- PTAB · Sep 5, 2023 · IPR2023-00154 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood of success on the IMU–Okabe and IMU–Okabe–Li obviousness grounds and rejecting the § 315(b) time-bar argument.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“district court complaint does not trigger the time bar under § 315(b). Federal Rule of Civil Procedure 10 requires that “an exhibit to a pleading is a part of the pleading for all purposes.” Fed. R. Civ. P. 10(c); see also Rodriguez v. Fla. Dept. of Corrections, 748 F.3d 1073, 1076–77 (11th Cir. 2014) (“Because the Civil Rules require service of all pleadings, it follows that the exhibits to the pleading must also be served, regardless of whether they were filed at the same time.”); Sixta v. Thaler, 615 F.3d 569, 572 (5th Cir. 2010); Ringgold v. Burgett, Inc., No. 2:22-cv-00836, 2022 WL 8044117, at *2 (E.D. Cal. Oct. 17, 2022). Here, Exhibits A–D to the complaint filed in the district court are part of the complaint. See Ex. 1026.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that all claim terms should be given their plain and ordinary meaning at this stage of the proceeding. Pet. 8 (citing Ex. 1002 ¶ 47). Patent Owner does not propose any claim construction in its Preliminary Response. On the present record, we do not discern a need to construe explicitly any 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)).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“given this laborious, non-graphical process for extracting a frame and creating a subsequent animation of the frame image in IMV6, a [person of ordinary skill in the art] would have been motivated to modify IMV6 (as described in IMU) by at least enabling a user to animate an already-extracted frame image using simpler and more intuitive graphical user commands. Id. at 68–69 (citing Ex. 1002 ¶ 168). Petitioner contends that “Okabe teaches simple and graphical user commands that a [person of ordinary skill in the art] would have found well-suited for implementing a GUI for at least animating an image (e.g., a frame image) in IMV6.” Id. at 69–70 (citing Ex. 1002 ¶ 170). According to Petitioner, “Okabe’s simple and graphical user commands thus enable creating looping animations ‘with less effort than with previous methods’ and ‘markedly reduces the user burden.’” Id. at 70 (citing Ex. 1009, 1–2; Ex. 1002 ¶ 170). Petitioner argues that a person of ordinary skill in the art “would have been motivated to modify IMV6 to include Okabe’s simple and graphical user commands to make the animation process easier, graphical, and less time consuming.” Id. (citing Ex. 1002 ¶ 171).” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,621,469 - PTAB · Sep 5, 2023 · IPR2023-00153 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted IPR on claims 1–18, finding a reasonable likelihood of success on the IMU–Okabe and IMU–Okabe–Li grounds; it found the petition timely under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“addresses a situation where a pleading is deficient (where a party lacked standing to sue) and not situations, such as here, where the service itself was defective. See GoPro, Paper 38 at 12–15. GoPro requires us to consider “the date on which a complaint was served in accordance with the law.” Id. at 15 (emphasis added); Sur-reply 4 (quoting GoPro, Paper 38 at 15). In fact, GoPro points out that the Board has recognized that “a complaint improperly served does not trigger the § 315(b) time bar.” GoPro, Paper 38 at 14 (citing IpDatatel, LLC v. ICN Acquisition, LLC, IPR2018-01823, Paper 17 at 10–18 (PTAB Apr. 17, 2019)). In IpDatatel, the Board explained that “served” in § 315(b) requires compliance with Rule 4 of the Federal Rules of Civil Procedure, and that mere “notice” is not “legally effective” “service.” See IpDatatel, Paper 17 at 13–18 (rejecting patent owner’s argument as conflating “service” with “notice”) (citing Freedom Watch, Inc. v. Org. of the Petroleum Exporting Countries, 766 F.3d 74, 81 (D.C. Cir. 2014)); see also In-Depth Geophysical, Inc. v. ConocoPhillips Co., IPR2019-00850, Paper 14 at 10 (PTAB Sept. 6, 2019) (same).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least one 1–2 years of experience in image processing and animation,” and “[l]ess education could have been compensated with more experience, and vice versa.” Pet. 5–6 (citing Ex. 1002 ¶¶ 23–24). Petitioner adds that one of ordinary skill in the art “would have also been familiar with existing systems for image processing and animation, and would have understood how to implement such systems.” Id. at 6. Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Prelim. Resp. 1–4. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any 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))).” slip op. at 14
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,346,017 - Apple Inc. v. Logantree, LPAll claims unpatentablePTAB · Aug 30, 2023 · IPR2022-00040 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–5, 8–11, 20, 25, 30–32, 36, 39–42, 45–51, 61–65, 144, and 147 are unpatentable, principally as obvious over the grounds decided.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 8. In proposing a different level of ordinary skill in the art, Patent Owner does not explain why its proposed skill level is more appropriate.13 PO Resp. 18. In addition, the parties’ proposed definitions are substantially similar. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We determine that we need not expressly construe “movement sensor” to resolve the parties’ disputes because doing so would have no effect on the analysis below. 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, 200 F.3d at 803 (Fed. Cir. 1999)). To the extent the parties raise claim construction issues in addressing the asserted grounds, we address such issues below.” slip op. at 11
- Expert testimonyPatent owner expert creditedDecided for patent owner
“any weight. Reply 29–30. First, Petitioner contends that the Patent Owner Response does not provide a single citation to Dr. Madisetti’s declaration, Exhibit 2005. Id. at 29. However, Patent Owner explains that the Patent Owner Response mistakenly cites to Exhibit 2001 instead of Exhibit 2005 due to a filing error and confirms that Dr. Madisetti’s declaration is persuasive. Petitioner also argues that Dr. Madisetti’s testimony in Exhibit 2005 is not based on underlying facts because, in the 60-paragraph declaration, only paragraphs 32–35 and 59 have any citations. Reply 29. Petitioner also asserts that Dr. Madisetti refused to answer questions and provide clarification during his deposition. Id. at 30 (citing Ex. 1040, 30:3–20, 52:2–14, 78:16–84:4). Patent Owner states that it served a supplemental declaration in response to Petitioner’s Objection to Evidence months before the deposition of Dr. Madisetti.14 Sur-reply 20. On this record, we decline to discount Dr. Madisetti’s testimony in its entirety as suggested by Petitioner. Instead, we consider Dr. Madisetti’s testimony, as we do all expert testimony, in accordance with governing law and Board rules. E. Ground 1: Asserted Obviousness Based on Allum, Raymond, and Conlan” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We agree with Petitioner. Allum’s and Conlan’s design schemes, although different, are not mutually exclusive. Indeed, in addition to the pushbuttons, Conlan’s monitor includes a movement senor for detecting a full range of a subject’s movement and a memory in which data obtained by the monitor can be stored and later retrieved for evaluation. Ex. 1010, 2:60–63, 3:56–58, 4:47–49. As such, Conlan combines the pushbuttons for a user to tell the device about the user’s condition with a movement senor and a memory that enables the device to tell the user (or another person) about the user’s conditions (i.e., the user’s movements). Furthermore, even if Conlan did not disclose using two design schemes together, the differences in the design schemes identified by Patent Owner would not prevent one of ordinary skill in the art from considering combining the references. Rather, as Petitioner asserts, adding Conlan’s pushbuttons would allow the resulting device to gather additional data relating to a particular event, such as a feeling of dizziness, that pertains to the subject’s balance or movement. See Pet. 21–22 (citing Ex. 1010, 6:38–46; Ex. 1003 ¶¶ 78–79); see also id. at 34 (arguing that “switches 22, ‘dizziness,’ and, when depressed, the switches 22, 23 ‘cause that occurrence to be recorded in the internal memory of the monitor’”). We are persuaded that one of ordinary skill in the art would recognize such additional data to be beneficial to Allum’s diagnostic and rehabilitative tool for people prone to abnormal falling and wishing to improve movement control.” slip op. at 18
Patent outcomesUS 6,059,576 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,059,576 - Apple Inc. v. Logantree, LPNo claims unpatentablePTAB · Aug 30, 2023 · IPR2022-00037 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–5, 8–11, 20, 25, 30–32, 36, 39–42, 45–51, 61–65, 144, and 147 were not shown unpatentable under the asserted obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 8. In proposing a different level of ordinary skill in the art, Patent Owner does not explain why its proposed skill level is more appropriate.12 PO Resp. 16. In addition, the parties’ proposed definitions are materially similar. 12 Petitioner does not address the level of ordinary skill in the art in its Reply. definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we need not expressly construe “movement sensor” to resolve the parties’ disputes because doing so would have no effect on the analysis below. 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, 200 F.3d at 803 (Fed. Cir. 1999)). To the extent the parties raise claim construction issues in addressing the asserted grounds, we address such issues below.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Also, the Petition merely states that “Ono supports instances where the user stops the step-counting mode operation using switch S2 after the processor detects that” the target distance or the target number of steps has been reached and notifies the user by generating an alarm sound. Pet. 53 (emphasis added). In this case, supporting the notion of the user stopping the step-counting mode operation in response to the alarm is not the same as teaching or suggesting the notion to one of ordinary skill in the art. The possibility that a user could stop the step-counting operation in response the alarm is insufficient to render claims 1 and 20 obvious to one of ordinary skill in the art. See In re Facebook, Inc., 743 F. App’x. 998, 1001–02 (Fed Cir. 2018) (deciding that an example in a prior art reference showing that it is possible for image elements to be contiguous is not sufficient to teach a LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Petitioner’s reliance on the Hewlett-Packard and Unwired Planet cases (Pet. 56) is unavailing, as the facts in those cases are distinguishable from the facts of the present proceeding. Namely, both of those cases involved prior art references that disclosed operations that satisfied a claimed feature some, but not all, of the time. Hewlett-Packard, 340 F.3d at 1326; Unwired Planet, 841 F.3d at 1002. Here, Ono does not disclose the user stopping the step-counting mode operation in response to the alarm even some of the time. In view of the above, we determine, based on the full record, that the combination of Ono and Hutchings does not disclose limitations [1f] or [20f]. Accordingly, we are not persuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claims 1 and 20 are unpatentable over the combination of Ono and Hutchings.” slip op. at 28
- BurdenNot shown unpatentable
“We have determined incorporated Grounds 1, 2, 3A, 3B, and 4, as well as Ground 5A, deficient for the reasons discussed above. Furthermore, to the extent Petitioner contends that any of these combinations somehow adds something to supplement or strengthen the patentability analysis of the incorporated grounds, we note that neither the Petition nor Dr. Kenny provides sufficient particularity to support such a position. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Accordingly, we are not persuaded on the complete record before us that Petitioner has demonstrated, by a preponderance of the evidence, that: (1) claims 48, 50, and 51 are unpatentable over the combination of Ono, Hutchings, Amano, Conlan, Kaufman, and Hickman (Ground 5B); (2) claims 1–5, 8–11, 20, 25, 30, 31, 36, 39–42, 45–47, 49, and 61–65 are unpatentable over the combination of Ono, Hutchings, Amano, and Conlan (Ground 6A); (3) claims 48, 50, and 51 are unpatentable over the combination of Ono, Hutchings, Amano, Conlan, and Hickman (Ground 6B); (4) claims 1, 3–5, 8–11, 20, 25, 30, 36, 39–42, 61–65, 144, and 147 are unpatentable over the combination of Ono, Hutchings, Amano, and Kaufman (Ground 7); (5) claims 1–5, 8, 10, 20, 25, 30, 31, 39, 41, 42, 45–47, 49, 61–65, 144, and 147 are unpatentable over the combination of Ono, Hutchings, Conlan, and Kaufman (Ground 8A); and (6) claims 48, 50, and 51 are unpatentable over the combination of Ono, Hutchings, Conlan, Kaufman, and Hickman (Ground 8B).” slip op. at 36
Patent outcomesUS 6,059,576 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,059,576 - Rideco Inc. v. Via Transportation, Inc.No claims unpatentablePTAB · Aug 17, 2023 · IPR2022-00740 · APJ Michael L Woods · IPR · Final written decision
Petitioner failed to prove claims 1–13, 15, and 17–20 unpatentable under the asserted obviousness grounds, chiefly because Lambert did not teach system-selected virtual bus stops.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Having considered the parties’ arguments and evidence of record, we adopt Petitioner’s asserted level of ordinary skill. We find that Petitioner’s level of skill is consistent with the problems identified and solutions provided in the ’411 patent and the prior art. In particular, we agree with Petitioner that the relevant field of art is not limited to the backend artificial intelligence components in a ride-sharing system, as Patent Owner contends. See Pet. Reply 6–7; see also PO Resp. 20–23. We disagree with Patent Owner’s assertions that the ’411 patent is directed towards a complex artificial intelligence system far beyond the scope of traditional navigation systems. See PO Resp. 20–23. Neither Patent Owner nor its expert, Dr. Jacquillat, cites to the patent to explain why the art of the ’411 patent is limited to artificial intelligence components in determining the relevant skill in the art. See id.; see also Ex. 2022 ¶¶ 41–51. As Patent Owner acknowledges, the ’411 patent makes no reference to “artificial intelligence” directly, and Patent Owner instead relies upon declarant testimony to argue that the patent is directed towards an advancement in artificial intelligence. PO Sur-reply 11. Patent Owner claims that “programming a computer to make decisions in the place of humans is a form of artificial intelligence.” Id. Regardless, we need not determine the precise definition of artificial intelligence to determine the relevant skill in the art for a patent that never even uses the term. We agree with Petitioner that a skilled artisan with an understanding of computer programming and navigation systems, as well as two to four years of experience in location-based systems, would understand the “computer-implemented transportation system” of the ’411 patent. In summary, we find that the relevant level of ordinary skill in the art “would have been a person having (i) a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field[;] (ii) a working knowledge of computer programming and navigation systems; and (iii) two to four years of experience with location-based systems, user interfaces and databases.” Pet. 5–6 (citing Ex. 1003 ¶ 37).” slip op. at 14
- Expert testimonyDecided for petitioner
“Additionally, we find that Mr. Andrews’s background would qualify him as a person of ordinary skill in the art even if we adopted Patent Owner’s proposed level of ordinary skill in the art. Under Patent Owner’s proposal, a person of ordinary skill in the art would have a “degree in computer science, operations research, industrial engineering, applied mathematics, or a related field with at least two years of experience with optimization modeling, large scale optimization algorithms, or artificial intelligence solutions in the context of ride-sharing systems.” PO Resp. 30 (emphasis added). The record demonstrates that Mr. Andrews meets these qualifications. Mr. Andrews possesses a Bachelor of Science degree in Electrical Engineering and a Master of Science degree in Electronic Engineering, which we find to be in a “related field.” Ex. 1003 ¶ 6. Additionally, Mr. Andrews has significantly more than two years of experience in the fields Patent Owner suggests are relevant as evidenced by, for example, Mr. Andrews’s testimony that he has experience in “locationbased systems,” and “work[ing] in database dispatch systems for fleet management.” Ex. 2023, 44:2–9; 44:15–19. This experience demonstrates that Mr. Andrews had at least two years of experience in “optimization modeling.” The parties agree, however, that Mr. Andrews does not have experience working with ride-sharing systems. Nevertheless, Patent Owner’s definition includes artisans who lack that particular experience. Specifically, Patent Owner’s definition provides that: A person with an advanced degree (a master’s or Ph.D.) in computer science, operations research, industrial engineering, applied mathematics or a related field and a focus on data science, artificial intelligence or operations research would also have been an ordinary artisan in the field of the ’411 patent even if that person lacked two years of specific experience with ride-sharing systems. PO Resp. 20 (emphases added). In other words, even if the first prong of Patent Owner’s definition requires the expert’s experience to be “in the context of ride-sharing systems,” Mr. Andrews would nevertheless satisfy the qualifications of a POSITA under the second prong, which does not require experience with “ride-sharing systems.” See id. This Decision does not turn on the differences between the parties’ characterization of a skilled artisan.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“The parties are in agreement. Despite the parties’ briefing on this term, the parties do not dispute the construction of “virtual bus stops.” Absent any controversy, we adopt the parties agreed-upon construction of the term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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))). Specifically, we adopt the parties’ construction that “virtual bus stops” means “pickup and dropoff locations selected by the ride-sharing system itself.” Compare PO Resp. 23, with Pet. Reply 4. We further adopt the parties’ construction that the system need not use artificial intelligence—whatever that may mean—to select the virtual bus stops. Compare PO Sur-reply 5, with Pet. Reply 4; see also supra § III.A (“[W]e need not determine the precise definition of artificial intelligence to determine the relevant skill in the art pertaining to a patent that never even uses the term.”).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“performs actions (see, e.g., Ex. 1004, 2:49–52; 2:63–67, 3:19–20, 3:34–35), we decline to infer from Lambert’s single sentence (id. at 4:17–23) that Lambert’s server is also programmed to perform the step of “dynamically selecting pickup and dropoff locations” (i.e., virtual bus stops). In other words, if Lambert’s server was programmed to select pickup and dropoff locations, as Petitioner would have us believe, we find that Lambert’s disclosure would have stated so. It does not.” slip op. at 39
Patent outcomesUS 10,197,411 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,197,411 - Evolution Well Services, LLC v. BJ Energy Solutions, LLCAll claims unpatentablePTAB · Aug 16, 2023 · IPR2022-00399 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–3, 6–8, 10, 12, 13, 15, and 18–20 are unpatentable as obvious under § 103 over the instituted prior-art combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for 3 For Exhibit 2010, Patent Owner cites to reference pagination rather than the exhibit pagination. For consistency, we cite to the same pagination. purposes of this Decision, adopt it as our own. Also, we note that we would reach the same conclusions herein under Patent Owner’s proposed definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party proffers a definition for any claim term. Pet. 2; generally PO Resp. For purposes of this Decision, and based on the record before us, we determine that no construction of any term is necessary. slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We agree that Mr. Marscher’s cited testimony from another Board proceeding was in regard to variable frequency drives rather than electric fracturing. There, Mr. Marscher testifies that variable frequency drives 6 For Exhibit 2016, Petitioner sometimes cites to exhibit pagination rather than the reference pagination. For consistency, we convert those citations to the reference pagination. 7 Although Patent Owner cites to “EX1027, 181:10-17” (PO Sur-reply 28), the quoted language is in Exhibit 2017. capable of working with large motors were known in the hydraulic fracturing community. See, e.g., Ex. 2017, 181:10–17. Regarding Mr. Marscher’s experience with particular fracturing jobs, the questions posed to Mr. Marscher were whether Mr. Marscher had overseen any fracking operations (Ex. 2016, 120:18) and whether he had designed operating parameters for a drilling job (id. at 125:9–12). The fact that Mr. Marscher has designed equipment for use in fracking operations (see, e.g., Ex. 1003 ¶¶ 5–7), despite not “overseeing” any fracking operations, qualifies him as an expert in this proceeding. Mr. Marscher’s experience is also within Patent Owner’s proffered definition of a person having ordinary skill in the art. See PO Resp. 6–7. We also agree that Patent Owner’s criticism regarding Mr. Marscher’s lack of experience overseeing or designing parameters for a particular hydraulic fracturing job is not germane to the ’049 patent, which does not address such particulars. Similarly, Patent Owner fails to explain persuasively how Mr. Marscher’s opinion regarding the desirability of having spare pumps onsite at a fracturing operation is relevant to his testimony or the ordinary level of skill in the art. Moreover, as correctly noted by Petitioner, the two references relied upon by Patent Owner as “objective documentary evidence” both refer to spare capacity rather than spare fracturing trailers as asserted by Patent Owner. See PO Resp. 2 (citing Ex. 2025, 2:11–19; Ex. 2026, 3), 10 (citing Ex. 2025, 2:11–19); see also Ex. 2016, 119:11–23 (discussing operating with spare pump capacity).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“would otherwise be needed for two pump-motor sets or to allow one motor to drive two pumps. Petitioner’s declarant provides examples of such additional equipment that would not be needed, including an additional prime mover (presumably a second motor to drive the second pump) and a transfer case (presumably to split power from a single motor into two pumps). Ex. 1003 ¶ 54. We find this argument a persuasive explanation for why an ordinarily skilled artisan would have adopted the pump-motor-pump configuration disclosed by Stout. Patent Owner appears to agree that using a single motor to power two of Zhang’s pumps provides some benefits. PO Resp. 23 (“Of course, one motor replacing two theoretically ‘consolidates’ the driveline by requiring one less piece of machinery.”). Patent Owner’s arguments, summarized above, asserting drawbacks associated with Petitioner’s proposed modification are unavailing, as “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). “The fact that [Petitioner’s asserted] motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). As summarized above, Petitioner persuasively responds to Patent Owner’s assertions of such lost benefits. Although modifying Zhang to power two pumps with one motor may result in some drawbacks as asserted by Patent Owner, nonetheless, the modification provides other benefits, including reducing the apparatus mounted on a fracturing car. See Pet. 18–19; Ex. 1003 ¶ 54; Ex. 1005 ¶ 17. Furthermore, “[i]t’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.’” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (quoting PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)). And Patent Owner’s declarant, Dr. King, acknowledges that the pump-motor-pump configuration proposed by Petitioner is a suitable option. See Ex. 1045, 41:1–15. Petitioner also argues that using Stout’s pump-motor-pump configuration in Zhang’s system “would have yielded a predictable result from combining known prior art elements according to known methods.” Pet. 19 (citing Ex. 1003 ¶¶ 56–57; KSR, 550 U.S. at 416). According to Petitioner, “[e]ach element in combination merely performs the same function as it does separately.” Id. at 20 (citing Ex. 1003 ¶ 56). Patent Owner argues that, “[b]ecause Petitioner fails to show that any of the alleged benefits are present in the proposed modification, Petitioner cannot now hide behind a single sentence of case law to fulfil its burden.” PO Resp. 34 (emphasis omitted). Patent Owner argues that the Petition does not explain adequately why an ordinarily skilled artisan would have understood “Zhang’s reciprocating ‘fracturing pump’ (which is placed on a trailer and pump[s] fracturing fluid into a wellbore at pressures high enough to fracture rock) and Stout’s subsea, centrifugal pump (which is submerged in the open sea and assists with oil production) to perform the same functions.” Id. (citing Ex. 2014 ¶ 87). Patent Owner argues that the testimony of Petitioner’s declarant in this proceeding is inconsistent with his testimony in prior proceedings. Id. at 35. Patent Owner notes that Mr. Marscher relies on several prior art references and argues that “the” slip op. at 32
Patent outcomesUS 9,395,049 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,395,049 - DISH Network Corporation / DISH Network L.L.C. et al. v. Entropic Communications, LLCInstitution deniedPTAB · Aug 11, 2023 · IPR2023-00392 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims: claims 9–12 lacked a sufficient obviousness showing, and claims 1–8 and 13–19 were disclaimed.
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) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art would have had (i) a bachelor-level degree in electrical engineering, computer engineering, or a related field, and three or more years of experience working in television signal processing and satellite communications; (ii) a master’s degree in electrical engineering, computer engineering, or a related field, and at least one year of experience in television signal processing and satellite communications; or (iii) a doctoral degree in electrical engineering, computer engineering, or a related field, and at least some experience in television signal processing and satellite communications. Pet. 15–16 (citing Ex. 1002 ¶¶ 33–34). Petitioner adds that “[a]dditional education may substitute for professional experience, and significant work experience may substitute for formal education.” Id. at 16 (citing Ex. 1002 ¶¶ 33–34). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that the claim terms should be given their plain and ordinary meaning at this stage of the proceeding. Pet. 13 (citing 37 C.F.R. § 42.100(b); Phillips, 415 F.3d at 1312–13). Patent Owner does not address claim construction in its Preliminary Response. On the present record, we do not discern a need to construe explicitly any 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)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Thus, rather than filling a purported gap in Carnero’s disclosure, Petitioner’s proposed combination essentially requires replacing Carnero’s input device 16 with Fisk’s server 56. But neither the Petition nor Dr. Schonfeld explains sufficiently why one of ordinary skill in the art would have been led to use server 56 instead of input unit 16 to input data into the microprocessors of converters 4. See Pet. 37–38; Ex. 1002 ¶ 119. More importantly, setting aside the problem of replacing input unit 16 for the sake of argument, we disagree that one of ordinary skill in the art would have been led to use server 56 to input that frequency data into signal processing unit 400 “based on requests for programs it receives from the LCUs,” as argued by Petitioner. See Pet. 38 (emphasis added). Rather, we agree with Patent Owner that the requests for programs generated by Fisk’s LCUs are intended to select channels from a predetermined lineup of channels and are not disclosed as being able to change the channels in the predetermined lineup, such that server 56 “can only distribute the decoded programs it is fed.” See Prelim. Resp. 20–21. By way of example, Patent Owner contends that Figure 6 of Fisk depicts server 56 as having three pre-programmed satellite decoders (SAT1, SAT2, and SAT3) that” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 7,542,715 - PTAB · Aug 11, 2023 · IPR2023-00580 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 13, and 14 on all asserted grounds after finding a reasonable likelihood that claim 1 would have been obvious over Rousselle and Tsai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons explained below, we institute an inter partes review of claims 1, 2, 4, 13, and 14 based on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Patent Owner that Rousselle was presented previously to the Office. Turning to Tsai, we agree that there are similarities between Tsai’s outer retractable units (i.e., scissors-type linkages 2) and the X-shaped retractable units taught by Lee and Byun. Compare Ex. 1005, Figs. 1, 10, with Ex. 2003, Fig. 1, and Ex. 2004, Fig. 1A. There are also material differences, however, under Becton, Dickinson factor (a). Namely, the Examiner determined that both Lee and Byun disclosed the claimed central lock. Ex. 2002, 6–7. Tsai, however, discloses that its canopy supporting rods 3 are pivotally secured to head 7 and does not disclose a central lock. Ex. 1005, 7:15–17, Fig. 1. Petitioner thus relies on Rousselle, not Tsai, for teaching the claimed central lock. Pet. 33–48.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“subsequently granted.5 Prelim. Resp. 40. The stay was granted in response to “the Parties’ Joint Stipulation to Withdraw Plaintiff’s Opposition to Defendant Global Shade Corporation’s Motion to Stay and to Stay the Action Pending Inter Partes Review.” Ex. 3001, 2. The co-pending litigation is stayed pending final resolution of this proceeding, including any appeals therefrom. Id.” slip op. at 18
- Skill levelOther
“Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,669,738 - PTAB · Aug 11, 2023 · IPR2023-00538 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1–10, 13–18, and 20–32 on all asserted grounds, finding a reasonable likelihood of unpatentability and declining § 325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen 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.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on this record, it appears that the main distinction between Petitioner’s ordinary skilled artisan and Patent Owner’s is that Patent Owner further requires familiarity with wireless networks. We note, however, that the monitoring systems of the asserted prior art include wireless networks. In view of this, because Petitioner’s requirement of experience designing railcar, train, vehicle, or any other similar monitoring systems includes some familiarity with wireless networks, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’223 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that our decision would be the same applying either party’s definition of a person of ordinary skill in the art.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“this proceeding. Pet. 15. Patent Owner asserts that the term “housing” means “an enclosure.” Prelim. Resp. 29. Having considered the record, we determine that no express claim construction is necessary for any claim terms. 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))).” slip op. at 16
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“30 of the ’223 patent are entitled to claim priority back to the ’713 application. The test for sufficiency of written description “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In particular, we do not agree with Patent Owner that it can simply pluck the temperature sensor from LeFebvre and insert it into the sensor device disclosed in the ’713 application. Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1349 (Fed. Cir. 2013) (“Working backward from a knowledge of [the claims], that is by hindsight,” [patentee] seeks to derive written description support from an amalgam of disclosures plucked selectively from the [prior] application.”) (first alternation in original).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,365,223 - PTAB · Jul 26, 2023 · IPR2023-00539 · APJ James P Calve · IPR · Institution
The Board instituted inter partes review of claims 1–18 and 20–22 on all four § 103 grounds because the petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). 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). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review. See 37 C.F.R. § 42.108(a) (“When instituting . . . 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.”).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“An ordinary meaning of “heuristic” is “involving or serving as an aid to learning, discovery, or problem-solving by experimental and especially trial-and-error methods.” Merriam-Webster.com at “http://www.merriam-webster.com/dictionary/heuristic” (accessed June 12, 2023) (Ex. 3001). Heuristics in the ’673 patent are (1) empirical data used to correlate sensed bearing adapter temperature to bearing temperature, (2) correlating sensed pressure in a trainline to brake pressure, (3) converting bolster/side frame displacement to load, (4) estimating a temperature of tank contents from inner jacket temperature, (5) using dynamic bearing data at an adapter with a fast Fourier transform (FFT) algorithm to isolate dominant modes, and amplify at rolling frequency to indicate faults, (6) converting radial acceleration to vehicle speed using dynamics and wheel and axle diameters, (7) using dynamic bearing data at an adapter and kurtosis in a time domain with a probability density function to indicate bearing damage, (8) applying a probability density function and kurtosis to dynamic data at a bearing adapter and other truck components to indicate track defects, (9) using a simple FFT algorithm with data from adapters to isolate known hunting frequencies or detect flange impacts to identify hunting, and (10) correlate wheel temperature to tread temperature using empirical data. Ex. 1001, 8:20–12:39 (chart of sensed parameter, sensor type, output, and heuristic). Interpreted in light of the ’673 patent specification, a “heuristic” is a rule, algorithm, function, formula, graphing function, or similar mechanism applied to data to assist in analyzing and/or interpreting the data.” slip op. at 7
- Skill levelSkill level patent owner adoptedDecided for patent owner
“II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or mechanical engineering or a related field with at least two years’ experience designing monitoring systems for railcar components, or monitoring systems for similar industrial equipment with rotating components,” and “[l]ess work experience could be compensated by a higher level of education, such as a master’s degree, and vice versa.” Pet. 14 (citing Ex. 1003 ¶ 45). 2 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. § 103 that became effective on March 16, 2013. Changes made to 35 U.S.C. § 103 in the AIA do not apply to any application for patent filed before March 16, 2013. Because the ’673 patent has an effective filing date before March 16, 2013, we refer to the pre-AIA versions of § 103. 3 US 2007/0152107 A1, published July 5, 2007 (Ex. 1005, “LeFebvre”). 4 US 2007/0208841 A1, published Sept. 6, 2007 (Ex. 1007, “Barone”). 5 US 2011/028540 A1, published Nov. 17, 2011 (Ex. 1006, “Armitage”). Patent Owner contends that a skilled artisan “is a person with at least a B.S. degree in electrical or computer science or a related field, with at least two years’ experience with sensing systems for railcars or similar industrial equipment, including familiarity with wireless networks and heuristics and statistical data analysis for failure prediction,” and “[l]ess work experience could be compensated for by a higher level of relevant education and vice versa.” Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 36–40). We adopt Patent Owner’s proposed level as more consistent with the ’673 patent and prior art, but our analysis is the same under either proposal.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“We apply the following two-part framework under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (Feb. 13, 2020) (precedential). To determine whether the Petition presents “the same or substantially the same” art or arguments previously presented to the Office, we consider the factors set forth in Becton, Dickinson.6 Id. at 7 n.8. Becton, Dickinson provides a non-exclusive set of factors to use in applying the framework of 35 U.S.C. § 325(d).” slip op. at 49
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,981,673
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.