- Solaredge Technologies, Inc v. Fronius International GmbHInstitution deniedPTAB · Oct 21, 2022 · IPR2022-00849 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–7 obvious over the asserted prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We find Petitioner’s challenges fail because the same structures cannot be both the claimed housing and the contact-making system. The atissue claim language supports that the housing and contact-making system are distinct structures. “Where,” as here, “a claim lists elements separately, the clear implication of the claim language is that those elements are distinct component[s] of the patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010). Beyond listing the housing and contact-making systems separately, claim 1 recites “wherein in the upper and lower housing parts, parts of the contact-making system are arranged.” Ex. 1001, 7:29–30. Because a structure cannot be arranged in itself, the housing and contact-making system must be distinct. Beyond the claim’s language, the ’919 patent’s specification also consistently describes the housing and contact-making structures as distinct. See, e.g., Ex. 1001, Figs. 2, 3, 5:15–20, 6:32–37, 6:48–49, 6:62–64. Because Petitioner does not identify separate structures in the asserted references for the claimed housing and contact-making system, Petitioner has not shown a reasonable likelihood that it would prevail in establishing claims 1–7 would have been obvious over the asserted prior art.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We find Petitioner’s challenges fail because the same structures cannot be both the claimed housing and the contact-making system. The atissue claim language supports that the housing and contact-making system are distinct structures. “Where,” as here, “a claim lists elements separately, the clear implication of the claim language is that those elements are distinct component[s] of the patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010). Beyond listing the housing and contact-making systems separately, claim 1 recites “wherein in the upper and lower housing parts, parts of the contact-making system are arranged.” Ex. 1001, 7:29–30. Because a structure cannot be arranged in itself, the housing and contact-making system must be distinct. Beyond the claim’s language, the ’919 patent’s specification also consistently describes the housing and contact-making structures as distinct. See, e.g., Ex. 1001, Figs. 2, 3, 5:15–20, 6:32–37, 6:48–49, 6:62–64. Because Petitioner does not identify separate structures in the asserted references for the claimed housing and contact-making system, Petitioner has not shown a reasonable likelihood that it would prevail in establishing claims 1–7 would have been obvious over the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION We find no claim terms require express construction for us to determine whether or not to institute inter partes review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“industry experience.” Pet. 7. Further, “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Id. (citing Ex. 1003 ¶ 38). Patent Owner does not contest Petitioner’s formulation. See generally Prelim. Resp. At this stage in the proceeding, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which appears commensurate with the level of ordinary skill as reflected in the asserted prior art and the ’919 patent.” slip op. at 5
Claim construction§ 103 obviousnessPatents in suitUS 9,137,919 - Cloudflare, Inc. / Splunk Inc. v. Sable Networks, Inc.Some claims unpatentablePTAB · Oct 18, 2022 · IPR2022-00228 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 3, 9–13, 19–24, 29–33, and 39–44 are unpatentable under §103; claims 17, 18, 37, and 38 are not shown unpatentable over Yung alone.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that the level of ordinary skill in the art corresponds to “an undergraduate degree (or equivalent) in electrical engineering, computer science, or comparable subject” and “3–5 years of academic or industry experience in computer networking or comparable industry experience.” Pet. 11 (citing Ex. 1003 ¶ 27). In the Institution Decision, we adopted this articulation of the level of ordinary skill. Inst. Dec. 15. At trial, neither party disputed our preliminary finding. See PO Resp.; Pet. Reply. We remain persuaded that this articulation of the level of skill in the art is supported by the ’593 patent, the asserted prior art, and Dr. Jeffay’s testimony. See Inst. Dec. 15 (citing Ex. 1003 ¶ 27). Accordingly, we determine that the level of ordinary skill in the art corresponds to an undergraduate degree (or equivalent) in electrical engineering, computer science, or comparable subject and 3–5 years of academic or industry experience in computer networking or comparable industry experience.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“1. Means-plus-function limitations Petitioner contends the challenged claims include means-plus-function limitations that should be interpreted under 35 U.S.C. § 112 ¶ 6, and for each, Petitioner identifies a construction for use in this proceeding. Pet. 11– 14.12 Petitioner submits that no other terms require construction for purposes of this proceeding. Id. at 12. In the Institution Decision, we agreed with Petitioner that the identified limitations are means-plus-function limitations. Inst. Dec. 16 (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”)). We also stated that we were persuaded that Petitioner had correctly identified the recited functions and the components in the Specification that perform those functions. Id. at 16– 17. As a result, we preliminarily adopted the following constructions: Limitation” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“Instead, Patent Owner points to the Specification, but this also fails to support Patent Owner’s contention. Although claims are read in view of the Specification (Phillips, 415 F.3d at 1315), they are not limited to the embodiments disclosed in it (id. at 1323). Patent Owner identifies (and we perceive) no passage in the Specification that could be read as redefining this claim phrase or disavowing part of its scope. See Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365, 1367 (Fed. Cir. 2012). In fact, the passages cited by Patent Owner are directed to the handling of a single flow, and none expressly indicates that an identical method must be used for each flow processed. See Ex. 1001, 6:25–31, 7:51–52, 8:12–17. Thus, we determine that the Specification does not justify importing the limitation proposed by Patent Owner into the claims. Accordingly, having reviewed the intrinsic record, we disagree with Patent Owner’s contention that claims 9 and 29 require computing a badness factor for each flow or all flows; rather, this claim limitation may be satisfied by computing a badness factor for a single flow.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. Other constructions The parties do not propose constructions for any other terms or phrases. See Pet. 11–14; PO Resp. Based on the record before us, we do not find it necessary to provide express claim constructions for any other terms or phrases. 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 12
Patent outcomesUS 8,243,593 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,243,593 - Cloudflare, Inc. / Splunk Inc. v. Sable Networks, Inc.Some claims unpatentablePTAB · Oct 18, 2022 · IPR2021-00909 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 3, 9–13, 19–24, 29–33, and 39–44 are unpatentable under § 103; claims 17, 18, 37, and 38 were not shown unpatentable over Yung.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that the level of ordinary skill in the art corresponds to “an undergraduate degree (or equivalent) in electrical engineering, computer science, or comparable subject” and “3–5 years of academic or industry experience in computer networking or comparable industry experience.” Pet. 11 (citing Ex. 1003 ¶ 27). In the Institution Decision, we adopted this articulation of the level of ordinary skill. Inst. Dec. 15. At trial, neither party disputed our preliminary finding. See PO Resp.; Pet. Reply. We remain persuaded that this articulation of the level of skill in the art is supported by the ’593 patent, the asserted prior art, and Dr. Jeffay’s testimony. See Inst. Dec. 15 (citing Ex. 1003 ¶ 27). Accordingly, we determine that the level of ordinary skill in the art corresponds to an undergraduate degree (or equivalent) in electrical engineering, computer science, or comparable subject and 3–5 years of academic or industry experience in computer networking or comparable industry experience.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“1. Means-plus-function limitations Petitioner contends the challenged claims include means-plus-function limitations that should be interpreted under 35 U.S.C. § 112 ¶ 6, and for each, Petitioner identifies a construction for use in this proceeding. Pet. 11– 14.12 Petitioner submits that no other terms require construction for purposes of this proceeding. Id. at 12. In the Institution Decision, we agreed with Petitioner that the identified limitations are means-plus-function limitations. Inst. Dec. 16 (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”)). We also stated that we were persuaded that Petitioner had correctly identified the recited functions and the components in the Specification that perform those functions. Id. at 16– 17. As a result, we preliminarily adopted the following constructions: Limitation” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for patent owner
“In particular, claim 9 recites a method for processing a flow that includes computing a badness factor for the flow. Ex. 1001, 11:63–8. Patent Owner identifies (and we perceive) no limitation that requires a badness factor to be computed for each flow. Inst. Dec. 44 (addressing substantially similar argument presented in preliminary response); see also Ex. 1001, 13:32–44 (claim 29). During trial, Patent Owner neither responds to this analysis nor points to a claim limitation that allegedly includes this requirement. Instead, Patent Owner points to the Specification, but this also fails to support Patent Owner’s contention. Although claims are read in view of the Specification (Phillips, 415 F.3d at 1315), they are not limited to the embodiments disclosed in it (id. at 1323). Patent Owner identifies (and we perceive) no passage in the Specification that could be read as redefining this claim phrase or disavowing part of its scope. See Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365, 1367 (Fed. Cir. 2012). In fact, the passages cited by Patent Owner are directed to the handling of a single flow, and none expressly indicates that an identical method must be used for each flow processed. See Ex. 1001, 6:25–31, 7:51–52, 8:12–17. Thus, we determine that the Specification does not justify importing the limitation proposed by Patent Owner into the claims. Accordingly, having reviewed the intrinsic record, we disagree with Patent Owner’s contention that claims 9 and 29 require computing a badness factor for each flow or all flows; rather, this claim limitation may be satisfied by computing a badness factor for a single flow.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Having considered the parties’ arguments and evidence, we are persuaded that Copeland discloses this limitation. Copeland analyzes a flow’s statistics (including start time, end time, number of bytes, and number of packets) “to determine if the flow appears to be legitimate traffic or possible suspicious activity” and computes a concern index for the flow if it appears suspicious. E.g., Ex. 1007, 3:31–35, 7:38–67, 16:36–17:5. We find that Copeland’s concern index qualifies as a “badness factor for the flow . . . [that] provides an indication of whether the flow is exhibiting undesirable behavior,” as required by claim 9. E.g., Ex. 1007, 3:31–40, 4:30–33, Fig. 1 (identifying “‘bad’ flow(s)”). As Dr. Jeffay explains, an ordinary artisan would have understood that suspicious activity (such as a probe or network attack) is undesirable behavior. Ex. 1003 ¶¶ 211–212. We also find that Copeland teaches computing a concern index “based at least partially upon the set of behavioral statistics” because, for example, it uses the number of packets to compute the concern index. Ex. 1007, 7:64–67, Fig. 6 (setting concern index to number of packets); see also Ex. 1003 ¶ 213.” slip op. at 22
Patent outcomesUS 8,243,593 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,243,593 - PTAB · Oct 14, 2022 · IPR2022-00741 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1–19 on all six asserted §103 grounds, finding a reasonable likelihood of success on the MIT2002, MIT2003, and MIT2004 combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review (“IPR”) of claims 1–19 of U.S. Patent No. 10,355,975 B2 (Ex. 1001, “the ’975 patent”). Paper 1 (“Pet.”). Rex Computing, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). An inter partes review may not be instituted on fewer than all claims challenged in the Petition. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the time the ’975 patent was filed. Pet. 6. Relying upon the Conte Declaration, Petitioner asserts a person of ordinary skill in the art would have had “a Bachelor of Science degree in electrical engineering, computer engineering, or a related subject matter, plus at least two years of professional experience in the field of microprocessor design or a similar field. . . . and more experience would compensate for less formal education, 2 Patent Owner does not identify any secondary considerations to be considered. Accordingly, we do not consider this aspect of the obviousness analysis at this preliminary stage of the proceeding. and vice versa.” Id. (citing Ex. 1002 ¶¶ 27–30). At this juncture, Patent Owner has not provided an assessment of the level of ordinary skill in the art. See Prelim. Resp. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner as it is supported by the Conte Declaration and is consistent with the ’975 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“of any claim term is necessary at the institution stage. Prelim. Resp. 7–8. Patent Owner asserts that the different litigation constructions need not be resolved because institution should be denied for other reasons, relying on the plain language of the claims. However, because Patent Owner addresses the interpretation of “data packet” in contesting Petitioner’s application of Olofsson, further briefing on the construction of that term is recommended. Id. at 8. “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree that no constructions are required at this preliminary stage for the above-disputed terms; therefore, we do not directly address the parties’ proposed constructions, except as discussed, infra, with respect to the asserted contentions of obviousness.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“threshold showing that these references are prior art patents or printed publications under 35 U.S.C. § 102. See Pet. 3–4; Ex. 1005, codes (22), (43); Ex. 1006, codes (22), (45); Ex. 1007, codes (22), (63). With respect to MIT2002, MIT2003, and MIT2004, Petitioner relies upon a declaration of Dr. Sylvia Hall-Ellis to establish the provenance of these references. Pet. 10. Dr. Hall-Ellis states that MIT2002 was “available on March 1, 2002, in the ACM Digital Library and on August 7, 2002, in the IEEE Xplore database.” Ex. 1016 ¶ 51. Dr. Hall-Ellis further states that the IEEE Micro article publication became publicly available on, or shortly after, April 17, 2002. Id. ¶ 53.” slip op. at 5
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,355,975 - NXP B.V. / NXP USA, Inc. et al. v. Bell Semiconductor, LLCSome claims unpatentablePTAB · Oct 6, 2022 · IPR2021-00967 · APJ Jeffrey W Abraham · IPR · Final written decision
Claims 1, 4, 7, and 9–20 are unpatentable as obvious; claims 2, 3, 5, 6, and 8 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have possessed “a bachelor’s degree in electrical engineering or a related field as well as at least four years of experience in high-frequency circuit engineering and development.” Pet. 3 (citing Ex. 1003 ¶¶ 26–27). For purposes of the Institution Decision, we adopted Petitioner’s proposal (Inst. Dec. 17–18), and neither party addresses the level of ordinary skill in the post-institution briefs (see generally PO Resp.; Reply; Sur-reply). In this Decision, we again adopt the level of ordinary skill proposed by Petitioner. This level of skill is consistent with the Specification of the ’269 patent and the asserted prior art, and it is supported by the testimony of Dr. Choi. Accord Inst. Dec. 17–18.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“on an integrated circuit package substrate for connecting with a printed circuit board.” PO Resp. 9–12; Sur-reply 1–2. Petitioner disagrees. Reply 6. But, because we find that Petitioner has shown that Chin suggests implementing its invention in an IC9 package substrate as Patent Owner’s proposed construction would require (infra § III.D.2.), we need not resolve this dispute. 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))). However, if we needed to substantively address this dispute, we would reject Patent Owner’s proposed construction. Patent Owner advocates limiting the scope of this claim term to include only the contact pads in a particular location (i.e., the PCB-side of the IC package substrate),10 but the intrinsic record does not support importing such a limitation into the claim. Patent Owner identifies (and we perceive) no passage in the intrinsic record that redefines the term “contact pads” or disavows part of its scope. See Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365, 1367 (Fed. Cir. 2012) (explaining that a term should be given its plain and ordinary meaning unless a patentee acted as his own lexicographer or disavowed claim scope). Rather, Patent Owner’s argument is that the term should be limited because the Specification only discusses “contact pads” in that location and does not apply its invention to other pads” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We agree with Patent Owner’s ultimate assertion that the plain language of the claim is informative of its proper meaning, such that “vias connecting the contact pads with one of the electrically conductive layers” means that vias are used to connect the recited contact pads with an electrically conductive layer. See Phillips, 415 F.3d at 1312. After considering the parties’ arguments, we determine that no other claim terms require an express construction. See Nidec, 868 F.3d at 1017.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“we agree with Petitioner that Chin explains that its “concepts apply equally to an integrated circuit package substrate.” Pet. 22. In particular, we find that Chin discloses an IC package substrate. See Ex. 1004, 1:61–62 (referring to “a substrate used inside a BGA package”); see also Ex. 1003 ¶¶ 28–30 (Dr. Choi explaining that a BGA is a type of IC package). We credit Dr. Choi’s testimony on this point because it is logical and supported by cited evidence. See, e.g., Ex. 1014, 45;12 Ex. 1016, 5–7. We are also persuaded that Chin expressly suggests implementing its invention in an IC package substrate. Chin begins its description by stating that “[t]he present invention relates generally to the design and fabrication of printed circuits and multi-layered substrates.” Ex. 1004, 1:7–8 (emphasis added). Chin also states that its invention “is illustrated by way of example, and not by way of limitation,” in its figures. Ex. 1004, 3:26–27. Similarly, Chin’s final paragraph states that alternative implementations “will be apparent to those skilled in the art,” and it states that “semiconductor implementations . . . are contemplated as within the scope of the present invention” as they use “similar layered printed circuit routing techniques.” Ex. 1004, 5:54–6:10. Moreover, as background for its invention, Chin addresses problems encountered as signal speed increases and explains that “excess parasitics that limit the bandwidth” are caused by an impedance mismatch between landing pads and their associated interconnect conductors. Ex. 1004, 1:35–56. Chin then states: One example is the use of a ball-grid-array (BGA) package in a multi-gigahertz printed circuit board. The landing pads of current state of the art BGAs are typically 25–30 mils in 12 Unless otherwise noted, our citations refer to page numbers added to an exhibit by Petitioner or Patent Owner rather than the document’s native page numbers. diameter, which is significantly larger than the typically 5 mil microstrips used in interconnecting conductors. Another example is a substrate used inside a BGA package. Typical solder ball landing pad sizes for current technology BGA substrates are on the order of 20–25 mil, significantly larger than the typically 3 mil traces used in microstrip interconnects. Ex. 1004, 1:56–65 (emphasis added). Accordingly, given the context provided by Chin (see Ex. 1004, 1:7–8, 5:54–6:10), we find that a person of ordinary skill in the art would have understood this passage (see Ex. 1004, 1:61–65) to suggest applying Chin’s disclosure to an IC package substrate. Accord Inst. Dec. 23–24.” slip op. at 19
Patent outcomesUS 8,288,269 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,288,269 - NXP B.V. / NXP USA, Inc. et al. v. Bell Semiconductor, LLCSome claims unpatentablePTAB · Oct 6, 2022 · IPR2021-00966 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 1, 4, and 12–17 are unpatentable; claims 2, 3, 5–11, 18, and 19 were not shown unpatentable, primarily because the Board found deficiencies in the asserted obviousness grounds.
RulingsFinal written decision- Skill levelSkill level board ownOther
“B. The Level of Ordinary Skill in the Art Our reviewing court has explained that “the level of skill in the art is a” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“1. Is the Preamble a Limitation? Patent Owner argues that the preamble of claim 1 is limiting. PO” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAOther
“2. “contact pads” Patent Owner argues “that the term ‘contact pads’ refers to the pads” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“combination of Chin and HighSpeed. Petitioner does not sufficiently explain why a person of ordinary skill in the art would have been motivated to combine Chin and HighSpeed in the manner proposed. We agree with Patent Owner that simply characterizing references as being from the same field of endeavor is not sufficient to support an obviousness conclusion. PO Resp. 56; see ActiveVideo Networks, Inc. v. Verizon Commc'ns, Inc., 694 F.3d 1312, 1327–28 (Fed. Cir. 2012). Furthermore, Petitioner’s analysis that it would have been obvious to arrange Chin in view of HighSpeed to have the second layer be a routing layer because the arrangement “is one of a finite number of possibilities and within the skill of a POSITA to try” is incomplete. Pet. 80. The Supreme Court in KSR held that “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” KSR, 550 U.S. at 421 (emphasis added). Petitioner, however, never addresses, or otherwise presents evidence showing, a design need or market pressure to solve a problem. See Pet. 58–59, 65, 80; Ex. 1003 ¶¶ 165, 177, 232 (repeating material in the Petition). Additionally, testimony from Dr. Choi that “there are many ways to achieve the same result” of an impedance match in Chin, undermines Petitioner’s “finite number” argument.32 Ex. 2032, 196:20–23. For these reasons, as well as those discussed in Section II.E.2 supra,” slip op. at 65
Patent outcomesUS 8,049,340 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,049,340 - Google LLC v. Jawbone Innovations, LLCInstitution deniedPTAB · Oct 6, 2022 · IPR2022-00604 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–28 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret claim terms using “the same 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). Under the principles set forth by our reviewing court, the “words of a claim ‘are generally given their ordinary and customary meaning,’” as would be understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Petitioner contends that no terms require construction. Pet. 7. Patent Owner states that “claim construction is not required to resolve any issues” at this stage. Prelim. Resp. 6. We agree that, in this Decision, we need not address the construction of any claim terms or phrases. 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 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“As a result, even if we accept Petitioner’s contentions—i.e., assuming that the “first virtual microphone” is output by the difference block and the “second virtual microphone” is output by the sum block—Petitioner fails to sufficiently show that Elko discloses forming the first virtual microphone by combining a first signal and a second signal, where the second virtual microphone is formed by summing a first intermediate signal (generated by applying a filter to the first signal) and the second signal, as claim 1 requires. Instead, both of the alleged “virtual microphones” are formed by combining the same two signals. Stated differently, Petitioner at most shows that Elko discloses forming a first virtual microphone by combining the first intermediate signal and the second signal, rather than showing that Elko discloses forming a first virtual microphone by combining the first signal and the second signal. The Petition does not address this discrepancy between Elko’s disclosure and the requirements of claim 1. See Pet. 18–23. To the degree Petitioner relies on Elko’s statement that “the signals from two microphones 602 are differenced (604) and summed (606)” (Ex. 1002, 9:24– 26, cited in Pet. 18), this disclosure does not help Petitioner. The quoted statement describes Elko’s Figure 6, and that figure—like Figure 10—shows providing the same two inputs to the difference block (item 604) and the sum block (item 606). To the extent Petitioner is proposing to combine features from two separate embodiments, which is not clear, Petitioner does not explain why an ordinary artisan would have combined these embodiments in such a way as to provide different inputs to the difference block and the sum block. Petitioner cites to Dr. Vipperman’s testimony to support its contentions, but his testimony suffers from the same deficiencies. See Ex. 1003 ¶¶ 52–64. In the analysis of dependent claim 11, Petitioner asserts that a filtered first signal remains a “first signal.” Pet. 48 (citing Ex. 1007 ¶¶ 115–116). In Petitioner’s view, this is “consistent with the ’611 patent, which interchangeably refers to the formation of its virtual microphones in claim 1 as combining the first and second signals, yet later defining these as delayed, filtered, and calibrated signals.” Id. (citing Ex. 1001, 36:61–64, 37:30–32; 30:14–26, 37:39–41; 33:12–13). In Petitioner’s view, the recited “first signal” includes the “first intermediate signal.” Id. Because this analysis is only included in the discussion of claim 11, it is unclear whether Petitioner relies on this interpretation of the recited signals in its analysis of claim 1. See id. 18–23. Even so, Petitioner’s interpretation lacks support from the patent’s written description and is conclusory. See id. at 48. For example, Petitioner merely cites the claim language and various passages from the patent without further analysis (see id.), and the quoted passages do not show that the required “first signal” can be satisfied by the claimed “first intermediate signal.”9 We do not credit Dr. Vipperman’s testimony because it only repeats Petitioner’s assertions without further support. See Ex. 1007 ¶¶ 115–116.” slip op. at 12
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 8,326,611 - Cradlepoint, Inc. / Honeywell International, Inc. et al. v. 3g Licensing SAAll claims unpatentablePTAB · Sep 15, 2022 · IPR2021-00639 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 1–25 are unpatentable as obvious; the Board denied the motion to amend because proposed substitute claims 26–50 would have been obvious over Oksala or Oksala and Yoshioka.
RulingsFinal written decision- Skill levelSkill level board ownOther
“B. The Level of Ordinary Skill in the Art Our reviewing court has explained that “the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (citing Al-Site Corp. v. VSI International, Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999)). “This reference point prevents these factfinders from using their own insight or, worse yet, hindsight, to gauge obviousness.” Id.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“e. Conclusion For the reasons provided above, we are persuaded that each limitation of independent claim 1 is either taught or suggested by Oksala. We are also persuaded that Oksala’s disclosure would have motivated a person of ordinary skill in the art to modify Oksala, as Petitioner contends, to yield the subject matter of claim 1. Accordingly, we conclude that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 would have been obvious over Oksala.” slip op. at 52
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Accordingly, we determine that Petitioner has shown, by a preponderance of the evidence, that the subject matter of proposed substitute claims 35 and 43 would have been obvious over Oksala.” slip op. at 78
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable
“2. Indefiniteness In its Opposition, Petitioner contends the limitations “wherein each established data connection is a packet-switched connection; and wherein each requested data connection is a packet-switched connection,” as recited in substitute claim 26, and similarly recited in substitute claims 35 and 43, render the proposed substitute claims indefinite. MTA Opp. 12 (emphases added). First, according to Petitioner, the term “packet-switched connection” does not have a claim construction, which means that it can refer to two different types of packet-switched data (i.e., Layer 1 and packet network). Id. at 12. Second, Petitioner contends that there are two recitations of “a packet-switched connection,” making it “unclear if they are the same packet-switched connection or a different one.” Id. at 12–13. Third, Petitioner contends that the claims include “another antecedent issue” because “a wireless network” appears twice in the claim. Id. at 13.” slip op. at 81
Patent outcomesUS 8,189,611 unpatentable§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,189,611 - Samsung Electronics Co. Ltd / Samsung Electronics America, Inc. v. Jawbone Innovations, LLCInstitutedPTAB · Sep 13, 2022 · IPR2022-00630 · APJ Georgianna W Braden · IPR · Institution
Instituted review of claims 1–9 on all five asserted grounds because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. We decline to deny the Petition on a discretionary basis as requested by Patent Owner. Accordingly, we institute an inter partes review of the ’072 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“time invested by the parties and the district court in the parallel litigation, and the extent to which the current investment in the district court proceeding relates to issues of patent validity, we find that factor 3 weighs against exercising our discretion to deny institution.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Both parties state that express claim construction is unnecessary at this stage of the proceeding and that all terms were to given their plain and ordinary meaning. Pet. 7; Prelim. Resp. 5. We agree. and only to the extent necessary to resolve the controversy.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Consequently, we need not construe any terms for purposes of institution.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“of Ikeda. Pet. 3, 7–31. Patent Owner has not provided arguments regarding Ikeda and the challenged claims. See generally Prelim. Resp. Nonetheless, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. For the reasons discussed below, at this stage of the proceeding, we are persuaded that Petitioner has established a reasonable likelihood of success on this challenge.” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,280,072 - PTAB · Sep 12, 2022 · IPR2022-00650 · APJ Brian D Range · IPR · Institution
Instituted IPR on claims 1–3, 5–8, 11–14, and 16 based on the asserted grounds, finding a reasonable likelihood of prevailing.
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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. 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 hereby institute an inter partes review as to all of the challenged claims of the ’304 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Takeda-322 does not explain how to space adjacent turns of its spiral booster and exciting coils. Ex. 1003 ¶ 75. As explained above, however, Ayala-362 explains how this spacing or pitch should be adjusted in order to optimize inductive coupling, resonant frequencies, and communication. Pet. 17; Ex. 1003 ¶¶ 76–77; Ex. 1006, code (57), 25–26. It has long been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955); see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”). The present record supports that a person of ordinary skill in the art would have known to choose a pitch for Takeda-322’s various coils as Ayala-362 suggests. The record also supports that such an implementation would have had a reasonable expectation of success. Pet. 19 (providing citations to evidence providing support); Ex. 1003 ¶ 85. As such, the present record adequately establishes that a person of ordinary skill in the art would have reached the “Takeda-322/Ayala-362 smart card” as Petitioner describes it. Pet. 21.” slip op. at 17
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“The Federal Circuit has held that in an inter partes review there are two distinct burdens of proof: the burden of persuasion and the burden of production. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)). Petitioner bears the ultimate burden of persuasion regarding unpatentability, which never shifts to Patent Owner. Id. at 1379. Dynamic Drinkware, however, also establishes that Petitioner has the initial burden of production to show a reference is prior art. Id. Once Petitioner’s burden of production is satisfied, the burden of production then shifts to Patent Owner to refute Petitioner’s argument by either showing the prior art does not actually render the claims unpatentable or does not qualify as prior art. Id. at 1380. The burden of production then shifts back to Petitioner to respond to Patent Owner’s argument. Id.” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim terms for construction and contends that “the prior art meets the claim terms under any reasonable interpretation.” Pet. 9. Petitioner also argues that the plain meaning of “pitch” may refer to interturn gap distance (IGD). See Pet. 35–36; see also id. at 5 (explaining IGD). Petitioner also presents an alternative argument in the event that pitch is limited to average center-to-center distance (CCD). Id. at 36–39. As we explain below, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim under each of these constructions. Thus, we determine that no claim terms require express construction for purposes of this Decision. See, e.g., Nidec Motor Corp. 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 10
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,633,304
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.