- PTAB · Nov 21, 2023 · IPR2023-01164 · APJ James P Calve · IPR · Institution
The Board instituted IPR on claims 1–20 because Peloton showed a reasonable likelihood of prevailing on claims 1, 2–7, and 10–20 over Morris and Ray.
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) (2022) (“The Board institutes the trial on behalf of the Director.”). 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). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“degree in an exercise related field or mechanical or electrical engineering and (ii) three to five years of industry experience in designing cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field” Pet. 16 (citing Ex. 1002 ¶¶ 31–34). Petitioner also asserts that a person could qualify as an ordinarily skilled artisan with less education but more experience or less experience but more education. Id. At this stage, Patent Owner does not address the level of ordinary skill in the art. On the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the ’375 patent and the prior art of record. Therefore, we adopt Petitioner’s level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim constructions and asserts that” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“such as treadmills that detect a user’s presence on the treadmill and present the user’s exercise data on a display while the user is exercising to provide a number of similar benefits including motivating a user to exercise. Pet. 16– 17 (citing Ex. 1006 ¶¶ 5, 26, 35, Abstr.; Ex. 1004, 5:41–48, 8:22–26, 11:56– 61, 13:20–30, Abstr.). Petitioner contends that a skilled artisan would have been motivated to combine the complementary teachings of Morris and Ray that addressed these similar objectives to achieve predictable results. Id. at 16–17 (citing Ex. 1002 ¶¶ 137–140). Petitioner asserts that a skilled artisan would have incorporated Ray’s camera and software instructions to validate a user’s exercise data into Morris’ treadmill with a reasonable expectation of success because Morris expressly taught that “its exercise equipment could be fitted with optical sensor(s).” Id. at 17 (citing Ex. 1006 ¶ 33).” slip op. at 15
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,796,375 - PTAB · Nov 21, 2023 · IPR2023-01163 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds after finding a reasonable likelihood that claims 1–9, 12, and 14–20 would have been obvious over Morris and Ray.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“record, Petitioner has shown sufficiently that Morris and Ray, in combination, teach or suggest each element of independent claim 1. Petitioner has also sufficiently shown that one of ordinary skill in the art would have been motivated to combine the teachings of Morris and Ray as proposed and would have had a reasonable expectation of success in doing so. Accordingly, we determine that Petitioner has shown a reasonable likelihood that it would prevail in establishing that the subject matter of claim 1 would have been obvious over Morris and Ray.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“have been motivated to combine Morris and Ray by adding several of Ray’s features to Morris’ treadmill, including Ray’s camera, its functionality of displaying a motivational image, and its ability to transmit exercise data to a remote location, and that the ordinarily skilled artisan would have had a reasonable expectation of success in achieving the combination proposed. Pet. 16–18. Petitioner asserts that an ordinarily skilled artisan would have been motivated to combine Morris and Ray because they provide complementary teachings and address similar objectives. Pet. 16 (citing Ex. 1004, Abstr., 5:41–48, 8:22–26, 11:56–61, 13:20–30; Ex. 1006 ¶¶ 6, 25, 33, 35, Abstr.; Ex. 1002 ¶¶ 135–138). Petitioner also asserts that Morris contemplates use of an optical sensor, provides exercise data and “a human analog display that mimic[s] the user’s bouncing motion,” and includes a signal processing and display system with the necessary capabilities to implement the combination. Id. at 16–17 (citing Ex. 1002 ¶¶ 139–143; Ex. 1006 ¶¶ 32–36, 50, 56–58, claims 29–37, Figs. 6, 11–12C). Petitioner further asserts that Ray expressly teaches that “its user validation and motivation technology could be ‘easily and affordably merged’ into a treadmill.” Id. at 18 (quoting Ex. 1004, 9:55–57) (citing Ex. 1002 ¶¶ 143–144). Finally, Petitioner contends that an ordinarily skilled artisan would have been motivated to make the proposed combination because it would have improved Morris’ the user as the intensity and duration of exercise increased” and Ray’s ability to share exercise data with a remote location. Id. (citing Ex. 1004, 7:11–22, 11:55–59, 13:50–57; Ex. 1006 ¶ 50; Ex. 1002 ¶¶ 138, 145); see also id. at 16 (arguing user motivation would have motivated the combination) (citing Ex. 1004, 8:22–26, 11:56–61; Ex. 1006 ¶ 25). At this stage, we are persuaded that Petitioner has made a sufficient showing that one of ordinary skill in the art would have been motivated to combine Morris and Ray with a reasonable expectation of success.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any express claim constructions and states that the “claims . . . have not been construed by any courts as of the filing of th[e] Petition.” Pet. 15 (citing Ex. 1002 ¶¶ 29–30). At this stage, Patent Owner does not address the construction of any term or phrase. We determine that it is not necessary to expressly construe any claim terms or phrases for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to necessary to resolve the controversy.”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“steppers, ellipticals) or in a similar field.” Pet. 15 (citing Ex. 1002 ¶¶ 31– 34). Petitioner also asserts that a person could qualify as an ordinarily skilled artisan with less education but more experience or less experience but more education. Id. At this stage, Patent Owner does not address the level of ordinary skill in the art. At this stage of the proceeding and on this record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’227 patent.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,032,227 - PTAB · Nov 14, 2023 · IPR2023-00718 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR of claims 1, 4, and 11–16 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denialNot reached
“We authorized the parties to submit additional briefing to address Patent Owner’s request for discretionary denial under 35 U.S.C. § 314. See Prelim. Resp. 5–11. Petitioner filed a Reply (Paper 7, “Prelim. Reply”) and Patent Owner filed a Sur-reply (Paper 8, “Prelim. Sur-reply”). We note that in the Sur-reply, Patent Owner has withdrawn its request for discretionary denial and the request is now moot. Prelim. Sur-reply 1.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’825 patent. Accordingly, we institute an inter partes review of claims 1, 4, and 11–16 of the ’825 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelOther
“We perceive no significance to how any difference between the two definitions might affect our analysis. To the extent either party believes its proposed level of skill affects part of the unpatentability analysis, it should explain how during the instituted trial.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner construction§112(f) appliesDecided for petitioner
“Petitioner proposes to construe the term “means coupling” as governed by 35 U.S.C. § 112, ¶ 6, with a function of “coupling suitable power for energizing said thermostat from said space conditioning equipment to said thermostat” and a structure of “a (power) line and any equivalents.” Pet. 10–11. Patent Owner does not dispute this construction. Prelim. Resp. 4. Based on the record at this stage of the proceeding, we adopt Petitioner’s proposed constructions of this term.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,185,825 - PTAB · Nov 14, 2023 · IPR2023-00716 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 1–3 and 6–9 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’739 patent. Accordingly, we institute an inter partes review of claims 1–3 and 6–9 of the ’739 patent on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denialNot reached
“1 We authorized the parties to submit additional briefing to address Patent Owner’s request for discretionary denial under 35 U.S.C. § 314. See Prelim. Resp. 5–11. Petitioner filed a Reply (Paper 7) and Patent Owner filed a Surreply (Paper 8). In its Sur-Reply, Patent Owner withdraws its request for discretionary denial and the issue, therefore, is moot. Paper 8, 1.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’739 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Additionally, Petitioner’s asserted level of ordinary skill is supported by the testimony of its declarant Dr. Baker. Ex. 1002 ¶ 54. Patent Owner’s asserted level of ordinary skill is overly narrow as it requires at least two years’ experience in temperature controls, electronic thermostats, and HVAC controls. Prelim. Resp. 4. Independent claim 1 recites an “environmental controller,” which is not limited controlling HVAC or temperature functions. Ex. 1001, 8:52–56. The ’739 patent explains that an environmental control may also turn lighting on or off and sense and responds to environmental gases or smoke. Id. at 6:62–7:2. Unlike Petitioner’s asserted level of ordinary skill in the art, which is supported by the testimony of Dr. Baker, at this stage of the proceeding, Patent Owner provides no support for its asserted level of ordinary skill. See Prelim. Resp. 4.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“Petitioner contends that two terms are means plus function terms, governed by 35 U.S.C. § 112 ¶ 6: “storage means” and “transmitter means.” Pet. 8. For the term “storage means,” Petitioner contends that the function is “storing as location data a physical location of the environmental controller” and the corresponding structure is “memory.” Pet. 9. Petitioner notes that this is Patent Owner’s proposed construction from the related district court litigation. Id. For the term “transmitter means,” Petitioner contends that the corresponding structure is “a modem with Internet or network connection.” Id. (citing Ex. 1001, 7:2–9, 7:20). Patent Owner does not dispute Petitioner’s proposed constructions. Prelim. Resp. 5. Based on the record at this stage of the proceeding, we adopt Petitioner’s proposed constructions of these terms.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,789,739 - PTAB · Nov 14, 2023 · IPR2023-00719 · APJ James P Calve · IPR · Institution
The Board instituted inter partes review of claims 1–4 and 11–15 on the asserted obviousness ground over Rosen, Rosen-II, and Smith.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). 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). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Other
“E. Exercise of Discretion under 35 U.S.C. § 314(a) In its Preliminary Response, Patent Owner argues that the Fintiv factors support the exercise of our discretion under 35 U.S.C. § 314(a) to deny institution based on the Texas proceeding. Prelim. Resp. 7–13. Because Patent Owner has withdrawn its arguments concerning discretionary denial under 35 U.S.C. § 314(a) (see Ex. 3001), the issue is moot and we need not address it.” slip op. at 31
- Skill levelOther
“II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art would have had a Bachelor of Science degree in Electrical Engineering or a year or two of experience working with or designing processor-based systems with network connectivity, and more experience would compensate for less formal education and vice versa. Pet. 6–7 (citing Ex. 1002 ¶¶ 63–66). Patent Owner asserts that a person of ordinary skill in the art would have a bachelor’s degree in engineering, computer science, or a comparable field with at least 2 years’ experience in temperature controls, embedded control systems, electronic thermostats, or HVAC controls, or similarly relevant industry experience, with relevant experience substituting for education and vice versa. Prelim. Resp. 7. We perceive no significance to how any difference between the two definitions might affect our analysis. To the extent either party believes its proposed level of skill affects part of the unpatentability analysis, it should explain how during the instituted trial.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“1. “means coupling said communications interface and said first remote correspondent” The parties interpret this limitation under 35 U.S.C. § 112, ¶ 6 to perform a function of “coupling the communications interface and the remote correspondent” using “a serial link and/or data link and any equivalents.” Pet. 16–17; Prelim. Resp. 7; Ex. 1026, 76–80 (Joint Claim Construction and Prehearing Statement). The Court in the Texas proceeding has interpreted this term under Section 112, ¶ 6. See IPR2023-00715, Ex. 1056, 79–83, 113. The ’075 patent describes several different structures that couple the communications interface 14 with RC 15. Communications interface 14 can couple and communicate with RC 15 via link 16. Ex. 1001, 6:59–7:3, Fig. 1. Communications interface 14 couples to RC 15 via serial link 16, external modem 20, and Internet Service Provider (ISP) 21. Id. at 8:53–65, Fig. 2. Communications interface 14 also couples to RC 15 via integrated modem 24, data link 26, and ISP 21. Id. at 8:66–9:5, Fig. 3. Thus, the structures that perform this function include (1) a serial link, a modem external to the thermostat system, and a communications link provided by an ISP or (2) an integrated modem within the communications interface, a data link, and communications link provided by an ISP and equivalents. IPR2023-00715, Ex. 1056 (Claim Construction Order), 113.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,232,075 - PTAB · Nov 14, 2023 · IPR2023-00715 · APJ James P Calve · IPR · Institution
The Board instituted inter partes review of claims 18 and 20 on all three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). 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). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“1. “means coupling said communications interface and said first remote correspondent” The parties agree that this limitation is covered by 35 U.S.C. § 112, ¶ 6 to perform the function of “coupling the communications interface and the remote correspondent” with structure of “a serial link and/or data link and any equivalents.” See Pet. 7–8; Prelim. Resp. 5; Ex. 1016, 2–5 (Joint Claim Construction). The District Court in the Texas proceeding interpreted this term under Section 112, ¶ 6 with additional structures. Ex. 1056, 11–13, 107. The ’555 patent describes several structures by which communications interface 14 communicates with remote correspondent (RC) 15. In one embodiment, communications interface 14 communicates with RC 15 via serial link 16. Ex. 1001, 4:4–10, Fig. 1. Communications interface 14 may couple to RC 15 via serial link 16, external modem 20, and Internet Service Provider (ISP) 21. Id. at 6:1–11, Fig. 2. Communications interface 14 also couples to RC 15 via integrated modem 24, data link 26, and ISP 21. Id. at 6:12–18, Fig. 3. Thus, the structure to perform this function is (1) a serial link, a modem external to the thermostat system, and a communications link provided by an ISP or (2) a modem integrated into the communications interface, a data link, and a communications link provided by an ISP and equivalents thereof. See Ex. 1056 (Claim Construction Order), 13, 107.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“In the Texas proceeding, the limitation was construed under § 112, ¶ 6, as “displaying messages received from said remote correspondent” by the structure in Figure 7, column 5, lines 41–56, that establishes communication at predetermined times with a RC, reads current information from the RC, and displays the current information. Ex. 1056, 27–30, 108. We note that, based on the server-client relationship, processor 1 or RC 15 may start a transfer at predetermined times or on demand. Ex. 1001, 5:60–64. We disagree that Figure 5 provides structure for “displaying messages received from said first remote correspondent” because Figure 5’s flowchart does not display messages received from a RC. Figure 5’s flowchart parses key terms in information read from a RC, searches for values associated with a matched key term, and displays a message with components representative of the key terms and values found in the information. Ex. 1001, 4:4–65. The displayed messages concatenate prestored message components for matched key terms and associated values. Id. at 4:40–65, Fig. 6. Thus, as an example, the message “Current Montreal Temperature: +18C” concatenates a first prestored component “CURRENT MONTREAL TEMPERATURE” that is associated with a parsed term “temperature” received from a site providing local Montreal weather with a second message component “18 C” based on a value “18◦ C.” Ex. 1001, 4:40–65. This displayed message was not received from RC 15. Similarly, parsing stock quotation information to match a term “FMAGX” and an associated value of “102.75” causes display of a message “CURRENT QUOTE FOR MAGELLAN: 102.75” where the value 102.75 is concatenated with a component “CURRENT QUOTE FOR MAGELLAN.” Id. at 5:2–13; see Prelim. Resp. 6–7 (asserting if key terms and values are found when the received information is parsed, an alphanumeric message is generated for display by reading the prestored first message component that is a connotation of the matched key term from memory and concatenating it with a second message component for the value); Pet. Reply, 6–7. The claimed program thus displays information received from a remote correspondent by push or by pull. See Ex. 1001, 5:60–64.” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art. (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). “A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). In addition, “[i]f a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.” Id.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,619,555 - PTAB · Nov 14, 2023 · IPR2023-00717 · APJ Jason W Melvin · IPR · Institution
The Board instituted inter partes review of claims 1, 3–5, 7, 9, 11, and 14 based on the petition’s two §103 grounds.
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 . . . 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 conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim, and we institute inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“‘Mode’ button does not disclose or render obvious the first legend indicative of a first control function” because such a legend must be the “contents of a non-static virtual button which are intuitive to a user.” Prelim. Resp. 17. We do not, however, construe “legend” to require that the legend appear on a button (i.e., the “content” of a button); instead, the claims encompass a legend that is “closely associated with” a button as described in the Specification. Ex. 1001, 3:53–56 (“[A]n image representative of a first virtual button may be shown on the touch screen display with graphics (alphanumeric characters and/or icons) on or closely associated with the first virtual button.”). By using a disjunctive, “or,” the Specification establishes that a legend need not be located on the button to which the legend corresponds.9 Geiwitz’s disclosures appear to satisfy the claim language because the asserted legend is indicative of a first control function of the thermostat. Additionally, Patent Owner has not provided any evidence that the “virtual button” in claim 1 excludes any static virtual buttons.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner asserts that locating the legend according to Bier’s teachings is a simple substitution for locating the legend according to Geiwitz’s teachings. Id. at 20–21. Accepting Patent Owner’s assertion that Bier does not disclose thermostat buttons does not undermine Bier’s disclosure of legend location. Further, we agree with Petitioner that skilled artisans had reason to use Bier’s legend-location teaching “to conserve space on Geiwitz’s touchscreen.” Pet. 21–22 (citing Ex. 1002 ¶¶ 125–127). See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (“[A]n implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.”). We conclude that, at this stage, Petitioner has provided adequate reasoning to combine Geiwitz with Bier.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Patent Owner contends that the Geiwitz provisional application “does not disclose a non-static virtual button . . . changed by touch and in consequence second control function is active when the second legend is viewable,” as claimed in 1(D)(3). Prelim. Resp. 17. Although the claim language does not recite a “non-static” button, Patent Owner appears to focus on the claimed “legend.” Petitioner asserts that Geiwitz teaches a “Mode” icon on its touchscreen, with a legend such as “COOL” (indicating a cooling mode of operation) that changes when the Mode icon is pressed to cycle through operational modes (cool, heat, and auto). Pet. 41–44. Petitioner provides an annotated version of the ’511 application’s Figures 84 and 85, reproduced below: Pet. 43 (Ex. 1007, Figs. 84–85). Figure 84 depicts Geiwitz’s primary navigation screen including a “Mode” button with the text “COOL” directly above the button. Petitioner’s annotations designate the “COOL” text as “Legend indicating current control function.” Figure 85 depicts Geiwitz’s primary navigation screen including a “Mode” button with the text “HEAT” directly above the button. Petitioner’s annotations designate the “HEAT” text as “Legend indicating current control function.” Id. Patent Owner asserts that “[t]he text that changes above the static ‘Mode’ button does not disclose or render obvious the first legend indicative of a first control function” because such a legend must be the “contents of a non-static virtual button which are intuitive to a user.” Prelim. Resp. 17. We do not, however, construe “legend” to require that the legend appear on a button (i.e., the “content” of a button); instead, the claims encompass a legend that is “closely associated with” a button as described in the Specification. Ex. 1001, 3:53–56 (“[A]n image representative of a first virtual button may be shown on the touch screen display with graphics (alphanumeric characters and/or icons) on or closely associated with the first virtual button.”). By using a disjunctive, “or,” the Specification establishes that a legend need not be located on the button to which the legend corresponds.9 Geiwitz’s disclosures appear to satisfy the claim language because the asserted legend is indicative of a first control function of the thermostat. Additionally, Patent Owner has not provided any evidence that the “virtual button” in claim 1 excludes any static virtual buttons.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,156,318 - PTAB · Oct 25, 2023 · IPR2023-00687 · APJ James P Calve · IPR · Institution
The Board instituted IPR on claims 15–20, finding a reasonable likelihood that claims 15–20 are unpatentable over Wilt, Jiao, and Stuttard.
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) (2022) (“The Board institutes the trial on behalf of the Director.”). 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). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner’s declarant, Dr. Pedram, applies a definition of the level of ordinary skill from the ITC proceeding. Patent Owner does not contest it. [A] [skilled artisan] would have a bachelor degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in ‘parallel computing or graphics processing including developing, designing, or programming software or hardware for graphics processing or parallel processing units, graphics accelerators[,] or other graphics processing systems,’ with additional education substitution for experience and vice versa. Ex. 1003 ¶ 38 (citing Ex. 1008, 9). We adopt this definition because it is consistent with the ’381 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“1. “associated with” A “scheduling module associated with a second processing unit” in claim 15 is not in a first processor. This meaning is consistent with the ’381 patent prosecution history where Patent Owner argued a prior art scheduling module in the first processing unit with the engines was not “associated with a second processing unit.” See Ex. 1002, 183; see also Ex. 2003, 158–161.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Motivation foundInstituted
“Petitioner’s assertion that PPU 202 has a work distribution unit and front end unit that execute tasks on processing cores 208 treats PPU 202 as a “first processing unit” because each PPU 202 has work distribution unit 210 and front end unit 212 engines as discussed for element 15[d] and processing cores 208 receive and execute tasks from those engines. Pet. 26–28. PPU 202 does not receive or execute tasks. Its engines receive tasks that its cores execute as Petitioner asserts. Id. It is unclear how subsystem 112 is used when each PPU 202 of subsystem 112 discloses elements 15[d] and 15[e]. Wilt’s work distribution unit 210 receives tasks from front end unit 212 and assigns the tasks to each core 208. Ex. 1004, 4:1–23. Petitioner alternatively asserts that units 210, 212, 303 of each PPU 202 are one engine that assigns the tasks to cores 208 on plural PPUs 202. Pet. 27–28.” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,854,381 - PTAB · Oct 25, 2023 · IPR2023-00564 · APJ Brian J Mcnamara · IPR · Institution
Instituted IPR of claims 1–9 on all three §103 grounds after finding a reasonable likelihood that Realtek would prevail on each challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution is issued pursuant to 35 U.S.C. § 314, which provides that 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.” A decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and the associated evidence presented in the Petition and the Preliminary Response, for the reasons described below, we institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Consistent with the ID, Petitioner applies the following description of person of ordinary skill (also referred to herein as “POSITA” or “ordinarily skilled artisan”): a POSITA would have a bachelor degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in “parallel computing or graphics processing including developing, designing, or programming software or hardware for graphics processing or parallel processing units, graphics accelerators[,] or other graphics processing systems,” with additional education substituti[ing] for experience and vice versa. Ex. 1004, Pedram Decl. ¶ 41. Patent Owner does not further address the description of a person of ordinary skill. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Because the description adopted in the ID and by Dr. Pedram appears commensurate with the subject matter of the ’053 patent and the asserted prior art references, we apply it in the context of this Decision.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends that an ordinarily skilled artisan would have had reason to combine the teachings of Stuttard and Williams because they both involve processing of conventional graphics objects and the combination would apply existing technology with predictable results to achieve a shared objective, i.e., to improve processing speed in a high throughput command architecture. Pet. 44–45. Petitioner further asserts that an ordinarily skilled artisan would have understood that vertex and pixel commands are used in distinct stages in graphics processing pipelines, such that storing vertex and pixel commands in separate storage would have been an obvious design choice. Id. at 44 (citing Ex. 1005, 20:21–22:32; Ex. 1006, Fig. 7; Ex. 1004, Pedram Decl. ¶ 99).” slip op. at 43
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,742,053 - Realtek Semiconductor Corp. v. Ati Technologies UlcInstitution deniedPTAB · Oct 25, 2023 · IPR2023-00688 · APJ Kevin W Cherry · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 7–12 were unpatentable over the asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute an inter partes review. 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 “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’628 patent. Accordingly, we deny institution of inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on this record, we adopt Dr. Manocha’s articulation of the level of ordinary skill in the art, which is consistent with the ’628 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We agree with Patent Owner that Petitioner’s purported motivation that the modification would “preserve the image fidelity of the texture” lacks sufficient reasoning and support. Importantly, we fail to see, and Petitioner provides inadequate explanation or support, why adding an additional level of partitioning above the 4x4 and 8x8 blocks would “preserve the image fidelity of the texture” any more than what FXT1 already does. See Pet. 57. We also decline to give weight to Petitioner’s expert declaration, which merely repeats this conclusory reasoning without providing any additional explanation or evidentiary support. 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.”). “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning.” InTouch Techs., Inc. v. VGo Communs., Inc., 751 F.3d 1327, 1347, 1351 (Fed. Cir. 2014). Here, we find Petitioner’s reasoning and rational underpinning as to why FTX1 would be modified in the manner proposed to be lacking. Accordingly, because we find that Petitioner has failed to account for limitation 7(b), we find that Petitioner has failed to demonstrate a reasonable likelihood of prevailing in showing that claim 7 would have been obvious in view of FXT1.” slip op. at 27
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The Specification, however, supports Patent Owner’s construction. In the Background section, the Specification consistently uses the term “block” as a division of an image. See, e.g., Ex. 1001, 1:67–2:3 (“The codebook entries are blocks of pixels of some size (typically 2×2 or larger). For each block of pixels in the original texture, an index is stored to the codebook entry that most closely approximates the block.”). Moreover, the Background section describes the prior-art DXTC technique as “a block-based texture compression scheme” that “explicitly stores two 16-bit colors per 4×4 pixel block.” Id. at 2:24–29. The Background section also describes FXT1, which Petitioner asserts in one of its challenges here, as “a competing compression scheme with DXTC,” which “essentially extends DXTC with some additional block types that can be mixed within any given image.” Id. at 2:46–48. The Specification also uses “block” in the same way in its “Detailed Description of the Preferred Embodiments.” Indeed, the Specification states that [T]he present invention further refines block-based image compression techniques such as DXTC with a flexible method for pre-compression partitioning of texture blocks. The pre-compression partitioning enhances image quality by flexibly selecting partitions suitable to the characteristics of the texture block being compressed, rather than adopting the one-size-fits-all approach suggested in other methods. Ex. 1001, 4:52–57; see also id. at 5:66–6:4 (noting “the present invention represents a further refinement of block-based texture compression schemes such as DXTC” and “the basic compression algorithm . . . divides or splits the image up into discrete blocks of pixels”). The Specification goes to reinforce the understanding of the term “block” as a division of the entire image. For example, when discussing the preferred embodiment, the Specification explains As with other block-based texture compression schemes, the original texture is then split or divided into original blocks of pixels according to step 305. Typically, the original block of pixels is a square or rectangular block—e.g., 4×4 or 8×8 pixel. The size of the original block of pixels is variable, and may be selected according to user needs, application demands and/or system capabilities. Id. at 6:20–26; see also id. at 9:12–13 (“[T]he texture is divided into blocks of 8x8 pixels for compression.”). Thus, we determine that the Specification consistently uses the term “block” to indicate a division of an image, not the image itself, which supports Patent Owner’s construction.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,184,628
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.