- Maxlite, Inc. v. Jiaxing Super Lighting Electric Appliance Co., Ltd.All claims unpatentablePTAB · Apr 29, 2022 · IPR2020-00208 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 7, and 12–18 are unpatentable as anticipated by Duan under § 102(a)(1).
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a B.S. degree in electrical engineering, or an equivalent field, as well as at least 2-4 years of academic or industry experience in lighting design, including knowledge of LEDs and related technology for driving LEDs. A person of ordinary skill in the art with a higher level of education may have fewer years of academic or industry experience, or vice versa. Pet. 22 (citing Ex. 1002 ¶ 10). Patent Owner does not contest Petitioner’s articulation of the level of skill in the art. PO Resp. 4–5. We regard Petitioner’s definition as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, we adopt Petitioner’s proposal.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“embodiments that operate with a low frequency driving signal in a double-ended configuration, Patent Owner did not recite “low frequency” or “double-ended” in its claims and instead chose the broader term “first driving mode.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The fact that a limitation in the specification may define over the prior art does not justify importing that limitation into the claims unless a term is expressly defined such that the patentee becomes his own lexicographer or there is an express disavowal of claim scope. See GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1308–09 (Fed. Cir. 2014). There is no evidence of an express disavowal here. As to lexicography, we disagree with Patent Owner’s contention that the Specification defines the phrase “first driving mode.” Patent Owner relies on the mere fact that the specification describes an embodiment with a first driving mode that has a low frequency driving signal and is in a “double-ended” configuration, but this is not sufficient to define the term. The specification does not require that a low frequency driving signal must necessarily be used. In fact the specification, although not entirely clear, suggests that the driving signal may be from a high frequency ballast. Ex. 1001, 51:8–14. Thus, the fact that the patent here discloses a low frequency driving signal does not mean that all the claims are directed to such a driving signal. See E-Pass Tech., Inc. v. 3Com Corp., 343 F.3d 1364, 1368–69 (Fed. Cir. 2003). Indeed, dependent claim 15 recites “the first driving mode is performed when the external driving signal is a relatively low frequency or voltage signal,” while the independent claims were directed to a more general driving signal. The doctrine of claim differentiation suggests that the independent claims here should not include explicit limitations of a dependent claim. See Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“We determine that Patent Owner has not shown sufficiently that the Chinese priority patent applications it relies on—the ’636 Chinese Application and the ’586 Application—provide written description support for the limitation of “a mode determination circuit, configured to generate a first determined result signal based on the external driving signal” and “a mode switching circuit, coupled to the filter circuit and the driving circuit, configured to determine whether to perform a first driving mode or a second driving mode based on the first determined result signal,” recited in claim 1. PO Resp. 31–34, 60–67. Specifically, Patent Owner relies on structures in the ’636 Chinese Application and the ’586 Application that are not sufficiently similar to structures in the ’826 patent i.e., DR Circuit 140, excluding diodes D5 and D6, as shown in Figs. 24i-j and 29b. Id. at 27 (citing Ex. 2001, 23–24, 29, and 33, Fig. 24i–j and 29b).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“For the reasons above, Patent Owner has not established that claim 1 of the ’826 patent is entitled to the effective filing date of the ’636 Chinese Application (i.e., June 10, 2015) or the ’586 Application (i.e., March 26, 2015). Because the remaining asserted claims are dependent claims, Patent Owner has also not established that claims 7 and 12–18 of the ’826 patent are entitled to the effective filing date of the ’636 Chinese Application or the ’586 Application. The application that led to the ’826 patent was filed on March 25, 2016. The ’826 patent claims it is a continuation-in-part of application No. 15/055,630 (“the ’630 Application”), filed on February 28, 2016. So, even if the challenged claims were entitled to the earlier February 28, 2016 filing date, Duan issued on July 1, 2015, and is, thus, prior art to the challenged claims of the ’826 patent under 35 U.S.C. § 102(a)(1).” slip op. at 18
Patent outcomesUS 9,807,826 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 9,807,826 - Abs Global, Inc. / Genus, PLC v. Cytonome/St, LLCNo claims unpatentablePTAB · Apr 28, 2022 · IPR2021-00088 · APJ James A Worth · IPR · Final written decision
Claims 1, 2, 6, 8, and 9 were not shown unpatentable because Simonnet disclosed split sample streams, and Petitioner did not adequately show a reason to modify it to form a single stream.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“focused split sample typically would not allow two cells to arrive at the inspection region at once, because there is not enough space for two 10-μm cells to travel side by side.” See Ex. 1054 ¶ 21 (citing Ex. 1005, 5662) (emphasis added). The qualifier “typically” for two cells not arriving at the same time does not indicate that there would be no split stream. And Dr. Issadore seems to concede there could be a split sample. Id. Further, Dr. Issadore does not state which dimensions of which of Simonnet’s channels that he is using as a reference.27 We determine that Dr. Issadore provides insufficient evidence and reasoning for an understanding that there would be a single stream if mammalian cells were used, in addition to making a statement that stops short of that conclusion. Although not argued by Petitioner nor discussed by Dr. Issadore, Simonnet does state: “we expect the HTD to be compatible with cells up to ~15 µm in size.” Ex. 1005, 5662. Simonnet also states: “We expect that with the improvements in optics and detection electronics, a cytometry system based on the HTD would match the throughput, sensitivity, and accuracy of commercial flow cytometers and would be an adequate tool for assaying fluorescently marked live cells.” Id. These statements can be fairly read as a statement of reasonable expectation of success of using mammalian cells in the device. However, Simonnet is silent as to whether the mammalian cells would be in a single stream, and if anything, Simonnet appears to be inviting further experimentation. Accordingly, Petitioner has not provided adequate reasoning to modify Simonnet to form a single sample stream.” slip op. at 52
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Decision on Institution, we set forth our preliminary determination that a person of ordinary skill in the art at the relevant time would have had a bachelor’s or master’s degree in the field of bioengineering, mechanical engineering, chemical engineering, or analytical chemistry, or a related field and at least three years of experience in designing or developing microfluidic systems. See Dec. 10–11. Patent Owner does not dispute this definition. See PO Resp. 4. 6 The parties do not present or address objective evidence of non-obviousness in this proceeding. After considering all evidence and arguments anew, we determine that it is proper to maintain our definition of the level of skill in the art.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“sheath flow does not mean that “focusing” requires sheath flow. In other words, the Specification does not contain a definition of “focusing” that defines “focusing” as requiring “sheath flow.” As discussed above, the Specification does state “focusing (e.g., constricting).” See also Tr. 41:22– 42:8 (discussing the Specification of the ’439 patent). Whether or not this disclosure rises to the level of a definition, it indicates that focusing is understood to be constricting and does not mention “sheath flow.” Although sheath flow may, in certain cases, be a natural result of having multiple fluid focusing features (see Ex. 1001, 14:6), the claim itself does not require that focusing include sheath flow.11 11 In terms of resolving the dispute between the parties, the real question appears to be whether the sample stream that exits the focusing region must be a single sample stream or whether it may encompass split sample streams, a question that we address in the next subsection. Patent Owner’s ultimate argument appears to be that “focusing” requires a single sample stream because “focusing” requires sheath flow and sheath flow requires a single sample stream. However, we agree with Petitioner that persons of ordinary skill could still refer to split streams as having “sheath flow” (see Ex. 1054 ¶ 11; Ex. 1043, 2215, Fig. 10 and caption (“separated two-sample 3D sheath flow”); Ex. 1044, 2 (“multiple core-sheath flow”), and therefore, even if we agreed with Patent Owner that focusing requires sheath flow, that would not clarify whether “focusing” precludes split sample streams. In any event, we conclude that focusing does not require sheath flow. We recognize that there are examples in the Specification where there is sheath flow. E.g., Ex. 1001, 5:30–32 (“Certain embodiments described herein relate [to] systems and methods for producing a sheath flow . . .”), 10:35–37 (“The illustrated core stream forming geometry 400 provides improved sheath flow capabilities and thus improved sample focusing capabilities.”). However, case law generally counsels against importing limitations from the Specification into the claims. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1323 (“To avoid importing limitations from the specification into the claims, it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so.”).12 We, therefore, do not import “sheath flow” into the definition of focusing.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Therefore, we construe “the sample stream” in the claim phrase “configured to focus the sample stream” to refer to a singular stream. c) Conclusion as to “focusing” and “configured to focus the sample stream” We maintain our construction of “focusing” as “pinching, confining, squeezing, or constricting” and decline to import additional requirements such as sheath flow into the term “focusing.” Nevertheless, we construe “the sample stream” in the claim phrase “configured to focus the sample stream” to refer to a singular stream.” slip op. at 28
Patent outcomesUS 10,583,439 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,583,439 - Peloton Interactive, Inc. v. Ifit, Inc.InstitutedPTAB · Apr 22, 2022 · IPR2022-00029 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR of claims 1, 3–5, 8–11, 15, 16, 21–23, 26–28, 30, 36, 38, 40, 45, 46, and 48 on all petition grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“2. Second Part of Advanced Bionics—Studor Having found Studor was considered during prosecution of the” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“the present Petition, may have gained a tactical advantage by being able to review the patent owner response in IPR2021-00342. However, based on the present record, it appears that the principal reason behind Petitioner’s delay was to wait until Patent Owner identified the claims at issue in the District Court Litigation, rather than filing serial petitions to test theories in an initial petition and adapt accordingly in a later petition. Further, Petitioner had the patent owner response in hand for only a few weeks (September 30 to October 13) before filing the present Petition. In light of these overall circumstances, the potential tactical advantage gained by Petitioner does not merit a discretionary denial of institution.” slip op. at 37
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“before the court’s scheduled trial date. We agree with our colleagues’ conclusion that “this factor favors denial if trial precedes the Board’s Final Written Decision and favors institution if the opposite is true,” “due to the 35 U.S.C. 315(e)(2) estoppel provision.” Huawei Techs. Co., Ltd. v. WSOU Invs., LLC, IPR2021-00225, Paper 11 at 13–14 (PTAB June 14, 2021); see also Google LLC v. Parus Holdings, Inc., IPR2020-00846, Paper 9 at 20–21 (PTAB Oct. 21, 2020) (“Petitioner is the defendant in the parallel proceeding. This fact could weigh either in favor of, or against, exercising discretion to deny institution, depending on which tribunal was likely to address the challenged patent first.”).” slip op. at 48
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires the Petition to demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute, on behalf of the Director (37 C.F.R. § 42.4(a)), an inter partes review to determine whether Petitioner demonstrates by a preponderance of the evidence that the challenged claims are unpatentable, considering the two grounds asserted in the Petition.” slip op. at 2
Claim constructionDiscretionary denialcites KSR · GrahamPatents in suitUS 7,166,062 - New World Medical, Inc. v. Microsurgical Technology, Inc.All claims unpatentablePTAB · Apr 20, 2022 · IPR2021-00017 · APJ James A Tartal · IPR · Final written decision
Claims 1–3, 6, 9, and 10 are unpatentable as anticipated by Quintana; claims 4, 5, 7, 8, and 11 are unpatentable as obvious over Quintana.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had either “a medical degree and at least two years’ experience with treating glaucoma and performing glaucoma surgery,” or “an undergraduate or graduate degree in biomedical or mechanical engineering and at least five years of work experience in the area of ophthalmology, including familiarity with ophthalmic anatomy and glaucoma surgery.” Pet. 26 (citing Ex. 1003 ¶ 24). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. Resp. 10 n.5. We adopt Petitioner’s definition as we find it is undisputed and consistent with the level of skill in the art at the time of the invention, as reflected by the prior art and the ’885 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner propose any express construction for a claim term. See Pet. 27; Resp. 10. We find that no express construction of any claim term is necessary for purposes of rendering this Decision. See 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)).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Quintana’s disclosure expressly states that “[o]nly the tip of the instrument is introduced into Schlemm’s canal, and the [trabecular meshwork] is stripped slowly, gently and easily from the canal’s lumen towards the anterior chamber as the needle progresses,” which informs one of ordinary skill in the art that the beveled edges of the needle cut and remove a strip of trabecular meshwork tissue. See Ex. 1004, 4; see also id. at 8 (“[f]urther studies are necessary to disclose the ‘in vivo’ behaviour of the sectioned trabecular meshwork”), caption to Figure 2 (“[t]he tip of the needle stripping the trabecular meshwork”); see also Ex. 1030 ¶¶ 7–10 (Dr. Netland discussing Quintana from the perspective of one of ordinary skill in the art).” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Reasons Supporting Obviousness Over Quintana We find for the reasons provided below that Petitioner has shown by a preponderance of the evidence persuasive reasons the subject matter of the Challenged Claims, as a whole, was taught by Quintana, in light of the knowledge of a person of ordinary skill in the art. We further find that, to the extent a feature of Quintana relied upon by Petitioner would have required modification to correspond to a feature of a Challenged Claim, Petitioner has shown by a preponderance of the evidence a person of ordinary skill not only could have made the modification, but would have had reason to do so in light of the knowledge of a person of ordinary skill in the art. Patent Owner argues a lack of motivation to modify Quintana “to create first and second spaced-apart cutting edges.” Resp. 31–32. As explained above, we find Quintana discloses this feature without modification. See supra Section II.E.1. Patent Owner also broadly argues no motivation for any of the proposed modifications because Quintana “never describes creating and removing a strip of [trabecular meshwork],” and that Petitioner does not show how the asserted modification “would have been advantageous” and are “the product of speculation, conjecture and hindsight.” Resp 33–34. As explained above, we find Quintana discloses cutting a strip of trabecular meshwork and Patent Owner’s argument fails to address the reasons Petitioner identifies for each proposed modification. See supra Section II.E.1. We likewise find no persuasive evidence to support Patent Owner’s undeveloped arguments that any modification proposed by Petitioner of Quintana based on the knowledge in the art would have rendered Quintana’s device “unfit for its intended purpose” or that Quintana “would have taught away . . . for fear of reducing the effectiveness of the device.” Resp. 33–34. We find persuasive Petitioner’s argument in its Reply that Patent Owner “fails to explain how modifying Quintana’s needle as proposed by [Petitioner] would have increased the risk of injury to [Schlemm’s Canal], and no disclosure in Quintana that criticizes, discredits, or discourages “investigation into the modifications proposed by [Petitioner]. Reply 24 (citing Ex. 1004, 4). We further focus our discussion below on any additional determinative issues in dispute.” slip op. at 51
Patent outcomesUS 9,820,885 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,820,885 - Vudu, LLC v. Ideahub, Inc.All claims unpatentablePTAB · Apr 14, 2022 · IPR2020-01688 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 3, 4, 6, 8, 11, 13, 15, 18, 19, 21, and 23 are unpatentable over DIS 23009-1; the revised contingent motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 18–19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor 6 Patent Owner does not present objective evidence of nonobviousness. does it present its own definition. We adopt Petitioner’s definition as it is consistent with the specification of the ’830 patent and the cited references.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes that we construe “adaptation set,” “SegmentBase,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in its briefing. We need not construe any claim term to resolve any issues before us, and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely because paragraph 253 uses the term “[h]ereinafter” before it discloses “two simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited 8 Ex. 2005 is Application No. 16/168,933 (“the ’933 application”). in limitations [38.6], [40.6], and [46.6]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicates a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. MTA 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 38, 40, and 46 do not find sufficient written description support in the ’644 application nor in the ’933 application, whether considered individually or collectively, and thus, these claims contain new matter.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“rationale for combining DIS 23009-1 with M20060, Petitioner persuasively contends that: A POSA would have been motivated to add the additional “metadata” described in M20060 to the MPDs described in the DIS 23001-6 or DIS 23009-1 references in order to enable the client to choose the most suitable version of media content among alternative versions of media content. For example, M20060 describes that the additional metadata (e.g., the extended accessibility element and the usedWith, equivalentTo, bitDepth, minBitDepth, and maxBitDepth attributes) helps “both users and clients to select appropriate representations” by, for example, “1) supporting accessibility, 2) describing relationships of representations, and 3) describing media’s bit depth.” Moreover, a POSA would have had an expectation of success in modifying the MPDs in DIS 23001-6 or DIS 23009-1 to include the additional metadata described below because it simply would have been a matter of adding additional metadata to the MPD XML schemas described in DIS 23001-6 or DIS 23009-1. Id. (citing Ex. 1094 ¶ 33; Ex. 1097 § 1, 1). Dr. Bestavros persuasively explains that “M20060 expressly references the DIS 23001-6 reference and proposes specific modifications to the MPEG DASH metadata included in the MPD XML schema.” Ex. 1094 ¶ 34 (citing Ex. 1097 § 1, 1 (introduction of M20060); Ex. 1097, 7 (references cited by M20060)).” slip op. at 41
Patent outcomesUS 10,270,830 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,270,830 - Vudu, Inc. v. Ideahub, Inc.All claims unpatentablePTAB · Apr 14, 2022 · IPR2020-01689 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 11, 25, 27, and 29 are unpatentable as anticipated by and obvious over DIS 23009-1; the revised contingent motion to amend proposing claims 31–35 is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level Of Ordinary Skill In The Art Petitioner contends that: A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor does it present its own definition in any of its briefing. We adopt Petitioner’s definition as it is consistent with the Specification of the ’414 patent and the cited references.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner proposes that we construe “adaptation set,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in any of its briefing. 6 Patent Owner does not present objective evidence of nonobviousness. and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot shown unpatentable
“The newly-cited portion in paragraph 232 does not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited in limitations [31.11], [32.12], and [35.7]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicate a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 31, 32, and 35 do not have sufficient written description support in the ’644 application and the ’092 application, either individually or collectively, and as such, contain new matter.” slip op. at 29
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“are not entitled to a priority date earlier than March 16, 2012 (the filing date of PCT ’922), because the disclosure of KR10-2011-0023271 does not support at least the limitations of: “the adaptation set includes one or more attributes or elements that are common to each of the representations for that adaptation set,” as recited in independent claims 1 and 11, and the “SegmentTemplate” recited in independent claims 25. Patent Owner has not asserted, after institution, that the challenged claims are entitled to an earlier date. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327–28 (Fed. Cir. 2008) (indicating that patent owner bears a burden of production in arguing that the asserted references are not prior art based on entitlement to an earlier priority date). As such and for the reasons discussed below, Petitioner has persuasively demonstrated that DIS 23001-6, DIS 23009-1, and 3GPP TS 26.247 qualify as prior art to the challenged claims, because Petitioner has sufficiently demonstrated that the references were publicly accessible prior to the applicable priority date of March 16, 2012.” slip op. at 12
Patent outcomesUS 10,313,414 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,313,414 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Mar 24, 2022 · IPR2021-01521 · APJ Bryan F Moore · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1, 9–11, 19–21, and 29–30 were obvious over Paxton and Sutton.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unpatentable under § 103 as obvious in view of Paxton and Sutton. See Pet. 6, 16–56. For the reasons described below, we are not persuaded by Petitioner’s argument and evidence.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“or why its proposed Paxton-Sutton combination would generate rules and provision the rules ‘responsive to correlating,’ as required by the Challenged Claims.” Prelim. Resp. 43. On this record, we agree with Patent Owner. The claims require “generating, by the computing system and based on the correlating, one or more rules configured to identify packets received from the host located in the first network.” We do not have sufficient argument or evidence to show that one of ordinary skill in the art would have found it obvious to generate these rules “based on” the determined correlation.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2–3 years of experience in the design or development of telecommunication systems, or the equivalent”” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Claim Construction The parties do not dispute any claim constructions (see Pet. 14–15; Prelim. Resp. 41), we find no terms that need to be construed to resolve any issues, and, accordingly, we do not construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,560,176 - PTAB · Mar 24, 2022 · PGR2021-00112 · APJ Bryan F Moore · PGR · Institution
Instituted PGR on claims 1–20 because Petitioner showed a reasonable likelihood that claim 1 lacks written description support; all petition grounds were included.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“content for output.” Id. at 89. We determine, however, that Petitioner’s argument under Step 2A Prong One that claim 1 is directed to the “obtaining content for output” is not substantially different from the Examiner’s determination that claims 1‒20 recite “collecting information, analyzing it, and displaying certain results of the collection and analysis.” Compare Pet. 37–88 (citing e.g. Electric Power), with Ex. 2001, 193–194 (also citing Electric Power). In both cases, the argument is the same or substantially the same, i.e., that similarly identified subject matter of the claim is obtaining (collecting) data and displaying (outputting) it. Nevertheless, as to Step 2A Prong Two, we determine that the claims at issue in the ’096 prosecution differ in material ways from the ’903 patent claims at issue in this PGR. Specifically, the ’096 patent claims recite a touchscreen interface not recited in the ’903 patent claims. Additionally, the ’903 claims focus on the “output device” as performing the patented steps but in the ’096 prosecution history the “‘information apparatus performs the patented steps and “is integral to the claims” (as the Applicant argued). See Ex. 2008 [comparison of ’096 prosecution claims and ’903 claims]; Ex. 2001, 150; see also Pet. 89 (“the claims at issue in the ’067 application were different than the claims of the ’903 patent addressed here.”). rejection and arguments in the ’096 prosecution history turns on whether the claims in this PGR recite different elements that must be determined to integrate the judicial exception into a practical application (i.e., Prong Two of Step 2A). Petitioner argues that an essential element different than the ’096 claims, i.e. the output device, does not integrate the judicial exception into a practical application because the claims do not amount to an improvement to computer functionality. Pet. 37–72. We find this a close case. Nevertheless, due to the differences in the claims, we determine that the Examiner’s withdrawal of the § 101 rejection in light of the applicant’s arguments regarding the claim being directed to a specific technical solution is not substantially the same argument that Petitioner’s presents in the Petition as to Prong Two of Step 2A.” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“C. Lack of Written Description Support Petitioner contends that the challenged claims are unpatentable for lack of written description for the same reasons it contends the ’903 patent is PGR eligible. Pet. 13–36. The Specification of the ’903 patent has substantially the same disclosures as the Specification of the ’413 application relied on by Patent Owner (see Prelim. Resp. 20) to which the ’903 patent claims priority. Having determined that the disclosures in the ’903 patent Specification and the ’413 application is insufficient to provide written description support for the at least claim 1, we also determine that Petitioner has demonstrated a reasonable likelihood that at least claim 1 is unpatentable for the same reasons. Thus, we exercise our discretion and institute post grant review of claims 1–20 challenged under this ground. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1369–60 (2018).” slip op. at 33
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateInstituted
“in the art at the time of the invention] would have understood that an output system/device could be (or include) an information apparatus. Prelim. Resp. 24. We determine that Patent Owner’s argument has a logical flaw––i.e., the fact that a particular device could be used alternately as an information apparatus or an output device does not necessarily mean that it was known by one of ordinary skill in the art to use a combined information apparatus/output device and have the new combined device perform all the additional functions required by the claims. “The knowledge of ordinary artisans may be used to inform what is actually in the specification, but not to teach limitations that are not in the specification, even if those limitations would be rendered obvious by the disclosure in the specification.” Rivera v. Int’l Trade Comm’n, 857 F.3d 1315, 1322 (Fed. Cir. 2017) (“Rivera”). “The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification . . . . It extends only to that which is 1997). Patent Owner has not pointed to any disclosure in the ’413 application teaching that an “output device” can perform the functions of the “information apparatus” including its interactions with the “output device.” For example, claim 1 recites “wirelessly receiving, by the output system . . . output data from at least one server of the one or more servers over the Internet.” Ex. 1001, 37:28–32. At this stage, we find sufficiently persuasive Petitioner’s argument, which we discuss above, that the only written description support for an “output device” that performs the claimed functions by accessing the Internet provided by Patent Owner is not an “output device” but an “information apparatus.” Prelim. Resp. at 27–29.” slip op. at 29
§ 112 disclosureDiscretionary denialcites Mayo · Bilski · Electric PowerPatents in suitUS 11,029,903 - PTAB · Mar 15, 2022 · IPR2021-01158 · APJ Lynne E Pettigrew · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Palo Alto Networks would prevail in showing at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“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. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. We consider each of these factors below.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“35 U.S.C. § 325(d) because every ground asserted in the Petition is based on the same or substantially similar art and arguments already considered during prosecution of the ’899 patent. Prelim. Resp. 13–26. Section 325(d) states, in relevant part, “[in] determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses the following two-part framework in determining whether to exercise discretion under § 325(d) to deny institution: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In applying the two-part framework, we consider the following non-exclusive factors: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph). Factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Id.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review if “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) (2018). After considering the parties’ arguments and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’899 patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’899 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in computer science, electrical engineering, or a related field, and approximately two years of professional experience or equivalent study in network security and the use of machine-learning algorithms.” Pet. 13 (citing Ex. 1004 ¶ 30). Petitioner further asserts that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. (citing Ex. 1004 ¶ 30). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s assessment of the level of ordinary skill in the art. See generally Prelim. Resp. Based on the information presented in the Petition and Dr. Lee’s testimony, we adopt Petitioner’s assessment for purposes of this Decision.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,503,899 - PTAB · Mar 15, 2022 · IPR2021-01157 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–17, finding a reasonable likelihood that the challenged claims are obvious over four combinations of Jungck, Shah, Ke, and Sarathy.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“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. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. We consider each of these factors below.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“35 U.S.C. § 325(d). See Prelim. Resp. 19–35. Pursuant to § 325(d), the Director may elect not to institute a proceeding if the challenge to the patent is based on matters previously presented to the Office. Section 325(d) states, in relevant part, “[in] determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses the following two-part framework in determining whether to exercise discretion under § 325(d) to deny institution: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (footnote omitted).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that a person of ordinary skill in the art would have had “a bachelor’s degree in computer science, computer engineering, or an equivalent, and four years of professional experience” and that “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 16 (citing Ex. 1004, Decl. of Dr. Vijay Madisetti (“Madisetti Decl.”) ¶¶ 34–36). Patent Owner does not dispute Petitioner’s description of a person of ordinary skill. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Petitioner’s description of a person of ordinary skill is commensurate with the subject matter of the ’906 patent and we apply it for purposes of this Decision.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,749,906
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.