- PTAB · Jun 21, 2024 · IPR2024-00338 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 1–6 and 9–16 on all asserted challenges, finding a reasonable likelihood that Samsung would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “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(a) (2018). 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
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“1. GENERAL PRINCIPLES “Whether a reference qualifies as a printed publication under § 102 is a legal conclusion based on underlying fact findings.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018). In an inter partes review, a petitioner has “the burden to prove” that a reference “is a printed publication.” Id.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“combined throughput and latency guarantee (GT), or be best effort (BE), with an unspecified finite latency upper bound,” an ordinarily skilled artisan would have understood that one channel is “independently configurable” for “a combined throughput and latency guarantee (GT)” and that another channel is “independently configurable” for “best effort (BE), with an unspecified finite latency upper bound.” Ex. 1003 ¶ 103; Ex. 1005, 3. Petitioner quotes that disclosure in Goossens2002 when explaining what an ordinarily skilled artisan would have understood. Pet. 28 (quoting Ex. 1005, 3). Accordingly, we disagree with Patent Owner that Petitioner provides “no explanation” why an ordinarily skilled artisan would have” slip op. at 44
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,373,449 - Samsung Electronics Co., Ltd. v. Network System Technologies, LLCInstitution deniedPTAB · Jun 20, 2024 · IPR2024-00339 · APJ John R Kenny · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claim 12 was obvious over any of the four asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to claim 12. See 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine that the Petition has not met this standard and do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“E. Level of Skill in the Art Petitioner argues that at the time of the alleged invention an ordinarily skilled artisan would have had at least a Bachelor’s degree in computer science, electrical engineering, computer engineering, or an equivalent technical degree, and two or more years of experience with system-on-chip, interconnect, or networking technologies. Pet. 8. Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. After reviewing the record, we adopt Petitioner’s definition for the level of skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. CLAIM CONSTRUCTION AND THE DISTRICT COURT’S DETERMINATION OF INDEFINITENESS Neither party requests that we construe the optimal moment limitation. Pet. 8–9; Prelim. Resp. 25–28. Further, we see no need to construe this limitation sua sponte. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). For background, however, we address the claim” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“optimal moment limitation is subjective (and repeating that assertion in its Petition), Petitioner provides no explanation of why Bahadiroglu’s use of that term would have a meaning falling within the scope of the subjective meaning for that term in claim 12. Pet. 28–31 & n.4; Prelim. Reply 3–5. Petitioner has not explained what that subjective meaning of optimal is in the ’800 patent’s claims or why that term as used in Bahadiroglu would satisfy that subjective meaning in the ’800 patent’s claims. Pet. 28–31; Prelim. Reply 3–5. Thus, Petitioner’s showing is insufficient. Second, Petitioner has not explained why the disclosure of an optimal interval teaches or suggests transmission at an optimal time. Pet. 28–31. Spacing transmissions apart by an optimal interval would not inherently result in transmissions being performed at the optimal times. The optimal interval could involve transmissions that are not at the optimal times (when time is viewed by itself), and transmissions at the optimal times may not have the optimal interval separating them. We recognize that it is possible that in some, or many, cases an optimal interval would teach or at least suggest transmissions at optimal times. Petitioner, however, has not explained why it does in this case. Id.” slip op. at 15
Claim construction§ 103 obviousnessPatents in suitUS 8,086,800 - Qualcomm Incorporated / Samsung Electronics Co., Ltd. v. Network System Technologies, LLCInstitution deniedPTAB · Jun 17, 2024 · IPR2024-00355 · APJ Steven M Amundson · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to institute an inter partes review. We may institute an inter partes review only if “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(a) (2018). 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 › Fintiv (parallel litigation)Not reached
“Based on Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), Patent Owner argues that we should exercise our discretion under § 314(a) to deny institution in view of the Samsung litigation and the Qualcomm litigation. See Prelim. Resp. 10–22; supra § II.B. Petitioner argues that we should decline to exercise our discretion under § 314(a) to deny institution. See Pet. 82–84. For the reasons explained below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in proving the unpatentability of at least one claim challenged in the Petition. See infra §§ IV.E–IV.I. Hence, we do not consider discretionary denial under § 314(a).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of analysis, we adopt Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’893 patent as well as the asserted prior art. For instance, “a master’s degree” and “three years of work experience” would have allowed someone to understand the ’893 patent as well as the asserted prior art. See Ex. 1003 ¶ 32. Moreover, someone with a higher skill level will understand the technology at least as well as someone with a lower skill level. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011); Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011). Hence, “it is generally easier to establish obviousness under a higher level of ordinary skill.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012). We note that our analysis would not change if we adopted Patent Owner’s description of an ordinarily skilled artisan.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“for “each data package comprising N data elements” is “significantly broader” than Petitioner’s proposed construction. See Pet. 9–10; Ex. 1026, 25; Ex. 1027 ¶ 164; Ex. 2034, 26. To decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial, we must determine the meaning of “each data package comprising N data elements.” Based on the current record, we agree with Petitioner that “each data package comprising N data elements” means “every data package communicated by the network stations has a fixed size of N data elements.”” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,072,893 - Xu Peicheng (Hong Kong) Optoelectronic Technology Co., Limited v. Semisilicon Technology Corp.InstitutedPTAB · May 20, 2024 · IPR2024-00156 · APJ Elizabeth J Reagan · IPR · Institution
The Board instituted IPR on claims 1–6 and 8 under all asserted grounds after finding a reasonable likelihood that petitioner would prevail on at least claim 1 over Kuang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is statutorily authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). We determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’546 patent. Accordingly, we institute an inter partes review of claims 1–6 and 8 of the ’546 patent.” slip op. at 2
- BurdenDecided for petitioner
“denied because of the Petition’s improper reliance on the general knowledge of a person of ordinary skill in the art (i.e., contentions (1), (2), and (3) above), we have considered these arguments. However, we preliminarily determine, as discussed below, that certain of the cited prior art teaches all limitations of at least some of the claims. Therefore, reliance on the knowledge of a person of ordinary skill in the art is not required to supply any missing claim limitation(s) in at least one of the grounds. Accordingly, we need not expressly address these contentions of Patent Owner at this stage for purposes of our decision to institute trial. However, we invite the parties to provide further briefing on these issues during the course of the trial. With regard to Patent Owner’s contention that the Petition should be denied because the Schubert Declaration entirely repeats the Petition, and the Petition and Schubert Declaration include only conclusory statements of obviousness (contention (4) above), see Prelim. Resp. 20–24, we note that “[v]erbatim duplication between a brief and a declaration does not require giving the declarant’s testimony ‘little or no weight’ under Xerox,” provided that the testimony itself is sufficiently supported. Netflix, Inc. v. GoTV Streaming, LLC, IPR2023-00757, Paper 11 at 67 (PTAB Nov. 7, 2023) (emphasis added) (discussing Xerox Corp. v. Bytemark, Inc., IPR2022- 00624, Paper 9 at 15 (PTAB Aug. 24, 2022)) (precedential); Hum Indus. Tech., Inc. v. Amsted Rail Co., IPR2023-00540, Paper 10 at 37 (PTAB Aug. 11, 2023) (“If declaration testimony is supported sufficiently and, in turn, supports contentions in the Petition, we do not give it little to no weight simply because it is repeated in the Petition”). Here, we agree with Patent Owner that Dr. Schubert’s testimony closely mirrors the language in the Petition. Nevertheless, on the record before us, we find that the support, including, for example, prior art citations and/or technical reasoning, provided in the declaration and repeated in the Petition is sufficient for demonstrating a reasonable likelihood that Petitioner would prevail in its challenge to at least one of the claims under at least one of the grounds. While expert testimony that mirrors the language of the petition, without more, may provide little help to the Board, we have evaluated the Schubert Declaration to determine the amount of weight attributable to the testimony therein at this stage of the proceeding, based on the support provided for the testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the Schubert Declaration, Petitioner proposes that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and 6 years of practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or “[a]lternatively . . . would have had a master’s degree and four years of experience, or a Ph.D. degree and two years of experience.” Pet. 5 (citing Ex. 1003 ¶ 31). At this stage of the proceeding, Patent Owner does not contest Petitioner’s proposed definition of the ordinarily skilled artisan. See generally Prelim. Resp.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe terms in controversy only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For purposes of this Decision, and based on the current record, we determine that no claim term requires express construction at this stage of the proceeding, with the exception of the term “synchronous signals” in limitation 1[D], which requires interpretation to the extent necessary to assess the merits of the parties’ assertions. The Specification does not expressly define “synchronous signals.” See generally Ex. 1001. Petitioner proposes a definition of “synchronous signals” based on how “a POSITA would have understood the term,” as: “signals that are sent to the slave nodes to control their corresponding LED strings at the same time.” Pet. 16–17. Patent Owner argues that there is no support for Petitioner’s definition of “synchronous signals,” but Patent Owner does not propose an express construction of the term. See Prelim. Resp. 21–23, 25–26. In the discussion on the merits below, we discuss the interpretation of the term “synchronous signals.” See infra Sec. III.D.2.a.v. As noted below, we invite the parties to present briefing on the interpretation of this term during trial.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,884,546 - Xu Peicheng (Hong Kong) Optoelectronic Technology Co., Limited v. Semisilicon Technology Corp.Institution deniedPTAB · May 20, 2024 · IPR2024-00157 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, including the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“§ 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, Preliminary Response, and all supporting evidence, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art as of the filing date of the application for the ’988 patent “would have had a bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and 6 years of practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or “[a]lternatively . . . would have had a master’s degree and four years of experience, or a Ph.D. degree and two years of experience.” Pet. 5 (citing Ex. 1003 ¶ 32). Patent Owner does not contest Petitioner’s contention with regard to the level of skill. See generally Prelim. Resp. To the extent necessary for purposes of this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner as it appears consistent with the prior art before us in this proceeding.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“this limitation. Nonetheless, we find a close question as to whether Petitioner has made a sufficient showing with respect to this limitation, as the only evidence Petitioner cites in support of its argument that “[t]he term GND is often used interchangeably with the term VSS, which refers to negative voltage” (Pet. 8) is an identical, unsupported assertion in Dr. Schubert’s Declaration (Ex. 1003 ¶ 38) to which we accord little or no weight. See 37 C.F.R. § 42.65 (“(a) Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Because we determine below that Petitioner has not made a sufficient showing with regard to limitations 1[E] and 1[H] (see infra” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Having considered the parties’ respective arguments and the evidence of record, we agree with Patent Owner that Petitioner has failed to make a sufficient showing with respect to limitations 1[E] and 1[H]. As Patent Owner points out, the Petition effectively concedes that there is a structural difference between pins, as disclosed by Lai, and pads, as recited in claim 1, and Petitioner does not reconcile this difference or explain why a person of ordinary skill in the art would have been motivated to modify Lai’s disclosure and use pads rather than the pins Lai discloses. Prelim. Resp. 31. Even if pins and pads may both be types of terminals, claim 1 specifically recites pads, not terminals, and Petitioner has not persuasively shown that a person of ordinary skill in the art would regard pins and pads as interchangeable or that pads would otherwise be suggested by Lai’s disclosure of pins. Further, as Patent Owner also points out, Petitioner’s inclusion of “general knowledge of a POSITA” in the asserted ground is unavailing knowledge” is to be brought to bear on the combination and has instead “left it to Patent Owner and the Board to speculate on which of the features of the asserted art differs from the claims and how the asserted art or its teaching would have been modified.” Prelim. Resp. 13–14. Although general knowledge of a person of ordinary skill in the art may, under certain circumstances, be relied upon to supply a missing claim limitation (see, e.g., Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1337–38 (Fed. Cir. 2020)), such reliance is improper where, as here, it is based merely upon “conclusory statements and unspecific expert testimony” (id. (quoting Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1366 (Fed. Cir. 2016))).” slip op. at 19
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,124,988 - PTAB · May 8, 2024 · IPR2024-00175 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–17 and all petition grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 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 grounds raised in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Biswas and Kumar. Patent Owner focuses on specific details of the packet classification system of Kumar, whereas Petitioner relies on the combination of Biswas and Kumar. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). “The test for obviousness is not whether the 6 “Minoli Decl.” refers to the Declaration of Daniel Minoli, filed by Patent Owner in support of its Preliminary Response. Ex. 2001. 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 at 425; In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). At this stage, we are persuaded by Petitioner’s declarant’s testimony that one of ordinary skill would have known to use the masking techniques exemplified by Kumar to implement the disclosed operation in Biswas of edge routers providing hosts with port number ranges. Bhattacharjee Decl. ¶¶ 77, 97–101. Accordingly, for purposes of this Decision, we accept Partitioner’s proffered combination of Biswas and Kumar.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In regard to the reexamination proceedings that Patent Owner relies on, however, the current record presents circumstances not well suited for the Becton Dickinson factors. Here, the reexamination is in its early stages, and no office action has issued. It is premature to characterize the reexamination grounds as “previously presented,” or to evaluate whether the Office erred in a manner material to the patentability of challenged claims. See, e.g., Mueller Sys., LLC v. Rein Tech, Inc., IPR2020-00099, Paper 9, 10– 14 (PTAB May 12, 2020) (holding that §325(d) did not apply to prior art submitted in pending reexamination that had not yet resulted in an office action). Moreover, the Examiner’s determination in the January 18, 2024 grant of the reexamination request is consistent with Petitioner’s arguments here, in that it found substantial new questions of patentability with respect to both a Biswas patent asserted to be similar to the Biswas patent asserted here, and Fangman, also asserted here. Ex. 2008, 20. Therefore, there is little basis to predict that, in the further course of the reexamination proceedings, the Office will have erred in a manner material to the patentability of challenged claims. Also, the finding of substantial new questions of patentability supports a determination that the Office was not “previously” presented with the same art or arguments as in the Petition because the Examiner determined that arguably similar (the reexamination Biswas patent) and identical (the Fangman patent) references presented new questions of patentability. See Mueller, IPR2020-00100, Paper 9, 10. We note that the Office has advised that “[t]he Board . . . may deny institution under 35 U.S.C. [§] 325(d) of a requested AIA trial proceeding if a parallel Office proceeding, for example, is in a more advanced stage and involves overlapping issues with the proposed AIA trial proceeding.” Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding, 84 Fed. Reg. 16,654, 16,657 (Apr. 22, 2019). The Examiner in the reexamination proceeding at issue here has found that the art presented there is “substantially the same prior art” as Petitioner asserted in this IPR. Ex. 2008, 20. As stated above, both proceedings rely on Fangman, and the two Biswas references are similar. The early stage of the reexamination proceeding, however, weighs against denying institution. See Mueller, IPR2020-00100, Paper 9, 13. In addition, unlike this proceeding, the reexamination does not involve consideration of the teachings of Kumar, which as discussed above is critical to the question of obviousness of using a mask to define a range of port numbers. After weighing all the considerations discussed above, we determine” slip op. at 27
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“Patent Owner also argues that the fact that Unified Patents submitted the reexamination request presents a real party in interest issue that is an additional reason to deny institution. Prelim. Resp. 46–48. However, the present record does not present facts that would support this argument.” slip op. at 29
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,693,369 - Whatfix Inc. v. Walkme Ltd.InstitutedPTAB · Apr 1, 2024 · IPR2024-00065 · APJ Charles J Boudreau · IPR · Institution
Instituted IPR on claims 1–20 over all asserted grounds because Petitioner showed a reasonable likelihood of prevailing on claim 1 over Allen.
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) (2023). Institution of an inter partes review requires that “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 set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a “person of ordinary skill in the art (‘POSITA’) in the field of the ’317 patent would have [had a] bachelor’s degree in engineering or computer science and two years of experience working on NLP [natural language processing] or automation processes” or “[a]lternatively . . . would have [had] five to six years of experience working on NLP or automation processes.” Pet. 6 (citing Ex. 1003 ¶¶ 45–47). We find Petitioner’s proposal is consistent with the evidence of record, including the asserted prior art and the ’317 patent, and, therefore, we adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that it “does not believe any terms require a formal construction” “[f]or purposes of this Petition.” Pet. 6. After reviewing Petitioner’s arguments and evidence, we determine that we do not need to expressly construe any term to resolve any controversy at this stage of the proceeding.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing data of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” 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 obviousness or nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966).” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,558,317 - Whatfix Inc. v. Walkme Ltd.InstitutedPTAB · Mar 20, 2024 · IPR2023-01368 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on claims 1–9, 12–16, 18–23, 25, 26, 28–31, and 33 on all asserted grounds, finding a reasonable likelihood that claim 1 is unpatentable over Allen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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)); see also Intelligent Bio-Sys., 821 F.3d at 1369. Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art (“POSITA”) “would have a bachelor’s degree in engineering or computer science and two years of experience working on NLP [natural language processing] and automation processes. Alternatively, a POSITA would have five to six years of experience working on NLP and automation processes.” Pet. 5–6 (citing Ex. 1003 ¶¶ 50–52). We find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record, and, therefore, we adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “does not believe any terms require a formal construction.” Pet. 6. At this stage of the proceeding, only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). After reviewing the Petitioner’s arguments and evidence, we determine that we do not need to expressly construe any term for purposes of this Decision.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“d) 1[c]: “determining, based on the first and second natural language inputs from the user, an automation process configured to perform an automation of a sequence of interactions with a displayed user interface of a computer program and to simulate user interactions with the displayed user interface of the computer program,” Petitioner argues in the example in Allen, the user requests to buy a book and provides its title (i.e., the first and second natural language inputs from the user, see limitation 1[b] above), and the system “then perform[s] the steps it was previously taught and complete[s] the transaction.” Pet. 38– 39 (quoting Ex. 1014, 12:66–13:1) (citing Ex. 1003 ¶¶ 156–157). According to Petitioner, “[i]if the user instead requests a search for hotels, the system would perform a different automat[i]on process.” Id. at 39 (citing Ex. 1004, 16:33–40; Ex. 1003 ¶ 158). Petitioner contends that Allen performs an “automation of a sequence of interactions,” i.e., “‘[t]he system then learns to automatically execute steps by observing the user’s actions and analyzing the verbal instructions the user provides.’” Id. (citing Ex. 1003 ¶ 159; Ex. 1014, 6:61–65). Petitioner contends that these steps are learned by observing the user’s interactions with a displayed user interface of a computer program, and performing the steps it was previously taught means that the system simulates user interactions with the displayed user interface. Id. (citing Ex. 1014, 12:11–61; Ex. 1003 ¶¶ 160–163). However, Petitioner contends, to the extent that Allen does not disclose performing an automation of a sequence of interactions with a displayed user interface and simulating user interactions with the displayed user interface, it would have been obvious “that in order for the user to easily monitor the system’s actions, the system’s actions would have to be displayed.” Id. at 39–40 (citing Ex. 1014, 4:66–5:1; Ex. 1003 ¶ 164). Based on our review and consideration of the current record, we determine that Petitioner has sufficiently shown that Allen teaches limitation 1[c] for purposes of institution.” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,819,664 - Whatfix Inc. v. Walkme Ltd.InstitutedPTAB · Mar 20, 2024 · IPR2023-01379 · APJ Charles J Boudreau · IPR · Institution
The Board instituted IPR on claims 1–6, 9–16, and 18–21 on all asserted grounds, finding a reasonable likelihood that claim 1 would be unpatentable over Allen.
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) (2023). Institution of an inter partes review requires that “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 set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a “person of ordinary skill in the art (POSITA) in the field of the ’732 patent in 2017 would have [had a] bachelor’s degree in engineering or computer science and two years of experience working on NLP [natural language processing] or automation processes” or “[a]lternatively . . . would have [had] five to six years of experience working on NLP or automation processes.” Pet. 5–6 (citing Ex. 1003 ¶¶ 45–47). We find Petitioner’s proposal is consistent with the evidence of record, including the asserted prior art and the ’732 patent, and, therefore, we adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In an inter partes review, we apply the same claim construction 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 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))). Petitioner states that it “does not believe any terms require a formal construction” “[f]or purposes of this Petition.” Pet. 6. After reviewing Petitioner’s arguments and evidence, we determine that we do not need to expressly construe any term to resolve any controversy at this stage of the proceeding.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“‘[f]or each step a user teaches the system, the system attempts to recognize the user’s intent. The system then learns to automatically execute steps by observing the user’s actions and analyzing the verbal instructions the user provides.’” Pet. 40 (quoting Ex. 1014, 6:61–65). More particularly, Petitioner contends: The system learns how to execute the steps in the automation process of buying a book by observing a sequence of user interactions with a displayed UI of a computer program, such as inputting the title in the title entry box 30, navigating to an online vendor site, pulling down and selecting the “Books” category, picking and inputting data in the text entry box 58, actuating the “GO” button, opening a specific book page, identifying the book price, and entering the book price on the purchase form. (EX1014, 12:11-61; EX1003, ¶¶157-158.) The steps execute a functionality of the computer program, such as visiting online websites. (Id., ¶158.) Since the system learns how the user interacts with the displayed UI of the computer program, performing the steps it was previously taught means the program to simulate sequence of interactions. (Id., ¶159.) Id. at 40–41. Further, Petitioner argues, “[a]fter the chatbot is provided with the value for the parameters, it utilizes the values in the automation process of buying a book.” Id. at 41 (citing id. at 38–40 (arguments regarding limitation 1[a]); Ex. 1003 ¶ 160). Accordingly, Petitioner contends, Allen’s automation process is “a parameterized automation process having a parameter.” Id. Still further, Petitioner contends, “[t]o the extent that Allen does not disclose performing an automation of a sequence of interactions with a displayed UI of the computer program and simulating user interactions with the displayed UI, it would have been obvious,” citing disclosure in Allen that a “graphical user interface (‘GUI’) is preferably provided so that the user can easily monitor [the system’s] actions.” Pet. 41 (quoting Ex. 1014, 4:66-5:1 (emphasis added)). According to Petitioner, “[i]t would have been obvious that in order for the user to easily monitor the system’s actions, the system’s actions have to be displayed,” and “[a]s a result, the system’s actions (simulated user interactions) are with a displayed UI.” Id. at 41–42 (citing Ex. 1003 ¶ 161). Based on our review and consideration of the current record, we determine that Petitioner has sufficiently shown that Allen teaches limitation 1[c] for purposes of institution.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,258,732 - Whatfix Inc. v. Walkme Ltd.Institution deniedPTAB · Mar 20, 2024 · IPR2023-01443 · APJ Kara L Szpondowski · IPR · Institution
The Board denied institution of review of claims 10 and 24 under § 314(a), finding Petitioner had not justified filing a second petition.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“The Consolidated Trial Practice Guide provides that “multiple petitions by a petitioner are not necessary in the vast majority of cases,” but acknowledges that “there may be circumstances in which more than one petition is necessary, including, for example, when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” CTPG 59. The CTPG characterizes such circumstances as “rare.” Id.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“For the foregoing reasons, Petitioner has not sufficiently justified the need for two petitions against the ’664 patent. In light of the totality of the circumstances, including that we are concurrently instituting review in IPR2023-01368 for all claims challenged in that proceeding, we exercise our discretion to decline institution in this proceeding. 35 U.S.C. § 314(a). IV. CONCLUSION Pursuant to 35 U.S.C. § 314(a), we exercise our discretion to decline to institute this proceeding. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 14
Discretionary denialPatents in suitUS 10,819,664
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.