- Google LLC v. Ikorongo Technology LLC And Ikorongo Texas LLCRehearing grantedPTAB · Jan 25, 2022 · IPR2021-00205 · APJ Bryan F Moore · IPR · Rehearing
The Board granted Google's rehearing request and instituted IPR on claims 5–7, 9–12, 21–23, 25–28, 37, and 39–42 on all petitioned grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6–7. Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7
- Parallel petitionsDecided for petitioner
“should exercise its discretion under § 314(a) to deny at least one of Petitioner’s two overlapping petitions. Petitioner concurrently filed two petitions against the ’554 patent: IPR2021-00204 (Petition 1) and IPR2021- 00205 (Petition 2).” Prelim. Resp. 18. Petitioner contends “Petition 2 challenges only claims with an admitted later priority date . . . [and n]one of the claims challenged in Petition 2 are addressed in Petition 1. The two” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“E. Obviousness Analysis We determine that Petitioner has shown a reasonable likelihood of establishing the obviousness of the limitations of claim 1 and of claim 5 (which includes the limitations of claim 1) and, on that basis, institute inter partes review of all the Challenged Claims. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims.”). Although dependent claim 5 is the first Challenged Claim in the Petition, we begin our analysis thereof by analyzing its underlying base claim, namely, independent claim 1.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,874,554 - Google LLC v. Ikorongo Technology LLC And Ikorongo Texas LLCRehearing grantedPTAB · Jan 25, 2022 · IPR2021-00204 · APJ Bryan F Moore · IPR · Rehearing
The Board granted rehearing and instituted IPR on claims 1–4, 8, 17–20, 24, 33–36, and 38 on all petition grounds, finding a reasonable likelihood of obviousness.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“as our basis for exercising our discretion to deny institution are no longer in the Western District of Texas. Ex. 1023, 16; Ex. 3003. In the Request for Rehearing, Petitioner argues that (at that time), “[b]ecause the Federal Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not 3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6. only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6. only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7
- Parallel petitionsDecided for petitioner
“B. Multiple Petitions In its Preliminary Response, Patent Owner also argues “[t]he Board should exercise its discretion under § 314(a) to deny at least one of Petitioner’s two overlapping petitions. Petitioner concurrently filed two petitions against the ’554 patent: IPR2021-00204 (Petition 1) and IPR2021- 00205 (Petition 2).” Prelim. Resp. 17. Petitioner contends “Petition 2 challenges only claims with an admitted later priority date . . . [and n]one of the claims challenged in Petition 2 are addressed in Petition 1. The two petitions therefore differ materially both in substance and in the defenses Patent Owner may potentially raise, and were needed to comply with the word limits.” Paper 3, 3. Patent Owner argues this reason is moot because Patent Owner “has opted to not raise a priority dispute at the pre-institution stage.” Prelim Resp. 18–20. We determine that Patent Owner may raise a priority challenge post-institution so Petitioner’s reason for two petitions is still valid. Thus, we determine that denial of one of the two petitions is not appropriate in this case.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We are also guided by the principle that we need only construe claim terms if, and to the extent that, it is necessary for the purpose of the proceeding. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). The Petition states, “[n]o claim terms need to be construed by the Board at this time.” Pet. 6. Patent Owner “does not propose any claim constructions.” Prelim. Resp. 21. Petitioner does present an implied construction of “location information” which we discuss below, in Section III.E.1.d., in association with Petitioner’s contentions regarding that claim term. Nevertheless, in this Decision, we give the claim terms their ordinary and customary meanings.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,874,554 - PTAB · Nov 17, 2021 · IPR2021-00544 · APJ Terrence W Mcmillin · IPR · Rehearing
Rehearing was granted and review instituted on all challenged claims and grounds after the Board found the ITC target date made Fintiv factor 2 neutral and Petitioner’s broadened stipulation favored institution.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Institution stated, “[t]he evidentiary hearing in the ITC investigation is scheduled to begin January 5, 2022, and the final determination is due April 29, 2022.” DDI 9 (citing Ex. 2004, 5; emphasis added). Petitioner is correct that the statement did not correctly state the target date for the ITC’s final determination. According to the Adopted Procedural Schedule for the ITC Investigation, the “Final ID” is due April 29, 2022, and the “Target Date” is August 29, 2022. Ex. 2004, 5. We agree that the ITC’s target date for final determination is more appropriate for evaluating Fintiv factor 2, consistent with the Board’s prior decisions. See Request 2–3 (identifying numerous proceedings). Applying the August 29, 2022, date, we conclude that Fintiv factor 2 is neutral in this proceeding, because of the close proximity between the ITC’s target final determination and our expected final written decision based on the mailing date of this Decision.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDecided for petitioner
“Institution stated, “[t]he evidentiary hearing in the ITC investigation is scheduled to begin January 5, 2022, and the final determination is due April 29, 2022.” DDI 9 (citing Ex. 2004, 5; emphasis added). Petitioner is correct that the statement did not correctly state the target date for the ITC’s final determination. According to the Adopted Procedural Schedule for the ITC Investigation, the “Final ID” is due April 29, 2022, and the “Target Date” is August 29, 2022. Ex. 2004, 5. We agree that the ITC’s target date for final determination is more appropriate for evaluating Fintiv factor 2, consistent with the Board’s prior decisions. See Request 2–3 (identifying numerous proceedings). Applying the August 29, 2022, date, we conclude that Fintiv factor 2 is neutral in this proceeding, because of the close proximity between the ITC’s target final determination and our expected final written decision based on the mailing date of this Decision.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Summary as to Claim 1 Petitioner has shown a reasonable likelihood of showing that claim 1 of the ’423 patent would have been obvious in view of the combined teachings of Jeon, Everett, and Abramson. 5. Claims 2–4, 6–10, 12–15, 18–23, 25, and 26 Petitioner also contends that claims 2–4, 6–10, 12–15, 18–23, 25, and 26 would have been obvious in view of a combination of the asserted references. See Pet. 26–80. As noted previously, Patent Owner does not address the merits of any portion of the Petitioner’s obviousness showing. See generally Prelim. Resp. Thus, at this stage, Petitioner’s obviousness showing as to claims 2–4, 6–10, 12–15, 18–23, 25, and 26 is undisputed. We have determined that there is a reasonable likelihood that the Petitioner will prevail with respect to at least one of the claims challenged in the Petition pursuant to 35 U.S.C. § 314 and that inter partes review should be instituted. Accordingly, we institute as to all the challenged claims and all the challenges raised in the Petition. SAS Institute Inc. v. Iancu, 138 S.Ct. 1348, 1358 (2018); 37 C.F.R. §42.108 (a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). III. CONCLUSION Petitioner has persuaded us that rehearing is appropriate and we grant the Request for Rehearing. After reconsidering our discretionary denial of the Petition, we determine that discretionary denial is inappropriate. And, we determine that Petitioner has demonstrated a reasonable likelihood of showing at least one of the claims challenged in the Petition would have been obvious. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Request for Rehearing is granted; FURTHER ORDERED that an inter partes review is instituted on all challenged claims under all challenged grounds; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of the ʼ423 patent is hereby instituted commencing on the entry date of this Decision, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“With regard to combining the relevant teachings of Jeon and Everett relating to this limitation, the Petition states: It would have been obvious to combine this well-known, reduced base station approach velocity with [ ]Jeon . . . Doing so is nothing more than substituting a known feature (e.g., Everett’s reduced base station approach velocity) in an existing system ([ ]Jeon’s robot cleaner) according to known methods (e.g., function of stand-off distance) to achieve a predictable result (avoiding collision with and/or increased maneuverability for accurate alignment with the base station). Id.; KSR, 550 U.S. at 416-418. Selecting a reduced base station approach velocity is a known, obvious, trivial selection from a limited number of options (increasing, decreasing, or maintaining velocity). Likhachev, ¶ 82. Given the benefits of reducing the velocity (e.g., avoiding collision and/or increased maneuverability), to the extent not already understood from [ ]Jeon and the knowledge of a skilled artisan, a skilled artisan would have found it obvious to try reducing the base station approach velocity of [ ]Jeon’s robot cleaner as taught by Everett. Id.; KSR, 550 U.S. at 421. Pet. 19–20. At least at this stage of the proceedings, we determine that Petitioner provides sufficient rationale for combining the relied upon teachings of Jeon and Everett. We determine that, for purposes of institution, Petitioner has shown sufficiently that the cited art teaches this limitation.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,884,423 - Apple Inc. v. Corephotonics, Ltd.Rehearing grantedPTAB · Nov 4, 2021 · IPR2020-00487 · APJ Monica S Ullagaddi · IPR · Rehearing
Claims 1–18 are unpatentable under §103: claims 1–4, 7, 10–13, and 16 over Golan and Martin; the remaining claims over combinations adding Ahiska, Levey, or Parulski.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We initially concluded that Petitioner failed to establish a reasonable likelihood of prevailing in demonstrating that the challenged claims are unpatentable. Paper 9 (“Decision Denying Institution” or “DDI”). Specifically, we concluded that Petitioner’s rationale for combining Golan and Martin was not sufficiently supported by a rational underpinning. Dec. 26 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Accordingly, we declined to institute trial on the challenged claims of the ’233 patent. Id. Petitioner filed a request for rehearing (Paper 10, “Rehearing Request” or “Reh’g Req.”) of our Decision Denying Institution. We granted that request and instituted trial (Paper 13, “Institution Decision” or “Inst. Dec.”) on all challenged claims on all grounds set forth in the Petition. Patent Owner filed a Response (Paper 16, “Patent Owner Response” or “PO. Resp.”).1 Petitioner filed a Reply (Paper 25, “Petitioner’s Reply” or “Pet.” slip op. at 2
- Expert testimonyOther
“Dr. Durand testifies that “a POSITA would have understood that Martin’s teachings of critical alignment for stable transition between images of different points of view apply to electronic camera systems providing continuous zoom video output [i]mages as taught in Golan, regardless of whether a three dimensional illusion is provided.” Ex. 1003 ¶ 59. Citing Ahiska (Ex. 1007), Border (Ex. 1009), Orimoto (Ex. 1014), and Hansen (Ex. 1019) to support his testimony, Durand further testifies that It was well known in the art that for seamless transition between two images of different points of views in continuous zoom video applications, when calibration between two cameras (e.g., the electronic calibration of Golan) is not sufficient alone (e.g., because of shocking, vibration, thermal variation, etc.), image registration of two images from two imaging sections for position matching (e.g., critical alignment of Martin) may be used. Id. ¶ 57 (citing Ex. 1007, 4:58–62, 10:2–5; Ex. 1014, 1:63–2:1; Ex. 1019, 1059; Ex. 1009 ¶¶ 41, 42). The portion of Hansen (Ex. 1019) cited by Dr. Durand addresses how extrinsic calibration errors occur and “a method to recalibrate extrinsic parameters online to correct drift or bias.” Ex. 1019, 1059 (emphasis omitted). Orimoto discloses how misalignment occurs, irrespective of “how exactly the dual lens camera has been conditioned and adjusted by the manufacturer.” Ex. 1014, 1:63–2:1. Border addresses image registration as an alternative to correspondence (i.e., calibration). Ex. 1009 ¶¶ 41, 42. And Ahiska disclose image registration or matching, when calibration is insufficient, to provide a seamless transition between master and slave cameras and “create the quality of a continuous zoom function.” Ex. 1007, 4:58–62, 10:2–5 (“[i]f calibration between the [wide-angle] master and slave cameras is insufficient alone, image registration or matching can be carried out,” “transition[ing] between the master view and the slave view as seamlessly as possible to create the quality of a continuous zoom function”). Petitioner’s third and fourth reasons for combining Golan and Martin are supported by Dr. Durand’s testimony quoted above, which is in turn supported by Ahiska and Border. The portions of Border cited by Dr. Durand address image registration as an alternative to correspondence (i.e., calibration). Ex. 1009 ¶¶ 41, 42. The portions of Ahiska cited by Dr. Durand address the additional step of image registration or matching, when calibration is insufficient, to provide a seamless transition between master and slave cameras and “create the quality of a continuous zoom function.” Ex. 1007, 4:58–62, 10:2–5. Thus, each of Border and Ahiska show a relation between electronic calibration and registration. As such, and for the foregoing reasons, we are persuaded that Petitioner’s rationale for combining Golan and Martin is supported by sufficient rational underpinning, based on the entirety of the record developed at trial. See KSR, 550 at 418.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends [A] Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or the equivalent degree in electrical and/or computer engineering or a related field and 2–3 years of experience in imaging systems including optics and image processing. Pet. 5. Petitioner supports its contention with the testimony of Dr. Durand. Ex. 1003 ¶ 17. Patent Owner “adopts Petitioner’s definition of the level of ordinary skill. . . .” PO Resp. 7 (citing Pet. 3; Ex. 2015 ¶¶ 31–33). The level of ordinary skill in the art proposed by Petitioner is consistent with the ’233 patent and the asserted prior art. Where pertinent, we apply Petitioner’s definition in making the findings and conclusions rendered in this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“understood ‘reduce an image jump effect seen in video output images’ to mean “reduce a discontinuous image change in video output images.’” Pet. 6 (citing Ex. 1003 ¶¶ 41–43). Petitioner asserts the Specification supports this proposed construction. Id. (citing Ex. 1001, 10:30–40). Patent Owner “adopts, for this IPR proceeding only, Petitioner’s proposed construction for the phrase ‘reduce an image jump effect seen in video output images’ and appl[ies] it in [its] analysis herein.” PO Resp. 8 (citing Ex. 2015 ¶¶ 34–36). We do not discern a dispute between the parties regarding this limitation and we need not expressly construe this limitation to resolve the controversy before us. See, e.g., 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 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,661,233 - PTAB · Sep 24, 2021 · IPR2021-00095 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board granted rehearing, vacated its discretionary denial, and instituted review of claims 1, 2, 6, 8–10, and 12–20 on all asserted grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“misapprehended the nature and fragility of Patent Owner’s assertion of the ’707 Patent in the ITC Investigation and the corresponding likelihood that the ITC Investigation would yield a final invalidity determination before a final written decision is this proceeding, and further that the facts as they stand today do not support the Board’s Decision.” Request 2. We do not agree that the Board misapprehended anything. Our Decision Denying Institution was appropriate under the facts as they existed at the time. We do agree that the facts as they stand today do not support our Decision Denying Institution and, in light of the changed facts, we modify our earlier decision that exercised our discretion to deny institution. The parallel proceeding that served as our basis for exercising our discretion to deny institution no longer involves the ’707 patent. On June 28, 2021, the ITC Investigation was terminated with respect to the ’707 patent. Ex. 1063, 2. Petitioner argues that, “Patent Owner’s decision to terminate the ’707 Patent from the ITC Investigation eliminates the factual basis for the Board’s denial of institution.” Request 4. We agree. In weighing the Fintiv factors, we relied on the involvement of the ’707 patent in an ITC investigation as the basis for our weighing 4 of 6 factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 9 (factor 1), 10 (factor 2), 11 (factor 3), 14 (factor 5), 15 (holistic assessment). However, the ITC investigation no longer provides any basis for exercising our discretion to deny institution.11 We possess the inherent authority to reconsider our Decision Denying Institution. See GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1313 (Fed. Cir. 2015). In light of the termination of the ITC investigation with respect to the ’707 patent, we no longer exercise our discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretion to deny institution no longer involves the ’707 patent. On June 28, 2021, the ITC Investigation was terminated with respect to the ’707 patent. Ex. 1063, 2. Petitioner argues that, “Patent Owner’s decision to terminate the ’707 Patent from the ITC Investigation eliminates the factual basis for the Board’s denial of institution.” Request 4. We agree. In weighing the Fintiv factors, we relied on the involvement of the ’707 patent in an ITC investigation as the basis for our weighing 4 of 6 factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 9 (factor 1), 10 (factor 2), 11 (factor 3), 14 (factor 5), 15 (holistic assessment). However, the ITC investigation no longer provides any basis for exercising our discretion to deny institution.11 We possess the inherent authority to reconsider our Decision Denying Institution. See GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1313 (Fed. Cir. 2015). In light of the termination of the ITC investigation with respect to the ’707 patent, we no longer exercise our discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Id. at 21–23. We determine that Petitioner has provided a showing sufficient to support institution as to why a skilled artisan would have been motivated at the time of the invention to look to the laser ablation scribing system of Suutarinen to implement the solar cell backside scribing techniques of Jinno, with a reasonable expectation of success in meeting the limitations of the claimed invention. Summary as to Claim 1 Petitioner has shown a reasonable likelihood of showing that claim 1 of the ’707 patent would have been obvious in view of the combined teachings of Jinno and Suutarinen.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Motivation to Combine the Relevant Teachings of Jinno and Suutarinen Petitioner provides detailed and well-supported reasoning for combining the relevant teachings of Jinno and Suutarinen. See Pet. 19–26. The Petition states, “[a]s of the effective filing date of the 707 Patent, a Skilled Artisan would have found it obvious to employ the laser ablation scribing system of Suutarinen to implement the solar cell backside scribing techniques of Jinno[ ].” Id. at 19. With specific regard to combining the teachings of these references, the Petition provides: [T]he two systems disclose analogous functionality, such as ablation or laser scribing more generally, a Skilled Artisan would understand combining their techniques to be an efficient and common sense way to implement the combined system in order to obtain the benefits of both, and therefore would have been motivated to make the combination. EX1003,¶80. Further, Jinno[ ], Suutarinen, and the 707 Patent are analogous art because each is in the same field of endeavor— i.e., laser scribing and singulation of semiconductor wafers. See EX1005,Abstract,¶[0006]; EX1006,¶[0002]; EX1001,Abstract. Also, Jinno[ ] and Suutarinen are reasonably pertinent to the particular problem the inventor of the 707 Patent was trying to solve—achieving singulation without the drawbacks of mechanical sawing. See EX1001,2:19-20 (“Conventionally, solar cells are mechanically cut with a saw. However, this technique has numerous disadvantages.”); EX1005,[0005]; EX1006,¶[0005]; EX1003,¶81. A Skilled Artisan would have further understood that the combination of Jinno[ ] and Suutarinen as analyzed here is merely an arrangement of old elements (backside laser scribing of solar cells to a depth of half the solar cell thickness (Jinno[ ]) and blowing gas and vacuum exhaust during laser ablation (Suutarinen)), with each performing the same function it had been known to perform (singulation of semiconductor based solar cells (Jinno[ ]), enhancing scribing via debris removal (Suutarinen)), and yielding no more than what one would expect from such an arrangement (laser ablation and singulation of solar cells with removal of gaseous material generated from the laser processing). The combination could therefore have been made with a reasonable expectation of success and without undue experimentation. EX1003,¶82. Id. at 21–23. We determine that Petitioner has provided a showing sufficient to support institution as to why a skilled artisan would have been motivated at the time of the invention to look to the laser ablation scribing system of Suutarinen to implement the solar cell backside scribing techniques of Jinno, with a reasonable expectation of success in meeting the limitations of the claimed invention.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,522,707 - Platform Science, Inc. v. Omnitracs, LLCRehearing grantedPTAB · Sep 3, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board granted rehearing and instituted IPR on all petition grounds for claims 1–4, 6–9, 11, 12, and 15, finding a reasonable likelihood of prevailing.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to claim 1.” slip op. at 44
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6.6 Petitioner 6 As noted above, Petitioner raises a second claim construction issue in its Rehearing Request. See Req. Reh’g 12–15 (asserting that the claims require only one instance of copying information from a formatted message to a response message based on which formatted message was received). Petitioner did not raise this issue in the Petition, Patent Owner has not had an contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“VI. ANALYSIS Legal Standards – Anticipation “[A] claim is anticipated ‘if each and every limitation is found expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference” (alteration in original) (quotation omitted)).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,925,308 - Eis GmbH v. Novoluto GmbHRehearing grantedPTAB · Sep 25, 2020 · IPR2020-00007 · APJ Susan L C Mitchell · IPR · Rehearing
Granted EIS GMBH’s rehearing request and instituted IPR of claims 1–3, 5, 7, 8, 11, 14, 15, 17–21, and 23–26 on all asserted grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We conclude from a review of Fang and Taylor that they are not substantially the same art nor is Petitioner making substantially the same argument as was presented the Office during prosecution of the ’061 Patent based on Fang. We find that the way in which Fang and Taylor work appear to be materially different. Fang appears to apply only suction to the skin whereas Taylor, with the sealingly connected suction cup, appears to apply a cyclical vacuum that Dr. Prisco testifies meets the claim limitations requiring generation of a pattern of negative and positive pressures, modulated with respect to a reference pressure. Ex. 1002 ¶¶ 62–64, 75. Thus Taylor appears to teach the claim element Patent Owner argued during prosecution was missing from Fang. Also, in applying factors (b) and (d) of Becton, Dickinson, because of such differences noted above, we find that Taylor is not cumulative of Fang, which was considered and applied by the Office during prosecution of the ’061 Patent. 4. Conclusion Thus, we find that Taylor and Fang are not substantially the same art, nor were substantially the same arguments based on these references presented in the Petition and during prosecution of the ’061 Patent, respectively. As discussed above, because Petitioner primarily relies on Taylor in all four grounds for teaching the modulation of positive and negative pressures with respect to a reference pressure as required by all of the challenged claims, we also find that, overall, the same or substantially the same art was not previously presented to the Office nor were the same or substantially the same arguments previously presented to the Office. Therefore, we do not need to reach the application of the remaining Becton, Dickenson factors relating to whether the Petitioner has demonstrated a material error by the Office. Thus, we decline to exercise our discretion under § 325(d) to deny institution of an inter partes review here.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,849,061 - Vizio, Inc. v. Polaris Powerled Technologies, LLCRehearing grantedPTAB · Sep 15, 2020 · IPR2020-00043 · APJ Kara L Szpondowski · IPR · Rehearing
The Board granted rehearing but denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“We have considered Petitioner’s Request for Rehearing and, for the reasons set forth below, we grant Petitioner’s Request for Rehearing, but we are not persuaded to change our ultimate conclusion to deny institution of inter partes review. II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus.” slip op. at 3
- Other 314aInstitution denied discretionary otherDenied
“III. DISCUSSION OF THE REQUEST FOR REHEARING On May 4, 2020, we issued our Decision denying institution of inter partes review based upon: (1) the advanced stage of the California District Court proceeding; (2) the investment of time and resources by the District Court and the parties in the California District Court proceeding; (3) overlap in the invalidity theories that Petitioner is pursuing here and in the California District Court proceeding; and (4) overlap in the claims challenged in the California District Court proceeding. Inst. Dec. 6–12. In the Decision, we did not reach any of the ten substantive grounds for patentability. See generally Inst. Dec. Rather, the denial of institution was solely based on our findings under 35 U.S.C. § 314(a). Id.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review under 35 U.S.C. §314(a) and 37 C.F.R. §42.4. Institution of an inter partes review is authorized 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) (2012); see also 37 C.F.R. § 42.4(a) (2019) (“The Board institutes the trial on behalf of the Director.”) For the reasons set forth below, upon considering the arguments and evidence of record, we are not persuaded to change our ultimate conclusion to deny institution of inter partes review.7” slip op. at 5
- BurdenDenied
“The petition must identify with particularity each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim. 35 U.S.C. § 312(a)(3); see also 37 C.F.R. § 42.22(a) (content of petitions); 37 C.F.R. 42.104 (content of petition). Petitioner’s conclusory statements, without more, are irreparably lacking in detail. Petitioner does not provide any analysis to support the assertion of obviousness over Oki. In fact, Petitioner instead asserts that Oki discloses all of the limitations in each of claims 1, 2, 4–7, 9, 15, 16, and 18, so it is unclear what modification, if any, is required to Oki, or even the basis of Petitioner’s obviousness grounds. E.g., Pet. 28– 33. Petitioner does not clearly point out the differences between the claimed invention and Oki. Nor does Petitioner explain why a person of ordinary skill in the art would have found the claimed subject matter obvious in spite of those differences. Petitioner has not provided sufficient reasoning or facts on which to base a conclusion that a person of ordinary skill in the art would have found it obvious, in light of Oki’s disclosure, to modify Oki to meet the claim limitations. Accordingly, Petitioner fails to demonstrate a reasonable likelihood that it would prevail on this ground of unpatentability.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,223,117 - PTAB · Jun 16, 2020 · IPR2019-01393 · APJ Ryan H Flax · IPR · Rehearing
Granted Sand Revolution II, LLC’s rehearing request and instituted IPR of claims 1, 2, 4, 6–14, and 16–20 on two obviousness grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“As noted in Fintiv, we consider six factors when taking “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. For the reasons discussed above, the Fintiv factors weigh against invoking our discretion to deny institution. Considering the Fintiv factors as part of a holistic analysis, we are not persuaded that the interests of the efficiency and integrity of the system would be best served by invoking our authority under 35 U.S.C. § 314(a) to deny institution of a potentially meritorious Petition. For the reasons discussed above, we modify our initial decision denying institution. On rehearing, after considering the factors outlined in the precedential order in Fintiv, we decline to deny institution under § 314(a). Accordingly, we grant Petitioner’s Request for Rehearing. We consider the merits of the Petition with respect to the threshold for institution below.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“demonstrating a reasonable likelihood that it would prevail in showing that claims of the ’740 patent are unpatentable. At this preliminary stage of the proceeding and on the record before us, Petitioner’s case is strong on most challenged claims. Fintiv, Paper 11 at 14–15 (“[I]f the merits of a ground raised in the petition seem particularly strong on the preliminary record, this fact has favored institution.”). Although we recognize the record can change during trial, as discussed in detail below, Petitioner has made a sufficiently persuasive showing, on the record presently before us, that the prior art references cited in the Petition teach or suggest all limitations of most challenged claims. We determine, on this preliminary record, that Petitioner has set forth a reasonably strong case for the obviousness of most challenged claims. Thus, this factor weighs in favor of not exercising discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“system” would have been readily understandable to the skilled artisan on its face, and the combination of these words into the recited phrase does not introduce any different meaning or ambiguity. The fact that the mobile storage module comprises the “integrated actuating system,” as well as the inclusion of the word “integrated” in this disputed term, each supports that such a system is a part of the module; in other words, it is built into the module as proposed by Petitioner. Because the fact that the actuating system is built into the mobile storage module is evident from the claim language itself, defining the claim term expressly to include this concept is unnecessary, as it would be redundant of the term’s plain meaning as understood by the skilled artisan. Nothing in the intrinsic record, or other evidence submitted by Petitioner, is inconsistent with this conclusion. Furthermore, regarding the proposed self-deployment concept, we also conclude it is unnecessary to add this concept to define the claim term in view of the plain meaning of “integrated actuating system.” Per the plain language of the claim term, the system that actuates the mobile storage module, i.e., moves it between a lowered and raised position, is integrated into the mobile storage module. The mobile storage module’s integrated components move, or actuate, the mobile storage module, per the plain meaning of the claim language. Thus, the system that is expressly recited as being a part of the module (integrated), actuates the module; the module actuates itself. Therefore, adding “self-deploying” to specially define the term “integrated actuating system” is unnecessary. Nothing in the intrinsic record is inconsistent with this conclusion. See Ex. 1002, 83–91 (arguing the characteristic of “self-deploying” invokes the inclusion of “an integrated actuating system,” but not the converse). Because Petitioner’s proposed construction of “integrated actuating system” would add unnecessary and undesirable redundancy to the claims, we determine that it is unnecessary to expressly construe this claim term at this stage of the proceedings.” slip op. at 32
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION Petitioner demonstrates a reasonable likelihood of prevailing at trial in demonstrating that claims 1, 2, 4, 6–10, 12–14, and 16–20 of the ’740 patent would have been obvious over the prior art combinations set forth in Grounds 1 and 2. Our decision at this stage derives from our review of the preliminary record before us. This decision does not reflect a final determination on the patentability of the claims. ORDER Accordingly, it is hereby: ORDERED that, Petitioner’s Request for Reconsideration is granted; FURTHER ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review of claims 1, 2, 4, 6–14, and 16–20 of the ’740 patent, in accordance with Grounds 1 and 2 in the Petition, is hereby instituted; and” slip op. at 56
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 8,944,740 - Samsung Electronics Co., Ltd. v. Nucurrent, Inc.Rehearing grantedPTAB · Feb 7, 2020 · IPR2019-00861 · APJ Wesley B Derrick · IPR · Rehearing
The Board granted Samsung’s rehearing request and instituted review on all challenged claims and all grounds, finding a reasonable likelihood of prevailing on the asserted obviousness grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“in an unusual place in time. As noted, the Petition was filed (March 22, 2019), and the Preliminary Response submitted (June 26, 2019), before promulgation of our 2019 Trial Practice Guide Update (July 16, 2019). At the time of filing, Petitioner could not have known of the guidance set forth in the 2019 Trial Practice Guide Update concerning multiple petitions. Although Petitioner “could, in theory, have filed a single petition including all of its grounds within the page limits,” Petitioner, acting on the guidance available to it at the time of filing, “determined that filing two separate IPR petitions allowed each asserted ground of unpatentability to be presented in a more clear and comprehensive manner.” Req. 4. Thereafter, the 2019 Trial Practice Guide Update issued on the same day as our conference call to discuss the parties’ requests for additional briefing (July 16, 2019), and these concurrent events would not have allowed the parties time to review and apply the guidance in a manner that would have permitted them to tailor their requests for additional briefing or their filing strategy to accommodate the newly-issued guidance. In the subsequent briefing by both parties, the impact of the 2019 Trial Practice Guide Update, although discussed briefly, was not the primary focus. See generally Reply; Sur-Reply. This is understandable, given the breadth of the complex estoppel issues raised in this case as well as the contemporaneous issuance of the guidance in the 2019 Trial Practice Guide Update. Thus, on account of the timing of the Petition filed in this case relative to other events, and based on the reasoning presented by Petitioner in the Request, which we discuss in more detail below, we are persuaded that we should reconsider whether to allow institution of inter partes review based on the arguments presented in the Petition.” slip op. at 11
- Parallel petitionsInstitutedInstituted
“review, addresses Lee-based grounds rooted in anticipation (and obviousness over Lee and secondary references). IPR2019-00859, Paper 1. The petition in IPR2019-00861 addresses Partovi-based grounds rooted in obviousness. IPR2019-00861, Paper 1. In the Request, Petitioner argues that there is “almost no overlap” between the Partovi-based Petition in this case and Petitioner’s Lee-based petition in IPR2019-00859 (Req. 3), noting that “all grounds of the instant Petition rely on Partovi as the primary reference while the ’859 proceeding grounds rely on Lee as the primary reference” (id. at 2). In support, Petitioner provides a table depicting the various grounds presented in the two cases, and the differences between the two. Id. at 3. Petitioner also argues that “Partovi’s teachings are not redundant of Lee’s” because the references “disclose the claimed features of the ’046 patent in different ways.” Id. More particularly, Petitioner explains that “Lee is generally focused on an inductor structure” while “Partovi contains a more complete and clear disclosure of methods and circuitry for operating inductors,” which is important because the “dependent claims involve additional circuitry used in an inductor’s operation.” Id. at 4. Although Petitioner acknowledges that it “could, in theory, have filed a single petition including all of its grounds within the page limits,” Petitioner contends that “doing so would have resulted in a reduction in the thoroughness and completeness of the analysis presented due to the large number of challenged claims.” Id. Specifically, Petitioner argues that “NuCurrent chose to assert 98 claims from four patents against Samsung in a parallel district court litigation” and that Petitioner had to file two petitions in order to address “the sheer number of claims at issue.” Id. at 5. On this record, we are persuaded that Petitioner’s arguments concerning the differences between the petitions, and Petitioner’s reasons for presenting its arguments in two petitions, as it did, merit reconsideration of our denial of institution. The differences between the petitions in this instance, as explained by Petitioner, support its position that there is a need for the Partovi reference to distinctly address certain limitations of the dependent claims. The number of claims asserted against Petitioner in corresponding litigation, as well, is a factor enumerated in the 2019 Trial Practice Guide Update as a circumstance in which more than one petition may be necessary. 2019 Trial Practice Guide Update, 26 (“circumstances in which more than one petition may be necessary” include “when the patent owner has asserted a large number of claims in litigation”). We note again that although Patent Owner was authorized to file a ten-page response to Petitioner’s Request (Dec. 5), in which it could have addressed, inter alia, Petitioner’s arguments about the differences between these Petitions or the number of claims at issue, Patent Owner did not file a response to the Request, leaving Petitioner’s contentions regarding rehearing undisputed on the present record.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)InstitutedInstituted
“Rehearing, on this record, we do not agree that proceeding to trial would be an inefficient use of Board resources. The number of Patent Owner’s patents that are being challenged is not a reason to deny institution. “[R]ecogniz[ing] the potential for abuse of the review process by repeated attacks on patents,” the Board has enumerated factors that guide its discretion as to whether to deny institution under § 314(a), “especially as to ‘follow-on’ petitions challenging the same patent as challenged previously in an IPR . . . proceeding.” Trial Practice Guide Update 9 (August 2018) (quoting General Plastic, slip op. 16–17). Although a multiplicity of grounds relying on a number of principal references addressed in a number of separate petitions may raise concerns regarding fairness in some instances, we find no such concerns here, for largely the same reasons articulated above with respect to our disposition of the Request for Rehearing. In these circumstances, as discussed above, we are not persuaded that defending against both challenges is unfair, abusive, or unduly burdensome for Patent Owner. Accordingly, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314(a). See Comcast Cable Communications, LLC v. Veveo, Inc., IPR2019-00237, Paper 15 at 14–15 (PTAB Jul. 5, 2019) (instituting inter partes review on two petitions addressing the same patent).” slip op. at 29
- BurdenInstitutedInstituted
“and 28, we discern no deficiency in Petitioner’s characterization of the cited references and the knowledge in the art, or in Petitioner’s assertions as to the reasonable inferences an ordinary artisan would have made from those references, to the extent the ground relies on AC current and voltage and the inherent characteristics of inductors for the limitation “wherein when an electrical current is propagated within at least the first conductor layer, a magnetic flux is generated within the inductor when a change occurs in at least one of a frequency, a magnitude, or a waveform shape of the propagated electrical current.” Because this showing is sufficient to demonstrate teaching of this claim element was in the prior art as alleged, we need not reach Petitioner’s alternative reasoning grounded on changes in the duty cycle as to frequency and waveform shape meeting this particular claim limitation. Thus, based on the information presented at this stage of the proceeding, Petitioner has shown sufficiently that there is a reasonable likelihood that it would prevail in establishing the unpatentability of independent claims 1 and 28 as obvious over Partovi in view of Chiang.” slip op. at 44
Claim constructionDiscretionary denialcites Phillips · KSRPatents in suitUS 9,300,046
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.