• Intuit Inc. v. Samesurf, Inc.All claims unpatentable
  PTAB · Jun 25, 2024 · IPR2023-00339 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–18 are unpatentable as obvious over Lebrun and Wang; the Board did not reach the separate Prajapat and Wang challenge.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the parties, we found that a person of ordinary skill in the art (“POSITA”) “would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, or a similar field, and (2) at least two years of work experience in software development and/or web-based software,” which reflected Petitioner’s proposal. Dec. 11–12; see Dec. 9–12 (discussing the respective proposals and level of ordinary skill reflected in the challenged patent and asserted prior art). Patent Owner accepts this level of ordinary skill in the art. PO Resp. 42. Accordingly, we apply this determination of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “information related to a shared web browsing interaction” is interchangeable with “web browsing interaction data” and, as a result, this portion of the specification should limit the claim term. PO Resp. 18–19 (quoting Ex. 2004 ¶ 40). The quoted portion of Mr. Friedman’s testimony, however, addresses other terms in the specification and not “information related to a shared web browsing interaction.” PO Resp. 18–19 (quoting Ex. 2004 ¶ 40). As such, the testimony cited by Patent Owner does not support Patent Owner’s position. Accordingly, we determine that the patentee has not acted as a lexicographer to set forth a definition of “web browsing interaction data” in the written description. c. Plain and Ordinary Meaning Because the patentee has not acted as a lexicographer to set forth a definition of “web browsing interaction data,” we look to the plain and ordinary meaning of the term. See Edwards Lifesciences LLC v. Cook Inc., from the ordinary meaning will be adopted “when the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history” (internal quotation marks omitted)); Pet. Reply 5 (Petitioner arguing that “web browsing interaction data” should be afforded its plain and ordinary meaning) (citing Ex. 1034 ¶ 13). Notably, both Dr. Lieberman and Mr. Friedman agree that the plain and ordinary meaning of “web browsing interaction data” is sufficient to inform how one of ordinary skill would have understood the term. Ex. 1034 ¶ 13 (Dr. Lieberman testifying: “The plain meaning of ‘web browsing interaction data’ is data related to web browsing interactions. No additional definition or limitation is required in my opinion, nor is there any special or specific meaning given to the term in the specification of the ’145 patent.”); Ex. 1033, 171:5–16 (Patent Owner’s expert, Mr. Friedman, testifying that “the plain and ordinary meaning is sufficient.”). According to Petitioner, the plain and ordinary meaning is “data related to web browsing interactions.” Pet. Reply 5 (citing Ex. 1034 ¶ 13); Ex. 1034 ¶ 13 (“The plain meaning of ‘web browsing interaction data’ is data related to web browsing interactions.”). Patent Owner’s expert declined to opine on what the plain and ordinary meaning of “web browsing interaction data” other than it excludes webpages and partially filled webpages related to a web browsing interaction. See Ex. 1033, 171:5–16. slip op. at 27

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Accordingly, we conclude that the plain language of the claims does not require “web browsing interaction data” to be limited to data describing interaction performed on a website by a host device. We turn to the specification because the meaning of “web browsing interaction data” is informed “not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. The written description does not provide a definition or clear meaning for “web browsing interaction data.” Patent Owner acknowledges the term is not expressly used in the written description. PO Resp. 17. Patent Owner, however, identifies “information related to a shared web browsing interaction” as a term that is interchangeable with “web browsing interaction data.” PO Resp. 18, 29. We recognize the specification term “information related to a shared web browsing interaction” is substantially similar10 to Petitioner’s proposed plain and ordinary meaning of “web browsing interaction data” as “data related to web browsing interactions.” 11 Patent Owner identifies three passages that each describe the present invention as receiving information related to a shared web browsing interaction performed by a host device and performing the shared web browsing interaction based on the received information. PO Resp. 17–18 (block quoting Ex. 1001, Abstract, 3:10–24). The identified passages, however, do not show intention to manifestly limit “web browsing interaction data” to data describing interactions” slip op. at 25

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “forth by Petitioner (Pet. 22–34) discloses or suggests all limitations recited by claim 1, we consider Petitioner’s conclusion that it would have been obvious to combine Lebrun and Wang in the manner proposed to arrive at the claimed invention. See Pet. 19–22. (i) Articulated Reasoning To demonstrate obviousness, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. Petitioner contends that one of ordinary skill would have been motivated to combine Wang’s activating a session invitation with Lebrun’s invitation to join a group-surfing session. Pet. 28. Specifically, Petitioner contends that “activating an invitation via a designated URL address would further enable” Lebrun’s group-surfing server “to coordinate and manage the group-surfing session, which would further Lebrun’s objective of providing an ‘improved technique for group access to web sites.’” Pet. 28 (citing Ex. 1005, 7:1). We agree with Petitioner that activating an invitation via a designated URL address would be a technique that helps coordinate a group-surfing session and would enable multiple related users being able to access “substantially the same” slip op. at 63

  Patent outcomesUS 9,185,145 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,185,145
• Jiangsu Favored Nanotechnology Co., Ltd. v. P2i Ltd.Instituted
  PTAB · Jun 24, 2024 · IPR2024-00380 · APJ Sheldon M Mcgee · IPR · Institution

  The Board instituted IPR on claims 1–5, 7, and 9–14 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner

    “because they are premised on a misapplication of our precedent. Providing a document to the Office in an Information Disclosure Statement is sufficient to satisfy AB prong one as long as that “previously presented” art is “the same or substantially the same” as that presented in the Petition. See Advanced Bionics, 7–8 (holding that “[p]reviously presented art includes . . . art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent”). As we have already found, there are no material differences between the asserted art and the prior art involved during examination under BD factor (a). Petitioner provides no authority that requires us to interpret “involved during examination” under BD factor (a) as “used in a rejection” or “mentioned by the examiner” (Pet. 60), and we are aware of none. Patent Owner’s position, in that regard, appears to conflate the first AB prong (whether the art previously was presented to the Office) with an aspect of the second AB prong (the extent to which the Examiner considered that art).” slip op. at 11

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “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). The findings and conclusions set forth in this Decision are provided for the exclusive purpose of explaining our determination that Petitioner has met that standard on this record. slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had “at least a bachelor’s degree in a field such as chemistry, physics, or chemical engineering, as well as at least two years of experience with plasma-polymerization techniques.” Pet. 20 (citing Ex. 1002 ¶¶ 22–29). Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See Prelim. Resp., generally. On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Petitioner’s proposed unchallenged definition because, on this record, it is consistent with the disclosures of the asserted prior art references.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner asserts that the claimed term “aryl” should be construed to mean “an aromatic ring system.” See Pet. 20–23. Patent Owner does not propose a different claim construction at this stage of the proceeding. See Prelim. Resp., generally. After review of the preliminary record, we determine that no claim terms need to be construed for purposes of institution. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 11,041,087
• Nespresso USA, Inc. v. K-Fee System GmbHInstituted
  PTAB · Jun 14, 2024 · IPR2024-00254 · APJ James J Mayberry · IPR · Institution

  The Board instituted IPR of claims 1–19, finding a reasonable likelihood that claim 1 is obvious over Yoakim, Jarisch, and Rossi.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “We have authority under 35 U.S.C. § 314 to determine whether to institute review. 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (2023) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art would have had “a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products and experience with sensors for recognizing an identifier.” Pet. 17 (referencing Ex. 1003 ¶ 40; IPR2022-01574, Paper 12, 15). Patent Owner does not dispute Petitioner’s characterization of the level of ordinary skill in the art of the ’829 patent. For purposes of this Decision, based on the prior art, the sophistication of the technology at issue, and Mr. Jobin’s Declaration testimony, we adopt Petitioner’s unopposed definition of the level of ordinary skill. The ’829 patent, as well as the prior art of record, includes systems that use identifiers on a capsule to control the operation of a beverage machine. See, e.g., Ex. 1001, 1:29–35 (“[T]he present invention . . . has an identifier, which allows to individualize the respective portion capsule.”); Ex. 1004 ¶ 25 (discussing the system’s “identification means”); Ex. 1005 ¶ 1 (“The invention relates to the preparation of a beverage by use of a capsule containing beverage ingredient in a beverage production device. The present invention in particular focuses on the detection of the capsule.” (emphasis added)); Ex. 1041, code (57) (“The process for controlling the operation of an edible-product making machine [includes] . . . “recogni[zing] an identifying element . . . .”). Cf. Nespresso USA, Inc. v. K-Fee Sys.” slip op. at 16

  • BurdenInstituted

    “c) Conclusion – Motivation to combine To summarize, we determine, on the current record, that Petitioner has sufficiently demonstrated that a person having ordinary skill in the art would have had a reason to combine the teachings of Yoakim, Jarisch, and Rossi as Petitioner proposes, with a reasonable expectation of success in arriving at the claimed invention. We determine, on the current record, that Petitioner sufficiently provides rational underpinnings for its reasoning. Cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 29

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “position a code on the bottom said of the rim of a capsule, taken directly from Jarisch. See Pet. 38 (referencing Ex. 1005 ¶ 22); see also Ex. 1005 ¶ 22 (“The bottom of the rim is sufficiently away from the liquid injection and beverage delivery areas so that there is a lower risk for the code to become unreadable . . . by beverage residues or otherwise (e.g., coffee particles). As a result, the reading is made more reliable.”); cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). On the current record, Patent Owner’s attorney argument does not identify sufficiently a deficiency in Petitioner’s reasoning. We also do not agree, on the current record, that Petitioner’s position is deficient for not accounting for Jarisch reading its code as the capsule spins or that Yoakim’s rim is not sufficiently sized for Jarisch’s code. These arguments are based on bodily incorporating features from Jarisch, rather than considering how a person having ordinary skill in the art would understand the teachings. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“[The] test for obviousness,” however, “is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”).” slip op. at 26

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,465,829
• Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.Instituted
  PTAB · Jun 12, 2024 · IPR2024-00231 · APJ Avelyn M Ross · IPR · Institution

  The Board instituted IPR on claims 14–16, 18, 27–29, 31, and 32 on all asserted grounds, finding a reasonable likelihood of success on the Worm–Levitz obviousness challenge.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “To anticipate a claim, a reference “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, 545 F.3d at 1369. The prior art reference “must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” Id. at 1371 (citation omitted). “[D]ifferences between the prior art reference and the claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id. Although the various embodiments of Worm contain similar features, we are not persuaded that Petitioner sufficiently demonstrates that the various embodiments disclose a single vaporizer device that anticipates the challenged claims. As Patent Owner notes, “for limitations [14.A] and [14.B], Petitioners rely on the embodiment of Figure 2 (Pet. 28–29), whereas for limitation [14.C], which requires a pressure sensor, Petitioners rely on Figure 5” (id. at 32), and “for limitations [14.D], [14.E], and [14.F], Petitioners rely on the different embodiment of Figure 7” (id. at 34–45). Worm’s description of the figures suggests each of Figures 2, 5, and 7 relate to different embodiments of Worm. See Ex. 1004 ¶¶ 14 (“FIG. 2 is a sectional view through an electronic smoking article comprising a cartridge and a control body according to an example embodiment of the present disclosure”), 17 (“FIG. 5 is a detailed view of the proximal end of the control body illustrated in FIG. 3 that also illustrates a sealing member” (emphasis added)), 20 (FIG. 7 is a partial sectional view of an electronic smoking article according a further example embodiment of the present disclosure showing a control body connected to a cartridge via the control body coupler and the cartridge base” (emphasis added)). Based on Worm’s descriptions, it appears that Figure 2 relates to one embodiment, Figures 3–5 relate to another embodiment, and Figure 7 relates to yet another embodiment. See id. ¶¶ 13–20, 53, 59. In addition, Petitioner does not argue that a single embodiment of Worm discloses all limitations of challenged claim 14. See generally Pet. Nor does Petitioner direct our attention to any disclosure in Worm that show how Figures 2, 5, and 7 interrelate as a single embodiment or present any argument that a person skilled in the art “would ‘at once envisage’ the claimed arrangement or combination.” Id.; Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015). Thus, Petitioner fails to show that the cited material in Worm discloses the limitations of claim 14 arranged in the same way as claimed without resorting to the need to pick and choose from disparate disclosures. Net MoneyIN, 545 F.3d 1371 (“[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the prior art might somehow combine to achieve the claimed invention.”).” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “that outside air enters between the battery and cartridge connection. Id. at 56 (citing Ex. 1003 ¶¶ 168–169; Ex. 1007, 4:41–43). Petitioner contends that air inlets are a design choice and having the channel between the battery and the cartridge would enable the smoker to clean the channel simply by removing the cartridge. Id. at 57–60 (citing Ex. 1003 ¶¶ 170–173; Ex. 1004 ¶ 72; Ex. 1007, 1:64–2:1, 4:15–18, 4:41–43, Figs. 3a, 3b; Ex. 1009, 4:45–48, Fig. 3; Ex. 1011, 4:9–12, Fig. 5A; Ex. 1012 ¶ 28, Fig. 6; Ex. 1013 ¶ 97, Fig. 16). Petitioner contends that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Worm and Levitz because both disclose two-piece e-cigarettes and an ordinary artisan would have understood that placing the air inlet on the periphery of the device would not disrupt its operation and the channel would be along either a male-female or female-male connection. Id. at 60–62 (citing Ex. 1003 ¶¶ 174–178; Ex. 1004 ¶ 76; Ex. 1010 ¶ 48). Patent Owner argues that neither Worm nor Levitz discloses or renders obvious the air flow and air inlet claim limitations, and that combining Worm and Levitz would be redundant. Prelim. Resp. 20–22 (citing Ex. 2001 ¶¶ 68–72). In reply to Petitioner’s assertion that air inlets are a design choice and that an additional air inlet would alleviate backflow, Patent Owner argues that having additional air inlets is not a design choice because “the size, shape, and location of air inlets affect draw resistance, which impacts, among other things, vapor production, the size of the visible vapor cloud, and nicotine delivery to a user.” Id. at 22. Patent Owner also argues that a person of ordinary skill in the art would not be motivated to include the additional air inlet because Worm already addresses backflow with the existing inlet 789. Id. at 22–24 (citing Ex. 1004 ¶ 76; Ex. 2001 ¶¶ 73–77). Based on the information presented in the Petition, we are persuaded that Petitioner demonstrates a reasonable likelihood of prevailing at trial in showing that claims 14 and 27 of the ’123 patent are unpatentable as obvious based on Worm and Levitz. Because Worm discloses a non-airtight gap and Levitz discloses airflow from the periphery of the device between the battery and the cartridge, we are persuaded, for the purposes of institution, that an ordinary artisan would have had reason to modify Worm in view of Levitz to render obvious limitations [14.E], [14.F], [27.G], and [27.H] for the reasons asserted by Petitioner. At this stage, Patent Owner’s arguments to the contrary are unavailing because they are directed to Worm’s airflow and backflow rather than Petitioner’s proposed combination of Worm and Levitz.” slip op. at 31

  • Skill levelSkill level petitioner adoptedOther

    “have at least a B.S. degree in Mechanical Engineering, Electrical Engineering, Industrial Design, Product Design, or similar field, with at least two years of industry experience in one of these fields” and that a person of ordinary skill in the art “would have been familiar with electrically powered vaporizing articles, their components or the underlying technologies.” Pet. 7. Patent Owner argues that a person of ordinary skill in the art “at the time of the ’123 patent would have had a B.S. in mechanical engineering, electrical engineering, or an equivalent degree, and either at least two years of experience designing electro-mechanical consumer products or an advanced degree in mechanical engineering, electrical engineering, or an equivalent field.” Prelim. Resp. 4 (citing Ex. 2001 ¶ 19). Patent Owner also states that “Patent Owner’s arguments herein apply regardless of which definition of a [person of ordinary skill in the art] is adopted.” Id. (citing Ex. 2001 ¶¶ 20–21). In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’123 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’123 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,130,123
• Juul Labs, Inc. v. Njoy, LLCInstituted
  PTAB · May 24, 2024 · IPR2024-00161 · APJ Kristina M Kalan · IPR · Institution

  Inter partes review was instituted for claims 1–27 on all asserted grounds, based on a reasonable likelihood that JUUL would prevail on its obviousness challenges.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting inter partes review is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the parties’ papers and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we grant the Petition and institute inter partes review.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “the aperture is “in the housing.” Rather, the claims recite a “housing includes/having a first end” and a “housing includes/having a first aperture on the first end.” Thus, the plain and ordinary understanding of the claim language “housing includes/having a first aperture on the first end” does not require that the aperture be “in the housing.”” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted

    “demonstrate a reasonable likelihood of prevailing on its Xia-based obviousness arguments. With reference to our claim construction of the “first aperture on the first end” of the housing, supra, we agree that Petitioner has demonstrated, on this record, Xia’s (1) “housing includes/having a first aperture on the first end” and (2) “housing includes/having a first aperture on the first end,” more particularly, that Xia’s first aperture is sufficiently located on the first end of Xia’s housing. Pet. 10–13, 32–35. Notwithstanding Patent Owner’s arguments to the contrary, namely, that Petitioner’s “first aperture” “is not in Xia’s stainless steel shell,” nor “is that aperture at the first end of the housing” (Prelim. Resp. 25–26), the record before us supports Petitioner’s position and claim construction at this stage in the proceeding. We have concerns as to whether Petitioner sufficiently shows a reason to modify Xia in view of Wang/Fang, including showing why a POSITA would have extended Xia’s passageway to the very end of the housing (as in limitations 1[b2] and 1[c]), and whether Mr. Sturges provides sufficient support for his contentions. See generally Pet.; see also 37 C.F.R. § 42.22(a)(2) (stating that the petition must contain a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence); see, e.g., Ex. 1007 ¶ 90 (stating that a POSITA would have been motivated to modify Xia’s cartridge “to be a simpler design, which is easier and cheaper to manufacture”). However, we are sufficiently persuaded on this record that Petitioner has met its burden of demonstrating a reasonable likelihood of prevailing on its contentions of obviousness of claim 1. Because we institute inter partes review on at least one claim, we institute on all claims. SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018) (“The agency cannot curate the claims at issue but must decide them all.”).” slip op. at 29

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied

    “We decline to deny the Petition for this reason. Although the text in the shorthand column does bring the total number of words to over the 14,000-word limit, the column does not contain any substantive argument. Rather, the column merely provides a shorthand notation of how Petitioner refers to the claim elements within the Petition’s headings. Because the table and the Petition also refer to claim element numbers (i.e., claim element 1[a1]), the shorthand notations were not necessary to Petitioner’s arguments or to understand the Petition’s headings. As such, it is not necessary to consider the shorthand column to render this decision. Moreover, we determine that shorthand column was added to aid the Board’s review of the Petition and for this additional reason, the additional text in the shorthand column does not warrant denial of the Petition.” slip op. at 37

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,334,881
• Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.Institution denied
  PTAB · May 24, 2024 · IPR2024-00223 · APJ Avelyn M Ross · IPR · Institution

  The Board denied institution on the merits because Petitioner did not show a reasonable likelihood that claims 1–4, 6, 7, 15, 16, 18–25, 28, and 30 were unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Accordingly, Petitioner has not established that there is a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition based on Verleur and the knowledge of a person of ordinary skill in the art. E. Challenge based on Verleur, Knowledge of a Person of Ordinary Skill in the Art, and Plojoux Petitioner also contends Verleur, the knowledge of a person of ordinary skill in the art, and Plojoux would have rendered claims 2, 4, 21, and 23 obvious. Pet. 70–78. Petitioner does not present any arguments or evidence with respect to claims 2, 4, 21, and 23 that would remedy the defects noted above with respect to independent claims 1 and 20. Thus, Petitioner fails to demonstrate that the subject matter of claims 2, 4, 21, and 23 would have been obvious over the combined disclosures of Verleur, the knowledge of a person of ordinary skill in the art, and Plojoux.” slip op. at 22

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art would have at least a B.S. degree in Mechanical Engineering, Electrical Engineering, Industrial Design, Product Design, or similar field, with at least two years of industry experience in one of these fields, and such [person of ordinary skill in the art] would have been familiar with electrically powered vaporizing articles, their components, or the underlying technologies. Pet. 5. Patent Owner contends that a person of ordinary skill in the art “would have had a B.S. in mechanical engineering, electrical engineering, or an equivalent degree, and either at least two years of experience designing electro-mechanical consumer products or an advanced degree in mechanical engineering, electrical engineering, or an equivalent field.” Prelim. Resp. 4 (citing Ex. 2001 ¶ 19). Patent Owner also states that “Patent Owner’s arguments herein apply regardless of which definition of a [person of ordinary skill in the art] is adopted.” Id. (citing Ex. 2001 ¶¶ 20–21). On this record, we determine that Petitioner’s proposed definition is consistent with the prior art of record, and apply it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings on ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner “contend[s] the term ‘mouthpiece’ means a ‘separate component from the storage compartment to be used by a mouth.’” Pet. 6. Petitioner additionally contends the construction of the term “is not material to the grounds in the Petition.” Id. Patent Owner contends that the term “mouthpiece” “means ‘portion to be used by a mouth.’” Prelim. Resp. 5. Patent Owner additionally “agrees with Petitioners that, at least in this preliminary stage, it is not necessary for the Board to resolve this construction.” Id. For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Petitioner’s position is unpersuasive. It is not evident from the record that the skilled artisan would have understood that a window equates to a hole or “air inlet passage” as claimed. Indeed, the record suggests otherwise. For example, Verleur explains that: The shell may include a window provided at the cartomizer receiving segment so that a portion of the chamber is visible from outside the shell. [Ex. 1005 ¶ 27]. One or more windows 130 may be provided in outer shell 106 (see FIG. 1). Windows 130 may be made of a translucent material, such as glass or substantially clear plastic, in order to view internal components of battery portion 100. [Id. ¶ 37] For instance, in one embodiment, window 130 may be provided on or proximate to cartomizer receiving segment 104 and, more particularly, cartomizer chamber 108 so as to permit a user of electronic cigarette 10 to view the cartomizer 200 when it is inserted into cartomizer chamber 108. [Id.]. At least a portion of body 208 may be composed of translucent or substantially translucent material, such as glass or plastic, so that a user may see fluid 300A held within. The portion of body 208 composed of translucent material may be alignable with window 130 . . . . [Id. ¶ 38]. Petitioner itself acknowledges that window 130 of Verleur “may be made of a translucent material, such as glass or substantially clear plastic” and that the purpose of window 130 is “to view internal components of battery portion 100.” Pet. 29 (quoting Ex. 1005 ¶ 37). Thus, Verleur provides that window 130 may be translucent to allow a user to view internal components, and Verleur makes no mention that window 130 is a hole or slit that allows air to enter. Ex. 1005 ¶¶ 37–38. Neither Petitioner nor its declarant Dr. Singhose adequately explains why the ordinarily skilled artisan would have understood window 130 to be an air inlet passage that allows air to enter gap “formed by an exterior surface of the cartridge and . . . an internal surface of the receptacle.” In contrast, Patent Owner, through the testimony of Dr. Collins, persuasively explains that the skilled artisan would have understood that Verleur’s window 130 is not an air inlet passage. Ex. 2001 ¶¶ 48–49; Prelim. Resp. 11–13. Dr. Collins explains that “[w]indow 130 is a window . . . ‘to view internal components of battery portion 100,’ such as ‘to permit a user . . . to view the cartomizer 200 when it is inserted into cartomizer chamber 108.’” Ex. 2001 ¶¶ 46–47 (third alteration in original). Dr. Collins further testifies that “Verleur knew how to describe an air inlet on the outside of the shell, since one is described in a different embodiment.” Id. ¶ 45. Alternatively, Petitioner contends that “to the extent window 130 is not a slit, but instead comprises glass or plastic, a hole would nonetheless be needed elsewhere in the shell to permit air into the gap between the cartomizer 200/200A and the outer shell 106.” Pet. 34. Petitioner points to Verleur paragraph 39, which describes holes or ducts in the outer shell. Id. However, where Verleur describes the existence of holes or ducts for air flow, the air flow is described as flowing though the cartomizer body itself and not through the gap or channel formed where the cartomizer is inserted into the shell chamber. Ex. 1005 ¶ 39 (stating that “[i]nhalation tube 222 may also be in fluid communication with one or more holes or ducts provided, for instance, in sides of outer shell 106 in order to permit air flow through cartomizer body 208” (emphasis added)). This is consistent with Dr. Collins’s testimony that “[s]uch a mechanism would allow air to flow directly into the cartomizer through aligned holes.” Ex. 2001 ¶ 66 (emphasis added). In addition, Petitioner fails to demonstrate that an air inlet passage” slip op. at 17

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,709,173
• Juul Labs, Inc. v. Njoy, LLCInstituted
  PTAB · May 24, 2024 · IPR2024-00160 · APJ Kimberly Mcgraw · IPR · Institution

  The Board instituted review of claims 1–48 on all asserted §103 grounds, finding a reasonable likelihood that JUUL would prevail on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of all challenged claims of the ’864 patent on all grounds asserted in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “The Director has the discretion to deny a petition that presents the same or substantially the same prior art or arguments as previously presented to the Office. The Board uses the following two-part framework in determining whether to exercise discretion under § 325(d) to deny institution. (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential). In applying the two-part framework, we consider the following non-exclusive factors:” slip op. at 10

  • Skill levelSkill level board ownOther

    “time it was made, we consider the level of ordinary skill in the pertinent art at the time of invention. Graham, 383 U.S. at 17. Petitioner does not provide its own definition of the level of ordinary skill in the art. Instead, Petitioner asserts: In previous litigation involving the ’881 patent – the parent patent to the ’864 patent (Fuma International LLC v. R.J. Reynolds Vapor Company, Case No. 1:19-cv-260 (M.D.N.C. 2019)) with an identical specification – Patent Owner’s predecessor-in-interest asserted that a person of ordinary skill in the art (“POSITA”) at the time of the purported invention would have had a mechanical or electrical engineering degree, industrial design degree, or a similar technical degree, or equivalent work experience, and 5 to 10 years of experience in electromechanical devices. Ex. 1007, ¶¶14-17. Pet. 11–12; see also Ex. 1007 ¶ 16 (Mr. Sturges testifying that he meets “that qualification” without affirmatively providing a definition for a POSITA). Patent Owner “does not challenge the definition of a POSITA set forth in the Petition.” Prelim. Resp. 9. In light of the record before us, and for purposes of this Decision, we adopt the level of ordinary skill in the art set forth in the above block-quote of the Petition as this definition appears to comport with the qualifications a person would have needed to understand and implement the teachings of the ’864 patent and the prior art.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “b) Analysis We start with the claim language itself. The claims do not recite that the aperture is “in the housing.” Rather, the claims recites a “housing having a first end” and a “housing having a first aperture proximate the first end.” The plain and ordinary meaning of “proximate” is near or close to, not on. Thus, the plain and ordinary understanding of the claim language “housing having a first aperture proximate the first end” of the housing is that the first aperture is near, though not necessarily on, the first end of the housing.” slip op. at 19

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,497,864
• Apple Inc. v. Ald Social LLCInstituted
  PTAB · Mar 18, 2024 · IPR2023-01399 · APJ Phillip A Bennett · IPR · Institution

  The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that Wolfe renders claim 1 obvious under § 103.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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 also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The asserted prior art, like the challenged patent, presents high-level schematics and functional descriptions of various system components used in monitoring events and crowd behavior using location-based services. These system components largely include servers, websites, and mobile telephones utilizing wireless technologies, such as Wi-Fi, cellular, and global positioning system (GPS) to communicate and generate location data regarding mobile devices, as well as the use of databases to store historical information related to location-based services. The prior art and the patent provide description of monitoring crowd behavior by tracking the location of groups of mobile devices. Neither the challenged patent nor the asserted” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther

    “we agree with Petitioner that “[t]he specification does not provide any explicit definition.” Pet. 14. The written description, however, indicates “[a] viral event is defined as occurring when one or more predefined parameter thresholds have been surpassed, as determined in the exemplary embodiment in the Network Monitor 302.” Ex. 1001, 4:45–48. As Petitioner notes, the written description also provides examples of predefined parameter thresholds used by Network Monitor 302 “to determine if the monitored network indicates that a viral event may be occurring or impending.” Ex. 1001, 5:14–16; Pet. 14 (citing Ex. 1001, 5:16–20). Examples of predefined parameter thresholds include an excessive number of wireless devices in an area, excessive use of wireless devices in an area, two highly dense clusters of wireless devices converging at a significant rate of speed, and the difference in the number of wireless devices in an area exceeds a threshold over consecutive time periods. Ex. 1001, 5:15–20, 5:31–35, 5:41–42 (“to assess the number . . . of wireless devices”), 5:55–57; see Pet. 15 (citing Ex. 1001, 5:31–36, 5:51–57). As such, the written description describes parameter thresholds related to number, use, and movement of wireless devices being used to determine whether a viral event may be occurring.” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted

    “institution. On this preliminary record, Petitioner has sufficiently shown that responsive to the network monitor observing a significant aggregation of devices in a particular area, application 322 functions as a crowd risk determinant because the application 322 assesses the needs arising from the aggregation of devices in that area. Ex. 1004, ¶¶ 46. Additionally, although the example provided in Wolfe relates to determining the number of pizza slices needed based on how many devices are in particular location, on this preliminary record, we agree with Petitioner that a person of ordinary skill in the art would have found it obvious to implement a similar risk analysis to determine that police patrols would be needed in a particular area, as taught by Wolfe, based on the determination of crowd’s location, activity, and movement. Id. at 14.” slip op. at 25

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,402,158
• Apple Inc. v. Ald Social, LLCInstituted
  PTAB · Mar 18, 2024 · IPR2023-01398 · APJ Barbara A Benoit · IPR · Institution

  The Board instituted inter partes review of claims 1–14 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Wolfe and Pfeffer.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “II. ANALYSIS A. Legal Standards Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information in the Petition shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314(a).” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on declaration testimony from Dr. Guy (Ex. 1003), Petitioner asserts that a person of ordinary skill in the art “would have been someone knowledgeable and familiar with the field of crowd analysis and location-based computing” and would have had “at least a bachelor’s degree in computer science/computer engineering, or equivalent training, and approximately two years of experience working in the field of crowd analysis and location-based computing.” Pet. 12 (citing Ex. 1003 ¶¶ 19–21). Petitioner further notes that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. For purposes of this Institution Decision, we adopt the assessment offered by Petitioner as it is consistent with the challenged patent and the asserted prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “agree with Petitioner that “[t]he specification does not provide any explicit definition” for “indication of a viral event.” Pet. 13. The written description, however, indicates “[a] viral event is defined as occurring when one or more predefined parameter thresholds have been surpassed, as determined in the exemplary embodiment in the Network Monitor 302.” Ex. 1001, 4:40–43. As Petitioner notes, the written description also provides examples of predefined parameter thresholds used by Network Monitor 302 “to determine if the monitored network indicates that a viral event may be occurring or impending.” Ex. 1001, 5:9–12; Pet. 13–14 (citing Ex. 1001, 5:9–15). Examples of predefined parameter thresholds include an excessive number of wireless devices in an area, excessive use of wireless devices in an area, two highly dense clusters of wireless devices converging at a significant rate of speed, and the difference in the number of wireless devices in an area exceeds a threshold over consecutive time periods. Ex. 1001, 5:12–14, 5:27–31, 5:35 (“to assess the number . . . of wireless devices”), 5:48–51; see Pet. 14 (citing Ex. 1001, 5:26–31, 5:45–51). As such, the written description describes parameter thresholds related to number, use, and movement of wireless devices being used to determine whether a viral event may be occurring.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “4. The Combination of Wolfe and Pfeffer To demonstrate obviousness, Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. More specifically, to prevail, Petitioner must demonstrate by a preponderance of evidence that “a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Regarding the required articulate reasoning, Petitioner contends that “[a]lthough Wolfe teaches providing relevant crowd information to police, Wolfe does not provide the details for how to alert and notify the police.” Pet. 24 (citing Ex. 1004 ¶ 14). “Pfeffer, however, fills in Wolfe’s details by specifically teaching techniques for receiving information about crowds, evaluating the information, and alerting first responders when needed,” according to Petitioner. Pet. 24 (citing Ex. 1005, Abstract, ¶¶ 6, 40–41). Petitioner also contends that the combination would provide additional benefits to Wolfe’s system from Pfeffer’s additional features, such as providing “continuous updates to the incident scenario model saved for future use, recommendations for the most effective methods to respond to the incident based on past responses and current trends, and determining if an incident should be elevated based on the number of people involved in the incident.” Pet. 26 (citing Ex. 1003 ¶ 77; Ex. 1005 ¶¶ 28, 77, 85). Regarding the required expectation of success, Petitioner contends that “[a] POSITA would have found the combination of Wolfe and Pfeffer predictable” because they are similar in that “both systems analyze crowd information to identify safety risks.” Pet. 25 (citing Ex. 1003 ¶ 75; Ex. 1004, Abstract, ¶¶ 11, 14; Ex. 1005 ¶ 28). Petitioner further asserts that “[a] POSITA would have had a reasonable expectation of success when combining Wolfe and Pfeffer because [they] are implemented in the same manner,” with both being implemented on servers and with Pfeffer indicating that its techniques could be “any combination of software and/or hardware that is configured to perform one or more tasks.” Pet. 25–26 (citing Ex. 1003 ¶ 78; Ex. 1004 ¶ 70, 74; Ex. 1005 ¶¶ 37, 32). Petitioner also contends “the combination would use known techniques (Pfeffer’s implementation details of an incident response method) to improve a similar system (Wolfe’s crowd detection and incident response system) in the same way (providing crowd details and incident information to first responders so that they may better respond to comprised crowd safety).” Pet. 26–27 (citing Ex. 1003 ¶¶ 77–79). Petitioner’s showing (Pet. 23–27) of articulated reasoning to support” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,198,054
• T-Mobile USA v. Dali Wireless, Inc.All claims unpatentable
  PTAB · Mar 5, 2024 · IPR2023-00830 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–19 are unpatentable: claims 1–5, 8–11, 13–16, 18, and 19 are anticipated by Wu; claims 6, 7, 12, and 17 are obvious over Wu and Sabat-552.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “an educational background in electrical engineering and experience in the design of wireless communication systems,” and “[m]ore particularly, a POSA would be a person with a bachelor’s degree in electrical engineering (or a similar technical degree or equivalent work experience) and at least 3 years of experience working with wireless communication systems.” PO Resp. 13. We found in the Decision on Institution that Patent Owner’s definition was generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as opposed to 2 to 3 years) of work experience in wireless communication systems and, for the purpose of institution, we adopted Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art. Dec. on Inst. 20–21. The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr. open-ended terminology from Patent Owner’s definition and adopt that definition.” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “b) Our Conclusion We conclude that the proper construction of “digital representation of a . . . set of radio resources” encompasses user payload data packaged in or combined with RF carrier channels. We further conclude that “digital representation of a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units.” slip op. at 18

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “packetize” or “packetizing” as recited in claims 2, 9, and 14. PO Resp. 19– 20; Pet. Reply 5–6. Patent Owner argues that we should construe “packetize” to mean “create data packets that include destination information.” PO Resp. 19–20. Patent Owner argues that this is consistent with how the Board previously interpreted this claim term in the 00571 IPR. PO Resp. 19 (citing Ex. 1017). We do not need to construe “packetizing” because collateral estoppel prevents Patent Owner from arguing that Wu does not disclose “packetizing” as explained below. We also do not need to construe any other terms to resolve the disputes before us. 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 22

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner

    “When deciding whether issue preclusion applies, we consider whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX Inc. v Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)). To the extent Petitioner asks us to consider the 01473 IPR institution decision for issue preclusion, we do not. In that decision the Board reached a finding based on the institution standard (showing of a “reasonable likelihood that the petitioner will prevail,” 35 U.S.C. § 314(a)) rather than proof by a preponderance of the evidence, which is before us now (35 U.S.C. § 316(e)). Ex. 1016. Thus, issues before us here were not presented and adjudged in that institution decision. Regarding the 01473 IPR adverse judgment decision, that decision did not require determination of any issues before us, as that decision was based on Patent Owner canceling the challenged claims rather than any determination regarding unpatentability that had been shown by a preponderance of the evidence. Ex. 1014. 2. Collateral Estoppel With Respect to the 00571 IPR We find and determine that the final written decision in the 00571 IPR, and the Federal Circuit’s CommScope decision affirming that decision, satisfies the conditions for applying collateral estoppel because the 00571 discloses materially the same claim limitations7 challenged here, and Patent Owner had full representation throughout the proceedings. Setting aside the factors of issue preclusion for a moment, our reviewing court’s affirmance of our final written decision in CommScope is persuasive authority that supports our prior construction of “packetizing” and Petitioner’s showing that Wu teaches the disputed packetizing limitations under that construction. In addition, issue preclusion prevents Patent Owner from re-litigating the issue of whether Wu teaches materially the same disputed limitation. See Pet. Reply 24; Ex. 1017, 31–34 (final written decision determining obviousness of claims 9, 10, 14, and 16 of the ’473 patent over Wu and Sabat-426); Ex. 1072, 5 (summarizing the final written decision regarding the packetizing limitations), 10–16 (finding no error in the determinations regarding the packetizing limitations).” slip op. at 12

  Patent outcomesUS 10,334,499 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,334,499

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.