- Infineon Technologies AG v. Amatech Group LimitedRehearing grantedPTAB · Apr 3, 2024 · IPR2022-00951 · APJ Stacey G White · IPR · Rehearing
On rehearing, the Board held claim 3 unpatentable as obvious over Eray-WO799, revising the final written decision’s outcome for that claim.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“unrebutted expert testimony corroborated by two prior art patents describing RFID smart cards” and that this evidence “demonstrated that a conventional and obvious way to manufacture Eray-WO799’s smart card was by forming a card antenna on a card body before adding the chip.” Req. Reh’g 2 (citing Pet. 39–40; Paper 20 (“Reply”) at 31). Thus, Petitioner argues a person of ordinary skill in the art would have understood that an obvious and conventional way of manufacturing the card body of Eray- WO799 would have had unconnected ends as required by our construction. Id. Paragraph 149 of Dr. van der Weide’s declaration states that a person of ordinary skill in the art “would have understood that an obvious and conventional way to construct the smart card as shown in Eray-WO799 FIG. 12 would have been to form the turns S1, S2, SC3 and SC4 on or in the card body (e.g., by laying wire) before connecting the wire to (or forming) access terminals and connecting module M.” Ex. 1003 ¶ 149. In support of that because it was “directed to solving problems that occur during the manufacture of cards.” Dec. 42 (citing Ex. 1028, 1:25–2:53). Petitioner points out that “[w]hile Ryu discloses manufacturing techniques, Ryu also describes and claims a ‘communication system’ with a smart card and a reader.” Reh’g Req. 9 (citing Ex. 1028, code (57), claims 1–2). Petitioner is correct in noting that Ryu’s disclosures are not so narrow as we described in the Decision. As to Finn-089, we found that reference unhelpful because it was “directed to a process for the contacting of a wire conductor in the course of manufacture of a transponder unit.” Dec. 41–42 (citing Ex. 1015, 1:15–17). Petitioner asserts that we failed to acknowledge to the fact that Finn-089 was incorporated by reference in the ’240 patent noting that “[p]atents incorporated by reference ‘are effectively part of the host [patents] as if [they] were explicitly contained therein.’” Reh’g Req. 9 (citing X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in Rehearing Request)). On this record, we agree that we overlooked and misapprehended the import of Ryu and Finn-089 and if those references are given appropriate weight, they lend further credence to Dr. van der Weide’s testimony that one of ordinary skill in the art would have known that an obvious way to manufacture Eray-WO799 would have created an intermediate product with requisite free ends. Further, we adopt the full reasoning stated in the Dissent as to the unpatentability of claim 3 (Dec. 53–57). Therefore, we GRANT Petitioner’s Request for Rehearing slip op. at 6
- Skill levelSkill level petitioner adoptedOther
“As stated in our Final Written Decision, we adopted Petitioner’s definition of the person of ordinary skill in the art and found that the person of ordinary skill in the art would have possessed “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Dec. 6–7 (citing Pet. 8; PO Resp. 18). Petitioner’s declarant, Dr. Daniel van der Weide, supported Petitioner’s definition, which was adopted for this proceeding. Ex. 1003 ¶ 25. Dr. van der Weide defined himself as “a person of more than ordinary skill in the art during the relevant timeframe” because “[b]y 2010, [he] held a Ph.D. in electrical engineering, and [he] had at least” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“unrebutted expert testimony corroborated by two prior art patents describing RFID smart cards” and that this evidence “demonstrated that a conventional and obvious way to manufacture Eray-WO799’s smart card was by forming a card antenna on a card body before adding the chip.” Req. Reh’g 2 (citing Pet. 39–40; Paper 20 (“Reply”) at 31). Thus, Petitioner argues a person of ordinary skill in the art would have understood that an obvious and conventional way of manufacturing the card body of Eray- WO799 would have had unconnected ends as required by our construction. Id. Paragraph 149 of Dr. van der Weide’s declaration states that a person of ordinary skill in the art “would have understood that an obvious and conventional way to construct the smart card as shown in Eray-WO799 FIG. 12 would have been to form the turns S1, S2, SC3 and SC4 on or in the card body (e.g., by laying wire) before connecting the wire to (or forming) access terminals and connecting module M.” Ex. 1003 ¶ 149. In support of that because it was “directed to solving problems that occur during the manufacture of cards.” Dec. 42 (citing Ex. 1028, 1:25–2:53). Petitioner points out that “[w]hile Ryu discloses manufacturing techniques, Ryu also describes and claims a ‘communication system’ with a smart card and a reader.” Reh’g Req. 9 (citing Ex. 1028, code (57), claims 1–2). Petitioner is correct in noting that Ryu’s disclosures are not so narrow as we described in the Decision. As to Finn-089, we found that reference unhelpful because it was “directed to a process for the contacting of a wire conductor in the course of manufacture of a transponder unit.” Dec. 41–42 (citing Ex. 1015, 1:15–17). Petitioner asserts that we failed to acknowledge to the fact that Finn-089 was incorporated by reference in the ’240 patent noting that “[p]atents incorporated by reference ‘are effectively part of the host [patents] as if [they] were explicitly contained therein.’” Reh’g Req. 9 (citing X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in Rehearing Request)). On this record, we agree that we overlooked and misapprehended the import of Ryu and Finn-089 and if those references are given appropriate weight, they lend further credence to Dr. van der Weide’s testimony that one of ordinary skill in the art would have known that an obvious way to manufacture Eray-WO799 would have created an intermediate product with requisite free ends. Further, we adopt the full reasoning stated in the Dissent as to the unpatentability of claim 3 (Dec. 53–57). Therefore, we GRANT Petitioner’s Request for Rehearing slip op. at 6
§ 103 obviousnessPatents in suitUS 9,165,240 - Resi Media LLC v. Boxcast Inc.All claims unpatentablePTAB · Apr 12, 2023 · IPR2022-00067 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–36 are unpatentable under § 103; the Board relied on Morford and Maes, with Lu, McGrew, or Barreto for dependent-claim grounds, and did not reach Allen-based grounds.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“With respect to the claimed ABD, we determine that even under Patent Owner’s construction requiring a “processor optimized for audio and video compression,” Petitioner has shown that the independent claims would have been obvious over Morford and Maes.10 Therefore, we need not construe the term to resolve the obviousness contentions at issue.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“circumvention of” is a limitation to specific steps or configurations, not to the entirety of the claimed method (for method claims 1–20) or system (for system claims 21–36). Using claim 1 as an example, the ABD must, “without any modification to or circumvention of the router . . . receive data . . . from the first server.” Ex. 1003, 38:34–36, 38:42–54. However, claim 1 also requires “establishing an Internet connection for the ABD behind the router” in which the “router prevents remote access to the ABD from outside the router.” Id. at 38:31–33. Clearly, the router cannot simultaneously prevent (all) remote access to the ABD from outside the router and also permit the first server to send data to the ABD. But the claim limits these two actions to the individual steps in which they appear. Only during the “establishing an Internet connection” step is the router required to “prevent remote access to the ABD.” And only the six stated autonomous ABD actions are required to be performed “without modification or circumvention of the router.”” slip op. at 12
- Skill levelSkill level board ownOther
“For purposes of this Decision, we do not determine that the differences between the proffered levels of ordinary skill in the art would be dispositive. We adopt our determination in the Institution Decision, in which we adopt the parties’ asserted level having between two to four years of experience. Inst. Dec. 20.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“b) Analysis Having reviewed the entirety of the record and analyzed the evidence, we determine, with respect to the limitations not specifically contested by Patent Owner, that Petitioner’s assertions are supported by the record, in the manner discussed above. Regarding those limitations contested by Patent Owner, we address and analyze those limitations below. As discussed below, we determine that Petitioner has shown, by a preponderance of the evidence, that claim 1 is unpatentable under § 103 as obvious over the combination of Morford and Maes.” slip op. at 27
Patent outcomesUS 10,154,317 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,154,317 - Resi Media LLC v. Boxcast Inc.All claims unpatentablePTAB · Apr 12, 2023 · IPR2022-00066 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1–30 are unpatentable under § 103; the Board relied on Allen and Maes for claims 1–17, 21–24, 26, and 30, and did not reach remaining grounds.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“without modification or circumvention of the router” as follows. We begin with the language of the claims and the originally-filed disclosure. With respect to the originally-filed disclosure of the ’574 patent, no explicit discussion is presented to define or explain the terms “modification” or “circumvention.” With respect to the claims as a whole, the “without modification to or circumvention of” is a limitation to specific steps or configurations, not to the entirety of the claimed method (for method claims 1–11, 22–30) or system (for system claims 12–21). Using claim 1 as an example, the ABD must, “without any modification to or circumvention of the router . . . receive data . . . from the first server.” Ex. 1001, 26:32–60. Claim 1 also requires “establishing an Internet connection for the ABD behind the router” in which the “router prevents remote access to the ABD from outside the router.” Id. at 26:35–37. However, the router cannot simultaneously prevent (all) remote access to the ABD from outside the router and also permit the first server to send data to the ABD. So, the claim limits these two actions to the individual steps in which they appear. Therefore, only during the “establishing an Internet connection” step is the router required to “prevent remote access to the ABD.” And only the six autonomous ABD actions recited in the claim are required to be performed “without modification or circumvention of the router.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction needed
“3. Additional Claim Terms Construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). With respect to the terms “scheduling logic,” “streaming information,” “contemporaneously with the live event,” “transmitted [received] out of band,” and “dynamically scaling the server based on demand,” these terms are not in controversy. Thus, we need not construe those terms.” slip op. at 16
- Skill levelSkill level board ownOther
“Patent Owner does not specifically assert a level of skill in the art. Patent Owner’s declarant, Dr. Akl, does testify that a person of ordinary skill in the art of the ’574 patent: would have . . . a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and 2–3 years of experience in the design or development of telecommunication and networked systems, or the equivalent. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Ex. 2017 ¶ 35. Under either level of skill, a person having a bachelor’s degree in computer engineering or a related field, and a couple years’ experience in networked systems or the equivalent would qualify as a person having ordinary skill in the art. The primary difference between Petitioner’s assessment and Dr. Akl’s is whether “2–3 years” or “four years” of experience is appropriate, neither explains why their assessment is appropriate. See Ex. 1007 ¶ 30; Ex. 2001 ¶¶ 20, 21 (addressing without argument or comment the assessment of Petitioner’s declarant); Ex. 2017 ¶ 35. For our analysis, we do not determine this difference to be dispositive; rather, we determine that the appropriate level is between two and four years of experience.” slip op. at 18
- Expert testimonyPetitioner expert creditedPatent owner expert creditedOther
“that Allen lacks an ABD behind a router. Rather, we credit the testimony of Dr. Easttom that a “network has to have a router,” and “a router must be present in Allen” given Allen’s use of WANs with the Internet being one example of a WAN. Ex. 1007 ¶¶ 226, 228; Ex. 2001 ¶ 85; see Ex. 2005, 125:19–126:25. Dr. Akl also characterizes WANs at the critical time as having a “single, unique, public outfacing address,” referred to as its “WAN IP,” and that the term “WAN IP was used in the reference materials for (“share one Wide Area Network (WAN) IP address for multiple computers on your Local Area Network”)). Dr. Akl further describes client devices in a Local Area Network as connecting to other devices on the Internet through a router. Id. ¶ 43. Second, we find that Allen discloses an ABD, even under Patent Owner’s construction, because Allen’s MCD (1) is a “dedicated (i.e., specific-purpose) device” and not merely a general-purpose computer, and (2) is “configured to capture, process, store and/or send real-time media signals (e.g., audio signal, video signal . . . )” and broadcast the audio/video content over a network. See Ex. 1008 ¶¶ 1015, 1021, 1076–1077, Figs. 6, 8; Ex. 1056 ¶¶ 46–47. Additionally, we credit the testimony of Dr. Akl, who testified that “if [a computer] is able to carry out the functionality, then it’s not a general-purpose computer.” Ex. 1064, 55:23–25.” slip op. at 31
Patent outcomesUS 9,686,574 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,686,574 - PNC Bank, N.A. v. United Services Automobile AssociationInstitution deniedPTAB · May 11, 2022 · IPR2022-00050 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on claims 1–30 because Petitioner did not show a reasonable likelihood that the asserted references qualified as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Technology, Inc., 815 F.3d 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”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 15
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“But, even accepting these premises, we disagree with the conclusion Petitioner asks us to draw from them. In particular, Petitioner appears to contend that we should find that the ’974 application does not provide written description support for the claims of the ’638 patent merely because the scope of the claims includes a configuration that is not expressly described in that document. See Pet. 15–16, 22. But this reflects a misunderstanding of the law—a claim can be broader than the embodiments disclosed. See, e.g., Rexnord, 274 F.3d at 1344 (“An applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention.”); see also Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1582 n.7 (Fed. Cir. 1996) (noting that a claim may be “literally infringed by undisclosed embodiments” and yet sufficiently supported); Application of Smythe, 480 F.2d 1376, 1384 (C.C.P.A. 1973) (“We cannot agree with the broad proposition . . . that in every case where the description of the invention in the specification is narrower than that in the claim there has been a failure to fulfill the description requirement in section 112.”).” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“D. Obviousness Grounds Petitioner contends that the subject matter of claims 1–30 of the ’638 patent would have been obvious over various combinations of Oakes-I, Oakes-II, Medina, and Roach (collectively, “the asserted references”). Pet. 5, 32–100. Petitioner argues that the asserted references are prior art because the claims of the ’638 patent are not entitled to a priority date earlier than July 28, 2017. Id. at 4–5, 11–29. Patent Owner contends that Petitioner fails to establish a reasonable likelihood of success because Petitioner fails to sufficiently show that the asserted references qualify as prior art. Prelim. Resp. 18–59. Having reviewed the parties’ arguments and evidence, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that the asserted references are prior art,8 and as a result, Petitioner fails to sufficiently show that any claim would have been unpatentable based on the asserted references.” slip op. at 16
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“In the first Joint Motion to Seal, the parties request entry of a Protective Order that is substantially the same as the Board’s Default Protective Order (see Consolidated Trial Practice Guide16 at 107–122 (App. B, Protective Order Guidelines and Default Protective Order)). Paper 9, 2.17 The parties also request sealing of Exhibit 2006 and sealing of portions of the Preliminary Response relating to that exhibit. Id. at 2–3. The portions of the Preliminary Response (Paper 11) requested to be sealed can be identified from the redacted version of the Preliminary Response filed as Paper 12. Based on the representations in the Joint Motion to Seal (Paper 9), the parties have shown good cause for entering the Protective Order and for sealing Exhibit 2006 and the identified portions of the Preliminary Response.” slip op. at 37
§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,402,638 - PNC Bank, N.A. v. United Services Automobile AssociationInstitution deniedPTAB · Apr 27, 2022 · IPR2022-00049 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution for claims 20 and 22 because Petitioner did not show a reasonable likelihood that the asserted combinations rendered them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“IV. CONCLUSION The Petitioner has not persuasively established that a skilled artisan would have been motivated to combine the cited references so as to render any of the challenged claims unpatentable. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of showing at least one of the claims challenged in the Petition would have been obvious. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), no inter partes review as to any claim of the ’638 patent is instituted; and” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Pet. 25–27 (emphasis added) (alterations in original). Although this passage is somewhat lengthy, the only reasons provided for combining the relevant teachings of Garcia and Byrne are “to avoid wasting communications resources and adding delays,” “avoid wasting resources and adding delays,” and “reducing wasteful network transmission and delays.” See id. However, the only argument as to the existence of the alleged motivating waste and delay is: “Garcia sends images by ‘a mobile telephone communications network, for example a GSM/GPRS network. . . A POSITA would have known that such networks are bandwidth and resourceconstrained, and that communications over such networks take[ ] time.” Id. at 25 (quoting Ex. 1103, 11:21–12:1). In the Petition, there is no explanation or reasoning to support concluding, based on Garcia’s statement that images are sent using a mobile telephone communications network, that a skilled artisan would recognize waste and delay even if such networks are bandwidth and resource-constrained and that communications over such networks take time. See id. And, there is no explanation or reasoning for concluding that a skilled artisan would recognize that to “check for errors before the submitting” in the manner taught by Byrne would help alleviate waste and delay in Garcia’s system. The only articulated rationale to combine in the Petition is a simple, unelaborated assertion that a skilled artisan would have known that “networks are bandwidth and resource-constrained” and “communications over such networks take time.” This assertion is too general10 and conclusory to accorded much weight and is inadequate to support the finding of rationale to combine. There is no elaboration in the Petition as to what is meant by this sentence. The Petition fails to explain what pertinent knowledge a skilled artisan would have had and how exactly this would have motivated the combination of the relevant teachings of Garcia and Byrne.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312– 19 (Fed. Cir. 2005) (en banc), claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). There is a “heavy presumption,” however, that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted). We determine we need not explicitly construe any claim terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 14
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Preliminary Response and Exhibit 2006); Paper 13 (relating to the Reply); and Paper 17 (relating to the Sur-reply). In each of these motions, the parties seek to protect as confidential certain information that relates to the issue of whether Petitioner has properly identified all the real parties in interest in its Petition. See 35 U.S.C. § 312(a)(2). As we deny the Petition on the merits and do not grant the request to institute an inter partes review, the issue of identification of the real parties in interest to this proceeding is moot. Therefore, we do not reach the arguments and evidence of the parties relating to whether Petitioner identified all the real parties in interest in the Petition, and we make no reference in this Decision to the documents and information that the parties seek to protect as confidential.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,402,638 - Unified Patents, LLC v. Micropairing Technologies LLCInstitution deniedPTAB · Apr 12, 2022 · IPR2021-01557 · APJ Iftikhar Ahmed · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 6, and 10–23 were unpatentable under the asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityNot reached
“On this record, we determine that we need not address whether the Unnamed RPIs were improperly excluded because, “even if [they] were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” SharkNinja, IPR2020-00734, Paper 11 at 18. Like in SharkNinja, the Unnamed RPIs here are currently members of Unified and some of them may have been accused of infringement of the ’816 patent, but there is no allegation or evidence that any of those members are barred or estopped from this proceeding.8 And although Patent Owner contends that “Petitioner’s failure to identify members funding its activities as real-parties-in-interest raises estoppel issues,” the only estoppel issue that Patent Owner identifies is estoppel that could potentially arise under 35 U.S.C. § 315(e) in the future. Prelim. Sur-reply 1-2. However, because we deny institution of inter partes review on the merits (see infra § III.F), there is no estoppel triggered under 35 U.S.C. § 315(e) by our decision. In the present proceeding, there is no allegation that Petitioner’s exclusion of the Unnamed RPIs should result in termination of the proceeding or denial of institution of review for any reason other than for the alleged failure to comply with the Board’s rules requiring the identification of RPIs. Additionally, there is no allegation or evidence that any of the Unnamed RPIs is barred or estopped from this proceeding, or that Petitioner purposefully omitted any of the Unnamed RPIs to gain some advantage. We” slip op. at 10
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyNot reached
“On this record, we determine that we need not address whether the Unnamed RPIs were improperly excluded because, “even if [they] were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” SharkNinja, IPR2020-00734, Paper 11 at 18. Like in SharkNinja, the Unnamed RPIs here are currently members of Unified and some of them may have been accused of infringement of the ’816 patent, but there is no allegation or evidence that any of those members are barred or estopped from this proceeding.8 And although Patent Owner contends that “Petitioner’s failure to identify members funding its activities as real-parties-in-interest raises estoppel issues,” the only estoppel issue that Patent Owner identifies is estoppel that could potentially arise under 35 U.S.C. § 315(e) in the future. Prelim. Sur-reply 1-2. However, because we deny institution of inter partes review on the merits (see infra § III.F), there is no estoppel triggered under 35 U.S.C. § 315(e) by our decision. In the present proceeding, there is no allegation that Petitioner’s exclusion of the Unnamed RPIs should result in termination of the proceeding or denial of institution of review for any reason other than for the alleged failure to comply with the Board’s rules requiring the identification of RPIs. Additionally, there is no allegation or evidence that any of the Unnamed RPIs is barred or estopped from this proceeding, or that Petitioner purposefully omitted any of the Unnamed RPIs to gain some advantage. We” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, physics, or a related subject, and two to three years of work experience in in-vehicle infotainment systems.” Pet. 9–10 (citing Ex. 1002 ¶¶ 25–28). Patent Owner does not propose any particular skill level in its Preliminary Response. See generally Prelim. Resp. We determine, on the current record, that Petitioner’s proposed level of ordinary skill is consistent with the ’816 patent and 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); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We adopt that level in deciding whether to institute trial.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction standard that would be used to construe the claims in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2021). The claim construction standard includes construing claims in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing claims in accordance with their ordinary and customary meaning, we take into account the specification and prosecution history. Phillips, 415 F.3d at 1315–17. Petitioner identifies certain claim terms that were construed in pending district court litigation. Pet. 12–13 (listing constructions for “application,” “audio source,” “multi-processor system,” and “download a copy of a second/fourth software application”). Patent Owner does not address any of these constructions. See Prelim. Resp. 8. For purposes of this decision, we determine that no claim terms require express construction. 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 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,953,816 - PTAB · Jan 24, 2022 · IPR2021-01077 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted IPR on claims 1–18 on all asserted grounds, finding a reasonable likelihood that at least one claim would be shown obvious over the cited combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In view of Petitioner’s stipulation, we conclude that, following Sotera, this factor strongly favors institution. As in Sotera, “Petitioner’s stipulation mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions.” Sotera, Paper 12 at 19. We agree with the reasoning in similarly situated Samsung Electronics Co., Ltd. v. Acorn Semi, LLC, IPR2020-01183, Paper 17 at 43 (PTAB Feb. 10, 2021), that the stipulation “meaningfully simplifies overlapping issues between the parallel district court proceeding and this proceeding.” Patent Owner argues that, in Cisco Sys., Inc. v. Estech Sys.,” slip op. at 13
- Parallel petitionsDecided for petitioner
“On this record, we are persuaded that we should consider the merits of this Petition. In particular, Petitioner sufficiently explains and justifies its decision to file two petitions—one challenging the ’559 patent’s claimed this proceeding). Moreover, we deny institution of the other petition (see IPR2021-01076, Paper 21), and in our view, this further mitigates in favor of considering the merits of this Petition. Accordingly, we do not exercise our discretion under § 314(a) to deny institution of inter partes review on this basis.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having reviewed the parties’ papers and the evidence of record, we are not persuaded to discretionarily deny institution, and we determine that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’559 patent and the asserted prior art. To the extent the level of ordinary skill in the art is in dispute or makes a material difference in the obviousness analysis, the parties should brief their respective positions in this regard during trial.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,621,559 - PNC Bank N.A. v. United Services Automobile AssociationInstitution deniedPTAB · Jan 24, 2022 · IPR2021-01076 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show Oakes was prior art, so it failed to establish a reasonable likelihood that claims 1–18 were unpatentable over Oakes and Maloney.
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). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“Petitioner asks us to draw from them. In particular, Petitioner appears to contend that we should find that the ’247 application does not provide written description support for the device limitation merely because the scope of the claim includes a configuration that is not expressly described in that document. See Pet. 17–18, 21. But this reflects a misunderstanding of the law—a claim can be broader than the embodiments disclosed. See, e.g., Rexnord, 274 F.3d at 1344 (“An applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention.”); see also Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1582 n.7 (Fed. Cir. 1996) (noting that a claim may be “literally infringed by undisclosed embodiments” and yet sufficiently supported); Application of Smythe, 480 F.2d 1376, 1384 (C.C.P.A. 1973) (“We cannot agree with the broad proposition . . . that in every case where the description of the invention in the specification is narrower than that in the claim there has been a failure to fulfill the description requirement in section 112.”). There are situations where a claim’s breadth results in a lack of written description support, but Petitioner fails to show that such a situation is present here. In its argument, Petitioner primarily relies on Reckitt, but” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that Oakes is prior art,8 and as a result, Petitioner fails to sufficiently show that any claim would have been unpatentable over Oakes and Maloney.” slip op. at 10
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Preliminary Response and Exhibit 2006); Paper 13 (relating to the Reply); and Paper 19 (relating to the Sur-reply). In each of these motions, the parties seek to protect as confidential certain information that relates to the issue of whether Petitioner has properly identified all the real parties in interest in its Petition. See 35 U.S.C. § 312(a)(2). As we deny the Petition on the merits and do not grant the request to institute an inter partes review, the issue of identification of the real parties in interest to this proceeding is moot. Accordingly, we do not reach the arguments and evidence of the parties relating to whether the Petitioner identified all the real parties in interest in its Petition and we make no reference in this decision to the documents and information that the parties seek to protect as confidential.” slip op. at 25
§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,621,559 - PNC Bank, N.A. v. United Services Automobile AssociationInstitution deniedPTAB · Jan 20, 2022 · IPR2021-01071 · APJ Terrence W Mcmillin · IPR · Institution
Institution was denied for claims 1–23 because Petitioner did not show a reasonable likelihood that Oakes and Roach qualify as prior art.
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”)). Petitioner cannot satisfy its 2 US 7,873,200 B1, filed Oct. 31, 2006, issued Jan. 18, 2011 (Ex. 1038). 3 US 2013/0155474 A1, published June 20, 2013 (Ex. 1040). burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). “To satisfy the written description requirement [in § 112,] the disclosure of the prior application must ‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention.’” Id. (alteration in original) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991)). “[T]he hallmark of written description is disclosure.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The sufficiency of written description support is based on “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. “The level of detail required to satisfy the written description requirement” necessarily “varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. The invention need not be described in haec verba, but a disclosure that merely renders obvious the claims does not provide adequate written description support. Id. at 1352.” slip op. at 14
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We have considered Dr. Noble’s testimony, but it suffers from the same deficiencies as Petitioner’s arguments. See Ex. 1002 ¶¶ 42–59. Moreover, in our view, Dr. Noble does not sufficiently explain his conclusions regarding what a person of ordinary skill would have understood the inventor of the ’247 application to possess (or not possess), and accordingly, we assign little weight to that testimony. E.g., id. ¶¶ 47, 53, 55; see TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1358 (Fed. Cir. 2019) (“Conclusory expert testimony does not qualify as substantial evidence.”).” slip op. at 21
- ExcludeGranted
“In the first Joint Motion to Seal, the parties request entry of a Protective Order that is substantially the same as the Board’s Default Protective Order (see Consolidated Trial Practice Guide12 at 107–122 (App. B, Protective Order Guidelines and Default Protective Order)). Paper 9, 2.13 The parties also request sealing of Exhibit 2006 and sealing of portions of the Preliminary Response relating to that exhibit. Id. at 2–3. The portions of the Preliminary Response (Paper 8) requested to be sealed can be identified from the redacted version of the Preliminary Response filed as Paper 11. Based on the representations in the Joint Motion to Seal (Paper 9), the parties have shown good cause for entering the Protective Order and for sealing Exhibit 2006 and the identified portions of the Preliminary Response. Paper 14 (Joint Motion to Seal the Reply) and Paper 19 (Joint Motion to Seal the Sur-reply) request sealing of the portions of the Reply and Sur-reply relating to Exhibit 2006. The portions of the Reply (Paper 13) and Sur-reply (17) requested to be sealed can be identified from the redacted version of the Reply filed as Paper 16 and from the redacted version of the Sur-reply filed as Paper 20. Based on the representations in these two Joint Motion to Seal (Papers 14 and 19), the parties have shown good cause for sealing the identified portions of the Reply and Sur-reply.” slip op. at 27
§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,482,432
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.