- PTAB · Jan 28, 2025 · IPR2024-01077 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR on claims 1, 11, and 13–20 based on the Schröder and Mestas obviousness challenge; it did not decide whether the Yuen and Mestas challenge met the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“2. Discussion Part I of the Advanced Bionics framework asks whether the same or substantially the same art was previously presented to the Office or whether the same or substantially the same arguments were previously presented to the Office. Advanced Bionics, Paper 6 at 8.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow, we determine that the reasonable likelihood standard is met, and we institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSA would have been familiar with sensor system design and signal processing. A higher level of education or skill can substitute for less experience, and vice versa. Ex. 1002 ¶ 29. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’859 Patent Specification and the asserted prior art references.” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute an inter partes review. Pet. 8; Prelim. Resp. 21. Nevertheless, there appears to be a dispute about the meaning of the term, “ring,” which we discuss below for purposes of providing guidance.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,139,859 - PTAB · Jan 28, 2025 · IPR2024-01078 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–6, 11–15, and 38–43 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Schröder and Mestas.
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) (2024). To institute an inter partes review, we must determine that the information presented in the Petition and the Preliminary Response 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 there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–6, 11–15, and 38–43 based on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In view of the parties’ arguments and evidence, we do not agree with Patent Owner’s characterization of Mestas as cumulative. Noting that the Office allowed claims of the ’686 Application over U.S. Patent Application Publication No. 2013/0106603 (Ex. 2006, “Weast”), Patent Owner argues that Mestas discloses the same wristband as Weast. Prelim. Resp. 10–12, 58. Patent Owner overlooks that the Office’s consideration of Weast in the prosecution of the ’686 Application occurred after the ’953 patent issued, which does not show consideration of Weast’s or Mestas’s wristband configuration in the allowance of the ’953 patent’s claims. Ex. 2009, 1, 3; Ex. 1001, code (45); Prelim. Resp. 10–12, 58.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 7 (Ex. 1002 ¶ 29). Patent Owner does not dispute Petitioner’s explanation of the level of skill in the art. See Prelim. Resp. 12. Based on the testimony of Dr. Anthony, we agree with Petitioner’s stated understanding of the level of ordinary skill in the art. Ex. 1002 ¶ 29. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’953 Patent Specification and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner expresses that it “does not believe that any term requires express construction.” Pet. 8. Patent Owner does not dispute this assertion. See generally Prelim. Resp. At this stage, we need not and do not construe expressly any claim language. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,281,953 - PTAB · Dec 12, 2024 · PGR2024-00039 · APJ Elizabeth M Roesel · PGR · Institution
The Board instituted PGR on claims 1–17, finding the Schröder obviousness challenge to claim 1 met the institution threshold; it did not reach the remaining challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“2. Discussion Part I of the Advanced Bionics framework asks whether the same or substantially the same art was previously presented to the Office or whether the same or substantially the same arguments were previously presented to the Office. Advanced Bionics, Paper 6 at 8.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the parties’ arguments and evidence, we determine that Petitioner’s showing for the printed circuit board of claim element 1[c], as summarized above, is sufficient for purposes of granting institution of a post-grant review. For purposes of institution, Petitioner’s contentions are adequately supported by Schröder, which describes inlay 12 as a “flexible carrier material, e.g. PET, Kapton, etc.” and a “carrier” for the antenna, chip module, and “at least one further electronic component,” as well as Schröder’s Figures 7 and 8, which depict inlay 12 between ring halves 16 and 18. Ex. 1007, 12:28–42, 12:48–52, 12:61–65, 13:23–25. We have considered Patent Owner’s argument that Schröder’s inlay 12 “is merely a substance for holding the coil in place, not a printed circuit board,” as well as Patent Owner’s argument contrasting Schröder’s description of inlay 12 with the express disclosure of “a circuit on a circuit board” elsewhere in the reference. Prelim. Resp. 29–30 (emphasis omitted; citing Ex. 1007, 8:57–59, 22:48–50; Ex. 20119). These arguments raise a serious issue about whether a POSITA would have understood Schröder’s inlay 12 as teaching a printed circuit board. This issue would benefit from further development at trial.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“E. Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSITA would have been familiar with sensor system design and signal processing. A higher level of education or skill can substitute for less experience, and vice versa. Ex. 1002 ¶ 29. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’702 Patent Specification and the asserted prior art references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.200(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute a post-grant review. Pet. 7; Prelim. Resp. 21.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,874,702 - PTAB · Dec 6, 2024 · IPR2024-00928 · APJ Neil T Powell · IPR · Institution
The Board instituted review of claims 1–5, 11–13, and 16–18 on all grounds, finding a reasonable likelihood that the LeBoeuf challenge to claim 1 would prevail.
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) (2024). 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 the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–5, 11–13, and 16–18 based on the grounds set forth in the Petition.” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerations › NexusNot reached
“For objective evidence of secondary considerations to be relevant, there must be a nexus between the merits of the claimed invention and the objective evidence.” Volvo Penta of the Americas, LLC v. Brunswick Corp., 81 F.4th 1202, 1210 (Fed. Cir. 2023). “A showing of nexus can be made in two ways: (1) via a presumption of nexus, or (2) via a showing that the evidence is a direct result of the unique characteristics of the claimed invention.” Id. slip op. at 16
§ 103 obviousnesscites PhillipsPatents in suitUS 9,582,034 - PTAB · Dec 6, 2024 · PGR2024-00030 · APJ Elizabeth M Roesel · PGR · Institution
Instituted PGR of claims 1–10 and 12–18; Petitioner met the institution threshold for claim 1 based on obviousness over Schröder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In applying § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or 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, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). We also consider the non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant part), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.” slip op. at 12
- Skill levelSkill level board ownOther
“Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSITA would have been familiar with sensor system design and signal experience, and vice versa. Ex. 1002 ¶ 21. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’178 Patent Specification and the asserted prior art references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.200(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute a post-grant review. Pet. 8; Prelim. Resp. 25.” slip op. at 17
- Expert testimonyPetitioner expert creditedOther
“Petitioner relies on Dr. Anthony’s testimony that a POSITA would have understood Figures 6–8 as showing a cavity as recited in claim 1 and the battery must be arranged within that cavity because “[o]therwise, if the battery did not fit within the ‘finger-ring,’ the ‘finger-ring’ either has (1) a battery that sticks out or is exposed to the environment or (2) a wired connection to power its components, which is contrary to the intent of having a portable, wearable device.” Ex. 1002 ¶ 166. Dr. Anthony opines that “[a] POSITA would have understood that the battery’s location within the cavity is the ‘first portion’ of the cavity because the battery necessarily occupies space in the cavity.” Id. ¶ 168. Such testimony, when viewed along with the rest of Petitioner’s showing, provides sufficient basis for institution.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,868,178 - PTAB · Oct 9, 2024 · IPR2024-00719 · APJ Elizabeth M Roesel · IPR · Institution
Instituted inter partes review of claims 1–64 based on the reasonable likelihood that the Nowka–Borkar combination renders the independent claims obvious.
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. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, we determine that the reasonable likelihood standard is met, and we institute inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that it is not necessary to provide an express construction for any claim term for purposes of deciding whether to institute review.” slip op. at 10
- Skill levelSkill level board ownOther
“Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a bachelor of science degree in electrical engineering, computer engineering, computer science, or a related field, and two years of experience in the research, design, development, or testing of electronic circuits or components or software for controlling electronic circuits or components, or the equivalent, with additional education substituting for experience and vice versa. Ex. 1003 ¶ 21. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’885 Patent Specification and the asserted prior art references.” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artInstituted
“A prior art reference is analogous and thus can be used in an obviousness combination if it ‘is from the same field of endeavor, regardless of the problem addressed’ or ‘is reasonably pertinent to the particular problem with which the inventor is involved,’ even if it is not within the inventor’s field of endeavor.” Tinnus Enterprises, LLC v. Telebrands Corp., 846 F.3d 1190, 1207 (Fed. Cir. 2017) (citing Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1000–01 (Fed. Cir. 2016); In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)). Here, the parties agree that the ’885 Patent’s field of endeavor is managing power on integrated circuits using power islands. Pet. 2; Prelim. Resp. 3–4 (citing Ex. 1001, 1:23–25). We agree with Petitioner that Borkar’s field of endeavor is power management of integrated circuits on a chip. Pet. 13; Ex. 1006, code (57), 1:8–18, 2:49–57. We also agree with Petitioner that Borkar’s power management solution involves “using distinct units on an integrated circuit whose power can be independently controlled,” i.e., “domains” in Borkar’s terminology and “power islands” in the terminology of the ’885 patent. Pet. 14–15, 25–27, 62; Ex. 1001, 3:59–62; Ex. 1006, 9:48–64, 10:30–42, 12:62–13:30, Figs. 5, 7. Patent Owner asserts that Borkar focuses on transistor body bias. Prelim. Resp. 5. In our view, however, Patent Owner’s characterization of Borkar’s field of endeavor is overly narrow. See Unwired Planet, 841 F.3d at 1001 (“The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.”). If Patent Owner raises a nonanalogous art argument at trial, then based upon the present record, it appears likely that Petitioner will succeed in arguing that Borkar is from the same field of endeavor as the ’885 Patent. In view of this preliminary finding, we do not need to consider whether Borkar is reasonably pertinent to the particular problem addressed by the ’885 Patent. See In re Asset Guard Prod., Inc., No. 2021-1902, 2022 WL 1097363, at *3 (Fed. Cir. Apr. 13, 2022) (A determination that a prior art reference is from the same field of endeavor as the challenged patent “is a slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,945,885 - PTAB · Sep 27, 2024 · IPR2024-00600 · APJ John F Horvath · IPR · Institution
Instituted IPR on claims 1–18 over all grounds raised, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“On the record before us, we construe “power island” to mean “any section, delineation, partition, or division of an integrated circuit where power consumption is controlled within the section, delineation, partition, or division,” which is the express definition provided in the Specification. Ex. 1001, 3:65–4:1; see also Philips, 415 F.3d at 1316 (“[T]he specification may reveal a special definition given to a claim term by the patentee. . . . In such cases, the inventor’s lexicography governs.”). Our construction is consistent with claim 1, considered as a whole, which does not require a power island to be “independently” controlled. See Ex. 1001, 13:10–21. Instead, it requires a power manager “to dynamically change power consumptions of the plurality of power islands.” Id. at 13:10–16. That is, it allows a single power manager to control a plurality of power islands. See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (“This court has repeatedly emphasized that an” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the time of the invention as someone that “would have had at least a bachelor of science degree in electrical or computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, or testing of electronic circuits or components, or software for controlling electronic circuits or components, or equivalent, with additional education substituting for experience and vice-versa.” Pet. 5–6 (citing Ex. 1003 ¶ 24). Patent Owner does not dispute this definition; nor does Patent Owner offer an alternative definition. Prelim. Resp. 1–63. “[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). At this stage of the proceeding, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Accordingly, for purposes of this Decision, we adopt Petitioner’s description as our own.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon consideration of the Petition and Preliminary Response, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’077 patent. Accordingly, we institute inter partes review of all challenged claims on all grounds raised.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner further contends that a POSITA would have found it obvious to modify device 200 in Takahashi’s Figure 16 to include multiple power islands coupled to multiple sleep circuits based on Takahashi’s Figure 10 embodiment, which illustrates transistors 310–380 (sleep circuits) controlling the power consumption of functional circuits 210–280 (power islands). Id. at 27–28 (citing Ex. 1004, ¶¶ 90, 91, 94, Fig. 10; Ex. 1003 ¶¶ 123–125).6 Petitioner contends a POSITA would have “found it obvious to incorporate such additional power islands” in device 200 shown in Figure 16 in order to “provide additional functionality (e.g. memory) and control power consumption in additional power islands using the ‘voltage regulator 10’ and additional ‘switching circuits.’” Id. at 13 (citing Ex. 1003 ¶¶ 92– 95). At this stage of the proceeding, we determine Petitioner has set forth an adequate reason to combine. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[t]he combination of familiar elements according to known methods is likely to be obvious when it does not more than yield predictable results.”).” slip op. at 15
Claim construction§ 103 obviousnesscites MarkmanPatents in suitUS 8,854,077 - PTAB · Sep 26, 2024 · IPR2024-00598 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted inter partes review of claims 1–51, finding a reasonable likelihood that claims 1, 16, and 37 are obvious over Nowka.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, we determine that the reasonable likelihood standard is met, and we institute inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“After considering the parties’ arguments and evidence, we do not adopt Patent Owner’s proposed construction. We see no support in the ’306 Patent for limiting “needs and operation,” as recited in the claims, to “future operational needs and current operating status,” as in Patent Owner’s proposed construction. Our analysis begins with the claims themselves. Claim 1 recites “determining a target power level for one of the power islands based on needs and operation of the integrated circuit.” Ex. 1001, 13:36–38. Claims 16 and 37 contain similar language. Id. at 14:25–27, 15:25–27. We see no support in the claim language for limiting “needs and operation” to “future operational needs and current operating status,” as in Patent Owner’s proposed construction. We next turn to the Specification, where the phrase, “needs and operation of the integrated circuit” appears twice. First, when describing prior integrated circuits, the ’306 Patent states that “[t]he voltages and the frequencies do not dynamically change based on the needs and operation of the integrated circuit.” Ex. 1001, 2:14–16. Second, when describing an embodiment, the ’306 Patent discloses, “The power manager . . . can dynamically change the power consumption of the power islands . . . based on the needs and operation of the integrated circuit . . . . The target power level is a desired, calculated, or specified power consumption of the power islands.” Id. at 4:28–33. We see no support in these passages for limiting “needs and operation” to “future operational needs and current operating status,” as in Patent Owner’s proposed construction.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter 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 based on 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 ordinary skill in the art; and (4) when presented, objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,051,306 - PTAB · Sep 25, 2024 · IPR2024-00599 · APJ Ken B Barrett · IPR · Institution
Instituted IPR of claims 1–11, 23, 24, and 31–35 on all asserted grounds after 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
“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) (2018). 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 ’563 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’563 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Other 314aDenied
“II. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a) Patent Owner asserts that we should discretionarily deny institution under 35 U.S.C. §314(a), arguing that “the Petition here presents excessive grounds of questionable merit.” Prelim. Resp. 62 (citing Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 41–43 (Jan. 24, 2019) (informative); see also Prelim. Resp. 63 (Patent Owner arguing that “[c]ompounding this problem is the Petition’s improper incorporation by reference of large sections of the Min Declaration and the nearly verbatim language shared between the two.”). In Chevon Oronite and Deeper, the petitioners had demonstrated a likelihood of prevailing only as to two claims out of several challenged, and the Board determined that instituting a trial would not be an efficient use of the Board’s time and resources. See Chevron Oronite, IPR2018-00923, Paper 9 at 10–11 (“Petitioner demonstrates, at most, a reasonable likelihood of prevailing with respect to two dependent claims out of a total of twenty challenged claims.”); Deeper, UAB, IPR2018-01310, Paper 7 at 43 (“On this record, and based on the particular facts of this proceeding, instituting a trial with respect to all twenty-three claims and on all four grounds based on evidence and arguments directed to only two claims and one ground would not be an efficient use of the Board’s time and resources.”). In contrast, we, for the reasons discussed below, determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to all of the challenged claims. We decline to exercise discretion to deny institution under § 314(a) for the reasons argued by Patent Owner.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“POSITA”) would have had at least a bachelor of science degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, or testing of electronic circuits or components or software for controlling electronic circuits or components, or the equivalent, with additional education substituting for experience and vice versa. Pet. 5–6 (citing Ex. 1003 ¶ 24). Patent Owner asserts, without citation: [F]or the purposes of this proceeding, a POSITA would have at least [a] bachelors of science degree in electrical engineering or computer engineering and at least two years of clock network design and/or power management design for processors or large system-on-chip (“SoC”) integrated circuits (“ICs”). Prelim. Resp. 4–5. Both parties contend that the ordinary artisan would have had two years of experience, with Patent Owner’s proposal in that regard being somewhat more specific than Petitioner’s. However, we do not see any meaningful distinction between the parties’ definitions of the person of ordinary skill in the art. For purposes of this decision, we apply Petitioner’s definition, which 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). We note, however, that were we to apply Patent Owner’s definition, the outcome of this decision would be the same.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for patent owner
“To the extent that Patent Owner argues for a construction narrowing the meaning of “appropriate frequency” beyond that adopted by the District Court, we decline to adopt a narrower construction at this time. We also note that some of the concepts mentioned by Patent Owner are not consistent with the language of the District Court’s construction or, for example, method claim 1.5 For example, the reference to fluctuations in voltage implies multiple voltage readings; however, the method of claim 1 calls for the step of “sensing a delivered voltage,” which need only be performed once. See Ex. 1001, 7:22–23; see also id. at 7:28–30 (dependent claim 2 further limiting claim 1 by requiring the “sensing . . . [to be] continuously repeated during the integrated circuit's operation.”). Also, Patent Owner’s and the District Court’s construction contains the phrase, “at or below a maximum frequency possible.” Limiting the “appropriate frequency” to the optimal or to the “highest possible” frequency seemingly would be at odds with this broad range of possible frequencies. See Ex. 1001, 7:31–33 (dependent claim 3 further limiting the “appropriate frequency” of claim 1 to “a maximum frequency possible for the portion of the integrated circuit at the delivered voltage”). The District Court’s claim construction order states that “Defendants cite testimony of Plaintiff’s expert that the scope of ‘appropriate frequency’ encompasses everything from the maximum possible frequency all the way down to a frequency at which the circuit ceases to operate.” Ex. 2009, 14. That testimony, if applicable to the District Court’s construction (and it appears that it is), suggests that the claims encompass the presumably non-optimal” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,224,563 - PTAB · Sep 18, 2024 · IPR2024-00603 · APJ Sheldon M Mcgee · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on claim 1 over Honermann and Cline.
RulingsInstitution decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Pet. 5–6 (citing Ex. 1003 ¶ 50). Petitioner further states “that more education could compensate for less experience and vice versa.” Id. at 6. Petitioner’s position is, therefore, consistent with Patent Owner’s proffered level of skill in the art which reflects less education and more experience in substantially the same fields. Specifically, Patent Owner asserts that such a skilled artisan “would have at least a bachelor’s degree in mechanical or automotive engineering and/or five or more years of experience in the automotive industry designing, developing, testing, and engineering automotive components or practical experience servicing, assembling, repairing, and/or developing internal combustion engines and/or engine oil filters.” Prelim. Resp. 4. On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Patent Owner’s definition because it is consistent with the disclosures of the asserted prior art references. We note, however, that we would reach the same conclusion under either parties’ definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that all non-“means” terms in the challenged claims should be afforded their plain and ordinary meaning, and that the “means” limitations recited in claims 1 and 15 should not be construed as means-plus- function terms pursuant to 35 U.S.C. § 112(6). Pet. 7. According to Petitioner, claims 1 and 15 include additional limitations that denote structure for those “means” limitations and furthermore do not recite a function corresponding to the recited means. Id. Patent Owner asserts that “the Board need not make a determination on claim construction in assessing whether to institute” trial. Prelim. Resp. 5. After review of the preliminary record, we determine that no claim terms require an express construction for purposes of institution. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“2. Advanced Bionics Prong One: whether “the same or substantially the same art or arguments previously were presented to the Office” As Petitioner acknowledges, a Japanese-language version of Yokoyama was cited in an IDS without an English translation. Pet. 19; Ex. 1002, 34 (indicating that an English translation was not provided by virtue of the absence of a checkmark in the “T” column on the far right of the PTO/SB/08a form).4 The Yokoyama reference relied on in the Petition (Ex. 1008) however, includes an English language translation of the text in 4 It is also not readily apparent that Patent Owner complied fully with the “Content Requirements for an Information Disclosure Statement” as set forth in MPEP § 609 in its IDS submission dated March 30, 2015. Specifically, § 609.04(a)(III) states that “[e]ach information disclosure statement must further include a concise explanation of the relevance . . . of the information listed that is not in the English language.” (italicized emphasis added, underlining in original); see also § 609.01 B.3 (stating this requirement). It does not appear that any concise explanation was filed with respect to either Japanese reference filed in the IDS. See Ex. 1002, 13–38 (IDS documents pertaining to Yokoyama reference); Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1376 (Fed. Cir. 2000) (“[A]lthough MPEP Section 609[] allows the applicant some discretion in the manner in which it phrases its concise explanation, it nowhere authorizes the applicant to intentionally omit altogether key teachings of the reference.”). addition to the Drawings that also appear in the untranslated Japanese-language version of Yokoyama submitted during prosecution. Compare Ex. 1007 (containing Japanese text with Figures 1–7c), with Ex. 1008 (containing English text along with Figures 1–7c). As such, the Yokoyama reference relied on in the Petition––being in English––contains roughly ten pages of more readily discernible information than the Japanese-language version of this reference submitted during prosecution. Significantly, Petitioner relies on textual disclosure in the English-translated version of Yokoyama in its challenges. Pet. 28–51, 54, 58, 59 (citing Ex. 1008 repeatedly). Such English-translated disclosure was not previously before the Examiner. Ex. 1002, 13–38. In view of this additional disclosure before us in English, i.e., disclosure that was not presented previously to the Office, we find that the English translated version of Yokoyama relied on here (Ex. 1008) is not “the same or substantially the same art” that was previously presented to the Office (Ex. 1007).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionary denial, we must also consider whether the Petition presents compelling merits. IPR2022-01242, Paper 23 at 4–5. As set forth above, we have considered the circumstances and facts before us in view of Fintiv factors 1–5, and determine that: Factor 1 is neutral, Factor 2 weighs heavily against discretionary denial, Factor 3 is neutral, Factor 4 weighs against discretionary denial, and Factor 5 weighs in favor of discretionary denial. Factors 1–5, considered as a whole, collectively weigh against exercising discretion to deny institution. As such, we need not undertake a “compelling merits” analysis as set forth under CommScope. The Merits Even though we do not consider here whether the merits are “compelling,” we do consider the merits of the Petition under Fintiv factor 6. As set forth below, we determine that Petitioner has satisfied the reasonable likelihood standard for purposes of institution. Such satisfaction weighs further against discretionary denial of the Petition.” slip op. at 19
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 9,023,203
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.