- PTAB · Jul 21, 2023 · IPR2023-00436 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 1–18, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In an inter partes review proceeding, we construe patent claims using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 2; see generally Prelim. Resp. We agree that no claim terms require express construction for purposes of this Decision.” slip op. at 6
- Skill levelSkill level board ownOther
- Expert testimonyPetitioner expert creditedDecided for petitioner
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,183,538 - Bright Data Ltd. v. Oxylabs, UabInstitutedPTAB · Jul 18, 2023 · IPR2023-00187 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–5, finding a reasonable likelihood of success on the Athas anticipation and Hallak–Matthys obviousness grounds; it did not reach the Scoda–Matthys ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, institute inter partes review as to all of the challenged claims of the ’457 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes that all terms should have their plain and ordinary meaning. Pet. 14. Patent Owner responds that “[t]he ’457 Patent expressly defines a number of terms that are used in the claims,” and highlights several such definitions for the terms “web page,” “network appliance,” “browser,” and “embedded script.” Prelim. Resp. 6–7. In addition, Patent Owner proposes a construction for the second recitation in claim 1 of the phrase “a number of packets” that Patent Owner alleges is “consistent with both the specification and figures of the ’457 Patent.” Id. at 7–8. Having considered the positions of the parties, we find that for the purpose of this decision, it is unnecessary expressly to construe any claim terms. 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))). We, therefore, do not agree that Petitioner’s alleged failure to expressly address the meaning of claim terms should prevent us from instituting review as asserted by Patent Owner. See, e.g.,” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art of the ’457 patent would have had “a Master’s Degree or higher in the field of electrical engineering, computer engineering, or computer science, or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Pet. 14 (citing Williams Decl. ¶¶ 30–31). At this juncture, Patent Owner does not provide a description of an ordinarily skilled artisan. For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner. Based on the current record, this proposal is consistent with the ’457 patent, the prior art of record, and is supported by the testimony of Dr. Williams. See Williams Decl. ¶¶ 30–31.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Williams testifies that “a [person of ordinary skill] would recognize that there are advantages analyzing web page data, including metadata and packets to provide a more robust monitoring and filtering ability.” Williams Decl. ¶ 150. He concludes that “it would have been obvious to adapt Hallak to utilize metadata and packet level analytics as disclosed in Matthys to produce more detailed filtering and detection in protecting web clients and web-based applications.” Id. ¶ 151. He reasons further that “[t]he use of metadata and data packet analytics as suggested by Matthys into the Hallak process would have been an obvious implementation for a [person of ordinary skill] and would have also been done expecting success.” Id. At this stage we find this testimony consistent with the record, helpful, and credible. On the other hand, we do not find Patent Owner’s arguments to the contrary to be supported by any evidence of record at this stage. Prelim. Resp. 22–28. For example, Patent Owner argues that “[t]he Petition fails to explain how adding a script to be processed at the client would protect web clients or how this would be compatible with Hallak’s system.” Prelim. Resp. 23. But Dr. Williams testifies that adapting Hallak to use Matthys’s metadata and packet-level analytics would “produce more detailed filtering and detection in protecting web clients and web-based applications.” Williams Decl. ¶ 151. We, therefore, are not persuaded that Petitioner’s showing of motivation to combine these references is “deficient.” Prelim. Resp. 22–25. Nor do we agree, for reasons discussed supra, that Petitioner’s element-by-element analysis “fails to provide any explanation or specific details,” or that Dr. Williams “does not provide any clarification.” Id. at 25– 28.” slip op. at 23
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,924,457 - Bright Data Ltd. v. Oxylabs, UabInstitutedPTAB · Jul 18, 2023 · IPR2023-00185 · APJ Thomas L Giannetti · IPR · Institution
Instituted inter partes review of claims 1–19 on all asserted grounds, finding a reasonable likelihood of success and compelling merits for the WebShield anticipation challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Trademark Office issued a Memorandum setting forth an “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation.” (“Guidance Memo”).7 The Director’s Guidance Memo states that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Id. at 2. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. For the reasons that follow, although Fintiv factors 1–5 weigh in favor of denying institution, we determine that the Petition presents compelling merits, and on this record, we thus decline to exercise our discretion to deny the Petition. We first discuss application of the Fintiv factors to this case.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. In addition, for the reasons stated, we are not persuaded to exercise our discretion to deny the Petition under 35 U.S.C. § 314(a). We, therefore, institute inter partes review as to all of the challenged claims of the ’498 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, the words of a claim generally are 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 v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Petitioner proposes that all terms should be given their plain and ordinary meaning. Pet. 17. Patent Owner responds that “[t]he ’498 Patent expressly defines a number of terms that are used in the claims,” namely, “web page,” “network appliance,” “browser,” and “embedded script.” Prelim. Resp. 7–8. Patent Owner contends that the Petition “fails to address the specification’s definitions of claim terms, much less demonstrate that the cited references disclose each claimed element according to its appropriate meaning.” Id. at 7. Having considered the positions of the parties, we find that for the purpose of this decision, it is unnecessary expressly to construe any claim terms. 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))). We therefore do not agree that Petitioner’s alleged failure to address the meaning of claim terms should prevent us from instituting review as asserted by Patent Owner. See, e.g., Prelim. Resp. 20– 21. Patent Owner’s arguments regarding the asserted grounds of” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation marks omitted). Petitioner asserts that a person of ordinary skill in the art of the ’498 patent would have had “a Master’s Degree or higher in the field of electrical engineering, computer engineering, or computer science, or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Pet. 16 (citing Ex. 1007 ¶¶ 30– 9 Neither party presents evidence or arguments regarding objective evidence of non-obviousness at this stage. 31). At this juncture, Patent Owner does not provide a description of an ordinarily skilled artisan. For purposes of this decision, we adopt the level of ordinary skill as articulated by Petitioner. Based on the current record, this proposal is consistent with the ’498 patent, the prior art of record, and is supported by the testimony of Dr. Williams. Williams Decl. ¶¶ 30–31.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,503,498 - Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentablePTAB · Jul 6, 2023 · IPR2022-00417 · APJ Brian D Range · IPR · Final written decision
Claims 1, 2, 4–8, 10–12, and 18 are unpatentable as obvious over Takeda-322.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). The Specification of the ’250 patent describes its technical field as relating to a smart card that may comprise an RFID (radio frequency identification) chip with antenna components for operating in contactless modes. Ex. 1001, 1:37–54. The Specification discusses both inductive and capacitive coupling. See, e.g., id. at 3:14–39. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, we are not persuaded that the level of ordinary skill should be narrowly confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Pet. 7.5” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“testimony of Petitioner’s declarant, Dr. van der Weide, for several reasons. Patent Owner first argues that Dr. van der Weide lacks relevant experience to provide opinions through the lens of a person having ordinary skill in the art. PO Resp. 27–38 (citing Ex. 2003 ¶ 71). According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. Van der Weide’s experience exceeds even Patent Owner’s articulation of the level of ordinary skill in the art. Pet. Reply 22–23 (citations omitted). Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededTerm construed board ownMixed
“appears in independent claims 1 and 18) should be construed as “a component in a booster antenna for coupling with a module antenna connected to an integrated circuit.” PO Resp. 15–16. We determine that it is unnecessary to construe this claim term for purposes of this Decision. See, e.g., Nidec Motor Corp., 868 F.3d at 1017 (“[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))). As we explain herein, the preponderance of the evidence supports that Takeda-322 renders the recited “coupler coil” obvious even under Patent Owner’s proposed construction. See Section III(G)(2)(b), infra.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“to the extent Takeda-322 does not expressly teach a single wire implementation, such an implementation would have been obvious because it was a known, conventional, technique and because it would lead to obvious and predictable results while avoiding drawbacks of multiple wires. Id. at 11–12 (citing Ex. 1003 ¶¶ 59–63; Ex. 1012, 3:54–60, 4:26–36, 5:35– 60 (Ayala suggesting use of single wire)). Petitioner further argues, with supporting evidence, that a person of ordinary skill in the art would have had a reasonable expectation of success in achieving this implementation. Id. The preponderance of the evidence supports Petitioner’s argument that a person of ordinary skill in the art would have had both reason and a reasonable expectation of success in achieving this implementation, and Patent Owner does not dispute the argument. We, thus, determine that a single-wire embodiment of Takeda-322 would have been obvious.” slip op. at 26
Patent outcomesUS 9,033,250 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,033,250 - PTAB · Jun 20, 2023 · IPR2023-00193 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1, 3, 4, 6, 7, and 14–18, finding a reasonable likelihood that the claims are obvious over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any 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.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’991 patent. Accordingly, we institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention would have had “a Bachelor’s degree in Electrical Engineering or a similar degree and two years of professional experience working in wireless networking, including WLAN and WPAN protocols and devices; more experience would supplement less education and vice versa.” Pet. 7 (citing Ex. 1003 ¶¶ 42–45). At this time, Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes any express claim constructions. Pet. 5; Prelim. Resp. 13. However, as explained below, to the extent that the parties’ positions turn on an interpretation of the claimed “second network protocol,” we encourage the parties to directly address the scope of the challenged claims during trial. For the purposes of this Decision, we preliminarily determine that the language of the claims themselves provides some clarity regarding claim scope. Limitation [1g], for example, provides that the second network protocol “is an overlay protocol with respect to the first network protocol in that communications using the second network protocol are partially consistent with the first network protocol.” Also, the limitations of claims 6 and 7, which depend from claim 1, provide that the second network protocol “is a protocol that requires lower average power consumption over time relative to the first network protocol” (claim 6) and “is a modification of the 802.11x wireless protocol that is not entirely compliant with the 802.11x wireless protocol of the first network but can be maintained in a common wireless space as the 802.11x wireless protocol” (claim 7).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“a [person of ordinary skill in the art] would have been motivated to incorporate Ganu’s teachings of FNs using data forwarding techniques to relay [I]nternet traffic between MNs and APs into Cromer’s system such that client device 100 relays data between peer-to-peer WPAN devices 180 and AP 160, allowing peer-to-peer WPAN devices 180 to communication with AP 160 via client device 100 and access the Internet.” slip op. at 10
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,264,991 - PTAB · Jun 14, 2023 · IPR2022-01593 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–19 on all petitioned grounds, finding a reasonable likelihood that Truist would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedInstituted
“On June 21, 2022, the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (“Director”) issued a memo that further clarifies how we should approach analyzing the Fintiv factors. Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. (“Director Memo”). Notably, the Director stated that “the PTAB [Patent Trial and Appeal Board] 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.” Director Memo at 3. With this guidance in mind, we decline to exercise our discretion to deny institution of this proceeding based on Fintiv because Truist has provided a Sotera stipulation. Ex. 1028; see also Prelim. Sur-reply 1–2 (USAA acknowledging receipt of the Truist’s Sotera stipulation, and then stating “USAA understands that under the June 21, 2022 Memorandum issued by Director Vidal, such a stipulation is dispositive of the Fintiv analysis”).” slip op. at 12
- 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 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) (2020). Taking into account USAA’s Preliminary Response, Truist’s Preliminary Reply, and USAA’s Preliminary Sur-reply, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Truist would prevail in challenging at least one of claims 1–19 of the ’090 patent as unpatentable. Pursuant to § 314, we hereby institute an inter partes review as to these claims of the ’090 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“For purposes of this proceeding, Truist contends that “the plain meaning of each claim term can be applied.” Pet. 4 (citing Ex. 1002 ¶ 30 (Declaration of Dr. David Doermann in support of Petition)). For purposes of its Preliminary Response only, “[USAA] does not assert that any claim terms need to be construed” to determine whether the Petition meets the reasonable likelihood threshold standard for institution. Prelim. Resp. 18. 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 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on the preliminary record, we are not persuaded by USAA’s argument for two reasons. First, USAA’s argument is not commensurate in scope with the disputed limitation, which merely requires, “when the monitoring criterion is determined to be satisfied, control the image capture device to capture an image depicting the target document in the field of view of the image capture device.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (explaining that limitations not appearing in the claims cannot be relied upon for patentability). Based on the arguments and evidence currently before us, we are persuaded that the plain language of this limitation is agnostic as to whether the phrase “control[ling] the image capture device to capture an image” requires automatic or manual image capture.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,818,090 - Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentablePTAB · Jun 12, 2023 · IPR2022-00235 · APJ Stacey G White · IPR · Final written decision
Claims 1–7 are unpatentable: claims 1–7 over Takeda-322 under §§ 102 and 103, claims 1–6 over Murayama under § 102, and claim 7 over Murayama under §§ 102 and 103.
RulingsFinal written decision- Adverse judgmentDecided for patent owner
“Under the circumstances of this case, we do not agree that adverse judgment with respect to the disclaimed claims is appropriate. Our Rules, provide that a party may request judgment against itself. 37 C.F.R. § 42.73(b). Here, Patent Owner is not requesting adverse judgment against itself. While it is true that 37 C.F.R. § 42.73(b) provides that “[a]ctions construed to be a request for adverse judgment include . . . (2) [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial” (emphasis added), we decline to construe Patent Owner’s statutory disclaimer as a request for adverse judgment in this proceeding because Patent Owner does not disclaim all challenged claims and the majority of the challenged claims remain in this trial.” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). Petitioner points out that “the claims are not limited to a [Booster Antenna (BA)] operating at any particular frequency range.” Reply 25. In addition, Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, we are not persuaded that the level of ordinary skill should be narrowly confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1– 2 years of experience researching and developing antennas used in RFID applications.” Pet. 87.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“testimony of Petitioner’s declarant, Dr. van der Weide, because he “he lacks relevant experience, his testimony runs counter to fundamental principles of the RFID technology disclosed in the ’932 patent, and his testimony evidences a lack of candor.” PO Resp. 46. According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. Van der Weide’s experience exceeds even Patent 7 We further note that our final determination, on the merits, would be the same even under Patent Owner’s definition of the level of ordinary skill in the art. Owner’s articulation of the level of ordinary skill in the art. Reply 25–27. Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner asserts that “[n]o claim term requires an exact outer boundary construction, because the prior art relied upon herein meets the claim terms under any reasonable interpretation.” Pet. 9. Patent Owner proposes constructions for the claim terms “booster antenna,” “card antenna component,” “coupler coil component,” and “extension antenna component.” PO Resp. 25–45. According to Patent Owner, Petitioner also has proposed its own constructions for these terms, despite stating that no claim term requires construction. Id. at 25–26. We address “booster antenna” and “extension antenna” below.8 It is unnecessary to construe “card antenna component” or “coupler coil component” in this Decision 8 Patent Owner also argues that Petitioner belated construes “card body” in Petitioner’s Reply. Sur-Reply 16–18. We do not construe “card body” because this construction is not necessary to resolve this matter. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). because none of the parties’ disputes turn on the meaning of either term. See, e.g., Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 13
Patent outcomesUS 9,195,932 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,195,932 - PTAB · May 18, 2023 · IPR2023-00183 · APJ Kristen L Droesch · IPR · Institution
The Board instituted review of claims 1–14 on all petition grounds, finding a reasonable likelihood that Truist would show at least one challenged claim obvious.
RulingsInstitution decision- Parallel petitionsDecided for patent owner
“We agree with Patent Owner that Petitioner should be bound to its initial ranking of this Petition as the first ranked of the two concurrently filed parallel petitions. As pointed out by Patent Owner, Petitioner does not cite any cases to support the proposition that it is permissible to redesignate a first ranked petition after the filing of preliminary responses. See Prelim. Sur-reply 2. Moreover, although Petitioner relies on the Board’s Final Written Decision in IPR2021-01077 as a reason to redesignate the first ranked petition, we note that it was foreseeable that the Final Written Decision would issue in January 2023, approximately one year after trial was instituted in IPR2021-01077. It was also a foreseeable possibility that all of the claims might be found unpatentable on the basis of Garcia, Randle, and Slater in the Final Written as it was one of three possible outcomes (i.e., finding all, some, or none of the claims unpatentable). Likewise, it was also a foreseeable possibility that Patent Owner might stipulate not to challenge the prior art status of Popadic because such stipulations are expressly suggested in the Trial Practice Guide as way for a patent owner to avoid additional petitions. See CTPG 61. These foreseeable circumstances do not provide sufficient reason or justification to permit Petitioner to now designate the ’184 IPR Petition as the first ranked petition.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, we determine there is a reasonable likelihood that Petitioner would prevail in showing at least one of the challenged claims of the ’753 Patent is unpatentable. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–14 of the ’753 Patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 43
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We do not agree that “validating the determined information” recited in elements [1F] and [8F] requires information determined from “optical character recognition of a Magnetic Ink Character Recognition (MICR) line in the image of the check.” Patent Owner quotes Amgen, for the proposition that the use of the terms “including” and “comprising” means that the named elements are essential, but overlooks that Amgen also explains that “other elements may be added and still form a construct within the scope of the claim.” Amgen, 314 F.3d 1313 at 1344–1345. Consistent with Amgen, the plain language “perform optical character recognition in real-time on the image of the check to determine information about the check, including optical character recognition of a Magnetic Ink Character Recognition (MICR) line in the image of the check” of elements [1D] and [8B] permits other elements to form a construct within the scope of the claim. Therefore, “perform optical character recognition in real-time on the image of the check to determine information about the check, including optical character recognition of a Magnetic Ink Character Recognition (MICR) line in the image of the check” recited in elements [1D] and [8B] can include information determined apart from OCR of a MICR line. Accordingly, “validating the determined information” recited in elements [1F] and [8F] does not require information determined from OCR of a MICR line, but may include other information from OCR on the image of the check. For example, the ’753 Patent discloses OCR on the check amount location and any other aspects of the check image. See Ex. 1001, 11:5–13; Fig. 3.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner also asserts that “[t]o the extent it is disputed that Popadic’s OCR is ‘in real-time,’ it would have been obvious to do so based on Garcia’s disclosure of a real-time, interactive process for remote check deposit.” Pet. 29 (citing Ex. 1003 ¶ 76); see Pet. 31 (quoting Ex. 1010, 5:1–8; citing Ex. 1003 ¶ 80). For the purpose of this decision and based on Petitioner’s citations to Popadic, Garcia, and Dr. Doermann’s testimony , we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art “to carry out Popadic’s OCR in real time in view of Garcia so that, if there are any issues with the validation of the check amount, the system could immediately communicate with the user to either confirm the correct amount of the check or resubmit the check image if the system cannot optically read it.” Pet. 31–32 (citing Pet. 17–22; Ex. 1003 ¶ 81; Ex. 1008, 10; Ex. 1020, 5:64-6:5); KSR, 550 U.S. at 418. According to Petitioner, “[s]uch an implementation would have minimized the amount of “operator intervention” required by the bank, leading to faster processing of the check deposit and fewer human resources required by the bank.” Pet. 32 (citing Ex. 1003 ¶ 80; Ex. 1008, 10). Petitioner further contends that a person of ordinary skill in the art would have had a reasonable expectation of success and the implementation would have been well within the skill level of a person of ordinary skill in the art. See id. (citing Ex. 1003 ¶ 81).” slip op. at 27
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,182,753 - Apple Inc. v. Billjco LLCAll claims unpatentablePTAB · May 18, 2023 · IPR2022-00131 · APJ Garth D Baer · IPR · Final written decision
Claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49 are unpatentable as obvious over Haberman; the Board did not reach the alternative grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of experience relating to wireless communications.” Pet. 5 (citing Ex. 1002 ¶¶ 42–43). Patent Owner does not dispute Petitioner’s formulation. PO Resp. 6. We adopt Petitioner’s description as it is consistent with the prior art and patent specification before us and supported by credible expert testimony. See Okajima v. Bourdeau, 1 Because the parties agree that the challenged claims have an effective filing date before March 16, 2013, we apply the pre-AIA (“America Invents Act”) version of § 103. Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). 2 US 2005/0096044 A1, published May 5, 2005 (Ex. 1004, “Haberman”). 3 US 2002/0159401 A1, published Oct. 31, 2002 (Ex. 1005, “Boger”). 4 US 2002/0132614 A1, published Sept. 19, 2002 (Ex. 1006, “Vanluijt”). 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededDecided for petitioner
“1. privilege Patent Owner proposes construing the term “privilege” in claims 1 and 29 to exclude preferences. PO Resp. 13. According to Patent Owner, preferences merely “indicate a desire for certain information over other information” while privileges are “a right or authorization granted to permit the performance of certain computer functions.” See PO Sur-reply 5. We do not adopt Patent Owner’s proposed construction. Patent Owner’s argument appears to be that anything labeled as a “preference” in a data processing system cannot be a “privilege,” even if the preference is enforced so as to actually limit or govern the system’s functionality. See PO Resp. 12–14, 20, 22, 23. The ’267 patent indicates that privileges include “[a]ny configurable privilege granted by one identity to another identity that can limit, enable, disable, delegate, or govern actions, feature(s), functionality, behavior(s), or any subset(s) thereof.” Ex. 1001, 124:15–24. Patent Owner does not explain sufficiently how this description of privileges excludes anything labeled as a preference. Thus, we are not persuaded to construe the term “privilege” to exclude preferences. No further construction of the term “privilege” is necessary to resolve the parties’ disputes. See 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 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“2. “destination identity” Patent Owner proposes construing the phrase “destination identity” in claims 1 and 29 as “relat[ing] to privilege data configuration” and “pertain[ing] to the matching privilege configuration.” PO Resp. 15; See PO Sur-reply 9, 10. We do not see how Patent Owner’s proposed construction impacts any disputed issue in this case. We, therefore, decline to adopt Patent Owner’s construction of “destination identity” and decline to further construe the term, because doing so is not necessary to resolving the parties’ dispute. See Vivid Techs., 200 F.3d at 803.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“III. 35 U.S.C. § 325(d) Patent Owner argues that Petitioner’s patentability challenges fail because the asserted prior art is cumulative or less relevant than the prior art considered during prosecution. PO Resp. 17–18 (citing 35 U.S.C. § 325(d)). We disagree with Patent Owner’s argument. Under § 325(d), whether the same or substantially the same prior art or arguments previously were presented to the Office may impact a decision “whether to institute” inter partes review. We decline to extend § 325(d) to this already-instituted inter partes review, as Patent Owner suggests.” slip op. at 7
Patent outcomesUS 8,639,267 unpatentableClaim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,639,267 - Apple Inc. v. Billjco LLCAll claims unpatentablePTAB · May 18, 2023 · IPR2022-00129 · APJ Garth D Baer · IPR · Final written decision
Claims 1–3, 8, 20, 21, 23–27, 32, 44, 45, 47, and 48 are unpatentable as obvious over the asserted Lutnick-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“at least a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of experience relating to wireless communications.” Pet. 5–6 (citing Ex. 1003 ¶¶ 39–40). Patent Owner does not dispute Petitioner’s formulation. PO Resp. 6. We adopt Petitioner’s description as it is consistent with the prior art and patent specification before us and supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“information and instructions for presenting said information” in claim 1 and a similar phrase in claim 25 to mean “a self-contained object with both the information for presentation and the instructions describing under what conditions to present that information.” Pet. 8–10. Patent Owner does not propose an express construction for any claim terms. We find no claim terms require express construction to determine unpatentability. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundDecided for petitioner
“Lutnick and Rankin. Pet. 49–51. Petitioner identifies evidence indicating that the Lutnick and Rankin combination teaches the limitations of claims 20 and 44, and that a person of ordinary skill in the art would have had reason to combine these references. Id. Other than the arguments discussed above, Patent Owner does not additionally challenge Petitioner’s showing. Having reviewed the arguments and weighed the evidence, we find that Petitioner has shown by a preponderance of the evidence that claims 20 and 24 would have been obvious over Lutnick and Rankin. D. OBVIOUSNESS OF CLAIMS 23 AND 47 Petitioner argues that claims 23 and 47 would have been obvious over Lutnick and Evans. Pet. 51–56. Petitioner identifies evidence indicating that the Lutnick and Evans combination teaches the limitations of claims 23 and 47, and that a person of ordinary skill in the art would have had reason to combine these references. Id. Other than the arguments discussed above, Patent Owner does not additionally challenge Petitioner’s showing. Having reviewed the arguments and weighed the evidence, we find that Petitioner has shown by a preponderance of the evidence that claims 23 and 47 would have been obvious over Lutnick and Evans.” slip op. at 15
- Obviousness (§103) › Objective indicia / secondary considerations › CopyingDecided for petitioner
“challenged claims are not obvious. PO Resp. 21–26. According to Patent Owner, we should infer copying based on Petitioner’s access to the ’839 patent and Petitioner’s release of products that embody the challenged claims. Id. at 21–26 (citing Liqwd, Inc. v. L’Oreal USA, Inc., 941 F.3d 1133, 1138 (Fed. Cir. 2019). As the court in Liqwd recognized, access to a patent coupled with circumstantial evidence showing changes to a competitor’s design can be sufficient to support copying. Liqwd, Inc. v. L’Oreal USA, Inc., 941 F.3d 1133, 1138 (Fed. Cir. 2019). This may happen when, for example, “the defendant’s engineering design team had settled on one design and ‘suddenly changed direction’ to adopt a feature disclosed in the patent as soon as it issued.” Id. (quoting DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1328 (Fed. Cir. 2009)). Here, we find the circumstantial evidence is not sufficient to suggest that Petitioner copied the patented technology. As Petitioner notes, the only alleged access involves unsolicited communications between 2010 and 2014 sent to Petitioner’s agent seeking to monetize Patent Owner’s then-pending patent applications. See Pet. Reply 23; PO Resp. 22–23. Patent Owner further alleges that “[i]n or around June 2013,” Petitioner “publicly announced its rollout of [ ] iOS7,” which Patent Owner alleges embodies the challenged claims. PO Resp. 23–26. These general allegations are not sufficient to infer that Petitioner changed its design to incorporate the patented features based on its access to Patent Owner’s technology. See Liqwd, 941 F.3d at 1138 (noting the “primary concern . . . to avoid treating mere infringement as copying simply because the claims of a patent arguably read on a competitor product”).” slip op. at 13
Patent outcomesUS 8,566,839 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,566,839
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.