- PTAB · Jan 24, 2025 · IPR2024-01145 · APJ St John Courtenay III · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3 and 7–11 were unpatentable on any of four proposed grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“current record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying upon the testimony of its declarant Dr. Christopher Hansen, Petitioner argues the following: As of the earliest claimed priority date, a person of ordinary skill in the art at the time of the alleged invention of the ’559 Patent (“POSITA”) would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems. A” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In addition to the above information, it would be beneficial for the macro eNB to send a measurement gap configuration (as dis-cussed in 3GPP TS 36.331 V1.1.2.0) allocated for the UE to the Small cell eNB so that the Small cell eNB could take measure-ment gaps into consideration when scheduling resources to the UE. For example, the small cell eNB could avoid scheduling the UE during measurement gaps because the UE cannot transmit or receive any signal to/from the Small cell during the measurement gaps. Ex. 1001, 6:41–49 (emphasis added). We particularly note the literal written description support (in italics) in the ’559 Patent that mirrors the claim [1e] language: “so that the Small cell eNB could take measurement gaps into consideration when scheduling resources to the UE.” Id. at 6:45–46 (emphasis added). Moreover, as noted above, Figure 5 of the ’559 Patent depicts flow chart 500. Prelim. Resp. 3–4 (citing Ex. 1001, 6:65–7:3). And step 525 of Figure 5 affirmatively describes: “The second eNB receives the measurement gap configuration from the first eNB, and takes the measurement gap configuration into consideration when scheduling resources to the UE.” Id. at Fig. 5, step 525 (emphasis added).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“cites to Advanced Display Systems Inc. v. Kent State University (212 F.3d 1272, 1281–1282 (Fed. Cir. 2000)), which sets forth the doctrine of incorporation by reference that provides a mechanism to include as a matter of law in one document the disclosure of another document. As explained by the court in Advanced Display Systems, the requirements for an effective incorporation by reference are as follows: To incorporate material by reference, the host document must identify with detailed particularity what specific material it in-corporates and clearly indicate where that material is found in the 10 We note Exhibit 1014 is the Declaration of Craig Bishop, a second declaration relied upon by Petitioner, that is generally directed to the nature, purpose, dates, and public accessibility of the 3GPP TS.331 Exhibits 1008, 1009, and 1015. See e.g., Ex. 1014 ¶¶ 65–67. This is in addition to Exhibit 1003, which is the Declaration of Dr. Hansen, for Petitioner. We have considered both declarations, to the extent relied upon by Petitioner. USPQ 144, 146 (CCPA 1973) (providing that incorporation by reference requires a statement “clearly identifying the subject matter which is incorporated and where it is to be found”); In re Saunders, . . . 444 F.2d 599, 602-03, 170 USPQ 213, 216-17 (CCPA 1971) (reasoning that a rejection for anticipation is ap-propriate only if one reference “expressly incorporates a particu-lar part” of another reference); National Latex Prods. Co. v. Sun Rubber Co., 274 F.2d 224, 230, 123 USPQ 279, 283 (6th Cir. 1959) (requiring a specific reference to material in an earlier ap-plication in order [to] have that material considered part of a later application). Advanced Display Systems, 212 F.3d at 1281–1282 (emphasis added). Here, we find Petitioner has not persuasively shown how Centonza expressly incorporates a particular part of the TS 36.331 reference by: (1) identifying with detailed particularity what specific material it incorporates, and (2) clearly indicating where that material is found in the TS 36.331 document. Pet. 33; Exhibits 1008, 1009.” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,560,559 - Alivecor, Inc. v. Apple Inc.Some claims unpatentablePTAB · Dec 23, 2024 · IPR2023-00950 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1–14 were not shown unpatentable; claims 15–22 were shown unpatentable over Markel. The revised contingent motion to amend was dismissed as moot.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“In carefully and faithfully wrangling the parties’ views and explanation as to the meaning of limitation [1.c.iii], we conclude that Petitioner’s “correct interpretation” of that limitation is that a first pad is recognized as a distinct structure or component from a first portion of an enclosure, and that the pad is positioned underneath that first portion in a manner such that the pad is concealed from a user. We adopt that interpretation. We determine that it is unnecessary to discuss an express construction for any other term to resolve this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Nevertheless, our analysis and the end result are the same under either proposed definition.” slip op. at 13
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Patent Owner makes a more persuasive case as to what a person of ordinary skill in the art reasonably would have understood from Markel’s disclosure. In particular, we agree with Patent Owner that the record before us readily conveys that a skilled artisan would have followed Markel’s practice of forming or molding electrodes from conductive plastic rather than locating a separate electrode component underneath a conductive plaster layer. See, e.g., PO Resp. 30–31 (“[a] POSITA would find nothing in cited portions of Markel to inform or encourage placement of an electrode underneath an exterior layer.”). Indeed, as Patent Owner articulates, Petitioner “fails to provide any reasoning as to why a POSITA would have found Markel’s method of concealment to be deficient, or why a POSITA would have been motivated in light of Markel’s manner of concealment to nevertheless place an electrode underneath the exterior portion of the device.” Id. To that end, we credit Dr. Kenny’s supporting testimony as consistent with Markel’s express teachings. See, e.g., Ex. 2001 ¶¶ 77–83; Ex. 2004 ¶¶ 81–88. We credit that testimony over the countervailing testimony of Petitioner’s declarant, Dr. Berger (see, e.g., Ex. 1003 ¶¶ 122, 135–139), as we agree with Patent Owner that Dr. Berger’s testimony “is not supported by Markel’s actual disclosures.” PO Resp. 31.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner does not appear to disagree that Markel, itself, does not convey that an electrode, or any structure identifiable as a “pad,” is positioned underneath any surface of any enclosure. Rather, Petitioner’s theory of unpatentability is premised on modification of Markel to so position such a pad. Although seemingly acknowledging that Markel contemplates a concealment technique involving molding an electrode into an exterior surface, Petitioner extrapolates from that disclosure that a skilled artisan would be motivated to try an alternative means of concealing an electrode pad by placing the pad underneath an outer layer or portion, i.e., “audio output portion 610.” See Pet. 20 (citing Ex. 1003 ¶ 135). Neither Petitioner, nor Dr. Kenny, however, meaningfully explains why a skilled artisan would have deviated from Markel’s express teachings of concealing an electrode via molding techniques to then arrive at an entirely different concealment approach of placing an electrode pad underneath the audio output portion. Petitioner’s modification proposal in that regard appears borne of hindsight bias based on the disclosure of the ’257 patent rather than any dutiful consideration of what Markel’s actual teachings would have conveyed to a skilled artisan. See Ex. 2004 ¶ 84 (Dr. Kenny explaining why Petitioner’s proposed modification to Markel to hide the electrode underneath a plastic conductive layer was based on improper hindsight). Such hindsight bias is impermissible. See, e.g., Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”). Patent Owner makes a more persuasive case as to what a person of ordinary skill in the art reasonably would have understood from Markel’s disclosure. In particular, we agree with Patent Owner that the record before us readily conveys that a skilled artisan would have followed Markel’s practice of forming or molding electrodes from conductive plastic rather than locating a separate electrode component underneath a conductive plaster layer. See, e.g., PO Resp. 30–31 (“[a] POSITA would find nothing in cited portions of Markel to inform or encourage placement of an electrode underneath an exterior layer.”). Indeed, as Patent Owner articulates, Petitioner “fails to provide any reasoning as to why a POSITA would have found Markel’s method of concealment to be deficient, or why a POSITA would have been motivated in light of Markel’s manner of concealment to nevertheless place an electrode underneath the exterior portion of the device.” Id. To that end, we credit Dr. Kenny’s supporting testimony as consistent with Markel’s express teachings. See, e.g., Ex. 2001 ¶¶ 77–83; Ex. 2004 ¶¶ 81–88. We credit that testimony over the countervailing testimony of Petitioner’s declarant, Dr. Berger (see, e.g., Ex. 1003 ¶¶ 122, 135–139), as we agree with Patent Owner that Dr. Berger’s testimony “is not supported by Markel’s actual disclosures.” PO Resp. 31.” slip op. at 32
Patent outcomesUS 10,076,257 mixedClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,076,257 - PTAB · Dec 16, 2024 · IPR2024-00997 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of IPR challenging claims 1–10, exercising its discretion under § 314(a) because the Fintiv factors favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Based on the preliminary record, we can reasonably expect trial in the parallel district court proceedings to begin four to five months prior to the deadline for our final written decision, based on the scheduled trial date and the median time-to-trial statistics. See Fintiv Memo 8–9 & n.12 (approving the use of median time-to-trial statistics). Even if the proceedings are staggered, at least one of the proceedings would likely begin and conclude well before our decision, making it highly likely that there will be duplicate efforts in evaluating the challenged claims based on the prior art. Thus, we agree with Patent Owner that the second factor weighs substantially in favor of discretionary denial.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“and Trademark Office under 37 C.F.R. § 42.4(a), we may only institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c). However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“ordinary skill in the art. See Phillips v. AWH Corp., 415 F.3d 1303, 1312– 1313 (Fed. Cir. 2005) (en banc) (the level of ordinary skill is pertinent to claim construction); Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966) (the level of ordinary skill is one of the factors to consider when determining obviousness). For this decision, we adopt Petitioner’s proposed level of ordinary skill, which is “the equivalent of an undergraduate degree in Electrical Engineering, Computer Science, or Computer Engineering; familiarity with the relevant 3GPP standards as of this time; and at least two years of experience in design, development, and/or testing of cellular networks.” Pet. 15–16 (citing Ex. 1003 ¶¶ 43–44). Although Patent Owner argues for a higher level of ordinary skill (see Prelim. Resp. 7–8), our determination that the Petition lacks compelling merits would be the same under Patent Owner’s proposal.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties argue that we need not address any claim-construction issues for our analysis, and we agree. See Pet. 15; Prelim. Resp. 25. 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 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,798,754 - PTAB · Dec 13, 2024 · IPR2024-00899 · APJ John R Kenny · IPR · Institution
The Board instituted IPR on claims 1–5 and 10–15, finding a reasonable likelihood that at least one challenged claim would be unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine that the Petition has met this standard. Further, we decline to discretionarily deny inter partes review. Therefore, we institute an inter partes review of the challenged claims of the ’892 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“advancements that it contends were made before the filing of the ’982 patent that made it easier for an ordinarily skilled artisan to take advantage of known energy savings by incorporating the direct transitions of Röger into G.987.3. Pet. 12–14. These arguments are supported by expert testimony, which in turn has non-testimonial evidentiary support. Id.; Ex. 1003 ¶¶ 70– 74; Ex. 1011, 3–4; Ex. 1006, 5–7. Patent Owner’s contrary argument is supported by expert testimony, but that expert testimony does not cite non-testimonial evidentiary support and is conclusory regarding why the advancements would not motivate an ordinarily skilled artisan to modify G.987.3. Prelim. Resp. 26–27; Ex. 2001 ¶ 51. Thus, on the current record, Petitioner’s argument regarding the motivation resulting from technology advances is more persuasive. At trial, however, additional exposition could be beneficial on the issues of technology advances, their effects on an ordinarily skilled artisan’s motivation, and energy reduction.” slip op. at 50
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Pet. 4–5 (emphasis omitted). Petitioner argues that these means limitations should be construed to be means plus function limitations under 35 U.S.C. § 112(f). Id. Further, Petitioner argues that the corresponding structure for these means limitations is a processor that can execute computer program instructions. Id. at 5. Patent Owner does not propose constructions for these limitations. Prelim. Resp. 14. Because construction of these means limitations is not needed to determine whether to institute trial in this case, we do not construe these limitations for this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We do not adopt Patent Owner’s proposed construction. Importantly, when the patentee wanted to limit its claims to direct transitions or direction transitioning, it did so expressly. Claims 1, 6, and 10 each expressly recite transitioning directly (Ex. 1001, 15:2–21, 15:40–58; 16:7–31). In addition, it is presumed that “transitioning” in claims 1, 6, and 10 has a consistent meaning with “transition” in claims 12 and 14. “[T]he same terms appearing in different claims in the same patent . . . should have the same meaning ‘unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.”’ Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1328 (Fed. Cir. 2006) (quoting Fin Control Sys. Pty, Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001)); Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[C]laim terms are normally used consistently throughout the patent”); Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) (“[A] claim term should be construed consistently with its appearance in other places in the same claim or in other claims of the same patent.”); Fin Control, 265 F.3d at 1318 (Fed. Cir. 2001); Phonometrics, Inc. v. Northern Telecom Inc., 133 F.3d 1459, 1465 (Fed. Cir. 1998) (“A word or phrase used consistently throughout a claim should be interpreted consistently.”); CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1159 (Fed. Cir. 1997) (“[W]e are obliged to construe the term ‘elasticity’ consistently throughout the claims.”). Patent Owner has pointed to nothing in the Specification or the prosecution history that teaches that the terms “transition” in claims 12 and 14 and “transitioning” in claims 1, 6, and 10 should be given inconsistent meanings. Prelim. Resp. 12–14.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,806,892 - Arista Networks, Inc. v. Corrigent CorporationNo claims unpatentablePTAB · Dec 3, 2024 · IPR2023-00839 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–26 were not shown unpatentable under either § 103 ground because the evidence did not establish the claimed LAG use between MPLS switches or explain how the references would be combined.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Consistent with our Institution Decision, we adopt Petitioner’s articulation of the level of ordinary skill in the art, apart from the phrase “at least” modifying the number of years of professional experience. See Dec. 17–18. As we previously explained, inclusion of such qualifiers renders the articulation vague by being open-ended thus encompassing the level of experience of an expert, someone with more than ordinary skill in the art. Id. at 18. Petitioner’s articulation otherwise appears consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party proposes any express claim constructions. Pet. 4; PO Resp. 3. Based on the parties’ arguments, we see no need to expressly construe any terms to resolve the dispute before us. 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Pet. Reply 10–11. Despite Petitioner’s arguments, we are not persuaded that a person of ordinary skill would have been motivated by knowledge of Rabie to combine the teachings of RFC 3209 and Raz at the time of the invention of the ’602 patent. First, the ’602 patent claims a priority date of May 6, 2005, which is not challenged by Petitioner (see Pet. 3), whereas Rabie was published more than two months later. Ex. 1021, code (65). Moreover, the question is not whether it may have been known at the time of the invention that a LAG could be used between switches, but rather whether the combined teachings of RFC 3209 and Raz would have motivated a person of ordinary skill in the art to utilize a LAG between switches, as claimed, when neither RFC 3209 nor Raz teaches such usage or suggests the existence of a problem that such usage would solve. We are not persuaded that they would.” slip op. at 36
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached
“Pet. Reply 10–11. Despite Petitioner’s arguments, we are not persuaded that a person of ordinary skill would have been motivated by knowledge of Rabie to combine the teachings of RFC 3209 and Raz at the time of the invention of the ’602 patent. First, the ’602 patent claims a priority date of May 6, 2005, which is not challenged by Petitioner (see Pet. 3), whereas Rabie was published more than two months later. Ex. 1021, code (65). Moreover, the question is not whether it may have been known at the time of the invention that a LAG could be used between switches, but rather whether the combined teachings of RFC 3209 and Raz would have motivated a person of ordinary skill in the art to utilize a LAG between switches, as claimed, when neither RFC 3209 nor Raz teaches such usage or suggests the existence of a problem that such usage would solve. We are not persuaded that they would.” slip op. at 36
Patent outcomesUS 9,118,602 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,118,602 - Nokia Of America Corporation / AT&T Services, Inc. v. Iarnach Technologies LimitedInstitution deniedPTAB · Nov 25, 2024 · IPR2024-00900 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on claims 1–11 because the petition did not show that G.984.3 and Khermosh teach or suggest the claimed parameter sets determined according to link quality.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that 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.” After considering the arguments of the parties and the evidence of record, we deny institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) pertinent to the ’359 Patent would have had at least a bachelor’s degree in electrical engineering, computer engineering, or similar discipline and had at least two years of experience with optical communications and networks. Ex. 1003, ¶ 22. A person with a different degree but with additional relevant experience could still qualify if the additional experience compensates for the different educational background. Id. Pet. 10. Patent Owner does not dispute Petitioner’s contention and presents a near-identical description of a POSITA. Prelim. Resp. 9. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record may also reflect the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the description offered by Petitioner as it is not disputed by the Patent Owner and is consistent with the ’359 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[t]he [claim] terms should receive their respective plain and ordinary meaning as understood by a person of ordinary skill in the art under Phillips.” Pet. 8. Patent Owner agrees. Prelim. Resp. 9. No need exists to expressly construe any claim terms to resolve the parties’ dispute. 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 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“that “[t]he values in this message, except for P1 and P2, are selected according to OLT parameters and preferences” and that P1 and P2 (length of preamble bits) are chosen by the OLT in order to ensure the total length of the burst overhead meets certain preset length restrictions. Id. at 32; see also Ex. 1005, 110. These notes confirm Petitioner’s acknowledgement that the parameters in this table are not determined based on link quality. Id.; see also id. at 35, 39. Thus, the upstream burst overhead parameters in the table in G.984.3, reproduced above, are not determined by the OLT “according to different levels of link quality” as this limitation requires.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,934,359 - Microsoft Corporation v. Reald Spark, LLCAll claims unpatentablePTAB · Nov 19, 2024 · IPR2023-01046 · APJ Jean R Homere · IPR · Final written decision
Claims 1–14 and 16–19 are unpatentable: claims 1–3, 5, 10, 12–14, and 18 as anticipated by Ganin; the remaining claims as obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proffered definition of the level of ordinary skill in the art, but offers a definition of its own. PO Resp. 8. Patent Owner contends that a person having ordinary skill in the art at the time of the invention “would have had at least a bachelor’s or master’s degree in electrical engineering, computer engineering, electrical and computer engineering, computer science, or similar educational background; or equivalent on-the-job training, including approximately two to three years of experience in machine learning and/or pattern recognition.” Id. (citing Ex. 2008 ¶ 22). Patent Owner asserts that the “level of skill is approximate and more experience would compensate for less formal education and vice versa.” Id. We note that the differences between the parties’ descriptions are immaterial and find Petitioner’s description to be consistent with the problems and solutions disclosed in the ’985 patent and prior art of record, and adopt it as our own for purposes of this Decision, albeit without the two instances of “at least,” which introduce ambiguity. See, e.g., In re GPAC Inc., 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that it “applied plain and ordinary meanings of all terms and no express constructions are required here.” Pet. 5. Patent Owner agrees with Petitioner that there are no claim terms that require construction for purposes of the Board’s final decision. PO. Resp. 8–9. We therefore determine that we do not need to expressly construe any term for purposes of this Decision. See Realtime Data, 912 F.3d at 1375.” slip op. at 17
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Chalom’s large RFC with Aslan’s teacher-student MLA pair would have rendered the ensuing system more complex, and thereby inefficient. As correctly noted by Petitioner, Chalom indicates that the RFC can be embodied in a mobile computing device. Id. at 15 (citing Ex. 1005, 22:33– 37, 19:65–20:6). And Dr. Karam persuasively explains that using the teacher model to train the student model is more efficient because the teacher’s knowledge allows the student model to converge faster. Id. at 17 (citing Ex. 2009, 178:14–24). Accordingly, we find that a POSITA would have found sufficient motivation to replace Chalom’s RFC with Aslan’s teacher-student models to enhance the efficiency of the MLA pair in a mobile computing environment. On this record, we agree with Petitioner that the proposed combination of Chalom and Aslan would predictably result in the teacher MLA generating motion vector fields for user gaze correction (i.e., first reference or editing instructions) that are passed to the student MLA, which subsequently generates motion vector fields (i.e., second reference or editing instructions) for further refining the received first reference data. Id. at 58. Consequently, we reiterate that because the proposed combination involves known elements performing their ordinary functions to produce a predictable result, a POSITA would have appreciated that the proposed combination is proper.4 After considering Patent Owner’s arguments, we find Petitioner has shown by a preponderance of the evidence that the proposed combination of Chalom and Aslan is sufficiently supported by the requisite motivation to teach limitations 1[D] and 1[E].” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Because Chalom explicitly indicates that its RFC can be trained using any suitable techniques(s) including compressing the classifier, we agree with Petitioner that a POSITA would have looked to Aslan’s teacher-student architecture that proposes compressing large models such as Chalom’s RFC into smaller models so they can be more readily deployed on computing devices with limited resources. Pet. Reply 11–12. As correctly noted by Petitioner, the experts of the parties agree that both Aslan and Chalom involve classifiers. More particularly, as acknowledged by Patent Owner’s representative during the hearing, compression is desirable for Chalom’s RFC. See Tr. 56:21–57:4. Accordingly, we agree with Petitioner that a POSITA would have looked to a similar compression operation of classifiers in Aslan for training a more compact MLA at runtime or offline. Pet. Reply 11–12. For these same reasons, we find unavailing Patent Owner’s argument that Chalom and Aslan are directed to different objectives or techniques. Further, we do not agree with Patent Owner’s argument that replacing Chalom’s large RFC with Aslan’s teacher-student MLA pair would have rendered the ensuing system more complex, and thereby inefficient. As correctly noted by Petitioner, Chalom indicates that the RFC can be embodied in a mobile computing device. Id. at 15 (citing Ex. 1005, 22:33– 37, 19:65–20:6). And Dr. Karam persuasively explains that using the teacher model to train the student model is more efficient because the teacher’s knowledge allows the student model to converge faster. Id. at 17 (citing Ex. 2009, 178:14–24). Accordingly, we find that a POSITA would have found sufficient” slip op. at 39
Patent outcomesUS 10,740,985 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,740,985 - Aptiv Services US, LCC v. Microchip Technology Inc.Institution deniedPTAB · Nov 7, 2024 · IPR2024-00803 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–18 obvious over Verhaege, Verhaege and Miller, or Ker.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2
- Skill levelOther
“(‘POSITA’) in the field of the ’665 patent in 2007 would have at least a Master’s degree in electrical engineering, computer engineering, or a related field and three to five years of experience in integrated circuit design.” Pet. 10 (citing Ex. 1002 ¶ 51). Patent Owner argues that Petitioner’s definition is “excessively high.” Prelim. Resp. 3 n.1. In Patent Owner’s view, “a POSITA would have had a bachelor’s degree in electrical engineering or an equivalent technical degree and two years of experience in mixed-signal (i.e., analog/digital) circuit design.” Id. (citing Ex. 2003 ¶¶ 30–34). We need not resolve this dispute because our decision would be the same under either definition.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In Patent Owner’s view, “the claims require sharing ESD charge from one pad with a different I/O pad.” Prelim. Resp. 27. Patent Owner argues that charge sharing is the only way that charging the pad capacitance can reduce a maximum voltage, as recited. Id. at 24–25. Apart from the charge sharing, Patent Owner argues that the recited enable or control circuitry is not located in the circuit where the ESD event occurs. Id. at 27–33. Patent Owner argues that Petitioner disagrees with this interpretation. Id. Petitioner, though, argues that it would have been obvious to duplicate Verhaege’s and Ker’s protection circuits. See, e.g., id. at 18 (discussing claim 1 and Verhaege), 48 (discussing the Verhaege-Miller combination), 66 (discussing claim 1 and Kerr). For example, Petitioner argues that “a POSITA would have been motivated to use the improved protection circuit of Verhaege, apply it at every I/O pad, and share the ESD energy across multiple pad circuits as taught by Miller.” See id. at 48 (emphasis added). From statements like these, Patent Owner draws the conclusion that Petitioner must also be interpreting the claims to require charge sharing. Prelim. Resp. 25–27. For the reasons discussed in Section II.C below, Petitioner has not shown a reasonable likelihood of showing that any claims are unpatentable even under the implied claim construction used in its obviousness rationale. The Board need not expressly construe any claims in reaching that conclusion.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner argues, “It would have been obvious to a POSITA that, because an ESD event could occur at any I/O pad, the Verhaege invention should be repeated at every I/O pad.” Pet. 18 (citing Ex. 1002 ¶ 67); id at 30–32 (claim 6); id. at 43 (claim 14). Yet Petitioner acknowledges that “there were many obvious ways to activate multiple circuits during an ESD event.” Id. at 51. The Petition does not sufficiently explain why it would have been obvious to have chosen the way that is claimed. See id. at 18, 30– 32, 43. Rather, Petitioner’s obviousness rationale appears to be based on impermissible hindsight gleaned entirely from the challenged patent’s 1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on the . . . patent itself as her roadmap for putting what she referred to as pieces of a ‘jigsaw puzzle’ together.”). For this additional reason, Petitioner has not shown a reasonable likelihood of prevailing in its challenges to claims 1, 6, and 14.” slip op. at 15
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,564,665 - Elmos Semiconductor SE v. Texas Instruments IncorporatedInstitution deniedPTAB · Nov 5, 2024 · IPR2024-00802 · APJ Bach V Hoang · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that any of claims 1–20 would be unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it would prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that “a person having ordinary skill in the art (‘POSITA’) at the relevant time, would have had at least a bachelor’s degree in electrical engineering, or equivalent experience of at least two years working in the field of the design electrical driver systems for Light Emitting Diodes (LEDs).” Pet. 20. Patent Owner has not addressed the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as articulated above. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ432 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). We note, however, that the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the record before us, we do not find it necessary to expressly construe any claim terms or phrases to reach our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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))). Petitioner’s constructions do not affect our determinations, and, even under Petitioner’s constructions, Petitioner fails to show a reasonable likelihood of success with respect to its proposed grounds of unpatentability for the challenged claims of the ’432 Patent.” slip op. at 10
- BurdenNot shown unpatentable
“First, even under Petitioner’s assertion that “controller RG . . . performs the functions of an error amplifier and amplifier output stage” (id. at 37), Petitioner has not adequately shown that controller RG meets all three of “an error amplifier,” “a control voltage,” and “an amplifier output stage.” Petitioner’s assertions that those elements are “interior to” or “include[d]” in controller RG are conclusory and unsupported. Petitioner summarizes and reproduces portions of Sudhaus regarding the output currents of controller RG, but has not explained the relevance of its summary and reproduction with respect to each recited claim element. See id. at 37–38 (citing Ex. 1005, 2:32–33, 4:25–28, 4:46–50, 8:47–55), 40– 41. Nor has Petitioner explained why or how the summarized or reproduced portions of Sudhaus show that those claim elements are interior or included in controller RG. See id. Further, Petitioner also fails to show how Sudhaus teaches the claimed interactions and relations between the error amplifier, control voltage, and amplifier output stage. The claim recites the error amplifier compares voltages to “generate a control voltage” and the amplifier output stage controls output current “based on the control voltage.” Petitioner has not explained what specific signal controller RG generates that teaches a “control voltage” used to control output current. Nor has Petitioner stated, let alone explained how, controller RG generates a control voltage in the claimed manner and controls output current based on that control voltage. Simply because controller RG produces outputs that are allegedly similar to the claimed outputs does not by itself show that controller RG produces the claimed outputs using the claimed elements in the claimed manner.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 11,653,432 - PTAB · Nov 1, 2024 · IPR2024-00850 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR on claims 1, 3–12, 14, and 23–27 because Petitioner showed a reasonable likelihood of proving them obvious over Raizer and Hangzhou.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) at the time of the alleged invention of the ’632 Patent would have been a person with a working knowledge of mechanical design and automation. That person would have had a Bachelor of Science degree in an academic discipline emphasizing the design of mechanical, automation, and robotics technologies, in combination with training or at least one to two years of related work experience. Alternatively, that person could have also had a Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline. (Ex. 1003, ¶¶42-43). More education can supplement practical experience and vice versa (Ex. 1003, ¶¶42-43).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Neither Petitioner nor Patent Owner contends that any claim term has a meaning other than its ordinary and customary meaning. See, e.g., Pet. 4; Prelim. Resp. 8. Having considered the record, we determine that no express claim construction is necessary for any claim term. 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“reasons why a skilled artisan would have sought to combine the teachings of Raizer and Hangzhou. See supra § IID.3. On this record, and for purposes of institution, we find those contentions persuasive. For example, as Petitioner observes (see, e.g., Pet. 7), and which is not disputed by Patent Owner, Hangzhou sets forth that, in the area of automating warehouses, it is a known and recognized practice to provide pathways (e.g., auto-guided trolley passage spaces 112) underneath shelving units for movement of automated trolleys or robots. See, e.g., Ex. 1006 ¶ 48 (“an auto-guided trolley 200 preferentially travels in column laneways 32 and in auto-guided trolley passage spaces 112”); Fig. 2. Patent Owner also does not meaningfully dispute Dr. Derby’s testimony that “[i]t was well known to elevate the shelving units above the floor so that robots loaded with containers can travel underneath thereby allowing for more flexible route planning and the elimination of bottlenecks.” See Ex. 1003 ¶ 107; see also id at Section VI., ¶¶ 45–53 (describing in detail, with citation to record evidence, that one of ordinary skill in the art understood that shelving units could be elevated above warehouse floors).” slip op. at 27
- Other 314aInstitution denied discretionary otherDenied
“PETITION UNDER 35 U.S.C. § 314 IS WARRANTED Patent Owner requests that we exercise our discretion to deny institution under 35 U.S.C. § 314. See Prelim. Resp. 34–36. The principle basis for that request is that the panel should accept Patent Owner’s arguments as to insufficient reason or motivation to combine the teachings of Raizer and Hangzhou, and exercise discretion to deny on that basis. See id. at 34. As set forth above, however, on this record we conclude that Petitioner has shown a reasonable likelihood in its challenge to all the challenged claims.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,472,632
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.