- Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution deniedPTAB · Sep 4, 2024 · IPR2024-00457 · APJ Brian D Range · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that any claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“The parties agreed that resolution of this time bar issue would be resolved in the same manner as in IPR2024-00456. In particular, the parties stipulated: The parties stipulate with respect to the privity time bar issue that the facts and issues in IPR2024-00457 are the same as in IPR2024-00456, so that any decision the Board reaches resolving the privity time bar issue in IPR2024-00456 will apply and resolve the privity time bar issue in IPR2024-00457 in the same manner. Notice of Stipulation, Paper 14, 1. In the decision on institution for IPR2024-00456, the Board determined that “Lenovo is not a privity of Microsoft [in this context] and the Petition is not time-barred under § 315(b).” IPR2024-00456, Paper 22, 10 (July 31, 2024). Thus, pursuant to the parties’ stipulation, the instant petition is also not time-barred.” slip op. at 16
- Prior constructionPrior construction adoptedDecided for petitioner
“For this decision, we again construe “plurality of views of a plurality of visual representations of computer content” as “referring to a plurality of ways of organizing visual representations of computer content.” We again note that this limitation is distinct from merely providing a plurality of ways of displaying content (by, for example, changing display orientation, color, resolution, etc.). Petitioner assumes this construction for the Petition, and Patent Owner assumes this construction for Patent Owner’s Preliminary Response. Moreover, the construction is well supported by the ’715 patent’s claims and specification for reasons similar to those stated in the prior decision cited by Petitioner. IPR2021-00786, Paper 6, 13–16 (construing this term for the ’715 patent). For this decision, we do not discern a need to construe explicitly any other claim language because doing so would have no effect on our analysis below and will not assist in resolving the present controversy between the parties.7 See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Below, we explain that we deny institution based on the merits: Petitioner has not shown, with respect to at least one of the challenged claims, a reasonable likelihood of prevailing at trial. In the interest of judicial efficiency, we therefore do not need to consider discretionary denial. Cf. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (explaining that the Board is not required to reach issues unnecessary to “resolve the controversy”); see also, e.g., Aylo Freesites Ltd. v. Dish Techs. LLC, IPR 2024-00512, Paper 12, 12, n. 3 (declining to reach the 35 U.S.C. § 325(d) issues when denying based on 35 U.S.C. § 314(a)).” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (POSITA), would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing GUIs for computing devices. Ex-1003, ¶ 21. More education could substitute for experience and vice versa. Id. Pet. 15. Patent Owner does not dispute the level of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in the prior art and the ’715 patent. See 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 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,880,715 - Microsoft Corporation / Affirmed Networks, Inc. v. Lemko CorporationNo claims unpatentablePTAB · Aug 30, 2024 · IPR2023-00529 · APJ Brian D Range · IPR · Final written decision
Claims 1–8, 11–16, and 21 were not proven unpatentable over Mauer and Waylett because the asserted combinations did not teach key claim limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner defines the person of ordinary skill in the art as follows: As of February 2006, a person of ordinary skill in the art (“POSITA”) would have been a person with a degree in 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims of the ’414 patent have an effective filing date before the effective date of the applicable AIA amendments, we refer to the pre-AIA version of 35 U.S.C. § 103 throughout this Decision. 2 Mauer et al., U.S. Patent No. 7,395,085 B1, issued July 1, 2008 (Ex. 1005, “Mauer”). 3 Waylett et al., U.S. Patent No. 8,184,603 B2, issued May 22, 2012 (Ex. 1006, “Waylett”). computer science, electrical or computer engineering, physics, or a similar discipline . . . [and] would also have at least two years of relevant experience including, for example, work related to telecommunications networks. Pet. 3 (citing Ex. 1003 ¶ 54). The institution decision adopted Petitioner’s definition of a person having ordinary skill in the art. Dec. on Inst. 11–12. Patent Owner applied this definition for its response. Resp. 19. Petitioner’s undisputed definition of a person of ordinary skill in the art is reasonable and consistent with the prior art and ’414 patent specification. Based on the record before us, we adopt Petitioner’s undisputed proposal. See 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 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner does not submit constructions for any claim terms. According to Petitioner, “[t]he Board construes claims under the same standard used in civil actions in federal district court. The district court for the related litigation has not yet construed the claim terms.” Pet. 7. The parties provided briefing regarding construction of “distributed mobile architecture (DMA).” Resp. 19–34; Pet. Reply 1–3; PO Sur-reply 11–14. But we do not need to construe “distributed mobile architecture (DMA)” to resolve this inter partes review. We thus do not construe this claim term. We also do not discern a need to construe explicitly any other claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We discuss the meaning of ’414 patent claims to the extent necessary to resolve the issues we address below. Id.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“a) Combination of Mauer and Waylett In support of both Ground 1 and Ground 2, Petitioner argues that a person of ordinary skill in the art would have been motivated to combine Mauer’s and Waylett’s disclosures, “using Waylett’s Network-in-a-box 224 in each of Mauer’s WWAN 14 and WLAN 12, resulting in at least two DMA systems.” Pet. 11–13. Asserting that “Mauer teaches providing sufficient network coverage by use of different kinds of networks, network interfaces, and protocols,” Petitioner contends that a person of ordinary skill in the art would have recognized that “Waylett discloses an inexpensive way to implement the same networks used in Mauer’s WWAN 14 and WLAN 12.” Id. Citing similarities in Mauer’s and Waylett’s systems, Petitioner argues that “a POSITA would have been able to modify Mauer’s WWAN 14 and WLAN 12 networks so that each network uses Waylett’s NIB 224.” Id. at 14. According to Petitioner, the combination would have included a number of beneficial features from Mauer. Id. at 14–15. Petitioner further advances three reasons that a person of ordinary skill would have had to combine the references’ teaching. Id. at 15–16. First, asserting that Waylett discloses cost benefits and Mauer discloses “an improved method and system for notifying mobile stations,” Petitioner contends the “references each provide reasoning” to combine their disclosures. Id. at 15. Second, Petitioner argues that a person of ordinary skill in the art would have been motivated to “improve Mauer’s distributed wireless network system by consolidating it into a single box, making it compact in design allowing for faster deployment.” Id. at 16. “Third, Waylett’s NIB would help mitigate the shared concern of Mauer—that is, reaching a mobile station as it roams or moves outside of the service or coverage area.” Id.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner does not establish that Mauer sends calls to voicemail based on the two determinations claim 1 recites. Resp. 55–56. In particular, as we explain above, claim 1 requires making use of the DPR after first determining the second mobile subscriber is not located within a first wireless coverage area based on HLR and VLR information and also determining that the second mobile subscriber is not located within a second wireless coverage area based on certain CLR information. The Petition, at best, attempts to establish that Mauer directs to voicemail when a “communication session cannot be established over the first or second wireless network.” Pet. 37. But a general determination that a “communication session cannot be established” does not teach or suggest claim 1’s specific requirements that first, the DPR is utilized in the specific circumstance that the second mobile subscriber is not located within the first wireless coverage area (with this determination being made based on HLR and VLR information), and second, that the DPR is also not located within the second wireless coverage area (with this determination being made based on CLR information). See PO Sur-Reply 8–9; Ex. 2001 ¶¶ 111–113. For the reasons above, Petitioner does not establish by a preponderance of the evidence that the combined art teaches or suggests the final “when” recitation of claim 1.” slip op. at 29
Patent outcomesUS 7,653,414 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,653,414 - Sony Interactive Entertainment Inc. / Sony Group Corporation v. Resonant Systems, Inc.Institution deniedPTAB · Aug 26, 2024 · IPR2024-00570 · APJ Norman H Beamer · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–8, 11, 15–17, and 20 were obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Institution of an inter partes review requires that “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). For the reasons set forth below, we determine that Petitioner does not show a reasonable likelihood of prevailing with respect to at least one of the claims. Accordingly, we do not institute an inter partes review of the ’830 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that person of ordinary skill in the art (POSITA) would have an engineering-related undergraduate degree such as electrical, mechanical, or computer engineering, with at least two years of experience with computer-controlled electrical or electronic systems, or equivalent academic experience (e.g., a master’s degree with a similar focus). The POSITA could have also obtained similar knowledge and experience through a combination of education and experience in the above. Patent Owner offers “a similar level of ordinary skill in the art.” Prelim. Resp. 4. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’830 patent specification.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner
“As Patent Owner shows, the specification reveals that in step 762, “the routine ‘control’ computes an output value p corresponding to the currently selected strength, stored in the variable strength, and outputs the value p to the power supply so that the power supply outputs an appropriate current to the coil.” Id. at 15 (emphasis added) (quoting Ex. 1001, 8:20–30). Step 762 corresponds to, for example, control input 624 transmitted from CPU 602 to power supply 612 of Figure 6 to control the current from power supply 612 to coil 626. See supra Section II.C (describing Fig. 6); Ex. 1001, 6:41–44 (“The power supply 612 receives a control input 624 from the CPU to control the current supplied to the H-bridge switch 618 for transfer to the coil 626.”). The specification, therefore, supports Patent Owner. The specification clearly links this algorithmic structure to the recited function, “controlling supply of power from the power supply.” As Patent Owner shows, Petitioner agreed in the Sony litigation that the corresponding structure includes “provide a corresponding output to the power supply so that the power supply provides a corresponding output to the driving component and equivalents thereof.” Prelim. Resp. 12–13 (quoting Ex. 2001, 12–14).” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“The record supports Patent Owner. Under a means plus function analysis, which the parties agree applies, Petitioner relies on Houston’s microprocessor as the structure that corresponds to the recited “control component.” Pet. 36 (“Houston teaches that vibration controller 623 is a microprocessor thereby satisfying the structural requirement of this means plus-function limitation.”). microprocessor, limitation 1.f further requires algorithmic structure (processed by the microprocessor of the recited “control component”) to include “1) computing a digital output value corresponding to user-selected amplitude of oscillation and outputting the value to the claimed power supply so that the power supply outputs an appropriate current amplitude to the coil.” Supra Section III.C (emphasis added). In other words, as Patent Owner argues, to satisfy limitation 1.f, the “prior art [at least] would need to have this microprocessor perform the algorithmic step of ‘provid[ing] a corresponding ‘output to the power supply.’” Prelim. Resp. 18. Patent Owner also argues that “[t]he Petition fails to show that this [algorithmic step] is disclosed or rendered obvious by the combination of Houston and Goldenberg.” Prelim. Resp. 18. The record supports Patent Owner. Petitioner does not contend, let alone show, that the combination of Houston and Goldenberg teaches outputting any value to a power supply as limitation 1.f requires according to the claim construction Patent Owner argues and we adopt. See Pet. 35–42; supra Section III.C. It follows that the Petition fails to show a reasonable likelihood of success of prevailing with respect to claim 1.” slip op. at 23
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,941,830 - Sony Interactive Entertainment Inc. / Sony Group Corporation v. Resonant Systems, Inc.Institution deniedPTAB · Aug 26, 2024 · IPR2024-00569 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 2 or 3 were unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Institution of an inter partes review requires that “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). For the reasons set forth below, we determine that Petitioner does not show a reasonable likelihood of prevailing with respect to at least one of claims 2 and 3, the remaining “challenged claims” per the disclaimer. Accordingly, we do not institute an inter partes review of the ’337 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that person of ordinary skill in the art (POSITA) would have an engineering-related undergraduate degree such as electrical, mechanical, or computer engineering, with at least two years of experience with computer-controlled electrical or electronic systems, or equivalent academic experience (e.g., a master’s degree with a similar focus). The POSITA could have also obtained similar knowledge and experience through a combination of education and experience in the above. Pet. 11 (citing Ex. 1003 ¶ 129). Patent Owner offers “a similar level of ordinary skill in the art.” Prelim. Resp. 4. of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’337 patent specification.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner
“called in step 716 in FIG. 7A” (Ex. 1001, 8:10–11), where Figures 7A–7C “illustrate the control program, executed by the CPU, that controls operation of an LRVM” (id. at 6:43–45). Essentially, Figures 7A–7C represent a disclosed algorithm used with a CPU of a microprocessor with memory for implementing the algorithm to control the supply of current from a power supply to a coil surrounding a moveable magnet. See, e.g., Ex. 1001, Fig. 6; supra Section. II.C. “the routine ‘control’ computes an output value p corresponding to the currently selected strength, stored in the variable strength, and outputs the value p to the power supply so that the power supply outputs an appropriate current to the coil.” Prelim. Resp. 16 (emphasis added) (quoting Ex. 1001, 8:10–20). Step 762 corresponds to, for example, control input 624 transmitted from CPU 602 to power supply 612 of Figure 6 to control the current from power supply 612 to coil 626. See supra Section II.C (describing Fig. 6); Ex. 1001, 6:33–35 (“The power supply 612 receives a control input 624 from the CPU to control the current supplied to the H-bridge switch 618 for transfer to the coil 626.”). The specification, therefore, supports Patent Owner. The specification clearly links this algorithmic structure to the recited function, “controlling supply of power from the power supply.” As Patent Owner shows, Petitioner agreed in the Sony litigation that the corresponding structure includes “provide a corresponding output to the power supply so that the power supply provides a corresponding output to the driving component and equivalents thereof.” Prelim. Resp. 14–15 (quoting Ex. 2002, 4–5). In summary, limitation 2.f recites “a control component that controls supply of power from the power supply to the driving component to cause the moveable component to oscillate at a frequency and an amplitude specified by user input received from the user input features.” Step 762, which corresponds to control input 624 transmitted from CPU 602 to power supply 612 in the block diagram of Figure 6, is a clear link of algorithmic structure to the recited function of “control[ling] supply of power from the” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“The record supports Patent Owner. Under a means plus function analysis, which the parties agree applies, Petitioner relies on Houston’s microprocessor as the structure that corresponds to the recited “control component.” Pet. 34 (“Houston teaches that vibration controller 623 is a microprocessor thereby satisfying the structural requirement of this means plus-function limitation.”). As indicated in Section III.C, if the corresponding structure is a microprocessor, limitation 2.f further requires algorithmic structure (processed by the microprocessor of the recited “control component”) to include “1) computing a digital output value corresponding to user-selected amplitude of oscillation and outputting the value to the claimed power supply so that the power supply outputs an appropriate current amplitude to the coil.” Supra Section III.C (emphasis added). In other words, as Patent Owner argues, to satisfy limitation 2.f, the “prior art [at least] would need to have this microprocessor perform the algorithmic step of ‘provid[ing] a corresponding ‘output to the power supply.’” Prelim. Resp. 19. Patent Owner also argues that “[t]he Petition fails to show that this [algorithmic Goldenberg,” and Tierling. Id. at 19, 23.14 The record supports Patent Owner. Petitioner does not contend, let alone show, that the combination of Houston, Goldenberg, and Tierling teaches outputting any value to a power supply as limitation 2.f requires according to the claim construction Patent Owner argues and we adopt. See Pet. 35–44; supra Section III.C. It follows that the Petition fails to show a reasonable likelihood of success of prevailing with respect to claim 1. In addition, although not necessary to our decision based on the dispositive claim construction issue discussed above, the Petition fails to show that the combination of Houston, Goldenberg, and Tierling teaches the “control component” algorithmic structure corresponding to the function of “caus[ing] the moveable component to oscillate at a frequency” as recited in limitation 2.f. Specifically, the Petition fails to show that the combination of Houston, Goldenberg, and Tierling teaches the following corresponding structure of the control component according to our claim construction: “at least one timer or equivalent to control a periodic change in direction of the current supplied to the coil . . . by providing a control value . . . such that the value flips according to the timer or its equivalent.” See supra Section II.C; Pet. 35–44.” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,860,337 - Sony Interactive Entertainment Inc. / Sony Group Corporation v. Resonant Systems, Inc.Institution deniedPTAB · Aug 26, 2024 · IPR2024-00568 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8, 11, or 17 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The record supports Patent Owner. Under a means plus function analysis, which the parties agree applies, Petitioner relies on Houston’s microprocessor as the structure that corresponds to the recited “control component.” Pet. 36 (“Houston teaches that vibration controller 623 is a microprocessor thereby satisfying the structural requirement of this means plus-function limitation.”). microprocessor, limitation 1.f further requires algorithmic structure (processed by the microprocessor of the recited “control component”) to include “1) computing a digital output value corresponding to user-selected amplitude of oscillation and outputting the value to the claimed power supply so that the power supply outputs an appropriate current amplitude to the coil.” Supra Section III.C (emphasis added). In other words, as Patent Owner argues, to satisfy limitation 1.f, the “prior art [at least] would need to have this microprocessor perform the algorithmic step of ‘provid[ing] a corresponding ‘output to the power supply.’” Prelim. Resp. 18. Patent Owner also argues that “[t]he Petition fails to show that this [algorithmic step] is disclosed or rendered obvious by the combination of Houston and Goldenberg.” Prelim. Resp. 18. The record supports Patent Owner. Petitioner does not contend, let alone show, that the combination of Houston and Goldenberg teaches outputting any value to a power supply as limitation 1.f requires according to the claim construction Patent Owner argues and we adopt. See Pet. 35–44; supra Section III.C. It follows that the Petition fails to show a reasonable likelihood of success of prevailing with respect to claim 1.” slip op. at 22
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“The specification, therefore, supports Patent Owner. The specification clearly links this algorithmic structure to the recited function, “controlling supply of power from the power supply.” As Patent Owner shows, Petitioner agreed in the Sony litigation that the corresponding structure includes “provide a corresponding output to the power supply so that the power supply provides a corresponding output to the driving component and equivalents thereof.” Prelim. Resp. 13 (quoting Ex. 2002, 9).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“microprocessor, limitation 1.f further requires algorithmic structure (processed by the microprocessor of the recited “control component”) to include “1) computing a digital output value corresponding to user-selected amplitude of oscillation and outputting the value to the claimed power supply so that the power supply outputs an appropriate current amplitude to the coil.” Supra Section III.C (emphasis added). In other words, as Patent Owner argues, to satisfy limitation 1.f, the “prior art [at least] would need to have this microprocessor perform the algorithmic step of ‘provid[ing] a corresponding ‘output to the power supply.’” Prelim. Resp. 18. Patent Owner also argues that “[t]he Petition fails to show that this [algorithmic step] is disclosed or rendered obvious by the combination of Houston and Goldenberg.” Prelim. Resp. 18. The record supports Patent Owner. Petitioner does not contend, let alone show, that the combination of Houston and Goldenberg teaches outputting any value to a power supply as limitation 1.f requires according to the claim construction Patent Owner argues and we adopt. See Pet. 35–44; supra Section III.C. It follows that the Petition fails to show a reasonable likelihood of success of prevailing with respect to claim 1.” slip op. at 23
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,369,081 - Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution deniedPTAB · Aug 23, 2024 · IPR2024-00458 · APJ Brian D Range · IPR · Institution
The Board denied institution on both §103 grounds because neither combination showed a reasonable likelihood that claims 1–4 and 11–14 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review on the grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (POSITA): would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing [graphical user interfaces (GUIs)] for computing devices. [Ex. 1003] ¶ 20–22. More education could substitute for experience and vice versa. Id. Pet. 14; see also Ex. 1003 ¶ 21 (Dr. Houh testifying that this level of skill is appropriate). Patent Owner does not dispute the level of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See 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 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner argues that in IPR2021-00786, the Board construed “plurality of views of a plurality of visual representations of computer content” as “referring to a plurality of ways of organizing visual representations of computer content.” Pet. 14–15 (citing IPR2021-00786, Paper 6, 13–16). IPR2021-00786 involved U.S. Patent No. 9,880,715 B2 (“the ’715 patent”). Petitioner further notes that “the Board found [this] limitation ‘is distinct from merely providing a plurality of ways of displaying content (by, for example, changing display orientation, color, resolution, etc.).” Id. Petitioner further argues that during a reexamination proceeding of the ’715 patent, “the Examiner also clarified that the ‘plurality of views’ limitation does not encompass merely changing to entirely different content.” Id. (citing Ex. 1005 (90/014,958 Ex Parte Reexamination)). Petitioner’s witness, Dr. Houh, applied this construction when forming opinions and Petitioner proposes that we adopt this construction in this proceeding. Ex. 1003 ¶ 53; Pet. 15.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Here, claim 1 requires the functionality of, for example, “selecting one of the plurality of views for display on the computer system in response to the detected current computer system configuration.” Ex. 1001, 71:34–36. As in Arendi and DSS, this functionality plays a major role in the subject matter claimed; this selection as at the heart of the ’818 patent. See, e.g., Ex. 1001, 2:49–62 (explaining that patent is directed to providing different views). We also determine that the limitation is not “unusually simple.” The cited art understood that display orientation could be modified based on a change in configuration (Pröll) and understood that a view could be selected based on a user’s active choice (the user shaking the device as in Martinez6), but the cited art did not recognize selecting a view based on a change of configuration. Prelim. Resp. 41. The evidence of record does not indicate that recognition of this function would be “unusually simple.”” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,564,818 - Apple Inc. v. RJ Technology, LLCInstitutedPTAB · Aug 20, 2024 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Apple’s motion to join IPR2023-01183.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition. And, for the reasons set forth below, we grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20197 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. at 11–12 (citing Ex. 1002 ¶¶ 50–51). Upon review of the prior art of record and the Petitioner’s arguments, we adopt Petitioner’s uncontested definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the ’641 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides constructions for the terms “A method for improving . . . characterized in that,” “ratio of positive electrode material to negative electrode material as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V” (claim 5), “as calculated by a specific capacity with a charge voltage limited to 4.2 V” (claim 1), and “at least 7500 of capacity” (claim 11). Pet. 8–11. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,749,641 - PTAB · Aug 14, 2024 · IPR2024-00207 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1–25, 38, and 39 on all asserted grounds, finding a reasonable likelihood that Motorola would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). 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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’249 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The mixing operation described in Botha appears materially different than that described in Löppönen. The Office acknowledged in allowing the ’249 patent that in Löppönen’s mixed stream, “the user still hears only one group at a time.” Ex. 1003 at 32, 76–77. That does not appear to be the case in Botha. In Botha, the combination of a variety of audio streams [occurs] in such a way that each participant will hear all other participants’ voices except their own. This is known as an ‘N minus l’ mix- where ‘N’ represents the sum of all audio streams entering a[t] the core logic of the invention, and the ‘minus l’ portion refers to the subtraction of the current participant’s stream from the stream returned to them. Ex. 1004, 10:35–43. 3. Conclusion Based on the current record before us, we determine that Petitioner is not asserting the same or substantially the same art or arguments previously presented to the Office with respect to Botha (Ground 1). Accordingly, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).3 E. Prior Art References” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art: would have had at least a B.S. degree in electrical engineering, computer science, or a similar field, plus approximately three years of industry in networking or communication systems, in particular address interoperability between different types of networks and satellite communications. Pet. 7–8 (citing Ex. 1002 ¶ 68). Patent Owner “does not dispute the proposal provided by Petitioner as to who would qualify as a POSITA.” Prelim. Resp. 6. pre-AIA law applies. See Prelim. Resp. Accordingly, we cite to pre-AIA § 103(a). We regard Petitioner’s definition as consistent with the ’249 patent and the asserted prior art, and the definition is supported by the testimonial evidence. Therefore, for the purpose of this Decision, we adopt Petitioner’s description. C. Claim Construction” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with Petitioner that we can determine whether to institute trial without having to resolve Petitioner’s assertion of indefiniteness. See Samsung, 948 F.3d 1355 (question of indefiniteness “is simply another ground on which the claims might be challenged in an appropriate forum,” and “does not necessarily preclude the Board from addressing the patentability of the claims on section 102 and 103 grounds”). Independent claim 25 is directed to a system for providing a push-to- talk proxy media service, reciting a “means for receiving,” a “means for mixing,” and a “means for transmitting,” among other things. Ex. 1001, 25:51–64. Petitioner identifies the recited functions and provides corresponding structures for these “means for” limitations recited by claim 25 pursuant to 35 U.S.C. § 112 ¶ 6. Pet. 10–11. Patent Owner “maintains that the proposed constructions for these three claim terms are overly limiting since the specification provides support for a broader range of structures, at the least, and does not concede to the constructions provided by Petitioner.” Prelim. Resp. 6. It is not necessary for us to resolve the claim construction issues identified by the parties in order for us to determine whether to institute inter partes review of the ’249 patent. Accordingly, for purposes of this Decision and based upon the preliminary record, we decline to expressly construe any of the claim terms at this point in the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). This preliminary Decision, however, does not prevent the parties from proposing, presenting evidence, or arguing a same or different construction of the claims during trial. The parties are encouraged to present their claim construction arguments and evidence as permitted by our rules.2 A final claim construction will be determined after the close of all the evidence and after any oral hearing in this matter. D. Discretionary Denial – 325(d)” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,145,249 - PTAB · Aug 13, 2024 · IPR2024-00511 · APJ Scott Raevsky · IPR · Institution
The Board instituted review of all challenged claims on all asserted grounds, finding a reasonable likelihood of success on the Shaffer-Keller obviousness challenge.
RulingsInstitution decision- 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 it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’949 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other
“below, we agree with Petitioner on this record that the ’852 patent claims lack priority to the parent application, Shaffer. For example, paragraph 34 of the ’299 application11 resulting in the ’852 patent explains that “IS 102 (FIG. 1) can determine if the endpoint 104 adheres to the rules of transmission.” Ex. 1004 ¶ 34. This paragraph does not state that any other device (such as the endpoint itself) receives a determination from the IS that the endpoint does not adhere to the rules of transmission. Figure 7, reproduced below, is similarly devoid of any such description: 11 U.S. App. No. 14/523,299 (Ex. 1004). The specification describes Figure 7 as “an example methodology that can facilitate dynamic communication between non-compatible communication devices.” Ex. 1004 ¶ 55. The specification further explains that “if the device demonstrates that it cannot comply with the behavioral characteristics of the interoperability system, the device can be attached to a VTG [virtual talk group] via a proxy,” in blocks 710 and 714 of Figure 7. Id. ¶ 56. But the ’299 application does not explain that this lack of compliance is communicated to any device, such as an endpoint.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner also sets forth a rationale to combine Shaffer and Keller. Id. at 33–34. For example, Petitioner argues that Shaffer’s goal was to provide a way for incompatible endpoints to work using “standards-based IP technologies,” and Keller’s SIP protocol is an established “standards-based IP technolog[y]” for signaling in PTT. Id. at 33 (citing Ex. 1016 ¶ 2; Ex. 1002 ¶ 155). Petitioner asserts that a POSITA would have looked for an example of such a system, such as Keller’s SIP-based system, for a PTT system as in Shaffer. Id. at 33–34. Combining these systems therefore 15 This appears to be a typographical error, as Petitioner appears to be quoting Ex. 1024 ¶ 122. “would have been seen by a POSITA as nothing more than a combination of known elements according to their established functions to achieve an expected result, and would been considered to constitute nothing more than a routine engineering task that was well within the skill level of a POSITA,” Petitioner argues. Id. at 34 (citing Ex. 1002 ¶ 155). On this record, we agree with Petitioner that the combination of Shaffer and Keller discloses limitation [1c] and determine that Petitioner articulates a sufficient rationale to combine these references.” slip op. at 15
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”) would have had “at least a bachelors’ degree in electrical engineering, computer science, or a similar field, plus approximately three years of industry in networking or communication systems, in particular address interoperability between different types of networks and satellite communications,” and that “[a]dditional education in the fields of electrical engineering or computer science, such as a masters or doctorate degree, could substitute for professional experience in the field.” Pet. 14–15. Petitioner adds that “[a] person with less or different education but more relevant practical experience, or vice versa, may also meet this standard.” Id. at 15. Patent Owner does not dispute Petitioner’s proposal. Prelim. Resp. 7. Based on the current record, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’852 patent and the asserted prior art.” slip op. at 6
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 9,319,852 - Home Depot U.S.A., Inc. v. Lynk Labs, Inc.All claims unpatentablePTAB · Jul 31, 2024 · PGR2023-00016 · APJ Stephen E Belisle · PGR · Final written decision
Claims 1–3, 5, 7–10, 12, 14–17, and 19 are unpatentable based on lack of written description, indefiniteness, anticipation, and obviousness.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateUnpatentable
“B. Claims 1–20 of the ’705 Patent Petitioner argues that claims 1–20 of the ’705 patent have an effective” slip op. at 19
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledUnpatentable
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
Patent outcomesUS 11,297,705 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,297,705
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.