- PTAB · Nov 26, 2024 · IPR2024-00935 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claim 14 over all three obviousness grounds, finding a reasonable likelihood of success on the Tayloe and TI Datasheet ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Western District of Texas Litigation.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“h. Summary as to Claim 14 For the reasons discussed above, on the present record we find that Petitioner has established that the combination of Tayloe and TI Datasheet teaches each of the elements of claim 14 and that one of ordinary skill in the art would have been motivated to combine the teachings of these two references as proposed by Petitioner with a reasonable expectation of success in so doing. 3. Objective Indicia of Nonobviousness In the record presently before us, neither Petitioner nor Patent Owner has presented any evidence of objective indicia of nonobviousness. 4. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Tayloe and TI Datasheet would have rendered the subject matter of claim 14 of the ’177 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage of the proceeding and on the present record, we need not construe the term expressly because, for the reasons discussed below, we find that Petitioner has established a reasonable likelihood of showing that claim 14 would have been obvious to one of ordinary skill in the art under each construction, and because there is no present controversy as to the meaning of the term in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“A datasheet is a well-known resource for learning detailed information of the multiplexer/demultiplexer, and a [person of ordinary skill in the art] would have been motivated to consult the TI Datasheet for a more complete understanding of Tayloe’s express teachings of the SN74CBT3253 demultiplexer, the only matching multiplexer available at the time. [Ex. 1023; Ex. 1003] ¶¶ 100–109; see also Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1374–75 (Fed. Cir. 2013) (obvious to combine two prior art references where one reference “refers expressly” to the other). When viewing the detailed diagram of the SN74CBT3253 demultiplexer, a [person of ordinary skill in the art] would have been motivated to apply four of the switches because the architecture of one switch on the demultiplexer is analogous to one of the four switching paths of Tayloe’s commutating switch 38. [Ex. 1003 ¶¶] 100–109. Thus, a [person of ordinary skill in the art] would have thought to implement the multiplexer switches from TI Datasheet in an analogous manner “by simple substitution of one known element for another.” Pet. 23–24 (citing Ex. 1003 ¶¶ 100–109; KSR, 550 U.S. at 401).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,865,177 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · Nov 26, 2024 · IPR2024-00796 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that claims 1 and 11 would be obvious over Nevo and Avitabile.
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). Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Stipulate[s] and agree[s] that, if the PTAB institutes an inter partes review proceeding (“IPR”) for U.S. Patent No. 7,483,686 on the grounds presented in [the Petition], [Petitioner] will not pursue an invalidity defense in [the Western District of Texas Litigation] that the patent claims subject to the instituted IPR are invalid based on the same grounds as in the [P]etition or any grounds that could have reasonably been raised in the [P]etition. Ex. 1015 (letter from M. Bernstein to J. Charkow, dated May 21, 2024); see also Prelim. Reply 1 (“Patent Owner’s Preliminary Response (Paper 6) fails to acknowledge, much less address, Petitioner’s Sotera stipulation not to pursue in the related litigation the same grounds or any grounds of invalidity that could reasonably have been raised in this IPR.”); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020) (Decision Granting Institution) (precedential as to § II.A).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of [radio frequency (‘RF’)] circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems,” and “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree.” Pet. 14–15 (citing Ex. 1002 ¶ 38). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. See generally Prelim. Resp. We determine, on the current record, that Petitioner’s proposed level of ordinary skill is consistent with the ’686 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d at 1579. We adopt that level of ordinary skill in the level of ordinary skill in the art based on the full trial record. slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that all claim terms should be given their plain and ordinary meaning. Pet. 15 (citing Ex. 1002 ¶ 74). Petitioner, however, notes that several claim terms in the ’686 patent, or closely related claim terms for patents related to the ’686 patent, have been construed during prior litigation involving Patent Owner. Id. Petitioner discusses five claim terms and various constructions proposed or adopted in prior litigation. Id. at 15–20.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,483,686 - PTAB · Nov 26, 2024 · IPR2024-00934 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR of claims 19–21 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On June 21, 2022, the Director issued interim guidance in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors. See Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation at 3, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Notably, the Director stated that “the [Patent Trial and Appeal Board (‘PTAB’)] will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the PTAB.” Id. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding under Fintiv because TI filed a Sotera stipulation. Pet. 80; Ex. 1041.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construed as “indirectly or directly connecting such that an electrical signal can flow between”; and (2) “impedance device” was construed as “a device that exhibits an impedance.” Id. at 6. Even though TI identifies four claim terms in total in the Petition, TI argues that the asserted prior art renders the challenged claims unpatentable under any reasonable construction of those claim terms. See, e.g., id. at 4 (arguing that the “prior art analyzed here renders the claims unpatentable under either [party’s] constructions” proposed in the district court case), 6 (arguing that the “prior art renders the Challenged Claims unpatentable under . . . the [Board’s] constructions”). In its Preliminary Response, ParkerVision does not address TI’s proposed constructions, nor does ParkerVision identify additional claim terms that would require construction at this stage in the proceeding. See Prelim. Resp. Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any preliminary response thereto shows “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). Taking into account ParkerVision’s Preliminary Response, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that TI would prevail in demonstrating at least one of claims 19– 21 of the ’342 patent is unpatentable. Pursuant to § 314, we hereby institute an IPR as to claims 19–21 of the ’342 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of institution, there is sufficient evidence in the record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Galton, TI argues the following: [a] person of ordinary skill in the art . . . as of the ’342 Patent’s priority date (April 14, 2000) would have had a least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of EM circuit design. Less work experience may be compensated by a higher level of education, such as a master’s degree. Pet. 6 (citing Ex. 1003 ¶¶ 28–30). In its Preliminary Response, ParkerVision does not address TI’s assessment of the level of skill in the art. See Prelim. Resp. At this stage of the proceeding, we adopt TI’s uncontested assessment of the level of skill in the art because it is consistent with the ’342 patent and the asserted prior art.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,496,342 - Nokia Of America Corporation / AT&T Services, Inc. v. Iarnach Technologies LimitedInstitution deniedPTAB · Nov 25, 2024 · IPR2024-00900 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on claims 1–11 because the petition did not show that G.984.3 and Khermosh teach or suggest the claimed parameter sets determined according to link quality.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the arguments of the parties and the evidence of record, we deny institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) pertinent to the ’359 Patent would have had at least a bachelor’s degree in electrical engineering, computer engineering, or similar discipline and had at least two years of experience with optical communications and networks. Ex. 1003, ¶ 22. A person with a different degree but with additional relevant experience could still qualify if the additional experience compensates for the different educational background. Id. Pet. 10. Patent Owner does not dispute Petitioner’s contention and presents a near-identical description of a POSITA. Prelim. Resp. 9. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record may also reflect the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the description offered by Petitioner as it is not disputed by the Patent Owner and is consistent with the ’359 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[t]he [claim] terms should receive their respective plain and ordinary meaning as understood by a person of ordinary skill in the art under Phillips.” Pet. 8. Patent Owner agrees. Prelim. Resp. 9. No need exists to expressly construe any claim terms to resolve the parties’ dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“that “[t]he values in this message, except for P1 and P2, are selected according to OLT parameters and preferences” and that P1 and P2 (length of preamble bits) are chosen by the OLT in order to ensure the total length of the burst overhead meets certain preset length restrictions. Id. at 32; see also Ex. 1005, 110. These notes confirm Petitioner’s acknowledgement that the parameters in this table are not determined based on link quality. Id.; see also id. at 35, 39. Thus, the upstream burst overhead parameters in the table in G.984.3, reproduced above, are not determined by the OLT “according to different levels of link quality” as this limitation requires.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,934,359 - PTAB · Nov 22, 2024 · IPR2024-00723 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–12 on both asserted obviousness grounds, finding a reasonable likelihood that Petitioner would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review unless the information 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.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’384 patent on all grounds of unpatentability presented.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Hunleth are natural extensions of Kim that provide additional details about user interface design and generation, and that it would have been obvious for one of ordinary skill in the art to use the teachings of the other references on Kim’s apparatus for details regarding the selection of a CP provider, with predictable results and a reasonable expectation of success. Id. at 19–21 (citing Ex. 1003 ¶¶ 112–119). Additionally, Petitioner argues that the combination uses metadata to provide a user interface appropriate to the type of content selected by a user that would have been made by one of skill in the art, and that the user would have had a reasonable expectation of success in this combination. Id. at 55 (citing Ex. 1003 ¶¶ 185–186, 197–200). At this time, Patent Owner does not dispute Petitioner’s assertions regarding the combination of Kim, TechnoBuffalo, MissingRemote, Hunt, and Hunleth. Nor, at this time, does Patent Owner rebut Petitioner’s assertion that one of ordinary skill in the art would have been motivated to make this combination and would have had a reasonable expectation of success in doing so. reasonable likelihood that it will prevail in showing one of ordinary skill in the art would have combined and used the details regarding a content provider user interface provided in TechnoBuffalo, MissingRemote, Hunt, and Hunleth, and would have used the relevant teachings of these references to provide details relating to the user interfaces provided by a CP provider on an intelligent television, such as that of Kim. See Ex. 1003 ¶¶104–106, 109–110, 112. We additionally determine that Petitioner has shown a reasonable likelihood that it will prevail in showing that one of ordinary skill in the art would have been motivated to make this combination, and would have had a reasonable expectation of success in doing so. See id. ¶¶ 113– 119.” slip op. at 23
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“On the preliminary record, no claim construction of “digest view” has been requested, and to the extent Patent Owner indirectly presents a claim construction argument, we decline to read the exemplary description of a digest view in the ’384 patent specification into limitations 1.6 and 1.7. Rather, in our view, the plain language of claim 1 controls because it recites that a digest view “presents information about a set of the VOD content that are associated with a series,” as recited in limitation 1.6. Ex. 1001, 56:55– 57. We find that Petitioner has sufficiently shown on this record that each of the TechnoBuffalo 1:03 view, the TechnoBuffalo 1:09 view, and the MissingRemote 1:54 view teaches or suggests the presentation of series,” as recited. Patent Owner agrees that the TechnoBuffalo 1:03 view is a digest view. Petitioner sufficiently shows the TechnoBuffalo 1:09 view is a digest view as it presents the “year, rating, number of episodes . . . , [and] episode lengths” for the displayed series. See Pet. 42 (citing Ex. 1003 ¶ 165). Similarly, Petitioner sufficiently shows that MissingRemote 1:54 view presents episode titles about episodes in the displayed season. See id. at 44 (citing Ex. 1003 ¶ 171). Petitioner argues alternatively that each of these would have been presented upon selection of a series in its proposed combination. Pet. 42–43, 44. We determine, in both cases, that presenting information regarding multiple individual episodes to be a sufficient showing that each presents “information about a set of the VOD content that are associated with a series,” as required by claim 1 for a digest view. Additionally, even if we were to adopt Patent Owner’s proposed strictures on “digest view,” the TechnoBuffalo 1:03 view constitutes a digest view under such a construction, as, for example, the “synopsis of entire season” on that view teaches the presentation of information about a set of the VOD content that are associated with the series. Ex. 1003 ¶ 164 (cited at Pet. 41); see Prelim. Resp. 15 (acknowledging that this view is a digest view). The Petition does not assert that the proposed combination would result in a system in which either the TechnoBuffalo 1:03 or the TechnoBuffalo 1:09 view would be displayed upon the selection of a series (as Patent Owner asserts, Prelim. Resp. 19), but rather that the TechnoBuffalo 1:03 view is taught as being presented in TechnoBuffalo as a result of a series selection and, that, “[a]lternatively,” one of ordinary skill would have made the design choice to display the TechnoBuffalo 1:09 view as a direct result of the selection of a series. Pet. 42–43; Ex. 1003 ¶ 167.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) in August of 2012 would have been knowledgeable and familiar with [user interfaces] in consumer products that are pertinent to the ’384 Patent. A POSITA would have had a bachelor’s degree in Electrical, Software, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television and/or digital video systems, human-computer interaction, or related technologies. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 15 (citing Ex. 1003 ¶ 21). At present, Patent Owner does not dispute this definition. Prelim. Resp. 9–10. The definition proposed by the Petitioner appears to be consistent with the problems and solutions in the ’384 patent and prior art of record and is supported by expert testimony. We adopt this definition for the purpose of this Decision.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,578,384 - Vizio, Inc. v. Multimedia Technologies Pte. Ltd.Institution deniedPTAB · Nov 22, 2024 · IPR2024-00722 · APJ Sharon Fenick · IPR · Institution
The Board denied institution because it could not determine with reasonable certainty the scope of “a different user interface device” to assess the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“an analysis to assess “whether the prior art discloses rendering something other than the second navigation bar” if a second user interface cannot contain that second navigation bar. Prelim. Reply 3–4. But our goal would not be to determine whether the prior art teaches or suggests “rendering something other than the second navigation bar” (Prelim. Reply 3), but rather whether the prior art teaches or suggests “rendering a different user interface device” (Ex. 1001, 55:26–29). In Samsung, the Federal Circuit notes that “the proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for the purposes of assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on keeping with this general direction from our reviewing court, and because no exception curing the impossibility of reaching a determination regarding unpatentability appears in this case, we do not institute an inter partes review. Given our conclusion that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability, we decline to institute inter partes review on the grounds presented.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“After considering the determinations in the District Court Order, we agree with the district court that we cannot ascertain with reasonable certainty the scope of the claim term “a different user interface device.” See Ex. 2001, 25 (the district court explaining that “‘user interface device’ in the claim and in view of the intrinsic evidence, as emphasized by counsel’s 3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated . reasonable certainty those skilled in the art about the scope of the invention.”). As the district court found, the ’168 patent specification uses the term “user interface device” inconsistently, for example, describing “four different user interface devices” in a navigation bar including the “movies user interface device 2204” in Figure 22A. Id. at 23 (citing Ex. 1001, 45:19–20, 45:27–29). Additionally, the specification appears to describe user interface devices with reference to the rows in Figure 22B, and other parts of the specification also describe selectable interface elements as “user interface device[s].” Ex. 1001, 45:33–37 (cited at Ex. 2001, 23–24), 41:31– 45, 46:67–47:2, 47:18–21, 48:18–20. Still further, the specification appears to describe a menu as a type of user interface device. Id. at 49:3–5 (cited at Ex. 2001, 24), 51:17–19 (same). In addition to these citations from the District Court Order, we note that the term “user interface device” is used when describing a user selecting a specific year from a display of years provided on a user interface: “If user selection 1460 is selected by the user using a user interface device, a new user interface presentation is provided.” Id. at 40:39–46 (emphasis added). On the record before us, we agree with the district court that, based on the ambiguity in the specification, “it is indiscernible what subset of the user interface, if any, is the user interface device.” Ex. 2001, 24. Therefore, we conclude that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability.” slip op. at 13
- BurdenNot reached
“an analysis to assess “whether the prior art discloses rendering something other than the second navigation bar” if a second user interface cannot contain that second navigation bar. Prelim. Reply 3–4. But our goal would not be to determine whether the prior art teaches or suggests “rendering something other than the second navigation bar” (Prelim. Reply 3), but rather whether the prior art teaches or suggests “rendering a different user interface device” (Ex. 1001, 55:26–29). In Samsung, the Federal Circuit notes that “the proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for the purposes of assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on keeping with this general direction from our reviewing court, and because no exception curing the impossibility of reaching a determination regarding unpatentability appears in this case, we do not institute an inter partes review. Given our conclusion that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability, we decline to institute inter partes review on the grounds presented.” slip op. at 16
Claim constructioncites KSR · GrahamPatents in suitUS 9,232,168 - Microsoft Corporation v. Reald Spark, LLCAll claims unpatentablePTAB · Nov 19, 2024 · IPR2023-01046 · APJ Jean R Homere · IPR · Final written decision
Claims 1–14 and 16–19 are unpatentable: claims 1–3, 5, 10, 12–14, and 18 as anticipated by Ganin; the remaining claims as obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proffered definition of the level of ordinary skill in the art, but offers a definition of its own. PO Resp. 8. Patent Owner contends that a person having ordinary skill in the art at the time of the invention “would have had at least a bachelor’s or master’s degree in electrical engineering, computer engineering, electrical and computer engineering, computer science, or similar educational background; or equivalent on-the-job training, including approximately two to three years of experience in machine learning and/or pattern recognition.” Id. (citing Ex. 2008 ¶ 22). Patent Owner asserts that the “level of skill is approximate and more experience would compensate for less formal education and vice versa.” Id. We note that the differences between the parties’ descriptions are immaterial and find Petitioner’s description to be consistent with the problems and solutions disclosed in the ’985 patent and prior art of record, and adopt it as our own for purposes of this Decision, albeit without the two instances of “at least,” which introduce ambiguity. See, e.g., In re GPAC Inc., 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that it “applied plain and ordinary meanings of all terms and no express constructions are required here.” Pet. 5. Patent Owner agrees with Petitioner that there are no claim terms that require construction for purposes of the Board’s final decision. PO. Resp. 8–9. We therefore determine that we do not need to expressly construe any term for purposes of this Decision. See Realtime Data, 912 F.3d at 1375.” slip op. at 17
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Chalom’s large RFC with Aslan’s teacher-student MLA pair would have rendered the ensuing system more complex, and thereby inefficient. As correctly noted by Petitioner, Chalom indicates that the RFC can be embodied in a mobile computing device. Id. at 15 (citing Ex. 1005, 22:33– 37, 19:65–20:6). And Dr. Karam persuasively explains that using the teacher model to train the student model is more efficient because the teacher’s knowledge allows the student model to converge faster. Id. at 17 (citing Ex. 2009, 178:14–24). Accordingly, we find that a POSITA would have found sufficient motivation to replace Chalom’s RFC with Aslan’s teacher-student models to enhance the efficiency of the MLA pair in a mobile computing environment. On this record, we agree with Petitioner that the proposed combination of Chalom and Aslan would predictably result in the teacher MLA generating motion vector fields for user gaze correction (i.e., first reference or editing instructions) that are passed to the student MLA, which subsequently generates motion vector fields (i.e., second reference or editing instructions) for further refining the received first reference data. Id. at 58. Consequently, we reiterate that because the proposed combination involves known elements performing their ordinary functions to produce a predictable result, a POSITA would have appreciated that the proposed combination is proper.4 After considering Patent Owner’s arguments, we find Petitioner has shown by a preponderance of the evidence that the proposed combination of Chalom and Aslan is sufficiently supported by the requisite motivation to teach limitations 1[D] and 1[E].” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Because Chalom explicitly indicates that its RFC can be trained using any suitable techniques(s) including compressing the classifier, we agree with Petitioner that a POSITA would have looked to Aslan’s teacher-student architecture that proposes compressing large models such as Chalom’s RFC into smaller models so they can be more readily deployed on computing devices with limited resources. Pet. Reply 11–12. As correctly noted by Petitioner, the experts of the parties agree that both Aslan and Chalom involve classifiers. More particularly, as acknowledged by Patent Owner’s representative during the hearing, compression is desirable for Chalom’s RFC. See Tr. 56:21–57:4. Accordingly, we agree with Petitioner that a POSITA would have looked to a similar compression operation of classifiers in Aslan for training a more compact MLA at runtime or offline. Pet. Reply 11–12. For these same reasons, we find unavailing Patent Owner’s argument that Chalom and Aslan are directed to different objectives or techniques. Further, we do not agree with Patent Owner’s argument that replacing Chalom’s large RFC with Aslan’s teacher-student MLA pair would have rendered the ensuing system more complex, and thereby inefficient. As correctly noted by Petitioner, Chalom indicates that the RFC can be embodied in a mobile computing device. Id. at 15 (citing Ex. 1005, 22:33– 37, 19:65–20:6). And Dr. Karam persuasively explains that using the teacher model to train the student model is more efficient because the teacher’s knowledge allows the student model to converge faster. Id. at 17 (citing Ex. 2009, 178:14–24). Accordingly, we find that a POSITA would have found sufficient” slip op. at 39
Patent outcomesUS 10,740,985 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,740,985 - Cisco Systems, Inc. v. Video Solutions Pte. Ltd.Institution deniedPTAB · Nov 12, 2024 · IPR2024-00922 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were obvious over Larson and Cai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons given, we determine Petitioner has not has not shown that the asserted prior art teaches or suggests limitation [1.7]. Accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over Larson and Cai. a) Conclusion—Claim 1 For the foregoing reasons, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“comprise the background knowledge art, with very little substantive explanation. In our view, this string-citation, without more substantive explanation, does not satisfy Petitioner’s obligation to explain why a person of ordinary skill in the art would have modified Larson based on the background knowledge in the art to account for limitation 1.7.” slip op. at 14
- Skill levelSkill level petitioner adoptedOther
“For purposes of this proceeding, Patent Owner “agrees to use Petitioner’s definition” for a person of ordinary skill in the art. Prelim. Resp. 12. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’823 patent specification and the prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states “each claim term in the Challenged Claims” should “be given its plain and ordinary meaning,” and “that no specific construction of any claim term is required.” Pet. 17–18. Patent Owner “agrees with Petitioner that, for this proceeding and the grounds presented by Petitioner, no claim term requires construction.” Prelim. Resp. 12. For purposes of this Decision, no claim terms require express construction.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,446,823 - Aptiv Services US, LCC v. Microchip Technology Inc.Institution deniedPTAB · Nov 7, 2024 · IPR2024-00803 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–18 obvious over Verhaege, Verhaege and Miller, or Ker.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2
- Skill levelOther
“(‘POSITA’) in the field of the ’665 patent in 2007 would have at least a Master’s degree in electrical engineering, computer engineering, or a related field and three to five years of experience in integrated circuit design.” Pet. 10 (citing Ex. 1002 ¶ 51). Patent Owner argues that Petitioner’s definition is “excessively high.” Prelim. Resp. 3 n.1. In Patent Owner’s view, “a POSITA would have had a bachelor’s degree in electrical engineering or an equivalent technical degree and two years of experience in mixed-signal (i.e., analog/digital) circuit design.” Id. (citing Ex. 2003 ¶¶ 30–34). We need not resolve this dispute because our decision would be the same under either definition.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In Patent Owner’s view, “the claims require sharing ESD charge from one pad with a different I/O pad.” Prelim. Resp. 27. Patent Owner argues that charge sharing is the only way that charging the pad capacitance can reduce a maximum voltage, as recited. Id. at 24–25. Apart from the charge sharing, Patent Owner argues that the recited enable or control circuitry is not located in the circuit where the ESD event occurs. Id. at 27–33. Patent Owner argues that Petitioner disagrees with this interpretation. Id. Petitioner, though, argues that it would have been obvious to duplicate Verhaege’s and Ker’s protection circuits. See, e.g., id. at 18 (discussing claim 1 and Verhaege), 48 (discussing the Verhaege-Miller combination), 66 (discussing claim 1 and Kerr). For example, Petitioner argues that “a POSITA would have been motivated to use the improved protection circuit of Verhaege, apply it at every I/O pad, and share the ESD energy across multiple pad circuits as taught by Miller.” See id. at 48 (emphasis added). From statements like these, Patent Owner draws the conclusion that Petitioner must also be interpreting the claims to require charge sharing. Prelim. Resp. 25–27. For the reasons discussed in Section II.C below, Petitioner has not shown a reasonable likelihood of showing that any claims are unpatentable even under the implied claim construction used in its obviousness rationale. The Board need not expressly construe any claims in reaching that conclusion.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner argues, “It would have been obvious to a POSITA that, because an ESD event could occur at any I/O pad, the Verhaege invention should be repeated at every I/O pad.” Pet. 18 (citing Ex. 1002 ¶ 67); id at 30–32 (claim 6); id. at 43 (claim 14). Yet Petitioner acknowledges that “there were many obvious ways to activate multiple circuits during an ESD event.” Id. at 51. The Petition does not sufficiently explain why it would have been obvious to have chosen the way that is claimed. See id. at 18, 30– 32, 43. Rather, Petitioner’s obviousness rationale appears to be based on impermissible hindsight gleaned entirely from the challenged patent’s 1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on the . . . patent itself as her roadmap for putting what she referred to as pieces of a ‘jigsaw puzzle’ together.”). For this additional reason, Petitioner has not shown a reasonable likelihood of prevailing in its challenges to claims 1, 6, and 14.” slip op. at 15
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,564,665 - ROKU, Inc. v. Ecolink Intelligent Technology, Inc.All claims unpatentablePTAB · Oct 28, 2024 · IPR2023-00792 · APJ Jason M Repko · IPR · Final written decision
Claims 1, 2, 6, 11, 12, and 16 are unpatentable as obvious over Lamb and Williams; claims 1 and 11 are also unpatentable as obvious over Sharma.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“In sum, we determine that Mr. McNair has experience in residential security and alarm systems and sixty years of experience in the research, design, development, and engineering of the technology underlying such systems that is sufficient for him to at minimum possess ordinary skill in the art. Id. ¶¶ 6–12. Also, his years of experience at the Security and System Reliability Architecture Group at AT&T Bell labs alone (id. ¶ 10; see also, id. at p. 147) meets the three or more years of commercial design and development experience in security and alarm systems, under Patent Owner’s definition (PO Resp. 6 (citing Ex. 2003 ¶ 34)). Thus, on this record, we disagree with Patent Owner’s argument that Bruce McNair lacks knowledge and skill at least of an ordinarily skilled artisan—even under Patent Owner’s definition. See PO Resp. 6. In this decision, we assign Bruce McNair’s testimony the appropriate weight, as discussed in our analysis below.” slip op. at 7
- Skill levelSkill level board ownOther
“had a bachelor’s degree in computer science, in electrical engineering, or a related field, and approximately two or more years of experience or equivalent study in sensor systems.” Pet. 12 (citing Ex. 10031 ¶¶ 37–40). Petitioner also asserts that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. at 12–13. Patent Owner disagrees and argues, [A person of ordinary skill in the art] would have had at least a bachelor’s or equivalent degree in electrical or electronic engi-neering or an equivalent field, and three or more years of com-mercial design and development experience in residential or business security and alarm systems. 1 Exhibit 1003 is the declaration of Bruce McNair. The differences between the two skill levels does not affect the Board’s analysis of Petitioner’s challenge. In fact, Patent Owner’s addition of experience in “security and alarm systems” only increases the skill level of a person of ordinary skill in the art. Id. at 6. Our conclusion that Petitioner has shown that all challenged claims are unpatentable is the same under either definition.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“Either way, “defining a particular claim term by its function is not improper.” Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1374–75 (Fed. Cir. 2014). For example, the Court of Appeals for the Federal Circuit has found that there is “nothing improper about defining ‘datalink’ as a link that conveys data.” Id. at 1375. “Many devices take their names from the functions they perform. The examples are innumerable, such as ‘filter,’ ‘brake,’ ‘clamp,’ ‘screwdriver,’ or ‘lock.’” Id. (quoting Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996)). Here, the functions recited in claims 1 and 11 limit what the “timed alarm signal” indicates, how it is used as well as its relationship to a timer, alarm, and security panel. If not for a timer associated with the security panel, there is no clear purpose for transmitting the “timed alarm signal” only when the specific determination is made, and that claimed determination would be rendered superfluous. A construction that requires the purpose of initiating a timer associated with the security panel is consistent with rest of the functions and steps recited in claims 1 and 11. Considering the claim as a whole, the other expressly recited functions and steps support our decision to include the signal’s purpose in our construction.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We disagree. Petitioner’s obviousness rationale is persuasive and supported by the evidence of record. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Essentially, Lamb assumes that the detected person is authorized. Ex. 1009 ¶¶ 37, 40, 58–59, cited in Pet. 17. Williams’s system permits authorized persons to use the space, while retaining security against intruders. Ex. 1010, 2:31–38, cited in Pet. 18. Petitioner persuasively supports the assertion that waiting for an authorization code would enhance system security in Lamb because one of ordinary skill in the art would been motivated “to verify—and not assume— that a potential alarm was triggered by an authorized person.” Pet. 18 (citing Ex. 1010, 2:35–38). We credit Bruce McNair’s testimony on this issue (Ex. 1003 ¶¶ 52–54) because it is supported by the record (Ex. 1010, 2:31–38; Ex. 1009 ¶¶ 37, 40, 58–59).” slip op. at 33
Patent outcomesUS 10,692,340 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,692,340
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.