• Tiktok Inc. v. Cellspin Soft, Inc.Instituted
  PTAB · Oct 1, 2024 · IPR2024-00767 · APJ Cynthia M Hardman · IPR · Institution

  The Board instituted inter partes review of claims 1–16 on all asserted grounds, finding a reasonable likelihood that the claims are obvious over either asserted combination.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. See 10 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). 11 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (Dec. 1, 2020) (“Sotera”). Ex. 1034 (Guidance) 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 11

  • Other 314aDecided for petitioner

    “Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 14

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “On this record, we find that Petitioner has adequately demonstrated that the Examiner erred in a manner material to patentability. This follows from our finding that on the current record, Petitioner has shown a reasonable likelihood that the challenged claims are not entitled to a priority date earlier than December 4, 2021 and would have been obvious over Singh129 and Singh906. See infra Section III.F. We find Patent Owner’s assertion that the Examiner understood that “[a]dding the Bluetooth feature to the existing mobile application is the reason for [the] ‘incorporated reference’ in Cellspin’s disclosure” is not supported on this record, including because Patent Owner does not cite any portion of the prosecution history that reflects this alleged understanding. Prelim. Resp. 21. For the above reasons, we decline to exercise our discretion to deny inter partes review under § 325(d).” slip op. at 17

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “3. Conclusion – Ground 1 After considering the arguments and cited evidence of record, we determine that for purposes of institution, Petitioner sufficiently shows that the combination of Hiroishi, Kahn, and Bluetooth teaches or suggests each limitation of claims 1–16, and that a person of ordinary skill in the art would have had a reason to combine the teachings of these references with a reasonable expectation of success. See, e.g., Pet. 16–60. Accordingly, on this record, Petitioner shows a reasonable likelihood of prevailing on Ground 1, and on this basis, we institute an inter partes review of all challenged claims. See 37 C.F.R. § 42.208(a).” slip op. at 49

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,659,381
• Tiktok Inc. v. Cellspin Soft, Inc.Instituted
  PTAB · Oct 1, 2024 · IPR2024-00768 · APJ Cynthia M Hardman · IPR · Institution

  The Board instituted IPR on claims 1–10 because Petitioner showed a reasonable likelihood of prevailing on both obviousness grounds: Hiroishi, Kahn, Endsley, and Bluetooth; and Singh129 with Singh906.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has 9 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). 10 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (Dec. 1, 2020) (“Sotera”). issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. See Ex. 1034 (Guidance) 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 10

  • Other 314aDenied

    “Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 13

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “On this record, we find that Petitioner has adequately demonstrated that the Examiner erred in a manner material to patentability. This follows from our finding that on the current record, Petitioner has shown a reasonable likelihood that the challenged claims are not entitled to a priority date earlier than August 6, 2019, and would have been obvious over Singh129 and Singh906. See infra Section III.F. We find Patent Owner’s assertion that the Examiner understood that “[a]dding the Bluetooth feature to the existing mobile application is the reason for [the] ‘incorporated reference’ in Cellspin’s disclosure” is not supported on this record, including because Patent Owner does not cite any portion of the prosecution history that reflects this alleged understanding. Prelim. Resp. 21. For the above reasons, we decline to exercise our discretion to deny inter partes review under § 325(d).” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time the invention was made. See Graham, 383 U.S. at 17–18. Petitioner contends that a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”) would have had: at least a bachelor’s degree in electrical engineering, computer engineering, or computer science, and two years of experience in the field consumer electronics, with exposure to digital camera technology and wireless communications. Superior education could compensate for a deficiency in work experience, and vice-versa. Pet. 6–7 (citations omitted) (citing Ex. 1030 (Lett Decl.) ¶¶ 94–95). Patent Owner does not provide an explicit definition of a POSITA. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,234,121
• Copeland Comfort Control LP / Ecobee Technologies Ulc v. Ollnova Technologies Ltd.All claims unpatentable
  PTAB · Oct 1, 2024 · IPR2024-00131 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1, 3–8, 14, 15, and 18 are unpatentable as obvious over the Kates-711 grounds; the Board did not reach the alternative Kates-505 grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had a minimum of a bachelor’s degree in electrical engineering, or a related field, along with at least two years of professional experience in sensors, controls, and/or wireless communications.” Pet. 13–14 (citing Ex. 1002 ¶ 44–47). Petitioner further contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. We apply Petitioner’s proposed level of skill in the art because it appears consistent with the problems addressed in the ’887 patent and the prior art.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “sensed condition outside a predetermined range.” Patent Owner’s proposed construction of the second wherein clause replaces the word “suspended” with “that would otherwise occur is stopped.” PO Resp. 8–9 (“emphasis omitted”). This phrase is not part of claim 1. Nonetheless, adopting Patent Owner’s proposed construction could potentially render the second wherein clause superfluous because the first wherein clause does not require transmission of the most recent reading to occur when the change is within the predetermined range. Consequently, the language of claim 1 does not require or suggest Patent Owner’s proposed construction.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “recent reading of the indicator stored in the memory during a period of a transmission interval in response to detecting a change in the sensed condition outside a predetermined range.” Ex. 1001, 14:63–67. This limitation also requires that “during the period of the transmission interval” the transmission “is suspended in response to detecting a change in the sensed condition within the predetermined range.” Id. at 14:67–15:4. Petitioner, therefore, must show that Kates-711 discloses a transceiver configured to transmit information or suspend transmission of the information during a “period” within a “transmission interval.” For the recited “transmission interval,” Petitioner contends that Kates’s “periodic intervals of ‘periodic monitoring’ is a [1.e] ‘transmission interval,’ during which there is a [1.e] ‘transmission period’ that includes a ‘report block.’” Pet. Reply 9. We agree with Petitioner for the following reasons. Kates describes the process shown in Figure 7 as follows: FIG. 7 is a flowchart showing one embodiment of operation of the sensor unit 102 wherein periodic monitoring is provided. In FIG. 7, a power up block 701 is followed by an initialization block 702, After initialization, the sensor unit 102 enters a low-power sleep mode. If a fault occurs during the sleep mode (e.g., the tamper sensor is activated), then the process enters a wake-up block 704 followed by a transmit fault block 705. If no fault occurs during the sleep period, then when the specified sleep period has expired, the process enters a block 706 where the sensor unit 102 takes a sensor reading from the sensor(s) 201. The sensor data is subsequently sent to the monitoring computer 13 in a report block 707. After reporting, the sensor unit 102 enters a listen block 708 where the sensor unit 102 listens for a relatively short period of time for instructions from monitoring computer 708. If an instruction is received, then the sensor unit 102 performs the instructions, otherwise, the process returns to the sleep block 703. Ex. 1004, 15:50–65. Based on this description of Figure 7, we find that Kates’s report block 707 corresponds to the recited “a period of the transmission interval” because it is a period of time when “sensor data is . . . sent to the monitoring computer.” Ex. 1004, 15:61. Further, block 707 is within an interval of “periodic monitoring” i.e., the process loop shown in Figure 7 beginning at block 703 and comprising steps 703, 706, 707, 708, 709, 710 and back to block 703. See also Ex. 1052 ¶ 22 (Dr. Neikirk testifying “each of [Kates’s] periodic intervals during which the ‘periodic monitoring’ process occurs is a ‘transmission interval’ . . . and the report block’ that occurs within this process is a transmission period.” (citations omitted)).” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “2. Analysis Motivation to Combine and Reasonable Expectation of Success Petitioner contends that “[w]hile Kates-711’s teachings not only render obvious but also disclose the ‘memory’ elements ([1.d]-[1.e], [5]), Hitt provides explicit teachings of a memory storing information as claimed.” Pet. 42. Petitioner further contends that Hitt’s memory 155 “stores instructions for execution by processor 156 and also stores periodically sampled sensor data for retrieval by the processor for processing and/or transmission.” Id. at 43 (citing Ex. 1002 ¶ 112; Ex. 1005 ¶¶ 65, 67– 68). According to Petitioner, an ordinarily skilled artisan “would have been motivated to modify Kates-711’s sensor units with Hitt’s teachings of ‘memory’ to achieve the beneficial and predictable result of utilizing a memory to securely store sensor readings.” Id. (citing Ex. 1002 ¶ 114). Petitioner argues that an ordinarily skilled artisan would have been further motivated to modify Kates-711 “by storing these sensor values in memory as taught by Hitt to improve reliability” in light of Hitt’s teaching that “storage of sensor values in memory . . . ensur[es] that the values are available for calculations and not unintentionally lost or erased, e.g., due to power outages or interruptions.” Id. at 44–45 (citing Ex. 1002 ¶ 116; Ex. 1005 ¶¶ 67–68). Petitioner next contends that an ordinarily skilled artisan would have had a reasonable expectation of success because Kates-711 “discloses that its controller may be a ‘conventional programmable microcontroller’; such microcontrollers were well-understood to commonly use a memory to, e.g., track data variables used for control applications.” Pet. 45 (citing Ex. 1002 ¶ 117). We have reviewed Petitioner’s evidence and contentions and find that Petitioner establishes that an ordinarily skilled artisan would have been motivated to modify Kates-711 with the teachings of Hitt and would have had a reasonable expectation of success. Ex. 1002 ¶¶ 112–117.” slip op. at 37

  Patent outcomesUS 7,746,887 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,746,887
• Copeland Comfort Control LP / Ecobee Technologies Ulc v. Ollnova Technologies Ltd.All claims unpatentable
  PTAB · Oct 1, 2024 · IPR2023-00626 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1, 3–8, 14, 15, and 18 are unpatentable as obvious over the Kates-711 grounds; the alternative Kates-505 grounds were not reached.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “For these reasons, in order to resolve the present controversy, we determine that the plain and ordinary meaning of “suspended”, as used in the challenged claims, encompasses both where a transmission that would otherwise occur is suspended by an action such as overriding a flag and where a transmission is not made because there is no change in an indicator or a change does not exceed a limit. Upon review the parties’ respective contentions, we determine that no other express constructions of any other claim term is required for this decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “2. Analysis Motivation to Combine and Reasonable Expectation of Success Petitioner contends that “[w]hile Kates-711’s teachings not only render obvious but also disclose the ‘memory’ elements ([1.d]-[1.e], [5]), Hitt provides explicit teachings of a memory storing information as claimed.” Pet. 42. Petitioner further contends that Hitt’s memory 155 “stores instructions for execution by processor 156 and also stores periodically sampled sensor data for retrieval by the processor for processing and/or transmission.” Id. at 43 (citing Ex. 1002 ¶ 112; Ex. 1005 ¶¶ 65, 67– 68). According to Petitioner, an ordinarily skilled artisan “would have been motivated to modify Kates-711’s sensor units with Hitt’s teachings of ‘memory’ to achieve the beneficial and predictable result of utilizing a memory to securely store sensor readings.” Id. (citing Ex. 1002 ¶ 114). Petitioner argues that an ordinarily skilled artisan would have been further motivated to modify Kates-711 “by storing these sensor values in memory as taught by Hitt to improve reliability” in light of Hitt’s teaching that “storage of sensor values in memory . . . ensur[es] that the values are available for calculations and not unintentionally lost or erased, e.g., due to power outages or interruptions.” Id. at 44–45 (citing Ex. 1002 ¶ 116; Ex. 1005 ¶¶ 67–68). Petitioner next contends that an ordinarily skilled artisan would have had a reasonable expectation of success because Kates-711 “discloses that its controller may be a ‘conventional programmable microcontroller’; such microcontrollers were well-understood to commonly use a memory to, e.g., track data variables used for control applications.” Pet. 45 (citing Ex. 1002 ¶ 117). We have reviewed Petitioner’s evidence and contentions and find that Petitioner establishes that an ordinarily skilled artisan would have been motivated to modify Kates-711 with the teachings of Hitt and would have had a reasonable expectation of success. Ex. 1002 ¶¶ 112–117.” slip op. at 37

  • BurdenFwd all claims unpatentableUnpatentable

    “III. CONCLUSION12 Weighing the competing evidence and testimony, we determine that Petitioner establishes by a preponderance of the evidence that claims 1, 3–8, 14, 15, and 18 of the ’887 patent are unpatentable.” slip op. at 46

  Patent outcomesUS 7,746,887 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,746,887
• Copeland Comfort Control LP v. Ollnova Technologies Ltd.All claims unpatentable
  PTAB · Oct 1, 2024 · IPR2023-00624 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–5, 7–11, 13–16, and 20–21 are unpatentable: claims 1–5, 7–11, and 20–21 over McFarland, and claims 13–16 over McFarland and Kates-089.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Claim 1 recites “a multi-sensor package configured to detect a plurality of variables and generate sensor data for each detected variable.” Ex. 1001, 10:46–48. Both parties agree that a “multi-sensor package” is a single packaged device with multiple sensors, not a group of individual sensors. See PO Resp. 6; Pet. Reply 2. Claim 1 does not recite a multi-sensor package with “multiple operational sensors.” Patent Owner does not explain the difference between operational sensors and sensors “configured” as recited in claim 1 or why claim 1 should be construed as requiring an “operational” limitation that does not appear in the claim. Consequently, a requirement that the sensors comprising the package be “operational” is neither required by claim 1 nor suggested by the language of claim 1.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had a minimum of a bachelor’s degree in electrical engineering, or a related field, along with at least two years of professional experience in sensors, controls, and/or wireless communications.” Pet. 10–11 (citing Ex. 1002 ¶¶ 46–49). Petitioner further contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner does not address the level of ordinary skill in the art. See PO Resp. We apply Petitioner’s level of skill in the art because it appears consistent with the problems addressed in the ’282 patent and the prior art.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “McFarland discloses an exemplary sensor 209 that “is configured as any of a temperature sensor, humidity sensor, fire sensor, pressure sensor, smoke sensor, occupancy sensor, air quality sensor, gas sensor, O2, CO2, or CO sensor, accelerometer, velocity sensor, [or] combinations thereof” and “may be . . . micro-mechanical sensors . . . or larger sensors for sensing any condition or parameter.” Ex. 1027 ¶ 43 (emphasis added). Patent Owner submits that paragraph 43 of McFarland describes “a device . . . that sense[s] conditions, parameters and/or events such as an environmental condition in a building.” PO Resp. 28 (emphasis added). Based on the foregoing, we find that McFarland teaches “a multi-sensor package configured to detect a plurality of variables.” Ex. 1002 ¶ 72 (“sensor 209 may be configured to detect multiple different variables including temperature, humidity, and other variables”); Ex. 1027 ¶ 43. McFarland further discloses “sensor 209 generates information or data related to the sensed or monitored condition” and “output as one or more signals that may be read by the processor 214.” Ex. 1027 ¶ 43. McFarland further discloses that “information may be generated in response to a physical stimulus such as light, sound, pressure, heat, magnetism, motion, and/or acceleration” that “may be detected as a result of sensing or monitoring the conditions or parameters.” Id.; see also id. ¶ 44 (“A signal generated by the sensor 209 may be an indicator of the sensed condition.”). McFarland also discloses that “processor 214 implements a control process for the device 207” that “may be implemented based on a signal that is read from and/or provided by the sensor 209, such as a measured value of a parameter, an indicator of a sensed condition and/or status of an event.” Id. ¶ 39. Thus, we find McFarland teaches that sensor 209 “generate[s] sensor data for each detected variable.” Ex. 1002 ¶ 74 (“For each condition that it monitors, the sensor generates and outputs sensor data for each measured variable in the form of ‘a measured variable’ or ‘indicator.’” (citing Ex. 1027 ¶¶ 39, 45, 47)). For the foregoing reasons and after reviewing Petitioner’s evidence in light of Patent Owner’s contentions, we find that McFarland teaches this limitation.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “Motivation to Combine/Reasonable Expectation of Success Petitioner contends that McFarland discloses that a wireless automation device wakes up and enters a standby or sleep mode in response to a report instruction. Pet. 46. Petitioner acknowledges that McFarland “does not explicitly state that the ‘report instruction’ includes a ‘wake-up command’ or describe how the device is instructed to return to a ‘sleep’ mode between reporting intervals.” Id. (citing Ex. 1027 ¶¶8, 18, 48, 62). Petitioner next contends that Kates-089 “teaches that such a ‘report instruction’ comprises a ‘wake-up command,’ and that a controller issues a ‘standby mode’ instruction (i.e., a ‘power down command’).” Id. (citing Ex. 1029 ¶¶ 78, 82, 86). According to Petitioner, an ordinarily skilled artisan “would have been motivated to modify McFarland with” the teachings of Kates-089 “to advantageously facilitate reporting data both periodically and in response to commands while conserving power via ‘wake-up’ and ‘standby’ (i.e., power-down) commands.” Id. (citing Ex. 1002 ¶ 147; Ex. 1027 ¶ 62; Ex. 1029 ¶¶ 40, 74–75, 82, 86); id. at 47 (arguing that an ordinarily skilled artisan in light of Kates-089 “would have been motivated to modify McFarland’s ‘report’ instruction to include a wake-up command” (citing Ex. 1002 ¶ 149)) (emphasis omitted). Petitioner further contends that an ordinarily skilled artisan would have been motivated to combine McFarland and Kates-089 “to save power consumed during, e.g., the 99.9% of the polling interval when the device may otherwise be unnecessarily turned on.” Id. at 48 (citing Ex. 1002 ¶ 150). Petitioner next contends that an ordinarily skilled artisan would have had a reasonable expectation of success “applying Kates-089’s wake-up and power-down command teachings to McFarland’s wireless automation device” because “McFarland already teaches that the wireless automation device wakes up and powers down in response to certain commands[] and such commands were well understood.” Pet. 48 (citing Ex. 1002 ¶ 151; Ex. 1005 ¶ 32; Ex. 1027 ¶¶ 8, 18, 48, 62; Ex. 1032, 12:48–54; Ex. 1033, 12:16– 22) (emphasis omitted). Patent Owner does not address motivation to combine or reasonable expectation of success for claim 13. See PO Resp. 26–35. We have reviewed Petitioner’s evidence and contentions and find that” slip op. at 45

  Patent outcomesUS 8,224,282 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,224,282
• Tiktok Inc. v. Cellspinsoft, Inc.Instituted
  PTAB · Sep 30, 2024 · IPR2024-00770 · APJ Michael A Valek · IPR · Institution

  The Board instituted IPR on claims 1, 2, 4–7, and 9–18 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has 8 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). 9 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (Dec. 1, 2020) (“Sotera”). issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1034, 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The analyze this issue under the following two-part framework set forth in Advanced Bionics: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, IPR2019-01469, Paper 6, 8.” slip op. at 10

  • Other 314aDenied

    “Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition, notwithstanding its merits, based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 12

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “iii. Conclusion – Grounds 1A–B After considering the arguments and cited evidence of record, we determine that for purposes of institution, Petitioner sufficiently shows that both the combination of Hiroishi, Takahashi and Bluetooth in Ground 1A and the combination of Hiroishi, Kahn, and Bluetooth in Ground 1B teach or suggest each limitation of claims 1, 2, 4–7 and 9–18,20 and that a person of ordinary skill in the art would have had a reason to combine the teachings of these references with a reasonable expectation of success. See, e.g., Pet. 11– 68. Accordingly, on this record, Petitioner shows a reasonable likelihood of prevailing on Grounds 1A–B, and on this basis, we institute an inter partes review of all challenged claims. See 37 C.F.R. § 42.208(a). 19 While the term “WMTP” appears in these figures, it does not seem to be defined or discussed elsewhere in Kahn. 20 At this stage, Patent Owner does not make any additional arguments against Petitioner’s showing for the dependent claims.” slip op. at 42

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,904,030
• Tiktok Inc. v. Cellspinsoft, Inc.Instituted
  PTAB · Sep 30, 2024 · IPR2024-00759 · APJ Michael A Valek · IPR · Institution

  The Board instituted IPR of claims 1–26 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1025, 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 8

  • Other 314aInstitution denied discretionary otherDenied

    “Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 10

  • Skill levelSkill level petitioner adoptedOther

    “B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art (“POSITA”) as of December 28, 2007 would have “had at least a Bachelor of Science in electrical engineering, computer engineering, computer science, or a related field, with at least two years of relevant work experience in wireless communications and/or networking systems, or equivalents thereof.” Pet. 3 (citing Ex. 1003 ¶ 21). Patent Owner does not dispute or otherwise respond to Petitioner’s description of a POSITA in its Preliminary Response. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “On the current record, Patent Owner’s claim construction arguments are unpersuasive for several reasons. First, in addition to reciting a “user identifier,” claim 1 separately recites “wherein said user identifier uniquely identifies a particular user of the web service.” Ex. 1001, 11:66–67. The fact that the surrounding claim language specifies that the “user identifier” must uniquely identify a user “strongly implies” that such a requirement is not required by the term itself. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (explaining that the context in which a claim term is used “can be highly instructive” and that the fact that “the claim in this case refers to ‘steel baffles’ . . . strongly implies that the term ‘baffles’ does not inherently mean objects made of steel”); Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012) (“the reference in some claims to a ‘registration server being further characterized in that it is free of content managed by the architecture’ strongly implies that the term ‘registration server,’ standing alone, does not inherently mean a server that is free of managed content”). Moreover, there is no need to construe “user identifier” to include a requirement that it identify uniquely a user of a web service, as in Patent Owner’s proposed construction, because that requirement is apparent from the surrounding claim language. Second, Patent Owner has not shown that the authentication requirement in its construction, i.e., that the user identifier be a “text string” that “contains sufficient information to authenticate a user of the web service,” is supported by the intrinsic record. Patent Owner’s authentication requirement is not apparent from the claim language, nor has Patent Owner attempted to show that a POSITA would have understood the ordinary meaning of “user identifier” to require such. The only intrinsic support Patent Owner cites are figures and related disclosure describing a preferred embodiment in the ’802 application.9 This disclosure uses different terms, e.g., “user preferences” and “login information,” which on this record Patent Owner has not sufficiently connected to the “user identifier” in claim 1. See Ex. 2009 ¶¶ 18, 23, 25–26. Even if that connection had been shown, the disclosure Patent Owner cites is permissive in nature, stating, e.g., that “user preferences may comprise authentication credentials,” and not that authentication credentials are required. Id. ¶ 23. Thus, on the current record, we decline Patent Owner’s invitation to import an authentication requirement into the claims through the construction of “user identifier.”” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,862,757
• Tiktok Inc. v. Cellspinsoft, Inc.Instituted
  PTAB · Sep 30, 2024 · IPR2024-00757 · APJ Michael A Valek · IPR · Institution

  The Board instituted IPR on claims 1–5 because the Petition showed a reasonable likelihood of prevailing on obviousness over Aaltonen and Drescher.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1025, 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 8

  • Other 314aInstitution denied discretionary otherDenied

    “Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art (“POSITA”) as of December 28, 2007 “would have had at least a Bachelor of Science in electrical engineering, computer engineering, computer science, or a related field, with at least two years of relevant work experience in wireless communications and/or networking systems, or equivalents thereof.” Pet. 3 (citing Ex. 1003 ¶ 21). Patent Owner does not dispute or otherwise respond to Petitioner’s description of a POSITA in its Preliminary Response. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “On the current record, Patent Owner’s claim construction arguments are unpersuasive for several reasons. First, in addition to reciting a “user identifier,” claim 1 separately recites “wherein each user identifier uniquely identifies a particular user of the web service.” Ex. 1001, 12:10–13. The fact that the surrounding claim language specifies that the “user identifier” must uniquely identify a user “strongly implies” that such a requirement is not required by the term itself. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (explaining that the context in which a claim term is used “can be highly instructive” and that the fact that “the claim in this case refers to ‘steel baffles’ . . . strongly implies that the term ‘baffles’ does not inherently mean objects made of steel”); Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012) (“the reference in some claims to a ‘registration server being further characterized in that it is free of content managed by the architecture’ strongly implies that the term ‘registration server,’ standing alone, does not inherently mean a server that is free of managed content”). Moreover, there is no need to construe “user identifier” to include a requirement that it identify a user of a web service, as in Patent Owner’s proposed construction, because that requirement is apparent from the surrounding claim language. Second, Patent Owner has not shown that the authentication requirement in its construction, i.e., that the user identifier be a “text string” that “contains sufficient information to authenticate a user of the web service,” is supported by the intrinsic record. Patent Owner’s authentication requirement is not apparent from the claim language, nor has Patent Owner attempted to show that a POSITA would have understood the ordinary meaning of “user identifier” to require such. The only intrinsic support Patent Owner cites are figures and related disclosure describing a preferred embodiment in the ’802 application.10 This disclosure uses different terms, e.g., “user preferences” and “login information,” which on this record Patent Owner has not sufficiently connected to the “user identifier” in claim 1. See Ex. 2009 ¶¶ 18, 23, 25–26. Even if that connection had been shown, the disclosure Patent Owner cites is permissive in nature, stating, e.g., that “user preferences may comprise authentication credentials,” and not that authentication credentials are required. Id. ¶ 23. Thus, on the current record, we decline Patent Owner’s invitation to import an authentication requirement into the claims through the construction of “user identifier.”” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,756,336
• Tiktok Inc. / Byedance Inc. et al. v. Cellspinsoft, Inc.Instituted
  PTAB · Sep 30, 2024 · IPR2024-00769 · APJ Gregg I Anderson · IPR · Institution

  The Board instituted inter partes review of claims 1–15 on all asserted grounds, finding a reasonable likelihood that the claims are unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1034,8 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 11

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “Section 325(d) provides discretion to “reject the petition” if “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The analyze this issue under the following two-part framework set forth in Advanced Bionics: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is 9 Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, IPR2019-01469, Paper 6, 8.” slip op. at 12

  • Other 314aDecided for petitioner

    “Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition, notwithstanding its merits, based on the policy considerations and concerns Patent Owner alleges.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill in the Art Petitioner alleges a person of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering, computer engineering, or computer science, and two years of experience in the field of consumer electronics, with exposure to digital camera technology and wireless communications. . . . Superior education could compensate for a deficiency in work experience, and vice-versa. Pet. 6 (citing Ex. 1030 ¶¶ 94–95). Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. Petitioner’s proposal is supported by the Lett Declaration and is consistent with the ’766 patent. Accordingly, we apply Petitioner’s articulation.” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,900,766
• Tiktok Inc. v. Cellspin Soft, Inc.Instituted
  PTAB · Sep 30, 2024 · IPR2024-00760 · APJ Gregg I Anderson · IPR · Institution

  The Board instituted IPR on claims 1–18, finding a reasonable likelihood that at least claim 1 is obvious over Aaltonen and Drescher.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1023,8 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 14

  • Other 314aDenied

    “Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we discern no discretion under § 316(b) to deny the Petition based on the policy considerations and concerns Patent Owner alleges.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill in the Art Petitioner alleges a person of ordinary skill in the art would have had at least a Bachelor of Science in electrical engineering, computer engineering, computer science, or a related field, with at least two years of relevant work experience in wireless communications and/or networking systems, or equivalents thereof. []. Superior education could compensate for a deficiency in work experience, and vice-versa. []. Pet. 3–4 (citing Ex. 1003 ¶ 21). Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. Petitioner’s proposal is supported by the testimony of Dr. Traynor and is consistent with the ’260 patent. Accordingly, we apply Petitioner’s articulation.” slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “On the current record, Patent Owner’s claim construction arguments are unpersuasive. First, Patent Owner has not shown that the authentication requirement in its construction is supported by the intrinsic record. Patent Owner’s proposed construction requires that the user identifier be a “text string” that “contains sufficient information to authenticate a user of the web service.” Prelim. Resp. 35. Patent Owner’s authentication requirement is not a part of the claim language, nor has Patent Owner attempted to show that a person of ordinary skill in the art would have understood the ordinary meaning of “user identifier” to require such. Authentication does appear in the ’260 patent in the context of BT. Specifically, BT “can crypto graphically authenticate the identity of another BT device.” Ex. 1001, 3:61– 63. Authentication of the user does not appear in the specification. The only intrinsic evidence support Patent Owner cites are figures and related disclosure describing a preferred embodiment in the ’802 application.9 The disclosure uses different terms, e.g., “user preferences” and “login information,” which on this record Patent Owner has not sufficiently connected to the “user identifier” in claim 1. See Ex. 2009 ¶¶ 18, 23, 25–26. Even if that connection had been made, the disclosure Patent Owner cites is permissive in nature, stating, e.g., that “user preferences may comprise authentication credentials” and not that authentication credentials are required. Id. ¶ 23. Thus, on the current record, we decline Patent Owner’s invitation to import an authentication requirement into the claims through the construction of “user identifier.”” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,898,260

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.