- Apple Inc. v. Paul PoniatowskiInstitutedPTAB · Oct 7, 2024 · IPR2024-00731 · APJ Jennifer S Bisk · IPR · Institution
The Board instituted review of claims 1–6, 8–13, 15–20, and 22–27 based on a reasonable likelihood that Wang, Dua, and Yong render them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary 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.” For the reasons that follow, we institute an inter partes review as to claims 1–6, 8–13, 15–20, and 22–27 of the ’578 patent on the sole ground of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). For purposes of this proceeding, Petitioner argues a person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in computer science, computer engineering, or equivalent with one to two years of experience in the field of mobile transactions.” Pet. 8 (citing Bederson Decl. ¶¶ 35–37). Petitioner adds that “[a]dditional education or experience might substitute for the above requirements.” Id. To the extent necessary, and for purposes of this Decision, we accept this assessment offered by Petitioner, as it is supported by Dr. Bederson’s testimony and appears consistent with the ’578 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“scanner, reader, or camera” that is aimed at a barcode or special code of a product, the price of which is then added to the retail bill. Pet. 10–11 (quoting Ex. 1001, 7:45–49, 9:5–11). According to Petitioner, the Specification does not elaborate further on the meaning of the term “information concerning prices of goods.” Id. at 11. Petitioner, thus, interprets the term to encompass scenarios in which price information is received directly or indirectly. Id. Petitioner notes that during prosecution of the ’578 patent, the Examiner rejected this limitation over prior art, stating that prior art “sends the scanned bar code information to the server,” which “then preferably returns a description of the item and information,” and “[t]his item description and price information is displayed on the telephone’s display.” Id. at 12 (quoting Ex. 1002, 231). According to Petitioner, this is an example of indirectly receiving information concerning the prices of goods as it comes from a queried server, not from the item itself. Id. Petitioner notes that Patent Owner never disputed, and in fact, made statements supporting that these actions were encompassed by the claim limitation. Id. (citing Ex. 1002, 214). We agree with Petitioner that nothing in the claim language or the Specification requires that the claimed optical input receive information concerning the prices of goods directly from the goods themselves. Thus, on this record, we preliminarily construe the term “receiving information concerning the prices of goods” to encompass receiving pricing information from a server.” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In an inter partes review, the burden is on the petitioner to show a reasonable likelihood that it would prevail on a ground of unpatentability. 35 U.S.C. § 314(a). With respect to entitlement to any earlier effective filing date, however, a patent owner is not presumed to be entitled to the earlier filing dates of ancestral applications that do not share the same disclosure, such as in a continuation-in-part situation. See PowerOasis, Inc. v. T–Mobile USA, Inc., 522 F.3d 1299, 1305–06 (Fed.Cir.2008) (stating that once a defendant establishes that a reference is § 102(b) prior art, burden is on patent owner to come forward with evidence proving priority to an earlier filing date).” slip op. at 12
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 8,270,578 - PTAB · Oct 4, 2024 · IPR2024-00761 · APJ Donald E Daybell · IPR · Institution
The Board instituted inter partes review of claims 1–24 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute review. Upon consideration of the arguments and evidence before us, we conclude that Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’684 Patent. The Petition is granted, and inter partes review is instituted. A scheduling order will follow this decision.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“as of the time of the invention of the ’684 Patent “would have had an M.S. in Mechanical Engineering or a related field, and at least five years of experience using laser systems to characterize and test mechanical behavior in materials.” Pet. 5. Patent Owner “generally agrees” with this definition. Prelim. Resp. 26. At this juncture, we adopt Petitioner’s definition. This definition appears to be consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 5 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because the ’684 Patent was filed before March 16, 2013 (the effective date of the relevant amendments), the pre-AIA versions of §§ 102 and 103 apply. 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“On this record, we find that the above noted evidence comprises “evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that [Wang] qualifies as a printed publication.” Hulu, IPR2018-01039, Paper 29 at 13. Patent Owner raises a number of questions about Petitioner’s showing. First, Patent Owner contends that the Morris Declaration “is not credible or legally sufficient for various reasons,” including a lack of corroborating evidence. Prelim. Resp. 28–30 (citing, inter alia, Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1369 (Fed. Cir. 1999)). Nonetheless, Ms. Morris’s testimony at least is consistent with the indicators of publication appearing in the front matter of Wang. See Ex. 1005, 1, 3–6 (added page numbers). As such, we find Ms. Morris’s testimony sufficiently reliable to support a reasonable likelihood that Wang would qualify as a prior art printed publication. At trial, the parties can develop the record about whether, and, if so, the extent to which, testimony regarding publication by a non-inventor witness must be corroborated with other evidence.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“f) Enablement of Wang In order for a prior art reference to anticipate a claim, that reference must enable a person of ordinary skill in the art to make the claimed subject matter. PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1566 (Fed. Cir. 1996) (“To anticipate a claim, a reference must disclose every element of the challenged claim and enable one skilled in the art to make the anticipating subject matter.”) Enablement of a prior art reference does not require that the prior art reference show that the disclosed subject matter would have utility; that is, that it would work for any particular purpose. Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1326 (Fed. Cir. 2005). (“[T]his court has continued to recognize that a prior art reference need not demonstrate utility in order to serve as an anticipating reference under section 102.”), In re Schoenwald, 964 F.2d 1122, 1124 (Fed. Cir. 1992) (“[I]t is beyond argument that no utility need be disclosed for a reference to be anticipatory.”) All that matters is whether the skilled person could have made the claimed subject matter, without undue experimentation. In re Antor Media Corp., 689 F.3d 1282, 1290 (Fed. Cir. 2012) (“Enablement of prior art requires that the reference teach a skilled artisan to make or carry out what it discloses in relation to the claimed invention.”) (emphasis added). Even references that disclose inoperative devices are still prior art for all that they teach. Id. (citing Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989)). Therefore, questions of whether the prior art may teach away from making the claimed subject matter are not relevant to anticipation. Bristol-Myers Squibb Co. v. Ben Venue Lab’ys, Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001) (“Thus, the question whether a reference ‘teaches away’ from the invention is inapplicable to an anticipation analysis.”)” slip op. at 23
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,487,684 - Google LLC v. Motion Offense, LLCInstitutedPTAB · Mar 6, 2023 · IPR2022-01313 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 19, 20, and 51 based on the asserted obviousness ground over Houston, Garcia, and Wu.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us. We understand the “at least” phrase to indicate that a POSITA would have a minimum of 2 years of experience in the field of software development and do not agree with Patent Owner that including such minimum makes the proposed definition improperly indefinite. For purposes of this Decision, we apply Petitioner’s statement as our definition of a POSITA.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“At this stage, we agree with Petitioner that the combination of Houston and Garcia teach the required synchronization of folder metadata. Given that the ’215 patent provides no explanation of what is meant by synchronizing folder metadata, we construe that requirement as encompassing synchronization of the metadata of files contained in a folder. Accordingly, based on the evidence and arguments currently of record, for purposes of institution, Petitioner has satisfied its burden for claim element 1o.” slip op. at 37
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We agree that Patent Owner’s contention that Garcia is directed to actions taken by a single user at a single client device is inconsistent with Garcia’s description of a system “for enabling a user to synchronize, manage, and share files and folders across a plurality of client devices and a synchronization server.” Ex. 1006, Abstract. Nor are Patent Owner’s other attorney arguments persuasive. A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Patent Owner does not point to aspects of the cited references that meet this criterion. “[T]hat two inventions were designed to resolve different problems . . . is insufficient to demonstrate that one invention teaches away from another.” Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). In addition, Patent Owner’s arguments are unpersuasive as relying on an alleged inability to modify the specific implementations disclosed in Houston in light of Garcia. However, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“[c]ombining the teachings of references does not involve an ability to combine their specific structures”); see also In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 425) (“The test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.”). Patent Owner’s attorney arguments are not persuasive evidence that the proffered combination of references would have been “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Accordingly, for purposes of this Decision, we find Petitioner cites” slip op. at 29
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“those raised in the Dropbox litigation, because Garcia is not included in that litigation. With respect to Patent Owner’s contention that “Petitioner deliberately decided not to do a full Sotera stipulation,”11 we highlight that in Sand Revolution II, the panel found Petitioner’s stipulation that it would not pursue in district court litigation the same grounds as those asserted in the IPR “mitigates to some degree the concerns of duplicative efforts” and “weighs marginally in favor of not exercising discretion to deny institution.” Sand Revolution II, LLC v. Continental Intermodal Group Trucking LLC, IPR2019-01393, Paper 24 at 11–12 (June 16, 2020) (informative). Also, we disagree with Patent Owner’s contention that NXP USA does not allow stipulations after the Petition is filed. NXP USA states that “the only appropriate time for a petitioner to offer a stipulation . . . is prior to the Board’s decision of whether to institute review” (NXP USA, Paper 13 at 4), which is the case here. Under these circumstances, we find that factor 4 weighs against exercising discretion to deny institution.” slip op. at 47
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,044,215 - Google LLC v. Motion Offense, LLCInstitutedPTAB · Mar 6, 2023 · IPR2022-01312 · APJ Jennifer S Bisk · IPR · Institution
Instituted IPR of claim 14 on the asserted § 103 ground over Houston and Garcia; the Board found a reasonable likelihood that Petitioner would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary 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.” For the reasons that follow, we institute an inter partes review as to claim 14 of the ’737 patent on the sole ground of unpatentability asserted in the Petition (see infra § VI (asserted ground)).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We agree that Patent Owner’s contention that Garcia is directed to actions taken by a single user at a single client device is inconsistent with Garcia’s description of a system “for enabling a user to synchronize, manage, and share files and folders across a plurality of client devices and a synchronization server.” Ex. 1006, Abstract. Nor are Patent Owner’s other attorney arguments persuasive. A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Patent Owner does not point to aspects of the cited references that meet this criterion. “[T]hat two inventions were designed to resolve different problems . . . is insufficient to demonstrate that one invention teaches away from another.” Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). In addition, Patent Owner’s arguments are unpersuasive as relying on an alleged inability to modify the specific implementations disclosed in Houston in light of Garcia. However, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“[c]ombining the teachings of references does not involve an ability to combine their specific structures”); see also In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)) (“The test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.”). Patent Owner’s attorney arguments are not persuasive evidence that the proffered combination of references would have been “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Accordingly, for purposes of this Decision, we find Petitioner cites sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Houston, Garcia, and Wu as described above.” slip op. at 30
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We find that the unpatentability issue raised here, which is based on the combination of Houston and Garcia, does not overlap with those raised in the Dropbox litigation, because Garcia is not included in that litigation. With respect to Patent Owner’s contention that “Petitioner deliberately decided not to do a full Sotera stipulation9,” we highlight that in Sand Revolution II, the panel found Petitioner’s stipulation that it would not pursue in district court litigation the same grounds as those asserted in the IPR “mitigates to some degree the concerns of duplicative efforts” and “weighs marginally in favor of not exercising discretion to deny institution.” Sand Revolution II, LLC v. Continental Intermodal Group Trucking LLC, IPR201901393, Paper 24 at 11–12 (June 16, 2020) (informative). Also, we disagree with Patent Owner’s contention that NXP USA does not allow stipulations after the Petition is filed. NXP USA states that “the only appropriate time for a petitioner to offer a stipulation . . . is prior to the Board’s decision of whether to institute review” (NXP USA, Paper 13, 4), which is the case here. Under these circumstances, we find that factor 4 weighs against exercising discretion to deny institution.” slip op. at 50
- PTAB / AIA Trials › §315(b) time barNot reached
“We agree with Patent Owner that discovery is warranted to determine whether Petitioner has met its burden to establish that the Petition is not time barred under 35 U.S.C. § 315(b). Prelim. Resp. 39–40. Accordingly, we entered an order for discovery concurrently with this Decision. Because discovery has not yet been completed, we will not resolve this issue before institution.” slip op. at 58
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,613,737 - Google LLC v. Motion Offense, LLCInstitutedPTAB · Mar 2, 2023 · IPR2022-01311 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted review of claim 16 under the § 103 ground based on Houston and Garcia, finding a reasonable likelihood that the combined teachings render the claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IX. ANALYSIS A. Legal Standards “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective evidence of obviousness or nonobviousness, i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“not involved.” Id. We find that the unpatentability issue raised here, which is based on the combination of Houston and Garcia, does not overlap with those raised in the Dropbox litigation, because Garcia is not included in that litigation.” slip op. at 41
- PTAB / AIA Trials › §315(b) time barNot reached
- PTAB / AIA Trials › Real party in interest / privityNot reached
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,303,353
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.