- Netflix, Inc. v. VL Collective IP LLCInstitutedPTAB · Oct 3, 2023 · IPR2023-00630 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted inter partes review of claims 1–24 on all asserted grounds after finding a reasonable likelihood that Netflix would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in electrical or computer engineering, or a closely related scientific field such as computer science, and two years of work experience with multimedia content transmission and management.” Pet. 10. “Alternatively, any lack of experience could be remedied with additional education (e.g., a master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 4–5 years).” Id. Patent Owner does not address the level of ordinary skill. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision. slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner contends that “no claim terms require specific construction to resolve the unpatentability issues presented” in the Petition. Pet. 15–16. For purposes of this decision, we do not construe any claim terms.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“to combine the teachings of Cassin and Huston because both references concern controlling delivery of content to a remote device over a network, and the combination provides the benefit of Cassin’s media content delivery system with a differencing engine to determine whether this is content to delete from the remote client and sending a command to delete such content as taught by Huston. Pet. 32–35 (citing Ex. 1003, Wechselberger Decl. ¶¶ 202–204). Petitioner also contends that a person of ordinary skill would have had a reasonable expectation of success in combining the teachings of Cassin and Huston because adding a delete command to a server was a known technique and would have been straightforward to a person of ordinary skill in the art. Pet. 35–36 (citing Ex. 1003 ¶ 205). Huston discloses a differencing engine to detect whether a more recent version of a data item stored in cache is available, and if so, to delete the current version and store the more recent version in order to increase the accuracy and coherence of the cache. Ex. 1005, Abstract, 3:37–44. On this record, we are persuaded by Petitioner, that a person of ordinary skill would have updated data items stored by the remote client of Cassin by deleting old versions in order to yield the benefits of increasing accuracy and coherency as taught by Huston. For purposes of this Decision, we are sufficiently persuaded that Petitioner cites sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Cassin and Huston.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,440,559 - Walmart Inc. / Current Lighting Solutions, LLC v. Power Concepts, LLCAll claims unpatentablePTAB · Sep 15, 2023 · IPR2022-00569 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–14 are unpatentable; the contingent motion to amend proposing claims 15–28 and the motion to exclude are denied.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“of the claimed “light emitting diode.” Looking at the intrinsic evidence, neither the claim nor the specification defines the light emitting diode as including an integrated lens. With respect to Dr. Bretschneider’s analysis of Dowling’s lens described in paragraph 24, we disagree with Dr. Bretschneider’s conclusion that Dowling’s lens does not teach a lens as claimed. Ex. 2076 ¶ 431 (citing Ex. 1007 ¶ 24).” slip op. at 31
- 112 supportMotion to amend, deniedDenied
“electriciaan” and not a “licensed electrician.” Opp. 3–4 (citing Ex. 1002, 25 ¶¶ 6–7, 32 ¶¶ 46, 48). Instead, Petitioner argues that “the disclosure lacks the term ‘licensed electrician,’ lacks a definition of ‘licensed electrician,’ and lacks an explanation of what type of electrical connection would be allowed without the assistance of a licensed electrician.” Id.; Ex. 1035 ¶¶ 76–79) (emphasis omitted). Accordingly, Petitioner argues that the original application does not support proposed substitute claims 23 and 28. See id. We are persuaded by Petitioner’s argument. The ’295 and ’447 applications describe a “skilled” electrician, not a “licensed” electrician. Patent Owner does not show that one of ordinary skill in the art would interpret these to be equivalent. Accordingly, we find that proposed substitute claims 23 and 28 adds new matter. Proposed substitute claim 24 depends from claim 23 and thus includes the same new matter.” slip op. at 63
- Disclosure Requirements (§112) › Definiteness (Nautilus)Indefinite
“electrician. See id. (citing Ex. 1002, 25 ¶¶ 6–7). Petitioner’s declarant, Dr. Ducharme, attests that a “licensed electrician is an individual who has obtained a license from a regulatory authority such as a state or local government.” Ex. 1035 ¶ 85. The licensing standards set forth “differ depending upon a given industry” and “change over time.” Id. Accordingly, Petitioner asserts that “one skilled in the art is left to speculate as to what type of electrical wirings require a licensed electrician and which do not — there is no reasonable certainty of the scope of the claimed invention, as the standard requires.” Opp. 5–6 (citing Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014)). We are persuaded by Petitioner’s argument that proposed substitute claims 23 and 28 are indefinite. Specifically, we agree that there is no reasonable certainty as to the definition of a licensed electrician, nor how to adapt wiring for series connection without the required assistance of a licensed electrician. Accordingly, we find that proposed substitute claims 23 and 28 are indefinite. Proposed substitute claim 24 depends from claim 23 and thus includes the same indefinite limitation.” slip op. at 64
Patent outcomesUS 10,429,041 unpatentable§ 112 disclosurecites Phillips · NautilusPatents in suitUS 10,429,041 - Apple Inc. v. Aire Technology LimitedInstitutedPTAB · Jul 6, 2023 · IPR2023-00080 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR on claim 13 based on the reasonable likelihood that Burger and Cheng render it obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and preliminary 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.” For the reasons that follow, we institute an inter partes review as to claim 13 of the ’249 patent on the ground of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“knowledgeable and familiar with the secure electronic transaction arts. Pet. 13. Petitioner states that such a person “would have at least a four-year degree in electrical engineering, computer engineering, computer science, or a related field and two years of relevant experience in computer security, and developing, implementing, or deploying portable devices on systems connected to computer networks. A Master’s or Ph.D. degree in a relevant field may substitute for some work experience and greater experience might substitute for a four-year degree.” Id. Patent Owner does not address the level of ordinary skill. See generally, Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Claim 13 recites “the data carrier is arranged to create quality information about the authentication method used and to attach such quality information to the result of a security establishing operation.” Patent Owner contends that “claim 13 requires the performance of a ‘security establishing operation’ and that a portable data carrier (i) ‘create quality information about the authentication method used’; and (ii) ‘such quality information [is attached] to the result of [the] security establishing operation.’” Prelim. Resp. 9–10. Patent Owner contends that even though the claim does not recite performing a security establishing operation, the claim requires performing the security establishing operation, otherwise, there would not be a “result of a security establishing operation” as claimed. Id. at 10. Patent Owner contends that “the ’249 patent describes an exemplary ‘security-establishing operation’ of creating a digital signature of an electronic document.” Id. (citing Ex. 1001, 5:11–13). Thus, under Patent Owner’s proposed construction, the claimed “security establishing operation,” read in signature, but is not limited to creating a digital signature. Patent Owner contends that the claim requires attaching the quality information to the claimed “result” of the operation. Id. at 11. For purposes of this Decision, we construe “the data carrier is arranged to create quality information about the authentication method used and to attach such quality information to the result of a security establishing operation” to encompass at least attaching quality information to an encrypted document, such as a digitally signed document. We further construe the claimed “quality information” that is “attach[ed]” to “the result” to encompass digitally signed quality information. That is, the claim does not require the attached quality information to be unsigned. Further, we agree with Patent Owner, that “an exemplary ‘security establishing operation’ [is] creating a digital signature” (Prelim. Resp. 10), and therefore is not limited to an operation that creates a digital signature. We construe the claimed “security establishing operation” to encompass the example of creating a digital signature, and does not exclude other operations that establish security, such as encryption operations generally. Should the parties disagree with this construction, the parties are invited to address this issue further.” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,205,249 - Apple Inc. v. Zentian LimitedInstitutedPTAB · Jun 12, 2023 · IPR2023-00033 · APJ Christopher L Ogden · IPR · Institution
The Board instituted review of claims 46–51, 53, 54, 58, 59, 64, and 67 on all asserted grounds after finding a reasonable likelihood that claim 46 is obvious over Thelen, Bailey, and Chen.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“persuasive at this stage that claim 46 is unpatentable under § 103(a) as obvious over the combination of Thelen, Bailey, and Chen.” slip op. at 25
- Skill levelSkill level petitioner adoptedOther
“Relying on Mr. Schmandt’s testimony, Apple argues that a person of ordinary skill in the art would have had “a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition.” Pet. 5 (citing Ex. 1003 ¶¶ 24–26). At this stage, Zentian does not dispute Apple’s proposed level of ordinary skill in the art. Prelim. Resp. 4. Because Apple’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’319 patent, we adopt it for this decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Apple states that it “applies the plain and ordinary meaning of all claim terms,” and does not propose any explicit constructions. See Pet. 7. Likewise, Zentian does not propose any explicit constructions at this stage. See Prelim. Resp. 4. We do not find it necessary to explicitly construe any terms for this decision. To the extent that we need to interpret claim language, we address that language below in the context of the prior art. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,587,319 - Apple Inc. v. Zentian LimitedInstitutedPTAB · Jun 12, 2023 · IPR2023-00034 · APJ Christopher L Ogden · IPR · Institution
Instituted review of claims 1, 4, 5, 7, 9, 10, 12, and 14–16 on all asserted grounds based on a reasonable likelihood of prevailing on obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. After Zentian submitted its Preliminary Response, Apple requested authorization to submit a Sotera-type stipulation, which we authorized on April 14, 2023. See Paper 9, 1. Apple stipulated as follows: “If the instant IPR is instituted, Petitioner will not pursue in the parallel district court proceeding the same grounds as in the Petition or any grounds that could have reasonably been raised in the pending Petition.” Id. This is the type of broad stipulation contemplated in the Interim Procedure, and in light of this stipulation, we decline to exercise our discretion to deny institution under § 314(a).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (2022). Applying that standard, we institute an inter partes review of all the challenged claims of the ’277 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Mr. Schmandt’s testimony, Apple argues that a person of ordinary skill in the art would have had “a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition.” Pet. 3 (citing Ex. 1003 ¶¶ 28–30). At this stage, Zentian does not dispute Apple’s proposed level of ordinary skill in the art. Prelim. Resp. 6–7. Because Apple’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’277 patent, we adopt it for this decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Apple argues that all terms should be given their plain and ordinary meaning, except that the limitation “calculating means for calculating a distance indicating the similarity between a feature vector and a predetermined acoustic state of an acoustic model” in claim 14 (Ex. 1001, 39:6–8) is a means-plus-function limitation and thus invokes 35 U.S.C. § 112 para. 6 (2006). Pet. 5–6. Zentian states that it “does not dispute that construction at this time and it is not necessary to resolving the parties’ disputes.” Prelim. Resp. 7. At this preliminary stage, we agree with Zentian that resolving whether the claim 14 limitation invokes § 112 paragraph 6 does not appear to be necessary for resolving the grounds of the Petition. Otherwise, to the extent that we need to interpret claim language, we address that language below in the context of the prior art. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,979,277 - Apple Inc. v. Zentian LimitedInstitutedPTAB · Jun 12, 2023 · IPR2023-00036 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted review of claims 1, 2, 4, 6–14, 16–18, 20–29, 35, 37–39, and 42–45 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Smyth and Mozer.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition,” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1003 ¶¶ 24–25). At this stage of the proceeding, “Patent Owner does not dispute the Petition’s proposed level of skill for a person of skill in the art.” Prelim. Resp. 4. Based on the record presented, including our review of the ’789 patent and the types of problems and solutions described in the ’789 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision. See, e.g., Ex. 1001,1:25–2:27 (describing in the “Background of Invention” section of the ’789 patent various methods of speech recognition systems).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “applies the plain and ordinary meaning of all claim terms as understood by a POSITA for all terms.” Pet. 5. Patent Owner contends its “arguments in this Preliminary Response are based on the plain and ordinary meaning of the words of the claims themselves in view of the associated teachings of the specification.” Prelim. Resp. 5. We conclude that no terms require express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted)).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In this proceeding, Petitioner stipulates that “[i]f the instant IPR is instituted, Petitioner will not pursue in the parallel district court proceeding the same grounds as in the Petition or any grounds that could have been reasonably raised in the pending Petition.” Paper 9. In light of Petitioner’s stipulation, we decline to deny institution under Fintiv. Interim Procedure 3.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Mozer teaches that “the vector processor does not generate a CPU HOLD signal on control line 428 to carry out the vector operation because both vector inputs are accessed from peripheral memory 460.” Id. at 10:27– 30. Mozer teaches that “[t]his embodiment is advantageous because external processor is allowed to access the bus to perform other functions during a vector operation.” Id. at 10:32–34. Mr. Schmandt testifies that using a known technique of fabricating certain components on a single integrated circuit as taught by Mozer would have improved Smyth’s speech recognition system in the same way. Ex. 1003 ¶ 167. On this record, we are sufficiently persuaded that the Petition and supporting evidence provides a reason to combine the teachings of Smyth and Mozer. Mr. Schmandt testifies that “it was known in the prior art to fabricate a single integrated circuit that comprised a calculating apparatus and acoustic model memory for use in a speech recognition system.” Ex. 1003 ¶ 168 (citing Ex. 1029); see id. at ¶¶ 73–74. On this record, we are sufficiently persuaded by Mr. Schmandt’s testimony and the teachings of the prior art that fabricating a single integrated circuit that includes a calculating apparatus and an acoustic model memory as shown by Toyoda (Ex. 1029) was within the level of ordinary skill. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Based on the evidence and arguments currently of record, for purposes of institution, we determine that Petitioner demonstrates a reasonable likelihood that independent claim 1 is unpatentable under 35 U.S.C. § 103(a) over Smyth and Mozer.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,839,789 - Apple Inc. v. Zentian LimitedInstitutedPTAB · Jun 12, 2023 · IPR2023-00035 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–6, finding a reasonable likelihood that the Jiang and Smyth combinations, with additional references for dependent claims, render them unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] 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) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’377 Patent. Accordingly, we institute an inter partes review of claims 1–6 of the ’377 Patent on the ground of unpatentability raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“[T]he PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Interim Procedure 9. Here, Petitioner has filed such a stipulation, which provides the following: If the instant IPR is instituted, Petitioner will not pursue in the parallel district court proceeding the same grounds as in the Petition or any grounds that could have reasonably been raised in the pending Petition. Paper 9, 1. Thus, in light of Petitioner’s stipulation, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 33
- Skill levelSkill level petitioner adoptedOther
“person of ordinary skill in the art at the time of the invention “would have had a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition.” Pet. 4 (citing Ex. 1003 ¶ 24). Patent Owner indicates that it does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. Prelim. Resp. 5. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, 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), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party provides explicit claim constructions for claim features. Pet. 5–6; Prelim. Resp. 5. Therefore, we determine that it is not necessary to provide an express interpretation of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,062,377 - Apple Inc. v. Mullen Industries LLCInstitution deniedPTAB · Jun 7, 2023 · IPR2023-00098 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood of proving claims 1–35 unpatentable, including the limitation requiring asking the requesting device whether to request access rights.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“3. Conclusion Regarding Claim 1 We determine Petitioner has not shown a reasonable likelihood that it would prevail in its challenge to independent claim 1.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention would have had at least a bachelor of science degree in computer science, computer engineering, electrical engineering or a similar degree with one or two years of experience with wireless networks and devices, as well as with GPS or location-related technology/services, as well as familiarity with devices such as cell phones and personal digital assistants (“PDAs”) as well as wireless positioning technologies such as GPS, triangulation, or trilateration. Pet. 7 (citing Ex. 1021 ¶ 43). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We construe claims using the principles set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b) (2021). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party proposes any explicit claim constructions. Pet. 8; see generally Prelim. Resp. At this stage, we determine it is unnecessary to construe any terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Contrary to Petitioner’s arguments, though, neither Sheha nor Ganesh discloses or suggests asking the requesting device if location access rights are to be requested from the target device. Sheha teaches that “a [requesting] user can initiate a position request” and “[t]he server queries the [target user] for permission on whether the position request can be granted.” Ex. 1041, 5:24–31. Sheha does not teach asking the requesting user if location access rights are to be requested.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,635,540 - Apple Inc. v. Mullen Industries LLCInstitution deniedPTAB · May 15, 2023 · IPR2023-00117 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 42–72 were unpatentable over either asserted § 103 combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’117 patent. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor of science degree in computer science, computer engineering, electrical engineering, or a similar degree with one or two years of experience with wireless networks and devices, such as cell phones and personal digital assistants (‘PDAs’) and wireless positioning technologies such as GPS.” Pet. 9 (citing Ex. 1021 ¶¶ 42–45). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any explicit claim constructions, and asserts that “[t]he claim terms of the ’117 Patent are construed under the Phillips standard, considering the plain meaning of the claim terms to a person of ordinary skill in the art, in light of the language of the claims, the specification, and the file history.” Pet. 9. Patent Owner too does not propose any explicit claim constructions. See Prelim. Resp. At this stage, we determine it is unnecessary to construe any terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“that “a user can initiate a position request” from a remote server. Pet. 29 (citing Ex. 1041, 5:24–29, 11:55–58, claims 47, 54; Ex. 1021-7 ¶ 131). Petitioner cites the same disclosure, though, to argue “Sheha discloses requesting access rights from a wireless device” for limitation 42.e and 42.f. Pet. 29–30, 32 (citing Ex. 1041, 5:21–32; Ex. 1021-7 ¶¶ 132–136). To be sure, the cited portion of Sheha refers to only a single act performed by the requesting user: “a user can initiate a position request.” Ex. 1041, 5:24–25. We agree with Patent Owner that the cited portion of Sheha does not teach or suggest separate steps of a user requesting a location and the same user requesting location access rights. Petitioner’s reliance on Ganesh does not cure that deficiency. Petitioner and Mr. Williams cite Ganesh for its teachings of a “denial webpage” which presents to the user an option to receive the requested location at a later time. Pet. 30–31 (citing Ex. 1049, 6:33–49, Fig. 6; Ex. 1021–7 ¶ 134 (stating “Ganesh . . . illustrates examples of such conventional functionality of providing an option to request access rights via a display screen”)). Ganesh, however, does not address requesting location access rights; Ganesh describes an access denial web page provided following an unsuccessful attempt to obtain location information that asks whether the user would like to receive the location information at a later time, not prompting the user to request location access rights. Ex. 1049, 6:33–49, Fig. 6. In other words, neither Sheha nor Ganesh teaches or suggests displaying to a user an option to request location access rights, as a separate step from requesting a location of a second wireless device from a server. Thus, based on the evidence of record, we determine the Petitioner has not adequately shown that a person of ordinary skill would have combined Sheha and Ganesh to arrive at the claimed invention without improper hindsight.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,234,117 - Apple Inc. v. Mullen Industries LLCInstitutedPTAB · May 15, 2023 · IPR2023-00116 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 15–41 based on each petition ground, finding a reasonable likelihood that Apple would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’117 patent. Accordingly, we institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor of science degree in computer science, computer engineering, electrical engineering or a similar degree with one or two years of experience with wireless networks and devices, such as cell phones and personal digital assistants (‘PDAs’) and wireless positioning technologies such as GPS.” Pet. 9 (citing Ex. 1021 ¶¶ 42–45). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill.” slip op. at 9
- BurdenInstituted
“Regardless, however, we preliminarily determine the cited portions of Sheha teach or at least reasonably suggest a wireless telephone providing a login and password to a remote server and a remote server performing the recited functions. Sheha teaches that its ODAS employs authentication and authorization protocols as part of the process of ensuring a user that requests the location of another user has the appropriate permissions to access the location information. See, e.g., Ex. 1041, 5:41–46 (describing that privacy settings can be customized by a user to restrict who may have access to that user’s location information), 11:63–12:1 (describing an authorization process that uses a group database for a landline device), 12:1–7 (describing that the authorization process for a landline can be used in a mobile phone application). On the current record, we disagree with Patent Owner’s arguments that Sheha’s teachings of a username and password are separate and unrelated to Sheha’s teachings of authentication protocols used to identify users that are permitted to access location information, and we agree with Petitioner’s arguments that the login and password are used by the ODAS to determine the password is associated with a login and to determine whether the selected user has provided access rights for location information to the user of the wireless telephone, as recited in the claim. See Ex. 1041, 8:40–53 (describing username and password as part of authentication and authorization protocols), 11:55–12:7 (describing authentication and authorization protocols relating to a user-defined group database of specific users that have access to location information). On the current record, we also credit Mr. Williams’s testimony that logging in with a user name and password was conventional at the time of invention of the ’117 patent. Having considered the parties’ arguments and the evidence of record, we preliminarily determine Petitioner has shown that Sheha satisfies this limitation for the purposes of institution.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner does not propose any explicit claim constructions, and asserts that “[t]he claim terms of the ’117 Patent are construed under the Phillips standard, considering the plain meaning of the claim terms to a person of ordinary skill in the art, in light of the language of the claims, the specification, and the file history.” Pet. 9. Patent Owner too does not propose any explicit claim constructions. See Prelim. Resp. At this stage, we determine it is unnecessary to construe any terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,234,117
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.