- PTAB · Mar 22, 2024 · IPR2023-01294 · APJ Michael J Fitzpatrick · IPR · Institution
The Board instituted IPR on claims 1–20 over all asserted grounds, finding a reasonable likelihood of success on claims 1, 11, and 16 under the Downs/EDACS and Kim grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“A. Discretion Under 35 U.S.C. § 314 Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) and deny the Petition in view of the related lawsuit in the Eastern District of Texas. Prelim. Resp. 25 (citing Apple Inc. v. Fintiv, Inc., No. IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”); Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Interim Procedure”)). However, Petitioner has since filed a Sotera stipulation, so named based on Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). See Ex. 1035. Thus, pursuant to the Interim Procedure, we will not discretionarily deny the Petition based on the related lawsuit. See Interim Procedure at 3 (“Consistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.”).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In assessing whether to exercise the Board’s authority to deny institution under § 325(d), the Board considers a two-part analysis. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, No. IPR2019-01469, Paper 6 at 8–9 (Feb. 13, 2020) (precedential). First, in Part One, the Board considers whether “the same or substantially the same” art or arguments were previously presented to the Office. Id. at 8. If so, in Part Two, the Board then considers whether the petition demonstrates that the Office “erred in a manner material to the patentability of the challenged claims.” Id. In applying the two-part framework, the Board considers several nonexclusive factors set forth in Becton, Dickinson & Co. v. B. Braun Melsungen AG, No. IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“status of a channel,” “having or collecting information on ongoing communications,” and “providing call access to entities” does not constitute “monitoring media streams,” as recited in claims 1, 11, and 16. See Prelim. Resp. 10–11 (citing Pet. 29). Patent Owner does not, however, propose a construction for “monitoring media streams,” let alone one that might elucidate the distinction Patent Owner is advancing. Nor is such a distinction apparent based on the claim language. For example, the plain and ordinary meaning of “monitoring media streams” appears to encompass, among other things, Down’s disclosure that “[t]he dispatcher console is informed of the individual transmitters and channels that are being used and of the status of other transmitters and receivers in the system.” Ex. 1004, 2:20–22; see also id. at 3:17–26 (explaining that the display provides caller, volume, and, if applicable, emergency status of each individual communication). The plain and ordinary meaning of “monitoring media streams” appears to also encompass EDACS’s disclosure that its “system receives [an emergency] request and assigns the emergency call to a free channel.” Ex. 1005, 25.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“status of a channel,” “having or collecting information on ongoing communications,” and “providing call access to entities” does not constitute “monitoring media streams,” as recited in claims 1, 11, and 16. See Prelim. Resp. 10–11 (citing Pet. 29). Patent Owner does not, however, propose a construction for “monitoring media streams,” let alone one that might elucidate the distinction Patent Owner is advancing. Nor is such a distinction apparent based on the claim language. For example, the plain and ordinary meaning of “monitoring media streams” appears to encompass, among other things, Down’s disclosure that “[t]he dispatcher console is informed of the individual transmitters and channels that are being used and of the status of other transmitters and receivers in the system.” Ex. 1004, 2:20–22; see also id. at 3:17–26 (explaining that the display provides caller, volume, and, if applicable, emergency status of each individual communication). The plain and ordinary meaning of “monitoring media streams” appears to also encompass EDACS’s disclosure that its “system receives [an emergency] request and assigns the emergency call to a free channel.” Ex. 1005, 25.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,831,664 - PTAB · Mar 21, 2024 · IPR2023-01295 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1–5, 7–19, and 21–24 on both § 103 grounds: Shaffer with Saylor, and Gogic with Opitz.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We disagree with Patent Owner’s characterization of the prosecution history. After the Examiner issued a final rejection of then-pending claim 1 (Ex. 1003, 125–138), Applicant amended claim 1 by adding the following limitations:” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“informing the Board of the stipulation Petitioner made to Patent Owner on December 27, 2023. Paper 8, 5 (citing Ex. 1034). The Stipulation reads: Motorola Solutions, Inc. stipulates that, if the Patent Trial and Appeal Board institutes an IPR proceeding for U.S. Patent No. 8,994,830 on the grounds presented in the petition in IPR2023- 01295, Motorola Solutions, Inc. will not pursue an invalidity defense in the district court action (STA Group LLC v. Motorola Solutions, Inc., Case No. 2:22-cv-00381 (E.D. Tex.)) that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR. Id. Petitioner has filed a stipulation that it “will not pursue an invalidity defense in the district court action (STA Group LLC v. Motorola Solutions, Inc., Case No. 2:22-cv-00381 (E.D. Tex.)) that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR.” Ex. 1034. Petitioner contends that its “Sotera stipulation moots Patent Owner’s (‘PO’) Fintiv arguments.” Prelim. Repl. 1 (citing Ex. 1034; Ex. 1032, 3). Patent Owner does not respond, in the Preliminary Sur-reply, to Petitioner’s Reply argument regarding discretionary denial or argue that we nevertheless should deny the Petition in light of Petitioner’s stipulation. See, generally, Prelim. Sur-Reply. Upon consideration of these factors and the parties’ arguments, we decline to exercise our discretion to deny the Petition in light of Petitioner’s Sotera stipulation. See Guidance Memo 7.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d. Conclusion as to Independent Claim 1 We have considered all of the evidence and arguments presented by the parties with respect to independent claim 1. Based on the record before us, we are persuaded that Petitioner has demonstrated sufficiently for purposes of institution that the combined teachings of Shaffer and Saylor meet all the limitations of independent claim 1 and that a person of ordinary skill in the art at the time of the claimed invention would have had reason to combine their teachings in the manner described, and would have had a reasonable expectation of success in so doing.” slip op. at 53
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person of ordinary skill in the art as a person having “at least (a) a bachelor’s degree in computer science, electrical engineering, or a similar field, and (b) approximately 2 years industry experience in networking or communication systems, including interoperating different types of networks that include video feeds.” Pet. 13 (citing Ex. 1002 ¶¶ 45–47). Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 6–7. Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’830 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Polish. See Ex. 1002 ¶ 46. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. D. Claim Construction” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,994,830 - PTAB · Mar 13, 2024 · IPR2023-01293 · APJ Michael J Fitzpatrick · IPR · Institution
The Board instituted review of claims 1–14 on both § 103 grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review requires “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). Determining whether a reasonable likelihood has been met has been delegated to the Board. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the Petition, Preliminary Response, Preliminary Reply, and Preliminary Sur-reply, and for the reasons explained below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one claim. Accordingly, we grant the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) and deny the Petition in view of the related lawsuit in the Eastern District of Texas. Prelim. Resp. 26 (citing Apple Inc. v. Fintiv, Inc., No. IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”); Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Interim Procedure”)). However, Petitioner has since filed a Sotera stipulation, so named based on Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). See Ex. 1039. Thus, pursuant to the Interim Procedure, we will not discretionarily deny the Petition based on the related lawsuit. See Interim Procedure at 3 (“Consistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.”).” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in computer science, electrical engineering, or a similar field, and would have had approximately three years industry experience in networking or communication systems, in particular addressing interoperability between different types of networks and satellite communications. Ex[1002], ¶52. Additional education in the fields of electrical engineering or computer science may serve as a substitute for experience in the field. Id. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. Pet. 10. Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. Indeed, Patent Owner witness Michael Crane explicitly “accept[s]” it. Ex. 2001 ¶28. Because Petitioner’s formulation of the level of ordinary skill in the art appears consistent with the ’134 patent and the asserted prior art, and because there is no argument to the contrary at this stage of the proceeding, we apply it in our analysis below.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner construes two terms that are not actually recited in the claim. First, Petitioner states that “[m]ulticast” means “the delivery of information to a group of destinations simultaneously using the most efficient strategy.” Pet. 11 (citing Ex. 1001: 1:14–16). None of the challenged claims recite “multicast,” but each of the independent claims recite “multicasting.” This decision does not turn on the meaning of “multicasting,” as Patent Owner does not contest that the cited art teaches such a feature. Accordingly, we need not and do not construe explicitly “multicasting.”” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,489,134 - PTAB · Mar 13, 2024 · IPR2023-01292 · APJ David C Mckone · IPR · Institution
The Board instituted review of claims 1–21 on all three obviousness grounds: Ohel; Nigawara; and Nigawara with Doolin.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting is set forth in § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we institute an inter partes review of the ’802 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The Director has issued additional guidance on the application of Fintiv. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)5 (“Fintiv Memo”). According to the Director, “[w]hen 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, it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020)). To that end, “the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation 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. Petitioner has filed a stipulation that it “will not pursue an invalidity defense in the district court action (STA Group LLC v. Motorola Solutions, Inc., Case No. 2:22-cv-00381 (E.D. Tex.)) that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR.” Ex. 1029. Petitioner represents that it “has provided a Sotera stipulation in this proceeding” and” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Skill in the Art Petitioner, relying on the testimony of Mr. Williams contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, electrical engineering, or a similar field, and” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The claim language “storing at least one message having a lower priority between the first and the second message based on the determination,” does not appear limited to the instant in time at which data are committed to memory, nor does it appear to exclude continuing to store a message based on a determination that the message has a lower priority than another message. The claim language also does not appear to otherwise specify that the message is not to be stored until its priority is assigned. Patent Owner does not explain why the claim language should be read so narrowly. Prelim. Resp. 18–19; Prelim. Sur-reply 4–5.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,324,802 - PTAB · Mar 13, 2024 · IPR2023-01347 · APJ Sheridan K Snedden · IPR · Institution
The Board instituted review of claim 16 on both asserted obviousness grounds, finding a reasonable likelihood that Petitioner would show the claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). The Supreme Court has held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the information presented in the Petition, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that claim 16 of the ’344 patent is unpatentable.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“Based on the preliminary record, we are persuaded by Petitioner’s contention that claim 16 does not comply with the written description requirement for the reasons set forth in the Petition (Pet. 11–17), summarized above. More specifically, on the current record, we do not recognize the ’344 patent to disclose a representative number of API, solvent and co-former combinations having the necessary recited features. We do not understand the ’344 patent to disclose structural features common to the recited solvents and co-formers such that a POSA could “visualize or recognize” the members of the claimed genus. Ariad, 598 F.3d at 1350. We recognize that a POSA’s perspective is key to the written description inquiry and many factors may inform the adequacy of a specification’s disclosure, including existing knowledge in the field and the content of the prior art. See Ariad, 598 F.3d at 1351. On the current record, however, we do not find evidence that a POSA would have considered the recited mechanisms to form supramolecular synthons via non-covalent hydrogen bonding by pairing solvents and co-formers having certain functionalities a concept that was well-known in the art. effective filing date for claim 16 is February 13, 2014, the filing date of the ’344 patent.2” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner contends that a POSA would have been motivated to combine Ueto with Li, Martindale, Zaworotko, and Remington “to improve physicochemical properties of the co-crystal components.” Id. at 49. In particular, furosemide was known as of 2014 to have low water solubility (Ex. 1506, Martindale at 1421; Ex. 1503, Appel ¶ 58; Ex. 1502, Rogers ¶¶ 232–34, 236), and water solubility, along with bioavailability, were properties that co-crystals had the potential to improve. Ex. 1507, Ueto at 485; Ex. 1503, Appel ¶ 59; Ex. 1502, Rogers ¶¶ 234, 236. As such, a POSA would have been motivated to pursue studies with the Ueto co-crystals, including the furosemide/nicotinamide/water co-crystal. Pet. 49. In view of the foregoing, we determine that Petitioner has established a reasonable likelihood of showing that the combination of Ueto, Li, Martindale, Zaworotko, and Remington renders obvious claim 16 for the purposes of our preliminary findings. Patent Owner at this stage does not offer any arguments addressing Petitioner’s substantive showing. Accordingly, we institute a inter partes review of claim 16 of the ’344 patent.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner proposes constructions for the terms “active pharmaceutical ingredient (API)”, “API homosynthons”, “carbonyl”, “carboxamide”, “co-former”, and “supramolecular synthon.” Pet. 9–10. According to Petitioner, “[t]he parties agree that co-former is used synonymously with cocrystal former and that a co-former is a component of a co-crystal.” Id. at 9. Petitioner represents that the proposed constructions have been agreed to between the parties in parallel litigation, or agreed upon such that “the disputed portions are not relevant to [the] issues raised in this Petition.” Id. at 8. We have reviewed each of these constructions and adopt Petitioner’s proposed construction for the purposes of this Decision. Petitioner’s construction aligns with the plain words of the claim, is consistent with the prosecution history of the ’344 patent, and finds support in the uncontroverted testimony of Dr. Rogers. Ex. 1502 ¶¶ 52–63; Ex. 1516, 256–58, 261–63. Petitioner construes the term “co-crystal” to mean “a multiple- component, single crystalline phase, having a fixed stoichiometry of its component compounds.” Id. at 10. Petitioner states that the proposed construction of the term “co-crystal” is “currently disputed in parallel litigation between the parties; however, because claim 16 is unpatentable under Patent Owners’ constructions, Petitioner adopts those constructions solely for the purpose of this Petition.” Id. at 8–9. We adopt Petitioner’s proposed construction of “co-crystal” for the purposes of this Decision. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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))). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 13
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,633,344 - PTAB · Mar 13, 2024 · IPR2023-01346 · APJ Sheridan K Snedden · IPR · Institution
The Board instituted IPR on claims 10, 11, and 18 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“priority to the filing date of a prior application only “for an invention disclosed [in the prior application] in the manner provided by” 35 U.S.C. § 112. This requires that the earlier application provides written description support for the invention claimed by the later application. See Paice LLC v. Ford Motor Co., 881 F.3d 894, 906 (Fed. Cir. 2018); PowerOasis, Inc. v. T- Mobile USA, Inc., 522 F.3d 1299, 1306–11 (Fed. Cir. 2008); Augustine Medical, Inc. v. Gaymar Indus., Inc., 181 F.3d 1291, 1302–03 (Fed. Cir. 1999). The test for sufficiency of a written description under 35 U.S.C. § 112, ¶ 1, is whether the earlier application’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The written description “test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. As articulated in Ariad, “an adequate written description requires a precise definition, such as by structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials.” Ariad, 598 F.3d at 1350 (citations omitted). One test of whether a claimed genus finds adequate support involves identifying in the specification “either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad, 598 F.3d at 1350 (citing Regents of the Univ. of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997)).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). The Supreme Court has held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the information presented in the Petition, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least 1 of the challenged claims of the ’344 patent is unpatentable.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To anticipate a claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). 2 We note that Petitioner additionally challenges the Priority Applications for lack of enablement. Having found that the ’344 patent lacks written description support for all Challenged Claims, however, we need not address Petitioner’s enablement challenge in order to decide whether to institute. one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991)).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Because Petitioner’s presently unopposed definition is consistent with the ’344 patent and the prior art of record, we adopt that definition in deciding whether to institute trial. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579–80 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15
§ 102 anticipation§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,633,344 - Samsung Electronics Co., Ltd v. Mojo Mobility Inc.Institution deniedPTAB · Feb 13, 2024 · IPR2023-01086 · APJ Kara L Szpondowski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 or 18 were obvious, including because it did not adequately support the proposed current-modulation modification.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner. Petitioner does not explain or address sufficiently how Nakamura performs current modulation. Although Nakamura discloses modulating the carrier wave transmitted from the power transmission apparatus 1 and transmitting that modulated wave (the “information signal”) to primary side coil 11 (e.g., Ex. 1005 ¶¶ 77, 78, 80), we find persuasive Patent Owner’s arguments that Petitioner has not established that this discloses modulating the power transfer current induced by the base unit. See Prelim. Resp. 18–22. Petitioner cites to testimony from Dr. Baker that the “information signals (which have current) are modulated . . .” (Ex. 1002 ¶ 215), but this testimony does not establish current modulation. That is, simply because the information signals may have current fails to establish that current modulation is performed as recited in the claim. Therefore, on this record, we are not persuaded that Petitioner has sufficiently shown that Nakamura alone teaches this limitation for purposes of institution.” slip op. at 17
- PTAB / AIA Trials › Discretionary denialNot reached
“Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); Harmonic, 815 F.3d at 1367 (same). Patent Owner argues that we should exercise our discretion and deny the Petition based on the district court litigation and based on the multiple related petitions filed by Petitioner. Prelim. Resp. 6–17. We need not address Patent Owner’s contentions concerning discretionary denial because, as discussed below, we determine that Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of at least one challenged claim of the ’208 patent.” slip op. at 10
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts a person of ordinary skill in the art “would have had at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems.” Pet. 3–4 (citing Ex. 1002 ¶¶ 20–21, 22–64). Petitioner further asserts that “[m]ore education can supplement practical experience and vice versa.” Id. At this stage of the proceeding, Patent Owner does not challenge Petitioner’s definition. Prelim. Resp. 6. We find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record and, therefore, adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “no special constructions are necessary to assess whether the challenged claims are unpatentable over the asserted prior art.” Pet. 6 (citing Ex. 1002 ¶ 67). Patent Owner “does not dispute Petitioner’s statement on claim construction.” Prelim. Resp. 6. We determine that we do not need to expressly construe any term for purposes of this Decision.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,948,208 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Feb 9, 2024 · IPR2023-01098 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution on claims 1, 2, 5, 8, and 12, finding the Fintiv factors favored denial and the petition did not present compelling evidence of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We agree with Patent Owner’s analysis based on the schedule in the district court’s docket control order. Ex. 2007. The fact that the time-to-trial statistics cited by Petitioner predict that a trial in May 2024 (Pet. 89), a date even earlier than the trial date set in the court’s docket control order, confirms that the schedule set by the district court is credible and should be given weight. We are not persuaded by Petitioner’s argument that diligence in filing the Petition “in advance of the one-year bar date and within four months of PO’s infringement contentions in the Texas Litigation” should weigh in favor of institution. Pet. 89. As the Texas Litigation is scheduled to go to trial in August 2024, approximately six months before a final written decision would be entered, we determine that Factor 2 weighs in favor of discretionary denial.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Patent Owner persuasively argues that Odendaal’s planar coil is not a simple drop-in replacement for Okada’s tapped solenoid, as the Petition seems to suggest. Id. at 40. The Petition states only that a person of ordinary skill would have had reason to modify Okada to use a primary coil that is substantially planar and substantially parallel to the surface to expand or complement Okada’s thin-form charging applications. Pet. 17 (citing Ex. 1002, Baker Decl. ¶¶ 138–139; Ex. 1005, Figs 1, 9, 10–16, ¶¶ 33–34, 116– 146). Petitioner’s argument that reducing the distance between primary and secondary would promote close proximity couple, reduce energy waste, and shorten charging time fails to address salient issues underlying the combination. Id. (citing Ex. 1002, Baker Decl. ¶¶ 50–53, 138–139; Ex. 1008, 2:29–44; Ex. 1005 ¶¶ 66–68, 112, Figs. 4(a)–4(b); Ex. 1036, 24:19– 22). Although Okada is premised on a multi-section primary coil, the Petition does not identify any multi-tap planar coil or explain why a person of ordinary skill would have had reason to modify Odendaal’s planar coil to add taps to it. Moreover, the Petition does not explain how a person of ordinary skill attempting to exchange Okada’s multi-section solenoid coil with a planar coil could add multiple taps to said primary coil to create multiple sections and access those sections. As Patent Owner points out, utilizing multi-tap solenoid coils, Okada relies on detection of the degree of coupling/alignment between the communication section of the primary side of the coil and a secondary coil to determine whether there is correct alignment for power delivery sections of the primary and secondary sections of the coil. See Prelim. Resp. 38. The Petition does not address how of Okada. On this record it appears that Petitioner’s proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Shimano, Inc. v. Globeride, Inc., IPR2015- 00273, Paper 40 at 12 (Final Written Decision) (PTAB Jun 16, 2016) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) as standing for the proposition that a case of obviousness is undermined if modifying the prior art would render that prior art inoperable for its intended purpose). In consideration of the above, we are not persuaded that Petitioner has cited sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Okada and Odendaal.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Patent Owner persuasively argues that Odendaal’s planar coil is not a simple drop-in replacement for Okada’s tapped solenoid, as the Petition seems to suggest. Id. at 40. The Petition states only that a person of ordinary skill would have had reason to modify Okada to use a primary coil that is substantially planar and substantially parallel to the surface to expand or complement Okada’s thin-form charging applications. Pet. 17 (citing Ex. 1002, Baker Decl. ¶¶ 138–139; Ex. 1005, Figs 1, 9, 10–16, ¶¶ 33–34, 116– 146). Petitioner’s argument that reducing the distance between primary and secondary would promote close proximity couple, reduce energy waste, and shorten charging time fails to address salient issues underlying the combination. Id. (citing Ex. 1002, Baker Decl. ¶¶ 50–53, 138–139; Ex. 1008, 2:29–44; Ex. 1005 ¶¶ 66–68, 112, Figs. 4(a)–4(b); Ex. 1036, 24:19– 22). Although Okada is premised on a multi-section primary coil, the Petition does not identify any multi-tap planar coil or explain why a person of ordinary skill would have had reason to modify Odendaal’s planar coil to add taps to it. Moreover, the Petition does not explain how a person of ordinary skill attempting to exchange Okada’s multi-section solenoid coil with a planar coil could add multiple taps to said primary coil to create multiple sections and access those sections. As Patent Owner points out, utilizing multi-tap solenoid coils, Okada relies on detection of the degree of coupling/alignment between the communication section of the primary side of the coil and a secondary coil to determine whether there is correct alignment for power delivery sections of the primary and secondary sections of the coil. See Prelim. Resp. 38. The Petition does not address how of Okada. On this record it appears that Petitioner’s proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Shimano, Inc. v. Globeride, Inc., IPR2015- 00273, Paper 40 at 12 (Final Written Decision) (PTAB Jun 16, 2016) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) as standing for the proposition that a case of obviousness is undermined if modifying the prior art would render that prior art inoperable for its intended purpose). In consideration of the above, we are not persuaded that Petitioner has cited sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Okada and Odendaal.” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan”) as one having “at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems.” Pet. 4 (citing Ex. 1002, Declaration of Dr. R. Jacob Baker (“Baker Decl.”) ¶¶ 20–21). Petitioner further states that slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,462,942 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Feb 6, 2024 · IPR2023-01099 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution on claims 21–26 because the Fintiv factors favored discretionary denial and the petition did not present compelling evidence of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“It strikes us as inefficient to conduct, in parallel with the Texas Litigation, numerous inter partes reviews of the same seven patents. This is particularly the case here where the best available evidence indicates that the Texas Litigation will go to trial approximately six months prior to when a final written decision would be entered if inter partes review were to be instituted. Thus, this additional reason weighs in favor of discretionary denial. G. Fintiv Conclusion As a whole, the Fintiv factors weigh in favor of discretionary denial of the Petition, with factor 1 being neutral, factors 2, 3, 5, and 6 weighing in favor of discretionary denial and factor 4 weighing slightly against it. However, we “will not deny institution based on Fintiv if there is compelling evidence of unpatentability.” CommScope Techs. LLC v. Dali Wireless Inc., No. IPR2022-01242, Paper 23 at 4 (PTAB Feb. 27, 2023) (precedential) (“CommScope”). Thus, we now consider the merits of the Petition under this higher standard.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“III. ANALYSIS UNDER COMPELLING MERITS STANDARD “[T]he compelling merits standard is a higher standard than the standard for institution set by statute.” Commscope at 3 (referring to 35 U.S.C. § 314(a)). “[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. (quotation marks and citation omitted). Put another way, the compelling merits standard is satisfied “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” Id. at 4 (citation omitted). For the reasons explained below, the Petition fails to meet this standard.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The Petition’s reason for why a person of ordinary skill in the art allegedly would have made the proposed modification, i.e., “to expand/compliment applications compatible with those contemplated by Okada to use thin(ner) devices” (Pet. 20), is not persuasive. Rather, it appears, based on the record presented, that the proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Ratti, 270 F.2d at 813 (A combination of references is “not a proper ground for rejection” where it “would require a substantial reconstruction and redesign of the elements shown [in the prior art] as well as a change in the basic principles under which [the prior art] construction was designed to operate.”); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (reversing BPAI decision affirming obviousness rejection where a proposed modification to the prior art would have “rendered [it] inoperable for its intended purpose”). For these reasons, the Petition does not present “compelling evidence of unpatentability.” Commscope at 4.” slip op. at 26
- Obviousness (§103) › KSR rationalesNot reached
“The Petition’s reason for why a person of ordinary skill in the art allegedly would have made the proposed modification, i.e., “to expand/compliment applications compatible with those contemplated by Okada to use thin(ner) devices” (Pet. 20), is not persuasive. Rather, it appears, based on the record presented, that the proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Ratti, 270 F.2d at 813 (A combination of references is “not a proper ground for rejection” where it “would require a substantial reconstruction and redesign of the elements shown [in the prior art] as well as a change in the basic principles under which [the prior art] construction was designed to operate.”); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (reversing BPAI decision affirming obviousness rejection where a proposed modification to the prior art would have “rendered [it] inoperable for its intended purpose”). For these reasons, the Petition does not present “compelling evidence of unpatentability.” Commscope at 4.” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,462,942 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Feb 6, 2024 · IPR2023-01096 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution on claims 20–23 and 30 because the Fintiv factors favored denial and the petition lacked a compelling unpatentability challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“NHK applies to the situation where the district court has set a trial date to occur earlier than the Board’s deadline to issue a final written decision in an instituted proceeding. In a case where, in contrast to the facts present in NHK, the district court has set a trial date after the Board’s deadline to issue a final written decision in an instituted proceeding, the Board may be less likely to deny institution under 35 U.S.C. § 314(a) based on district court trial timing depending on other factors as set forth below. Fintiv at 3. The instant situation is the former one described above by Fintiv and to which “NHK applies.”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Here, Petitioner argues that a person of ordinary skill in the art would have “modif[ied] the Okada system to use ‘a receiver coil which has a substantially planar shape and is located parallel to a surface of the portable device’ (and complimented such a design with corresponding planar primary coil).” Pet. 21 (quoting claim 20). Petitioner states that the skilled artisan would have done so “to expand/compliment applications compatible with those contemplated by Okada to use thin(ner) devices.” Id. (citing Ex. 1002 ¶135). The cited declaration testimony repeats this statement and adds that the modification could reduce size and/or weight of a device and, due to the “close proximity of coupling,” could improve power transmission efficiency, reduce energy waste, and shorten charging time. Ex. 1002 ¶135.” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“the Petition, with factor 1 being neutral, factors 2, 3, 5, and 6 weighing in favor of discretionary denial and factor 4 weighing slightly against it. However, we “will not deny institution based on Fintiv if there is compelling evidence of unpatentability.” CommScope Techs. LLC v. Dali Wireless Inc., No. IPR2022-01242, Paper 23 at 4 (PTAB Feb. 27, 2023) (precedential) (“CommScope”). Thus, we now consider the merits of the Petition under this higher standard. III. ANALYSIS UNDER COMPELLING MERITS STANDARD “[T]he compelling merits standard is a higher standard than the standard for institution set by statute.” CommScope at 3 (referring to 35 U.S.C. § 314(a)). “[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. (quotation marks and citation omitted). Put another way, the compelling merits standard is satisfied “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” Id. at 4 (citation omitted). For the reasons explained below, the Petition fails to meet this standard.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. Because Petitioner’s formulation of the level of ordinary skill in the art appears consistent with the ’371 patent and the asserted prior art, and because there is no argument to the contrary at this stage of the proceeding, we apply it in our analysis below.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,316,371
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.