- Google LLC v. Jenam Tech, LLCAll claims unpatentablePTAB · Nov 1, 2022 · IPR2021-00870 · APJ Scott B Howard · IPR · Final written decision
Claims 1, 7–10, 34, and 64–69 are unpatentable as obvious over Wookey and Berg; claims 11 and 12 are unpatentable as obvious over Wookey, Berg, and Eggert.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Institution Decision, “we adopt[ed] Petitioner’s proposed formulation of the level of ordinary skill in the art, except that we delete[d] the qualifier ‘at least’ to eliminate vagueness as to the amount of practical experience.” Inst. Dec. 7. For purposes of this proceeding, “Patent Owner adopts and applies the Board’s formulation for a POSITA [person having ordinary skill in the art].” PO Resp. 4. Accordingly, we find that a person having ordinary skill in the art would have an undergraduate degree in electrical engineering, computer engineering, computer science, or a related field along with two years of work experience in the field of networking. We have deleted Petitioner’s use of the qualifier “at least” to eliminate vagueness as to the amount of practical experience required. The qualifier expands the range indefinitely without an upper bound and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We apply the same claim construction standard used in the federal courts, in other words, the claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2020). Under the Phillips standard, the “words of a claim ‘are generally given their ordinary and customary meaning,’” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1312– 13. Petitioner argues that no terms need to be construed. Pet. 8–9. Similarly, Patent Owner does not request us to construe any claim terms in the Response. See PO Resp. Accordingly, we do not construe any terms of the ’945 patent. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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))).” slip op. at 12
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“Petitioner responds that Patent Owner acknowledges that the Federal Circuit in Mobility Workx, LLC v. Unified Patents, LLC “‘declined to find that the IPR process violates Due Process on [the] basis’ Patent Owner advocates (Response, 25). Thus, precedent precludes Patent Owner’s argument.” Pet. Reply 10 (alteration in original).12 Patent Owner concedes that its constitutional arguments are premised on the dissent in Mobility Workx and those arguments were rejected by the majority. 627 Tr. 41:18–42:13. Accordingly, we find Patent Owner’s arguments unpersuasive. See Mobility Workx, 15 F.4th at 1150–57; see also In re Palo Alto Networks, Inc., 44 F.4th 1369, 1377 (Fed. Cir. 2022) (“We conclude that the delegation of authority as to whether to institute IPR and PGR proceedings to the Board and the Director’s policy refusing to accept party requests for Director rehearing of decisions not to institute do not violate the Appointments Clause.”).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Furthermore, a person having ordinary skill in the art would have used Berg’s RUDP as the second protocol. See Ex. 1002 ¶¶ 157–169. Specifically, a person having ordinary skill in the art would have understood that “TCP [was] unsuitable for various applications” and used RUDP because it allows the nodes (computers) “to negotiate various parameters including the timeout values associated with timers for the retransmission timeout, acknowledgment timeout, null segment timeout, and transfer state timeout.” Id. ¶¶ 166–167 (citations omitted). A person having ordinary skill in the art would have combined the teachings of Wookey and Berg so that a TCP connection is used to transmit HTML page 288 from remote machine 30 to client machine 10 and that, based on HTML page 288, client machine 10 would use Berg’s RDP protocol to communicate with remote machine 30’. See id. ¶¶ 170–179. In making these findings, we credit the testimony of Dr. Lin, whose testimony is consistent with the disclosures of Wookey and Berg. As part of the communication link, client machine 10 performs claim limitations [1.g.], [1.h.], [1.i.], and [1.j.]. See section E.3.a; see also Ex. 1002 ¶¶ 181–217. Accordingly, Wookey teaches the disputed “causing” step recited in claim 1.” slip op. at 28
Patent outcomesUS 10,069,945 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,069,945 - Google LLC v. Jenam Tech, LLCAll claims unpatentablePTAB · Nov 1, 2022 · IPR2021-00869 · APJ Scott B Howard · IPR · Final written decision
Claims 1, 7–12, 34, and 64–69 are unpatentable as obvious over Wookey and Berg; claims 11 and 12 are also unpatentable over Wookey, Berg, and Eggert.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Institution Decision, “we adopt[ed] Petitioner’s proposed formulation of the level of ordinary skill in the art, except that we delete[d] the qualifier ‘at least’ to eliminate vagueness as to the amount of practical experience.” Inst. Dec. 7. For purposes of this proceeding, “Patent Owner adopts and applies the Board’s formulation for a POSITA [person having ordinary skill in the art].” PO Resp. 4. Accordingly, we find that a person having ordinary skill in the art would have an undergraduate degree in electrical engineering, computer engineering, computer science, or a related field along with two years of work experience in the field of networking. We have deleted Petitioner’s use of the qualifier “at least” to eliminate vagueness as to the amount of practical experience required. The qualifier expands the range indefinitely without an upper bound and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that no terms need to be construed. Pet. 8–9. Similarly, Patent Owner does not request us to construe any claim terms in the Response. See PO Resp. Accordingly, we do not construe any terms of the ’945 patent. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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))).” slip op. at 12
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“Petitioner responds that Patent Owner acknowledges that the Federal Circuit in Mobility Workx, LLC v. Unified Patents, LLC “‘declined to find that the IPR process violates Due Process on [the] basis’ Patent Owner advocates (Response, 25). Thus, precedent precludes Patent Owner’s argument.” Pet. Reply 10 (alteration in original).12 Patent Owner concedes that its constitutional arguments are premised on the dissent in Mobility Workx and those arguments were rejected by the majority. 627 Tr. 41:18–42:13. Accordingly, we find Patent Owner’s arguments unpersuasive. See Mobility Workx, 15 F.4th at 1150–57; see also In re Palo Alto Networks, Inc., 44 F.4th 1369, 1377 (Fed. Cir. 2022) (“We conclude that the delegation of authority as to whether to institute IPR and PGR proceedings to the Board and the Director’s policy refusing to accept party requests for Director rehearing of decisions not to institute do not violate the Appointments Clause.”).” slip op. at 13
- BurdenUnpatentable
“Based on the undisputed evidence and reasons set forth in the Petition, including the Lin Declaration (see Pet. 10–25, 39–52; Ex. 1002 ¶¶ 98–140, 170–217), which are not addressed by Patent Owner (see PO Resp.), we find that the combination of Wookey and Berg teaches each of those limitations and that a person having ordinary skill in the art would have combined the references with a reasonable expectation of success.” slip op. at 16
Patent outcomesUS 10,069,945 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,069,945 - PTAB · Nov 1, 2022 · IPR2022-00745 · APJ Nabeel U Khan · IPR · Institution
The Board instituted IPR on claims 15–20 and 22–33 for obviousness over Halbert and JESD21-C, finding a reasonable likelihood of success.
RulingsInstitution decision- Parallel petitionsDenied
“Petitioner filed two petitions, we decline to exercise our discretion to deny institution in this proceeding. We agree with Petitioner that a large number of claims have been asserted against it in district court and that addressing those 29 claims may necessitate filing two separate petitions. See TPG at 59 (“[T]he Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation.”) The fact that the same claims are not challenged between the two petitions weighs in favor of declining to exercise our discretion to deny institution. See Gen. Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16–17 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i).” slip op. at 10
- Skill levelSkill level petitioner adoptedOther
“been someone with an advanced degree in electrical or computer engineering and at least two years of work experience in the field, or a bachelor’s degree in such engineering disciplines and at least three years of work experience in the field.” Pet. 3 (citing Ex. 1003 ¶ 52). Patent Owner asserts it “does not contest Petitioner’s proffered definition of the level of a person of ordinary skill in the art.” Prelim. Resp. 7. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, except that we find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal. Thus, we determine at this stage of the proceeding, that a person of ordinary skill in the art would have been a person with an advanced degree in electrical or computer engineering and two years of work experience in the field of memory module design and operation, or a bachelor’s degree in such engineering disciplines and three years of work experience in the field.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party propose any constructions for any claim terms. See Prelim. Resp. 10–11; see also Pet. 6–7.3 We determine no terms need to be construed to resolve the disputes between the parties at this stage of the proceeding.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“At this stage of the proceeding, we are persuaded by Petitioner’s arguments that Halbert teaches limitations 15.4–15.6 for the reasons summarized above. Petitioner supports its contentions with citations from Halbert and JESD21-C and with unrebutted testimony from Dr. Oklobdzija. For example, Halbert discloses that registered DIMMs that have more than one bank of memory devices, such as that depicted in Figure 2 of Halbert, have bank select signals B0_SEL# and B1_SEL# that connect to corresponding banks of memory devices. Ex. 1005 ¶ 9. Similarly, JESD21-C discloses input chip select signals S0 and S1 that correspond with ranks of memory devices as shown in the block diagram of Raw Card Version N. Ex. 1006 at 15. Dr. Oklobdzija provides unrebutted testimony that it would have been obvious for a person of ordinary skill to include in the Figure 4 device chip select signals B0_SEL# and B1_SEL# with the ADD/CMD signals sent by the memory controller to module controller 110 similar to how those signals are input to register 25 in the Figure 2 device. Ex. 1003 ¶ 245. Dr. Oklobdzija testifies that both the Figure 2 and Figure 4 devices are designs of a registered DIMMs and that, because there are multiple memory plurality of chip select signals. Id. Dr. Oklobdzija also testifies that a person of ordinary skill would have been motivated to combine Figure 4 of Halbert with JESD21-C because both references are directed to improving the design of memory modules that use SDRAM. Id. ¶ 247. Dr. Oklobdzija testifies that a person of ordinary skill would have combined the two references to bring Halbert in compliance with an industry-wide governing standard such as JEDEC. Id.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,489,314 - Kaijet Technology International Limited, Inc. v. Sanho CorporationAll claims unpatentablePTAB · Oct 25, 2022 · IPR2021-00886 · APJ Joni Y Chang · IPR · Final written decision
Claims 1–6 and 13–17 are unpatentable over Kwon and Kuo, and over O’Shea, Kuo, and Chang; the O’Shea and Kuo ground alone fails for claim 1.
RulingsFinal written decision- Skill levelOther
“C. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors” slip op. at 18
- Expert testimonyOther
“1. Petitioner’s initial burden of production” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“For these reasons, we clarify that a main port module is a component” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“1. Petitioner’s initial burden of production” slip op. at 24
Patent outcomesUS 10,572,429 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,572,429 - PTAB · Oct 19, 2022 · IPR2022-00615 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR of claim 16 on all asserted § 103 grounds, finding a reasonable likelihood it would have been obvious over Perego-422, Perego-422 and Amidi, or Ellsberry.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Patent Owner contends that AIT establishes that a privy is a party that has a direct relationship to the petitioner with respect to the allegedly infringing product or service. Prelim. Resp. 15 (citing AIT at 1350). Patent Owner contends that Google uses memory products supplied by Petitioner. Id. at 16. Patent Owner, however, has not provided persuasive authority to show that a supplier-integrator relationship alone would be sufficient to establish privity. On the contrary, Petitioner provides compelling authority that a customer relationship alone does not trigger privity. Prelim. Reply 3 (citing Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329, 1340–41 (Fed. Cir. 2018); WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1319–20 (Fed. Cir. 2018)). Patent Owner argues that Petitioner represents Google’s interest in this proceeding. Prelim. Resp. 9–12. To the extent Patent Owner argues that Petitioner is a proxy under the fifth Taylor factor, we have already discussed above that Petitioner is representing its own interests in this proceeding, not Google’s. See Section III.A.1. Accordingly, Petitioner has shown that it is the sole real party-in- interest in this proceeding, and that Google is not a real party-in-interest or privy of Petitioner. Consequently, the Petition is not time-barred under § 315(b) contrary to Patent Owner’s assertions.” slip op. at 20
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We are also persuaded by Petitioner’s contention that there was no overlap between this proceeding and the ’912 patent claims asserted in the 2009 complaint until Patent Owner recently amended its complaints to assert claim 16 against Petitioner’s newly released products. Prelim. Reply 1; Ex. 1056; Ex. 1059; cf. Ventex, Paper 148, 9 (overlap between claims in litigation and inter partes review considered in analysis of unnamed real party-in-interest). Claim 16 of the ’912 patent was not included in the complaint against Google as originally filed in 2009 in the Northern District of California. Reply 1. Petitioner is correct that “it would be deeply unfair to allow [Patent Owner] to manufacture a time bar against [Petitioner]” merely by amending its complaints after the Petition was filed to assert claim 16 against Petitioner’s DDR4 products that did not exist when the 2009 complaint was filed against Google. See Prelim. Reply 4; AIT, 897 F.3d at 1351 (“Determining whether a non-party is a ‘real party in interest’ demands a flexible approach that takes into account both equitable and practical considerations, with an eye toward determining whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner” (emphasis added)). On this record, Petitioner has carried its burden to show that Petitioner is the sole real party-in-interest, i.e., that Google is not an unnamed real party in interest.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Patent Owner asks us to extend the General Plastic framework to discretionarily deny the Petition due to the prior inter partes reexamination of the ’912 patent requested by Google and others. Although Patent Owner rightly asserts that Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019- 00062, Paper 11, at 8–15 (PTAB Apr. 2, 2019) (precedential) applied General Plastic when a previous challenge was brought by a different petitioner (Prelim. Resp. 18), Patent Owner points to no authority that General Plastic has ever been applied to deny institution of a petition based on a prior reexamination. We decline to extend General Plastic to discretionarily deny the Petition on this basis. In addition to General Plastic, Patent Owner relies on Vivint as supporting its contention that the Petition should be discretionarily denied due to the inter partes reexamination of the ’912 patent. Prelim. Resp. 17. The facts in Vivint, however, are distinguishable from this proceeding. In Vivint, a petition for inter partes review was denied as “undesirable, incremental petitioning” and then the Office granted ex parte reexamination based on substantial new grounds of patentability, some of which were the same grounds raised in the inter partes review, while others were different. Vivint, 14 F.4th at 1353–54. In contrast, the arguments raised here are not the same as in the previous inter partes reexamination. Consequently, we determine that General Plastics under § 314(a) is not applicable to the facts of this proceeding.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Thus, under the first part of Advanced Bionics, we find that same or substantially the same art or arguments previously were presented to the Office regarding Ellsberry.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,619,912 - PTAB · Oct 7, 2022 · IPR2022-00793 · APJ Debra K Stephens · IPR · Institution
Instituted IPR on claims 1–5, 8, 11, 12, 14, 15, 27, and 28 for both § 103 grounds based on Muthukumarasamy alone and with Hayward.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is 2 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. 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. (Interim Procedure 3, 9). Here, Petitioner has filed a stipulation: Petitioner has stipulated that if the Board institutes IPR on this Petition, it will not pursue in the related district court proceeding “any ground that [Petitioner] raised or reasonably could have raised” during this proceeding. (Pet. Reply to POPR 4 (citing Interim Procedure 3; Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18‒19 (PTAB Dec. 1, 2020); 35 U.S.C. § 315(d); Ex. 1017) (alteration in original)). Thus, in light of Petitioner’s stipulation, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Preliminary Determination Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claim 1.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a “person of skill in the art (‘POSA’) would have had at least a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems” (Pet. 12 (citing Ex. 1005 ¶¶ 45–49)). Petitioner further asserts “[w]ith more education, for example, postgraduate degrees and/or study, less more experience can substitute for formal education” (id.). Patent Owner does not dispute Petitioner’s assertion (see Prelim. Resp. 24). Based on the present record including the disclosure in the ʼ528 Patent, we apply Petitioner’s definition of the level of ordinary skill in the art (see Pet. 12) with the exception of the open-ended phrase “at least,” which expands the range of educational experience indefinitely without an upper bound, i.e. “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems.” We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ528 Patent and the prior art of record (cf. Okajima, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that we “need not construe any claims” to resolve this controversy and that it “adopts” Patent Owner’s “proposed plain and ordinary meaning for all terms [from] the parallel district court action” (Pet. 12–13 (citing Ex. 1005 ¶ 50; Ex. 1014)). Patent Owner does not assert any particular claim construction at this stage in the proceeding (Prelim. Resp. 24). On this record, we determine that no terms or phrases in the claims require express construction (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)))).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,782,528 - PTAB · Oct 7, 2022 · IPR2022-00794 · APJ Daniel J Galligan · IPR · Institution
Instituted IPR on claims 1, 2, and 6–8 for both asserted obviousness grounds: Muthukumarasamy alone and Muthukumarasamy with Hayward.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is 2 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. 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. Interim Procedure 9. Here, Petitioner has filed a stipulation: Petitioner has stipulated that if the Board institutes IPR on this Petition, it will not pursue in the related district court proceeding “any ground that [Petitioner] raised or reasonably could have raised” during this proceeding. Paper 7 at 4 (citing Interim Procedure 3; Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020); 35 U.S.C. § 315(d); Ex. 1017) (alteration in original).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the foregoing reasons, on the record before us, we are persuaded that the Petition establishes a reasonable likelihood that Petitioner would prevail in showing that at least one claim of the ʼ289 Patent is unpatentable. IV. ORDER For the reasons given, it is: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes is instituted on all the challenged claims with respect to all grounds set forth in the Petition; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of the ’289 Patent is instituted commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is given of the institution of a trial.” slip op. at 39
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s assertion. See Prelim. Resp. 21. Based on the present record including the disclosure in the ʼ289 Patent, we apply Petitioner’s definition of the level of ordinary skill in the art (see Pet. 14) with the exception of the open-ended phrase “at least,” which expands the range of educational experience indefinitely without an upper bound, i.e. “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems.” We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ289 Patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner asserts that we “need not construe any claims to resolve [this] controversy” and that it “adopts” Patent Owner’s “proposed plain and ordinary meaning for all terms [from] the parallel district court action.” Pet. 14–15 (citing Ex. 1014). Patent Owner does not assert any particular claim construction at this stage in the proceeding. Prelim. Resp. 21. On this record, we determine that no terms or phrases in the claims require express construction. 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))).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,904,289 - PTAB · Sep 30, 2022 · IPR2022-00795 · APJ Debra K Stephens · IPR · Institution
The Board instituted inter partes review on claims 1, 2, and 5–9 under both §103 grounds because the petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) 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 (Interim Procedure 3, 9). Here, Petitioner has filed a stipulation: Petitioner has stipulated that if the Board institutes IPR on this Petition, it will not pursue in the related district court proceeding “any ground that [Petitioner] raised or reasonably could have raised” during this proceeding. (Pet. Reply to POPR 4 (citing Interim Procedure 3; Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18‒19 (PTAB Dec. 1, 2020); 35 U.S.C. § 315(d); Ex. 1017) (alteration in original)). Thus, in light of Petitioner’s stipulation, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the present record including the disclosure in the ʼ251 Patent, we apply Petitioner’s definition of the level of ordinary skill in the art (see Pet. 13) with the exception of the open-ended phrase “at least,” which expands the range of educational experience indefinitely without an upper bound, i.e. “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems.” We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ251 Patent and the prior art of record (cf. Okajima v. Bourdeau, 261 F.3d art)).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On this record, we determine that no terms or phrases in the claims require express construction (see Realtime Data, LLC v. Iancu, 912 F.3d 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)))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“particular media player for playing the video content,” as recited in claim 1 (Pet. 34–41). On the record before us, we determine Petitioner supports that combination with adequate rationale, including that the combination “facilitate[s] the source-agnostic presentation of internet content” and “facilitate[s] presentation of internet content at the display device using any number of media players through embedded media player pages” (id. at 40 (citing Ex. 1005 ¶ 102); see id. 15–18). Accordingly, based on the record before us, Petitioner has shown sufficiently that the combination of Muthukumarasamy and Hayward teaches or suggests “receiving, in the server system, one or more signals from the personal computing device, the one or more signals . . . identifying a particular media player for playing the video content,” as recited in claim 1.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,356,251 - PTAB · Sep 19, 2022 · IPR2022-00569 · APJ Jeffrey S Smith · IPR · Institution
IPR instituted on all asserted grounds for claims 1–14; the Board found a reasonable likelihood that Petitioner would prevail on the challenged obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and 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 that follow, we determine that institution of inter partes review of claims 1–14 is warranted.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner’s contention is implicitly based on construing the scope of “to conceal the pre-installed base” to exclude partially concealing the preinstalled base. We construe the scope of “to conceal the pre-installed base” to encompass partially concealing the pre-installed base. Our construction of this term is not final, and we invite the parties to present arguments and evidence in support of or in opposition to our construction. On this record, the Petition and supporting evidence sufficiently show that ILP Retrofit’s disclosure of a retrofit that prevents the bottom and portions of the sides of the pre-installed base from being seen teaches “to conceal the pre-installed base” as claimed. Ex. 1009, slide 5; Ex. 1010, screenshot 29.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“However, Patent Owner’s contentions do not address Petitioner’s proposed modification. Petitioner contends that a person of ordinary skill, when deciding whether to remove the tombstones or to leave the tombstones in place, would consider factors such as the difficulty of removing the tombstones, as well as installation time, labor costs, and disposal costs. Pet. 12–14 (citing Ex. 1005, 1:64–2:2, 2:6–17, Fig. 11; Ex. 1003 ¶ 73); see id. at ¶ 55. Thus, Petitioner does not contend that a person of ordinary skill would always leave the tombstones in place. Rather, Petitioner, relying on the testimony of Dr. Ducharme, contends that when the costs of removing the tombstones are greater than the costs of leaving the tombstones in place, a person of ordinary skill would have left the tombstones in place, and would have done so using ordinary skill and common tools available at the time of invention. Id. at 12–14, 53 (citing Ex. 1003 ¶¶ 205–207). On this record, we agree with Petitioner and Dr. Ducharme. Patent Owner contends that the Petition and Dr. Ducharme rely on conclusory statements rather than a meaningful, articulated explanation with rational underpinning to support the conclusion of obviousness. Prelim. Resp. 23. We disagree. Dr. Ducharme relies on the teachings of several prior art references to show that a person of ordinary skill, after determining that the costs of removing the tombstones are greater than the costs of leaving the tombstones in place, would have left the tombstones in place and would have increased the lengths of the profiles to accommodate the tombstones in order to yield the predictable benefits of reducing labor costs, reducing installation time, and reducing disposal costs of hazardous materials. Ex. 1003 ¶¶ 73–89 (citing Ex. 1005, 1:64–2:2, 2:6–17, Figs. 10 and 11; Ex. 1007 ¶ 18, Fig. 4; Ex. 1012, 2:56–3:10; Ex. 1014 ¶¶ 6–7, Fig. 1; Ex. 1015, 2:2–5). Dr. Ducharme’s testimony is sufficiently supported by evidence. The Petition and supporting evidence provide an articulated reasoning with a rational underpinning to support the legal conclusion of obviousness. See KSR Int’l., 550 U.S. at 418 (citing 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.”)). Disputed limitation of claim 12” slip op. at 18
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 10,429,041 - PTAB · Sep 19, 2022 · IPR2022-00534 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 4–12, and 18–28 on all asserted grounds, finding a reasonable likelihood of prevailing on the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and 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 that follow, we determine that institution of inter partes review of claims 1, 2, 4–12, and 18–28 is warranted.” slip op. at 2
- BurdenDecided for petitioner
“We disagree with Patent Owner. Dowling discloses that modified fixture 2000 could be recessed, such that housing 2402 is concealed behind a ceiling. Ex. 1007 ¶ 9; see id. ¶¶ 11–12, 106–107, 114. On this record, we are sufficiently persuaded that when modified conventional lighting fixture 2000 of Dowling is recessed as taught by Dowling, a person of ordinary skill would have inverted the fixture as contended by Petitioner, such that fixture housing 2402 is concealed behind a ceiling. We are also persuaded that a person of ordinary skill would have recognized that LEDs 104 of the retrofit kit would be more effective when facing an area that the LEDs are intended to illuminate, such as the area under the ceiling as shown in inverted Figure 4. See Pet. 28–29; Ex. 1003 ¶ 175. On this record, the Petition and supporting evidence sufficiently shows that Dowling, in view of the knowledge of a person of ordinary skill, teaches “the light panel defining a raceway external to and above the light panel and below the previously-installed light fixture” which is “attached to the ceiling of a building” as recited in claim 1. Disputed limitation of claim 18” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner contends that, with respect to claims 1 and 18, limitations in the body of each claim find antecedent basis in the preambles. Prelim. Resp. 8. In particular, Patent Owner contends that “the previously-installed light fixture” and “the first tombstone and the second tombstone” recited in the body of claim 1 find antecedent basis in the preamble. Id. Patent Owner contends that “the ceiling light fixture,” “the second side,” “the first tombstone,” and “the second tombstone” recited in the body of claim 18 find antecedent basis in the preamble. Id. at 8–9. We do not need to construe the preambles at this stage to resolve any controversy. Even were we to consider the preambles as limiting, Petitioner has sufficiently shown that the prior art teaches the preambles, as discussed below in the context of our unpatentability analysis. Should the parties believe that construing the preambles is necessary to resolve a dispute, we invite the parties to present any arguments they wish to make regarding construction of the preambles in the appropriate trial paper (e.g., Patent Owner’s Response, Petitioner’s Reply).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We do not agree with Patent Owner that the scope of “disconnecting electrical connections” as claimed is limited to “sever.” Looking at the intrinsic evidence, claim 24 does not recite “permanently disconnecting.” Further, the specification does not define disconnecting electrical connections as limited to permanently disconnecting the connections. Although the specification gives an example of a de-energized ballast, the specification does not disclose that the electrical connections to the ballast must remain permanently disconnected. See Ex. 1001, 5:60–63. Further, the specification does not indicate that the claim is limited to this disclosed embodiment, and we decline to read this embodiment into the claim. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1327 (Fed. Cir. 2012) (“[I]t is improper to read limitations from a preferred embodiment described in the specification – even if it is the only embodiment – into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.”); Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[C]laims may embrace ‘different subject matter than is illustrated in the specific embodiments in the specification.”’).” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,837,628
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.