- PTAB · Nov 26, 2024 · IPR2024-00936 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1, 5, 8, 9, 11–19, 23, 26, 27, and 29–36 are obvious over Tayloe, TI Datasheet, and Macnally.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Western District of Texas Litigation.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Accordingly, on the present record at this stage of the proceeding and for the reasons discussed above, we find that Petitioner has shown a reasonable likelihood of establishing that one of ordinary skill in the art would have been motivated to combine the teachings of Tayloe, TI Datasheet, and Macnally with a reasonable expectation of success. Patent Owner is invited to elaborate further on its positions in future briefing with potential expert support.” slip op. at 35
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of EM circuit design.” Pet. 6 (citing Ex. 1003 ¶¶ 68–71). Petitioner further proposes that “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree.” Id. Patent Owner does not take a position, in the Preliminary Response, on the level of ordinary skill in the art. See generally Prelim. Resp. On the present record at this stage of the proceeding, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’528 patent and the prior art of record. 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).” slip op. at 12
- Prior constructionPrior construction adoptedTerm construed petitioner constructionDecided for petitioner
“their plain and ordinary meaning, with one exception. Pet. 3. Specifically, Petitioner asserts “storage element” or “energy storage element” are recited “interchangeably” in the claims and should each be construed to mean “an element of a system that stores non-negligible amounts of energy from an input EM signal,” which Petitioner notes was “determined by the Board and affirmed by the [U.S. Court of Appeals for the] Federal Circuit.” Id. (citing ParkerVision, Inc. v. Vidal, 88 F.4th 969, 976 (Fed. Cir. 2023) (holding “ParkerVision acted as its own lexicographer to define the term ‘storage element’” and “the Board’s construction of ‘storage element’ [(quoted above)] correctly tracks the lexicography provided by [ParkerVision]”) (citing U.S. Patent No. 6,061,551 (“the ’551 patent”), 66:55–67)). Petitioner contends that, like U.S. Patent No. 7,110,444 that was at issue in ParkerVision v. Vidal, the ’528 patent also incorporates the ’551 patent by reference. Pet. 4 (citing Ex. 1001, 1:30–34). And Petitioner notes that the ’528 patent “includes an identical disclosure to that deemed dispositive from the incorporated by reference ’551 patent.” Id. (citing Ex. 1001, 73:9–22 (which Petitioner contends defines “storage module”)). Further, Petitioner asserts “[n]o intrinsic evidence demands a different construction” because, even though claim 1 recites “system,” “energy,” and “transfer,” it does so “in isolation” and “does not recite ‘energy transfer system,’ let alone restrict the claimed ‘storage element’ to any energy transfer system.” Id. at 5 (also contending the file history of the ’528 patent does not support a different construction). Petitioner also contends “the proposed combinations teach the claimed ‘storage element’ or ‘energy storage element,’ even including the alleged condition of ‘low impedance load’ that purportedly ‘goes to the heart of what makes an element, a “storage” element.’” Id. Patent Owner does not take a position on claim construction in the Preliminary Response. See generally Prelim. Resp. On the present record at this stage of the proceeding, we agree with Petitioner, for the reasons discussed above, that “storage element” and “energy storage element” are used interchangeably in the claims and should be construed consistently with our prior construction of “storage element,” which, as noted above, was affirmed by the Federal Circuit, to mean “an element of a system that stores non-negligible amounts of energy from an input EM signal.” We need not construe any other claim terms expressly because there is no present controversy as to the meaning of any other claim terms in this proceeding. Realtime Data, 912 F.3d at 1375.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,118,528 - PTAB · Nov 26, 2024 · IPR2024-00935 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claim 14 over all three obviousness grounds, finding a reasonable likelihood of success on the Tayloe and TI Datasheet ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Western District of Texas Litigation.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“h. Summary as to Claim 14 For the reasons discussed above, on the present record we find that Petitioner has established that the combination of Tayloe and TI Datasheet teaches each of the elements of claim 14 and that one of ordinary skill in the art would have been motivated to combine the teachings of these two references as proposed by Petitioner with a reasonable expectation of success in so doing. 3. Objective Indicia of Nonobviousness In the record presently before us, neither Petitioner nor Patent Owner has presented any evidence of objective indicia of nonobviousness. 4. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Tayloe and TI Datasheet would have rendered the subject matter of claim 14 of the ’177 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage of the proceeding and on the present record, we need not construe the term expressly because, for the reasons discussed below, we find that Petitioner has established a reasonable likelihood of showing that claim 14 would have been obvious to one of ordinary skill in the art under each construction, and because there is no present controversy as to the meaning of the term in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“A datasheet is a well-known resource for learning detailed information of the multiplexer/demultiplexer, and a [person of ordinary skill in the art] would have been motivated to consult the TI Datasheet for a more complete understanding of Tayloe’s express teachings of the SN74CBT3253 demultiplexer, the only matching multiplexer available at the time. [Ex. 1023; Ex. 1003] ¶¶ 100–109; see also Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1374–75 (Fed. Cir. 2013) (obvious to combine two prior art references where one reference “refers expressly” to the other). When viewing the detailed diagram of the SN74CBT3253 demultiplexer, a [person of ordinary skill in the art] would have been motivated to apply four of the switches because the architecture of one switch on the demultiplexer is analogous to one of the four switching paths of Tayloe’s commutating switch 38. [Ex. 1003 ¶¶] 100–109. Thus, a [person of ordinary skill in the art] would have thought to implement the multiplexer switches from TI Datasheet in an analogous manner “by simple substitution of one known element for another.” Pet. 23–24 (citing Ex. 1003 ¶¶ 100–109; KSR, 550 U.S. at 401).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,865,177 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · Nov 26, 2024 · IPR2024-00796 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that claims 1 and 11 would be obvious over Nevo and Avitabile.
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). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Stipulate[s] and agree[s] that, if the PTAB institutes an inter partes review proceeding (“IPR”) for U.S. Patent No. 7,483,686 on the grounds presented in [the Petition], [Petitioner] will not pursue an invalidity defense in [the Western District of Texas Litigation] that the patent claims subject to the instituted IPR are invalid based on the same grounds as in the [P]etition or any grounds that could have reasonably been raised in the [P]etition. Ex. 1015 (letter from M. Bernstein to J. Charkow, dated May 21, 2024); see also Prelim. Reply 1 (“Patent Owner’s Preliminary Response (Paper 6) fails to acknowledge, much less address, Petitioner’s Sotera stipulation not to pursue in the related litigation the same grounds or any grounds of invalidity that could reasonably have been raised in this IPR.”); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020) (Decision Granting Institution) (precedential as to § II.A).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of [radio frequency (‘RF’)] circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems,” and “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree.” Pet. 14–15 (citing Ex. 1002 ¶ 38). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. See generally Prelim. Resp. We determine, on the current record, that Petitioner’s proposed level of ordinary skill is consistent with the ’686 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d at 1579. We adopt that level of ordinary skill in the level of ordinary skill in the art based on the full trial record. slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that all claim terms should be given their plain and ordinary meaning. Pet. 15 (citing Ex. 1002 ¶ 74). Petitioner, however, notes that several claim terms in the ’686 patent, or closely related claim terms for patents related to the ’686 patent, have been construed during prior litigation involving Patent Owner. Id. Petitioner discusses five claim terms and various constructions proposed or adopted in prior litigation. Id. at 15–20.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,483,686 - PTAB · Nov 26, 2024 · IPR2024-00934 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR of claims 19–21 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On June 21, 2022, the Director issued interim guidance in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors. See Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation at 3, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Notably, the Director stated that “the [Patent Trial and Appeal Board (‘PTAB’)] will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the PTAB.” Id. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding under Fintiv because TI filed a Sotera stipulation. Pet. 80; Ex. 1041.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construed as “indirectly or directly connecting such that an electrical signal can flow between”; and (2) “impedance device” was construed as “a device that exhibits an impedance.” Id. at 6. Even though TI identifies four claim terms in total in the Petition, TI argues that the asserted prior art renders the challenged claims unpatentable under any reasonable construction of those claim terms. See, e.g., id. at 4 (arguing that the “prior art analyzed here renders the claims unpatentable under either [party’s] constructions” proposed in the district court case), 6 (arguing that the “prior art renders the Challenged Claims unpatentable under . . . the [Board’s] constructions”). In its Preliminary Response, ParkerVision does not address TI’s proposed constructions, nor does ParkerVision identify additional claim terms that would require construction at this stage in the proceeding. See Prelim. Resp. Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any preliminary response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Taking into account ParkerVision’s Preliminary Response, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that TI would prevail in demonstrating at least one of claims 19– 21 of the ’342 patent is unpatentable. Pursuant to § 314, we hereby institute an IPR as to claims 19–21 of the ’342 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of institution, there is sufficient evidence in the record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Galton, TI argues the following: [a] person of ordinary skill in the art . . . as of the ’342 Patent’s priority date (April 14, 2000) would have had a least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of EM circuit design. Less work experience may be compensated by a higher level of education, such as a master’s degree. Pet. 6 (citing Ex. 1003 ¶¶ 28–30). In its Preliminary Response, ParkerVision does not address TI’s assessment of the level of skill in the art. See Prelim. Resp. At this stage of the proceeding, we adopt TI’s uncontested assessment of the level of skill in the art because it is consistent with the ’342 patent and the asserted prior art.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,496,342 - Peloton Interactive, Inc. v. Johnson Health Tech Co., Ltd.All claims unpatentablePTAB · Nov 20, 2024 · IPR2023-01164 · APJ James P Calve · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–7 and 10–20 over Morris and Ray, and claims 8, 9, and 18 over Morris, Ray, and Cox.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Having considered the 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 ’375 patent. Accord Inst. Dec. 8. Patent Owner’s proposal adds “analyzing” and removes “cardiovascular,” but these differences are immaterial to this proceeding. See Pet. Reply 27 n.8. Moreover, all of our analysis in this Decision would remain the same under Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Patent Owner asserts that the claim term “exercise use data” needs to be construed to resolve the issues raised by Petitioner. PO Resp. 4. Patent Owner asserts that exercise use data is “data that would represent an amount of exercise of the user.” Id.; Ex. 2004 ¶ 32. Petitioner disagreed with this proposed construction in its briefing (Pet. Reply 1–5) but adopted it during the oral hearing (Tr. 14:12–15:17). The parties also agree that “exercise use data” includes time, distance, and calories of a user exercising on an exercise apparatus. PO Resp. 4–5, 14; Pet. Reply 3–4. For purposes of this proceeding, we apply Patent Owner’s proposed construction. For the reasons explained below, we determine that Petitioner has shown that the challenged claims are unpatentable even under Patent Owner’s narrower construction. As a result, we do not need to construe this claim term further.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner does not dispute Petitioner’s contentions. See PO Resp. We find that Petitioner has established that a skilled artisan would have been motivated to improve Morris’ treadmill by adding Ray’s camera, software instructions for validating user exercise data, its functionality of displaying a motivational image, and its ability to transmit exercise data to a remote location, and would have had a reasonable expectation of success. See Pet. 16–19, 27–28; Ex. 1002 ¶¶ 137–147, 161–163; Ex. 1004, 5:27–29, 7:11–22, 9:55–57; Paper 8 (Scheduling Order), 9 (cautioning Patent Owner that any arguments not raised in the response may be deemed waived).” slip op. at 18
- Expert testimonyPatent owner expert discountedDecided for patent owner
“We have considered the testimony of Mr. van der Weide, who agrees with Patent Owner (see Ex. 2004 ¶¶ 35, 45–52), but we give his testimony on these points little weight. Mr. van der Weide discusses Mr. Rawls’ testimony, but he does not meaningfully discuss Ray’s disclosures. See id. As a result, he does not reconcile his opinions with the apparently conflicting portions of Ray. In addition, Mr. van der Weide’s testimony is conclusory because he does not identify evidence or reasoning sufficient to support his opinion that Ray fails to teach or suggest these aspects of the claim as discussed above. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 29
Patent outcomesUS 10,796,375 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,796,375 - Peloton Interactive, Inc. v. Johnson Health Tech Co., Ltd.All claims unpatentablePTAB · Nov 20, 2024 · IPR2023-01165 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Morris and Ray; the Board did not reach the alternative Ray–AAPA and Yi grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’340 patent. Accord Inst. Dec. 8. Patent Owner’s proposal adds “analyzing” and removes “cardiovascular,” but we agree with Petitioner that these differences are immaterial to this proceeding. See Pet. Reply 29 n.12. Moreover, our analysis in this Decision would remain the same under Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner contends it means “data that would represent an amount of exercise of the user.” PO Resp. 4. According to Patent Owner, the Specification of the ’340 patent defines this term. Id. at 4–5 (citing Ex. 1001,6 1:43–46, 6:33–34, claims 4, 5, 17; Ex. 2004 ¶ 33). In its briefing, Petitioner disagrees with Patent Owner’s proposed construction, arguing that it is “overly narrow . . . and arbitrarily excludes other forms of ‘exercise use data.’” Pet. Reply 1–2; see id. at 1–5 (further contesting Patent Owner’s proposed construction). However, during the oral hearing, Petitioner adopted Patent Owner’s proposal. Tr. 14:12–15:17. For purposes of this proceeding, we apply Patent Owner’s narrower construction and assume that “exercise use data” is “data that would represent an amount of exercise of the user.” We do not need to further construe this term because Petitioner shows that the Challenged Claims are unpatentable even under Patent Owner’s narrower construction.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find that Petitioner has established that an ordinarily skilled artisan would have been motivated to improve Morris’ treadmill by adding Ray’s camera, software instructions for validating user exercise data, its functionality of displaying a motivational image, and its ability to transmit 8 By not challenging Petitioner’s contentions as to motivation to combine and reasonable expectation of success, we also find that Patent Owner has waived any argument contesting these contentions. See Paper 8 (Scheduling Order), 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”). 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 for the reasons explained by Petitioner, as set forth above.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“are contradictory and we also disagree with Patent Owner that Ray teaches away from “maintain[ing] communication between the exercise apparatus and the remote location while the user is determined by the controller not to be engaged with the operating member” as recited in claim 7. On the former point, we agree with Petitioner that Patent Owner “improperly equates generation and reporting of exercise use data with maintaining a connection with a remote location.” See Pet. Reply 20. Petitioner previously asserted that generation and reporting of the data would stop when Ray does not detect a user, but this does not mean that the connection would also be stopped. On the latter point, “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed”). Patent Owner fails to point to anything in Ray that discourages or would otherwise lead one of ordinary skill in the art away from maintaining a connection with a remote location when exercise use data is not reported at that precise moment. Rather, Petitioner provides a reason with rational underpinning as to why one of ordinary skill in the art would have been motivated, with a reasonable expectation of success, to maintain the connection—“to avoid delays in trying to re-establish the connection once the user had come back.” Pet. 39. That position is supported by the testimony of Mr. Rawls. Ex. 1002 ¶ 186.” slip op. at 53
Patent outcomesUS 11,227,340 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,227,340 - Peloton Interactive, Inc. v. Johnson Health Tech Co., Ltd.All claims unpatentablePTAB · Nov 20, 2024 · IPR2023-01163 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Morris and Ray, with claims 10, 11, 13, and 20 also unpatentable over Morris, Ray, and Cox.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner proposes the same level of ordinary skill in the art, except that Patent Owner states that the industry experience would have been “in analyzing and/or designing exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field.” PO Resp. 15–16. Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’227 patent. Accord Inst. Dec. 8. Patent Owner’s proposal adds “analyzing” and removes “cardiovascular,” but these differences are immaterial to this proceeding. See Pet. Reply 28 n.10. Moreover, all of our analysis in this Decision would remain the same under Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner contends it means “data that would represent an amount of exercise of the user.” PO Resp. 4–6. According to Patent Owner, the Specification defines this claim term. Id. at 4–5 (citing Ex. 1001, 51:37– 40:59–6:4). In its briefing, Petitioner disagreed with Patent Owner’s proposed construction, arguing that it is “overly narrow . . . and arbitrarily excludes other forms of ‘exercise use data.’” Pet. Reply 2–4. However, during the oral hearing, Petitioner adopted Patent Owner’s proposal. Tr. 14:12–15:17. For purposes of this proceeding, we apply Patent Owner’s narrower construction and assume that “exercise use data” is “data that would represent an amount of exercise of the user.” We do not need to further construe this term because Petitioner shows that the challenged claims are unpatentable even under Patent Owner’s narrower construction of it.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“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); see also id. at 26–27 (asserting that “including multiple sensors in treadmills was a routine and well-known task”) (citing Ex. 1002 ¶¶ 159–162). 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’ treadmill to add both “Ray’s motivational image that showed a thinner image of 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 that detection of a user’s presence could provide benefits, including motivation (citing Ex. 1004, 8:22–26, 11:56–61; Ex. 1006 ¶ 25)), 41 (arguing that data transmission was “a well-known and routine task” (citing Ex. 1002 ¶¶ 188–189)). Patent Owner does not dispute these contentions. See PO Resp. We find that Petitioner has established that an ordinarily skilled artisan would have been motivated to improve Morris’ treadmill by adding Ray’s camera, software instructions for validating user exercise data, 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. See Pet. 16–18, 26–27; Ex. 1002 ¶¶ 135–138, 140–145, 161, 189; see also, e.g., Ex. 1004, 5:27–29, 7:11–22, 9:55–57.” slip op. at 22
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We have considered the testimony of Mr. van der Weide, who agrees with Patent Owner (see Ex. 2004 ¶¶ 35, 60–71), but we give his testimony on these points little weight. Mr. van der Weide discusses Mr. Rawls’ testimony, but he does not meaningfully discuss Ray’s disclosure. See id. As a result, he does not reconcile his opinions with the apparently conflicting portions of Ray. In addition, Mr. van der Weide’s testimony is conclusory because he does not identify evidence or reasoning sufficient to support his opinion that Ray fails to teach or suggest these aspects of the claim. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 32
Patent outcomesUS 10,032,227 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,032,227 - Comcast Cable Communications, LLC v. Entropic Communications, LLC.Institution deniedPTAB · Oct 8, 2024 · IPR2024-00434 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on claims 1–20 because Petitioner did not justify a third parallel petition after instituting its first-ranked petition.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Practice Guide 59 (emphasis added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here. For example, a second petition might be justified “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Petitioner does not argue that the number of claims in the parallel litigation is “large.” And while Petitioner does argue that the prior art relied upon on might be antedated, “Patent Owner stipulates that if the Board were to institute only Comcast’s second ranked petition (IPR2024-00433), and deny IPR2024-00432 and IPR2024-0434 as improper parallel petitions, then, in the IPR2024-00433 proceeding, Patent Owner will not challenge the status of Petrovic and Eidson as prior art.” Prelim. Resp. 41.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“CONCLUSION For the foregoing reasons, we are not persuaded that the facts presented by Petitioner justify a second petition challenging the same claims of the ’362 patent as the petition in IPR2024-00432. We therefore exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied and inter partes review of claims 1–20 of the ’362 patent is not instituted on the grounds asserted in the instant Petition.” slip op. at 11
Discretionary denialPatents in suitUS 9,210,362 - Comcast Cable Communications, LLC v. Entropic Communications, LLC.Institution deniedPTAB · Oct 8, 2024 · IPR2024-00433 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on claims 1–20 because Petitioner did not justify a second parallel petition challenging the same claims.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Our Practice Guide provides guidance on handling situations involving multiple petitions by a single petitioner challenging the same patent claims: Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Practice Guide 59 (emphasis added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here. For example, a second petition might be justified “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Petitioner does not argue that the number of claims in the parallel litigation is “large.” And while Petitioner does argue that the prior art relied upon on might be antedated, “Patent Owner stipulates that if the Board were to institute only Comcast’s second ranked petition (IPR2024-00433), and deny IPR2024-00432 and IPR2024-0434 as improper parallel petitions, then, in the IPR2024-00433 proceeding, Patent Owner will not challenge the status of Petrovic and Eidson as prior art.” Prelim. Resp. 41. Petitioner’s remaining argument is no more persuasive. Responding to Petitioner’s argument that different prior art has different strengths with respect to different claims, Patent Owner points out that Petitioner “fails to show why any difference between the primary references would justify instituting more than one petition.” Prelim. Resp. 43. We agree. As our Practice Guide cautions, “[t]wo or more petitions filed against the same patent at or about the same time . . . may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Practice Guide 59. This is especially concerning here, where the instituted trial in IPR2024-00432 will involve five references and eight grounds. Adding an additional six grounds and five references from this Petition to the mix would create an “unnecessary burden.” In sum, in the words of our Practice Guide, Petitioner fails to show “why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).” Practice Guide 60.” slip op. at 10
Discretionary denialPatents in suitUS 9,210,362 - PTAB · Oct 8, 2024 · IPR2024-00432 · APJ Frederick C Laney · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that Comcast would show at least one claim unpatentable over Zhang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 12
- Parallel petitionsDenied
“petitions, Petitioner filed a Petition Ranking and Explanation of Material Differences Between Petitions, ranking its three petitions directed to the ’362 patent in accordance with the guidance with respect to parallel petitions in the Board’s November 2019 Consolidated Trial Practice Guide. Paper 3; see Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019, “CTPG”), at 59–60 (available at Available at https://www.uspto.gov/ TrialPracticeGuideConsolidated). In that Paper, Petitioner ranked the instant Petition first. Paper 3, 1.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA” or “skilled artisan”) “would have had a degree in electrical engineering or a similar discipline, along with three-to-four years of experience with digital signal processing and RF tuning systems for satellite and/or cable communications,” and that “[a]dditional education may substitute for professional experience, and significant work experience may substitute for 8 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. See generally Prelim. Resp. formal education.” Pet. 20 (citing Ex. 1002 ¶¶ 30–32). Patent Owner does not address level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Construction We apply the same claim construction standard used in district court actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2021). In applying that standard, claim terms generally 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 and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Petitioner states that “[a]ll claim terms herein should be given their” slip op. at 13
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 9,210,362
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.