- 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 - Mediatek, Inc. v. Mosaid Technologies Inc.Institution deniedPTAB · Oct 9, 2024 · IPR2024-00718 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of prevailing on any challenged claim under the Nowka- or Nicol-based obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- BurdenDecided for patent owner
“The dispute here requires a determination of the meaning of “adapted to be independently controlled.” This was a foreseeable issue. Neither party, however, provides us with an adequate claim construction analysis from which to make that determination. As Patent Owner notes, Petitioner bears a burden in this regard—a petition must set forth “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable [under the petitioner’s ground].” 37 C.F.R. § 42.104(b)(3)–(4). We understand Petitioner to contend that Nowka’s disclosure of separately supplied constant/persistent voltages reads on the recitation “adapted to be independently controlled.” See Pet. 16 (“These domains further have power consumptions adapted to be independently controlled because they receive separate voltage supplies which can be independently controlled.”). However, Petitioner’s contention is conclusory and does not adequately or persuasively explain why a person of ordinary skill in the art reading the claim in light of the Specification would have that understanding. See id. at 15–16. Petitioner describes the ’811 patent as indicating that a problem in the prior art was that “the voltages in the power island and the frequencies of the multiple clocks are static; [t]he voltages and frequencies do not dynamically change based on the needs and operation of the integrated circuit.” Id. at 3 (quoting Ex. 1001, 2:21–27) (alteration in original; internal quotations omitted). Petitioner characterizes the ’811 patent as proposing, as a purported solution to the prior art’s problem, “managing the power consumption of an integrated circuit (‘IC’) using power islands whose power consumption is independently controlled.” Id. (citing Ex. 1001, code (57) (Abstract), 2:31–34; Ex. 1003 ¶ 37). Petitioner does not explain adequately why, in light of that, a person of ordinary skill in the art would understand Nowka’s persistent or constant voltage domains, whose voltages are not dynamically changed, satisfy the limitation directed to power islands whose power consumption is independently controlled.” slip op. at 19
- Skill levelSkill level board ownDecided for patent owner
“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 Specification of the ’811 Patent and the asserted prior art references.” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The paragraph of Dr. Rosing’s declaration cited by Petitioner as support for its contention that all of Nowka’s domains are power islands is worded a little differently than Petitioner’ arguments. Ex. 1003 ¶ 63 (citied at Pet. 16). Dr. Rosing opines that “Nowka’s voltage domains satisfy the ’811 patent’s definition of ‘power island,’ as each domain is a section, delineation, partition, or division of Nowka’s SOC, and each domain receives a different power supply,” and opines that receiving separate voltage supplies means that a domain can be independently controlled. Id. (emphasis added). This testimony is conclusory and—to the extent that it is an assertion that the ’811 patent describes “independently controlled” as encompassing the act of merely providing a separate power supply, even if that supply is not a dynamically controllable and variable power supply— lacks citation to intrinsic evidence support.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,996,811 - Mediatek, Inc. v. Mosaid Technologies Inc.Institution deniedPTAB · Oct 3, 2024 · IPR2024-00720 · APJ John F Horvath · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–19 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“record before us, we find Petitioner has failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[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
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this standard, a claim is construed “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. However, only claim terms which are in controversy need to be construed and 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). The parties dispute whether the terms “power island” and “based on the needs and operation of the integrated circuit” require construction. Petitioner submits that “no claim terms require a formal construction.” Pet. 6. Patent Owner contends both terms require construction. Prelim. Resp. 5, 6, 14. Because our Decision does not depend on the construction of either term, we need not construe them. Nidec Motor, 868 F.3d at 1017.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner’s contentions and mappings, which identify as power islands control circuit 70 coupled to single switching circuit 20 and/or logic circuit 10 coupled to single switching circuit 20, fail to demonstrate how Takahashi teaches or suggests the power islands limitation, which expressly requires each power island to include plural sleep transistors. Compare Pet. 11–13 (identifying logic circuit 10 and switching circuit 20 as a power island and control circuit 70 coupled to switching circuit 20 as a power island), power islands [to] include[e] circuitries and [plural] sleep transistors”). To the extent Petitioner contends switching circuit 20 comprises multiple transistors (see, e.g., Pet. 11–13, in which Petitioner parenthetically characterizes switching circuit 20 as “sleep transistors”), we disagree. Switching circuit 20 is illustrated and described throughout Takahashi, and is consistently illustrated and described as a single pMOS transistor. Ex. 1004 ¶¶ 51, 52, 70, 77, 79, 82, 84, 113, 116, Figs. 1, 4–9, 16, 17.” slip op. at 11
Claim construction§ 103 obviousnessPatents in suitUS 8,253,438 - Mediatek, Inc. v. Mosaid Technologies Inc.Institution deniedPTAB · Oct 3, 2024 · IPR2024-00721 · APJ John F Horvath · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–16 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Upon consideration of the Petition and Preliminary Response, on the record before us, we find Petitioner has failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[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). slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this standard, a claim is construed “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. However, only claim terms which are in controversy need to be construed and 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). The parties dispute whether the term “power island” requires construction. Petitioner submits that “no claim terms require a formal construction.” Pet. 5–6. Patent Owner contends the term requires construction and the Petition should be denied due to Petitioner’s failure to propose a construction. Prelim. Resp. 5–14. Because our Decision does not depend on the construction of the term “power island,” we need not construe it. Nidec Motor, 868 F.3d at 1017.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner’s contentions and mappings, which identify as power islands control circuit 70 coupled to single switching circuit 20 and/or logic circuit 10 coupled to single switching circuit 20, fail to demonstrate how Takahashi teaches or suggests the power islands limitation, which expressly requires each power island to have multiple sleep transistors. Compare Pet. 11–13 (identifying logic circuit 10 and sleep transistor 20 as a power island and control circuit 70 coupled to switching circuit 20 as a power island), with Ex. 1001, 13:24–27, 14:17–20 (claims 1 and 10 requiring “each of the power islands [to] includ[e] circuitries and [plural] sleep transistors”). Accordingly, for this reason and on the record before us, we find Petitioner fails to demonstrate a reasonable likelihood of showing any of claims 1–4 or 6–16 unpatentable as obvious over Takahashi.” slip op. at 11
Claim construction§ 103 obviousnessPatents in suitUS 9,350,349 - 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 12, 2024 · IPR2024-00833 · APJ St John Courtenay III · IPR · Institution
The Board instituted IPR on claims 1–19 over all petitioned grounds, finding a reasonable likelihood that claim 1 would have been obvious, and granted ZEPP’s motion to join the Samsung IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“Although ZEPP is correct that a General Plastic analysis is generally only applicable when the same party files multiple petitions challenging the same patent, the Board has extended General Plastic factor 1 to include a third-party subsequent petitioner who has a “significant relationship” with the prior petitioner, as discussed below. 2. No Significant Relationship between ZEPP and Samsung In Valve Corporation, the Board extended the General Plastic analysis to situations in which a subsequent petition is filed by a different petitioner. Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, paper 11 (PTAB Apr. 2, 2019) (precedential) (hereinafter “Valve”). Specifically, the two petitioners in Valve were co-defendants in a District Court litigation, had a licensing relationship concerning a product, and were accused of infringing based on the same product. Valve, slip op. at 9–10. The Board considered whether there was a sufficiently “significant relationship” between the two different parties filing the two petitions that the second petitioner should be regarded as the same petitioner under General Plastic factor 1. Valve, slip op. at 2, 10 (emphasis added). Here, Patent Owner asks the Board to exercise its discretion under § 314(a) to deny institution under General Plastic (Opp. 3–6). But Patent Owner has not established under General Plastic factor 1 that ZEPP itself (or its privy) has filed multiple “follow-on” petitions challenging the same patent as challenged previously in an inter partes review. Nor has Patent Owner established, also under General Plastic factor 1, that ZEPP (as the subsequent petitioner) and Samsung, have a significant relationship, in the sense contemplated by Valve (i.e., as co-defendants accused of infringing based upon the same product). Valve at 9–10.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the Petition shows “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 set forth below, we determine that (1) ZEPP has shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim in the ’033 patent; and (2) ZEPP has satisfied the threshold requirement to warrant joinder.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“On this record, we find ZEPP has met its burden of showing that joinder is appropriate, at least because, as set forth above, the Petition here: (1) is substantively identical to the petition filed in the Samsung IPR; (2) contains the same grounds for the same claims based upon the same evidence; and, (3) relies upon the same Declaration of Dr. Benjamin B. Bederson, Ph.D. See Mot. for Joinder 1 (“same expert declarations”); Ex. 1002. ZEPP represents that it will assume “a silent participant role.” Mot. for Joinder 1. ZEPP also represents that it “merely seeks to join an ongoing proceeding as an understudy.” Reply 6 (citing Mot. for Joinder 6). For what constitutes an “understudy role,” see footnote 8, supra. And ZEPP clarifies that it “will not take an active role in the inter partes review proceeding unless the Samsung Petitioner ceases to participate in the instituted IPR.” Mot. for Joinder 1. ZEPP also “does not request any schedule changes” such that “the Board will be able to timely issue a final written decision.” Reply 6–7. On this record, we find ZEPP has satisfied the requirements for joinder, as described above, and has demonstrated that joinder will not unduly complicate or delay the Samsung IPR. See 37 C.F.R. § 41.1(b) (providing for “the just, speedy, and inexpensive resolution of every proceeding” (emphases added)). We, therefore, grant ZEPP’s Motion for Joinder and, as a result, join ZEPP as a party to the Samsung IPR.” slip op. at 11
Discretionary denialPatents in suitUS 8,588,033 - Garmin Ltd. v. Slyde Analytics, LLCInstitutedPTAB · Aug 23, 2024 · IPR2024-00765 · APJ St John Courtenay III · IPR · Institution
The Board instituted IPR on claims 1–19 over all six asserted obviousness grounds and granted Garmin’s motion to join the Samsung IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the arguments presented in the Petition, the Preliminary Response, and the evidence of record, we determine that GARMIN has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’033 patent is unpatentable as obvious over the combination of Mooring and Satoshi. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–19) on all grounds set forth in the Petition. Our determinations at this stage of the proceeding are based on the evidentiary record currently before us. This decision to institute trial is not a final decision as to the patentability of any claim for which we have instituted an inter partes review. See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (noting that “there is a significant difference between a [P]etitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial.”). We will base any final decision on the full record developed during trial.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“In Valve Corporation, the Board extended General Plastic analysis to a situation in which a subsequent petition was filed by a different petitioner. Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, paper 11 (PTAB Apr. 2, 2019) (precedential) (hereinafter “Valve”). Specifically, the two petitioners in Valve were co-defendants in a District Court litigation, had a licensing relationship concerning a product, and were accused of infringing based upon the same product. Valve at 9–10. In Valve, The Board considered whether there was a “significant relationship” between the two different parties filing the two petitions, such that the second petitioner should be regarded as the same petitioner under General Plastic factor 1. Valve at 2, 10 (emphasis added). Here, Patent Owner asks the Board to exercise its discretion under § 314(a) to deny institution under General Plastic (Opp. 3–6). But Patent Owner has not established under General Plastic factor 1 that GARMIN itself (or its privy) has filed multiple “follow-on” petitions challenging the same patent as challenged previously in an inter partes review. Nor has Patent Owner established, also under General Plastic factor 1, that GARMIN (as the subsequent petitioner) and Samsung, have a significant relationship, in the sense contemplated by Valve (i.e., as co-defendants accused of infringing based upon the same product). Valve at 9–10. Director Vidal has instructed the Board that General Plastic factor 1 should not be expanded beyond Valve to apply to parties that do not have a significant relationship. See Videndum Production Solutions, Inc. v. Rotolight Limited, IPR2023-01218, paper 12 at 6 (Director Vidal, April 19, 2024) (“The majority’s Decision in this proceeding improperly expanded the discretionary principles set forth in General Plastic and Valve to apply to petitioners that are not the same and do not have a ‘significant relationship.’”). Moreover, Director Vidal has instructed that where “the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Id. For the foregoing reasons, we decline Patent Owner’s request to exercise our discretion to deny institution under 35 U.S.C. § 314(a). See Opp. 3–6.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“On this record, we find GARMIN has met its burden of showing that joinder is appropriate, at least because, as set forth above, the Petition here: (1) is substantively identical to the petition filed in the Samsung IPR; (2) contains the same grounds for the same claims based upon the same evidence; and, (3) relies upon the same Declaration of Dr. Benjamin B. Bederson, Ph.D. See Mot. for Joinder 6; Ex. 1002. GARMIN also represents that it “will accept an ‘understudy’ role unless and until Samsung is terminated from the proceeding.” Mot. for Joinder 4. For what constitutes “understudy role,” see footnote 8, supra. And GARMIN clarifies: “Unless and until the current petitioner ceases to participate, Garmin will not assume an active role in the Samsung Proceeding.” Mot. for Joinder 7. In its Motion for Joinder, GARMIN summarizes that joinder is appropriate because this proceeding and the Samsung IPR are substantively identical (i.e., they involve the same claims, the same patent, the same prior art references, the same expert declaration, and the same arguments and evidence). See Mot. for Joinder 3–6. Stated differently, GARMIN asserts that the Petition and supporting evidence filed in this proceeding do not raise any new substantive or procedural issues. See id. GARMIN further contends that joinder will not “unduly burden or negatively impact the trial schedule [of the Samsung IPR] in any meaningful way,” thereby allowing us to complete a single joined proceeding in a timely manner. Id. at 6. GARMIN also asserts that granting joinder will not affect the issues, briefing, or discovery in the Samsung IPR, as they will remain the same. Id. at 5–6. On this record, we find GARMIN has satisfied the requirements for joinder, as described above, and has demonstrated that joinder will not unduly complicate or delay the Samsung IPR. See 37 C.F.R. § 42.1(b) (providing for “the just, speedy, and inexpensive resolution of every proceeding” (emphases added)). We, therefore, grant GARMIN’s Motion for Joinder and, as a result, join GARMIN as a party to the Samsung IPR.” slip op. at 11
Discretionary denialPatents in suitUS 8,588,033 - PTAB · Aug 5, 2024 · IPR2024-00320 · APJ Donald E Daybell · IPR · Institution
The Board instituted inter partes review on claims 1–4, 7–10, 12, and 13 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute review. Upon consideration of the arguments and evidence before us, we conclude that Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’935 Patent. The Petition is granted, and inter partes review is instituted. A scheduling order will follow this decision.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner disputes Petitioner’s contention that a POSITA need only have experience with “cardiovascular devices,” which could include, according to Patent Owner, devices such as stents or pacemakers that are unrelated to heart valves. Prelim. Resp. 18; see also Ex. 2003 ¶ 10 (Mr. Girard’s testimony regarding same). Patent Owner contends that a POSITA would have had experience with “flow-based test systems for evaluating heart valves or valve repair devices.” Prelim. Resp. 18; see also Ex. 2003 ¶¶ 9–10 (Mr. Girard’s testimony regarding same). Patent Owner otherwise contends that a POSITA would have had an additional year of experience beyond Petitioner’s proposed definition. Prelim. Resp. 18; see also Ex. 2003 ¶ 10 (Mr. Girard’s testimony regarding same). Lastly, Patent Owner proposes that a POSITA could have had degrees in “engineering, such as biomedical, mechanical, aerospace or civil engineering.” Prelim. Resp. 18; see also Ex. 2003 ¶ 9 (Mr. Girard’s testimony regarding same). At this juncture, we adopt Patent Owner’s definition, though we note that our analysis would be the same under either party’s definition. We find persuasive the testimony of Mr. Girard that a POSITA would have had experience with flow-based test systems for evaluating heart valves or valve engineering degree, and agree on this record that such a degree, with the other accompanying qualifications, would have been sufficient to make someone a POSITA. This definition appears to be consistent with what is reflected by the content of the applied prior art references as well. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The parties agree that “in fluid communication” connotes that fluid can flow from one referenced element (or area) to another, which we find to be consistent with the plain and ordinary meaning of “in fluid communication.” The crux of the parties’ dispute is whether the flow must be “unimpeded,” as Patent Owner asserts. At this juncture, we decline to impose an “unimpeded” restriction because Patent Owner’s construction is based on a negative implication from an instance in the Specification where “in fluid communication” is not used in conjunction with valved flow. See Prelim. Resp. 22–24. We find the evidence from the Specification to be inconclusive and, in our view, insufficient to demonstrate the patentees’ intention to depart from the term’s plain and ordinary meaning “with reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). connecting” is broader than “in fluid communication.” See Prelim. Resp. 24 n.7. Based on the present record, we do not agree with this premise for reasons similar to those discussed above. Indeed, “fluidly connecting” and “in fluid communication” seem to have the same meaning in the context of the ’935 patent, i.e., that fluid can flow from one place to another. For example, the ’935 patent discloses “a single fluid reservoir in fluid flow communication with each of [a] plurality of sample holders.” Ex. 1001, 4:22–25. Yet fluid flow from the reservoir or fluid distribution chamber is through “a first manifold defining a plurality of ports configured to receive and fluidicly [sic, fluidly] couple with a first end of each of a respective plurality of sample holders.” Id. at 2:40–44, 8:29–37. The ports necessarily have a smaller cross-sectional area than the fluid distribution chamber because they “are defined at a uniform radial distance from the center and are equiangularly spaced apart.” Id. at 8:29–32. Thus, they necessarily impede the flow of fluid from the fluid distribution chamber to each of the sample holders. Nonetheless, the fluid distribution chamber is “in fluid flow communication” with the sample holders because it is “fluidly connected” to them via the plurality of flow-impeding ports.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“The term “excess volume area” also appears in dependent claim 9, which recites “the excess volume area comprises a compliance chamber defining a cavity within the fluid return chamber.” Ex. 1001, 18:30–32. Because claim 9 recites that the excess volume area of claim 1 includes a compliance chamber and Petitioner relies on prior art compliance chambers to meet this limitation, we need not precisely define the metes and bounds of this term. Rather, on this record, we construe the term to include, but not necessarily be limited to, a compliance chamber.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,237,935
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.