- PTAB · Jul 18, 2024 · IPR2024-00372 · APJ Jason M Repko · IPR · Institution
The Board instituted review of claims 2–4 and 11 on all petition grounds, finding a reasonable likelihood that Samsung would show them unpatentable as obvious over Phek, Segall, Martins, and He.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“such as system efficiency, fairness, and patent quality. Fintiv, Paper 11 at 5. When the same prior art is submitted in district court and to the Board, there are “concerns of inefficiency and the possibility of conflicting decisions.” Id. at 12. Petitioner can mitigate those concerns by presenting a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the Board. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential). Here, Petitioner has presented such a stipulation: if the Board grants institution, Petitioner “agrees not to pursue any grounds raised in the petition, or any grounds [Petitioner] could have reasonably raised in the petition, in [the] district court litigation or any parallel proceeding” Ex. 1028, 1. “Consistent with [Sotera], 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.” Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022).5 Thus, we decline to exercise our discretion to deny the Petition.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“present arguments specifically directed to the subject matter recited in the rest of the claim. See Prelim. Resp. Even so, Petitioner has the burden to show that the challenged claims are unpatentable. Thus, we have reviewed Petitioner’s arguments and evidence submitted in connection with the remaining limitations and find them to be sufficient at this stage and on this record. From the current record, Petitioner has established a reasonable likelihood that it will prevail in demonstrating that claim 2 is unpatentable.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“digital video processing, or a related field.” Pet. 3–4 (citing Ex. 10036 ¶¶ 123–125). Petitioner also asserts that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. at 4. Patent Owner uses the same skill level in its Preliminary Response. Prelim. Resp. 13. We also apply Petitioner’s proposed skill level in this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner’s arguments, however, are based on an implicit construction for the second resolution converter. See § II.D.5.c supra. For the reasons discussed below, we disagree with Patent Owner’s arguments and the implicit construction. See id. Apart from rejecting the implicit construction of the second resolution converter, we agree with the parties that no claim term needs to be construed in this Decision.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,218,995 - PTAB · Jul 16, 2024 · IPR2024-00344 · APJ St John Courtenay III · IPR · Institution
Instituted IPR of claims 1–7 on obviousness over Agarwala in view of the knowledge of a POSITA; the Board found a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Ex. 1001, 23:1–10 (emphasis added). Nor do we find any explicit antecedent basis reference from any language in dependent claims 2–7 to the claim 1 preamble language “data beacons.” Because the limitations in the body of claim 1 do not rely upon and derive antecedent basis from the “data beacons” language recited in the preamble of claim 1, at this stage Patent Owner has not established that the preamble language “data beacons” is a necessary component. Thus, the Federal Circuit’s “antecedent basis” preamble case law weighs in favor of Petitioner. See, e.g., Bicon, 441 F.3d at 952.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that an ordinarily skilled artisan for the ’632 patent “would have been familiar with network communications and distributed storage systems, including network file systems,” and “would have a working knowledge of techniques for accessing data (reading and writing data) in distributed network storage systems, including parallel files systems.” Pet. 11–12 (citing Ex. 1003 ¶ 37). Petitioner further asserts: A POSITA would have gained knowledge of these concepts through a mixture of training and work experience, such as by having a Bachelor’s degree in computer science and four years of experience; or by obtaining a Master’s degree in computer science, but having only one to two years of experience; or by having no formal education but experience in storage systems of at least eight years.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“For the reasons given supra under heading III (“Claim Construction”), we preliminarily disagree with Patent Owner that the preamble term “for providing data beacons” should be accorded limiting effect. Therefore, at this stage, we preliminarily find Petitioner has shown that the combination of Agarwala and the knowledge of a POSITA teaches preamble [1.0].” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,146,632 - PTAB · Jun 11, 2024 · IPR2024-00245 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–4 on all asserted grounds, finding a reasonable likelihood that Samsung would show at least one claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the evidence currently of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’150 Patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“DISCRETIONARY DENIAL Patent Owner argues that we should exercise our discretion to deny the Petition based on the parallel district court litigation. Prelim. Resp. 35 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential)). Petitioner, however, presented a Sotera stipulation.7 Pet. 88 (citing Ex. 1023). Thus, we do not exercise our discretion to deny institution here. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with 7 See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential). Parallel District Court Litigation (June 21, 2022) (“Consistent with [Sotera], 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.”).8” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“Petitioner states that (i) “coded multi-view video signal,” recited in each of the challenged claims, “encompasses a coded video signal for two or more viewpoints, including at least one base viewpoint and at least one nonbase viewpoint” (Pet. 7), and (ii) “picture signal,” also recited in each of the challenged claims, “refers to a signal that represents at least one picture from a viewpoint” (Pet. 9). Petitioner also identifies four elements of claim 1 that Petitioner contends are means-plus-function claim elements under 35 U.S.C. § 112 ¶ 6 (pre-AIA). Patent Owner states that for the purposes of its Preliminary Response, Patent Owner “does not dispute Petitioner’s proposed constructions . . . , including terms that it contends are subject to 35 U.S.C. § 112(6).” Prelim. Resp. 10. At this stage, we apply the parties’ agreed-upon constructions for the purposes of this Decision.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“and DTS are provided in optional fields of packetized elementary stream packets. Ex. 1005, 7:19–25. Further, “[t]he video DTS . . . indicates the time when the picture needs to be decoded by the STD” (Ex. 1005, 7:47– 49), and on the current record, we understand Petitioner to cite the DTS parameters encoded in the transport stream for enhancement layer pictures as teaching the claimed coded information representing a desired delay time. Pet. 33. Among other examples, Petitioner (Pet. 34) and Dr. Reader (Ex. 1005 ¶ 201) cite Chen-736’s example of the formula DTSEi = DTSLi +1.5F, where F is a time interval based on the frame rate (Ex. 1005, 8:9–20), as indicating that DTSEi represents the start of decoding of the ith picture in the enhancement layer being delayed 1.5F relative to the start of decoding of the ith picture frame of the base layer. Pet. 36 (citing Ex. 1003 ¶ 201); see Pet. 35–40 (citing additional examples of serial and parallel decoding with similar DTS calculations). At this stage, we find Petitioner’s position that the claim’s recitation that the coded information must “represent” the desired delay time to be a reasonable reading of the plain language of the claim such that a DTS value can represent the desired delay time even if it requires calculation. Pet. 35 n.8. Even if Chen-736’s use of F-based offsets as time intervals “is different than the concept of a desired delay between decoding” and Chen-736 recognizes the distinction between PTS and DTS (Prelim. Resp. 14–15), on the current record, these arguments do not rebut Petitioner’s mapping of Chen-736 to the claim language. Similarly, Patent Owner’s argument that Chen-736 teaches a DTS for all picture signals, including the base viewpoints and non-base viewpoints (Prelim. Resp. 16), does not rebut Petitioner’s mapping of Chen-736’s enhancement-layer DTS to the claim language. At this stage, on the current record we determine Petitioner has sufficiently shown that Chen-736 teaches or reasonably suggests this claim element.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,139,150 - PTAB · May 28, 2024 · IPR2024-00085 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7–11, 13, and 15 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to 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). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, 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 ’659 patent. Accordingly, we institute an inter partes review of the Challenged Claims on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We disagree with Patent Owner. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation.”8 The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in 8 https://www.uspto.gov/sites/default/files/documents/interim_proc_discretio nary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Director’s Memorandum”). the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, IPR2020-01019, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR 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. Because Petitioner provides a Sotera-type stipulation, we do not exercise our discretion to deny institution under Fintiv.” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Upon review of the prior art of record and the parties’ arguments, we adopt Patent Owner’s definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). Petitioner’s proposed definition appears overly restrictive, as it requires a graduate degree in a narrow field of engineering or equivalent experience. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’659 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 19. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner’s claim construction. By using the word “or,” the plain and ordinary meaning of “prone, kneeling, or standing” is that only one must be satisfied to meet the claim. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Furthermore, and although claims are read in light of the specification, limitations in a specification are not read into a claim. In re van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Even if the Specification describes embodiments in which the user can begin in a prone position and then transition to a kneeling or standing position, as Patent Owner points out (see Prelim. Resp. 20), the claim does not recite the term “transitioning,” and we do not read the terms “each of” or “substantially flat surface” into this claim limitation. For example, the claim does not recite a “substantially flat” top surface and Patent Owner’s attempt to infer this structure into the claim is not supported under the law. See id. at 29–30. For purposes of this Decision, we agree with Petitioner and construe “prone, kneeling, or standing” in accordance with its plain and ordinary meaning as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,586,659 - PTAB · May 28, 2024 · IPR2024-00086 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1, 2, 5-8, 10-15, 17, 18, 20, and 21 on all asserted grounds after finding a reasonable likelihood of success and declining Fintiv denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in an inter partes review). slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“1. “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position” With respect to the claim term “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position,” Patent Owner points to passages of the Specification, arguing that all three positions are possible. Prelim. Resp. 19–21 (citing Ex. 1001, Abstr., 4:13–17, 4:33–40; Ex. 2006 ¶ 18). We do not agree with Patent’s Owner proposed construction because even if the Specification discloses that all three positions are possible, that is not what the plain language of the claim requires. Claim 1 recites “or,” which means that a user can be disposed on the top surface of the flotation device in any one of the three positions. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Patent Owner does not identify any definition or disclaimer that would modify this plain meaning. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Thus, we agree with Petitioner and apply the plain and ordinary meaning of the phrase “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position,” to construe “prone, kneeling, or standing” as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 13
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Neither party explains how or why its particular proposal impacts the issues before us in this proceeding. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’044 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 10. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“As the Board has held in a precedential decision, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,359,044 - Samsung Electronics Co., Ltd. v. Advanced Coding Technologies, LLCInstitution deniedPTAB · May 23, 2024 · IPR2024-00062 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because Petitioner did not show that the prior art disclosed or taught the construed “emphasis level” limitation in any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“which the amplitude of the high frequency components of the video signal is increased,” as required by the construction of “emphasis level.”7 See Prelim. Resp. 9 (“the Petition’s analysis of the claim limitations containing these terms against the cited references does not indicate that those references disclose these limitations under Petitioner’s proposed constructions in the District Court Action”). Thus, without Petitioner mapping the constructions to the prior art in a clear and identifiable way, we determine the Petition itself does not satisfy Petitioner’s burden. See 37 C.F.R. §§ 42.104(b)(3)– (4).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“the terms “emphasis processing” and “emphasis level.” In the Petition, Petitioner states that no constructions are necessary (Pet. 2), but after filing 2 US 5,491,514; issued Feb. 13, 1996. Ex. 1005. 3 US 5,241,387; issued Aug. 31, 1993. Ex. 1006. 4 US 6,801,665 B1; published Sept. 30, 1999. Ex. 1007. the Petition, Petitioner proposed constructions of those terms in the parties’ district-court litigation, stating that: (i) the claim term “emphasis processing” means “increasing the amplitude of the high frequency components of a video signal;” and (ii) the claim term “emphasis level” means “a value that represents the amount by which the amplitude of the high frequency components of the video signal is increased.” Ex. 2003, 10– 11. After Patent Owner relied on those constructions in its Preliminary Response (see, e.g., Prelim. Resp. 8–10),5 Petitioner requested (Ex. 3001), and the Board authorized (Paper 8), additional briefing to address how the analysis in the Petition applies under those constructions.6 Because we determine Petitioner’s showings with respect to those constructions are inadequate to carry Petitioner’s burden, our discussion below focuses primarily on those aspects of the parties’ briefing.” slip op. at 4
- PTAB / AIA Trials › Discretionary denialNot reached
“Discretionary Denial Because we determine Petitioner has not carried its burden on the merits, we do not reach the parties’ arguments relating to discretionary denial. See Pet. 98–99; Prelim. Resp. 26–32.” slip op. at 11
Claim constructionDiscretionary denialPatents in suitUS 6,845,128 - Apple Inc. v. Fintiv, Inc.No claims unpatentablePTAB · May 23, 2024 · IPR2023-00398 · APJ George R Hoskins · IPR · Final written decision
Claims 1–22 were not shown unpatentable as obvious over Dill, Vadhri, and Akashika because Dill was not shown to disclose the claimed Integration Tier Limitation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We adopt Petitioner’s undisputed formulation of ordinary skill in the art as set forth above, because we are satisfied this formulation generally comports with the level of skill necessary to understand and implement the teachings of the ’196 patent and the asserted prior art. We do not adopt Patent Owner’s annotation to Petitioner’s formulation as requiring knowledge of “mobile wallets” specifically, because we determine knowledge of “mobile payment systems and techniques” per Petitioner’s formulation is tied sufficiently to the claims of the ’196 patent to reflect the level of ordinary skill in the pertinent art. At the same time, even if we were to include knowledge of “mobile wallets” in our formulation, it would not materially change our Decision as set forth below. That is, we would still determine Petitioner has not shown by a preponderance of the evidence that Dill discloses the Integration Tier Limitation.” slip op. at 10
- Expert testimonyNot reached
“We need not resolve the parties’ dispute as to whether Dr. Houh qualifies as an ordinarily skilled artisan. Even assuming that Dr. Houh possesses, at a minimum, ordinary skill in the art—as we have done in this Decision—we determine Petitioner still fails to show that any of the challenged claims are unpatentable.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“The Integration Tier Limitation requires no further construction for purposes of this proceeding. See Pet. Reply 7 (“[N]o specific construction is required.”). The claim clearly specifies that the claimed “web services communication mechanisms” must serve as an interface between the integration tier and (1) the claimed mobile wallet application and, separately, (2) “a plurality of different device types over a plurality of different communication channels.” For purposes of this Decision, we assume that this interface may be direct or indirect. See id. at 6 (asserting that “communication channels that interface, even indirectly, with the ‘web services communication mechanisms’ still interface with the ‘web services communication mechanisms’”).” slip op. at 28
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“However, we find that of those four channels (1)–(4), only the first channel (1) is associated with web interface 137 such that it qualifies as a “communication channel,” as required by claim 1. There is no indication in the Dill disclosures cited by Petitioner that any of the other three channels (2)–(4) are associated with web interface 137. For example, Figure 9 of Dill includes a double-headed arrow to illustrate communication between web interface 137 and transfer options module 145, but Figure 9 does not include any arrows to illustrate communication between web interface 137 and any one or more of IVR interface 136, other interfaces 138, agent system 135, or mobile network 115. See Ex. 1005, Fig. 9. In other words, Petitioner fails to show Dill teaches web interface 137 interfaces with any devices over any of channels (2)–(4), as would be required by Petitioner’s mapping. In the Petition, Petitioner never clearly (or persuasively) addresses this requirement of the claim. Petitioner does contend that transfer options module 145 is coupled to various devices via interfaces 136–138 and exchanges transaction information (see Pet. 25–26; see also Pet. Reply 10– 11), but that contention misses the mark. The salient question is whether Dill’s web interface 137 (i.e., the claimed “web services communication mechanisms”) interfaces with the different device types over the channels, not whether transfer options module 145 (i.e., the claimed “integration tier”) does so.” slip op. at 30
Patent outcomesUS 10,438,196 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,438,196 - Apple Inc. v. Fintiv, Inc.No claims unpatentablePTAB · May 23, 2024 · IPR2023-00399 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 1–22 were not shown unpatentable under § 103 over Dill, Vadhri, and Akashika because Dill did not teach or render obvious the hardware SIM card and integration tier limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Institution Decision, we determined that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development with a basic knowledge of accounting” and “working knowledge of mobile payment systems and techniques,” as Petitioner proposes. Inst. Dec. 9 (quoting Pet. 3–4). We stated that “this definition generally comports with the level of skill necessary to understand and implement the teachings of the ’488 patent and the asserted prior art.” Id. (citing Ex. 1003 ¶ 22; Ex. 2001 ¶ 35).” slip op. at 10
- Expert testimonyPetitioner expert discountedMixed
“In addition, Petitioner’s reliance on Dr. Houh’s testimony (see Pet. 23–24) is unavailing. Although Dr. Houh agrees with the arguments in the Petition and includes quotes from the cited portions of Dill and Bykov (see Ex. 1002 ¶¶ 95–97), he provides no additional analysis or explanation beyond what was provided in the Petition. As a result, his testimony suffers the same deficiencies as the Petition. Also, we do not credit his conclusion that Dill includes the requisite disclosure (see id. ¶ 97) because he fails to provide sufficient supporting explanation or evidence (see 37 C.F.R. § 42.65(a)). Finally, we note that Petitioner misrepresents Dr. Shamos’s testimony by stating that Dr. Shamos “agrees that if a mobile device executes a mobile wallet over a cellular network, the mobile device has a SIM card for the mobile wallet.” Pet. Reply 22 (emphasis added) (citing Ex. 1022, 29:4–7, 40:9–10). In the cited testimony, Dr. Shamos agrees that mobile devices have SIM cards, but he does not address where a mobile wallet application would be installed. Ex. 1022, 29:4–7, 40:9–10. Thus, contrary to Petitioner’s argument, we determine that Dr. Shamos’s testimony does not support Petitioner’s position.” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“for the term “hardware SIM card” because the important points are undisputed. In particular, the parties agree that a “hardware SIM card” is a SIM card implemented in hardware rather than software. See Pet. Reply 9 (citing Ex. 1021 ¶ 36); Tr. 40:25–41:2 (Patent Owner’s counsel explaining that the language in its proposed construction was “to differentiate it from a software SIM card”); see also PO Resp. 16, 19 (asserting that the term refers to a specific type of hardware, namely a “chip” or a “smart card”) (citing Ex. 2003 ¶¶ 32–33). The parties also agree that an ordinarily skilled artisan would have known that a “SIM card” is a component in a mobile device involved in identifying and authenticating a user to a mobile network. See Tr. 30:23–31:3 (Petitioner’s counsel stating “a SIM card, just as known in the art . . . would allow the user to be able to access the mobile network” 10 Each page in Exhibit 2021 includes at least two page numbers. For clarity, we refer to the page number of the exhibit (shown in the bottom right corner), and we have adjusted Patent Owner’s citation accordingly. given “the user’s identification information on it”), 39:24–40:2 (Patent Owner’s counsel stating that “I think everyone is in agreement that the critical aspect of what makes a SIM card a SIM card is that it can authenticate a mobile device to a wireless network”). The evidence supports the parties’ understanding. The word “SIM” is an acronym for “subscriber identity module” (see, e.g., Ex. 1001, 6:58–67; Ex. 2021, 5), and the record shows that a SIM is a specific component in a mobile device that is involved in identifying and authenticating a user to a mobile network (see Ex. 2003 ¶¶ 30–31; see also e.g., Ex. 2021, 7 (stating that a SIM’s “primary function” is “to authenticate the subscriber to the network”); Ex. 2025, 3 (describing the SIM)).11 Consequently, we determine that an ordinarily skilled artisan would have understood a “hardware SIM card” to be a hardware component in a mobile device that is involved in identifying and authenticating a user to a mobile network. We do not need to further construe the term, or determine whether the additional requirements proposed by Patent Owner are appropriate, because Petitioner fails to show that the prior art teaches or suggests the claimed “hardware SIM card,” as explained below. See infra § II.D.2.a (analyzing the parties’ substantive contentions).” slip op. at 13
- BurdenNot shown unpatentable
“Petitioner has not shown, by a preponderance of the evidence, that Dill discloses “a mobile wallet application installed on a hardware SIM card,” as required by element 1.3B. See Pet. 23–24. In particular, even assuming that Dill teaches installing a mobile wallet application somewhere on a mobile device (see Pet. 23),14 Dill does not teach installing it on a hardware SIM card,15 as specifically required by the claim. Petitioner relies upon paragraph 106 of Dill (see Pet. 23), but that paragraph does not disclose this claim limitation (see Ex. 1005 ¶ 106). In relevant part, that paragraph of Dill simply states: 14 Patent Owner disagrees with this premise, arguing that Dill does not disclose a mobile device that includes a mobile wallet application. See PO Resp. 52–56. We need not resolve that dispute because, even assuming Petitioner’s premise (as we have done in this Decision), Petitioner still fails to show that the claims are unpatentable. 15 As noted above, a “hardware SIM card” is a hardware component in a mobile device that is involved in identifying and authenticating a user to a mobile network. See supra § II.C.1 (addressing meaning of term). It should also be appreciated that the methods described above may be performed by hardware components or may be embodied in sequences of machine-executable instructions, which may be used to cause a machine such as a general-purpose or special-purpose processor or logic circuits programmed with the instructions to perform the methods. These machine-executable instructions may be stored on one or more machine readable mediums, such as CD-ROMs or other type of optical disks, floppy diskettes, ROMs, RAMs, EPROMs, EEPROMs, magnetic or optical cards, flash memory, or other types of machine-readable mediums suitable for storing electronic instructions. Alternatively, the methods may be performed by a combination of hardware and software. Ex. 1005 ¶ 106 (emphases added). This teaches storing instructions on “other types of machine-readable mediums,” but it fails to teach storing instructions on a hardware SIM card, much less storing Dill’s mobile wallet application there. In short, Dill is silent with respect to this issue, and silence is not disclosure. Notably, Petitioner does not contend (or show) that a mobile wallet application installed on a mobile device would necessarily be installed on a hardware SIM card. See Pet. 23–24; Ex. 1003 ¶¶ 95–97. Indeed, the record indicates that a mobile wallet application installed on a mobile device could instead be installed on a different component. See, e.g., Ex. 1001, 7:1–3, 9:33–35 (identifying device memory as alternate component); Ex. 2021, 5 (describing SIM as the “smaller of two computer chips inside a GSM mobile handset”); cf. Pet. Reply 9 (distinguishing between hardware SIM cards and software ones). Thus, Petitioner fails to show that this claim limitation is inherent in Dill. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (explaining that inherency requires a showing that “the limitation at issue necessarily must be present”).” slip op. at 22
Patent outcomesUS 9,208,488 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,208,488 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · May 23, 2024 · IPR2024-00150 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR of claims 1–5 on all four asserted obviousness grounds, finding a reasonable likelihood of success on the Gibson and Schiltz combination.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, 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. Petitioner’s stipulation (Ex. 1025) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Western District of Texas Litigation.” slip op. at 14
- BurdenDecided for petitioner
“We disagree. The Petition is clear that it presents alternative challenges where Goldberg, Thacker, ITU-T J.83, and/or AAPA are added to the combination of Gibson and Schiltz or are added to Crols, if the term “cable modem,” recited in the preamble of claim 1, is determined to be limiting. Pet. 6–7. In the context presented here, “and/or” clearly means one or more of the four additional references. And Petitioner’s reliance on one or more of the additional references is clear in the context of the issues before us based on Petitioner’s analysis of the preamble of claim 1, where Petitioner clearly states, “[a]nd to the extent that the preamble is limiting and requires a ‘cable modem,’ it would have been obvious to use the modem of Gibson (as modified by Schiltz, discussed below) as a cable modem, in view of Thacker, Goldberg, ITU-T J.83, and/or AAPA.” Pet. 42 (Ground 1); see id. at 66–67 (similarly asserting, in the context of Ground 2, that, “[t]o the extent that the preamble is limiting and requires a ‘cable modem,’ it would have been obvious to use the modem of Crols as a cable modem, in view of Thacker, Goldberg, ITU-T J.83, and/or AAPA”). Petitioner also includes a discussion as to why one of ordinary skill in the art would have been motivated to “use the modems of Gibson modified with Schiltz (Ground 1), and Crols (Ground 2), as ‘cable modems,’ in view of the DOCSIS References (Thacker and Goldberg), ITU-T J.83, and AAPA,” and would have had a reasonable expectation of success in so doing. Id. at 37–40. Thus, we do not agree with Patent Owner that the Petition lacks particularity and we find that the Petition clearly sets forth the alternative combinations discussed above such that Patent Owner has a fair opportunity to respond.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“l. Summary as to Claim 1 For the reasons discussed above, on the present record we find that Petitioner has established that the combination of Gibson and Schiltz teaches each of the elements of claim 1 and that one of ordinary skill in the art would have been motivated to combine the teachings of these two references as proposed by Petitioner with a reasonable expectation of success in so doing.” slip op. at 40
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposed level of ordinary skill in the art is identical to the level of skill that we found applicable in the final written decision in the TCL IPR. See IPR2021-00985, Paper 44 at 13. We see no reason to deviate from our previous finding, which is now further supported by Dr. Larson’s testimony. See Ex. 1003 ¶ 26. Accordingly, at this stage of the proceeding and on the present record, we adopt Petitioner’s proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’835 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,292,835 - PTAB · May 21, 2024 · IPR2024-00352 · APJ St John Courtenay III · IPR · Institution
The Board instituted IPR on claims 1–14 on all asserted grounds, finding a reasonable likelihood that claims were obvious over Woods and over Woods with Machida.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Sotera stipulation must be filed in the two parallel district court cases. See Prelim. Resp. 13–16. This same argument was raised previously in another proceeding before the Board. See Taiwan Semiconductor Mfg. Co. Ltd. v. Alidouble, Inc., IPR2023-00369, Paper 7 at 10 (PTAB July 12, 2023) (Institution Decision) (declining to discount petitioner’s stipulation because petitioner did not file it in the district court). In Taiwan Semiconductor, patent owner urged the Board to exercise discretion to deny institution under § 314(a) in light of a parallel district court litigation because, in part, petitioner had not filed the stipulation in the district court. Id. at 9. The Board disagreed and found that the Director’s Memo does not require that such a stipulation be filed in the district court, only that the petitioner must “stipulate[]” or “present[] a stipulation.” Id. (citing Director’s Memo at 3, 7). Here, we agree with the Board’s reasoning in Taiwan Semiconductor case, and we understand the Director’s Memo as only requiring Petitioner to “stipulate[]” or “present[] a stipulation.” The Director’s Memo is silent regarding any requirement for Petitioner to file a stipulation in the district court case where Petitioner is a party. Director’s Memo at 3, 7. Even if arguendo Petitioner’s Sotera stipulation should also be filed in district court, here Petitioner did file a “Notice of Sotera Stipulation” in the district court case where Petitioner is a party. Ex. 1012. This Notice states that “[LG] hereby stipulate[s], consistent with the stipulation made by the [p]etitioner in Sotera that, if the PTAB institutes an IPR in response to [LG’s] petition against [Multimedia’s] U.S. Patent No. 9,247,174 (IPR2024- 00352), [LG] will not pursue in this litigation the grounds raised or any other grounds that could have reasonably been raised before the PTAB in that instituted proceeding.” Id. at 2. Consequently, the purpose of Petitioner’s Sotera stipulation has been achieved here because it “mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions.” Sotera, Paper 12 at 19 (citing Sand Revolution II, LLC v. Cont’l Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 12 (PTAB June 16, 2020) (Decision Granting Request for Rehearing) (informative)). Although Patent Owner is correct that Petitioner’s Sotera stipulation would have little, if any, impact on the district court case where Vizio is a party (see Prelim. Resp. 16–17), the Director’s interim guidance does not condition or otherwise qualify the effect of a Sotera stipulation on our exercise of discretion to deny this Petition based on any remaining defendants in the parallel district court cases that are not subject to the stipulation (see Director Memo at 7, 9). Put simply, Petitioner has filed a Sotera stipulation in this proceeding and, as a result, we will not exercise our discretion to deny its’ Petition.” slip op. at 21
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner and Patent Owner, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the subject matter of independent claim 1 would have been obvious over Woods, considered as a single reference under 35 U.S.C. § 103(a).” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose claim construction for any term, although it identifies two terms it contends are defined in the Specification of the ’174 patent. Pet. 11. Patent Owner does not dispute Petitioner’s statements on claim construction. Prelim. Resp. 30. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent necessary for institution, we note a disagreement between the parties regarding the term “application panel” in claims 1 and 10, and address it below. See infra § VI.A.10.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“the operation panels of Machida to be relevant to a television environment,” and that Machida performs panel selection automatically and not as a direct result of user selection, and therefore Machida “teaches away from combining Machida with Woods, particularly with respect to the panels described in Woods.” Prelim. Resp. 39. But Machida expressly describes a television environment in paragraph 35, which explicitly contemplates “TV type services, data broadcasting services, and data added TV services.” Moreover, we preliminarily are of the view that Patent Owner is imputing an overly narrow construction to at least claim 1 regarding the term “panel,” as discussed supra. Further, a reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). For at least these reasons, we preliminarily find that Petitioner’s arguments regarding claims 1–14 under Ground 3 over Woods and Machida are sufficient at this juncture.” slip op. at 39
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,247,174
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.