- Samsung Electronics Co., Ltd. v. Almondnet, Inc.No claims unpatentablePTAB · Feb 2, 2024 · IPR2022-01259 · APJ Charles J Boudreau · IPR · Final written decision
The Board held claims 35–51 not unpatentable because the asserted combinations did not show that the claimed computers automatically authorize a distinct third-party second media property to allow ad display.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Having considered the parties’ arguments, we agree with Petitioner that the recited “system” of claim 35 does not necessarily exclude a “third-party second media property.” As Petitioner points out, claim 35 uses the open-ended transitional phrase “comprising,” such that the recited “system comprising one or more computers” may include components other than the recited “one or more computers.” See Pet. Reply 1 (citing CIAS, Inc. v. All. Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007)). Moreover, we agree with Petitioner that the phrase “programmed to implement a method of directing electronic advertisements” more naturally modifies “one or more computers,” rather than “system.” Id. at 3. Nonetheless, it is clear from the plain language of claim 35, as well as from the prosecution history of the related ’745 patent, that the third-party second media property must be distinct from such “one or more computers.” Petitioner’s repeated use of the abbreviation “TPSMP” obscures the fact that claim 35 does not simply recite a “second media property” but instead specifically recites a “third-party second media property.” Ex. 1001, 16:18–19 (emphasis added). Highlighting the significance of the modifier “third-party,” as Patent Owner points out, is the fact that that modifier was added to “second media property” in the phrase “automatically electronically authorizing, with at least one of the computers, a third party second media property to allow display, to the electronic visitor when later visiting the second media property, of an advertisement” in an Examiner’s amendment during prosecution of the ’822 patent’s grandparent ’286 application to avoid certain prior art, and the prosecution record of the ’286 application reflects that this amendment was made to make it clear that the recited “authorizing is being done of an unrelated site.” Ex. 2005, 58; see PO Resp. 10–11. More particularly, as Patent Owner points out, the applicant stated in the cited examiner interview report that “the claim structure already made [it] clear” that “the authorizing is being done of an unrelated site . . . because the phrase ‘authorizing’ a site does not seem to cover a site deciding something on its own,” but that the amendment to specify a “third party second media property” made that requirement “explicit.” Ex. 2005, 58; see PO Resp. 7–8 (quoting the same).” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“We adopt Petitioner’s articulation of the level of ordinary skill in the art, minus the phrases “at least” modifying the education and “or more” modifying the number of years of experience. As we explained in our Institution Decision, although 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, inclusion of such qualifiers render the articulation vague by being open-ended thus encompassing the level of education and experience of an expert, someone with more than ordinary skill in the art. See Dec. 12. Thus, in summary, we find that one with ordinary skill in the art at the pertinent time period would have had a bachelor’s degree in computer science, electrical engineering, computer engineering, or the equivalent, and two years of experience with designing, programming, configuration, and/or analysis/research with Internet or similar network-related processes including, for example, user/entity profile management and/or web-based targeted content delivery, or a related field, where more education could supplement practical experience and vice versa.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Having considered the parties’ respective contentions in light of the evidence of record, we conclude that Petitioner has not established by a preponderance of the evidence that claim 35 is unpatentable over the combination of Perry, Wilson, and Bronson. In particular, we are not persuaded that the cited prior art teaches or suggests “a system comprising one or more computers programmed to implement a method . . . comprising: . . . automatically electronically authorizing a third-party second media property to allow display . . . of an advertisement correlated with the profile-attribute information received about the visitor.” Although Figure 1 of Perry depicts a “system” that includes computers programmed to implement a method of distributing advertisements to users over the Internet, we are not persuaded that any component in that system implements a method that includes “automatically electronically authorizing a third-party second media property” to display such advertisements. As Patent Owner points out, Petitioner identifies “Internet publisher computer systems 131 and 132” and “advertising service company computer system 140 comprising one or more CPUs 141” as the recited “one or more computers.” Pet. 7; PO Resp. 11. Although there is no dispute that Publisher Systems 131 and 132 and ASC 140 are computers, we find that neither satisfies the remaining limitations of claim 35, particularly because neither “automatically electronically authoriz[es] a third-party second media property” to display advertisements. As we explain in our claim construction discussion above, we are not persuaded by Patent Owner’s arguments that the recited “system” necessarily must exclude the “third-party second media server.” See supra § III.C. Nonetheless, the third-party second media server still must be separate and distinct from the “one or more computers programmed to implement [the recited] method,” lest the modifier “third-party” be rendered meaningless.” slip op. at 54
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Further, Patent Owner did not present Mr. Sherwood as an expert on patent law or claim drafting, and we decline to give substantial weight to his testimony on this issue that is ultimately a matter of law. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996) (ruling that the interpretation of patent claims is a matter of law to be determined exclusively by the courts). Still further, Petitioner’s counsel conceded that the formatting of the claim is not dispositive. Tr. 14:14–18.” slip op. at 26
Patent outcomesUS 8,200,822 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · Markman · KSR · GrahamPatents in suitUS 8,200,822 - K/S Himpp v. Bragi GmbHInstitutedPTAB · Jan 22, 2024 · IPR2023-01150 · APJ Larry J Hume · IPR · Institution
The Board instituted IPR on claims 1–21 on all seven asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Although Shaffer was cited by the examiner during prosecution, it was not discussed in any meaningful regard on the record, as explained above.” Pet. 11. Petitioner cites Advanced Bionics’ holding that, “[i]f the record of the Office’s previous consideration of the art is not well-developed or silent, then a petitioner may show the Office erred by overlooking something persuasive.” Id. (citing Advanced Bionics, 10). Petitioner specifically asserts the Examiner erred because Shaffer discloses the precise features that the examiner identified as novel (high-power and low-power modes), which, in combination with the art teaching other known features (e.g., a reed switch), demonstrates that the challenged claims are unpatentable. . . . By overlooking the specific teachings of Shaffer in allowing the challenged claims, the examiner committed a material error even if it could be argued that Shaffer was considered. Pet. 12 (internal citations omitted). See Advanced Bionics, 8 n.9 (“An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.”). We find that Petitioner has demonstrated a material error by the Office in the prior consideration of Shaffer. Under the second prong of Advanced Bionics, we consider “the extent to which the asserted art was for rejection.” Becton, Dickinson, 17. Here, we agree with Petitioner that, although Shaffer was cited by the Examiner on a form PTO-892, Shaffer was not applied as a prior art reference in any rejection because claims 1–20 in the application leading to the ʼ895 patent were allowed in a first action allowance and then, after filing a Request for Continued Examination (RCE), claim 21 was added, and subsequently claims 1–21 were allowed and issued in the ʼ853 patent with no further discussion of Shaffer or any other reference. See, generally Ex. 1008; and see Pet. 10. slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.4 (2023). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim. Therefore, we institute an inter partes review of all challenged claims 1 through 21 of the ’853 patent, based on the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Supported by the testimony of Dr. Kiaei, Petitioner asserts the level of ordinary skill in the art corresponds to a person having “a bachelor’s degree in Electrical Engineering, or equivalent experience, and one to two years of experience in the field of wireless electronic devices and battery systems, 11 The current record does not include evidence of objective indicia of nonobviousness (secondary considerations). See generally Pet., Ex. 1002, and Prelim. Resp. aids.” Pet. 17 (citing Ex. 1002 ¶ 25). At this stage, Patent Owner “applies Petitioner’s definition of a [person of ordinary skill in the art] POSITA” (Prelim. Resp. 16 (citing Pet. 17), but “reserves the right to present issues relating to the level of a POSITA should the Board institute this IPR.” Prelim. Resp. 16. Based on the current record, and for purposes of this Decision, we preliminarily adopt Petitioner’s position as to the level of ordinary skill in the art at the time of the claimed invention, as articulated above. On this record, we are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’853 patent and the asserted prior art. This definition also is supported by the testimony of Dr. Kiaei. See Ex. 1002 ¶ 25.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“13, and 17–21, we disagree with Patent Owner’s narrow construction requiring that the smart case be construed as including a rechargeable battery utilized to charge a wireless device, because such a construction ignores intrinsic evidence of multiple additional configurations, actions, or functionality of the smart case disclosed in the ʼ853 patent. These functions, other than charging a wireless device, include preserving battery life of the wireless earpieces, communication with the wireless earpieces through physical interactions or wireless connections, standards, or protocols, configured to store data. See Ex. 1001, 2:38–57.12 More importantly, we note the disclosure of only an illustrative embodiment in the ʼ853 patent that includes a presumably rechargeable battery, i.e., “[t]he smart case 102 encloses a battery, and various other circuitry (not shown). . . . For example, the battery of the smart case 102 may be utilized to charge the wireless earpieces 142, 144 any number of times before the smart case 102 and corresponding battery may require charging.” Ex. 1001, 3:25–34. However, as quoted below, we note the ʼ853 patent also discloses alternative embodiments of the smart case that do not require a rechargeable battery to recharge a wireless device: The smart case 402 may have any number of configurations and include various circuitry, connections, and other components. The smart case 402 is one potential embodiment of the smart case 102 of FIGS. 1–3. In one embodiment, the smart case 402 may include a battery 404, a logic engine 406, a memory 408, interfaces 410, 411, a transceiver 412, and a magnet 414. The battery 404 is a power storage device configured to charge the power storage system of the wireless earpieces 401 once or multiple times. In other embodiments, the battery 404 as well as the batteries of the wireless earpieces 401 may represent a fuel cell, thermal electric generator, piezo electric charger, solar charger, ultra-capacitor, or other existing or developing power storage technologies.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,843,853 - CSC Serviceworks, Inc. v. Payrange Inc.InstitutedPTAB · Jan 19, 2024 · IPR2023-01186 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 1–26 on all asserted grounds, finding a reasonable likelihood that claim 1 is unpatentable over Low.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“interest. Prelim. Reply 1–7. And, argues that “there is no reason for the Board to address PayRange’s RPI argument at institution because no time-bar or estoppel issue exists.” Id. at 2–3 (“To date, PayRange has not asserted the ‘045 patent against Kiosoft or TechTrex, and thus no time bar ever triggered under § 315(b) based on separate litigation between PayRange and Kiosoft/TechTrex.”). iRobot Corp., IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020) (“SharkNinja”) held that it best serves the Office’s interests in cost and efficiency to not resolve an RPI issue when “it would not create a time bar or estoppel under 35 U.S.C. § 315” in that proceeding. SharkNinja, Paper 11; see also Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 76 at (USPTO Director May 22, 2023) (non-precedential). We do not address whether KioSoft and TechTrex are unnamed real-parties-in-interest because, even if they were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” slip op. at 7
- Strike new argumentDenied
“TPG, 40. The block quotation image on page 73 of the Petition contains approximately 105 words. On this record, whether or not Petitioner accounts for these words in its certification is unclear. In any event, Patent Owner does not allege that it has suffered any undue prejudice from the extra 102 words. Nor does Patent Owner indicate that it promptly raised the issue to allow for Petitioner to take reasonable steps to remedy the issue. Under the circumstances in this case, we are not persuaded the Petitioner is abusing the process by including excessive words in the image so as to warrant not considering the Petition. During trial, all future papers must comply with applicable word- count limits and the parties must avoid images of block quotations, so that the words of the quotation are included in word-count limits.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not provide a description of the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’045 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Neither party provides an explicit construction of any claim terms. Petitioner asserts that “the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction.” Pet. 11. Patent Owner asserts that “no constructions are necessary to deny institution because the petition facially fails to show that the references satisfy the plain language of the claims.” Prelim. Resp. 6. Except to the extent as discussed in our patentability analysis below, we do not need to construe any terms explicitly to reach our decision. 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,” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,856,045 - CSC Serviceworks, Inc v. Payrange Inc.Institution deniedPTAB · Jan 18, 2024 · IPR2023-01187 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’208 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. The Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, 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) (quoting Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed.Cir.1986)).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner states that, “for the purposes of this proceeding, the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction.” Pet. 7. Patent Owner states that “the petition fails to account for all limitations at issue,” and, “[a]s such, no constructions are necessary to deny institution because the petition facially fails to show that the references satisfy the plain language of the claims.” Prelim. Resp. 5. Thus, neither party contends that any claim construction is necessary at this time. On this record and for purposes of this decision, we determine that no claim terms require express construction. D. The Alleged Obviousness of Claims 1, 2, 5–13, and 16–18 over Freeny” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner is relying on Kou’s semi-offline embodiment that is somewhat analogous to pre-loading money onto a merchant-specific gift card and completing a purchase by using the card at the merchant’s store. See Ex. 1005, 274-276. Petitioner does not explain adequately the basis for the implied assertion that there is no user selection of a service or item between the pre-authorization of an amount and the user completing the payment transaction by providing final authorization to the merchant. Pet. 23–24. Additionally, Petitioner does not describe adequately its proposed combination of Freeny and Kou and does not explain adequately how applying Kou’s pre-authorization scheme to Freeny’s machines providing a predetermined service would avoid any user selection of a service prior to the performance of all the steps of, e.g., independent claim 1. See Pet. 24 (Petitioner offering little more than the assertion that “a POSITA would have been motivated to implement Kou’s technique of pre-authorizing transactions in Freeny’s system.”); see also id. at 17–18 (“Reasons to Combine” section); cf. Prelim. Resp. 17 (Patent Owner arguing that “alleging that a POSITA would have incorporated pre-authorization into Freeny—a feature Petitioner alleges Freeny already has—does nothing to fix Petitioner’s conclusory discussion of activating predetermined services in Freeny.”); 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. . . . Thus, it was Harmonic’s burden to explain to the Board how Haskell combined with Rossmere rendered the challenged claims unpatentable.”). We determine that Petitioner has not shown a reasonable likelihood of demonstrating that Freeny or the combination of Freeny and Kou discloses or suggests that the pertinent steps recited in the independent claims are performed “prior to user selection of any items or services provided by an automatic retail machine.”” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,438,208 - Keysight Technologies, Inc. v. Centripetal Networks, Inc.Some claims unpatentablePTAB · Dec 15, 2023 · IPR2022-01097 · APJ Aaron W Moore · IPR · Final written decision
Claims 1–3, 5–13, and 15–20 are unpatentable as obvious; claims 4 and 14 were not shown unpatentable because Sourcefire did not disclose the claimed responsive updating of an existing packet flow log entry.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not address this issue, and neither side argues that it might affect the patentability analysis or otherwise change the outcome. Thus, as 2 Sourcefire 3D System User Guide, Ver. 4.10, Mar. 16, 2011 (Ex. 1004). 3 U.S. Patent App. Pub. No. 2015/0207809 A1 (Ex. 1029). we did at institution, we apply Petitioner’s description of an ordinarily skilled artisan, as we find it consistent with the ’917 patent and the asserted prior art. B.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“1. Threat Identifier and Threat Indicator Patent Owner identifies two terms that were construed in the ITC investigation involving the ’917 patent based on constructions agreed upon by the parties. PO Resp. 9. First, the parties in the ITC investigation agreed that “threat identifier” means “information that identifies one or more network threats.” Id. at 11 (citing Ex. 2004, 3). Second, the parties further agreed that “threat indicator” means “information that indicates a resource associated with a network threat,” “[f]or example, network addresses, ports, FQDNs, URLs, URIs, the type of threat, geographic information, anonymous proxies, actors, or the like.” Id. at 11–12 (citing Ex. 2004, 3). Patent Owner asserts that these constructions should be used in this proceeding. Id. at 12. Petitioner does not dispute these constructions, and we adopt them.4” slip op. at 12
- ExcludeMotion to exclude, grantedGranted
“Before we get to claim construction, we exclude Ex. 2018 as untimely because Patent Owner had the testimony before it filed the Response and was plainly aware of it, as it was alluded to in the Response. See PO Resp. 10; Mot. to Exclude Opp. 2 (admitting that the trial finished before the Response was filed and that Patent Owner filed other testimony excerpts with the Response). However, the exclusion is of little consequence because we find that the testimony would be devoid of probative value. Dr. Rubin is not a fact witness and has not been offered as an expert in this case. Patent Owner cites the testimony in an effort to show that Petitioner is taking inconsistent positions, but we fail to see how Petitioner’s conduct bears on the meaning of “flow” in the ’917 patent.” slip op. at 14
- Expert testimonyDecided for petitioner
“Before we get to claim construction, we exclude Ex. 2018 as untimely because Patent Owner had the testimony before it filed the Response and was plainly aware of it, as it was alluded to in the Response. See PO Resp. 10; Mot. to Exclude Opp. 2 (admitting that the trial finished before the Response was filed and that Patent Owner filed other testimony excerpts with the Response). However, the exclusion is of little consequence because we find that the testimony would be devoid of probative value. Dr. Rubin is not a fact witness and has not been offered as an expert in this case. Patent Owner cites the testimony in an effort to show that Petitioner is taking inconsistent positions, but we fail to see how Petitioner’s conduct bears on the meaning of “flow” in the ’917 patent.” slip op. at 14
Patent outcomesUS 10,193,917 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,193,917 - Apple Inc. v. Sonrai Memory LimitedInstitutedPTAB · Dec 14, 2023 · IPR2023-00975 · APJ John D Hamann · IPR · Institution
The Board instituted review of claims 1, 3, 5, 7, 11–13, and 15 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute 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) (2018); see 37 C.F.R. § 42.108 (2022). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’014 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv factors 1–5. Because our analysis is fact driven, no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a). Considering these Fintiv factors as part of a holistic analysis, we are persuaded that the interests of the efficiency and integrity of the system would be best served by invoking our authority under § 314(a) to deny institution. Thus, we now turn to a compelling merits analysis under factor six. See CommScope Technologies LLC v. Dali Wireless, Inc., IPR2022- 01242, Paper 23, at 5 (PTAB Feb. 27, 2023) (precedential, decision upon Director review) (“In circumstances where . . . the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”).” slip op. at 11
- Parallel petitionsDecided for petitioner
“We agree with Petitioner that under the circumstances of this proceeding, “[t]he potential priority dispute between the two parties justifies institution of the two petitions.” Notice 4. In particular, the CTPG “recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” CTPG, 59. The CTPG provides that a “patent owner may seek to avoid additional petitions by proffering a stipulation . . . that certain references qualify as prior art.” Id. at 61. Patent Owner makes no such stipulation here. See Prelim. Resp. 13–16.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art, except we decline to adopt As adopted, we view the definition for the level of ordinary skill is consistent with the ’014 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 15
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 6,874,014 - Infineon Technologies AG v. Amatech Group LimitedSome claims unpatentablePTAB · Dec 1, 2023 · IPR2022-00951 · APJ Stacey G White · IPR · Final written decision
Claims 1, 2, 4–6, and 8–10 are unpatentable as obvious; claims 3 and 11 were not shown unpatentable, and claim 7 was not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find that Petitioner’s description is consistent with the prior art and patent specification currently before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For purposes of our Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” See Pet. 8. In addition, we note that we agree with Patent Owner’s statement that the distinction between the parties’ proposals is not material to any dispute before us and we find that our determinations would be the same under either definition of the person of ordinary skill in the art.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are not persuaded that Dr. van der Weide’s cited testimony is of a nature that should lead us to give his testimony no weight. We note that Patent Owner did not move to strike or exclude Dr. van der Weide’s testimony. When considering credibility and weight of evidence below, we consider Dr. van der Weide’s testimony as a whole as well as all other evidence of record and accord it the appropriate weight.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“provide an express construction of the full breadth of a claim term. “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). As such, we proceed in line with Federal Circuit case law, which “prescribes—deciding only the issues necessary to resolve the dispute before it.” Nichia Corp. v. DSS, Inc., No. 2022-1704, 2023 WL 7211097, at *3 (Fed. Cir. Nov. 2, 2023) (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). The Federal Circuit has long recognized that “[c]laim construction is a matter of resolution of disputed meanings and technical scope” and that claim construction may be required in an obviousness context “when the meaning or scope of technical terms and words of art is unclear and in dispute and requires resolution in order to determine obviousness.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). In order to determine whether Petitioner’s obviousness grounds meet their required burden of proof, we need not expressly state the full scope of this claim term. Thus, we are within our authority to proffer a construction that determines the scope of a claim term in a manner sufficient to determine whether the asserted art teaches the claim. In other words, there may be other ways to meet the disputed limitation, but for the purposes of our Decision, it is proper to expressly determine a claim term’s scope only as much as is required to resolve the disputed issues before us.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“the invention(s), but rather as examples of some of the embodiments.” Id. at 25:65–26:1; see also id. at 6:18–20 (embodiments “should be construed as illustrative rather than limiting”), 5:22–24 (“non-limiting example”). The Federal Circuit has noted that “[e]mbodiments in the specification—even if there is only one embodiment—cannot limit the scope of the claims absent the patentee’s ‘words or expressions of manifest exclusion or restriction.’” Apple Inc. v. Wi-LAN Inc., 25 F.4th 960, 967 (Fed. Cir. 2022) (citing Hill- Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014)). After reviewing the complete record, we see no such manifest exclusion or restriction in the ’240 patent specification. We decline Patent Owner’s request to limit the claims to the described single-frequency embodiments. See Phillips, 415 F.3d at 1323. We need not provide further express construction of this claim language for purposes of this Decision.” slip op. at 23
Patent outcomesUS 9,165,240 mixedClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,165,240 - PTAB · Nov 29, 2023 · IPR2023-00904 · APJ Garth D Baer · IPR · Institution
The Board instituted review of claims 1–7, 9–18, and 20 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“2022)6 (“Interim Procedure”) states that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)); see id. at 7, 9. As the Interim Procedure explains, such a stipulation (a Sotera stipulation) “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. Here, Petitioner provides a Sotera stipulation. Ex. 1026. Specifically, Petitioner stipulates that if we institute review, “Micron will not seek resolution in the district court of the same grounds as set forth in the petitions or any grounds that Micron could have reasonably raised in the petition[].” Id. (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020)).” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Here, General Plastic factors 1–5 weigh against denying institution. This is the first time this petitioner has challenged the ’527 patent. Pet. 90. The only connection Patent Owner alleges between this and previous petitioners challenging the same patent is that Petitioner’s law firm also represented one of the previous petitioners. Prelim. Resp. 12. That, however, is not the kind of relationship that might warrant denying a followon petition by a different petitioner. See Valve Corp. v. Elec. Scripting Prods. Inc., IPR2019-00062, Paper 11 at 9–10 (Apr. 2, 2019) (precedential) (exercising discretion to deny institution based on a different petitioner’s earlier-filed petition where the different petitioners were co-defendants in a related district-court litigation, and where both petitioners were accused of infringing the challenged patent based on the same product incorporating technology licensed from petitioner Valve). Because this Petitioner has not previously filed a petition and Patent Owner does not assert extenuating circumstances that might justify discretionary denial, see Prelim. Resp. 12– 14, factors 1–5 weigh against denying institution. See Alcatel-Lucent USA Inc. v. Oyster Optics, LLC, IPR2017-02146, Paper 12, 12 (Feb. 28, 2018) (“Once resolution of factor 1 indicates that Petitioner had not previously filed a petition against the same patent, factors 2–5 bear little relevance unless there is evidence in the record of extenuating circumstances.”). General Plastic factors 6 and 7 also weigh against denying institution. The four previous IPRs have all terminated due to settlement. See Pet. 89. Because this Petition is now the only IPR before the Board challenging the ’527 patent, we agree with Petitioner that this case provides an efficient means for resolving patentability within one year after institution and does so without unnecessarily straining the Board’s limited resources. See id. at 91. For these reasons, the circumstances in this case do not warrant denying the Petition under § 314(a).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “no claim terms require a formal construction for purposes of addressing the Grounds in this Petition.” Pet. 3 Patent Owner does not contest Petitioner’s argument at this stage. We agree with Petitioner that we do not need to explicitly construe any terms to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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))).” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“record, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one of the challenged claims of the ’527 patent is unpatentable. We therefore institute trial on all challenged claims and grounds raised in the Petition. At this stage of the proceeding, we have not made a final determination as to the patentability of any challenged claim or as to the construction of any claim term. Any final determination will be based on the record developed during trial.” slip op. at 13
Claim constructionDiscretionary denialPatents in suitUS 6,920,527 - Bright Data Ltd. v. Oxylabs, UabInstitution deniedPTAB · Nov 27, 2023 · IPR2023-00840 · APJ Iftikhar Ahmed · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable, principally because Cousins did not disclose the claimed discrepancy identification.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Based on the information presented in the Petition and the supporting evidence, we are not persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review of the challenged claims as set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, 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).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner and Patent Owner propose constructions for certain claim terms. See Pet. 13–14, 25; Prelim. Resp. 8–12. To the extent necessary, we address some of these arguments as part of our unpatentability analysis below. See infra § III.E.1.c. We, however, determine that no claim terms require express construction. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.” (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803) (Fed. Cir. 1999))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“to the selected scraping strategy,” i.e., identifying a discrepancy between two requests. And, as discussed further below, because Petitioner’s contentions as to Cousins’s disclosure are based on Petitioner’s incorrect interpretation of this claim limitation, Petitioner fails to persuade us that Cousins teaches or suggests this claim limitation. Petitioner first relies on Cousins’s disclosure of “two separate received requests where both requests are for the same target site” and Cousins’s teaching to combine those two requests into a single crawl request. Pet. 26 (citing Ex. 1004, 11:17–24). Petitioner fails to explain how this relates to identifying discrepancy between a request and a scraping strategy. As Patent Owner points out, if anything, this disclosure teaches looking for similarities rather than discrepancies between the two requests. After all, Cousins teaches “coalescing multiple requests from different requests sources 136 for similar data into a single crawl, . . . provid[ing] lower overhead, lower latency, and globally higher throughput, [and decreasing] the crawling burden on the target site 128.” Ex. 1004, 11:27–30. No aspect of this disclosure relates to identifying discrepancies or differences.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,965,770 - Apple Inc. v. Sonrai Memory LimitedInstitutedPTAB · Nov 21, 2023 · IPR2023-00819 · APJ John D Hamann · IPR · Institution
Instituted IPR on claims 1, 3, 5, 7, 11–13, and 15 on all asserted grounds; the Board found a reasonable likelihood of prevailing and compelling merits for at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute 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) (2018); see 37 C.F.R. § 42.108 (2022). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’014 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We have considered the circumstances and facts before us in view of Fintiv factors 1–5. Because our analysis is fact driven, no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a). Considering these Fintiv factors as part of a holistic analysis, we are persuaded that the interests of the efficiency and integrity of the system 6 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 13–14 (PTAB Dec. 1, 2020) (precedential). institution. Thus, we now turn to a compelling merits analysis under factor six. See CommScope Technologies LLC v. Dali Wireless, Inc., IPR2022- 01242, Paper 23, at 5 (PTAB Feb. 27, 2023) (precedential, decision upon Director review) (“In circumstances where . . . the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner argues that one of ordinary skill in the art “would have been motivated in light of Joy to configure the system in Asano so that its multiple processors are ‘mounted on a single die.’” Id. According to Petitioner, “[s]uch an implementation would have been a straightforward combination of well-known technologies using known methods and would have had predictable results.” Id. at 23–24 (citation omitted). In particular,” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“After reviewing Petitioner’s arguments and evidence, which are not addressed by Patent Owner at this stage of the proceeding, we are persuaded that Petitioner demonstrates, for purposes of this institution decision, that Asano teaches “[a] multiprocessing system.” In light of our finding, we need not, and thus do not, reach whether claim 1’s preamble is limiting. 2. Multiple Processors Petitioner argues that the combination of Asano and Joy teaches “multiple processors mounted on a single die,” as recited in claim 1. Pet. 22–30. More specifically, Petitioner argues that Asano teaches “a computer system that includes a processor group 110 that includes multiple processors.” Id. at 22 (citing Ex. 1005 ¶¶ 30–31); see also id. at 22–23 (citing Ex. 1005 ¶ 31, Fig. 1 (annotating processors 11a, 11b . . . 11n); Ex. 1002 ¶ 73). As to Joy, Petitioner argues that Joy teaches having “multiple processors are mounted on a single die.” Id. at 23 (citing Ex. 1002 ¶¶ 74–75); see also id. (citing Ex. 1006, 7:4–6) (arguing same). Petitioner argues that one of ordinary skill in the art “would have been motivated in light of Joy to configure the system in Asano so that its multiple processors are ‘mounted on a single die.’” Id. According to Petitioner, “[s]uch an implementation would have been a straightforward combination of well-known technologies using known methods and would have had predictable results.” Id. at 23–24 (citation omitted). In particular, die in a multi-processor system (such as the system in Asano) were well known in the art before the ’014 patent.” Id. at 27 (citing Ex. 1002 ¶ 84); see also id. at 27–28 (citing Ex. 1008,8 1; Ex. 1009,9 Abstract; Ex. 1010,10 1:48–60; Ex. 1011,11 292); id. at 28–29 (citing Ex. 1001, 1:34–44, Fig. 2; Ex. 1002 ¶ 85) (arguing that the ’014 patent acknowledges that “using multiple processors mounted on a single die in a computer system as conventional and beneficial”). Moreover, Petitioner argues that one of ordinary skill in the art” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 6,874,014
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.