- PTAB · Nov 21, 2024 · IPR2024-00857 · APJ Brian J Mcnamara · IPR · Institution
Instituted IPR on claims 1–19, with trial authorized on all petition grounds, based on a reasonable likelihood of success on the asserted obviousness challenges.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan”) as having “a Bachelor’s Degree in electrical or computer engineering, computer science, or a similar field with two or more years of work experience with low-power connected devices.” Pet. 6 (citing Ex. 1003, Wolfe Decl. ¶ 29). Petitioner further states that “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. For purposes if its Preliminary Response, Patent Owner does not dispute Petitioner’s description of an ordinarily skilled artisan. Prelim Resp. 7–8. 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 undisputed description of a person of ordinary skill appears consistent with the subject matter of the ’216 patent and the references, we apply Petitioner’s standard for purposes of this Decision. slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (citations omitted) (en banc). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317 (citations omitted). 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). “The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party has proposed a special definition or explicit construction of any claim term. Pet. 7; Prelim. Resp. 8. As we do not perceive a need to construe any term, we apply the plain and ordinary meaning to the claim language.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“X. CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will succeed on the following challenges to patentability: Claims 1, 2, 5–8, 11–15, 18, 19 as obvious over Nagata and the knowledge of a person of ordinarily skill in the art; Claims 1, 2, 5–8, 11–15, 18, and 19 as obvious over Nagata in view of Hashiguchi; and or Nagata in view of Hashiguchi and Thubert. XI. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“short intervals of time and communicates at a rapid interval (e.g.,150 msec every 4 sec). Id. at 55 (citing Ex. 1006 ¶¶ 70, 127–128, 138–139; Ex. 1003, Wolfe Decl. ¶ 158). Petitioner further notes that, although both Nagata and Hashiguchi transmit beacon signals synchronized to the awake modes of the labels to indicate the presence of information from an access point at scheduled, repetitive times, Nagata and Hashiguchi operate a little differently. Id. at 56. In particular, Nagata transmits a beacon signal synchronized to the electronic label wake-up time once every 60 seconds and varies the duration of the label’s awake mode (e.g., 30 seconds when the beacon indicates information to be transmitted is present); but Hashiguchi transmits a beacon signal synchronized with the electronic label’s awake time ratio, communicating beacons that correspond to the wake-up frequency, where the label listens for information for 150 msec in either a fast command mode (every 4 seconds or 15 times per minute) or a normal command mode (every 20 seconds or 3 times per minute). Id. at 56–57, 59– 60. Petitioner emphasizes that this feature allows Hashiguchi to improve its responsiveness, while reducing battery power drain, providing a reason for an ordinarily skilled artisan to combine th teachings of the references. Id. at 56–58. Noting that, like Nagata’s beacon signals, Hashiguchi’s beacon signals are sent at synchronized and prescribed time intervals in a manner that is indistinguishable from Nagata, Patent Owner argues that Petitioner fails to cure the defects of Nagata concerning the claimed fast wake-up instruction. Prelim. Resp. 23–24. As discussed above, the claim limitations do not exclude synchronous systems that transmit beacons signals or enter the fast and normal wake-up our analysis of Nagata (see Section IX.B herein), we determine that Petitioner has demonstrated that a person of ordinary skill would have had reason to combine the teachings of Nagata and Hashiguchi and that their combined teachings would have disclosed or suggested all the limitations of the independent claims 1, 7, and 14 and their corresponding dependent claims to such an ordinarily skilled artisan.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,540,216 - PTAB · Nov 8, 2024 · IPR2024-00777 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR on claims 16–27 based on the grounds set forth in the Petition, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“35 U.S.C. § 314(a) due to the advanced state of the parallel district-court action, which Patent Owner notes has scheduled trial date of May 19, 2025. See Prelim. Resp. 17. Petitioner, however, has stipulated not to pursue in the district court action “the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Paper 10, 1 (Petitioner’s Sotera Stipulation). The Office recognizes that such stipulations mitigate concerns of potentially conflicting decisions and duplicative efforts between the Board and the district court. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director’s Interim Procedure”),13 at 7–8. Thus, given Petitioner’s stipulation we decline to discretionarily deny institution under § 314(a) based on parallel litigation.” slip op. at 7
- Parallel petitionsDenied
“institution under § 314(a) because this is the second proceeding challenging the ’815 patent and Petitioner has not justified two such challenges. Paper 8 (Patent Owner’s Response to Petitioners’ Notice Ranking Multiple Petitions). Petitioner filed a Notice Ranking Petitions, noting that this proceeding involves a second petition challenging the ’815 patent, after a petition in IPR2024-00735 challenged claims 1–15. Paper 4 (“Pet. Ranking”). Petitioner’s Ranking asserts that the two petitions challenge different claims, and that the 27 collectively challenged claims are voluminous, occupying approximately six columns of the ’815 patent. Pet. Ranking 2. We note also that the independent claims challenged in this proceeding include limitations not present in the claims challenged in the -735 IPR, such as multiple user profiles and encrypted video information. See Ex. 1001, claims 16, 21. We conclude that the ’815 patent’s claims justify two petitions based on a combination of the number of 13 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. limitations and the number of claims. We therefore decline to discretionarily deny institution under § 314(a) based on multiple parallel petitions.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Kaplan and Bryant were included on an Information Disclosure Statement and thus were presented, but without a substantive discussion during prosecution, we cannot understand how the Office considered the references. Based on Petitioner’s contentions as discussed below, we are persuaded that the Examiner erred in considering Kaplan and Bryant. See Pet. 100. The Horn–Baumgartner–Candelore combinations were not presented during prosecution, and Patent Owner has not shown that Horn’s disclosures are cumulative to references that were considered. Patent Owner provides figures from Horn and Honkaniemi (Ex. 2012), a reference considered in a related prosecution (Prelim. Resp. 6–7), but those figures alone do not suffice to demonstrate sufficient similarity between the two references’ disclosures. Patent Owner makes a similarly unpersuasive showing for Baumgartner and Volk (Ex. 2013), a reference “considered during examination.” Prelim. Resp. 7–8. None of those assertions persuade us that art substantially the same as the Horn–Baumgartner–Candelore grounds previously were presented to the Office. As such, we do not discretionarily deny institution under § 325(d).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that ordinarily skilled artisans “would have held a bachelor’s degree in Computer Science, Electrical Engineering, and Computer Engineering, or a related field, and two years of practical experience in digital data management.” Pet. 5 (citing Ex. 1009, 9; Ex. 1002 ¶ 67). While Patent Owner acknowledges there are slight differences between their definition and Petitioner’s, Patent Owner concedes there is no practical difference between the two definitions. Prelim. Resp. 23. At this stage, we see no reason to depart from Petitioner’s proposed definition, as it appears reasonable and consistent with the asserted prior art and the ’815 patent.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,017,815 - PTAB · Nov 7, 2024 · IPR2024-00867 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 11, 12, 16, 17, 19, 20, and 84 on all petitioned grounds, finding a reasonable likelihood of success on the Nozaki-Haitani obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Trademark Office issued an Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Guidance Memo”)3 to clarify “the [Board’s] current application of Fintiv to discretionary institutions where there is parallel litigation” and to “confirm[] that the precedential import of Fintiv is limited to the facts of that case.” Guidance Memo 2. In particular, the Memorandum states that the Board 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. Id. at 9 (emphasis added).” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“3. Discussion We disagree with Patent Owner’s assertion that “Nozaki was considered during . . . reexamination of the ’848 Patent.” Prelim. Resp 4 (citing Ex. 1004, 165–190). To support this assertion, Patent Owner cites to 25 pages of the ’848 reexamination file (see Prelim. Resp. 4 (citing Ex. 1004, 165–190), arguing that “the grounds presented by Petitioner are duplicative of the art and arguments considered by the Examiner during . . . reexamination of the ’848 patent” (Prelim. Resp. 6), and concluding that “many of Petitioner’s arguments are simply a rehash of the reexamination request that was thoroughly considered by the Office during reexamination” (id. at 12). Patent Owner, however, provides no specific examples, comparisons, or analysis between the evidence and arguments concerning Nozaki presented in the Petition with the evidence and arguments concerning Nozaki ostensibly considered during the ’848 patent reexamination. Indeed, the only mention of “Nozaki” we can discern in the 25 pages of the ’848 reexamination file cited by Patent Owner are two listings of “Nozaki” patents appearing on pages 171 and 186 of the reexamination file. ’108”); Nozaki U.S. Patent 8,538,252 (“Nozaki ’252”)). These two “Nozaki” patents, however, are not the same Nozaki reference asserted by the Petitioner as prior art in the Petition. See Pet. 5 (citing Ex. 1006, WO 2007/060980 (“Nozaki ’980”)). The Nozaki reference asserted by Petitioner in the Petition is titled, “Electronic Camera and Image Processing Device,” is directed to an “electronic camera compris[ing] an image sensor, an image processing section, a face detecting section, a controlling section, a face image creating section, or a face recognizing data creating section, and a recording section,” contains 19 figures and has 57 claims. See Ex. 1006, code (57) Abstr., ¶ 41, pgs. 52–60.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person of ordinary skill in the art as a person having “a Bachelors’ degree in electrical or computer engineering or a comparable field of study, with at least two to three years of experience in the field of image processing.” Pet. 4 (citing Ex. 1005 ¶ 35). Petitioner further asserts that “[a]dditional education could substitute for professional experience, and significant experience in the field could substitute for formal Petitioner’s description of a person of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 22. Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’848 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Bederson. See Ex. 1005 ¶ 35. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. D. Claim Construction” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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). Here, Petitioner contends that “all claim terms in the Challenged Claims should be construed according to their plain and ordinary meaning to a [person of ordinary skill in the art].” Pet. 5. Patent Owner states that “[g]iven the multiple reasons why the Petition should not be instituted, including 35 U.S.C. § 325(d) and 35 U.S.C. § 314, and to minimize the disputes that the Board needs to address at this preliminary stage, for the purposes of this Preliminary Response only, Patent Owner simply applies Petitioner’s own constructions to show how the Petitioner has not met its burden under 37 CFR § 42.104(b)(4).” Prelim. Resp. 25. For purposes of this Decision and based on this preliminary record, we determine that no claim term requires express construction at this stage of the proceeding. E. Patentability Challenges” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,176,848 - PTAB · Nov 7, 2024 · IPR2024-00717 · APJ Kevin C Trock · IPR · Institution
The Board instituted review of claims 1–11 on all four §103 grounds, finding a reasonable likelihood that Samsung would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDenied
“On September 12, 2024, with the Board’s authorization, Petitioner filed such a stipulation. Paper 8. Petitioner’s stipulation reads: In accordance with the Board’s precedential decision in Sotera Wireless, Inc. v. Masimo Corp., IPR2020‐01019, Paper 12 at 18‐19 (PTAB Dec. 1, 2020), Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (Petitioners) stipulate that if the Board institutes inter partes review in this proceeding, IPR2024-00717, then Petitioners will not pursue in the parallel district court proceeding, Maxell Ltd. v. Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., Case No. 5:23-cv-00092-RWS, the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.. Id. Given that the language of Petitioner’s stipulation substantively tracks the stipulation language set out in the Guidance Memo, we decline to exercise discretion under 35 U.S.C. § 314(a) to deny institution. B.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“having “a Bachelors’ degree in electrical or computer engineering or a comparable field of study, plus approximately two to three years of professional experience with camera technology.” Pet. 5. Petitioner’s declarant, Mr. Guidash, provides supporting testimony as to the level of ordinary skill in the art. Ex. 1003 ¶¶ 27–30. Patent Owner does not contest Petitioner’s description of a person of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 14. Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’757 patent. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. C.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Moreover, the test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Accordingly, one cannot show non-obviousness by attacking references individually where, as here, the This is particularly relevant here, where Petitioner explains that its rationale to combine the teachings of Chinn, Takahashi, and EX-V7 derives, in part, from the teachings of the references themselves. See, e.g., Pet. 10–11 (“Moreover, both Chinn and Takahashi disclose delayed image capture after a voice command is given,” and therefore, a person of ordinary skill in the art “would have been motivated to look at Takahashi and EX-V7 to improve Chinn, and vice-versa.”). Based upon the current record, we are persuaded that Petitioner has demonstrated sufficiently for purposes of institution that a person of ordinary skill in the art at the relevant time period would have had a reasoned basis for combining the teachings of Chinn, Takahashi, and EX-V7 in the manner proffered and would have had a reasonable expectation of success in that endeavor.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,223,757 - PTAB · Nov 7, 2024 · IPR2024-00735 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 1–15 based on the petition’s asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. 35 U.S.C. § 314(a) Patent Owner requests that we discretionarily deny institution under 35 U.S.C. § 314(a) due to the advanced state of the parallel district court action. See Prelim. Resp. 15. Petitioner, however, has stipulated not to pursue in the district court action “the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Paper 10, 1 (Petitioner’s Sotera Stipulation). The Office recognizes that such stipulations mitigate concerns of potentially conflicting decisions and duplicative efforts between the Board and the district court. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director’s Interim Procedure”),10 at 7–8. Thus, given Petitioner’s stipulation we decline to discretionarily deny institution under § 314(a).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Kaplan and Bryant were included on an Information Disclosure Statement and thus were presented, but without a substantive discussion during prosecution, we cannot understand how the Office considered the references. Based on Petitioner’s contentions as discussed below, we are persuaded that the Examiner erred in considering Kaplan and Bryant. See Pet. 97. The Horn–Baumgartner combination was not considered during prosecution, and Patent Owner has not shown that Horn’s disclosures are cumulative to references that were considered. Patent Owner provides figures from Horn and Honkaniemi (Ex. 2012), a reference considered in a related prosecution (Prelim. Resp. 6–7), but those figures alone do not suffice to demonstrate sufficient similarity between the two references’ disclosures. Patent Owner makes a similarly unpersuasive showing for Baumgartner and Volk (Ex. 2013), a reference “considered during examination.” Prelim. Resp. 7–8. None of those assertions persuade us that art substantially the same as the Horn–Baumgartner grounds previously were presented to the Office. As such, we do not discretionarily deny institution under § 325(d).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the reasons discussed above, we conclude Petitioner has shown a reasonable likelihood of prevailing with respect to at least one claim. We have evaluated all of the parties’ submissions and determine that the record supports institution. This decision to institute trial is not a final decision as to patentability of any challenged claim, or any factual or legal issue underlying patentability. Any final decision will be based on the full record developed during trial. We expressly inform Patent Owner that any argument not asserted in a timely filed Response or another manner permitted during trial shall be deemed forfeited or waived, regardless of whether the argument was presented in the Preliminary Response. IV. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–15 of the ’815 patent is instituted on the grounds set forth in the Petition; and” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“bachelor’s degree in computer science, electrical engineering, or a related field, and two years of practical experience in digital data management.” Pet. 5 (citing Ex. 1009, 9; Ex. 1003 ¶ 67). While Patent Owner acknowledges there are slight differences between their definition and Petitioner’s, Patent Owner concedes there is no practical difference between the two definitions. Prelim. Resp. 23. At this stage, we see no reason to depart from Petitioner’s proposed definition, as it appears reasonable and consistent with the asserted prior art and the ’815 patent.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,017,815 - Tesla, Inc. v. Autonomous Devices, LLCInstitutedPTAB · Oct 22, 2024 · IPR2024-00745 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR of claims 45–47, 51, 56, 57, 59, 60, 68, and 69 on all asserted grounds, finding a reasonable likelihood of success on obviousness over Buibas and Sinyavskiy.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“Considering the subject matter of the ’474 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for the person of ordinary skill in the art, except we decline to adopt “at least,” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’474 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, and based on the current record, except as noted above, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that, at this stage of the proceeding, “no formal constructions are presently necessary,” and that it “maps the prior art in this Petition in a manner consistent with Patent Owner’s allegations of infringement before the district court.” Pet. 8 (citing Ex. 1017; Ex. 1003 ¶¶ 21–25. Patent Owner does not propose a claim construction at this stage of the proceeding. See Prelim. Resp. For purposes of this Decision, we determine that it is not necessary to provide an express construction of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner further argues that one of ordinary skill “would have reasonably expected success implementing the combination, especially as Buibas and Sinyavskiy describe highly similar systems involving spiking neural networks used for training/operating robots.” Pet. 15–16 (citing Ex. 1005 ¶ 92; Ex. 1003 ¶ 70). Indeed, Petitioner contends, “Buibas itself confirms that its spiking neural network can be partitioned, while Sinyavskiy provides the details for doing so.” Id. at 16 (citing Ex. 1005 ¶ 92; Ex. 1003 ¶ 70). In response, Patent Owner argues that Petitioner’s obviousness analysis is flawed because “there is no articulated reasoning regarding what specific element of claim 45 Buibas . . . does not disclose.” Prelim. Resp. 19–20. In other words, according to Patent Owner, Petitioner “failed to perform a proper obviousness analysis because Petitioner has failed to identify anything in the claims that Buibas lacks disclosure of for Ground 1A.” Id. at 20. Based on the present record, we determine that Petitioner has set forth sufficient reasoning to support a motivation to combine Buibas and Sinyavskiy for purposes of institution, as well as sufficient reasoning to support the conclusion that one of ordinary skill would have had a reasonable expectation of success in making the combination. We do not agree with Patent Owner’s argument that Petitioner’s obviousness analysis is flawed because it fails to identify what is lacking in Buibas’s disclosure. To the contrary, Petitioner explains that Buibas “broadly suggests” that its spiking neural networks “can be partitioned into modules for different tasks or behaviors” but “discloses little detail about the partitioning,” and that Sinyavskiy’s more detailed disclosure of partitioning spiking neural networks would fill in these details. See Pet. 12–13, 14–15, 24. Petitioner also relies on Sinyavskiy’s more detailed disclosures concerning partitioning the network to satisfy limitations [45.1] and [45.6]. Id. at 23–27, 35. Thus, Petitioner has sufficiently identified what is missing in Buibas (a detailed disclosure of partitioning spiking neural networks) and how that missing information is provided by Sinyavskiy (by disclosure of specific techniques for partitioning spiking networks).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,663,474 - Samsung Display Co., Ltd / Samsung Electronics Co., Ltd et al. v. Polaris Powerled Technologies, LLCSome claims unpatentablePTAB · Oct 11, 2024 · IPR2023-00771 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1–4 and 7 are unpatentable over Kim and Steer; claim 5 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person of ordinary skill in the art “would have [had] a B.S. in Electrical Engineering or equivalent field, with 3–5 years of academic or industry experience in OLED display engineering or comparable industry.” Pet. 12 (citing Ex. 1002 ¶¶ 44–45). Petitioner further asserts that “[a]dditional education could compensate for less practical experience and vice versa.” Id. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art, and “applies Petitioner’s definition.” PO Resp. 7 (citing Pet. 12; Ex. 1002 ¶ 44). Because nothing in the record persuades us that our preliminary finding in the Institution Decision (Dec. 13) adopting Petitioner’s proposal was incorrect, and because the parties apply the same definition at trial, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. Analysis Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. 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))). Both parties have presented their understanding of the plain and ordinary meaning of the terms “referenced to” and “independent of.” In the Institution Decision, we requested that “[i]f there is a dispute over the plain and ordinary meaning of these terms, the parties should address those issues during trial.” Dec. 14–15 n.6. On this record, the parties do not dispute each other’s understanding of the plain and ordinary meaning of these terms, and, based upon the parties’ arguments, we determine that no express construction of the claim terms is necessary to resolve the controversy, but address the parties’ arguments in the context of the prior art below.6” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“(1) Whether Kim teaches a “video driver receiving the video signal and generating a video drive signal indicative of the video signal” We are persuaded that Petitioner has shown that the identified portion of Kim’s Figure 10 teaches the recited “video driver” and “generat[es] a video signal.” We find particularly persuasive Petitioner’s annotated comparison of Figure 4 of the ’521 patent as compared to Kim’s Figure 10 (both reproduced above), which illustrates the similarities between the ’521 patent and Kim. See Pet. 25–28. As set forth by Petitioner, Kim’s voltage at node A4 (video drive signal generated by the video driver identified in the dark green box) is supplied to the gate of transistor M31, driving the organic light emitting diode OLED by the video driver circuitry identified in the dark green box, similar to how voltage v(t) 322 (video drive signal) is supplied to the gate of transistor M1 driving the OLED 32 by video driver 32 in Figure 4 of the ’521 patent. Id. at 29.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“such as that it is a “simpler design,” would be “an obvious design choice,” “would simplify material needs and cost,” was “well-known,” was a “trivial design change,” would “provide immunity to power source noise,” and “would allow rejection of other power supply noise, such as drift.” Pet. 68– 70. However, several of these reasons focus on what a person of ordinary skill in the art would have been able to do, rather than what a person of ordinary skill in the art would have been motivated to do at the time of the invention. See Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068– 69 (Fed. Cir. 2018) (finding problematic that “the Board focused on what a skilled artisan would have been able to do, rather than what a skilled artisan would have been motivated to do at the time of the invention”); InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014). We find Petitioner’s arguments unpersuasive because they amount to little more than an assertion that the recited limitations could have been easily achieved. We agree with Patent Owner that Petitioner’s proposed modification of Hayafuji is a redesign that appears to be the result of hindsight rather than based upon a persuasive reason for the modification. See Sur-reply 15–18. Petitioner’s argument that the modification involves adding to the functionality of Hayafuji by using an obvious variation of the circuitry Hayafuji already discloses that eliminates both the ripple component and the non-ripple component (see Reply 20–21) supports the conclusion that the proposed modifications were improperly informed by the requirements of the claim. For example, Dr. Kattamis’s testimony describes the proposed modifications, which include removing the ripple component extraction circuit and rewiring the existing circuit. Ex. 1015 ¶¶ 270–273, 321–331. We find that the extent of the proposed modifications is more suggestive of hindsight than obviousness. See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”); InTouch, 751 F.3d at 1351 (Fed. Cir. 2014) (criticizing use of the challenged patent as a “roadmap” for putting what the expert referred to as “pieces of a ‘jigsaw puzzle’” together).” slip op. at 57
Patent outcomesUS 7,259,521 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,259,521 - Microchip Technology Inc. v. Aptiv Technologies AGInstitution deniedPTAB · Oct 7, 2024 · IPR2024-00558 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution, finding no reasonable likelihood of showing claims 1, 3, 5, and 11–17 unpatentable because the contingent claim construction was unmet and the art showing was inadequate.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“D. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not persuasively argued or adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims. III. CONCLUSION For the foregoing reasons, we have determined that Petitioner has not established a reasonable likelihood of prevailing with respect to any claim. Therefore, we do not institute an inter partes review. IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 14
- BurdenDenied
“Thus, the Petition fails to provide a showing that the cited art teaches or suggests “a USB port having a plurality of USB ports” as recited in sole independent claim 1 of the ’037 patent. D. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not persuasively argued or adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“With regard to claim construction, Patent Owner’s Preliminary Response states: For purposes of this Petition, Petitioner adopts [Patent Owner]’s proposed construction in parallel district court argument in the district court litigation on the claim construction issues. We have not had the benefit in this proceeding of adequate briefing and argument on claim construction. We decline to analyze and adopt a claim construction on the inadequate record here. 6 Claim elements 1[d], [e], and [f] are defined in the bolded headings on pages 62, 64, and 69, respectively, of the Petition. litigation.[7] (Pet., 29-30) At this time, Patent Owner sees no need for the Board to further construe any claim language because the Board need only construe terms that are in controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019). Prelim. Resp. 21 (footnote omitted). As noted previously, Patent Owner did not propose a construction relating to the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1 in the parallel district litigation, but, instead, argued against Petitioner’s contention that it was indefinite. See Ex. 1080, 13–16. Thus, Patent Owner contends that we need not engage in any claim construction relating to the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1. Accordingly, Patent Owner does not provide any argument or evidence relating to construction of this phrase. See id. We do not adopt the claim construction upon which the Petition relies because it is not persuasively argued or adequately supported by either party.8” slip op. at 11
- Prior constructionPrior construction not adoptedDecided for patent owner
“Petitioner argues that, in the district court litigation, Patent Owner contends that, in the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1 (see Ex. 1001, 9:15 (emphasis added)), the term “having” means “interconnected to.” Pet. 29. The District Court considered the arguments of the parties regarding this limitation in claim 1 (Ex. 1080, 13– 16),1 but decided not to construe this limitation (id. at 16 (“[I]t is unclear to me if ‘having’ requires further construction. Thus, I will not construe the term.”)).2 The contingency upon which the claim construction in the 1 There are two sets of page numbers on these pages of Exhibit 1080. We refer to the page numbers added to Exhibit 1080 for purposes of this proceeding and set forth in the lower, right corner of the pages. Pages 13–16 of Exhibit 1080 correspond to pages 10–13 of the original document. 2 In an email to the Board, Petitioner contends that it could not have anticipated this outcome. Ex. 3001 (“Petitioner could not reasonably anticipate when it filed the Petition that the district court would make such a statement after finding the claim not indefinite.”). Patent Owner argues to the contrary. Ex. 3002 (“Patent Owner disagrees that Petitioner could not reasonably have anticipated that the district court would not construe the term ‘having’ since neither party proposed a construction for that term—a Petition is based has not been met and, according to its own terms, the Petition should be denied.3 B.” slip op. at 9
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,460,037 - Microchip Technology Inc. v. Aptiv Technologies AGInstitution deniedPTAB · Oct 7, 2024 · IPR2024-00494 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because the Petition’s contingent claim construction was unmet and unsupported, and the cited art was not shown to teach all limitations of claims 1, 2, 4, and 6–10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“D. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not persuasively argued or adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims. III. CONCLUSION For the foregoing reasons, we have determined that Petitioner has not established a reasonable likelihood of prevailing with respect to any claim. Therefore, we do not institute an inter partes review. IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“With regard to claim construction, Patent Owner’s Preliminary Response states: For purposes of this Petition, Petitioner adopts [Patent Owner]’s proposed construction in parallel district court argument in the district court litigation on the claim construction issues. We have not had the benefit in this proceeding of adequate briefing and argument on claim construction. We decline to analyze and adopt a claim construction on the inadequate record here. 6 Claim elements 1[d], [e], and [f] are defined in the bolded headings on pages 62, 64, and 68, respectively, of the Petition. litigation.[7] (Pet., 29-30) At this time, Patent Owner sees no need for the Board to further construe any claim language because the Board need only construe terms that are in controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019). Prelim. Resp. 21 (footnote omitted). As noted previously, Patent Owner did not propose a construction relating to the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1 in the parallel district litigation, but, instead, argued against Petitioner’s contention that it was indefinite. See Ex. 1080, 13–16. Thus, Patent Owner contends that we need not engage in any claim construction relating to the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1. Accordingly, Patent Owner does not provide any argument or evidence relating to construction of this phrase. See id. We do not adopt the claim construction upon which the Petition relies because it is not persuasively argued or adequately supported by either party.8 7 It is clear that Patent Owner is referring to the agreed-upon construction of “embedded Universal Serial Bus (USB) Host” in the preamble of claim 1. See Ex. 1080, 3; see also Pet. 30. There is no agreed-upon construction of the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1. As noted, Petitioner argues this phrase renders claim 1 indefinite. See Pet. 26 (“Petitioner argues in district court that claim 1 is indefinite.”), 28– 30. 8 In a proceeding involving a related patent, IPR2024-00496, Petitioner contends that the parties had an agreed-upon construction relating to the phrase “a USB Hub having a plurality of USB ports.” IPR2024-00496 Paper 11, 11–13. This is inaccurate. Petitioner does not direct our attention to any such agreement and we find none in the record of that or this proceeding.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner maps the cited art to claim 1 as incorporating the interpretation of claim 1 proposed by Patent Owner in the district court litigation. See Pet. 56–59. Specifically, in the Petition, the phrase “a USB Hub having a plurality of USB ports” is rewritten by Petitioner to read “a USB Hub [interconnected to] a plurality of USB ports” or as rewritten with “possessing” in place of “interconnected to.” Id.9 The Petition alleges unpatentability under this construction. Id.; see also id. at 27 (“Petitioner demonstrates unpatentability of the Challenged Claims under this construction.” (footnote omitted)). As discussed above, Petitioner contended, in the district court litigation, that “having” as recited in claim 1 rendered the claim “nonsensical” and, thus, indefinite. Ex. 1080, 13–14. And, the District Court considered whether “having” had the same meaning in the context of claim 1 of the ’037 patent as “interconnected to” or “possessing” and 9 The Petition states that, “[f]or ease of analysis, Petitioner uses [Patent Owner]’s ‘interconnected to’ language since that phrase is used elsewhere in the claims, but the results are the same if ‘possessing’ was used instead.” Pet. 30 n.11. determined that these terms were not equivalent. Id. at 14. We agree with the District Court. Thus, the Petition fails to provide a showing that the cited art teaches or suggests “a USB port having a plurality of USB ports” as recited in sole independent claim 1 of the ’037 patent.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,460,037 - PTAB · Sep 12, 2024 · IPR2024-00620 · APJ John A Hudalla · IPR · Institution
Instituted IPR on claims 1–8, 14–22, and 25 on all asserted grounds after finding a reasonable likelihood of prevailing on the Tobita obviousness grounds and declining General Plastic denial.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had a relevant technical degree in Electrical Engineering, Computer Engineering, Materials Science, Physics, or the like, and experience in active matrix display design and electroluminescence.” Prelim. Resp. 16 (citing Ex. 2019 ¶ 36). Patent Owner criticizes Petitioner’s proposed definition because it “entails only general ‘circuit design’ experience with no experience in active matrix display design and electroluminescence, the subject matter of the ’593 Patent.” Id. at 17; see also Ex. 2019 ¶¶ 38–39 (Dr. Wolfe’s testimony regarding the same). In particular, Patent Owner argues that “[i]mportant aspects and considerations of the pixel circuit design are unique to the context of active matrix display design and to electroluminescent displays.” Prelim. Resp. 17 (citing Ex. 2019 ¶ 38). Patent Owner additionally notes that the Administrative Law Judge (ALJ) in the ITC Investigation adopted Patent Owner’s definition. Id. at 16–17 (citing Ex. 2018, 12). For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. Although “[t]he challenged patent pertains generally to the field of OLED displays,” it is directed “more particularly to the circuitry used to drive and control the pixels that comprise the light-generating elements of the display.” Ex. 1003 ¶ 29; see also Ex. 1001, 1:16– 18 (describing the Field of the Invention as relating to “a stage circuit and an organic light emitting display using the same”). Moreover, we note, for example, that claim 1 does not include any limitations directed to “active matrix displays” or any other particular type of display, which suggests that an ordinarily skilled artisan need not have had specific experience designing such displays. See Ex. 1001, 9:43–45 (reciting “[a] stage circuit”). In addition, Patent Owner’s proposed definition is imprecise because it does not quantify the amount of experience possessed by an ordinarily skilled artisan. Therefore, at this stage, we adopt Petitioner’s definition because we find it to be more consistent with the teachings of the ’593 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededOther
“For purposes of this Decision, we apply the same construction as the ITC ALJ, i.e., that controlling the voltage of the second node does not require the voltage of the second node to be determined by the first driver alone. This is supported by contrast with another limitation in claim 1, which expressly recites direct control: “the signal of the third input terminal directly controls.” Ex. 1001, 9:58 (emphasis added). This is also supported by a paragraph in the Specification of the ’593 patent explaining that the Specification uses the word “directly” in contexts where the same is intended. Id. at 4:19–26. Further, as noted by the ITC ALJ, the Specification of the ’593 patent states that the second driver “controls the voltage on the first node” where such control is accomplished in conjunction with the outputting unit. Ex. 2018, 31–32 (citing Ex. 1001, 5:60–62, claims 1, 15). This supports the ITC ALJ’s understanding with respect to the first driver, i.e., that control can occur in conjunction with other elements.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Specifically, Petitioner relies on the timing diagram in Figure 21B of Kimura to illustrate the operation of the circuit in Figure 27C. Pet. 19 (reproducing Ex. 1004, Fig. 21B). Petitioner acknowledges that the timing diagram “is not specific to the device of Figure 27C.” Id. Still, Petitioner contends the Figure 27C circuit “would (or at least obviously could) be supplied with input signals in the same manner and with the same timing” because it includes “the same input and output lines and many of the same transistors as Kimura’s other circuits.” Id. (citing Ex. 1003 ¶¶ 160–165). According to the timing diagram, the potential of node 13 (V13) is shown at its highest level during period D. See Ex. 1004, Fig. 21B. Petitioner also cites Kimura for teaching that “the potential of the node 13 becomes an H level.” Pet. 18 (quoting Ex. 1004 ¶ 256). Yet Kimura describes the Figure 27C circuit’s operation at period D differently: “[I]n a period D, the potential of the node 13 can be lowered. Therefore, dielectric breakdown or deterioration of the transistor connected to the node 13 (e.g., the transistor 102, the transistor 203, the transistor 205, or the transistor 206) can be prevented.” Ex. 1004 ¶ 286 (emphasis added). And Petitioner cites this very teaching in its analysis of limitation [1-B]. See Pet. 20–21. This inconsistency undermines Petitioner’s argument that “the device of Figure 27C . . . would (or at least obviously could) be supplied with input signals in the same manner and with the same timing.” Id. at 19. In light of this inconsistency, and in the absence of a sufficient explanation as to why Kimura’s teachings about different circuits apply to the Figure 27C circuit on which Petitioner relies, we find Petitioner’s analysis of claim 1 to be deficient. Thus, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over Kimura.” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for petitioner
“presents facts that are different from those in General Plastic because Petitioner here did not use a prior Board decision or a prior preliminary response as a roadmap. Given the lack of road-mapping specific to our proceedings, we find that Factor 3 weighs strongly against exercising discretion to deny institution. Further, we note that “factors 1–3 only weigh in favor of discretionary denial when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 19 at 5 (PTAB Aug. 23, 2022) (precedential) (“Code200”). Although Patent Owner alleges concerns under Factor 2 insofar as Petitioner knew or should have known of the asserted references at the time of the petition in IPR2023-01221 (Prelim. Resp. 9–12; PO Prelim. Sur-reply 2), we find such concerns to be of minimal significance where there is no road-mapping. Thus, we consider Factor 1 in conjunction with Factors 2 and 3 (see Code200 at 5) and find that Factors 1– 3 weigh against exercising discretion to deny institution. Similarly, the timing of the second petition in relation to the filing of the first petition (Factor 4), and when petitioner learned of the prior art (Factor 5), are more pertinent to the situation where the second petition is filed by a party using prior art allegedly newly discovered after receiving the Board’s unfavorable decision, as was the case in General Plastic, or after a preliminary response was filed in the first case. General Plastic at 10. That is not the situation before us here. We also do not agree with Patent Owner (see Prelim. Resp. 4–9) that the interplay between the instant case and the ITC Investigation implicates the same concerns from General Plastic about abuse or gamesmanship from multiple, staggered petitions. See General Plastic at 16–17. As in Code200, we find that “Patent Owner’s concerns of fairness are outweighed by the benefits to the patent system of improving patent quality by reviewing the merits of the challenges raised in the petitions, which have not been addressed to date.” Code200 at 6. Thus, we determine that Factors 4 and 5 do not weigh in favor of exercising our discretion to deny institution. Regarding Factor 6, Patent Owner argues that “[t]he Board should not expend its finite resources to endorse Petitioner’s second bite at the apple.” Prelim. Resp. 14. Nevertheless, because the earlier proceeding was terminated at Petitioner’s request, the Board has not previously considered the merits of Petitioner’s unpatentability contentions, and the Board’s involvement in the parties’ disputes related to the ’593 patent has been minimal up to this juncture. In the absence of meaningful efficiency concerns, we find that Factor 6 does not weigh in favor of exercising our discretion to deny institution. For Factor 7, we know of no reason why we could not meet the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination within one year of institution, so we also find that this factor does not weigh in favor of exercising discretion to deny institution. After considering Petitioner’s and Patent Owner’s arguments, we conclude that the General Plastic factors weigh against exercising our discretion to deny review.” slip op. at 61
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,330,593
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.