- Alivecor, Inc. v. Apple Inc.InstitutedPTAB · Jan 9, 2024 · IPR2023-00950 · APJ Robert L Kinder · IPR · Institution
Instituted inter partes review of claims 1–22 on all petitioned grounds; the Board found a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 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 Petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Markel – to accomplish Markel’s goal of a concealed electrode – is a reasonably sufficient basis or reason to combine the references. On this record, Petitioner demonstrates that a person of ordinary skill in the art would have reason to apply Nissilä’s electrode structure having a distinct exterior surface to the teachings of Markel because of the similarities in electrode structure and to achieve a stated goal of Markel. Nissilä’s electrode structure uses an external layer of “metal, electrically conductive plastic or a similar conductive material.” Ex. 1006, 5:32–37; Ex. 1003 ¶ 355 (“both references disclose an intermediate conductive material made of conductive plastic”). Petitioner has shown this structure could be adopted by Markel’s “hidden” electrode having a main body portion formed from conductive plastic and a person having ordinary skill in the art would be motivated to do so in order to achieve Markel’s stated goal of an electrode that is substantially concealed (or hidden) from a user. See Ex. 1003 ¶ 354. Even if a goal of Nissilä’s device is for the user to be aware of the electrodes to place them on their chest, as Patent Owner alleges, Petitioner shows that Markel’s concealment objective could be suitably achieved by use of Nissilä’s structure, even if Nissilä does not share a similar concealment objective. Id. ¶ 355 (“Markel’s hidden electrode is desirable because it increases aesthetics of the device while protecting the electrode from bumps or other damage.”). Based on the record before us, Petitioner has also shown sufficiently that a POSITA would be motivated to combine Markel and Nissilä to satisfy limitations [1.c.i], [1.c.ii], and [1.c.iii].” slip op. at 41
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ recitations are similar in scope. Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in education. Petitioner’s definition is consistent with both the scope of the claimed invention and the level of ordinary skill reflected in the prior art references of record. 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). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that our decision would be the same adopting either proposed level of ordinary skill in the art.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“With respect to the preamble “[a]n electronic device for detecting a user’s cardiac signal,” as recited in elements [1.pre] and [15.pre], Petitioner submits that the language provides antecedent basis that defines language in the claim body. For example, [1.pre] and [15.pre] each recite “a user’s cardiac signal,” which is referred back to later in the claim bodies as “the user’s cardiac signal” . . . The phrase “a user” in [1.pre] and [15.pre] is referred back to in the claim bodies as part of “the user’s skin’s contact” . . . As another example, [15.pre] recites “An electronic device,” which is referred back to later in the claim body as “the electronic device” . . . Consequently, a person of ordinary skill in the art would have understood that the language “An electronic device for detecting a user’s cardiac signal” in [1.pre] and [15.pre] is limiting and should receive its plain and ordinary meaning. Pet. 5 (citing Ex. 1003 ¶ 77). We find Petitioner’s contentions with respect to the preamble of claims 1 and 15 persuasive. Petitioner has shown that the claim preamble, when read in the context of the entire claim, recites limitations of the claim, and is necessary to give life, meaning, and vitality to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,076,257 - Askeladden, L.L.C. v. Ohva, Inc.Institution deniedPTAB · Dec 4, 2023 · IPR2023-00921 · APJ Amee A Shah · IPR · Institution
The Board denied institution on claims 1–4 because Petitioner did not show a reasonable likelihood that the challenged claims were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. 35 U.S.C. § 314. That burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we find that the ’286 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’286 patent is consistent with the level of skill proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“To the extent necessary, we discuss the meaning of a claim term (“transaction data”) in our analysis below. We, however, need not construe explicitly any of the claim terms proposed by Petitioner to reach our decision about institution. See Realtime Data, 912 F.3d at 1375 (“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))). At this stage, neither party has identified any indication that the ’286 patent uses any term differently than it would ordinarily be used or any indication in the prosecution history that “compel[s] a limitation of the claim language different from its plain meaning” as alternatives. Schumer v. Lab. Comput. Sys., Inc., 308 F.3d 1304, 1311, 1314 (Fed. Cir. 2002).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“To the extent Petitioner contends that Cho’s account information, though not explicitly providing for “transaction data,” “renders obvious” the claimed transaction data, Petitioner has not explained such a modification of Cho’s account information that would be necessary to arrive at the ’286 patent’s transaction data. Nor has Petitioner provided articulated reasoning with rational underpinning. In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006) (“[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”) (cited with approval in KSR, 550 U.S.at 418). Similarly, Petitioner does not explain how skilled artisans would have used Aaron to modify Cho’s system to meet the claimed transaction data. Rather, Petitioner relies on Aaron for teaching facilitating transactions. Pet. 57. Petitioner asserts that “Aaron explains what information is sent in transactions: ‘credit card numbers, debit card numbers, bank accounts, user accounts, user identifying information or other sensitive information.’” Id. at 35 (citing Ex. 1006 ¶ 69). Yet, Petitioner does not explain how Aaron’s customer facing device that communicates with the payment service system 708 to submit a request for authorization of a transaction, the information being credit and debit card numbers, bank and user account information, and other identifying or sensitive information, would have been combined with Cho to render obvious accepting, providing, and converting transaction data—differentiated from account data—and facilitating transactions using that transaction data. Indeed, Petitioner’s contentions do not mention Aaron for limitation [1.1.1] (the initial recitation of transaction data) or for limitation [1.3.1] (where an audio signal is converted to transaction data). Pet. 40–43, 53–56. After considering the parties’ arguments and evidence, we determine” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,679,286 - Life Vac, LLC v. Dcstar Inc.Institution deniedPTAB · Nov 29, 2023 · PGR2023-00032 · APJ Michael L Woods · PGR · Institution
The Board denied institution because the petition did not show that claims 1–17 were more likely than not unpatentable over Lih, Tarrats, and da Costa or anticipated by Lih.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“institute an post-grant review if “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.” 35 U.S.C. § 324(a). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine that the Petition fails to demonstrate that it is more likely than not that at least 1 of the Challenged Claims is unpatentable. Accordingly, we deny institution of post-grant review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s and Patent Owner’s proposed definitions are similar, with a primary difference being that Petitioner’s definition more broadly includes people having experience with “medical devices in general.” Compare Pet. 18–19, with Prelim. Resp. 6–7. Patent Owner contends that Petitioner’s standard is “unreasonably broad,” arguing that Patent Owner’s definition for a skilled artisan “more reasonably focuses on the nature of the subject invention.” Prelim. Resp. 7. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art. We are not persuaded that a skilled artisan would have necessarily required experience with respiratory devices, as Patent Owner proposes. See Prelim. Resp. 6–7. We find Petitioner’s definition, which would include “a mechanical or biomedical engineer with at least 5 years of experience in designing or developing medical devices in general,” is consistent with the ’575 patent and the asserted prior art. Pet. 18–19; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner expressly construes “bottom plate” and “check valve.” See Pet. 20–21. Patent Owner proposes a construction for “bottom plate,” “check valve,” and “connector.” Prelim Resp. 8–11. For purposes of this Decision, we need not and do not formally construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Each of the Challenged Claims requires a connector with a “bottom plate,” yet Petitioner fails to explain how the combined references would yield a connector with such a plate. See Prelim. Resp. 30–33 (arguing the same); see also Ex. 1001, 10:14–17 (independent claim 1), 10:46 (independent claim 3), 11:63 (independent claim 9); 12:35–36 (independent claim 13). Neither of Lih’s connector (element 118, Fig. 3) nor Tarrats’s “connector” (element 15, Fig. 1) has a “plate,” and Petitioner fails to explain how the lower surface of da Costa’s piston is being used to modify Lih’s or Tarrats’s connector to satisfy the claimed structure. See 35 U.S.C. § 322(a)(3); see also 37 C.F.R. § 42.204(b)(5); see also Pet. 28–29. Further, Petitioner relies on da Costa’s heart resuscitating device, rather than its dechoking device, in modifying Lih. See Pet. 29 (citing da Costa’s Figure 6 and relief valves 55, 56). da Costa’s heart resuscitation device, however, is used for pumping air into a patient’s lungs for the purpose of initiating blood circulation in the event the patient’s heart stopped working. See, e.g., Ex. 1005, 6:43–52. The pressure relief valves cited by Petitioner are presumably used to prevent over-pressurizing and under-pressurizing the patient’s lungs, which we understand would be dangerous for the patient. We do not see a skilled artisan as incorporating da Costa’s pressure relief valves into Lih’s choking intervention device, which is structured to prevent pumping air into a patient. See, e.g., Ex. 1004, 4:3–5 (“bellows assembly 102 may include a relief valve 108 configured to allow air to escape . . . when the bellows 104 is being compressed”). Petitioner explains that the combination would “avoid pushing the obstruction farther into the user’s airway while in use and to initiate blood circulation” (see Pet. 29), yet Lih’s valve 108 already “avoid[s] pushing the obstruction farther into the user’s airway” and “initiat[ing] blood circulation” benefits a heart-resuscitation device, not Lih’s dechoking device. Accordingly, we agree with Patent Owner that the proposed combination lacks sufficient reasoning. See Prelim. Resp. 33–37. We further agree with Patent Owner that modifying Lih’s device so that it pumps air into a patient’s lungs for the purpose of “initiating blood circulation,” as reasoned by Petitioner (see Pet. 29), would render Lih’s device unsuitable as a dechoking device, which is its intended purpose. See Prelim. Resp. 37–38 (arguing the same). To reiterate, Lih’s dechoking device avoids introducing air into the patient’s lungs, which would further lodge an obstruction in the patient’s trachea. See Ex. 1004, 4:3–5.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,478,575 - 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 - First Solar, Inc. v. Rovshan SadeInstitution deniedPTAB · Nov 16, 2023 · IPR2023-00881 · APJ Kevin W Cherry · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claim 1 was unpatentable over Wattsun, RayTracker, or their combination.
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 Tech., Inc., 815 F.3d 1356, 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”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 10
- Skill levelSkill level petitioner adoptedOther
“Relying on the declaration testimony of Edward C. Kern, Jr., Petitioner contends that an ordinarily skilled artisan for the ’17,546 patent “would have had a bachelor’s degree in mechanical engineering or equivalent with 2–3 years of experience involving design, development, and manufacturing of support and mounting structures for solar trackers, with additional education substituting for experience and vice versa.” Pet. 15–16 (citing Ex. 1003 ¶¶ 34). Patent Owner does not dispute this definition of a person of ordinary skill. See generally Prelim. Resp. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’17,546 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits the claims be interpreted “according to 37 C.F.R. § 42.100(b)” and that no terms require explicit construction. Pet. 16. Patent Owner does not “believe that any claim terms require express construction in order to deny institution.” Prelim. Resp. 10. Patent Owner also asserts “that providing a construction of the claims at issue is the duty of Petitioner, and the Petitioner has failed to comply.” Id. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“d) Analysis We observe that Patent Owner’s arguments in connection with its challenge to Wattsun as prior art do raise meaningful questions, on this record, as to Wattsun’s status as a printed publication before the priority date of the challenged patent. In particular, we take note of Patent Owner’s contention (see Prelim. Resp. 20–21) that Petitioner has failed to present sufficient evidence or argument that an interested party exercising reasonable diligence would have located Wattsun. See Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1349 (Fed. Cir. 2016).” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,917,546 - First Solar, Inc. v. Rovshan SadeInstitution deniedPTAB · Nov 16, 2023 · IPR2023-00827 · APJ Josiah C Cocks · IPR · Institution
Institution denied for claims 5 and 6 because Petitioner did not show a reasonable likelihood of success on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen 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) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner 1 The ’57,546 patent is the parent of U.S. Patent No. 9,917,546 B2 (“the ’17,546 patent”). A Petition challenging claim of the ’17,546 patent (IPR2023-00881) was filed on the same day as this IPR2023-00827 proceeding. would prevail in establishing the unpatentability of any challenged claim of the ’57,546 patent. Accordingly, we deny institution of the Petition for inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Relying on the declaration testimony of Edward C. Kern, Jr., Petitioner contends that an ordinarily skilled artisan for the ’57,546 patent “would have had a bachelor’s degree in mechanical engineering or equivalent with 2–3 years of experience involving design, development, and manufacturing of support and mounting structures for solar trackers, with additional education substituting for experience and vice versa.” Pet. 14–15 (citing Ex. 1003 ¶¶ 34). Patent Owner does not dispute this definition of a person of ordinary skill. See generally Prelim. Resp. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’57,546 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits the claims be interpreted “according to 37 C.F.R. § 42.100(b)” and that no terms require explicit construction. Pet. 15. Patent Owner does not “believe that any claim terms require express construction in order to deny institution.” Prelim. Resp. 8. Patent Owner also asserts “that providing a construction of the claims at issue is the duty of Petitioner, and the Petitioner has failed to comply.” Id. at 8–9. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“a) Legal Standards for Public Accessibility “[T]he burden is on the petitioner to identify with particularity evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent, and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 16 (PTAB Dec. 20, 2019) (precedential). A reference will be considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008). The determination of whether a document was publicly accessible “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). In certain situations, such as for manuscripts or dissertations stored in libraries, courts may inquire whether a reference was sufficiently indexed, catalogued, and shelved. See, e.g., In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986); In re Lister, 583 F.3d 1307, 1315 (Fed. Cir. 2009) (manuscript became publicly accessible once it was placed in a searchable database). Analogously, electronic documents may be publicly accessible if they were indexed or catalogued, or if there were other tools for customary and meaningful research. See SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1196 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). “[I]ndexing is no more or less important in evaluating the public accessibility of online references than for those fixed in more traditional, tangible media.” Voter Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,057,546 - PTAB · Nov 6, 2023 · IPR2023-00643 · APJ Matthew S Meyers · IPR · Institution
The Board instituted review of claims 1–7 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Willner and Park.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“We are not persuaded by Patent Owner’s arguments. In our previous decision in the 1197 IPR, we exercised our discretion to deny institution under § 314(a) based on our consideration of the Fintiv factors. 1197 IPR, Paper 13, 23. The decision in the 1197 IPR noted that although “there does appear to be some strength to the merits of Petitioner’s challenges,” this determination was based particularly on the fact that “the ’393 patent’s claims share some of the same claim limitations addressed by the Board previously in the ’119 patent’s IPRs.” See id. at 20–21. Therefore, we did not fully address the substantive merits of any of Petitioner’s grounds of unpatentability. 10 We also are not persuaded that the changes between the Petition in the 1197 IPR and the present Petition demonstrates “ample evidence” of road-mapping. Instead, we agree with Petitioner that “[t]hese changes are not road-mapping because they are unrelated to the record in the earlier [1197] IPR.” Pet. Reply 2–3. And, as we explained above, our earlier decision did not fully address the substantive merits of any of Petitioner’s grounds of unpatentability, nor did we address the substantive merits of any of Patent Owner’s counterarguments. See General Plastic, Paper 19, 17 (warning against allowing “petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap.”) (emphasis added); see also id. at fn.14 (citing Butamax Advanced Biofuels LLC v. Gevo, IPR2014-00581, Paper 8, 12–13 (PTAB Oct. 14, 2014) (criticizing petitioner’s use of “our prior decision as a roadmap”) (emphasis added). In addition, Patent Owner acknowledges that the present Petition challenges “the same claims 1–7 based on identical prior art references and substantially similar grounds.” Prelim. Resp. 1 (emphasis omitted). Thus, we find Patent Owner’s “road-mapping” concerns to be minimized based on the similarity of the unpatentability challenges between those raised in the 1197 IPR Petition and the present Petition. For these reasons, we agree with Petitioner that factors 1–3 weigh in favor of institution. See Code200, Paper 18 at 5 (“Where the first-filed petition under factor 1 was discretionarily denied or otherwise was not evaluated on the merits, factors 1−3 only weigh in favor of discretionary denial when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.”).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“based on the related district court matters identified above. Prelim. Resp. 17–27; see Fintiv, Paper 11, 12 (holding that PTAB has discretion to deny institution in certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue the same invalidity grounds against the challenged claims of the ’393 patent in the parallel litigation [or] any 14 grounds that could have been reasonably raised in this petition” (Pet. 85)7, we do not discretionarily deny institution under Fintiv.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“At the outset, we note that the exercise of discretion in Advanced Bionics did not turn on mere citation in an IDS of the art asserted in the petition. Rather, the Board’s exercise of discretion in that case turned on the Examiner’s application and discussion of that art. Specifically, the Board 18 found in Advanced Bionics that the asserted art, Zimmerling, “is the same art previously presented to the Office” because “the Examiner rejected [the claims] as anticipated by Zimmerling” and “Zimmerling was discussed during prosecution.” Advanced Bionics, Paper 6, 13. In other words, the criteria adopted by the Board for denying the petition in Advanced Bionics included not only the fact that the art was made of record, but also the fact that it was applied and discussed during prosecution. Anything less disregards the express reasoning behind the Board’s exercise of discretion in that case. Here, Patent Owner has not shown that any Petitioner’s cited art (i.e., Willner, Park, Schoenith, Kessler, Hirschman) was applied by the Examiner or discussed during prosecution. Instead, during examination of the ’393 patent, the record shows that the Examiner allowed the pending claims over “Wu (2006/0252537) in view of Willis (2014/0274394).” Ex. 1009, 26–29. In doing so, the Examiner stated that a “[g]ame controller with structural bridge is well known in the art” (id. at 27), but found that “Wu in view of Willis is silent on” the subject matter claim 1. See id. at 27–28 (quoting the subject matter of independent claim 1 in its entirety). However, on this record, Petitioner demonstrates that the Examiner overlooked the combination of Willner and Park’s teachings of the limitations that were the basis for allowing the challenged claims. Id. As discussed in more detail below, Petitioner’s evidence demonstrates a reasonable likelihood that at least independent claim 1 of the ’393 patent is unpatentable over the combination of Willner and Park. See Pet. 19–41 (citing Exs. 1002, 1003, 1004).” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion for Claim 1 Petitioner has shown sufficiently that the combination of Willner and Park teaches all limitations of claim 1. Petitioner also has put forth sufficient reasons for combining these references with a reasonable expectation of success. Pet. 20–21 (citing Ex. 1002 ¶¶ 133–139, 150–157; Ex. 1003 ¶ 50; Ex. 1004 ¶¶ 39–46). For example, Petitioner asserts that “Park’s adjustable bridge ‘would greatly expand the number of devices that [Willner’s] product would support, leading to the predictable result of having a larger base of customers.’” Id. at 20 (citing Ex. 1011, 19; Ex. 1018, 185 Ex. 1003 ¶ 138). Based on the present record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over the combination of Willner and Park.” slip op. at 37
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,391,393 - Masimo Corporation v. Apple Inc.InstitutedPTAB · Oct 16, 2023 · IPR2023-00745 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1–4 and 8–22 for all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 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 (2018); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ recitations are similar in scope. Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. This proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. Petitioner’s definition is consistent with both the scope of the claimed invention and the level of ordinary skill reflected in the prior art references of record. 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). For purposes of this Decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that our decision would be the same adopting either proposed level of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for the terms “embedded” (recited in claims 1, 9, and 15), “lead” (recited in the independent claims), “pad” (recited in claim 1 and some of its dependent claims), and “pocket” (recited in dependent claim 8). Pet. 7–12. Patent Owner, at this time, “discerns no need to construe explicitly any claim language because doing so would have no effect on analyses of Masimo’s asserted grounds, and would not assist in resolving the present controversy between the parties.” Prelim. Resp. 6.” slip op. at 13
- BurdenOther
“We agree with Patent Owner that Petitioner’s citation to Mills (Ex. 1006, 5:18–19), which is “[y]et another VLSI chip . . . SRAM chip 38,” does not necessarily disclose a processor standing alone. Petitioner’s position, however, does not rely just on SRAM chip 38, but instead a VLSI comprising other circuit components, including a distinct processor. See Pet. 31 (citing Ex. 1006, 2:3–6). Petitioner first cites to Mills column 2 to support its position that “housing 12 comprises a very-large scale integrated (VLSI) circuit chip that includes an ‘ECG signal and abnormal event detection circuitry, analog-to-digital (AD) and digital-to-analog (DA) conversion circuitry, memory and processor circuitry.’” Id. (quoting Ex. 1006, 2:3–6). Petitioner next relies on Mills’ disclosure that “microprocessor and associated electronics, including firmware executed thereby, employs a digital bandpass filter reliably to detect ECG signals.” Id. (quoting Ex. 1006, 2:20–23). Petitioner next cites to Mills (Ex. 1006, 4:55–5:3), which describes “circuitry shown schematically in FIG.4, including on [PCB 50’s] bottom side a microcontroller (with integral ROM) chip 42.” Pet. 31. It is unclear from this citation whether Petitioner is relying on microcontroller 42 (on PCB 50’s bottom side) as a processor because Petitioner then quotes Mills’ discussion of SRAM chip 38, which states “that the VLSI is surface-mounted on the top side of printed circuit board (PCB) 50.” Pet. 31 (quoting Ex. 1006, 5:18–19). We understand Petitioner’s position as relying on the “very-large scale integrated (VLSI) circuit chip that includes” several components, including “memory and processor circuitry.” Pet. 31 (quoting Ex. 1006, 2:3–6). Notably, this section of the specification is labeled, “Background and Summary of the Invention,” and the paragraph describing this VLSI circuit chip is “summarizing the invention.” Ex. 1006, 1:7–8, 1:60. This VLSI circuit chip does not appear to us to be the same as VLSI SRAM chip 38, which is characterized by Mills as “[y]et another VLSI chip.” Ex. 1006, 5:18. Mr. Oslan testifies that “the VLSI is a processor coupled to the heart sensor (first and second electrodes 14 and 16, respectively) and is configured to receive and process the detected cardiac signal.” Ex. 1003 ¶ 65. Mr. Oslan relies on Mills’ disclosure of a microprocessor and associated electronics, including firmware employing a digital bandpass filter for detecting ECG signals. Id. (citing Ex. 1006, 2:20–23). This cited sentence of Mills further discloses characterizing ECG signals (processing) based on QRS complexes or pacer and defibrillator pulses, but ignoring noise and motion artifacts. Ex. 1006, 2:20–25. Patent Owner makes additional arguments, such as alleging that the” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,076,257 - Masimo Corporation v. Apple Inc.InstitutedPTAB · Oct 5, 2023 · IPR2023-00734 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood that Masimo would prevail on claims 1, 7, and 14 as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (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, Paper 6 at 8.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’491 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’491 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“We discern no material difference between the parties’ definitions. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. 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). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for certain terms concerning the cover material—“a cover formed from a dielectric material,” “a transparent substrate,” and “a cover comprising a non-conductive material”—and window terms such as “defines at least one window” and “window defined.” Pet. 7–10. Patent Owner states: “While not agreeing with Petitioner’s proposed constructions (or lack thereof) for certain claim terms . . . , solely for purposes of this Preliminary Response, Patent Owner does not object to the constructions proposed by Petitioner at this time.” Prelim. Resp. 24. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,942,491
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.