- Chongqing Yanmei Technology Co., Ltd. v. Terves, LLCSome claims unpatentablePTAB · Aug 27, 2024 · IPR2023-00521 · APJ Jon B Tornquist · IPR · Final written decision
Claims 19–61, 63–77, and 79 are unpatentable as anticipated by Doud; claims 78, 80, and 81 are not shown unpatentable. The contingent motion to amend is granted in part and denied in part.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have at least a Ph.D. in chemistry, metallurgy, or material science or material engineering” or, in the alternative, “would have a Bachelor of Science or Master of Science degree in one of these disciplines plus experience involving the use and design of dissolvable metal alloys for use in creating tools and other downhole parts for well drilling or completion activities.” Pet. 13–14. Patent Owner does not oppose Petitioner’s contentions regarding the level of ordinary skill in the art. PO Resp. 12 n.4. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the ordinarily skilled artisan as it is consistent with the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“With respect to claim 19, Petitioner proposes constructions for the terms “in situ precipitate” and “a plurality of particles of said in situ precipitate having a size of no more than 50 µm.” Pet. 11–12. With respect to claims 76–81, Petitioner proposes a construction for the term “wherein said additive material includes one or more metal materials selected from the group consisting of 0.1–35 wt. % copper, 0.1–24.5 wt. % nickel and 0.1–20 wt. % cobalt.” Id. at 13. Patent Owner contends no claims require construction for purposes of this Decision. PO Resp. 12 n.4, 17–18; Mot. 16–17. Upon review of the prior art of record, we determine that no claim terms require express construction for purposes of this Final Written 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, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateWritten description adequateMixed
“Ex. 2027, 20:25–21:5 (emphasis added). The disclosure that the “magnesium composite” of “[t]he present invention” “includes at least 50 wt% magnesium” is unambiguous and constitutes strong evidence that the inventors were not in possession of a magnesium composite with less than 50 wt. % magnesium, or additive concentrations above 50 wt. %. See SciMed Life Systems, Inc. v. Advanced Cardiovasular Systems, Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (noting that a description of the “present invention” as having a particular structure “is strong evidence that the claims should not be read to encompass the opposite structure”). Consistent with this conclusion, the original claims of the ’295 application all limited the additive material in the composite to 0.05 wt %–45 wt %. Ex. 2027, 26:1– 13, 29:9–15. Likewise, in each example where copper, nickel, or cobalt additives are used in the range recited in the proposed substitute claims, the magnesium composite is “over 50 wt% magnesium,” and any claims that do not require this range of magnesium are limited to an additive range of “about 0.05 wt%–45 wt% of said mixture.”8 Ex. 2027, 6:13–7:4, 7:16–19, 8 Written description support is considered from the view point of the ordinarily skilled artisan. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Patent Owner, bearing the burden to show written description support in any priority application for which it seeks the benefit of its filing date, provides no testimony from an ordinarily skilled artisan regarding written description support in the ’295 application, or any evidence to show what such an artisan would conclude from the express disclosures of the ’295 application. Lectrosonics, Paper 15 at 7; In re NTP, 654 F.3d 1268, 1276 (Fed. Cir. 2011) (noting that “a patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120”). Where there is any ambiguity in the disclosures of the ’295 application, the absence of supporting testimony tends to cut against 26:2–31:2; see Ex. 1005 ¶¶ 12, 13, 18, 19, 16–21, 26, 28, claims 16–21, 26– 28. In view of the foregoing, we are not persuaded that Patent Owner has demonstrated that the inventors of the priority applications were in possession of a magnesium cast composite that included less than 50 wt. % magnesium, or greater than 50 wt. % additives. As proposed substitute claim 104 encompasses a magnesium cast composite with up to 90 wt. % additives, and therefore as little as 10 wt. % magnesium, Patent Owner has not demonstrated that the full scope of this claim finds written description support in any application prior to the ’915 application, filed on October 12, 2018.” slip op. at 17
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteIndefiniteMixed
“The definiteness requirement of § 112(a) is satisfied when “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable clarity.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014); see 37 C.F.R. § 42.100(b) (changing the claim construction standard used to review a claim proposed in a motion to amend from the broadest reasonable construction to the “same construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b)”). Proposed substitute claim 104 generically requires “in situ precipitate” and also a specific type of in situ precipitate: “in situ galvanically-active intermetallic precipitate.” Mot. Appendix A. Although this claim would have best been clarified by Patent Owner after seeking preliminary guidance on its Motion to Amend, upon review of the written description, claims, and figures of the ’740 patent, as well as Patent Owner’s clarification in its Reply to the Opposition, we agree with Patent Owner that one of ordinary skill in the art would have understood that the “in situ galvanically-active intermetallic precipitate” is merely a more complete description of the “in situ precipitate” mentioned earlier in the sentence. Mot. Reply 4. As such, we do not find that this part of proposed substitute claim renders claim 104 indefinite.” slip op. at 22
Patent outcomesUS 10,689,740 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham · NautilusPatents in suitUS 10,689,740 - Honeywell International Inc. v. DSM IP Assets B.V.Institution deniedPTAB · Aug 21, 2024 · IPR2024-00493 · APJ Erica A Franklin · IPR · Institution
The Board denied institution because Honeywell did not show a reasonable likelihood that claims 1–9 were unpatentable over any of its three obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we determine that Petitioner has not shown a reasonable likelihood of prevailing in its obviousness challenge of independent claim 1 or dependent claims 2–9 over the combination of Simmelink and Section 73.1015.” slip op. at 23
- Skill levelOther
“PHOSITA) at the time of the ’532 patent “would have had at least a Bachelor’s degree in the field of chemistry, chemical engineering, polymer chemistry, or materials science and at least three years of relevant work experience in the field of high strength fibers.” Pet. 8 (citing Ex. 1003 ¶ 18). Petitioner adds that individuals with different educational backgrounds could still be of ordinary skill in the art if they have “additional experience [that] compensates for a deficit in their education and experience stated above.” Id. According to Patent Owner, a person or ordinary skill in the art, would have (i) a bachelor’s degree in chemistry, polymer chemistry, materials science, chemical engineering, or biomedical engineering and (ii) three years of experience in designing and manufacturing gel-spun UHMWPE yarns. At this level of skill, a PHOSITA would have a detailed understanding of the information provided in the Technology Background, Section II, supra, including (i) the differences between linear HDPE and UHMWPE, (ii) the history underlying Section 73.1015 and the early failures of the 1960s-era blue, melt-extruded polyethylene sutures, (iii) why the molecular orientation of polyethylene molecules leads to strong yarns in the special case of gel-spun UHMWPE, and (iv) the challenges associated with coloring gel-spun UHMWPE yarns, especially for end-use medical applications. Prelim. Resp. 33–34. We note that the parties’ proposed definitions are largely similar, except that Patent Owner additionally recognizes a Bachelor’s degree in biomedical engineering and requires experience in designing and manufacturing gel-spun UHMWPE yarns. In any event, we do not need to the same under either proposed definition.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“a skilled artisan would have understood that the “gel spinning” process recited in the claims requires the use of a solvent during the spinning process. Indeed, the Specification describes this term, as follows: Gel spinning is understood to include at least the steps of spinning filaments from a solution of ultra-high molecular weight polyethylene in a spin solvent; cooling the filament obtained to form a gel filament removing at least partly the spin solvent from the gel filament; removing at least partly the spin solvent from the gel filament; and drawing the filament in at least one drawing step before during or after removing spin solvent. Ex. 1001, 2:31–37. We recognize the inventor’s lexicography as dispositive with respect to the meaning of the term “gel spinning.” See Phillips v. AWHCorp., 415 F.3d 1303, 1316 (Fed. Cir. 2005); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–44 (Fed. Cir.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“Claim 1 describes gel spinning as the manner by which the filaments comprised in the claimed colored multi-filament yarn are obtained. This, on its face, is a product-by-process claim element because it describes the filament structure being obtained in a particular way, i.e., by gel spinning. See Kamstrup A/S v. Axioma Metering UAB, 43 F.4th 1374, 1382 (Fed. Cir. 2022) (agreeing with the Board that “cast in one piece” is a product-by-process claim element as it describes the structure being cast “in a particular way”). For this element to be limiting, it must impart “structural and functional differences” that distinguish the claimed product from the prior art. See Amgen Inc. v. F. Hoffman-La Roche Ltd, 580 F.3d 1340, 1365–67 (Fed. Cir. 2009). Patent Owner argues persuasively that gel spinning imparts structural and functional differences to the claimed product because the process “creates overlap between polyethylene molecules within the UHMWPE filaments that maximizes the intermolecular Van der Waals interactions, resulting in highly crystalline filaments with high tensile strength.” Prelim. Resp. 38, 22 (citing Ex. 1014, 62–66). According to Patent Owner, “the structure of the gel spun UHMWPE is substantially different from other types of UHMWPE such as compression-molded and ram-extruded UHMWPE used to make joint replacements and other orthopedic implants.” Id. at 38.” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,280,532 - Apple Inc. v. RJ Technology, LLCInstitutedPTAB · Aug 20, 2024 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Apple’s motion to join IPR2023-01183.
RulingsInstitution decision- 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 . . . 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, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition. And, for the reasons set forth below, we grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20197 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. at 11–12 (citing Ex. 1002 ¶¶ 50–51). Upon review of the prior art of record and the Petitioner’s arguments, we adopt Petitioner’s uncontested definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the ’641 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides constructions for the terms “A method for improving . . . characterized in that,” “ratio of positive electrode material to negative electrode material as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V” (claim 5), “as calculated by a specific capacity with a charge voltage limited to 4.2 V” (claim 1), and “at least 7500 of capacity” (claim 11). Pet. 8–11. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,749,641 - PTAB · Aug 14, 2024 · IPR2024-00510 · APJ John R Kenny · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 2 and 4 were obvious over any of the three asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine that the Petition has not met this standard. Therefore, we decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Patent Owner that the difference between Petitioner’s and Patent Owner’s formulations would not affect our analysis of patentability. We adopt Petitioner’s formulation.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The specification of the ’976 patent (“Specification”) does not expressly define the first RNTI phrase, but it provides some support for Patent Owner’s implicit construction. See, e.g., Ex. 1001, 8:41–46 (“URLLC C-RNTI (i.e., different RNTI from SPS C-RNTI)”). The prosecution history for the ’976 patent does not provide evidence regarding how the first RNTI phrase should be construed. See Ex. 1002. Ordinary usage, however, favors Patent Owner’s implicit construction. For example, the term “object” in the phrase “an object different from a ball” would generally exclude a ball. As an illustration, in ordinary usage, a tennis ball would generally not be considered to be an object different from a ball merely because baseballs also exist. Similarly, a red ball would not be considered to be different from a ball merely because green balls exist. Instead, in ordinary usage, an object different from a ball would be limited to objects that are not balls, such as a tennis racket and a baseball bat. Further, Petitioner has not given us any reason to adopt its proposed implicit construction even though it could have anticipated that its implicit claim construction would be at issue based on Patent Owner’s reasonably expected arguments. Pet. 4–5, 32–37; see also id. at 36 (“If Patent Owner argues that the SPS RNTIs of Babaei are semi-persistent scheduling C-RNTIs, Babaei still satisfies the requirement that the ‘first RNTI’ be ‘different from … a semi-persistent scheduling C-RNTI’ . . .”). After reviewing the record, we construe the first RNTI phrase as requiring that the recited first RNTI is not a semi-persistent scheduling C- RNTI.” slip op. at 10
- BurdenNot shown unpatentable
“Petitioner recognized that Patent Owner might argue that the SPS RNTIs of Babaei are semi-persistent scheduling C-RNTIs. Pet. 36 (“If Patent Owner argues that the SPS RNTIs of Babaei are semi-persistent scheduling C-RNTIs”). Petitioner, however, made no attempt to prove and, in fact, does not argue that the SPS RNTIs of Babaei are not semi-persistent scheduling C- RNTIs. Id. Instead, Petitioner relies on its implicit construction for the first RNTI phrase and asserts that, because there are differences between Babaei’s SPS RNTIs, they satisfy the first RNTI phrase (even if both SPS RNTIs are semi-persistent scheduling C-RNTIs). Id. As discussed in Section II.B.1 above, we did not adopt that implicit construction. Instead, we construed the first RNTI phrase to require that the first RNTI is not a semi-persistent scheduling C-RNTI, and Petitioner has not shown that what it maps the recited first RNTI to is not a semi-persistent scheduling C-RNTI. See Section II.B.1 above. Thus, we determine that Petitioner has not made a sufficient showing for the first RNTI recitation. Accordingly, Petitioner has not demonstrated a reasonable likelihood of proving that claims 2 or 4 would have been obvious over the combination of Babaei and Fwu.” slip op. at 17
Claim constructionPatents in suitUS 10,484,976 - PTAB · Aug 13, 2024 · IPR2024-00557 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1–8, 11, 12, and 15–21 on all asserted grounds, finding a reasonable likelihood that at least claim 1 is unpatentable over Banerjee.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a) Immersion argues that the Petition should be denied under 35 U.S.C. § 314(a) because there is a district court case involving the ’067 patent. Prelim. Resp. 50–56 (discussing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). However, the co- 1 Banerjee et al., US 2017/0108930 A1, published Apr. 20, 2017 (Ex. 1011). 2 Meglan et al., US 2012/0045742 A1, published Feb. 23, 2012 (Ex. 1012). 3 Rogers et al., US 2017/0354864 A1, published Dec. 14, 2017 (Ex. 1010). pending district court litigation has been stayed. Ex. 2004, 8. In Valve Corp. v. Immersion Corp., IPR2024-00478, Paper 11 at 9–18 (PTAB July 25, 2024), the Board addressed nearly exactly the same arguments and issues raised by Immersion here. We adopt and incorporate the reasoning in that case as our own. In short, the stay obviates concerns over efficiency and duplicity of efforts raised in Fintiv. See, e.g., Fintiv at 6 (“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.”). Therefore, we do not discretionarily deny the Petition.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that formal education could substitute for practical experience, and vice versa. Pet. 6, Prelim. Resp. 12. The parties’ proposed levels of ordinary skill appear to be substantially similar, are both supported by testimonial evidence, and appears to be consistent with the asserted prior art and the types of problems and solutions in the ’067 patent. See, e.g., Ex. 1001, 1:7–53. At this stage, we discern no difference in the outcome of this decision from choosing one over the other. We adopt Valve’s proposed level of skill for this decision because it is sufficiently persuasive to meet Valve’s “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party argues that we should construe any particular claim terms explicitly. Pet. 7–9 (citing Ex. 1001, 3:1–4, 5:60–62; Ex. 1003 ¶¶ 77– 80; Ex. 1006, 4–5); Prelim. Resp. 13. We agree that, for the purpose of institution, we do not need to adopt explicit constructions for any claim terms. To the extent that the meaning of any claim term is disputed, we discuss it below in the context of the prior art. 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 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(g) Conclusion as to claim 1. For the above reasons, we determine that Valve has shown, sufficiently at this stage, that Banerjee discloses all the limitations of claim 1, or at least that a person of ordinary skill in the art would have had reason, in view of Banerjee, to combine features, including a sensor, as recited in claim 1. We therefore determine that Valve is reasonably likely to prevail in showing that claim 1 is unpatentable under §§ 102 or 103 based on Banerjee. 3. Other Claims Because Valve has shown a reasonable likelihood of prevailing with respect to claim 1 as discussed above, we will institute on all claims and all grounds raised in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,665,067 - Cisco Systems, Inc. v. Corrigent CorporationNo claims unpatentablePTAB · Aug 6, 2024 · IPR2023-00447 · APJ Nathan A Engels · IPR · Final written decision
Claims 1–26 were not shown unpatentable because the Petition did not establish the claimed port assignment and packet labeling under Raz or adequately explain the Raz–Ferguson combination.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“packet-switched networking, MPLS and LAG.” Pet. 6 (citing Ex. 1004 ¶¶ 57–58). Petitioner also states that a lack of work experience can be remedied by additional education, and vice versa. Pet. 6 (citing Ex. 1004 ¶ 57). Patent Owner “uses the same definition.” PO Resp. 4. We apply Petitioner’s level of ordinary skill, which is undisputed and is consistent with the level reflected by the ’602 patent and the asserted prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We construe claims using the principles set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b) (2022). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party proposes any express claim constructions. Pet. 6–7; see PO Resp. 4. To the extent that the parties dispute the meaning of certain claim terms, we address those issues below, but we determine it is unnecessary to expressly construe any terms. 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 6
- BurdenNot shown unpatentable
“Patent Owner argues, and we agree, that the cited portions of Raz do not disclose a LAG between two switches. PO Resp. 8–9. Petitioner acknowledges this; as stated in Petitioner’s Reply, “Petitioner has always acknowledged that Raz addresses the use of subports within an LSR, but a [person of ordinary skill in the art] would have found it obvious from Raz to use Ethernet physical data ports of a router or switch in an Ethernet LAG to communicate high-speed packet streams in [an] MPLS network.” Pet. Reply 2 (citing Pet. 15, 19, 22–25; Ex. 1021 ¶ 13; Ex. 1006, 1:16–19, 2:23– 31, 7:7–29, 11:3–12, 13:16–19, 14:42–44, 15:56–58, 17:7–9). Petitioner argues that LAGs were well known and, “[w]hile PO argues that Raz teaches the use of a single high-speed link to communicate between LSRs, that is merely a design choice.” Pet. Reply 3 (citing Ex. 1021 ¶¶ 15–17; PO Resp. 8–9). Further, Petitioner argues “[i]t would have been obvious to a [person of ordinary skill in the art] that high-speed packet streams could be communicated between switches or routers through a physical tunnel port of a LAG.” Pet. Resp. 3 (citing Ex. 1021 ¶¶ 15–17) (emphasis added). Among other problems, though, those arguments were not in the Petition; the Petition does not describe modifications of Raz’s teachings, much less establish those modifications as a “design choice.” See Pet. 25; see also PO Sur-reply 3. Further, we agree with Patent Owner that Raz is fundamentally different with its teachings of multiplexing the outputs of multiple slow- speed subports/processors into a single stream for transmission across a single high-speed link. PO Resp. 7–9, 12–13, 15–16; PO Sur-reply 4–5. As stated in Raz, “[t]he present invention provides a subport forwarding and provisioning mechanism whereby a plurality of subports comprising slower speed processors are used to perform the packet processing for a higher speed packet stream.” Ex. 1006, 6:24–27. Additionally, where Raz describes communication between two LSRs, Petitioner acknowledges that Raz teaches that its cited second LSR assigns the port on which it will receive a data packet. Pet. Reply 4; Ex. 1021 ¶ 20 (“in Raz, the second LSR chooses the subport that will be used to transmit the data packet from the first LSR and receive the data packet at the second LSR”). According to Petitioner, Raz teaches that “a first LSR generates a data packet label in which a port serial number is encoded and sends the label to a preceding LSR. Subsequently, the preceding LSR sends a data packet to the proper subport for processing. The process is then repeated in sending the data packet from the first LSR to a second LSR.” Pet. Reply 4 (citations omitted). “This technique just as easily could have been implemented to identify a single physical tunnel port through which a data packet in a first router or switch would be communicated to a second router or switch via a LAG.” Pet. Reply 4 (emphasis added) (citing Ex. 1006, 2:23–25, 7:7–16, 7:22–26, 11:3–29, Fig. 5; Ex. 1021 ¶ 18). Again, these arguments were not made in the Petition (see Pet. 22–25), and Petitioner’s assertions that Raz’s teachings “just as easily could have been implemented” in the manner claimed is improper hindsight and inconsistent with the fundamental differences between Raz’s multiplexing within an LSR and the claimed link aggregation and port assignment between MPLS/LAG switches.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“[c]laims 1–13, 15–24 and 26 set forth above in Ground 1.” Pet. 52. Further, Petitioner states that “[f]or independent [c]laims 1, 15, and 26, Ferguson builds on the previous analysis of Raz by disclosing a system for communicating packets between switches and routers in an MPLS network.” Pet. 52; see Pet. 52–55. Critically, though, Petitioner does not specifically explain how the combined teachings of Raz and Ferguson would satisfy individual claim elements. Among other problems with Petitioner’s proposed combination, Petitioner does not adequately explain how or why a person of ordinary skill would have combined the references to include the claimed port assignment and packet labeling for transmission of a packet from a preceding node and then between a first and second MPLS switch. See Pet. 56–59. Instead, Petitioner generally advocates for the combination of Raz and Ferguson, arguing for example that “both Raz and Ferguson are directed to solving the problem of ensuring enough bandwidth is available to communicate high-speed packet streams through an MPLS network.” Pet. 57 (citing Ex. 1006, 10:60–11:12, 14:33–41, 15:47–55, 17:1–9, Fig. 5; Ex. 1007, 1:28–42, 2:54–57, 4:55–60; Ex. 1004 ¶¶ 247–249). Further, Petitioner contends a person of ordinary skill “would have understood from the disclosures in Ferguson that techniques for utilizing an Ethernet physical data port in a LAG to communication data packets between routers or switches in an MPLS network are also applicable to the use of subports transmitting the data packets within the routers or switches, and vice versa.” Pet. 59 (citing Ex. 1004 ¶ 250; Ex. 1007, 5:61–6:6); see Pet. 56–59; Pet. Reply 20. But Petitioner does not adequately explain how the proposed combination of Raz and Ferguson would cure the deficiencies addressed above in Petitioner’s analysis of Raz for Ground 1. Among other problems, none of Petitioner’s arguments adequately address port assignment and labeling in the proposed combination, much less adequately explain why the proposed combination would satisfy the challenged claims. See Pet. 55–56. As Petitioner does not adequately explain how the teachings of Raz and Ferguson might be combined to cure the deficiencies addressed above, we additionally determine Petitioner’s arguments and evidence advanced for the combination of Raz and Ferguson do not establish obviousness by a preponderance of the evidence for any of claims 1–26.” slip op. at 11
Patent outcomesUS 9,118,602 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,118,602 - PTAB · Aug 6, 2024 · IPR2024-00556 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–18 on all grounds, finding a reasonable likelihood that claim 1 would have been obvious over Astala and Shahoian and over Keely and Kolmykov-Zotov.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“II. DISCRETIONARY DENIAL Patent Owner argues that the Petition should be denied under 35 U.S.C. § 314(a) because there is a district court case involving the ’507 patent. Prelim. Resp. 43–49 (discussing Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). However, the co-pending district court litigation has been stayed. Ex. 2004, 8. In Valve Corp. v. Immersion Corp., IPR2024-00478, Paper 11 at 9–18 (PTAB July 25, 2024), the Board was faced with substantially similar arguments and issues raised by Patent Owner here; we adopt and incorporate the reasoning in that case as our own. In short, the stay obviates concerns over efficiency and duplicity of efforts raised in Fintiv. See, e.g., Fintiv at 6 (“[a] district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts”). Therefore, we do not discretionarily deny the Petition.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 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 “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 provided below, we determine that Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’507 patent is unpatentable, we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Both proposed levels of skill appear to be substantially similar and reasonable in view of the disclosures in the ’507 patent and asserted prior art. At this time, we would discern no difference in outcome from choosing one over the other. We adopt Petitioner’s proposed level of skill for purposes of this Decision because it appears to be a reasonable definition and Petitioner bears only a “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“time interval has elapsed.” Prelim. Resp. 18. We disagree that the claims preclude any particular combination of events, so long as the three conditions are satisfied in the process of determining of a press. The claim does not specify or limit the ways in which the three conditions need to be satisfied to determine a press, and Patent Owner offers no claim construction analysis that would so limit the claims. In sum, we agree with Petitioner at this stage that the three conditions of the “determining a press” limitation are independent insofar as satisfaction of one condition is not predicated on the satisfaction of another condition. In our view, however, that point is merely reciting what the claim already states: that “determining a press” is defined as the satisfaction of the three claimed conditions. Claim 1 does not set out any further requirements. Thus, we do not see the need to construe the claim beyond its plain language. We do not explicitly construe any terms in this Decision at this time because the issue of whether Petitioner has shown a reasonable likelihood can be resolved without explicitly construing the claims. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms. . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,749,507 - PTAB · Aug 6, 2024 · IPR2024-00508 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–18, 21–24, and 26–29 on all petitioned grounds after finding a reasonable likelihood that claim 1 is anticipated by or obvious over Rosenberg.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner’s analysis persuasively demonstrates a reasonable likelihood of success of showing that the subject matter of claim 1 is unpatentable. That Rosenberg varies, or modulates, its haptic effect based on the input signal, and specifically the degree to which the input signal represents a value close to a target value, persuades us on this record that Rosenberg describes the recited “modulating” limitation. On whole, reviewing the Petition and the evidence cited therein, we determine that Petitioner has established a reasonable likelihood that claim 1 is anticipated by, or would have been obvious in view of, Rosenberg.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (POSA) would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry experience or graduate-level academic experience with human-computer interaction. Pet. 7 (citing Ex. 1003 ¶¶ 40–45). This level of skill appears reasonable in view of the disclosures in the ’546 patent and asserted prior art. We adopt Petitioner’s proposed level of skill for purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In our view, on this record, the first construction is too narrow. It adds limitations from the specification that are not found in the claims, namely, the term “continuous” or “continuously.” i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 843–44 (Fed. Cir. 2010) (“[A] claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a clear intention to limit the claim’s scope with words or expressions of manifest exclusion or restriction.”) (internal quotation marks omitted). There is no requirement that the claims must recite all the features of the specification, and we are not persuaded on this record that the claim requires this absent word. The second potential construction offered by Petitioner states that it “would not require the ‘new input’ mapping to the modulated haptic signal to be received immediately after earlier input that was mapped to a haptic signal.” Pet. 22. Petitioner states that the second construction would cover situations where an input sensor is mapped to a haptic signal but later new inputs are not mapped to a haptic signal, and then even later new sensor input is mapped to a haptic signal. Id. Petitioner does not provide further explanation, and it is not clear to us on this record what the construction would be. Instead, the second potential construction merely seems to be an example of a situation in which Petitioner asserts the claim limitation would be met. In sum, we do not adopt either of Petitioner’s proposed constructions. We do not offer our own construction at this time, however, because we believe that construing the claim limitation is unnecessary for the purpose of institution. Instead, we will focus on the plain language itself, “modulating the haptic signal when new input is received,” when reviewing Petitioner’s prior art grounds. We do not explicitly construe any terms in this Decision at this time” slip op. at 7
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,116,546 - Google LLC / Ecobee, Inc. v. Ecofactor, Inc.All claims unpatentablePTAB · Aug 1, 2024 · IPR2020-01504 · APJ Scott B Howard · IPR · Remand
On remand, the Board held claims 1–20 unpatentable as obvious over Wedekind and Ehlers and denied Petitioner’s motion to exclude Dr. Palmer’s testimony.
RulingsRemand decision- RemandOther
“Circuit held that we erred in construing limitation 1m. According to the Federal Circuit, In sum, both the claim language and the specification support a broader construction than the Board accorded the [1m] limitation. The proper construction of the term must allow for any of the five claimed inputs to potentially be used to calculate another claimed input. We agree, then, with Google’s proposed construction, which simply “require[s] that each of the five inputs be used at some point during the determination of the first time prior to said target time.” Appellant Br. 52 (emphasis and quotation marks omitted). Id. at 1059 (alteration in original). The Federal Circuit further ordered that we “apply this construction on remand.” Id. Following the issuance of the mandate, we held a conference call with the parties. See Paper 51, 2 (Order on Conduct of Proceedings on Remand). As noted in the previous paragraph, the Federal Circuit instructed us to apply Petitioner’s construction for limitation 1m on remand. Google, 92 F.4th at 1059. Because the construction was implicitly argued in the Petition, the parties had notice and opportunity to be heard. Paper 51, 5. Therefore, in accordance with PTAB Standard Operating Procedure 3,4 we “determine[d] that additional briefing [was] not warranted in this proceeding.” Id. at 4.5 We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision on Remand is issued pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we determine that Petitioner has shown by a 4 Available at https://www.uspto.gov/sites/default/files/documents/ptab_ sop_3-2023-oct.pdf. 5 Neither party requested to submit additional evidence or have an oral hearing on remand. Ex. 3002 (Email from the parties to the Board). unpatentable.” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On the one hand, Patent Owner’s formulation is attorney argument without any supporting evidence. See PO Resp. 5–6. Although not cited in the Response, when Dr. Palmer testifies to the level of skill in the art, he opinion: EcoFactor contends that a person of ordinary skill in the arts at the time of the invention would have had a (a) bachelor's degree in engineering, computer science, or a comparable field of study, and (b) at least 2 years of professional experience in electronic thermostats, HVAC controls, building energy management and controls or other similarly relevant industry experience. Additional relevant industry experience may compensate for lack of formal education or vice versa. Ex. 2002 ¶ 22 (emphasis added). It is well settled that mere attorney arguments and conclusory statements that are unsupported by factual evidence are generally entitled to no probative value. See Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorney’s argument is no substitute for evidence.”). On the other hand, Petitioner’s proposal is supported by Mr. Shah’s testimony. See Pet. 26 (citing Ex. 1002 ¶¶ 26–27). Because Mr. Shah’s testimony is based on his years of experience, we give it some weight. See Ex. 1002 ¶¶ 2–10. Accordingly, we are persuaded that Petitioner’s formulation, except for the qualifier “at least,” is correct.9” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“After briefing, we issued an order inviting supplemental briefing regarding the preambles of the challenged claims. Paper 28. In the Order, we proposed that the preamble of each of the challenged claims was not limiting. Id. at 2–3. In supplemental briefing, both Petitioner and Patent Owner agreed with that construction. PO Claim Constr. Br. 1; Pet. Claim Constr. Br. 5. We adopt the parties undisputed construction that the preamble of each of the claims is not limiting. In doing so, we conclude that the preamble is not limiting because it is “only a statement of purpose and intended result” and “[t]he expression does not result in a manipulative difference in the steps of the claim.” Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1375–76 (Fed. Cir. 2001).” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“s) Conclusion Regarding Claim 1 For the reasons set forth above, Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over Wedekind and Ehlers. 4. Analysis of Claims 2–4, 6–20 Petitioner argues that the combination of Wedekind and Ehlers teaches the limitations recited in claims 2–4 and 6–20 and that a person having ordinary skill in the art would have combined the teachings with a reasonable expectation of success. Pet. 61–62, 64–75. Petitioner’s arguments are supported by citations to the prior art and the testimony of Mr. Shah. See id. We have reviewed Petitioner’s arguments and evidence, agree with them, and, therefore, adopt Petitioner’s arguments and evidence as our own.” slip op. at 61
Patent outcomesUS 8,498,753 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,498,753 - PTAB · Jul 25, 2024 · IPR2024-00478 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on anticipation by Rosenberg-I.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In view of the above, we determine that this factor strongly weighs against the exercise of discretionary denial. 2. Factor 2: proximity of the court’s trial date to the Board’s projected” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Skill levelOther
“would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry or graduate level experience with software engineering, haptics programming, and/or human-computer interaction, including experience with user-interfaces and applications involving touchscreens, touchpads, and related technologies.” Pet. 8 (citing Ex. 1003 ¶¶ 37–43). Patent Owner contends that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction (HCI), including implementation of computer-based systems and software for providing haptic feedback effects to a user,” and adds that a person having ordinary skill in the art “could have qualified . . . with more formal education and less practical or industry experience, or vice versa.” Prelim. Resp. 9 (citing Ex. 2001 ¶ 32). Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition. slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,430,042
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.