- PTAB · Aug 6, 2024 · IPR2024-00508 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–18, 21–24, and 26–29 on all petitioned grounds after finding a reasonable likelihood that claim 1 is anticipated by or obvious over Rosenberg.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner’s analysis persuasively demonstrates a reasonable likelihood of success of showing that the subject matter of claim 1 is unpatentable. That Rosenberg varies, or modulates, its haptic effect based on the input signal, and specifically the degree to which the input signal represents a value close to a target value, persuades us on this record that Rosenberg describes the recited “modulating” limitation. On whole, reviewing the Petition and the evidence cited therein, we determine that Petitioner has established a reasonable likelihood that claim 1 is anticipated by, or would have been obvious in view of, Rosenberg.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (POSA) would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry experience or graduate-level academic experience with human-computer interaction. Pet. 7 (citing Ex. 1003 ¶¶ 40–45). This level of skill appears reasonable in view of the disclosures in the ’546 patent and asserted prior art. We adopt Petitioner’s proposed level of skill for purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In our view, on this record, the first construction is too narrow. It adds limitations from the specification that are not found in the claims, namely, the term “continuous” or “continuously.” i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 843–44 (Fed. Cir. 2010) (“[A] claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a clear intention to limit the claim’s scope with words or expressions of manifest exclusion or restriction.”) (internal quotation marks omitted). There is no requirement that the claims must recite all the features of the specification, and we are not persuaded on this record that the claim requires this absent word. The second potential construction offered by Petitioner states that it “would not require the ‘new input’ mapping to the modulated haptic signal to be received immediately after earlier input that was mapped to a haptic signal.” Pet. 22. Petitioner states that the second construction would cover situations where an input sensor is mapped to a haptic signal but later new inputs are not mapped to a haptic signal, and then even later new sensor input is mapped to a haptic signal. Id. Petitioner does not provide further explanation, and it is not clear to us on this record what the construction would be. Instead, the second potential construction merely seems to be an example of a situation in which Petitioner asserts the claim limitation would be met. In sum, we do not adopt either of Petitioner’s proposed constructions. We do not offer our own construction at this time, however, because we believe that construing the claim limitation is unnecessary for the purpose of institution. Instead, we will focus on the plain language itself, “modulating the haptic signal when new input is received,” when reviewing Petitioner’s prior art grounds. We do not explicitly construe any terms in this Decision at this time” slip op. at 7
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,116,546 - PTAB · Jul 16, 2024 · IPR2024-00344 · APJ St John Courtenay III · IPR · Institution
Instituted IPR of claims 1–7 on obviousness over Agarwala in view of the knowledge of a POSITA; the Board found a reasonable likelihood of success.
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). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Ex. 1001, 23:1–10 (emphasis added). Nor do we find any explicit antecedent basis reference from any language in dependent claims 2–7 to the claim 1 preamble language “data beacons.” Because the limitations in the body of claim 1 do not rely upon and derive antecedent basis from the “data beacons” language recited in the preamble of claim 1, at this stage Patent Owner has not established that the preamble language “data beacons” is a necessary component. Thus, the Federal Circuit’s “antecedent basis” preamble case law weighs in favor of Petitioner. See, e.g., Bicon, 441 F.3d at 952.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that an ordinarily skilled artisan for the ’632 patent “would have been familiar with network communications and distributed storage systems, including network file systems,” and “would have a working knowledge of techniques for accessing data (reading and writing data) in distributed network storage systems, including parallel files systems.” Pet. 11–12 (citing Ex. 1003 ¶ 37). Petitioner further asserts: A POSITA would have gained knowledge of these concepts through a mixture of training and work experience, such as by having a Bachelor’s degree in computer science and four years of experience; or by obtaining a Master’s degree in computer science, but having only one to two years of experience; or by having no formal education but experience in storage systems of at least eight years.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“For the reasons given supra under heading III (“Claim Construction”), we preliminarily disagree with Patent Owner that the preamble term “for providing data beacons” should be accorded limiting effect. Therefore, at this stage, we preliminarily find Petitioner has shown that the combination of Agarwala and the knowledge of a POSITA teaches preamble [1.0].” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,146,632 - PTAB · Jun 24, 2024 · IPR2024-00699 · APJ St John Courtenay III · IPR · Institution
The Board instituted IPR on claims 1–18 based on the § 103(a) grounds instituted in the LG IPR and granted VIZIO’s motion to join that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an IPR may not be instituted unless the 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 we discuss below, we institute an IPR as to claims 1–18 of the ’805 patent, and we grant VIZIO’s Motion for Joinder.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“because this proceeding and the LG 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 4–6. Stated differently, VIZIO asserts that the Petition and supporting evidence filed in this proceeding do not raise any new substantive or procedural issues. See id. VIZIO further argues that, because it is willing to work with counsel for LG (i.e., as an understudy) to consolidate all filings and discovery, joinder will not impact the schedule of the LG IPR, thereby allowing us to complete a single consolidated proceeding in a timely manner. Id. at 7–9. VIZIO also argues that, if it is joined as a party with the LG IPR, Multimedia will not suffer any prejudice because granting joinder under these circumstances will not add new issues for consideration by or costs to Multimedia above and beyond those already presented in the LG IPR, nor will granting joinder affect the issues, briefing, or discovery in the LG IPR, as they will remain the same. Id. at 9–10. Given that Multimedia did not oppose VIZIO’s Motion for Joinder (Ex. 3002), and VIZIO agrees to consolidate all filings and discovery with LG (Mot. for Joinder 6–7), VIZIO has demonstrated that joinder will not unduly complicate or delay the LG 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 VIZIO’s Motion for Joinder and, as a result, join VIZIO as a party with the LG IPR.” slip op. at 5
NonePatents in suitUS 10,419,805 - PTAB · Jun 24, 2024 · IPR2024-00696 · APJ St John Courtenay III · IPR · Institution
The Board instituted review of claims 1–14 on the existing § 103(a) grounds and granted VIZIO’s motion to join the LG IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an IPR may not be instituted unless the 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 we discuss below, we institute an IPR as to claims 1–14 of the ’174 patent, and we grant VIZIO’s Motion for Joinder.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“14, 2024 (Paper 4 (“Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary Response), 1), and the Motion for Joinder was filed on the same day. As such, VIZIO’s Motion for Joinder was timely, because joinder was requested no later than one month after May 21, 2024, the institution date of the LG IPR. See LG IPR Dec. on Inst.” slip op. at 5
NonePatents in suitUS 9,247,174 - PTAB · Jun 24, 2024 · IPR2024-00694 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–6, 11–16, 21, and 22 based on the same § 103(a) grounds as the LG IPR, and joined VIZIO to that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an IPR may not be instituted unless the 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 we discuss below, we institute an IPR as to claims 1–6, 11–16, 21, and 22 of the ’040 patent, and we grant VIZIO’s Motion for Joinder.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In its Motion for Joinder, VIZIO contends that joinder is appropriate because this proceeding and the LG 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 4–6. Stated differently, VIZIO asserts that the Petition and supporting evidence filed in this proceeding do not raise any new substantive or procedural issues. See id. VIZIO further argues that, because it is willing to work with counsel for LG (i.e., as an understudy) to consolidate all filings and discovery, joinder will not impact the schedule of the LG IPR, thereby allowing us to complete a single consolidated proceeding in a timely manner. Id. at 6–9. VIZIO also argues that, if it is joined as a party with the LG IPR, Multimedia will not suffer any prejudice because granting joinder under these circumstances will not add new issues for consideration by or costs to Multimedia above and beyond those already presented in the LG IPR, nor will granting joinder affect the issues, briefing, or discovery in the LG IPR, as they will remain the same. Id. at 9–10. Given that Multimedia did not oppose VIZIO’s Motion for Joinder (Ex. 3002), and VIZIO agrees to consolidate all filings and discovery with LG (Mot. for Joinder 6–9), VIZIO has demonstrated that joinder will not unduly complicate or delay the LG 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 VIZIO’s Motion for Joinder and, as a result, join VIZIO as a party with the LG IPR.” slip op. at 5
NonePatents in suitUS 9,510,040 - PTAB · Jun 11, 2024 · IPR2024-00353 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–4, 6, 8–10, 12–17, and 19 based on the reasonable likelihood that the Kim, Bae, and WD-Manual combinations, with Coburn for certain claims, render them obvious.
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 Director Memo. Notably, the Director stated that “the PTAB [Patent Trial and Appeal Board] 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.” Director Memo at 3. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding under Fintiv because LG filed a Sotera stipulation in both this proceeding and the district court case where LG is a party. Pet. 131; Ex. 1025.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“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. Lippman, LG argues the following: [a] person of ordinary skill in the art . . . in the field of the ’254 patent, as of its earliest possible filing date of August 17, 2012, would have been someone knowledgeable and familiar with the television display technology that is pertinent to the ’254 patent. A [person of ordinary skill in the art] would have had a bachelor’s degree in Electrical Engineering, Software Engineering, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television systems and networking, human-computer interaction, or related technologies. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 10–11 (citing Ex. 1003 ¶ 19). For the limited purposes of its Preliminary Response, “[Multimedia] adopts [LG’s] definition of a person of ordinary skill in the art.” Prelim. Resp. 27 (citing Pet. 10–11). To the extent necessary, we adopt LG’s assessment of the level of skill in the art because it is consistent with the ’254 patent and the asserted prior art.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“In any event, the “mere disclosure of alternative designs does not teach away.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the claimed invention. Fulton, 391 F.3d at 1201. When combining references to establish obviousness, the appropriate consideration is whether the proposed combination would work for its intended purpose, not whether the proposed combination is inconsistent with the stated goal of one of the references, as Multimedia argues. See Prelim. Resp. 30; DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009). Furthermore, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417 (citation omitted). To the extent Multimedia argues that LG’s reasons to combine the relevant teachings of Kim with those of Bae and WD-Manual are deficient, we determine, on the preliminary record, that LG has made a sufficient showing regarding the proposed combination. See Prelim. Resp. 31 n.4. At this stage in the proceeding, Multimedia merely offers attorney argument that Kim’s remote controller 200, which may include “other appropriate user input device[s],” is a generic statement that an improvement is possible, but it does not suffice to incorporate the specific features of Bae or WD-Manual. Id. (quoting Ex. 1005 ¶ 175); cf. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value). Based on the preliminary record, LG has presented sufficient arguments and evidence for purposes of institution that would support the following: (1) modifying Kim’s CHANNEL BROWSER card object 1340 or TV GUIDE card object 1350 to include Bae’s on screen channel number selection window 330 so that the user may change the channel by selecting corresponding numbers using left and right arrow keys; and (2) modifying Kim’s remote controller 200 to include WD-Manual’s remote control features, including, among other things, assigning or programming any one of the shortcut/function keys A, B, C, and D to display specific types of media content or device information. See Pet. 18–25; Ex. 1005 ¶¶ 38, 60, 86, 90, 115, 127, 174, 175, 177, 188, 192–217, 283, Figs. 7, 8, 22, 38; Ex. 1006, 5–7, 11, 25–26, 138–139; Ex. 1008 ¶ 23; Ex. 1003 ¶¶ 63–83.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“In any event, the “mere disclosure of alternative designs does not teach away.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the claimed invention. Fulton, 391 F.3d at 1201. When combining references to establish obviousness, the appropriate consideration is whether the proposed combination would work for its intended purpose, not whether the proposed combination is inconsistent with the stated goal of one of the references, as Multimedia argues. See Prelim. Resp. 30; DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009). Furthermore, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417 (citation omitted). To the extent Multimedia argues that LG’s reasons to combine the relevant teachings of Kim with those of Bae and WD-Manual are deficient, we determine, on the preliminary record, that LG has made a sufficient showing regarding the proposed combination. See Prelim. Resp. 31 n.4. At this stage in the proceeding, Multimedia merely offers attorney argument that Kim’s remote controller 200, which may include “other appropriate user input device[s],” is a generic statement that an improvement is possible, but it does not suffice to incorporate the specific features of Bae or WD-Manual. Id. (quoting Ex. 1005 ¶ 175); cf. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value). Based on the preliminary record, LG has presented sufficient arguments and evidence for purposes of institution that would support the following: (1) modifying Kim’s CHANNEL BROWSER card object 1340 or TV GUIDE card object 1350 to include Bae’s on screen channel number selection window 330 so that the user may change the channel by selecting corresponding numbers using left and right arrow keys; and (2) modifying Kim’s remote controller 200 to include WD-Manual’s remote control features, including, among other things, assigning or programming any one of the shortcut/function keys A, B, C, and D to display specific types of media content or device information. See Pet. 18–25; Ex. 1005 ¶¶ 38, 60, 86, 90, 115, 127, 174, 175, 177, 188, 192–217, 283, Figs. 7, 8, 22, 38; Ex. 1006, 5–7, 11, 25–26, 138–139; Ex. 1008 ¶ 23; Ex. 1003 ¶¶ 63–83.” slip op. at 35
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,055,254 - Apple Inc. v. Fintiv, Inc.No claims unpatentablePTAB · May 23, 2024 · IPR2023-00398 · APJ George R Hoskins · IPR · Final written decision
Claims 1–22 were not shown unpatentable as obvious over Dill, Vadhri, and Akashika because Dill was not shown to disclose the claimed Integration Tier Limitation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We adopt Petitioner’s undisputed formulation of ordinary skill in the art as set forth above, because we are satisfied this formulation generally comports with the level of skill necessary to understand and implement the teachings of the ’196 patent and the asserted prior art. We do not adopt Patent Owner’s annotation to Petitioner’s formulation as requiring knowledge of “mobile wallets” specifically, because we determine knowledge of “mobile payment systems and techniques” per Petitioner’s formulation is tied sufficiently to the claims of the ’196 patent to reflect the level of ordinary skill in the pertinent art. At the same time, even if we were to include knowledge of “mobile wallets” in our formulation, it would not materially change our Decision as set forth below. That is, we would still determine Petitioner has not shown by a preponderance of the evidence that Dill discloses the Integration Tier Limitation.” slip op. at 10
- Expert testimonyNot reached
“We need not resolve the parties’ dispute as to whether Dr. Houh qualifies as an ordinarily skilled artisan. Even assuming that Dr. Houh possesses, at a minimum, ordinary skill in the art—as we have done in this Decision—we determine Petitioner still fails to show that any of the challenged claims are unpatentable.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“The Integration Tier Limitation requires no further construction for purposes of this proceeding. See Pet. Reply 7 (“[N]o specific construction is required.”). The claim clearly specifies that the claimed “web services communication mechanisms” must serve as an interface between the integration tier and (1) the claimed mobile wallet application and, separately, (2) “a plurality of different device types over a plurality of different communication channels.” For purposes of this Decision, we assume that this interface may be direct or indirect. See id. at 6 (asserting that “communication channels that interface, even indirectly, with the ‘web services communication mechanisms’ still interface with the ‘web services communication mechanisms’”).” slip op. at 28
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“However, we find that of those four channels (1)–(4), only the first channel (1) is associated with web interface 137 such that it qualifies as a “communication channel,” as required by claim 1. There is no indication in the Dill disclosures cited by Petitioner that any of the other three channels (2)–(4) are associated with web interface 137. For example, Figure 9 of Dill includes a double-headed arrow to illustrate communication between web interface 137 and transfer options module 145, but Figure 9 does not include any arrows to illustrate communication between web interface 137 and any one or more of IVR interface 136, other interfaces 138, agent system 135, or mobile network 115. See Ex. 1005, Fig. 9. In other words, Petitioner fails to show Dill teaches web interface 137 interfaces with any devices over any of channels (2)–(4), as would be required by Petitioner’s mapping. In the Petition, Petitioner never clearly (or persuasively) addresses this requirement of the claim. Petitioner does contend that transfer options module 145 is coupled to various devices via interfaces 136–138 and exchanges transaction information (see Pet. 25–26; see also Pet. Reply 10– 11), but that contention misses the mark. The salient question is whether Dill’s web interface 137 (i.e., the claimed “web services communication mechanisms”) interfaces with the different device types over the channels, not whether transfer options module 145 (i.e., the claimed “integration tier”) does so.” slip op. at 30
Patent outcomesUS 10,438,196 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,438,196 - Apple Inc. v. Fintiv, Inc.No claims unpatentablePTAB · May 23, 2024 · IPR2023-00399 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 1–22 were not shown unpatentable under § 103 over Dill, Vadhri, and Akashika because Dill did not teach or render obvious the hardware SIM card and integration tier limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Institution Decision, we determined that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development with a basic knowledge of accounting” and “working knowledge of mobile payment systems and techniques,” as Petitioner proposes. Inst. Dec. 9 (quoting Pet. 3–4). We stated that “this definition generally comports with the level of skill necessary to understand and implement the teachings of the ’488 patent and the asserted prior art.” Id. (citing Ex. 1003 ¶ 22; Ex. 2001 ¶ 35).” slip op. at 10
- Expert testimonyPetitioner expert discountedMixed
“In addition, Petitioner’s reliance on Dr. Houh’s testimony (see Pet. 23–24) is unavailing. Although Dr. Houh agrees with the arguments in the Petition and includes quotes from the cited portions of Dill and Bykov (see Ex. 1002 ¶¶ 95–97), he provides no additional analysis or explanation beyond what was provided in the Petition. As a result, his testimony suffers the same deficiencies as the Petition. Also, we do not credit his conclusion that Dill includes the requisite disclosure (see id. ¶ 97) because he fails to provide sufficient supporting explanation or evidence (see 37 C.F.R. § 42.65(a)). Finally, we note that Petitioner misrepresents Dr. Shamos’s testimony by stating that Dr. Shamos “agrees that if a mobile device executes a mobile wallet over a cellular network, the mobile device has a SIM card for the mobile wallet.” Pet. Reply 22 (emphasis added) (citing Ex. 1022, 29:4–7, 40:9–10). In the cited testimony, Dr. Shamos agrees that mobile devices have SIM cards, but he does not address where a mobile wallet application would be installed. Ex. 1022, 29:4–7, 40:9–10. Thus, contrary to Petitioner’s argument, we determine that Dr. Shamos’s testimony does not support Petitioner’s position.” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“for the term “hardware SIM card” because the important points are undisputed. In particular, the parties agree that a “hardware SIM card” is a SIM card implemented in hardware rather than software. See Pet. Reply 9 (citing Ex. 1021 ¶ 36); Tr. 40:25–41:2 (Patent Owner’s counsel explaining that the language in its proposed construction was “to differentiate it from a software SIM card”); see also PO Resp. 16, 19 (asserting that the term refers to a specific type of hardware, namely a “chip” or a “smart card”) (citing Ex. 2003 ¶¶ 32–33). The parties also agree that an ordinarily skilled artisan would have known that a “SIM card” is a component in a mobile device involved in identifying and authenticating a user to a mobile network. See Tr. 30:23–31:3 (Petitioner’s counsel stating “a SIM card, just as known in the art . . . would allow the user to be able to access the mobile network” 10 Each page in Exhibit 2021 includes at least two page numbers. For clarity, we refer to the page number of the exhibit (shown in the bottom right corner), and we have adjusted Patent Owner’s citation accordingly. given “the user’s identification information on it”), 39:24–40:2 (Patent Owner’s counsel stating that “I think everyone is in agreement that the critical aspect of what makes a SIM card a SIM card is that it can authenticate a mobile device to a wireless network”). The evidence supports the parties’ understanding. The word “SIM” is an acronym for “subscriber identity module” (see, e.g., Ex. 1001, 6:58–67; Ex. 2021, 5), and the record shows that a SIM is a specific component in a mobile device that is involved in identifying and authenticating a user to a mobile network (see Ex. 2003 ¶¶ 30–31; see also e.g., Ex. 2021, 7 (stating that a SIM’s “primary function” is “to authenticate the subscriber to the network”); Ex. 2025, 3 (describing the SIM)).11 Consequently, we determine that an ordinarily skilled artisan would have understood a “hardware SIM card” to be a hardware component in a mobile device that is involved in identifying and authenticating a user to a mobile network. We do not need to further construe the term, or determine whether the additional requirements proposed by Patent Owner are appropriate, because Petitioner fails to show that the prior art teaches or suggests the claimed “hardware SIM card,” as explained below. See infra § II.D.2.a (analyzing the parties’ substantive contentions).” slip op. at 13
- BurdenNot shown unpatentable
“Petitioner has not shown, by a preponderance of the evidence, that Dill discloses “a mobile wallet application installed on a hardware SIM card,” as required by element 1.3B. See Pet. 23–24. In particular, even assuming that Dill teaches installing a mobile wallet application somewhere on a mobile device (see Pet. 23),14 Dill does not teach installing it on a hardware SIM card,15 as specifically required by the claim. Petitioner relies upon paragraph 106 of Dill (see Pet. 23), but that paragraph does not disclose this claim limitation (see Ex. 1005 ¶ 106). In relevant part, that paragraph of Dill simply states: 14 Patent Owner disagrees with this premise, arguing that Dill does not disclose a mobile device that includes a mobile wallet application. See PO Resp. 52–56. We need not resolve that dispute because, even assuming Petitioner’s premise (as we have done in this Decision), Petitioner still fails to show that the claims are unpatentable. 15 As noted above, a “hardware SIM card” is a hardware component in a mobile device that is involved in identifying and authenticating a user to a mobile network. See supra § II.C.1 (addressing meaning of term). It should also be appreciated that the methods described above may be performed by hardware components or may be embodied in sequences of machine-executable instructions, which may be used to cause a machine such as a general-purpose or special-purpose processor or logic circuits programmed with the instructions to perform the methods. These machine-executable instructions may be stored on one or more machine readable mediums, such as CD-ROMs or other type of optical disks, floppy diskettes, ROMs, RAMs, EPROMs, EEPROMs, magnetic or optical cards, flash memory, or other types of machine-readable mediums suitable for storing electronic instructions. Alternatively, the methods may be performed by a combination of hardware and software. Ex. 1005 ¶ 106 (emphases added). This teaches storing instructions on “other types of machine-readable mediums,” but it fails to teach storing instructions on a hardware SIM card, much less storing Dill’s mobile wallet application there. In short, Dill is silent with respect to this issue, and silence is not disclosure. Notably, Petitioner does not contend (or show) that a mobile wallet application installed on a mobile device would necessarily be installed on a hardware SIM card. See Pet. 23–24; Ex. 1003 ¶¶ 95–97. Indeed, the record indicates that a mobile wallet application installed on a mobile device could instead be installed on a different component. See, e.g., Ex. 1001, 7:1–3, 9:33–35 (identifying device memory as alternate component); Ex. 2021, 5 (describing SIM as the “smaller of two computer chips inside a GSM mobile handset”); cf. Pet. Reply 9 (distinguishing between hardware SIM cards and software ones). Thus, Petitioner fails to show that this claim limitation is inherent in Dill. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (explaining that inherency requires a showing that “the limitation at issue necessarily must be present”).” slip op. at 22
Patent outcomesUS 9,208,488 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,208,488 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · May 23, 2024 · IPR2024-00150 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR of claims 1–5 on all four asserted obviousness grounds, finding a reasonable likelihood of success on the Gibson and Schiltz combination.
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. 1025) 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 14
- BurdenDecided for petitioner
“We disagree. The Petition is clear that it presents alternative challenges where Goldberg, Thacker, ITU-T J.83, and/or AAPA are added to the combination of Gibson and Schiltz or are added to Crols, if the term “cable modem,” recited in the preamble of claim 1, is determined to be limiting. Pet. 6–7. In the context presented here, “and/or” clearly means one or more of the four additional references. And Petitioner’s reliance on one or more of the additional references is clear in the context of the issues before us based on Petitioner’s analysis of the preamble of claim 1, where Petitioner clearly states, “[a]nd to the extent that the preamble is limiting and requires a ‘cable modem,’ it would have been obvious to use the modem of Gibson (as modified by Schiltz, discussed below) as a cable modem, in view of Thacker, Goldberg, ITU-T J.83, and/or AAPA.” Pet. 42 (Ground 1); see id. at 66–67 (similarly asserting, in the context of Ground 2, that, “[t]o the extent that the preamble is limiting and requires a ‘cable modem,’ it would have been obvious to use the modem of Crols as a cable modem, in view of Thacker, Goldberg, ITU-T J.83, and/or AAPA”). Petitioner also includes a discussion as to why one of ordinary skill in the art would have been motivated to “use the modems of Gibson modified with Schiltz (Ground 1), and Crols (Ground 2), as ‘cable modems,’ in view of the DOCSIS References (Thacker and Goldberg), ITU-T J.83, and AAPA,” and would have had a reasonable expectation of success in so doing. Id. at 37–40. Thus, we do not agree with Patent Owner that the Petition lacks particularity and we find that the Petition clearly sets forth the alternative combinations discussed above such that Patent Owner has a fair opportunity to respond.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“l. Summary as to Claim 1 For the reasons discussed above, on the present record we find that Petitioner has established that the combination of Gibson and Schiltz teaches each of the elements of claim 1 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.” slip op. at 40
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposed level of ordinary skill in the art is identical to the level of skill that we found applicable in the final written decision in the TCL IPR. See IPR2021-00985, Paper 44 at 13. We see no reason to deviate from our previous finding, which is now further supported by Dr. Larson’s testimony. See Ex. 1003 ¶ 26. Accordingly, at this stage of the proceeding and on the present record, we adopt Petitioner’s proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’835 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 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,292,835 - PTAB · May 21, 2024 · IPR2024-00352 · APJ St John Courtenay III · IPR · Institution
The Board instituted IPR on claims 1–14 on all asserted grounds, finding a reasonable likelihood that claims were obvious over Woods and over Woods with Machida.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Sotera stipulation must be filed in the two parallel district court cases. See Prelim. Resp. 13–16. This same argument was raised previously in another proceeding before the Board. See Taiwan Semiconductor Mfg. Co. Ltd. v. Alidouble, Inc., IPR2023-00369, Paper 7 at 10 (PTAB July 12, 2023) (Institution Decision) (declining to discount petitioner’s stipulation because petitioner did not file it in the district court). In Taiwan Semiconductor, patent owner urged the Board to exercise discretion to deny institution under § 314(a) in light of a parallel district court litigation because, in part, petitioner had not filed the stipulation in the district court. Id. at 9. The Board disagreed and found that the Director’s Memo does not require that such a stipulation be filed in the district court, only that the petitioner must “stipulate[]” or “present[] a stipulation.” Id. (citing Director’s Memo at 3, 7). Here, we agree with the Board’s reasoning in Taiwan Semiconductor case, and we understand the Director’s Memo as only requiring Petitioner to “stipulate[]” or “present[] a stipulation.” The Director’s Memo is silent regarding any requirement for Petitioner to file a stipulation in the district court case where Petitioner is a party. Director’s Memo at 3, 7. Even if arguendo Petitioner’s Sotera stipulation should also be filed in district court, here Petitioner did file a “Notice of Sotera Stipulation” in the district court case where Petitioner is a party. Ex. 1012. This Notice states that “[LG] hereby stipulate[s], consistent with the stipulation made by the [p]etitioner in Sotera that, if the PTAB institutes an IPR in response to [LG’s] petition against [Multimedia’s] U.S. Patent No. 9,247,174 (IPR2024- 00352), [LG] will not pursue in this litigation the grounds raised or any other grounds that could have reasonably been raised before the PTAB in that instituted proceeding.” Id. at 2. Consequently, the purpose of Petitioner’s Sotera stipulation has been achieved here because it “mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions.” Sotera, Paper 12 at 19 (citing Sand Revolution II, LLC v. Cont’l Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 12 (PTAB June 16, 2020) (Decision Granting Request for Rehearing) (informative)). Although Patent Owner is correct that Petitioner’s Sotera stipulation would have little, if any, impact on the district court case where Vizio is a party (see Prelim. Resp. 16–17), the Director’s interim guidance does not condition or otherwise qualify the effect of a Sotera stipulation on our exercise of discretion to deny this Petition based on any remaining defendants in the parallel district court cases that are not subject to the stipulation (see Director Memo at 7, 9). Put simply, Petitioner has filed a Sotera stipulation in this proceeding and, as a result, we will not exercise our discretion to deny its’ Petition.” slip op. at 21
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner and Patent Owner, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the subject matter of independent claim 1 would have been obvious over Woods, considered as a single reference under 35 U.S.C. § 103(a).” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose claim construction for any term, although it identifies two terms it contends are defined in the Specification of the ’174 patent. Pet. 11. Patent Owner does not dispute Petitioner’s statements on claim construction. Prelim. Resp. 30. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent necessary for institution, we note a disagreement between the parties regarding the term “application panel” in claims 1 and 10, and address it below. See infra § VI.A.10.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“the operation panels of Machida to be relevant to a television environment,” and that Machida performs panel selection automatically and not as a direct result of user selection, and therefore Machida “teaches away from combining Machida with Woods, particularly with respect to the panels described in Woods.” Prelim. Resp. 39. But Machida expressly describes a television environment in paragraph 35, which explicitly contemplates “TV type services, data broadcasting services, and data added TV services.” Moreover, we preliminarily are of the view that Patent Owner is imputing an overly narrow construction to at least claim 1 regarding the term “panel,” as discussed supra. Further, a reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). For at least these reasons, we preliminarily find that Petitioner’s arguments regarding claims 1–14 under Ground 3 over Woods and Machida are sufficient at this juncture.” slip op. at 39
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,247,174
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.