- Tesla, Inc. v. Autonomous Devices, LLCInstitutedPTAB · Jan 8, 2024 · IPR2023-01173 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted review of claims 10, 11, 25, 27, and 30 on all petition grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art According to Petitioner, [a] person having ordinary skill in the art . . . relevant to the ’583 patent as of November 26, 2017—the earliest possible priority date of the ’583 patent—would have had at least: (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning. Pet. 4–5 (citing Ex. 1003 ¶ 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jason Janet. Ex. 1003 ¶ 41. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 4. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 12
- 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 at this stage of the proceeding. Pet. 5; Prelim. Resp. 8–9. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,055,583 - Tesla, Inc. v. Autonomous Devices, LLCInstitutedPTAB · Jan 8, 2024 · IPR2023-01172 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR on claims 1–9, 11–24, 26, 28, 29, and 31–34 on all asserted grounds because Petitioner showed a reasonable likelihood that at least one claim is anticipated by Grotmol.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that the projected trial date (at least five months after the projected statutory deadline for a final written decision), the parties’ minimal investment in the District Court Litigation, and Petitioner’s stipulation all weigh against (or at least slightly against) discretionary denial of institution. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“likelihood of prevailing in showing that claims 1–9, 11–24, 26, 28, 29, and 31–34 are anticipated by Grotmol. III. CONCLUSION Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Accordingly, we institute an inter partes review on all grounds of unpatentability in the Petition. At this stage of the proceeding, we have not made a final determination with respect to the patentability of any of the challenged claims. IV. ORDER It is hereby ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–9, 11–24, 26, 28, 29, and 31–34 of the ’583 patent is instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art According to Petitioner, [a] person having ordinary skill in the art . . . relevant to the ’583 patent as of November 26, 2017—the earliest possible priority date of the ’583 patent—would have had at least: (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning. Pet. 3–4 (citing Ex. 1003 ¶ 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jason Janet. Ex. 1003 ¶ 41. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 4. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that the corresponding structure for the “means for receiving or generating a first one or more digital pictures,” the “means for receiving or generating a first one or more instruction sets for operating the first device,” and the “means for learning the first one or more digital pictures correlated with the first one or more instruction sets for operating the first device” in claim 34 is “one or more processor circuits.” Pet. 4. Patent Owner does not dispute Petitioner’s proposed construction at this stage of the proceeding. Prelim. Resp. 6. As a result, for purposes of this Decision, we need not determine whether Petitioner identifies sufficient corresponding structure for the above limitations. 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 12
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 11,055,583 - Tesla, Inc. v. Autonomous Devices, LLCInstitutedPTAB · Jan 8, 2024 · IPR2023-01169 · APJ Barbara A Parvis · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Tesla would show at least claim 1 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“requested in the parallel district court litigation. Also, based on the current schedule in the parallel district court proceeding, significant investment remains including that claim construction briefing does not begin until April 26, 2024 and the hearing on claim construction is not scheduled until July 12, 2024. See generally Ex. 2005. We, therefore, do not agree that the evidence supports Patent Owner’s argument that the parallel district court proceeding is in an advanced stage such that a stay, if requested, would not be granted. We will not attempt to predict how the district court in the parallel district court proceeding would proceed if a stay is requested because the court may determine whether or not to stay any individual case, including the related one, based on a variety of circumstances and facts beyond our control and to which the Board is not privy. Sand Revolution II, LLC v. Cont’l Intermodal Grp. - Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (“Sand Revolution”). Accordingly, we find that factor 1 is neutral.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “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.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for an ordinary level of skill, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’134 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“and second one or more object representations “represent one or more objects of the application.” Ex. 1001, 171:51–53, 171:55–57. We discern nothing in claim 1 that supports Patent Owner’s proposed construction.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,607,134 - PTAB · Dec 13, 2023 · IPR2023-00896 · APJ Gregg I Anderson · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that claims 1–7 and 12–15 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner’s argument and evidence is too general to establish obviousness. See 37 C.F.R. §42.22(a)(2) (Petitioner must include “a detailed explanation of the significance of the evidence including material facts”). Petitioner cites to forty-four paragraphs of the Pratt Declaration, but does not explain how any of those paragraphs support its statement in the Petition. Pet. 14 (citing Ex. 1002 ¶¶ 103–112, 140–144, 35–40, 63–85); 37 C.F.R. § 42.104(b)(5) (“The Board may exclude or give no weight to evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.”). STP2003 is directed to an alarm with non-replaceable batteries that can be activated and deactivated. See, e.g., Ex. 1008, 6. However, there is no disclosure of how the function is accomplished. Specifically, Petitioner does not identify any portion of STP2003 that teaches cooperating features on the first portion and the second portion configured to automatically activate the second portion upon initial attachment of the second portion to the first portion. See Pet. 13–14. None of the evidence cited by Petitioner, including the background of the ’158 patent, Watson, nor the Reinholtz Deposition, remedy this deficiency. In particular, Petitioner does not explain why a person of ordinary skill in the art would have understood STP2003’s activation means to include the recited cooperating features. See id. Petitioner has not sufficiently shown all limitations of claim 1 would have been obvious over STP2003.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art as of “August 2003 had a Bachelor’s Degree in mechanical engineering or similar discipline.” Pet. 5 (citing Ex. 1002 ¶ 31). In addition, the person of ordinary skill “would have had knowledge of design considerations in the industry and would have been familiar with then-existing electro-mechanical products and solutions.” Id. (citing Ex. 1002 ¶ 31). Patent Owner “does not dispute” Petitioner’s proposal and does not propose a different level of ordinary skill. Prelim. Resp. 8. 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-129, 125 Stat. 284, 285–288 (2011), revised 35 U.S.C. § 103 effective March 16, 2013. Because the challenged patent was filed prior to March 16, 2013, we refer to the pre-AIA version of the statute. The findings and analysis in this Decision would be the same under the AIA version. the art reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“The District Court in the Texas Litigation issued a “Claim Construction Order” (“Markman Order”) on February 15, 2023. Ex. 1019. With some qualifiers not relevant here, the Markman Order applied the plain and ordinary meaning to all claim terms. Id. Petitioner cites the Markman Order and, “[f]or purposes of this proceeding,” applies the plain and ordinary meaning for all claim terms. Pet. 5 (citing Ex. 1019; Ex. 10203). Patent Owner also cites to the Markman Order and agrees with application of the plain and ordinary meaning to all claim terms. Prelim. Resp. 8 (citing Ex. 1019; Ex. 20044). 3 Texas Litigation “Joint Claim Construction Statement.” 4 Texas Litigation “Plaintiff’s Responsive Claim Construction Brief.” “an activating/deactivating system” and “activate/deactivate system” terms are means plus function limitations because, regardless of their construction, Petitioner fails to show that any reference discloses the same or an equivalent structure. On the record before us, we construe all claim terms to have their plain and ordinary meaning to a person of ordinary skill in the art.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner fails to explain why Malewski’s mating-based activation embodiments would be combined with the activation key-based embodiment and how such a combination would satisfy both limitations of the same device. See Abiomed, Inc. v. Maquet Cardiovascular, LLC, IPR2017-01204, Paper 9 at 8–12 (PTAB Oct. 23, 2017) (denying institution where no explanation provided for how different embodiments of a reference were interchangeable or why a [person of ordinary skill in the art] would have found it obvious to combine their respective teachings). Prelim. Resp. 23. We agree with Patent Owner that the record fails to support sufficient reasoning as to why the various embodiments of Malewski would have been combined to meet the Limitations [1c] and [1d]. We have reviewed paragraphs 190 through 200, which is the testimony of Dr. Pratt regarding the two limitations. None of it provides any reasoning as to why Malewski’s separate embodiments would have been combined to show either limitation.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,123,158 - PTAB · Dec 13, 2023 · IPR2023-00898 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 8–11 were unpatentable as obvious over any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless “the information presented in the petition . . . 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). Here, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, the Petition is denied, and no trial is instituted.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a Bachelor’s Degree in mechanical engineering or similar discipline” and “knowledge of design considerations in the industry and . . . familiar[ity] with then-existing electro-mechanical products and solutions.” Pet. 5 (citing Ex. 1002 ¶ 31). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. John Pratt. Ex. 1002 ¶ 33. Patent Owner does not dispute Petitioner’s description. Prelim. Resp. 9. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. 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). Neither party proposes an express construction for any claim terms. Pet. 5; Prelim. Resp. 9. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 5
- BurdenNot shown unpatentable
“STP2003’s “means to activate the power” is a mechanism. Prelim. Resp. 10–13. On this record, we agree with Patent Owner for two reasons. First, Petitioner states that STP2003’s “means” is a mechanism, but does not provide a specific explanation to support that statement. See Pet. 13. In particular, Petitioner does not explain why a person of ordinary skill in the art would have understood (or found it obvious) that STP2003’s “means” is a mechanism. See id. Petitioner cites to thirty paragraphs of the Pratt Declaration, but does not explain how any of those paragraphs support its statement in the Petition. See id. (citing Ex. 1002 ¶¶ 35–40, 63–85, 127); 37 C.F.R. § 42.104(b)(5) (“The Board may exclude or give no weight to evidence where a party has failed to state its relevance or to identify specific portions of the evidence that the support the challenge.”).” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 7,525,445 - Tesla, Inc. v. Autonomous Devices, LLCInstitutedPTAB · Dec 13, 2023 · IPR2023-01054 · APJ Russell E Cass · IPR · Institution
The Board instituted review of claims 4–5, 7, 11, and 14–15 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“district court proceeding would proceed if a stay is requested because the court may determine whether or not to stay any individual case, including the related one, based on a variety of circumstances and facts beyond our control and to which the Board is not privy. Sand Revolution II, LLC v. Cont’l Intermodal Grp. - Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (“Sand Revolution”). Accordingly, we find that factor 1 is neutral.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Considering the subject matter of the ’974 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for the person of ordinary skill in the art, except we decline to adopt “at least,” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’974 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, and based on the current record, except as noted above, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner provides a construction for “means for generating or receiving,” “means for anticipating,” and “means for executing” in disclaimed claim 19. Pet. 4–5. Patent Owner argues that “construction of these terms is unnecessary” due to the disclaimer of claim 19. Prelim. Resp. 14. We agree. 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) (alteration in original)).” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“properties of one or more objects.” Id. We, therefore, preliminarily find that the language of claim 18 supports Petitioner’s position.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,452,974 - Tesla, Inc. v. Autonomous Devices, LLCInstitutedPTAB · Dec 13, 2023 · IPR2023-01055 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 3–18 on all asserted grounds, finding a reasonable likelihood that Tesla would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDecided for petitioner
“proceeding significant investment remains including that claim construction briefing does not begin until April 26, 2024 and the hearing on claim construction is not scheduled until July 26, 2024. See generally Ex. 2006. We, therefore, do not agree that the evidence supports Patent Owner’s argument that the parallel district court proceeding is in an advanced stage such that a stay, if requested, would not be granted. We will not attempt to predict how the district court in the parallel district court proceeding would proceed if a stay is requested because the court may determine whether or not to stay any individual case, including the related one, based on a variety of circumstances and facts beyond our control and to which the Board is not privy. Sand Revolution II, LLC v. Cont’l Intermodal Grp. - Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (“Sand Revolution”). Accordingly, we find that factor 1 is neutral.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“this early stage, we determine that Petitioner has shown sufficiently, for purposes of institution, that Grotmol discloses each recitation of claim 3. We preliminarily find that Patent Owner’s arguments do not undermine Petitioner’s showing. Accordingly, we conclude that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 3 is anticipated by Grotmol.” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 4 (citing Ex. 1002 ¶¶ 40–42). At this stage in the proceeding, Patent Owner adopts Petitioner’s proposal. See Prelim. Resp. 5.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner provides a construction for “means for processing” recited in disclaimed claim 20. Pet. 5. Patent Owner argues that “construction of this term is unnecessary.” Prelim. Resp. 14. We agree. 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 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,238,344 - Google LLC v. Nobots LLCAll claims unpatentablePTAB · Nov 29, 2023 · IPR2022-00941 · APJ Josiah C Cocks · IPR · Final written decision
Claims 3–9, 11, and 13–20 are unpatentable under §103 over the asserted prior-art combinations; claims 1, 2, 10, and 12 were disclaimed.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“d) Analysis Having considered the parties’ respective positions, we conclude that Petitioner’s view as to meaning of “not denying access” is more consistent with the ’885 patent, and the record at hand, than Patent Owner’s view. In that respect, we agree that “not denying access” is “broader” than “granting access” and encompasses other possible acts in which access is not denied,” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that it is unnecessary to expressly construe any other claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms in controversy must be construed and only to the extent necessary to resolve the controversy); see also Nidec, 868 F.3d at 1017 (citing Vivid Techs in the context of an inter partes review).” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). have had a bachelor’s degree in computer science or a related field with coursework relating to computer science, plus two years’ academic and/or industry experience in computer security. More education could substitute for experience, and vice versa.” Pet. 3–4 (citing Ex. 1003 ¶¶ 36–40). Patent Owner does not dispute this proposed level of skill. PO Resp. 15–16. We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We conclude, at this time, that Petitioner’s reasoning is sound, and amply supported by record evidence. We also conclude that the record readily conveys that a skilled artisan would have had a reasonable expectation of success in combining the teachings of O’Sullivan and Willner to arrive at the invention of the relevant claims of the ’885 patent. On the record before us, we are not satisfied that either Patent Owner’s arguments or the testimony of its declarant, Samuel Russ, Ph.D., suitably take into account what a person of ordinary skill in the art would have gleaned from the teachings of O’Sullivan and Willner. See, e.g., Prelim Resp. 16, 25–27; Ex. 2101 ¶¶ 85–88. In that respect, and on the current record, we credit Dr. Lopresti’s testimony (e.g., Ex. 1003 ¶¶ 78, 79) over the countervailing testimony of Dr. Russ, as, in our view, Dr. Lopresti’s testimony better reflects what a skilled artisan would have understood in combining the teachings of O’Sullivan and Willner. Furthermore, although, as Patent Owner notes, the Petition does not use the specific phrase “reasonable expectation of success” (see, e.g., Prelim. Resp. 15), that such an expectation is present flows intrinsically from Petitioner’s and Dr. Lopresti’s explanation underscoring the proposed ground. Inst. Dec. 18–19.” slip op. at 39
Patent outcomesUS 10,423,885 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,423,885 - Google LLC v. Nobots LLCSome claims unpatentablePTAB · Nov 29, 2023 · IPR2022-00940 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1–17 and 20 are unpatentable; claims 18 and 19 were not shown unpatentable, because the asserted grounds failed to establish the required limitations for those claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’008 patent “would have had a bachelor’s degree in computer science or a related field with coursework relating to computer science, plus two years’ academic and/or industry experience in computer security. More education could substitute for experience, and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 36–40). Patent Owner does not dispute this proposed level of skill. PO Resp. 2. We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In considering Patent Owner’s explanation, and upon further reflection, we agree with Patent Owner’s reading of the pertinent sentence. In that regard, consistent with the remainder of the Specification of the ’008 patent, it follows that the noted sentence does not alter the contours of “acquired” data to also encompass “passive” data where that premise is entirely absent from other portions of the Specification. Rather, as Patent Owner explains, the sentence is consistent with the understanding that it is “active data” that is connected to the word “acquired” and “passive data” that is connected to the word “available.” See, e.g., id. Patent Owner’s explanation alleviates the ambiguity that was postulated in the Institution Decision. We have considered Petitioner’s views to the contrary (see, e.g., Pet. Reply 21–25) but find them unavailing. In particular, Petitioner does not reconcile its position that, although acknowledging that “acquired data” is defined in the ’008 patent, the term “acquiring” is not so defined and should be regarded as an “individual word” whose meaning is somehow entirely unconnected to “acquired.” See, e.g., Pet. Reply 21. We note, as we did in the Institution Decision, that the ’008 patent states that “acquired data” and “its equivalents and verb forms” is “a type of active data.” See Inst. Dec. 30 (citing Ex. 1001, 3:25–32). We are not persuaded by Petitioner’s view (see, identifiable as a verb form of “acquired.” See PO Sur-reply 8. We determine that, in the context of the ’008 patent, it clearly is. Having considered the competing views of Petitioner and Patent Owner, we conclude that Patent Owner’s construction of the term “acquiring interest data” is consistent with, and supported by, the Specification of the ’008 patent. In that regard, we conclude that, as is advanced by Patent Owner, “acquiring interest data” must encompass the retrieval of some active data.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“1–3 and 6–17 are found in Willner. Pet. 9–26. During trial, Patent Owner presented no arguments challenging Petitioner’s proposed ground of unpatentability of claims 1–3 and 6–17 based on Willner. During oral argument, upon questioning, counsel for Patent Owner expressed that “We did not present any arguments on Claims 1 to 3, 6 to 17 on Ground 1.” Tr. 30:3–4. We determine that Petitioner, via its Petition, has established adequately where all the features of claims 1–3 and 6–17 are present in Willner. See Pet. 9–26. Given that determination, and in the absence of any argument during trial challenging Petitioner’s ground of unpatentability based on Willner as to those claims, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1–3 and 6–17 are unpatentable under 35 U.S.C. § 102 based on Willner.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Here, we conclude that: (1) the parties’ recognized level of ordinary skill in the art (see Pet. 4; PO Resp. 2); (2) the knowledge of a skilled artisan as set forth by record evidence, including the teachings of Willner and Kitts; and (3) the nature of the problem addressed in both of those references, i.e., click fraud detection, all support a determination that a skilled artisan would have had adequate reasons to combine Willner and Kitts, and would have had a reasonable expectation in doing so. To that end, we find persuasive Petitioner’s arguments in the Petition as to the proposed reasoning to combine Willner and Kitts, and also credit Dr. Lopresti’s supporting testimony. See Pet. 28–29; Ex. 1003 ¶ 118. We are mindful of the contrasting testimony referenced by Patent Owner’s declarant, Dr. Russ. See, e.g., PO Resp. 38 (citing Ex. 2011 ¶¶ 107–110). Dr. Russ testifies that, in his view, there are “practical” and “technical” “considerations” in combining Willner and Kitts that a “POSA would have had to consider in determining whether a reasonable expectation of success exists, none of which are addressed or discussed in the Petition.” See Ex. 2011 ¶¶ 107–110. The example considerations listed by Dr. Russ are reproduced below: 1. How Kitts’ passive data could be collected and stored in conjunction with the mouse vector data already being collected by Willner; 2. How to collectively analyze fundamentally different types of data—Willner’s mouse vector data on one hand, and Kitts’ passive data on the other; 3. How to generate a useful confidence score that is more accurate than the scores already generated by Willner, again taking into consideration that passive data is a fundamentally different type of data than active data; assessment using the complex statistical model of Kitts; and 5. To what extent additional computer hardware would be necessary to enable the combined system to effectively operate and whether such hardware could be reasonably implemented, taking into consideration both cost and feasibility. Ex. 2011 ¶ 108. Those considerations are generally directed to collection and use of” slip op. at 36
Patent outcomesUS 9,595,008 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,595,008 - PTAB · Nov 27, 2023 · IPR2023-00902 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR of claims 1–17 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
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
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a degree in electrical engineering, computer science, or a similar discipline, with at least 2–4 years of relevant industry or research experience in the network security industry,” as well as “familiarity with the wireless standards and protocols relating to mobile communications and the security of such communications.” Pet. 11–12 (citing Ex. 1003 ¶¶ 65, 66, 68). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Angelos Keromytis. Ex. 1003 ¶¶ 63–68. 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 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“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). Petitioner does not propose an express construction for any claim terms. Pet. 15. Patent Owner proposes construing the term “validity period” such that it “cannot be a single point in time.” Prelim. Resp. 10. Patent Owner also proposes construing the phrase “if the initiation key is deemed valid, generating a session key,” to mean that generating a session key “must be premised upon the initiation key having had its validity verified ‘based on a current time.’” Id. at 12. As discussed below, on this record, Petitioner shows sufficiently that the asserted prior art teaches the disputed limitations of the challenged claims even under Patent Owner’s proposed constructions. See Section II.C.1. Thus, at this stage of the proceeding, we need not address Patent Owner’s claim construction arguments in order to resolve the parties’ disputes about the asserted grounds of unpatentability.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“3. Reason to Combine Petitioner argues that a person of ordinary skill in the art would have had reason to combine the cited teachings of Teo and Madoukh. Pet. 16–17 (citing Ex. 1003 ¶ 103). In particular, Petitioner presents evidence that a person of ordinary skill in the art “would have been motivated to combine Teo’s system for receiving and using keys with associated lifetimes with Madoukh’s ‘key lifetime manager’ for monitoring the expiration of keys, requesting new keys when old keys have expired, and deactivating expired keys.” Id. at 16 (emphases omitted). For example, a person of ordinary skill in the art “would have understood that Teo’s DMK would expire . . . and one would need to implement a component for tracking the DMK’s expiration, requesting a new DMK upon such expiration, and deactivating the expired DMK, such as Madoukh’s key lifetime manager.” Id. at 17 (citing Ex. 1003 ¶ 103) (emphases omitted). Petitioner also presents evidence that a person of ordinary skill in the art “would have reasonably expected success when combining Teo and Madoukh.” Id. (citing Ex. 1003 ¶ 104) (emphases omitted). At this stage of the proceeding, Petitioner shows sufficiently that it would have been obvious to combine the cited teachings of Teo and Madoukh.” slip op. at 12
Claim construction§ 103 obviousnessPatents in suitUS 9,438,572
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.