- PTAB · Mar 4, 2025 · IPR2024-01252 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 1–3, 5–12, 14–21, 23–25, 27–29, and 31–33 on the asserted obviousness ground over Wu and Doherty.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any 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 explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and the grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner is correct. As summarized above, Fintiv factors 1–5 do not favor exercising discretion to deny the Petition so there is no need to address whether the merits are compelling. See Volvo Penta, Paper 15 at 4–5 (“On remand, if the Board determines that Fintiv factors 1–5 favor exercise of discretion to deny institution, the Board shall consider whether the record prior to institution demonstrates that the merits are compelling” (emphasis added)). In addition, as determined below, Petitioner shows that there is a reasonable likelihood of prevailing on the merits with respect to at least one challenged claim. Therefore, Fintiv factor 6 favors not exercising discretion to deny institution. Based on the foregoing discussion, a holistic review of the record favors not exercising discretion to deny institution. Accordingly, we decline to exercise discretion to deny institution under 35 U.S.C. § 314 based on Fintiv.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Contrary to Patent Owner’s arguments, Wu and Doherty are not cumulative to Knepper. As Petitioner argues, the Petition relies on Wu’s teachings regarding a digital recording/play back system allowing users to fast forward through or skip over advertisements during playback and Doherty’s teachings regarding rescheduling advertisements and other items of information (e.g., media content) in response to user input—neither set of teachings is present in Knepper. Reply 2.” slip op. at 45
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“construction for “intersplicer” as “software that selects advertising content and controls insertion and conveyance of advertising content in media content.” Pet. 5 (citing Ex. 1001, code (57), 7:45–55, 15:4–18). The specification implies that the intersplicer is “application software” that may include an “‘intersplicer’ module.” Ex. 1001, 7:45–58. The module “select[s] . . . the ads to be shown” and controls the insertion and conveyance of ads and the application software “automatically edits the selected advertisements into the presentation stream.” See Pet. 5 (quoting Ex. 1001, 7:45–55; citing Ex. 1003 ¶ 23); see also Ex. 1001, code (57) (“The intersplicer combines the media files with the ad files by providing control signals to the media player, causing the media player to present the ad files with the selected media files.”). Patent Owner does not propose a construction for “intersplicer” at this stage in this proceeding. See generally Prelim. Resp.7 The preliminary record supports Petitioner’s proposed construction of an “intersplicer” for purposes of this Institution Decision.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,463,768 - PTAB · Feb 13, 2025 · IPR2024-01262 · APJ Georgianna W Braden · IPR · Institution
The Board instituted IPR on claims 1–26 on all petition challenges and granted Altice USA’s motion to join IPR2024-00322, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The patentability challenges in the Comcast IPR met the “reasonable likelihood” standard of § 314(a). IPR2024-00322, Paper 13, 36.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Under the present circumstances, we agree with Petitioner that joinder is appropriate and will not unduly impact the ongoing trial in IPR2024- 00322. Nonetheless, we lay out the following restrictions in order to ensure minimal impact on the trial schedule, cost, discovery, and potential briefing. Specifically, we limit Petitioner Altice USA, Inc.’s participation in the joined proceeding, such that (1) Comcast Communications, LLC alone is responsible for all petitioner filings in the joined proceeding until such time that it is no longer an entity in the joined proceeding, and (2) Altice USA, Inc. is bound by all filings by Comcast Communications, LLC in the joined proceeding, except for (a) filings regarding termination or settlement and (b) filings where Altice USA, Inc. receives permission to file an independent paper. Altice USA, Inc. must obtain prior Board authorization to file any paper or to take any action on its own in the joined proceeding, so long as Comcast Communications, LLC remains as a non-terminated petitioner in the joined proceeding. This arrangement promotes the just and efficient administration of the ongoing trial in IPR2024-00322 and protects the interests of Comcast Communications, LLC as original petitioner in IPR2024-00322, and of Patent Owner. For the foregoing reasons, and with the limitations discussed above, Petitioner’s Motion for Joinder is granted.” slip op. at 6
NonePatents in suitUS 8,356,251 - PTAB · Feb 4, 2025 · IPR2024-01231 · APJ Georgianna W Braden · IPR · Institution
The Board instituted IPR on claims 1–26 on all petition grounds and granted Charter’s motion to join IPR2024-00322, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The patentability challenges in the Comcast IPR met the “reasonable likelihood” standard of § 314(a). IPR2024-00322, Paper 13, 36.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“not be impacted if it were to join that proceeding because “[t]he grounds in the instant Petition—and evidence upon which they rely—are identical to the grounds in the Comcast IPR, which the Board instituted.” Mot. 1, 5. Furthermore, Petitioner agrees that, if joined as a party to the Comcast IPR, it will act as “understudy” and will not assume an active role unless Comcast terminates its involvement after joinder. Mot. 1, 7–8. Under the present circumstances, we agree with Petitioner that joinder is appropriate and will not unduly impact the ongoing trial in IPR2024- 00322. Nonetheless, we lay out the following restrictions in order to ensure minimal impact on the trial schedule, cost, discovery, and potential briefing. Specifically, we limit Petitioner Charter Communications, Inc.’s participation in the joined proceeding, such that (1) Comcast Communications, LLC alone is responsible for all petitioner filings in the joined proceeding until such time that it is no longer an entity in the joined proceeding, and (2) Charter Communications, Inc. is bound by all filings by Comcast Communications, LLC in the joined proceeding, except for (a) filings regarding termination or settlement and (b) filings where Charter Communications, Inc. receives permission to file an independent paper. Charter Communications, Inc. must obtain prior Board authorization to file any paper or to take any action on its own in the joined proceeding, so long as Comcast Communications, LLC remains as a non-terminated petitioner in the joined proceeding. This arrangement promotes the just and efficient administration of the ongoing trial in IPR2024-00322 and protects the interests of Comcast Communications, LLC as original petitioner in IPR2024-00322, and of Patent Owner.” slip op. at 6
NonePatents in suitUS 8,356,251 - Mercedes-Benz USA, LLC v. Yechezkal Evan SperoSome claims unpatentablePTAB · Jan 16, 2025 · IPR2023-01027 · APJ Aaron W Moore · IPR · Final written decision
Claims 37–70 are unpatentable: claims 37–41, 47, 50–56, 58–59, 60–62, 64–65, and 70 as anticipated by Alden; the remaining challenged claims as obvious over Alden and the listed combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“alleged invention “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems” and that more education could compensate for less experience and vice versa. See Pet. 8–9 (citing Ex. 1003 ¶ 33). 3 PCT Patent App. Pub. No. WO 01/70538 A2 (Exhibit 1010). 4 PCT Patent App. Pub. No. WO 01/01038 (Exhibit 1006). 5 U.S. Patent No. 4,970,628 (Exhibit 1007). 6 U.S. Patent No. 6,144,158 (Exhibit 1008). 7 U.S Patent No. 6,049,749 (Exhibit 1009). 8 PCT Patent App. Pub. No. WO 02/04247 A1 (Exhibit 1011). Patent Owner “does not dispute Petitioner’s proposed skill level for a person of ordinary skill in the art” (PO Resp. 4), and, as we generally agree that it is consistent with the subject matter disclosed in the ’503 patent and the prior art, we adopt it for purposes of this decision. B.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Construction We construe claims using the standard that would be applied in a civil action under 35 U.S.C. § 282(b), giving terms their ordinary and customary meaning to one of ordinary skill in the art in view of the specification and prosecution history. See 37 C.F.R. § 42.100(b). The Petition asserts that all claim terms should be given their “ordinary and customary meaning.” See Pet. 8. Patent Owner also proposes that the claim terms be given their ordinary meaning, and identifies the “ordinary meaning” for the terms “identify,” “turn,” and “curve,” which we discuss in our analysis below. We otherwise find that that no express claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
Patent outcomesUS 10,894,503 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,894,503 - Mercedes-Benz USA, LLC v. Yechezkal Evan SperoAll claims unpatentablePTAB · Jan 16, 2025 · IPR2023-01026 · APJ Aaron W Moore · IPR · Final written decision
Claims 1–36 are unpatentable: claims 1–4, 7, 10–17, 19–23, 25–27, and 30–36 are anticipated by Alden; claims 5, 6, 8, and 9, and 28–29, are obvious over the stated combinations.
RulingsFinal written decision- BurdenUnpatentable
“III. CONCLUSION For the reasons given, Petitioner has met its burden of showing that claims 1–36 of U.S. Patent 10,894,503 B2 are unpatentable.12 The results are summarized below:” slip op. at 47
- Skill levelSkill level petitioner adoptedOther
“alleged invention “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems” and that more education could compensate for less experience and vice versa. See Pet. 8–9 (citing Ex. 1003 ¶ 33). Patent Owner “does not dispute Petitioner’s proposed skill level for a person of ordinary skill in the art” (PO Resp. 4), and, as we generally agree that it is consistent with the subject matter disclosed in the ’503 patent and the prior art, we adopt it for purposes of this decision. B.” slip op. at 10
- Expert testimonyPetitioner expert creditedOther
“While Alden’s Figure 5 shows a sectional view of a segmented-headlight embodiment, thus depicting a single line of LEDs, that does not restrict the embodiment to a one-dimensional array. Indeed, Alden’s disclosures discussed above contradict such a view, as do the disclosures regarding Figure 5 and other segmented-headlight embodiments. We credit Petitioner’s expert’s testimony in this regard. Ex. 2041, 59:10–12 (“[I]t’s very clear we’re talking about a two-dimensional structure that is map of this set of slices in figure 5.”); accord id. at 56:25–60:18. The Figure 5 embodiment includes a switch array to control the individual lighting elements, with “[e]ach lighting element being independently controlled by a corresponding switch in an array of switches 115.” Ex. 1005 ¶ 29. The Figure 6 embodiment includes a face-on view of the headlight plainly showing a two-dimensional array, in addition to a sectional view similar to that of Figure 5. Id. at Fig. 6. And Alden describes that the Figure 6 embodiment uses a “switch array similar to 115 and the process previously described herein.” Id. ¶ 30. Considering Alden’s description of its sensing-and-control circuit in connection with Figure 3, which illustrates a two-dimensional array, and its description of Figure 5’s segmented headlight as working with that approach, we find that Alden’s LED-based segmented headlight is capable of selective illumination in two dimensions. See id. ¶¶ 27, 29, Figs. 3, 5.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Petition asserts that all claim terms should be given their “ordinary and customary meaning.” See Pet. 8. Patent Owner also proposes that the claim terms be given their ordinary meaning, and identifies the “ordinary meaning” for the terms “identify,” “turn,” and “curve,” which we discuss in our analysis below. We otherwise find that that no express claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 11
Patent outcomesUS 10,894,503 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,894,503 - Mercedes-Benz USA, LLC v. Yechezkal Evan SperoAll claims unpatentablePTAB · Jan 14, 2025 · IPR2023-01034 · APJ Jason W Melvin · IPR · Final written decision
Claims 1–33 are unpatentable: claims 1–8, 10–19, 21–30, 32, and 33 as obvious over Alden and Kobayashi; claims 9, 20, and 31 as obvious over Alden, Beam, and Kobayashi.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that an ordinarily skilled artisan “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems.” Pet. 8–9 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute that level of ordinary skill in the art. PO Resp. 6. We adopt the undisputed level of ordinary skill in the art for purposes of this decision and refer to people with that skill as skilled artisans.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“B. CLAIM CONSTRUCTION The parties agree that no express claim construction is required at this stage. Pet. 8; PO Resp. 7. We agree with the parties and therefore do not further construe the claims for this decision. 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 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“relies on Kobayashi, submitting that it would have been obvious to “use map data to identify road curvature when adapting the LEDs of Alden to ‘direct light into the corner.’” Pet. 23–24 (quoting Ex. 1005 ¶ 36). Petitioner reasons that Alden discloses detecting road curvature through roadside reflectors and steering-wheel sensors, and Kobayashi discloses an additional way to detect road curvature. Id. at 24. Petitioner continues that, because Kobayashi discloses using map data to control vehicle headlights, skilled artisans would have had reason to adopt its teachings in Alden’s system “to maximize successful detection in different environments.” Id. at 24–25 (citing Ex. 1003 ¶ 70). Petitioner relies on Kobayashi also for determining a light change to increase light in the direction of road curvature and shaping light based on the road curvature. Id. at 27. Finally, Petitioner relies on Kobayashi for the requirement to control the light sources both based on the determined light change and also prior to the vehicle reaching the road curvature. Id. at 30.” slip op. at 10
Patent outcomesUS 11,208,029 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 11,208,029 - Mercedes-Benz USA, LLC v. Yechezkal Evan SperoAll claims unpatentablePTAB · Dec 10, 2024 · IPR2023-01040 · APJ Jason W Melvin · IPR · Final written decision
Claims 48–87 are unpatentable: Alden anticipates most challenged claims, while claims 49 and 51 are obvious over Alden and Beam, and claims 52, 60, 68, 76, and 84 over Alden and Kobayashi.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems.” Pet. 9 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute that level of ordinary skill in the art. PO Resp. 6. We adopt the undisputed level of ordinary skill in the art and refer to people with it as skilled artisans.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“enablement for Alden’s system detecting road curves. Pet. Reply 21. As Petitioner points out, Alden uses both intensity and a detected object’s location (including distance) to inform its response. Ex. 1005 ¶¶ 27–28. Petitioner’s expert testifies that the same physical system used to accommodate oncoming vehicles could be used to detect roadside reflectors and direct light into road curves. Ex. 2041, 78:16–80:24. Further, Petitioner’s expert testifies that skilled artisans would adjust the intensity and distance thresholds to distinguish roadside reflectors from oncoming vehicles. IPR2023-01039, Ex. 1003 ¶ 150. Based on Alden’s disclosures, we credit Petitioner’s expert’s testimony that Alden’s system would detect and accommodate road curvatures as claimed by the ’551 patent. Ex. 1003 ¶¶ 132–134. Although Patent Owner argues that Alden’s system could not do so while also accommodating oncoming vehicles, that position is based on the argument that “the system can’t tell the difference between signs and headlights.” PO Surreply 21–23. Patent Owner contends that “detected intensity is a function of both distance and emission intensity” so a threshold couldn’t distinguish headlights from signs. Id. at 24–25. That position ignores that Alden uses triangulation to calculate each object’s distance, as discussed, which would allow it to distinguish different types of objects using an intensity threshold. We agree with Petitioner’s expert that Alden’s system can distinguish the two, as discussed.” slip op. at 33
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“sufficiently clear to impart a requirement on “classifying” such that a system must choose from multiple classes or types of objects. The parties do not appear to dispute that “classifying the object” includes arranging or grouping the object according to some system or principle. Thus, there is no need to further construe the claims for purposes of this decision.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. Alden’s system does not simply dim its headlights where it detects spots of light. Rather, it performs a multistep process in which those spots are detected, analyzed with triangulation to determine distance, and then used to determine dimming zones. Ex. 1005 ¶¶ 27–28. Alden discloses that its sensor “detects the two headlights” of an oncoming vehicle when “[e]lectrons corresponding to the position and intensity of light are categorized by a logic and CPU 71 and stored in a memory 72.” Id. ¶ 27. Petitioner’s expert noted that Alden’s description “move[s] from lights – thresholding lights to objects, and then calculate[s] distance of each thresholding object using triangulation.” Ex. 2041, 109:23–110:2. That testimony supports our view that Alden first detects lights, uses those detected lights to identify and classify an oncoming car, then dims the headlight output to prevent glare. Alden’s dimming decision particularly indicates that it classifies pairs of detected headlights as oncoming vehicles. The CPU makes “assumptions about the space that may potentially be occupied by the driver of the sensed vehicle” and identifies an area of the segmented headlight to dim that is “significantly larger than the headlight dots that were initially received.” Ex. 1005 ¶ 27. Patent Owner agrees that Alden dims “selected surrounding sectors” around detected light (PO Resp. 30), and the way Alden selects those sectors indicates that it identifies vehicles. It does not simply expand an area around each detected light; it dims an area to encompass the driver of the identified vehicle. Ex. 1005 ¶ 27, Fig. 3. By treating a pair of corresponding detected lights collectively for dimming, Alden indicates that it classifies pairs of detected lights as vehicles.” slip op. at 23
Patent outcomesUS 9,955,551 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,955,551 - Mercedes-Benz USA, LLC v. Yechezkal Evan SperoAll claims unpatentablePTAB · Dec 9, 2024 · IPR2023-01039 · APJ Jason W Melvin · IPR · Final written decision
Claims 8, 10–18, and 24–47 are unpatentable: Alden anticipates claims 24–27, 29–35, 37–43, and 45–47; the remaining claims are obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), effective March 16, 2013, amended the applicable statutes. Because the application from which the ’551 patent issued was filed before this date, the pre-AIA versions of §§ 102 and 103 apply. 4 US 2003/0137849 A1, filed Jan. 22, 2002 (Ex. 1005). 5 US 6,049,749, issued Apr. 11, 2000 (Ex. 1006). 6 US 2002/0057572 A1, published May 16, 2002 (Ex. 1007). 7 WO 2001/70538 A2, published Sept. 27, 2001 (Ex. 1008). similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems.” Pet. 9 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute that level of ordinary skill in the art. PO Resp. 6. We adopt the undisputed level of ordinary skill in the art and refer to people with it as skilled artisans.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The problem with Patent Owner’s claim-construction position is that neither the dictionary definition nor the ’551 patent’s specification establish any degree of proof, verification, or confirmation that an object has been correctly identified. The specification discloses that “techniques known in the art” may be used “to classify, identify or locate the contents” visible to a camera sensor. Ex. 1001, 44:67–45:9. That does not establish any certainty obtained by the preexisting techniques. The specification states that the system can “illuminate distant overhead and roadside signs” and can use “[i]mage recognition via a camera” so that the illumination beam may “follow the retroreflective sign as the vehicle moves.” Id. at 51:59–67. That disclosure does not speak to any degree of confirmation or certainty. The specification’s other disclosures are no different. Id. at 52:19–27 (disclosing automated control over lighting and referencing “automatic dimming of high beam due to detection of oncoming vehicles”), 52:66–53:4 (“Using color and pattern recognition techniques it is possible to determine what is a sign.”), 63:9–12 (“Using real time image processing methodologies with image and scene recognition technology known in the art, room or outdoor area elements, objects and people are identified.”), 64:46–49 (“Using machine vision technology known in the art such as neural networks training and other pattern recognition techniques the vision system has sensor, algorithmic and computation means for identifying devices or objects.”), 69:54–57 (“In a preferred embodiment of the invention the logical controller 454 receiving image input from the camera 453 and running pattern recognition software will identify what is the visual task a person is trying to perform.”), 75:48–62 (“Using programmed scene recognition algorithms, the luminaire’s computer vision system comprised of the camera sensor 496 and logical controller 494 identifies the food on the plate, looks-up in storage the recommended CCT and powers each of the different colored LED chips aimed thereon at the correct power level in order to provide the optimal color illumination.”), 76:33–39 (“[A] camera vision system has algorithmic means to identify and track the position of people and objects and the logical controller has motion control means for re-aiming the light sources towards targeted elements and changing the power level to the LED chips.”). None of those disclosures addresses a requirement for confirming or verifying an identification that the system makes; nor does any address a particular accuracy requirement in identifying an object. Based on the specification using “identify” without any requirement that identifying an object requires confirmation or verification of the object’s true identify, we do not adopt Patent Owner’s proposed construction. Although the construction itself similarly does not expressly require the confirmation or verification that Patent Owner seeks to impose, we understand that to be Patent Owner’s intent, and accordingly do not adopt the proposed construction. The parties dispute no other aspect of “identify,” and we therefore need not expressly construe the term.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Because Alden describes its segmented headlights as implementing a process using two-dimensional signals for two-dimensional dimming functionality, we find that Figure 5 depicts a section of an embodiment that contains more than a single row of lighting elements. Stated otherwise, Alden’s disclosures are consistent with each other and are directed to a two-dimensional approach to sensing, control, and illumination. Further, we agree with Petitioner that Patent Owner has not addressed the legal standard for lack of enablement. Pet. Reply 2. In particular, to overcome the presumption that prior-art disclosures are enabled, Patent Owner must show ordinarily skilled artisans would require undue experimentation to practice the disclosed invention. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F. 3d 1313, 1354–55 (Fed. Cir. 2003); In re Antor Media Corp., 689 F. 3d 1282, 1287– 88 (Fed. Cir. 2012). We do not agree with Patent Owner that Alden lacks a presumption of enablement (see PO Surreply 7–8), because we determine that Petitioner’s contentions rely on Alden’s disclosures regarding its invention as a whole. Other than arguing that Figure 5 discloses a single-row embodiment that is unusable with Alden’s other disclosures, Patent Owner has made no attempt to show Alden lacks enablement. Patent Owner has not addressed what experimentation skilled artisans would require to practice an invention using Alden’s Figure 5 segmented headlight with the remainder of Alden’s system as disclosed in Figures 2, 3, and 4, and Alden’s corresponding textual description. We therefore determine that Patent Owner has not shown Alden to lack enablement for its disclosed invention.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Petitioner asserts that skilled artisans would have had reason to incorporate Kobayashi’s teachings that its controller receives “road map information” from a “road profile calculating means” and uses it to adjust the headlamp’s illumination. Pet. 63–64. Petitioner reasons that it would be obvious to “apply these teachings to Alden to use map data to identify road curvature when adapting the LEDs of Alden to ‘direct light into the corner.’” Id. at 64 (citing Ex. 1003 ¶ 122). And Petitioner asserts that skilled artisans had reason to do so because it would “maximize successful detection in different environments” such as where the road lack reflectors. Id. at 65 (citing Ex. 1003 ¶ 123). Other than as discussed above regarding Alden’s disclosures, Patent Owner does not contest Petitioner’s showing for claims 28, 36, and 44. We have considered the full record, including evidence and arguments presented by Petitioner and Patent Owner on whether the combination of Alden and Kobayashi discloses each limitation of claims 28, 36, and 44, and whether skilled artisans would have had reason to combine the references’ teachings as asserted. Based on the full record, we conclude that Petitioner has proven that claims 28, 36, and 44 would have been obvious over Alden and Kobayashi. Pet. 62–65.” slip op. at 34
Patent outcomesUS 9,955,551 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,955,551 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 26, 2024 · IPR2024-00816 · APJ Russell E Cass · IPR · Institution
Instituted IPR on claims 1–7, 9–13, 16, 23, 25, 26, 28, and 29 over Behbahani, Leete, and Tan because claim 23 showed a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“We determine that the first General Plastic factor does not favor exercising discretion to deny institution of inter partes review. This is Petitioner’s first petition challenging the ’330 patent. Pet. 73. Patent Owner argues that “Apple’s use of prior petitions as a roadmap ‘implicitly create[s] such a relationship’” as set forth in Valve. Prelim. Resp. 54. According to Patent Owner, “Apple’s admitted attempt to improve over issues ‘that have plagued prior invalidity challenges’ ties its interests to the prior Petitioner’s aims.” Id. Under the circumstances in this case, we disagree with Patent Owner’s arguments. There is no evidence in the record that Petitioner has any significant relationship with Lenovo or Samsung—for example, that Petitioner is a co-defendant with either of them or was accused of infringing the ’330 patent based on the same product. See Valve at 9–10. That Petitioner apparently may have reviewed and considered strategies undertaken by prior petitioners on similar issues does not, in and of itself, create a significant relationship with any of the prior petitioners. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“That Behbahani and Tan appeared in an initialed IDS is sufficient to satisfy the first Advanced Bionics prong. See Advanced Bionics, Paper 6 at 7–8 (“Previously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent”). Leete was not previously presented to the Office, but we need not decide whether the reference to Leete in Behbahani (see Section II.F.1 below) or Petitioner’s obviousness arguments concerning Behbahani and Leete suffice to satisfy the first Advanced Bionics prong for purposes of this Decision. As discussed below, even if we assume that the first part of the Advanced Bionics framework is satisfied, Petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims in the second part of the framework.” slip op. at 22
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner thus proposes a Master’s degree with two years of experience, while Patent Owner proposes a Bachelor’s degree with five years of experience. Given that both parties also indicate that more education could substitute for less experience and vice versa, we do not see a material difference in the proposals, and thus adopt Patent Owner’s version for the purposes of this Decision. If the parties believe that the choice of one proposal over the other would make a difference in the patentability analysis, they may address that during trial.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,010,330 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 26, 2024 · IPR2024-00819 · APJ Russell E Cass · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Apple would show at least one claim unpatentable over Behbahani, Leete, and Tan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“We determine that the first General Plastic factor does not favor exercising discretion to deny institution of inter partes review. This is Petitioner’s first petition challenging the ’164 patent. There is no evidence in the record that Petitioner has any significant relationship with Lenovo or Samsung—for example, that Petitioner is a co-defendant with either of them or was accused of infringing the ’164 patent or any related patents dbased on the same product. See Valve at 9–10. That Petitioner apparently may have reviewed and considered strategies undertaken by prior petitioners on similar issues does not, in and of itself, create a significant relationship with any of the prior petitioners. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“an 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.” The Board uses a two-part framework when determining whether to exercise its discretion under 35 U.S.C. § 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 so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).” slip op. at 18
- Skill levelSkill level patent owner adoptedOther
“of the alleged invention would have had “a master’s degree in electrical engineering or the equivalent, and two or more years of experience with wireless communication devices.” Pet. 10 (citing Ex. 1003 ¶¶ 27–29). Petitioner further states that “[a]dditional education or experience might substitute for the above requirements.” Id. Relying on Dr. Larson, Patent Owner argues that a person of ordinary skill “would have at least a Bachelor’s Degree in Electrical or Electronics Engineering, along with ‘approximately five years of relevant experience in the design of transceiver architecture, RF systems and components, and analog and mixed signal circuits, as well as experience in control algorithms for such systems and familiarity with wireless standards.” Prelim. Resp. 27– 28 (citing Ex. 2005 ¶ 50). Patent Owner further states that “[a]dditional education could substitute for experience and vice versa.” Id.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,564,164
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.