepaper.8 Among other things, the ’551 patent recognizes that the need for a grounding conductor was known in the art, acknowledging the known use of a wire adjacent to the messenger wires in the prior art and stating that “[t]he grounding conductor must be coupled to a current path to the ground.” Ex. 1001, 1:60–2:16. The CAB Whitepaper states that the electrical industry is “heavily focused on grounding and bonding of metallic parts,” discusses NEC standards, and refers to a “grounded steel messenger wire.” Ex. 1006, 14. Notably, neither the CAB Website nor the CAB Whitepaper discloses a grounding wire adjacent to the messenger wire; instead, at this stage we are persuaded by Petitioner’s arguments that a person of ordinary skill in the art would have understood that the CAB Website and the CAB Whitepaper to depict a grounding system that includes metal-to-metal contact between metal messenger wires, metal brackets, and metal piles. Pet. 48–51; Ex. 1002 ¶¶ 108–112. It is not currently clear on this record that Patent Owner’s arguments that the references’ messenger wires being “grounded” meaningfully distinguishes the claim’s requirements of a grounding system. Even under Patent Owner’s proposed interpretation of “multi-function line” (Prelim. Resp. 32, 36), the record supports Petitioner’s positions that a person of ordinary skill in the art would have understood the CAB Website and the CAB Whitepaper to disclose or at least reasonably suggest a messenger wire acting as a tension member that supports cable hangers and current wires 8 On the current record, we question whether Petitioner has adequately advanced arguments for combining the teachings of the CAB Website and the CAB Whitepaper. The parties are encouraged to address this issue. and that provides a current path as a grounding conductor. We are not currently persuaded that the ’551 patent’s statement that “a messenger wire is not a ‘multi-function line’” excludes the messenger wires of the CAB Website or the CAB Whitepaper (Prelim. Resp. 33–34 (citing Ex. 1001, 2:27–40), 44–48); read in the context of the surrounding portions of the specification, we preliminarily understand that statement to mean that a messenger wire that is not conductive does not fall within the definition of a “multi-function line.” For example, the specification states: “The grounding system includes a multi-function line assembly and a number of conductive mounting assemblies. Each conductive mounting assembly is structured to be, and is, coupled to the multi-function line and to a conductive pile. This configuration provides a path to ground for a current in the multi-function line assembly.” Ex. 1001, 2:27–33. We are also not currently persuaded by Patent Owner’s arguments that the phrase “structured to” in claim 1 distinguishes the references’ teachings. In sum, at this stage, we are preliminarily persuaded by Petitioner’s arguments and evidence that the CAB Website and CAB Whitepaper disclose or at least reasonably suggest the multi-function line as claimed, as well as the remaining limitations of claim 1.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,177,551 - Affordable Wire Management, LLC v. Cambria County Association For The Blind And Handicapped, Inc.InstitutedPTAB · Apr 24, 2024 · IPR2024-00178 · APJ James P Calve · IPR · Institution
The Board instituted IPR on claims 1–10, 14–22, 24, and 25 on all asserted grounds, finding a reasonable likelihood of prevailing on the Carr–Almy obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“degree in a pertinent discipline, such as electrical engineering, civil engineering, mechanical engineering or equivalent with 2–3 years of experience in electrical utility systems, planning, and design.” Pet. 20 (citing Ex. 1002 ¶ 51). Petitioner also asserts that the number of years of experience could be higher or lower given the level of education and vice versa. Id. (citing Ex. 1002 ¶ 51).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On the current record, we preliminarily interpret “electrical cables” as “wiring that conducts current or signals.” The parties are encouraged to present relevant intrinsic and extrinsic evidence regarding the meaning of this term and whether the preamble should be construed as limiting. This meaning is consistent with the ’291 patent’s description of cable hangers used to support “electrical cables [that] extend from a power or signal source to a location of application” in solar, mining, and electrical industries. Ex. 1001, 1:18–22 (emphasis added). The electrical cables are DC wires that attach to solar panels, AC cables that power motors to rotate solar panels, and category five cables for control wiring. Id. at 1:22–51. The claims recite “electrical cables” not “electrical power cables.” Ex. 1001, 10:24–13:7. We do not limit “electrical cables” to particular types of cables, e.g., AC cables or DC cables, absent a lexicographic definition or a disclaimer in the specification, neither of which are asserted by either party in this proceeding. See Phillips, 415 F.3d at 1316.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“artisan would have modified Almy’s system by replacing wire loops 204B with Caveney’s cable supports that attach to building structures and frames using fasteners as discussed in Section II.D.2. supra, rather than messenger wires extending from solar panels. As discussed in Section II.D. supra for Ground 1, Caveney’s cable hangers are secured to building structures and frames by threaded rod fasteners. On this record, we are not persuaded that the hanger plates 40 and clamps 34 that fasten Caveney’s cable hangers to building structures and brackets using apertures 46, 48 and fasteners would secure Caveney’s cable hangers to Almy’s messenger wire, or that a skilled artisan would have been motivated to modify these structures of Caveney to attach to, and be disposed along, Almy’s messenger wire in order to replace Almy’s closed wire loops 204B with Caveney’s open cable supports 42, 44. Dr. Beik testifies that “Caveney is directed at a multi-tiered cable hanger that can be adapted for attaching to a variety of structures or support surfaces, including messenger wires,” but he supports this assertion by citing Caveney’s disclosure that cable support system 30 is secured to any fastener or structure such as a threaded rod, different brackets, a joist, a ceiling, or a wall. Ex. 1002 ¶ 76 (citing Ex. 1003, 3:3–9). On the current record, we find that the threaded rods secure cable support system 30 to the structures. See Ex. 1003, 2:65–3:1, 3:21–28, 5:63–67, 6:12–15, Figs. 1–7, 20–22. We find that Caveney’s cable supports are designed to attach to fixed, rigid structures such as brackets, joists, ceilings, and walls in a building using threaded rods with hanger plates 40 and brackets 34 that have apertures 46, 48 to receive threaded rod fasteners that secure the cable hangers to building structures. Id. at 3:1–28, 5:63–67, Figs. 1–7, 10–13, 20–22. We are not persuaded on this record that the threaded rod fasteners teach or suggest messenger wires. d. Conclusion On this record, we determine Petitioner has not shown sufficiently that a skilled artisan would have been motivated to combine the teachings of Caveney and Almy as asserted by Petitioner to render claim 14 unpatentable.” slip op. at 26
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,349,291 - PTAB · Mar 14, 2024 · IPR2024-00366 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on all petition grounds: claims 1–11 over Amanatides and Kohn, and claim 2 over Selzer and Fiske, based on a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution is issued pursuant to 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the Petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” A decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and the associated evidence presented in the Petition and in the Realtek IPR, we institute inter partes review.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Reasons to Combine the Teachings of Lindholm ’685 and Lindholm ’913 Noting that Lindholm ’685 and Lindholm ’913 are both directed to a multithreaded shader and much of their Specifications and figures are the same, in the Realtek IPR Petitioner contends that a person of ordinary skill would have recognized the Lindholm references disclose different details of the same unified shader architecture. Realtek IPR Pet. 21–22. In the Realtek IPR, Petitioner also states that an ordinarily skilled artisan would have looked to the additional disclosure in Lindholm ’913 for additional details about scheduling threads for execution independent of other threads. Id. at 22. In the Realtek IPR, we agreed that a person of ordinary skill would have had reason to combine the teachings of the Lindholm references. We apply the same reasoning to this Decision do not repeat that analysis here.” slip op. at 21
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artNot shown unpatentable
“Analysis in the Realtek IPR In the Realtek IPR we were persuaded that Patent Owner antedated the Lindholm references and therefore they are not prior art. Therefore, in this proceeding we are not persuaded that Petitioner will succeed on its challenge based on the Lindholm references. Realtek IPR Dec. to Inst. 23– 41. We apply the same reasoning in this Decision and do not repeat our analysis here. In the Realtek IPR, we also noted that if the Lindholm references were considered applicable prior art, we are persuaded that Petitioner has cited sufficient evidence to demonstrate that a person of ordinary skill would have been motivated to combine the teachings of Lindholm ’685 and Lindholm ’913, and that in combination, the references would have taught, or at least suggested, all the limitations of claims 1–11 to a person of ordinary skill in the art. We apply the same reasoning to this Decisions and do not repeat that analysis here. Id.” slip op. at 22
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,760,454 - PTAB · Mar 11, 2024 · PGR2023-00053 · APJ James P Calve · PGR · Institution
The Board instituted PGR on claims 1–20 on all asserted grounds because the petition showed it was more likely than not that at least one challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324; 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response, we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute post-grant review on all challenged claims on all asserted grounds. See 37 C.F.R. § 42.208(a) (“When instituting post-grant 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.”).” slip op. at 2
- BurdenInstituted
“review. 35 U.S.C. § 324; 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response, we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute post-grant review on all challenged claims on all asserted grounds. See 37 C.F.R. § 42.208(a) (“When instituting post-grant 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.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“degree in electrical engineering, computer engineering, computer science or a similar discipline, with at least two years of relevant industry or research experience, including experience designing, planning, or implementing sensor networks using LIDAR, radar and/or cameras and corresponding data analysis” and “[a]dditional work or research experience can substitute for less or different education, and vice versa.” Pet. 10 (citing Ex. 1003 ¶¶ 18– 23). Patent Owner does not address the level of ordinary skill in the art. On the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the ’349 patent and the prior art of record, and we adopt it for consideration of the issues presently before us.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[n]o terms require construction to determine that claims 1–20 are invalid under §§ 101, 102, 103.” Pet. 9. At this stage, Patent Owner does not address the construction of any term or phrase. On the present record, we determine that we do not need to construe any claim terms to reach our decision. See Realtime Data, LLC. v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 9
Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · KSR · GrahamPatents in suitUS 11,538,349 - PTAB · Mar 5, 2024 · IPR2023-01344 · APJ Gregg I Anderson · IPR · Institution
The Board instituted IPR on claims 1–17 and all asserted grounds, finding a reasonable likelihood that Mercedes-Benz would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We find, on this record, Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claim 1 based on Sinharoy.” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Id. Patent Owner does not comment on Petitioner’s proposed level of ordinary skill nor does it propose an alternative. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The claim language of independent claim 1 recites “wherein the caching agent is a single caching agent for the processor.” Ex. 1001, 7:58– 59 (emphasis added). Claims 11 and 15 also recite a “single caching agent.” Ex. 1001, 8:38 (claim 11), 9:7 (claim 15). Similarly, as Patent Owner notes, the specification of the ’895 patent discloses at various places a “single caching agent.” See, e.g., Ex. 1001, 7:13–17 (“[E]ach of the processors can include an IIO module to provide an interface to one or more off-chip peripheral devices and a single caching agent shared by the IIO module and the cores of the processor.”) (emphasis added)). The description of Figure 6 explains that a “single caching agent” may be formed from distributed portions. Ex. 1001, 6:35–37. At this stage of the proceeding we preliminarily construe a “single caching agent” to mean one caching agent for the processor, which may be formed from distributed portions.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“a person of ordinary skill would have been motivated to combine Xu with Sinharoy because both use the POWER7 processor chip. Pet. 33 (citing Ex. 1007 ¶ 97 (“Xu, in the same field of art as Sinharoy and in fact describing the same POWER7 chip as Sinharoy”). Patent Owner does not challenge the motivation to combine these references. We find that, on this record, Petitioner has demonstrated sufficiently a motivation to combine Sinharoy and Xu. Patent Owner also does not address Petitioner’s showing for claims 2 and 10. For the reasons given above and in the Petition, we find Petitioner demonstrates sufficiently that claims 2 and 10 are taught or suggested by the combination of Sinharoy and Xu. On this record, Petitioner demonstrates a reasonable likelihood of prevailing on these challenges.” slip op. at 21
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,575,895 - PTAB · Jan 29, 2024 · IPR2023-01032 · APJ Scott B Howard · IPR · Institution
Instituted IPR on claims 1–7 on all asserted grounds; the Board found a reasonable likelihood that Suzuki, Cullen, and Scherer render at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 section 311 and any response filed under 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) (2022).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In performing an analysis under § 325(d), “the Board uses the following two-part framework: 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. . . . If, after review of [Becton Dickinson] 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, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8, 10 (PTAB Feb. 13, 2020) (Institution Decision) (precedential) (footnote omitted). Consequently, we first turn to an analysis of Becton Dickinson factors (a), (b), and (d) to determine 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.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Scherer also teaches using a high pass filter to filter a torque demand signal. See Ex. 1003 ¶ 99; Ex. 1007, 3:59–63, 4:20–45, Figs. 1, 2. rapidly to sudden changes of the engine torque” arising during transient engine operations. Ex. 1007, 4:20–4:31; see also id. at 4:31–5:15; Ex. 1003 ¶ 100. A person having ordinary skill in the art would have included Scherer’s high pass filter in Suzuki’s torque controller to produce the Spark Timing Correction for a Homogeneous Mode and the Equivalence Ratio for Stratified Mode because it would enable the system to adjust for dynamic changes in torque values more accurately. Ex. 1003 ¶ 100; see also id. ¶¶ 65–69.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We do not agree with Patent Owner that Scherer teaches away from the claimed invention. First, Scherer is not limited to Diesel engines. Although the Figure 2 embodiment discusses a Diesel engine, the Figure 1 embodiment involves an Otto engine that uses spark plugs. See Ex. 1007 Figs. 1–2, 3:59–60, 5:16–18. Second, a reference teaches away from the claimed invention if “a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed Cir. 1994). The discussion of using a high pass filter with a Diesel engine, “does not teach away” from using a high pass filter with a DISI engine as “it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,581,565 - PTAB · Jan 23, 2024 · IPR2023-01031 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 4–7, and 9–13 on all asserted grounds, finding a reasonable likelihood of unpatentability and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 section 311 and any response filed under 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) (2022). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We are persuaded by Petitioner’s argument. As the parties agree, the petitioner in the Volkswagen IPR relied on Luff. See Pet. 23; Prelim. Resp. 20. In that proceeding, we denied institution because the petition did not sufficiently show that Luff teaches or suggests “waste production data” as recited in claims 1 and 9. Volkswagen, IPR2020-00894, Paper 11 at 11–14. However, neither Amaratunga nor Seem were considered during the prosecution of the ’482 patent or the Volkswagen IPR. Pet. 23; Prelim. Resp. 22. Moreover, Petitioner relies on Amaratunga in combination with Luff to teach “waste production data,” the limitation we found missing in the Volkswagen IPR. See Pet. 39–41. Additionally, to the extent Petitioner relies on Luff, Petitioner is relying on a different section of the reference than was raised in the Volkswagen IPR. Compare Pet. 39–41 (relying on 5:57–6:26), with Volkswagen, IPR2020-00894, Paper 2 (relying on 9:24–31, 17:65–18:3). The Office never considered this combination either during the prosecution of the ’482 patent or during the Volkswagen IPR. Furthermore, we do not agree with Patent Owner that Amaratunga and Seem are substantially the same and cumulative to references asserted in the Volkswagen IPR. Patent Owner neither identifies how the references are cumulative of Amaratunga and Seem nor why the references are cumulative Amaratunga and Seem. Although, at a very high level, Amaratunga and Seem involve the same technology as the references asserted in the Vokswagen IPR, that is not enough. The issue is not just whether the same elements can be found in each of the references, but whether the elements function the same way. Patent Owner does not provide any explanation as to how both Amaratunga and Seem operate or how their operations are substantially the same as the operations disclosed by the references asserted in the Volkswagen IPR. See Prelim. Resp. 20. Accordingly, we are not persuaded by Patent Owner that Amaratunga and Seem are substantially the same as references the Office previously considered. 3. Conclusion Because we find that the evidence of record demonstrates that Becton Dickinson factors (a), (b), and (d) have not been satisfied, we find that the same or substantially the same art or arguments were not previously presented. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We consequently decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“If factors one through five do not favor discretionary denial, “the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.” CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (precedential, decision upon Director Review). But if factors one through five favor discretionary denial, “the Board shall then assess compelling merits.” Id. at 5; see also Volvo Penta v. Brunswick Corp., IPR2022-01366, Paper 15 at 4–5 (PTAB May 2, 2023) (Director Review) (holding that the PTAB must perform a compelling merits analysis even when the District Court has already invalidated the challenged claims under 101, but the decision is still pending appeal if the Board determines that Fintiv factors 1–5 favor exercise of discretion to deny institution.) Here, on balance, factors one through five favor discretionary denial. See supra §§ II.E.1–II.E.5 (finding that five factors favor discretionary denial and one factor does not favor discretionary denial). Because factors one through five favor discretionary denial, we assess compelling merits. See CommScope, IPR2022-01242, Paper 23 at 5. To provide better context when doing so, however, we assess compelling merits after addressing the patentability issues. See § II.H, infra. Based on the current record and for the reasons explained below, we determine that Petitioner presents compelling evidence of unpatentability for at least one challenged claim. See § II.H, infra.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On one hand, Patent Owner presents only attorney argument, unsupported by any evidence. See Prelim. Resp. 8. Accordingly, we give it no weight. Elbit Systems of America, LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (“‘[a]ttorney argument is not evidence’ and cannot rebut other admitted evidence” (quoting Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017))); Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (unsworn attorney argument is not evidence). On the other hand, Petitioner’s formulation is supported by conclusory testimony which does not provide supporting evidence or reasoning. See Ex. 1003 ¶¶ 49–50. We give such testimony little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Although we give Dr. Bower’s testimony little weight, it is consistent with the invention disclosed in the ’482 patent, which claims using a computer to a calculate an ecological parameter based on power consumption and waste production data. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.9” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,909,482
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.