- PTAB · Feb 19, 2025 · IPR2024-00109 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–3, 6–9, 12, and 14–17, finding a reasonable likelihood that claim 1 is obvious over Neufeld.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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); see 37 C.F.R. § 42.108 (2024). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’016 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had a Bachelors’ degree in electrical or computer engineering or a comparable field of study, plus approximately two to three years of professional experience in the field of computer and/or network design and security or other relevant industry experience,” and that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 6 (citing Ex. 1003 ¶ 56). Patent Owner does not address Petitioner’s definition, nor provide its own. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 6. We view this definition for the level of ordinary skill as consistent with the ’016 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“We determine that we need not expressly construe any claim terms for purposes of our Decision on Institution, and we afford the claim terms their plain and ordinary meaning. See, e.g., 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)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage, we find that Petitioner has provided sufficiently articulated reasoning with rational underpinning to support combining Neufeld and PCI Bridge Spec’s teachings in the manner Petitioner does. See that one of ordinary skill in the art “would have recognized that the local bus 166 could have been implemented as a PCI bus” in light of Neufeld’s teaching that “[t]he implementation details of the internal local bus 166 are a matter of design choice.” Ex. 1005 ¶ 56; Pet. 39. And we credit Dr. Meldal’s testimony that one of ordinary skill in the art “would have understood that a PCI bus would have been acceptable for the relatively (with respect to, e.g., the front side bus for Neufeld’s CPU 3) low bandwidth that would be necessary for Neufeld’s remote management controller 116.” Ex. 1003 ¶ 134. The bus leading to the remote management controller 116 (the PCI bus 16/PCI bus 172) being a PCI bus supports the acceptability of using a PCI bus for the internal local bus 166. Id.; see also KSR, 550 U.S. at 417 (“When there is a design need or market pressure to solve a problem [(i.e., choosing a bus protocol)] and there are a finite number of identified, predictable solutions, [(i.e., a finite number of known protocols)] a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”). At this stage, we find unavailing Patent Owner’s argument that “there is no need for [one of ordinary skill in the art] to look elsewhere for guidance on implementing Neufeld’s ATB 170 as a bridge to the local bus 166” because Neufeld teaches that the implementation details of the internal local bus 166 are a matter of design choice. Prelim. Resp. 48. Rather, as we discuss above, one of ordinary skill in the art would have found it obvious for the internal local bus 166 to constitute a PCI bus, and as such would have having a bridge (the ATB unit 170) between two PCI buses. Moreover, PCI Bridge Spec also evidences the knowledge of one of ordinary skill in the art that we appropriately consider as part of our obviousness analysis. Randall Mfg., 733 F.3d at 1362–63. Thus, when one of ordinary skill in the art would have been motivated to employ a PCI bus for the internal local bus 166, the knowledge of also needing a controller should be considered. See id.; Ex. 1008, 109 (“Every bus segment in a PCI system requires an arbiter. Since a bridge creates a new bus segment, it is anticipated that an arbiter will be a common bridge feature.”); cf. Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1338 (Fed. Cir. 2020) (finding obviousness can rely on supported expert testimony that an element “was not only in the prior art, but also within the general knowledge of a skilled artisan”).” slip op. at 26
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,474,016 - PTAB · Feb 14, 2025 · IPR2024-01221 · APJ Iftikhar Ahmed · IPR · Institution
Instituted review of claims 1, 2, 4, 5, 7, 8, 12, 13, 17, 19–21, 23, 24, 26, 27, 29, 30, 34, 39–41, and 43 on all asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had “a relatively high level of skill, such as having at least a bachelor’s degree in the field of computer science and/or electrical engineering, together with 2–3 years in the financial technology sector.” Pet. 16. Petitioner adds that a person having ordinary skill in the art “would have knowledge of the commercial and scientific literature pertaining to securing transactions” and “would also have knowledge of processing devices.” Id. at 16–17 (citing Ex. 1002 ¶ 19). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. See Prelim. Resp. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“At this stage of the proceeding, we are not persuaded that the term “embedded” should be narrowly construed in the manner proposed by Patent Owner. We find nothing in the claims that requires us to import a “hidden” or a “provide security” limitation into the claims. Claim 1, for example, merely recites “the image having information embedded therein, including information related to a transaction,” and “generat[ing] an output based on the information embedded in the image.” Ex. 1001, 16:24–33 (emphasis added). The claim language therefore does not require limiting embedded information in the proposed way.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“As discussed above, disclaiming or disavowing claim scope requires a “clear and unmistakable disclaimer.” Thorner, 669 F.3d at 1367. We are not persuaded that the cited portion can be read to clearly and unmistakably disavow claim scope. The cited portion of the Specification discusses various input parameters for decoding a captured image. Ex. 1001, 6:8–10. When viewed in context, “other information” refers to other predetermined information, including “the corresponding private key,” “stored in the memory 150,” which “may be used to decrypt or decode the captured image.” Id. at 6:13–22; see also id. at 5:18–20 (private keys are stored in memory). We therefore read the Specification as merely listing possible input parameters for decoding an image and not disclaiming “the corresponding private key” from the scope of “predetermined information.” After all, the very next sentence states that “predetermined information may include, for example, address information, personal profile information, and payment account information.” Id. at 6:17–22 (emphasis added). Given the various broad categories included in “predetermined information,” we are not persuaded, for purposes of institution, that “predetermined information” excludes a private key. We further determine that this preliminary construction is sufficient to resolve the Petitioner’s anticipation and obviousness contentions presented under Petitioner’s Ground 1, and no further construction of the term is necessary.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,314,167 - PTAB · Jan 15, 2025 · IPR2024-01044 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1, 4, 8–23, and 27 on all asserted grounds, finding a reasonable likelihood that Jones renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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); see 37 C.F.R. § 42.108 (2024). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’629 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least 2–4 years of experience in the field of wireless communication,” and that “[e]quivalent education, work, or experience in this field could substitute for the foregoing qualifications.” Pet. 20 (citing Ex. 1005 ¶ 82). Patent Owner adopts Petitioner’s definition. Prelim. Resp. 22. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 20. We view the” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Here, neither party sets forth any term that we need to construe. Pet. 5–6; Prelim. Resp. 23. Thus, for purposes of our Decision on Institution, we afford the claim terms their plain and ordinary meaning. See, e.g., 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)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“52 subcarriers are used while “the DC subcarrier and 11 subcarriers near the edges of the 20 MHZ channel are not used for data transmission” (i.e., are set to zero). Ex. 1014, 2:14–30 (explaining the long training sequence for a conventional 802.11a preamble), 6:11–15. Notably, Jones also teaches that “packet formation block 314 may insert appropriate complex values at unused . . . subcarrier locations in each group of symbols D[k],” and that “any or all of the subcarriers k may be used to transmit data, thereby increasing the data rate.” Id. at 6:15–20 (emphasis added); see also id. at 8:22–24 (teaching that an extended long training sequence “can contain more than 52 non-zero subcarriers”). At this stage, we credit Dr. Buehrer’s testimony that one of ordinary skill in the art would have been motivated to “add[] four subcarriers to 802.11a data and training fields [to] increase[] data rate throughput as taught in . . . Jones,” as this testimony is consistent with Jones’s teachings. Ex. 1005 ¶ 107. In addition, we agree with Petitioner and find that one of ordinary skill in the art extending the long training sequence would want to use the same 52 center subcarriers to maintain backwards compatibility with 802.11a. Pet. 28–29. This is supported by Jones’s teaching of having a long training sequence that “is usable in a process for determining whether the packet is an 802.11a packet or an extended-mode packet.” Ex. 1014, 8:37– 40. Moreover, Jones’s L2 example of an extended long training sequence maintains the same 52 center subcarriers as 802.11a, which also supports this finding. Id. at Fig. 4; Ex. 1005 ¶¶ 96, 113. Thus, up to 11 subcarriers unused in 802.11a could be used for an extended long training sequence. “more than 52 non-zero subcarriers” can be used for an extended long training sequence, which explicitly teaches that only a portion of the 11 subcarriers may be used. Ex. 1014, 6:15–20, 8:22–24. In light of the above teachings, we find that one of ordinary skill in the art would have found it obvious to use only the next 4 nearest to the center of these 11 unused subcarriers. Ex. 1005 ¶ 87. The remaining 7 subcarriers would remain at zero.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · Graham - PTAB · Jan 7, 2025 · IPR2024-01030 · APJ Richard H Marschall · IPR · Institution
The Board instituted review of claims 1–37 on all asserted grounds after finding a reasonable likelihood that Howell-596 anticipates claims 1, 9, 10, 14, 15, and 18.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“2. Discussion “Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Proceedings with Parallel District Court Litigation (June 21, 2022)9 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id. Here, Petitioner provides a Sotera stipulation: “Petitioner hereby stipulates that, if the Board institutes review, Petitioner will not pursue in the Litigation invalidity of the ’483 patent based on any ground Petitioner raised or reasonably could have raised in this Petition.” Pet. 82. Petitioner argues that the Fintiv Memo “unambiguously states three times that the Board ‘will not’ discretionarily deny institution due to parallel litigation when the petitioner files a Sotera stipulation.” Prelim. Reply 1 (citing Fintiv Memo at 3, 7, 9). We agree with Petitioner. In light of the Director’s Fintiv guidance regarding a Sotera stipulation, we decline to exercise discretion under § 314(a) to deny institution of inter partes review. See Fintiv Memo 3 (“[T]he PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We agree with Petitioner that the record fails to show that Hattori-912 is cumulative of Krulevitch. As Petitioner correctly points out, Patent Owner does not adequately support its cumulativeness argument by comparing the disclosures of Hattori-912 and Krulevitch. See Prelim. Resp. 27. Patent Owner seems to assume that Petitioner’s mere reliance on Hattori-912 to teach similar limitations as those arguably disclosed by Krulevitch establishes the cumulative nature of the disclosures, but merely relying on new prior art to teach the same limitations as art before the Examiner, standing alone, does not establish cumulativeness of the art as a whole. See id. The situation here underscores this point, where the new prior art (Hattori-912) expressly discloses aspects of eyewear that the prior art before the Examiner (Krulevitch) does not, rendering Hattori-912 arguably more readily combinable with other eyewear prior art such as Blum-741. See Pet. 53–65. Moreover, Petitioner expressly argues that Hattori-912 discloses eyewear limitations that Krulevitch does not. See id. at 55–59 (“Hattori-912 discloses an eyewear frame having a ‘hollow part 30’ in which electronic components are embedded”), 64–65 (“Hattori-912 discloses that the sealed module is embedded in the eyewear frame.”). Under these circumstances, we do not view the disclosures of Hattori- 912 and Krulevitch, or the obviousness arguments they raise, as sufficiently similar to satisfy the first prong of the Advanced Bionics framework. We also decline Patent Owner’s invitation to discretionarily deny on the basis that the grounds based on Blum-741 and Hattori-912 would present a waste of resources.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted
“2. Discussion “Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citing Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (quoting Cont’l Can, 948 F.2d at 1269).” slip op. at 19
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 8,708,483 - PTAB · Jan 7, 2025 · IPR2024-01071 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–19 and all asserted grounds, finding a reasonable likelihood that Howell-596 and Howell-158 render claims 1 and 19 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion Based on the foregoing, Petitioner establishes a reasonable likelihood of showing that the combination of Howell-596 and Howell-158 renders claim 1 obvious. We have also reviewed Petitioner’s arguments and evidence addressing independent claim 19. See Pet. 43–44. Based on our review of the current record, Petitioner also establishes a reasonable likelihood of proving that the combination of Howell-596 and Howell-158 renders claim 19 obvious.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Here, Petitioner provides a Sotera stipulation: “Petitioner hereby stipulates that, if the Board institutes review, Petitioner will not pursue in the Litigation invalidity of the ’541 patent based on any ground Petitioner raised or reasonably could have raised in this petition.” Pet. 80–81. Petitioner argues that the Fintiv Memo “unambiguously states three times that the Board ‘will not’ discretionarily deny institution due to parallel litigation when the petitioner files a Sotera stipulation.” Prelim. Reply 1 (citing Fintiv Memo at 3, 7, 9). We agree with Petitioner. In light of the Director’s Fintiv guidance regarding a Sotera stipulation, we decline to exercise discretion under § 314(a) to deny institution of inter partes review. See Fintiv Memo 3 (“[T]he PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.”); see also id. (stating that the Fintiv Memo “is issued under the Director’s authority to issue binding agency guidance to govern the PTAB’s implementation of various statutory provisions”).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Thus, under § 325(d), the Board uses the following two-part 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 [the] challenged claims. Id. at 8.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree,” and “at least 2 years of experience designing consumer electronics, such as eyewear with electronics.” Pet. 11–12 (citing Ex. 1002 ¶¶ 30–34). Petitioner contends that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. Patent Owner does not contest Petitioner’s proposed definition or proffer a definition of its own. See generally Prelim. Resp. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the ’541 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,905,541 - PTAB · Jan 6, 2025 · IPR2024-01069 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–21 and all asserted grounds after finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Thus, under § 325(d), the Board uses the following two-part 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 [the] challenged claims.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute only 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). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims. Thus, we institute inter partes review of all challenged claims based on all asserted grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree,” and “would have also had at least 2 years of experience designing consumer electronics, such as eyewear with electronics.” Pet. 15–16 (citing Ex. 1002 ¶ 32). Petitioner contends that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. at 16 (citing Ex. 1002 ¶ 32). Patent Owner does not contest Petitioner’s proposed definition or proffer a definition of its own. See generally Prelim. Resp. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the ’355 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,613,355 - PTAB · Jan 6, 2025 · IPR2024-01070 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“As correctly noted by Petitioner (see Prelim. Reply 1), the Guidance Memo is “binding agency guidance.” Guidance Memo at 3. “[T]the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. at 7. The Guidance Memo makes no exception for parallel litigation in which expert reports have been exchanged or litigation with a third party involving the challenged patent. Nor has Patent Owner identified any instance in which the Board has determined there to be such exceptions to the Director’s guidance. Indeed, Patent Owner admits that it “is unaware of any post- [Guidance] Memo decision discretionarily denying institution in these circumstances.” Prelim. Sur-reply 1. Accordingly, pursuant to the Guidance Memo, we decline to exercise discretion under 35 U.S.C. § 314(a) to deny institution.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“h. Conclusion Accordingly, at this stage of the proceeding, we determine that Petitioner has established a reasonable likelihood of prevailing on its assertion that claim 1 is anticipated by Brunton.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree.” Pet. 9 (citing Ex. 1002 ¶¶ 28–31). Petitioner contends that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. at 9–10 (citing Ex. 1002 ¶¶ 28–31). Patent Owner does not contest Petitioner’s proposed definition or proffer a definition of its own. See generally Prelim. Resp. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the ’174 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no claim terms require an express construction to resolve the challenges here.” Pet. 10. Petitioner notes that “the ’174 patent describes a number of claim terms, many in quotation marks, by what the terms refer to or may refer to” and asserts that “[t]hese descriptions in the specification are consistent with the plain and ordinary meaning of these claim terms.” Pet. 10–11 (citing Ex. 1002 ¶¶ 50–51). Patent Owner does not oppose Petitioner’s contentions or proffer any constructions of its own. See generally Prelim. Resp. At this time, we determine that no express construction of any term is necessary. We note that this determination does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all of their claim construction arguments and evidence during the trial, as permitted by our rules.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,801,174 - PTAB · Dec 31, 2024 · IPR2024-01072 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–26 and all asserted grounds after finding a reasonable likelihood that claim 1 would have been obvious over Jannard.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)9 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv 9 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_m emo_20220621_.pdf. Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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); see 37 C.F.R. § 42.108 (2024). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’960 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree,” and “at least 2 years of experience designing eyewear and/or consumer electronics.” Pet. 10 (citing Ex. 1003 ¶ 28). Petitioner adds that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. at 10–11 (citing Ex. 1003 ¶ 28).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b); 83 Fed. Reg. 51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying such standard, claim terms generally are given their ordinary and customary the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Here, neither party sets forth any term for claim construction. Pet. 11; see generally Prelim. Resp. Thus, for purposes of this Decision, we afford the claim terms their plain and ordinary meaning. See, e.g., 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)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,598,960 - Google LLC v. Wirelesswerx IP LLCAll claims unpatentablePTAB · Dec 10, 2024 · IPR2023-00850 · APJ John D Hamann · IPR · Final written decision
Claims 1–5 are unpatentable as obvious over Wrappe and Belcea; claims 6–30 are unpatentable as obvious over Wrappe, Belcea, and Christopher.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Decision on Institution, we adopted the definition Petitioner proposes for one having ordinary skill in the art at the time of the invention of the ’203 patent. Dec. on Inst. 11. Namely, we found that one of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in research, design, development, and/or testing of GPS and/or positioning techniques, with additional education substituting for experience and vice versa.” Id. (citing Pet. 11 (citing Ex. 1002 ¶ 40)). Patent Owner states that it “adopt[s] Petitioner’s proffered level of ordinary skill in the art because it comports with the technology and claims of the ’203 Patent as well as the asserted prior art.” PO Resp. 8. Because Petitioner’s definition of the level of skill in the art is consistent with the ’203 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Patent Owner argues that “[t]he most practically near node” “does not have an ordinary meaning.” PO Resp. 6–7. Rather, it is defined in the Specification as “the node that is located at the closest accessible location to the movable entity,” according to Patent Owner. Id. at 7 (citing Ex. 1001, 6:55–67). Petitioner argues that “there is no material difference between how Petitioner and Patent Owner interpret this term, and claim construction is therefore not necessary to resolve this dispute.” Pet. Reply 2. In particular, Petitioner argues that “[t]he construction that the Patent Owner applies is that ‘the most practically near node’ is the node that is closest to the movable entity while being on the same floor as the user.” Id. (citing PO Resp. 14–15, 19–29). Petitioner argues that “[t]he Petition applies that same understanding, explaining that the combination of Wrappe and Belcea renders obvious identifying a node that is on the same floor as the user.” because “the system identifies a beacon ‘nearby’ on the same floor.” Id. (citing Pet. 38). We agree with Patent Owner that the Specification states that “[t]he most practically near node is defined as the node that is located at the closest accessible location to the movable entity.” Ex. 1001, 6:55–57. We conclude that this definition provides the proper construction for this term, and we apply it below. No construction of other terms6 is needed to resolve the disputes between the parties. See, e.g., 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)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“most practically near node is defined as the node that is located at the closest accessible location to the movable entity.” Ex. 1001, 6:55–57. We conclude that this definition provides the proper construction for this term, and we apply it below. No construction of other terms6 is needed to resolve the disputes between the parties. See, e.g., 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)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“router (“FIR”) is present in a stairwell and by an elevator shaft at each floor in a building. Ex. 1008 ¶ 43. Belcea926 explains that because signals lose energy when passing through floors and walls, “a FIR . . . may not be able to communicate with a [device] that is not on the same floor as the FIR.” Id. In accordance with Belcea926’s teachings, “all FIRs deployed on the same floor are on [a] same line of [a] matrix, regardless [of] the position on the floor,” and that “filtered data can be compared for finding the floor where is located the FIR that provides to the targeted mobile device the smallest TOF and the best RSSI simultaneously.” Id. ¶¶ 47, 55. We find persuasive Mr. Andrews’s testimony that one of ordinary skill in the art “would have understood that Belcea teaches to first identify the nodes on a specific floor, disregard nodes on other floors, and then perform location determinations using only the nodes on the specific floor desired,” as this testimony is consistent with these teachings. Compare Ex. 1002 ¶¶ 169–171, with Ex. 1006, 11:26–38, and Ex. 1008 ¶¶ 43, 47, 55. In addition, we find persuasive Mr. Andrews’s testimony that one of ordinary skill in the art “would have been motivated to implement these teachings [from Belcea and Belcea926] with Wrappe to ensure that the user is connected to a beacon from the store that they are in as opposed to a different store on the floor above or below the user.” Ex. 1002 ¶ 172. We also find persuasive Mr. Andrews’s testimony that “[d]ifferent stores on different floors are less relevant to [a] user, because even though they may be nearby in the vertical sense (e.g. directly underneath the user on a different floor), if the user is not in the store, then they are less likely to be interested in messages from that store.” Id. This testimony is consistent with Wrappe and Belcea’s teachings of improving the precision of locating position. See, e.g., Ex. 1005, code (57); Ex. 1006, code (57). In sum, we agree with Petitioner and find that the combination of Wrappe and Belcea teaches that the system narrows the plurality of nodes for use by the user at a first elevational level (i.e., narrows to the nodes on a user’s floor, excluding nodes on other floors), and determines the closest node on that floor to the user (i.e., the node at the closest accessible location to the user).” slip op. at 28
Patent outcomesUS 8,315,203 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,315,203 - DISH Network L.L.C. / DISH Technologies L.L.C. v. Digital Broadcasting Solutions, LLCSome claims unpatentablePTAB · Dec 9, 2024 · IPR2023-00976 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1–16, 18, and 19 are unpatentable over Casagrande and Russ and Dow; claim 17 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Relying on the testimony of Dr. Jeffay, Petitioner proposes that a” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “a first period of time” Patent Owner contends that the term “first period of time,” recited in limitation 1[d][i], would be understood “to start after transmission of the entire ‘video program’ to the DVR.” PO Resp. 5 (citing Ex. 2006 ¶ 47). Patent Owner refers to claim 1 and its recital that the video program is provided “in its entirety.” Id. (citing limitation 1[d][ii]). Patent Owner argues that “[i]n order to ‘provide said video program in its entirety’ from ‘said memory device,’ the entire ‘video program’ must be stored in the ‘memory device,’ which is only possible after transmission of the entire ‘video program’ to the DVR.” Id. (citing Ex. 2006 ¶ 47). Patent Owner contends that in light of dependent claims 6 and 14, the “first period of time” must start after the transmission of the entire video program. Id. at 5–6 (quoting claim 6 (“wherein said first period of time is a period of time that is less than one week from said transmission of said video program”); claim 14 been transmitted.”)). Additionally, Patent Owner refers to the prosecution history of the ’710 patent: a digital video recorder (“DVR”) that stores a video program and plays at least a portion of the video program back at a later time (e.g., a time more convenient to the user of the DVR, etc.) . . . In a first state, the DVR is configured to play the program as it was originally recorded (e.g., with both the program and auxiliary data). In a second state, the DVR is configured to play the program data without the auxiliary data (or a portion thereof) . . . To this end, the claimed invention provides that if the video program is being watched within a first period of time (e.g., within a day or two of the video program being transmitted to the DVR, etc.), then the video program will be played back in its entirety (e.g., including both program and auxiliary data). PO Resp. 6 (quoting Ex. 1003, 108–109). Based on this passage, Patent Owner asserts that the “first period of time” must start after transmission of the entire video program. Id. (citing Ex. 2006 ¶ 49). Patent Owner argues that the referenced statement in the prosecution history is “clear and unambiguous.” PO Sur-reply 3. Petitioner contends that Patent Owner’s interpretation of the term” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“specific reasoning to combine Casagrande and Russ to be persuasive. See PO Resp. 23–24. Dr. Jeffay testifies that “Casagrande acknowledges that one concern expressed by content providers is the decreasing value of interstitial content over time, particularly because commercials may become less relevant to the user or may expire.” Ex. 1002 ¶ 117 (citing Ex. 1006, 10:5–13 (“[T]he supplemental content 602 may also be selected to replace a commercial with a timelier commercial from the same advertiser. For example, a department store may have originally advertised a sale during the original broadcast of the show, but that particular sale may have since ended.”)). Accordingly, the evidence supports that Casagrande identifies that the earlier playback of commercials has value, which provides support” slip op. at 31
- Obviousness (§103) › Objective indicia / secondary considerationsDecided for petitioner
“ix. Conclusion Patent Owner presents no evidence of objective indicia of” slip op. at 39
Patent outcomesUS 8,929,710 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,929,710
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.