- PTAB · Feb 20, 2025 · IPR2024-00996 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 13–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that: [A] person of ordinary skill in the art at the time of the alleged invention (“POSITA”) would have had a bachelor’s degree or higher in electrical engineering, at least 3 years of experience designing or researching electronic circuits, and familiarity with power electronics and inductive power transfer circuits. Pet. 8 (citing Ex. 1003 ¶ 20). Patent Owner states that, “[f]or purposes of this preliminary response, Patent Owner adopts the Petitioner’s proposal.” Prelim. Resp. 17. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[a]ll claim terms should be construed according to the Phillips standard,” and “[h]ere, given the remarkable overlap between the preferred embodiment of the ’461 patent and the prior art/predictable combinations articulated in Grounds 1A–3, Petitioners submit that no claim elements need a formal construction for purposes of resolving the controversy in this proceeding.” Pet. 8. Patent Owner states that, “[t]o simplify the issues before the Board, Patent Owner has not asserted any claim constructions in this preliminary response and adopts the Petitioner’s position that ‘[a]ll claim terms should be construed according to the Phillips standard.’” Prelim. Resp. 17 (quoting Pet. 8). On this record and for purposes of this decision, we determine that no” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At this preliminary stage of the proceeding, we do not agree with Patent Owner’s arguments. Patent Owner does not cite to evidence, such as expert testimony, to support its implied argument that Olson’s measured current is “fundamentally different” from the current received by the primary coil. See Prelim. Resp. 31–32. Petitioner’s declarant, Dr. Woods, on the other hand, testifies, inter alia, that “[t]he ‘[c]urrent measured by current measure block 226 is used in the calculation of power, which as depicted in FIG. 14, measures the ‘power in’ provided to transmit block 214/primary coil 54.” Ex. 1003 ¶ 37 (citing Ex. 1004 ¶¶ 74–75, Fig. 14) (first alteration added); see also, e.g., id. ¶ 42 (Dr. Woods testifying that the measured current to the power supply “is the current driving the external antenna 52, via the transmit block 214 and to the primary coil 54.” (citing Ex. 1004 ¶¶ 74–75, 112, Fig. 14)). Paragraph 75 of Olson, cited in support of that testimony, provides: “The power in is gauged by the power generated by charging unit 50 and is determined by multiplying the voltage of the internal voltage of charging unit 50, e.g., the voltage of a battery or batteries internal to charging unit 50, by the current driving external antenna 52.” Ex. 1004 ¶ 75 (emphasis added). We note that external antenna 52 includes primary coil 54. See, e.g., Fig. 14. Dr. Woods’ testimony is, at this stage, unrebutted. Patent Owner also argues that “Petitioner fails to provide any evidence regarding the function of Olson’s microprocessor 212 in relation to measuring input power,” and that, “[w]hile Olson describes a power calculation in paragraph [0075], Olson does not describe this power calculation as performed by microprocessor 212.” Prelim. Resp. 32 (citing Pet. 16; Ex. 1004 ¶ 72) (first alteration added). At this preliminary stage of the proceeding, we do not agree with Patent Owner’s arguments regarding the microprocessor. Although Patent Owner does not bear the burden to show patentability, we observe that Patent Owner does not suggest that there is another component in Olson’s external charging device that might perform the admittedly-disclosed power calculation. See Prelim. Resp. 32–33. Dr. Woods testifies that microprocessor 212 receives the measured current and the input voltage of the charging device, and, from those values, calculates power in. See Ex. 1003 ¶¶ 43–44 (citing, inter alia, Ex. 1004 ¶¶ 71–78, Fig. 14); see also Ex. 1004 ¶ 74, Fig. 14 (Olson stating that “[c]urrent measured by current measure block 226 is used in the calculation of power in along with the voltage of batteries 160,” and Figure 14 depicting the signal from measure block 226 as an input to microprocessor 212). Dr. Woods’ testimony is, at this stage, unrebutted.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,626,461 - Intel Corporation v. Telefonaktiebolaget LM EricssonInstitution deniedPTAB · Dec 18, 2024 · IPR2024-01008 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“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) (2023). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that the challenged claims do not need construction to demonstrate unpatentability. Pet. 14. Petitioner, however, notes that the parties in the ITC proceeding identified above dispute the meaning of several claim terms. Id. (citing Ex. 1026). Petitioner specifically notes that “the parties dispute what is required of independent claims 1, 5, and 16 to ‘determin[e] how many pixels’ to filter in each block.” Id. (citing Ex. 1026, 6–7). Petitioner argues that “ITC Respondent Lenovo mathematical basis (no relationship) with the pixel values of the pixels in said neighboring block’” (id. (citing Ex. 1026, 6–7)), but Patent Owner “contends that no construction is necessary,” “and the ‘plain meaning’ does not foreclose some ‘mathematical basis’ existing as long as separate decision values are calculated for each block” (id. (citing Ex. 1027, 14–19)). Petitioner indicates that Ground 1 adopts Patent Owner’s broader construction from the ITC proceeding and Ground 2 adopts Lenovo’s narrower construction. Id. at 14–15. Patent Owner argues that “none of the asserted grounds disclose or render obvious the Challenged Claims under the plain meaning of the claims (which is [Patent Owner’s] proposed construction) or under Lenovo’s narrower proposed construction.” Prelim. Resp. 29. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Furthermore, we are not persuaded that modifying Aksu in view of Gonzalez in the manner proposed by Petitioner overcomes this problem. As noted above, Petitioner asserts that, in the proposed combination, one of ordinary skill in the art “would have understood that the Laplacian’s output would be compared directly to a threshold based on β—just like Aksu’s difference calculations—to determine how many pixels to filter.” Pet. 60 (citing Ex. 1019, 13:15–19; Ex. 1003 ¶¶ 406–410). We disagree with this assertion, however, because it relies on erroneously equating the output of calculations (i.e., |r1-rj| and |r1-ri+1|). In other words, Aksu’s difference calculations, although used in setting dr, are not the same as dr; and we are not persuaded that one of ordinary skill in the art would have considered comparing Gonzalez’s Laplacian output to threshold β because Aksu discloses comparing its difference calculations to β. As noted above, we are not directed to any disclosure in Aksu of comparing dr to β. In addition, Dr. Schonfeld’s testimony on this point is not persuasive. Specifically, Dr. Schonfeld testifies that “dr can simply be defined as the output of the Laplacian (dr=|r3-2r2+r1|), and dr could be directly compared to a threshold based on β.” Ex. 1003 ¶ 408 (underline emphasis added). This testimony, however, is entitled to little weight because Dr. Schonfeld fails to provide a sufficient underlying basis for his opinion. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail). Moreover, opining that output of the Laplacian, dr, could be directly compared to β does not establish sufficiently that one of ordinary skill in the art would have been motivated to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“G. Discretion Under 35 U.S.C. § 325(d) Patent Owner argues that we should exercise our discretion to deny institution under § 325(d). Prelim. Resp. 64–66; Paper 8. Petitioner argues that discretionary denial is not appropriate in this case. Pet. 85–86; Paper 7. Because we are not persuaded the Petition demonstrates sufficiently a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim as discussed above, we need not reach Patent Owner’s arguments regarding discretionary denial under § 325(d).” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,641,841 - PTAB · Dec 10, 2024 · IPR2024-00994 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–7 and 9–14 on all asserted grounds, finding a reasonable likelihood of success on the Onishi-based obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially 4 For purposes of this Decision, we assume the challenged claims have an effective filing date prior to March 16, 2013, the effective date of the relevant aspects of the Leahy-Smith America Invents Act, Pub. L. No. 112- 29, 125 Stat. 284 (2011) (“AIA”), and we apply the pre-AIA version of 35 U.S.C. § 103. the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’696 patent. Further, we decline to discretionarily deny inter partes review. Accordingly, we institute an inter partes review as to all the challenged claims of the ’696 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. However, Patent Owner’s declarant, Dr. Mercier, opines that [A]t the time of the ’696 Patent, a POSITA would have a working knowledge of wireless charging and inductive charging. The person would have gained this knowledge through an undergraduate Bachelor of Science degree in electrical engineering, computer engineering, computer science, or a related field, with at least two years of experience working in the field of wireless or inductive charging device design, or testing of such wireless or inductive charging device testing, or 5 The parties have not directed our attention to any objective evidence of obviousness or non-obviousness. an equivalent combination of academic study and work experience. More education (e.g., a Master’s degree) or work experience any relevant field may compensate for a deficit in one of the relevant qualifications stated above. Ex. 2001 ¶ 26. We observe that, in Dr. Mercier’s definition, the undergraduate degree categories are a bit broader and the experience possibly a bit more specific than in Petitioner’s definition. However, at this stage and absent argument to the contrary by the parties, we discern no material difference between the parties’ definitions. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Dr. Mercier’s assessment, the outcome of this Decision would be the same.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“near-linear region—consistent with the quoted applicant’s use of the term “near-linear”—rather than a linear or non-linear region, which seemingly would encompass the entire curve. As to the second part, we understand Patent Owner to be referring to the purported benefit of linear control, and we determine that Patent Owner has not explained adequately why such a benefit should be read into the claim term “substantially different,” particularly where the quoted Specification support does not explicitly mention linear regulation.7 See Ex. 1001, 21:61–63 (“The induced voltage 7 To the extent that Patent Owner relies on its declarant’s testimony as an explanation of Patent Owner’s claim construction position, we remind Patent Owner about the prohibition on incorporation by reference. See 37 C.F.R. § 42.6(a)(3); Consolidated Trial Practice Guide, November 2019, 35–36 can be increased by reducing the transmission frequency and can be reduced by increasing the transmission frequency.”). On this record and for purposes of this decision, we determine that— consistent with the Specification’s description of the frequency that is “[p]referably . . . selected” and applicant’s argument regarding the same during prosecution—“a transmission frequency substantially different from said characteristic resonant frequency of said inductive couple” encompasses frequencies that lie within one of the near-linear regions of a frequency-amplitude graph associated with the inductive couple. See Ex. 1001, 21:20– 24; Ex. 1002, 70. At this time and for purposes of this Decision, we need not and do not reach the issue of the outer bounds of the scope of “substantially different.” We also note that independent claim 1 is an apparatus claim and the subject limitation 1.7 further defines the “driving circuit” recited in limitations 1.5 and 1.6. Specifically, limitation 1.7 requires a driving circuit that is “configured and operable to produce said oscillating driving voltage at a transmission frequency” that is “substantially different” from the inductive couple’s resonant frequency. Ex. 1001, 28:43–46. In future briefing, the parties’ arguments regarding the prior art references should focus on that recited structure, i.e., a circuit that is configured and operable to produce the recited frequency.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,048,696 - Fervo Energy Co. v. Ormat Technologies Inc.Institution deniedPTAB · Sep 18, 2024 · IPR2024-00665 · APJ Josiah C Cocks · IPR · Institution
Institution denied because Petitioner failed to show a reasonable likelihood of proving any challenged claim unpatentable under the proposed obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“II. ANALYSIS A. Principles of Law A petition must show how the construed claims are unpatentable under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends the following assessment in connection with a person of ordinary skill in the art: The Challenged Claims pertain to a method of recovering geothermal heat. However, “[m]any of the techniques are derived from oil and gas industry.” EX1001 at 4:23-24. Accordingly, here, a person of ordinary skill in the art (“POSITA”) is a person with a Bachelor’s degree, Master’s degree, and/or Ph.D. in Chemical Engineering, Petroleum Engineering, Energy Resource Engineering, or the like, or at least five years of experience engineering, drilling, and constructing wells. Furthermore, a person with less formal education but more experience, or more formal education but less experience, could also have met the relevant standard for a POSITA. Pet. 16–17 (citing Ex. 1004 ¶¶ 34–36). Patent Owner does not offer its own assessment of a POSITA. For purpose of this Decision, we adopt Petitioner’s assessment.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
“own for any claim term. Patent Owner does, however, note that “claim element 9c[13] includes the terms ‘means for,’ which are presumed to invoke 13 The referenced “claim element 9c” reads in-part “Means for producing a water density difference and a pressure difference between said first means-plus-function treatment under Section 112.” Prelim. Resp. 17 (citing Samsung Electronics Co., Ltd. v. Power2B Inc., IPR2022-01378, Paper 12 at 11 (PTAB Mar. 15, 2023) (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part))). Patent Owner further submits that “[u]nder Rule 104(b)(3),[14] Petitioner had an obligation to provide a construction of claim element 9c that includes both the claimed function and the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” Id. We agree with Patent Owner that the term “means for” when appearing in a claim triggers a rebuttable presumption that treatment under § 112 applies. On the record before us, however, Petitioner has not explained why the noted presumption has been rebutted or does not apply, and has not provided a construction of the pertinent “means for” term in the Petition in contradiction to the requirements of 37 C.F.R. § 104(b)(3).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable
“While it is certainly the case that “a prior art reference is relevant for all that it teaches to those of ordinary skill in the art,” see In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992), it is incumbent on a petitioner, in advancing a permissible theory of obviousness, to explain why a skilled artisan would recognize to pick and choose certain aspects of a reference and combine them with other aspects of the reference, particularly so where the reference itself does not suggest such combination. See In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests” ) (citation and inner quotes omitted). Here, Petitioner’s oscillation between different embodiments of Rinaldi in an attempt to reach the requirements of claim 1 is not adequately explained, and more closely resembles impermissible hindsight. See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017). (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”). In sum, we determine that Petitioner has not shown a reasonable likelihood of prevailing in its assertion that claim 1 is unpatentable as a part of Petitioner’s proposed Ground 1.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,320,221 - Global Shade Corporation v. With-U E-Commerce (Shanghai) Co., Ltd.All claims unpatentablePTAB · Aug 7, 2024 · IPR2023-00580 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1, 2, 4, 13, and 14 are unpatentable under § 103; proposed substitute claims 15–19 are unpatentable over Rousselle, Tsai, Ohnishi, Hoober, and Seo, so the revised motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts construction is unnecessary and does not propose any term for construction. Pet. 7 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Patent Owner does not propose any specific claim construction for any term of the challenged claims. PO Resp. 14. On the full record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“points to any teaching, suggestion, or motivation in either reference” to replace Tsai’s leg locks with Rousselle’s central lock. PO Resp. 44 (citing Pet. 36; Ex. 1002 ¶ 103). Petitioner disagrees, arguing that the Petition cites “voluminous disclosure” from Rousselle identifying the benefits of a central lock. Reply 18 (citing Pet. 35). We agree with Petitioner. The Petition provides several rationales, supported by Dr. Stein’s testimony, for making the alternative modification. Pet. 35–37. For instance, Petitioner argues that one of ordinary skill in the art would have been motivated to make this modification because Rousselle discloses the benefits of a central lock over Tsai’s individual leg locking system, such as making the canopy easier and more convenient for a single user to operate. Id. at 35–36 (citing Ex. 1002 ¶¶ 102–103; Ex. 1003, 3:38–47; Ex. 1005, 4:29–5:5, 8:5–33, Figs. 1, 2, 18, 19). Petitioner also argues that the proposed modification is the simple addition of one known element to another known element to obtain predictable results and uses a known technique to improve a similar device and yield predictable results. Id. at 36–37 (citing Ex. 1002 ¶¶ 105–107; KSR, 550 U.S. at 417). We have reviewed Petitioner’s arguments and evidence and find the reasons to combine persuasive. In sum, we determine that Petitioner’s proposed reasons to combine Rousselle and Tsai in accordance with the alternative modification are realistic, have rational underpinning, and are supported by expert testimony, which we find persuasive and credit. Thus, Petitioner’s evidence shows that a skilled artisan would have had reasons to combine the teachings of in doing so. slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We agree with Petitioner that Tsai’s disclosure of pulling the poles or legs apart to unfold the frame does not disparage central activation to the extent of discouraging one of ordinary skill in the art from investigating or considering Rousselle’s central lock in connection with Tsai’s shelter frame. See DePuy Spine, 567 F.3d at 1327 (holding a reference does not teach away “if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the manually pulling the four poles 1 outwardly.” Ex. 1005, 10:28–29 (emphasis added). As such, Tsai “merely expresses a general preference” for this technique (see DePuy Spine, 567 F.3d at 1327) and does not specifically require it. We agree with Petitioner that Tsai’s general preference for this technique does not teach away from any other method for unfolding the frame. Furthermore, Tsai’s statement that the shelter frame of Figures 16 and 17 is “somewhat difficult to unfold in that an extra person is sometimes needed to push the center strut C upwardly to its completely extended position” (Ex. 1005, 2:19–22) does not disparage all other center lock configurations, in particular the configuration taught by Rousselle. As Petitioner points out, Rousselle discloses that its collapsible shelter/tent with the central lock arrangement can be erected by a single person. Ex. 1003, 13:59–65. So, instead of requiring “an extra person,” the shelter frame of the combination of Tsai and Rousselle could be erected by a single person. Similarly, Tsai’s statement that the shelter frame of Figures 16 and 17 reduces headroom in the tent (Ex. 1005, 2:17–19) does not disparage all other center lock configurations. We agree with Petitioner that the inner units of both Rousselle and Tsai’s Figure 1 embodiment are different than the inner units shown in Figures 16 and 17, which are large scissors-type linkages located well below the canopy’s roof supported by center strut C. See Reply 11. In contrast, Rousselle discloses shelter/tent 10 in which collapsible frame 100 supports sheet-material cover 200. Ex. 1003, 6:30–32; Fig. 1(A). Unlike the shelter frame of Tsai’s Figures 16 and 17, Rousselle’s frame does not include an upwardly extending center strut propping up the sheet-material cover. Instead, sheet-material cover 200 rests directly on frame in which canopy supporting rods 3 (i.e., the “inner units”) form a canopy support for supporting the canopy material. Ex. 1005, 4:11–25, 7:15–20. Accordingly, neither Rousselle’s or Tsai’s frames present the headroom issue that Tsai identifies with respect to the prior art shelter frame of Figures 16 and 17.” slip op. at 27
Patent outcomesUS 10,669,738 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,669,738 - PTAB · Jul 25, 2024 · IPR2024-00478 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on anticipation by Rosenberg-I.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In view of the above, we determine that this factor strongly weighs against the exercise of discretionary denial. 2. Factor 2: proximity of the court’s trial date to the Board’s projected” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Skill levelOther
“would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry or graduate level experience with software engineering, haptics programming, and/or human-computer interaction, including experience with user-interfaces and applications involving touchscreens, touchpads, and related technologies.” Pet. 8 (citing Ex. 1003 ¶¶ 37–43). Patent Owner contends that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction (HCI), including implementation of computer-based systems and software for providing haptic feedback effects to a user,” and adds that a person having ordinary skill in the art “could have qualified . . . with more formal education and less practical or industry experience, or vice versa.” Prelim. Resp. 9 (citing Ex. 2001 ¶ 32). Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition. slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,430,042 - PTAB · May 10, 2024 · IPR2024-00259 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted inter partes review of claims 1, 7, 9, 32, 38, and 40 on the asserted obviousness ground over Bhattacharya and Yost.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“that because judgements have been entered in the district court actions, this suggests finality. In a similar instance in Volvo, where a district court’s § 101 determination was appealed to the Federal Circuit, the Director determined that the Board had the authority to institute an inter partes review and a Fintiv analysis should be performed. See Volvo Penta of the Americas, LLC v. Brunswick Corp., IPR2022-01366, Paper 15 at 1–8 (PTAB May 2, 2023). The Director has additionally distinguished the Fintiv analysis in AviaGames under similar circumstances to those here, where “the district court’s judgment of invalidity under 35 U.S.C. § 101, i.e., a statutory ground that could not have been raised before the Board, does not raise concerns of inefficient duplication of efforts or potentially inconsistent results between the Board and the district court.” AviaGames, IPR2022- 00530, Paper 14 at 3 (PTAB Mar. 2, 2023) (Decision on Director Review). Further, the Director determined that “the challenged claims have not yet been cancelled and remain in force until the opportunity to appeal has been exhausted,” noting that “[b]y the time an appeal will have concluded, Petitioner will be barred under 35 U.S.C. § 315(b) from bringing a new challenge in an IPR petition.” Id. at 3–4. Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal duplicate the obviousness issues addressed here. The timing of the progress of the appeal and any potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“viii. Conclusion Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is rendered obvious by Bhattacharya and Yost.” slip op. at 32
- Skill levelSkill level petitioner adoptedOther
“IV. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have had at least a Bachelor’s degree in electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with working with navigation and/or geolocation systems. Pet. 6–7 (citing Ex. 1003 ¶ 8). Petitioner also contends that additional education could compensate for less work experience and vice versa. Id. at 7. For the purposes of the Preliminary Response, Patent Owner adopts Petitioner’s asserted level of ordinary skill in the art. Prelim. Resp. 26. For the purposes of this Decision, we adopt the assessment offered by Petitioner, except for the inclusion of “at least,” as it is consistent with the ’753 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16
- Prior constructionPrior construction adoptedOther
“patent and district court issued claim constructions for some terms that were disputed. Ex. 1020; Ex. 1025. Petitioner uses the district court’s construction or the agreed-upon construction for the terms “calibration data,” “calibration points,” “grid point,” “network measurement report,” and the order of the “providing,” “generating,” “evaluating,” and “selecting” steps of claim 1. Pet. 7–9 (citing Ex. 1020; Ex. 1025). Petitioner proposes that all terms should be interpreted consistent with the Phillips standard. Id. at 7. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of this Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.” Prelim. Resp. 26. For the purposes of this Decision, we will use the district court’s claim constructions and those agreed-upon by the parties in the litigations, where the adoption of those constructions have been agreed to by the parties at this juncture in this proceeding. We determine that we need not expressly construe any other claim terms at this juncture. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,406,753 - PTAB · May 10, 2024 · IPR2024-00032 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–5, 9, 11, 12, 14–16, 18–22, 25, 27, 29, 31, 32, and 35 on all asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 claims 1–5, 9, 11, 12, 14–16, 18–22, 25, 27, 29, 31, 32, and 35 of the ’494 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“an IDS in the ’494 patent, we agree with Patent Owner that the record shows that Bhattacharya and Spain10 were listed on an IDS during prosecution of the parent ’358 patent, which the ’494 patent Examiner was required to consider. Prelim. Resp. 5 (citing MPEP 609.02). As such, we determine that Bhattacharya and Spain were presented previously to the Office. See Prelim. Resp. 9; Advanced Bionics at 7–8. We also agree with Patent Owner that the addition of Meunier does not substantially impact our § 325(d) analysis because of the Petition’s limited reliance on this reference. For these reasons, we determine that the first prong of Advanced Bionics is met and turn to the second prong.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“would have at least a Bachelor’s degree in electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with working with navigation and/or geolocation systems. 1003 ¶ 8; Pet. 6, n.2. According to Petitioner, “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Ex. 1003 ¶ 8. Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 43. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’494 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,786,494 - PTAB · Feb 20, 2024 · IPR2023-01210 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1, 15, 18, 41, and 52 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
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). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far. This is not a final decision as to patentability of the challenged claims. Any final decision will be based on the full trial record, including any response to the Petition timely filed by Patent Owner.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“7. Conclusion We have considered the circumstances and facts before us in view of the Fintiv factors. Because our analysis is fact-driven, no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a). We take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11, 6. Evaluating all of the factors on this record, we determine that weight of factors 1, 2, and 4 outweigh the remaining factors. Thus, based on our assessment of the Fintiv factors, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny inter partes review.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems, having at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 13 (citing Ex. 1012 ¶ 30). Patent Owner does not dispute Petitioner’s definition for the level of ordinary skill in the art. Prelim. Resp. 30. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“The first four of Petitioner’s proposed constructions are consistent with the clam constructions issued by the district court in the Google Action—the only difference being that although the district court found the corresponding structure for “positioning determining equipment” indefinite, Petitioner applies the corresponding structure proposed by Patent Owner in the Google Action. Ex. 1028, 8, 10–16, 20; Pet. 16. Petitioner cites Exhibit 1024 as supporting its contention that the parties have stipulated as to the order of the “collecting,” “modifying,” and “comparing” steps in claim 1, but this Exhibit does not appear to support the stipulation. See Ex. 1024. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [the] Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.”7 Prelim. Resp. 31. For purposes of this Decision, we adopt the undisputed claim constructions that Petitioner proposes. These constructions are consistent 7 In other sections of the Preliminary Response, Patent Owner appears to argue in favor of a modified construction of “grid point.” Prelim. Resp. 18– 25; see also id. at 32 (“As further explained above in Section III, the district court concluded that ‘grid point,’ as used in the ’358 Patent, specifically refers to ‘a point associated with representative calibration data for an area’ that is generated based on analysis of calibration data.”). We disagree with these arguments for the reasons discussed below. with the claim language and the specification of the ’358 patent and are further supported by the reasoning provided by the district court’s claim construction order. See Ex. 1028. We do not discern a need to construe explicitly any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,400,358 - PTAB · Feb 20, 2024 · IPR2023-01209 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 1–3 and 11 on all asserted grounds, finding a reasonable likelihood that Google would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“is finality as that relates to Fintiv issues. In a similar instance in Volvo, where a district court’s § 101 determination was appealed to the Federal Circuit, the Director determined that the Board had the authority to institute an inter partes review and a Fintiv analysis should be performed. See Volvo, Paper 15 at 1–8. The Director has additionally distinguished a Fintiv analysis under similar circumstances to those here, where “the district court’s judgment of invalidity under 35 U.S.C. § 101, i.e., a statutory ground that could not have been raised before the Board, does not raise concerns of inefficient duplication of efforts or potentially inconsistent results between the Board and the district court.” AviaGames, Inc., Paper 14 at 3. Further, the Director determined that, “the challenged claims have not yet been cancelled and remain in force until the opportunity to appeal has been exhausted,” noting that “[b]y the time an appeal will have concluded, Petitioner will be barred under 35 U.S.C. § 315(b) from bringing a new challenge in an IPR petition.” Id. at 3–4. Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. We also agree with Petitioner that the timing of the progress of the appeal and any potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any anticipation or obviousness issues, the present circumstances with a” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems, having at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 13–14 (citing Ex. 1012 ¶ 31). Patent Owner does not dispute Petitioner’s definition for the level of ordinary skill in the art. Prelim. Resp. 31. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“The first four of Petitioner’s proposed constructions are consistent with the clam constructions issued by the district court in the Google Action (see Ex. 1028, 8, 10, 20) or a position taken by Patent Owner in the Google Action (see Ex. 1016 ¶¶ 108–109). Petitioner cites Exhibit 1024 as supporting its contention that the parties have stipulated as to the order of the “collecting,” “modifying,” and “comparing” steps in claim 1, but this Exhibit does not appear to support the stipulation. See Ex. 1024. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [the] Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.”8 Prelim. Resp. 31. For purposes of this Decision, we adopt the undisputed claim constructions that Petitioner proposes. These constructions are consistent with the claim language and the specification of the ’104 patent and are further supported by the reasoning provided by the district court’s claim construction order. See Ex. 1028. We do not discern a need to construe explicitly any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 7,561,104
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.