• Apple Inc. v. Masimo CorporationInstituted
  PTAB · Jul 9, 2024 · IPR2024-00244 · APJ Richard H Marschall · IPR · Institution

  The Board instituted IPR on claims 1–5, 7–14, and 16–25 on all asserted grounds, finding a reasonable likelihood of prevailing on the Sarantos-based obviousness challenges.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “based on the Delaware Litigation. Prelim. Resp. 17–34; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there is a parallel district court proceeding). 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” (“Director’s Memo”).8 Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like that in Sotera, i.e., a stipulation to “not pursue for the instituted claims, in [the Delaware 7 US 8,446,275 B2, issued May 21, 2013 (Ex. 1006, “Utter”). 8 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_m emo_20220621_.pdf. Litigation], the same grounds as in the IPR2024-00244 petition or any grounds that could have reasonably been raised in that Petition” (Ex. 1078, 1), we do not discretionarily deny institution under Fintiv. Patent Owner argues that Petitioner’s stipulation “does not carry the benefits underlying the Director’s Guidance” because it was filed “only after the parties and the court conducted extensive and costly fact and expert discovery, and fully briefed and argued dispositive motions.” Prelim. Sur-reply, 2. This argument is not persuasive because the Director’s Guidance does not afford discretion to discount a Sotera stipulation based on how far a parallel district court litigation has progressed when the stipulation was made. Director’s Memo, 7 (explaining, without qualification, that “the PTAB 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”); see also NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13 (Vidal Sept. 7, 2022) (precedential) (explaining that the only appropriate time for a petitioner to offer a stipulation related to Fintiv factor 4 is prior to the Board’s decision on institution). Accordingly, we decline to deny institution based on the Delaware” slip op. at 10

  • Parallel petitionsDecided for petitioner

    “First, we agree with Petitioner that the two petitions are not redundant and contain material differences that, in this case, support Petitioner’s argument that two petitions challenging the ’159 patent are warranted. The -243 IPR presents three grounds, all built on a combination of Iwamiya and Sarantos. -243 IPR, Paper 2, 1. In that case, Petitioner relies on Iwamiya as the primary reference that discloses a number of limitations, including the light shaping aspect of claim 1. See id. at 13–27. In this case, Petitioner relies on Sarantos alone for all of the limitations in claim 1, including the light shaping limitation, or a combination of Sarantos and Shie, with Shie allegedly disclosing the light shaping limitation. See Pet. 1, 7–14, 35–38. Petitioner also seeks to add the dark colored coating of Sarantos to Iwamiya in the -243 IPR, but relies on Sarantos alone for that limitation in this case. See Notice 2. In addition, because the combinations are different, they are supported by different motivations to combine and different underlying expert testimony. See, e.g., Pet. 30–35, 44–46; -243 IPR, Paper 2, 7–13. The material differences between the challenges presented in the two cases are readily apparent, and are underscored by Patent Owner’s arguments in its Preliminary Responses. For example, in the -243 IPR, Patent Owner does not contest Petitioner’s assertion that Iwamiya discloses the light shaping functionality (upon which Petitioner relies on Sarantos, here), but argues (for claim 1) that the combination fails to disclose the “opening” and “pass through the surface” limitations, and argues against the motivation to combine Iwamiya and Sarantos. See -243 IPR, Paper 6, 34– 48. Patent Owner raises none of those arguments in this case, and instead focuses on the alleged failure of Petitioner to establish that Sarantos alone, or Sarantos and Shie, disclose the claimed light shaping functionality, and that Petitioner fails to establish an adequate reason to combine Sarantos and Shie. See Prelim. Resp. 34–50. The arguments made by Patent Owner highlight the differences in the challenges in a manner that suggests the outcome of each case will turn on independent issues related to the application of the different prior art to different claim limitations, as presented in each case. We disagree with Patent Owner’s argument that the two petitions “are redundant” merely because Petitioner relies on Sarantos for some of the same limitations in both cases—here, despite some overlap in assertions regarding Sarantos, we determine that these petitions are not redundant of another, for the reasons discussed above. See Notice Response 2. Under these circumstances, we find the second petition at issue here to be non-redundant and materially different than that in the -243 IPR, which weighs in favor of considering the second petition here. Second, we are persuaded by Petitioner’s contention that it could not fit its arguments into a single petition due to word count restraints, and that the number and nature of claims challenged (25 claims in the -243 IPR and 23 claims here) supports the need for two petitions. See Notice 5; Pet. 88 (certifying word count of 13,991 words, just under 14,000 word limit); -243, Paper 2, 91 (certifying word count of 13,970 words). Patent Owner does not dispute Petitioner’s contention, but argues instead that Petitioner need not have challenged so many claims in its IPRs, when only five claims were asserted against it in the Delaware Litigation. Notice Response 5. We do not agree with that argument because petitioners are not required to challenge only those claims that are currently asserted against it in co-pending litigation. Third, we disagree with Patent Owner’s argument that consideration of the 23 challenged claims here is unnecessary given that Petitioner challenged all 25 claims of the ’159 patent in the -243 IPR. Id. at 5. That argument puts form over substance. Petitioner could have split up its two petitions differently such that a first petition could have addressed one subset of claims, e.g., claims 1–13, and the second petition could have addressed a different subset of claims, e.g., claims 14–25, with all prior art challenges directed to each set of claims appearing in both petitions. The end result would be the same as presented here, i.e., the number of claims challenged and the challenges raised against them would remain the same, even though it would more closely align with Patent Owner’s logic that a second petition must challenge claims not challenged in a first petition. We do not view the manner in which Petitioner divided its argument across these two petitions as a sound basis to deny institution of the second petition here. Fourth, we agree with Petitioner that the additional burden to the Board and Patent Owner, necessary to address the issues raised in this second proceeding, are minimized by the overlap with the -243 IPR and other proceedings. See Notice 3–4. For example, Sarantos, the primary reference in this proceeding, is used as a secondary reference (to teach the light shaping functionality of the claims) in the -243 IPR and has been at issue in several other IPRs. See id.; -243 IPR, Paper 2, 1. As such, the Board and Patent Owner are familiar already with Sarantos and its contents, mitigating against the burden of considering it here.” slip op. at 16

  • Skill levelSkill level petitioner adoptedOther

    “On the present record, Petitioner’s definition of a POSITA is consistent with the level of skill reflected in the ’159 patent and the asserted prior art. Accordingly, for purposes of this Decision, we adopt Petitioner’s description. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). We note that we would reach the same outcome in this Decision under either definition of a POSITA. If the parties continue to propose differing levels of ordinary skill in the art during trial, they should state whether any issue in the case turns on those differences.” slip op. at 22

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther

    “Based on the current record, we agree with Patent Owner that this claim limitation in claims 1 and 19 refers to different shapes rather than merely different sizes of the same shape. See Prelim. Resp. 14–16. At this stage of the proceeding, we determine that the language of the claim and the plain and ordinary meaning of “shape” seems to compel this result. As Patent Owner notes, two circles of different size still have the same circular shape. See id. at 14. We disagree, however, with Patent Owner’s argument that we should deny institution because Petitioner failed to apply this construction to the claims or intentionally withheld the parties’ district court agreement on this issue. Prelim. Resp. 12–13. Patent Owner does not point to any portion of the Petition that contends that different sizes amount to different shapes. See id. Patent Owner also seems to assume that Petitioner must have applied a construction that encompasses different sizes rather than different shapes when alleging that the prior art discloses the limitation, but Petitioner makes no such allegation in the Petition. See id. at 13, 16–17; Pet. 9–10. Patent Owner may ultimately prevail on this limitation. But, on the present record, we see no support for the argument that Petitioner implicitly used an incorrect construction and that the failure to expressly disclose the proper construction warrants denial of institution.” slip op. at 24

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,722,159
• Apple Inc. v. Masimo CorporationInstituted
  PTAB · Jul 9, 2024 · IPR2024-00243 · APJ Richard H Marschall · IPR · Institution

  The Board instituted IPR on claims 1–25 on all asserted obviousness grounds, finding a reasonable likelihood that Apple would prevail on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “based on the Delaware Litigation. Prelim. Resp. 16–33; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there is a parallel district court proceeding). 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” (“Director’s Memo”).6 Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like that in Sotera, i.e., a stipulation to “not pursue for the instituted claims, in [the Delaware Litigation], the same grounds as in the IPR2024-00243 petition or any grounds that could have reasonably been raised in that Petition” (Ex. 1078, 1), we do not discretionarily deny institution under Fintiv.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “At this point in the proceeding, we do not find it necessary, to expressly construe the term “opening” in order to reach a decision on institution and, under the circumstances, we do not find a basis for denying institution in Petitioner’s application of the claim language requiring an “opening.” But see infra Section F.3.b (identifying a potential issue that may benefit from record development on claim construction). Neither party offers an express construction of the term “opening” to the prior art. Pet. 5; Prelim. Resp. 12–15 (arguing inconsistency but declining to offer an express claim construction). On the present record, we are persuaded that the plain and ordinary meaning of “opening” encompasses Iwamiya’s optical filter 17 as mounted within light shielding frame 18. See Pet. 23–24; see infra at Section F.3.b. This is consistent with Patent Owner’s position, in the Delaware Litigation, that a solid material can provide an opening, and with the finding of the panel in the Final Written Decision in IPR2022-01291. Ex. 2035, 26 (Final Written Decision in IPR2022-01291); Ex. 2037 ¶¶ 463–465 (report by Petitioner’s expert, Dr. Sarrafzadeh in the Delaware Litigation, regarding non-infringement, reproducing an image that Petitioner represents is from Patent Owner’s expert, Dr. Madisetti, in which Dr. Madisetti labeled transparent material an “Opening in Dark-Colored Coating,” and in which Dr. Sarrafzadeh asserts that “every space that Dr. Madisetti . . . identified is” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner

    “prosecution history of a parent application, this language should be construed to exclude “arrangements of two or three detectors.” Prelim. Resp. 15 (citing Ex. 2057, 322 (prosecution history of U.S. Patent Application No. 15/195,199 (“the ’199 Application”))). Patent Owner notes that the panel in IPR2022-01291 adopted this construction for “a nearly identical limitation in Claim 15 of the related ’745 Patent.” Id. at 15–16 (citing Ex. 2035, 109–112). On this preliminary record, we agree with Patent Owner that, due to statements made during prosecution of a parent application, this claim language should be construed to exclude arrangements of two or three detectors. During prosecution of the ’199 Application, application claim 1 was amended to recite: a “tissue measurement site . . . having an at least partially circular shape bounded by a light block”; the light block comprising “an annular ring having a circular shape”; and a “plurality of detectors . . . arranged in an array having a spatial configuration corresponding to the shape of the irradiated portion of the tissue measurement site.” Ex. 2057, 311. Patent Owner argued to the Examiner that the “array” limitation had support in the ’199 Application specification because: The ordinary meaning of the claim term “correspond” means to “have a close similarity; match or agree almost exactly” or “be analogous or equivalent in character, form, or function” or “represent.” New Oxford American Dictionary, 390 (3rd Edition 2010). Consistent with this exemplary definition and the originally-filed application, the phrase “arranged in an array having a spatial configuration corresponding to the shape of the irradiated portion of the tissue measurement site” . . . would be understood by a person having ordinary skill in the art as requiring a sufficient number of detectors such that, when arranged together in an array, can “match,” “have a close similarity,” or “represent” the “at least partially circular shape” of the irradiated portion of the tissue measurement site. . . . In order for the claimed “plurality of detectors” to “match” or “represent” an “at least partially circular shape” or an “annular shape,” the “plurality of detectors” must include sufficient detectors to represent such shapes. For example, six or more detectors could be arranged in an annular shape and meet the recited limitation. However, two detectors, for example, can only be arranged in a spatial configuration representing a line and three detectors, for example, can only be arranged in a spatial configuration representing a line or a triangle. Thus, when read in view of the originally-filed application, the recited “plurality of detectors” would be understood by a person having ordinary skill in the art as including a sufficient number of detectors to represent the desired geometric shape.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On the present record, Petitioner’s definition of a POSITA is consistent with the level of skill reflected in the ’159 patent and the asserted prior art. Accordingly, for purposes of this Decision, we adopt Petitioner’s description. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining “the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). We note that we would reach the same outcome in this Decision under either definition of a POSITA. If the parties continue to propose differing levels of ordinary skill in the art during trial, they should state whether any issue in the case turns on those differences.” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,722,159
• Meta Platforms, Inc. v. Almondnet, Inc.Instituted
  PTAB · Nov 30, 2022 · IPR2022-01064 · APJ Kristen L Droesch · IPR · Institution

  The Board instituted IPR on claims 9–12 on all petition grounds, finding a reasonable likelihood that claims 9–12 would be shown obvious over Meyer, Zeff, Edlund, and Fisher.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “determine there is a reasonable likelihood Petitioner would prevail in showing that claims 9–12 are unpatentable under 35 U.S.C. § 103 over Meyer, Zeff, Edlund, and Fisher. E. Challenge to Claims 9–12 over Meyer, Zeff, Edlund, Fisher, and Tittel” slip op. at 32

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. The Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the art would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web). A person could also have qualified with more formal education and less technical experience, or vice versa. Pet. 10 (citing Ex. 1002 ¶¶ 10–14). Patent Owner does not comment on Petitioner’s definition at this time, and does not offer an alternate definition. See Prelim. Resp. For the purpose of this decision, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’615 Patent Specification and the asserted prior art.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “claim construction standard as applied in federal courts in a civil action under 35 U.S.C. § 282(b), which is generally referred to as the Phillips standard. See 37 C.F.R. § 42.100(b) (2021); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the Phillips standard, “words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips, 415 F.3d at 1312. Petitioner asserts that it “does not believe an express claim construction is necessary at this time for this IPR.” Pet. 11. Patent Owner” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “For the purpose of this decision and based on Petitioner’s citations to Meyer, Zeff, and Mr. Schmandt’s testimony (Ex. 1002), we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to modify Meyer to include electronically transferring a price cap that the BT company is willing to pay. See Pet. 45–47; KSR, 550 U.S. at 418. Petitioner asserts that Zeff discloses that auctions are a good place to buy and sell excess ad inventory, advertisers can usually get pretty good prices on well-recognized sites, and it is a way to generate revenue on inventory that would otherwise go unsold. See id. at 46 (quoting Ex. 1004, 81; citing Ex. 1002 ¶ 149). Petitioner contends that using an auction and bidding system in Meyer could have resulted in a substantially lower price than the account provider might otherwise have paid. See id. (citing Ex. 1002 ¶ 148). According to Petitioner, [a]n ordinarily skilled artisan would have also appreciated that using an auction would have solved a problem for the service provider in deciding how much to charge for advertising. A known benefit of auctions is their ability to obtain the most appropriate price based on direct purchaser feedback through competitive bidding. Id. at 46–47 (citing Ex. 1002 ¶ 147).” slip op. at 24

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,830,615
• Kerr Machine Company v. S.P.M. Oil & Gas, Inc.Instituted
  PTAB · Jul 14, 2022 · IPR2022-00365 · APJ Meredith C Petravick · IPR · Institution

  The Board instituted IPR of claims 1–18 on all five grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “We will not discretionarily deny institution 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. See Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, 3, 7–8.7 Here, Petitioner offers such a stipulation. Prelim. Reply 1, 6 (citing Ex. 1047). Petitioner states: With respect to U.S. Patent No. 10,663,071, Kerr Machine Co. stipulates that if the Patent Trial and Appeal Board institutes a trial in IPR2022‐00365, Kerr will not pursue in the N.D. Texas district court litigation (C.A. No. 4:21‐cv‐01191‐O) any of the grounds raised in its IPR Petition (i.e., Grounds 1–5 as summarized on pages 2–3 of the Petition) against any of the challenged claims as originally issued, or on any other ground 7 available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf that Kerr reasonably could have raised during the IPR under 35 U.S.C. § 311(b) (i.e., a ground raised under §§ 102 or 103 only on the basis of prior art consisting of patents or printed publications). Ex. 1047. We, thus, decline to exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 6

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “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 discussed below, we determine that Petitioner shows a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we institute inter partes review of U.S. Patent No. 10,663,071 B2.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’071 patent would have had the following education and experience: “a bachelor’s degree in mechanical engineering, and approximately 3–5 years of work experience in the design or manufacture of reciprocating pumps or their components.” Pet. 11 (citing Ex. 1002 ¶ 64). Petitioner adds that “a POSITA with additional relevant education might have fewer years of work experience, e.g., someone with advanced mechanical engineering degrees would also qualify as a POSITA.” Id. At this stage of the proceeding, Patent Owner does not contest Petitioner’s definition of the level of skill or offer its own definition. See generally Prelim. Resp. For purposes of this decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “1. “seating surface,” “inner surface,” “tungsten carbide,” “tungsten carbide nickel,” and “tungsten carbide cobalt” Petitioner proposes explicit constructions for the following terms: “seating surface,” “inner surface,” “tungsten carbide,” “tungsten carbide nickel,” and “tungsten carbide cobalt.” Pet. 12–21. Patent Owner responds that we need not explicitly construe any claim term and that these terms should be given their “ordinary and customary meaning in light of the claims, specification, and file history of the ’071 Patent as would have been read by a person of ordinary skill in the art (‘POSITA’) for the purpose of this proceeding.” Prelim. Resp. 13–14. We need not explicitly construe any of these term in order to decide whether to institute inter partes review. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy).” slip op. at 9

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,663,071
• Allstate Insurance Company v. Atos, LLCInstituted
  PTAB · Jan 25, 2022 · IPR2021-01209 · APJ Richard H Marschall · IPR · Institution

  The Board instituted IPR of claims 1–25 on all asserted grounds, finding a reasonable likelihood that Kim anticipates at least claims 1–3, 9, 11, and 25.

  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) (2018). After considering 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 ’609 patent. Accordingly, we institute an inter partes review of claims 1–25 of the ’609 patent on all grounds asserted in the Petition.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “standard that would be used in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2019). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). Petitioner proposes constructions for “operation indicator” and “on- board component.” Pet. 7–10. Patent Owner disputes Petitioner’s proposed construction for “operation indicator” and proposes its own construction, and argues that we need not construe “on-board component” at all. Prelim. Resp. 7–13. We agree with Patent Owner that we need not construe “on-board component” because, at this time, no issue turns on our construction of that limitation. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We limit our analysis to the construction of “operation indicator.”” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “agree with Petitioner’s proposed construction and disagree with Patent Owner’s contention that “operation indicators” mean something more than the output of a sensor measurement based on signals from the environment. First, the plain language of the claims does not support Patent Owner’s construction. In claim 1, the limitation appears in a step requiring “monitoring at least one operation indicator . . . wherein the . . . operation indicator is created by an on-board component,” i.e., created by the sensor the specification describes. See Ex. 1001, 3:54–58, 11:4–6. Nothing in that limitation or its analogous limitation in claim 25 suggests anything more than “monitoring” the operation indicator created by the on-board component—no extra converting of that output appears in the claim suggests that mere monitoring of the indicator requires further conversion prior to the monitoring. In addition, to the extent that sensor output such as vibrations per second do not indicate something meaningful enough about the vehicle in Patent Owner’s view, later limitations in the claims provide additional information about the operation of the vehicle, suggesting that the “operation indicators” themselves need not contain all of the information as to the vehicle’s state. See PO Sur-reply 2; Ex. 1001, 11:9–12 (setting forth steps in claim 1 that require detecting when the operation indicator meets predetermined criteria and determining operational states of the vehicle based on that criteria). The specification also supports Petitioner’s construction by equating “operation indicator” with a sensor’s output. Ex. 1001, 3:57–60 (“[A] vibration sensor may measure forces over time (i.e. the signals) and convert them into number of vibrations measured per second (operation indicators).”). The only converting the specification describes in the context of operation indicators involves converting signals from the environment, not converting the output of the sensor as Patent Owner argues. Id. Patent Owner contends that the specification’s description of sensor output in vibrations per second, an operation indicator, may involve some additional converting of sensor output within a two-part sensor, but the specification does not describe such a two-part sensor or the extra conversion step. See PO Sur-reply 3–4; Ex. 1001, 3:52–66, Fig. 1. To the extent that the specification describes conversion of sensor output into something different, it occurs in later steps after the “monitoring” step, and not before the sensor creates operation indicators. See Ex. 1001, 4:12–20 (describing operation of state detector unit that determines operational state of a vehicle after receiving operation indicators from monitoring unit). Finally, although the specification describes a sensor measurement converted from environmental signals and Petitioner’s proposal uses the phrase “determined from signals from the environment,” we view the phrases “converted from” and “determined from” as providing no meaningful distinction as applied to the prior art in this case. See Pet. 7. Patent Owner uses the same phrase in its own proposal when discussing the sensor’s actions on signals from the environment, and we do not view Petitioner’s use of that phrase in its construction as problematic. See Prelim. Resp. 8 (describing a portion of proposed construction as “determined from signals from the environment” (emphasis omitted)). To the extent the parties find the distinction between “converted” and “determined” meaningful, they can address the issue further during the trial.” slip op. at 11

  • 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 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’609 patent has an effective filing date before the effective date of the applicable AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and 103. Our decision would not differ based on applying either preor post-AIA law. 3 KR 10-0775006, published June 4, 2007 (Ex. 1005, “Kim”). 4 US 8,065,508 B2, filed November 10, 2008 (Ex. 1006, “Rubin”). 5 Mitrovic, D., Reliable Method for Driving Events Recognition, IEEE Transactions on Intelligent Transportation Systems, Vol. 6, No. 2 (June 2005) (Ex. 1008, “Mitrovic”). 6 US 7,505,784 B2, published March 29, 2007 (Ex. 1007, “Barbera”). 7 US 6,236,937 B1, issued May 22, 2001 (Ex. 1013, “Kohli”). That “single reference must describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.” Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002).” slip op. at 7

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,152,609
• Cradlepoint, Inc. / Sierra Wireless, Inc. et al. v. Sisvel International S.A.Some claims unpatentable
  PTAB · Jan 18, 2022 · IPR2020-01099 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1–3 and 9 are unpatentable as obvious over Chen; claims 4–8 and 10 were not shown unpatentable on the instituted grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Response. Paper 10 (“Prelim. Resp.”). We instituted an inter partes review on all challenged claims on all grounds set forth in the Petition. Paper 11 (“Institution Decision” or “Inst. Dec.”).” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Although there are differences between the contentions of the parties as to the level of ordinary skill in the art, the parties have not informed us of a dispute that needs to be resolved. We do not find it necessary to resolve the differences between the contentions of the parties as to the appropriate level of ordinary skill in the art because the findings and conclusions rendered in this Decision do not turn on either proposed definition. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’561 patent and the asserted prior art. As such, we adopt Patent Owner’s proposed definition for a person of ordinary skill in the art.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “Petitioner proposes a construction for the term “code rate.” Separately, with regard to means-plus-function limitations recited in claims 5, 9, and 10, Petitioner provides claim construction contentions that identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function, as required by 37 C.F.R. § 42.104(b)(3). Pet. 33–37. Patent Owner does not propose a definition for any claim term nor does it contest any of Petitioner’s proposed constructions. PO Resp. 7–9. In the Institution Decision, we preliminarily construed the means- plus-function claim limitations as set forth in the table below, but determined that it was not necessary for us to construe the claim term “code rate.” Inst. Dec. 11–20 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)).5 Based on the 5 Petitioner notes that “construction may be helpful to establishing the inverse and counterintuitive relationship between code rate and redundancy in which an increased code rate (e.g., 1/2) means that fewer redundant bits are transmitted whereas a decreased code rate (e.g., 1/4) means that more determination that we need not expressly construe “code rate” and our preliminary determinations for the means-plus-functions terms for the reasons set forth in our Institution Decision, which we adopt and do not repeat herein, and which are reflected in the table below. Id. at 11–19. Because Petitioner presents further argument for its construction of “means for detecting” in its Petitioner’s Reply––we address that argument below for completeness.” slip op. at 11

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner

    “We recognize, however, “the testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification.” Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005); see also Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950–53 (Fed. Cir. 2007). “The prohibition against using expert testimony in this manner is a direct consequence of the requirement that the specification itself adequately disclose the corresponding structure.” Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012) (citing AllVoice Computing PLC v. Nuance Commc'ns., required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.” Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). The specification must “disclose an algorithm for performing the claimed function.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008); Aristocrat, 521 F.3d at 1333. The Federal Circuit has held that “[t]he specification can express the algorithm ‘in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.’” Noah, 675 F.3d at 1312 (citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed.Cir.2008) (internal citation omitted)). “Simply disclosing software, however, ‘without providing some detail about the means to accomplish the function[,] is not enough.’” Id. (citing Finisar, 523 F.3d at 1340–41 (citation omitted)). In the present proceeding, even assuming, arguendo, that the record sufficiently supports a finding that a POSITA would have known of FEC, CRC, ARQ, and hybrid ARQ protocols, Petitioner has not shown that the specification of the ’561 patent discloses a sufficient algorithm, whether “as a mathematical formula, in prose, or as a flow chart, or any other manner that provides sufficient structure” for the “means for detecting,” including an algorithm for performing any one or more of these protocols. Noah, 675 F.3d at 1312. The ’561 patent discloses “means (224) for detecting a need for retransmission of the received coded data block,” “CCU [Channel Coding Unit] [that] is responsible for channel coding, including forward error coding FEC” as well as detecting the “[t]he need for retransmission . . . by an error errors occurring on the channel with sufficient certainty.” Ex. 1001, code (57), 2:25, 6:64–65, 7:54–59; see id. at Fig. 5, Step 508, 10:41–44. Petitioner has not shown that the ’561 patent presents an algorithm for how the error detection code detects an error, nor explained the circumstances under which the error correcting code cannot correct errors and what constitutes “sufficient certainty.” Id. at 7:54–59. Although the ’561 patent discloses examples of incremental redundancy protocols such as “hybrid FEC/ARQ (Forward Error Correction/Automatic Repeat Request), which uses error correction coding in order to decrease the number of retransmissions,” it does not present an algorithm for implementing the same. Id. at 2:33–37. For the foregoing reasons and based on the entirety of the record developed during trial, we conclude that Petitioner fails to identify sufficient algorithmic structure corresponding to the “means for detecting” recited in independent claims 5 and 10.” slip op. at 15

  Patent outcomesUS 6,529,561 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,529,561
• Allstate Insurance Company v. Atos, LLCInstituted
  PTAB · Jan 10, 2022 · IPR2021-01118 · APJ Richard H Marschall · IPR · Institution

  The Board instituted IPR of claims 1–18 on all asserted grounds after finding a reasonable likelihood that Kim anticipates at least claims 1, 10, and 13.

  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 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 ’140 patent. Accordingly, we institute an inter partes review of claims 1–18 of the ’140 patent on all grounds asserted in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention “would have been someone with a bachelor’s or master’s degree in the field of mechanical engineering, electrical engineering, or physics, or with a bachelor’s or master’s degree in a related field, and at least three years of experience in designing or developing portable device systems.” Pet. 4 (citing Ex. 1003 ¶ 52). Patent Owner does not address Petitioner’s proposal or offer a competing definition of the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’140 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner proposes constructions for “operation indicator” and “on- board component.” Pet. 7–10. Patent Owner disputes Petitioner’s proposed construction for “operation indicator” and proposes its own construction, and argues that we need not construe “on-board component” at all. Prelim. Resp. 8–13. We agree with Patent Owner that we need not construe “on-board component” because, at this time, no issue turns on our construction of that limitation. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We limit our analysis to the construction of “operation indicator.”” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “First, the plain language of the claim does not support Patent Owner’s construction. The limitation in question appears in a step requiring “monitoring at least one operation indicator . . . wherein the . . . operation indicator is created by an on-board component,” i.e., created by the sensor the specification describes. See Ex. 1001, 3:49–52, 10:65–11:2. Nothing in that limitation suggests anything more than “monitoring” the operation indicator created by the on-board component—no extra converting of that output appears in the claim or suggests that mere monitoring of the indicator requires further conversion prior to the monitoring. In addition, to the extent that sensor output such as vibrations per second do not indicate something meaningful enough about the vehicle in Patent Owner’s view, later limitations in the claims provide additional information about the operation of the vehicle, suggesting that the “operation indicators” themselves need not contain all of the information as to the vehicle’s state. See PO Sur-reply 2; Ex. 1001, 11:3–6 (setting forth steps in claim 1 that require detecting when the operation indicator meets predetermined criteria and determining operational states of the vehicle based on that criteria). The specification also supports Petitioner’s construction by equating “operation indicator” with a sensor’s output. Ex. 1001, 3:51–56 (“[A] vibration sensor may measure forces over time (i.e. the signals) and convert them into number of vibrations measured per second (operation indicators).”). The only converting the specification describes in the context of operation indicators involves converting signals from the environment, not converting the output of the sensor as Patent Owner argues. Id. Patent Owner contends that the specification’s description of sensor output in vibrations per second, an operation indicator, may involve some additional converting of sensor output within a two-part sensor, but the specification does not describe such a two-part sensor or the extra conversion step. See PO Sur-reply 3–4; Ex. 1001, 3:45–61, Fig. 1. To the extent that the specification describes conversion of sensor output into something different, it occurs in later steps after the “monitoring” step, and not before the sensor creates operation indicators. See Ex. 1001, 4:7–16 (describing operation of state detector unit that determines operational state of a vehicle after receiving operation indicators from monitoring unit). Finally, although the specification describes a sensor measurement converted from environmental signals and Petitioner’s proposal uses the phrase “determined from signals from the environment,” we view the phrases “converted from” and “determined from” as providing no meaningful distinction as applied to the prior art in this case. See Pet. 7. Patent Owner uses the same phrase in its own proposal when discussing the sensor’s actions on signals from the environment, and we do not view Petitioner’s use of that phrase in its construction as problematic. See Prelim. Resp. 8 (describing a portion of proposed construction as “determined from signals from the environment”). To the extent the parties find the distinction between “converted” and “determined” meaningful, they can address the issue further during the trial. Based on the foregoing, we construe “operation indicator” to mean “a sensor measurement determined from signals from the environment.” D. Anticipation of Claims 1, 5, 10, 13, and 15 by Kim” slip op. at 12

  Claim construction§ 102 anticipationcites Phillips · KSR · Graham
  Patents in suitUS 8,527,140
• Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Irobot CorporationRehearing granted
  PTAB · Nov 17, 2021 · IPR2021-00544 · APJ Terrence W Mcmillin · IPR · Rehearing

  Rehearing was granted and review instituted on all challenged claims and grounds after the Board found the ITC target date made Fintiv factor 2 neutral and Petitioner’s broadened stipulation favored institution.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “Institution stated, “[t]he evidentiary hearing in the ITC investigation is scheduled to begin January 5, 2022, and the final determination is due April 29, 2022.” DDI 9 (citing Ex. 2004, 5; emphasis added). Petitioner is correct that the statement did not correctly state the target date for the ITC’s final determination. According to the Adopted Procedural Schedule for the ITC Investigation, the “Final ID” is due April 29, 2022, and the “Target Date” is August 29, 2022. Ex. 2004, 5. We agree that the ITC’s target date for final determination is more appropriate for evaluating Fintiv factor 2, consistent with the Board’s prior decisions. See Request 2–3 (identifying numerous proceedings). Applying the August 29, 2022, date, we conclude that Fintiv factor 2 is neutral in this proceeding, because of the close proximity between the ITC’s target final determination and our expected final written decision based on the mailing date of this Decision.” slip op. at 9

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDecided for petitioner

    “Institution stated, “[t]he evidentiary hearing in the ITC investigation is scheduled to begin January 5, 2022, and the final determination is due April 29, 2022.” DDI 9 (citing Ex. 2004, 5; emphasis added). Petitioner is correct that the statement did not correctly state the target date for the ITC’s final determination. According to the Adopted Procedural Schedule for the ITC Investigation, the “Final ID” is due April 29, 2022, and the “Target Date” is August 29, 2022. Ex. 2004, 5. We agree that the ITC’s target date for final determination is more appropriate for evaluating Fintiv factor 2, consistent with the Board’s prior decisions. See Request 2–3 (identifying numerous proceedings). Applying the August 29, 2022, date, we conclude that Fintiv factor 2 is neutral in this proceeding, because of the close proximity between the ITC’s target final determination and our expected final written decision based on the mailing date of this Decision.” slip op. at 9

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Summary as to Claim 1 Petitioner has shown a reasonable likelihood of showing that claim 1 of the ’423 patent would have been obvious in view of the combined teachings of Jeon, Everett, and Abramson. 5. Claims 2–4, 6–10, 12–15, 18–23, 25, and 26 Petitioner also contends that claims 2–4, 6–10, 12–15, 18–23, 25, and 26 would have been obvious in view of a combination of the asserted references. See Pet. 26–80. As noted previously, Patent Owner does not address the merits of any portion of the Petitioner’s obviousness showing. See generally Prelim. Resp. Thus, at this stage, Petitioner’s obviousness showing as to claims 2–4, 6–10, 12–15, 18–23, 25, and 26 is undisputed. We have determined that there is a reasonable likelihood that the Petitioner will prevail with respect to at least one of the claims challenged in the Petition pursuant to 35 U.S.C. § 314 and that inter partes review should be instituted. Accordingly, we institute as to all the challenged claims and all the challenges raised in the Petition. SAS Institute Inc. v. Iancu, 138 S.Ct. 1348, 1358 (2018); 37 C.F.R. §42.108 (a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). III. CONCLUSION Petitioner has persuaded us that rehearing is appropriate and we grant the Request for Rehearing. After reconsidering our discretionary denial of the Petition, we determine that discretionary denial is inappropriate. And, we determine that Petitioner has demonstrated a reasonable likelihood of showing at least one of the claims challenged in the Petition would have been obvious. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Request for Rehearing is granted; FURTHER ORDERED that an inter partes review is instituted on all challenged claims under all challenged grounds; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of the ʼ423 patent is hereby instituted commencing on the entry date of this Decision, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial.” slip op. at 29

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “With regard to combining the relevant teachings of Jeon and Everett relating to this limitation, the Petition states: It would have been obvious to combine this well-known, reduced base station approach velocity with [ ]Jeon . . . Doing so is nothing more than substituting a known feature (e.g., Everett’s reduced base station approach velocity) in an existing system ([ ]Jeon’s robot cleaner) according to known methods (e.g., function of stand-off distance) to achieve a predictable result (avoiding collision with and/or increased maneuverability for accurate alignment with the base station). Id.; KSR, 550 U.S. at 416-418. Selecting a reduced base station approach velocity is a known, obvious, trivial selection from a limited number of options (increasing, decreasing, or maintaining velocity). Likhachev, ¶ 82. Given the benefits of reducing the velocity (e.g., avoiding collision and/or increased maneuverability), to the extent not already understood from [ ]Jeon and the knowledge of a skilled artisan, a skilled artisan would have found it obvious to try reducing the base station approach velocity of [ ]Jeon’s robot cleaner as taught by Everett. Id.; KSR, 550 U.S. at 421. Pet. 19–20. At least at this stage of the proceedings, we determine that Petitioner provides sufficient rationale for combining the relied upon teachings of Jeon and Everett. We determine that, for purposes of institution, Petitioner has shown sufficiently that the cited art teaches this limitation.” slip op. at 24

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,884,423
• Election Systems & Software, LLC v. Hart Intercivic, Inc.All claims unpatentable
  PTAB · Sep 1, 2021 · PGR2020-00031 · APJ Jason M Repko · PGR · Final written decision

  Claims 1–30 are unpatentable: claims 1–5, 15–19, 25, and 11–14, 28 on obviousness grounds; claims 6, 7, 9, 10, 23, 24, 29, 30 on anticipation; claims 20–22 on obviousness.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “On September 2, 2020, we instituted an inter partes review of all challenged claims based on all grounds in the Petition. Paper 6 (“Inst. Dec.”). Patent Owner filed a Response. Paper 14 (“PO Resp.”). Petitioner filed a Reply. Paper 19 (“Pet. Reply”). Patent Owner filed a Sur-reply. Paper 20 (“Sur-reply”). An oral hearing was held on July 6, 2021. A transcript of that hearing has been entered into the record. Paper 28 (“Tr.”).” slip op. at 2

  • Skill levelDecided for petitioner

    “B. Level of Ordinary Skill in the Art According to Petitioner, A person of ordinary skill in the art at the time the ‘966 patent was filed (“POSITA”) would have had at least a Bachelor’s degree in electrical engineering or computer science or an equivalent field, or equivalent work experience and, in addition, at least two years’ experience with electronic voting machines, including familiarity with ballot marking devices (“BMDs”), optical character recognition, bar codes and hash functions. Pet. 24 (citing Shamos Decl. ¶¶ 50–51). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 6. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. (PO Resp. 3). We continue to find that the level of ordinary skill identified by Petitioner (Pet. 24) is consistent with the record. See Inst. Dec. 6. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “testimony also support Petitioner’s conclusion that the accuracy of Brockhouse’s OCR could be improved. Pet. 56; Ex. 1005, 1:20–21 (disclosing that OCR is error prone); Shamos Decl. ¶ 231. On this record, Petitioner provides sufficient “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “4. Claims 7, 9, 10, 24, and 30, Anticipation The Petition states that the statutory basis for challenging claims 7, 9, 10, 24, and 30 is “35 U.S.C. §§ 102 and/or 103.” Pet. 3. In this section, we consider anticipation under Section 102. Patent Owner does not contest Petitioner’s analysis. See generally PO Resp.; PO Sur-reply. Upon review of the entirety of the record, we credit the undisputed testimony of Dr. Shamos and are persuaded by Petitioner’s uncontested analysis. In particular, claims 7 and 24 depend from claims 6 and 23, respectively. Both claims 7 and 24 add “wherein the bar code is utilized to confirm the printed vote record is valid.” Ex. 1001, 9:30–31 (claim 7), 11:18–19 (claim 24). For claims 7 and 24, Petitioner asserts that Nadaf counts the vote only after confirming that the PVR is valid. Pet. 70 (citing Ex. 1007, 6:2–10). In the cited passages, Nadaf refers to the process as “confirming the institutional provenance and integrity of the content of the printed vote.” Ex. 1007, 6:2–6. According to Nadaf, “Only after being audited will the printed vote be validated for counting.” Id. at 6:7–10. On this record, Petitioner supports the assertion that Nadaf confirms the printed vote’s validity with the bar code, as recited. See Pet. 69–70. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 7 and 24 are anticipated by Nadaf. Claim 9 recites a “two dimensional bar code.” Ex. 1001, 9:35–36. Claims 10 and 30 recite “a QR code bar code” Id. at 12:34–35. As for claims 9, 10, and 30, Petitioner asserts that Nadaf’s PVR contains both voter-readable text and a bar code encoded with voter selections. Pet. 71 (citing Ex. 1006, Fig. 4). Petitioner asserts that (1) Nadaf’s Figure 4 shows an example QR code and (2) a QR code is a two-dimensional bar code. Id. (citing Ex. 1007, 18:9; Ex. 1003 ¶ 296). On this record, Petitioner shows that Nadaf discloses the two-dimensional bar code that is a QR code, as recited in claims 9, 10, and 30. Thus, we determine that Petitioner has shown by a preponderance of the evidence that claims 9, 10, and 30 are anticipated by Nadaf.” slip op. at 56

  Patent outcomesUS 10,445,966 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 10,445,966
• Intel Corporation v. Qualcomm IncorporatedAll claims unpatentable
  PTAB · Jan 14, 2020 · IPR2018-01330 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 28–30 are unpatentable as obvious over Chen, Wang, and Choi.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “requesting an inter partes review of claims 28–30 of U.S. Patent No. 9,608,675 B2 (Ex. 1401, “the ’675 patent”). Qualcomm Incorporated (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted an inter partes review of challenged claims 28–30 based on the sole ground presented in the Petition. Paper 8 (“Inst. Dec.”). Patent Owner filed a Response (Paper 14, “PO Resp.”), and Petitioner filed a Reply (Paper 16, “Pet. Reply”). Patent Owner then filed a Sur-reply. Paper 19 (“PO Sur-reply”).” slip op. at 2

  • Skill levelOther
  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “III. ANALYSIS A. Claim Construction The claim construction standard applicable to this inter partes review proceeding is the broadest reasonable interpretation in light of the patent specification. See 37 C.F.R. § 42.100(b) (2018); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard).5 Under this standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). As to claim elements recited in means-plus-function format, the Federal Circuit has stated: “Section 112, ¶ 6 recites a mandatory procedure for interpreting the meaning of a means- or step-plus-function claim element. These claim limitations ‘shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’” Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1320 (Fed. Cir. 1999); see also In re Donaldson Co., Inc., 16 F.3d 1189, 1193–94 (Fed. Cir. 1994) (en banc) (“[P]aragraph six applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., 5 The revised claim construction standard for interpreting claims in inter partes review proceedings as set forth in the final rule published October 11, 2018, does not apply to this proceeding because the new “rule is effective on November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on or after the effective date.” Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (codified at 37 C.F.R. § 42.100(b) (2019)). The Petition here was filed on July 3, 2018. whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court.”). Accordingly, a means-plus-function limitation is construed by determining the claimed function and identifying the structure or materials disclosed in the specification that correspond to the means for performing that function. See Kemco Sales, Inc. v. Control Papers Co., Inc., 208 F.3d 1352, 1360 (Fed. Cir. 2000). “Under this second step, structure disclosed in the specification is corresponding structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011) (internal quotation omitted). Failure to disclose structure that performs the claimed function typically (e.g., in district court) renders the claim invalid for indefiniteness under 35 U.S.C. § 112 ¶ 2. See Aristocrat Techs. Austl. Pty v. Int’l Game Tech., 521 F.3d 1328, 1331 (Fed. Cir. 2008).” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “that Chen’s signals 1 and 2 would have been understood to include I and Q components. See, e.g., Ex. 1403 ¶ 126. We also are persuaded that Petitioner’s proffered reasoning for modifying Chen to include Wang’s baseband signal (comprising an OFDM signal with I and Q components), namely, to provide a way to carry out Chen’s signaling, is sufficient to support the legal conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 51

  Patent outcomesUS 9,608,675 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,608,675

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.