- PTAB · Dec 23, 2024 · IPR2024-01060 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted review of all challenged claims on all asserted grounds and granted DIRECTV’s motion to join the DISH IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to institute review under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we institute an inter partes review of claims 1 and 3 of the ’518 patent and grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“(2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact, if any, joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB April 24, 2013).” slip op. at 4
NonePatents in suitUS 7,594,249 - PTAB · Dec 23, 2024 · IPR2024-01059 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1 and 3 on all petition grounds and joined DIRECTV to the DISH IPR, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons set forth in the 393 Decision, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’518 patent. Thus, we institute an inter partes review on all grounds and all challenged claims of the ’518 patent set forth in the Petition.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Upon review of Petitioner’s arguments, which were not opposed by Patent Owner, we agree that joinder of this proceeding with the DISH IPR is appropriate. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 5
NonePatents in suitUS 7,295,518 - PTAB · Aug 13, 2024 · IPR2024-00901 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–9, 11–19, and 21–24 on all petition grounds and granted fuboTV’s motion to join the Aylo IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the issues in the instant Petition are identical to those in the Aylo IPR, and for the same reasons stated in our Decision on Institution in the Aylo IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See Aylo IPR, Paper 8.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantively identical to the petition in the Aylo IPR, contains the same grounds based on the same evidence, and relies on the same declaration of Dr. Henry Houh. Mot., passim; Ex. 1003. Petitioner also represents that it “agrees to take an understudy role” so that “the parties can comply with the trial schedule assigned to the Instituted Aylo IPR without any duplicative efforts by the Board or the Patent Owner.” Mot. 7–8.” slip op. at 10
NonePatents in suitUS 11,677,798 - PTAB · Aug 13, 2024 · IPR2024-00904 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–12, 14–19, 21–25, and 27–29 on all petitioned grounds, and granted fuboTV’s motion to join the Aylo IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see 37 C.F.R. § 42.4 (2023). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least 1 claim of the ’680 patent. Accordingly, we institute inter partes review of claims 1, 2, 4–12, 14–19, 21–25, and 27–29 of the ’680 patent. We also grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantively identical to the petition in the Aylo IPR, contains the same grounds based on the same evidence, and relies on the same declaration of Dr. Henry Houh. Mot., passim; Ex. 1003. Petitioner also represents that it “agrees to take an understudy role” so that “the parties can comply with the trial schedule assigned to the Instituted Aylo IPR without any duplicative efforts by the Board or the Patent Owner.” Mot. 7–8.” slip op. at 10
NonePatents in suitUS 10,951,680 - PTAB · Aug 13, 2024 · IPR2024-00905 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on all challenged claims and grounds and granted fuboTV’s motion to join the Aylo IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see 37 C.F.R. § 42.4 (2023). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least 1 claim of the ’555 patent. Accordingly, we institute inter partes review of claims 1, 3–5, 7–11, 13–20, and 22–27 of the ’555 patent. We also grant Petitioner’s Motion.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“(c) JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should: (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address how briefing and/or discovery may be simplified to minimize schedule impact. Kyocera Corp. v. SoftView, LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013). We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantively identical to the petition in the Aylo IPR, contains the same grounds based on the same evidence, and relies on the same declaration of Dr. Henry Houh. Mot., passim; Ex. 1003. Petitioner also represents that it “agrees to take an understudy role” so that “the parties can comply with the trial schedule assigned to the Instituted Aylo IPR without any duplicative efforts by the Board or the Patent Owner.” Mot. 7–8.” slip op. at 10
NonePatents in suitUS 10,469,555 - PTAB · Aug 13, 2024 · IPR2024-00903 · APJ John A Hudalla · IPR · Institution
The Board instituted inter partes review of claims 1–5, 7, 8, 10–14, 16–20, 22–28, and 30 on all petition grounds and joined fuboTV to IPR2024-00045.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see 37 C.F.R. § 42.4 (2023). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least 1 claim of the ’554 patent. Accordingly, we institute inter partes review of claims 1–5, 7, 8, 10–14, 16–20, 22–28, and 30 of the ’554 patent. We also grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantively identical to the petition in the Aylo IPR, contains the same grounds based on the same evidence, and relies on the same declaration of Dr. Henry Houh. Mot., passim; Ex. 1003. Petitioner also represents that it “agrees to take an understudy role” so that “the parties can comply with the trial schedule assigned to the Instituted Aylo IPR without any duplicative efforts by the Board or the Patent Owner.” Mot. 7–8.” slip op. at 10
NonePatents in suitUS 10,469,554 - PTAB · Aug 13, 2024 · IPR2024-00902 · APJ John A Hudalla · IPR · Institution
The Board instituted review of claims 1, 3–12, 14–20, 22–25, and 27–29 on all petition grounds and granted fuboTV’s motion to join the Aylo IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see 37 C.F.R. § 42.4 (2023). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least 1 claim of the ’138 patent. Accordingly, we institute inter partes review of claims 1, 3–12, 14–20, 22–25, and 27–29 of the ’138 patent. We also grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantively identical to the petition in the Aylo IPR, contains the same grounds based on the same evidence, and relies on the same declaration of Dr. Henry Houh. Mot., passim; Ex. 1003. Petitioner also represents that it “agrees to take an understudy role” so that “the parties can comply with the trial schedule assigned to the Instituted Aylo IPR without any duplicative efforts by the Board or the Patent Owner.” Mot. 7–8.” slip op. at 10
NonePatents in suitUS 11,470,138 - PTAB · May 9, 2024 · IPR2024-00158 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–4, 7–14, 16, 17, 21, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Pham and Wu, and granted joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion for Claim 1 Having reviewed the Petition and Preliminary Response, we determine that Petitioner has a reasonable likelihood of success in showing that the subject matter of claim 1 would have been obvious in view of Pham and Wu. E. Conclusion on the Merits of the Petition We have found that the Petition warrants institution based on Petitioner’s showings for claim 1. We have reviewed Patent Owner’s arguments about the other grounds, but they largely rely on the earlier unpersuasive arguments for claim 1. On whole, we determine that Petitioner has shown that the Petition warrants institution.” slip op. at 18
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“FURTHER ORDERED that the Motion for Joinder with IPR2023- 00703 is granted, and Palo Alto Networks, Inc. and Fortinet, Inc. are joined as a party in IPR2023-00703;” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the related district court matters identified above. Opp. Mot. Join 4–12. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the copending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Reply Mot. Join 4–5), we do not discretionarily deny institution under Fintiv.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“factor one necessarily outweighs the other General Plastic factors.”) (Director Review). Patent Owner focuses its analysis on factor 5 and proposed factor 8. Id. at 13–15. As to factor 5, which looks for an explanation of the time between petition filing, we determine that Petitioner sufficiently explained the time between Cisco’s petition and its own when it noted that it merely filed its petition and request for joinder when the statute permitted it. Reply Mot. Join 6 (citing 37 C.F.R. § 42.122(b)). In particular, the statute requires the earlier petition to be instituted before joining a party. 35 U.S.C. § 315(c) (requiring joinder to be to instituted proceedings). Thus, the time elapsed between filings is motivated by the statutory and regulatory procedures. See also 37 C.F.R. § 42.122(b) (requiring the joinder motion to be filed “no later than one month after the institution date of any inter partes review for which joinder is requested”). As to proposed factor 8, we agree with Petitioner that the present situation does not apply. Reply Mot. Join. 6–7; see also Shenzhen, IPR2018-00761, Paper 15, 18–19 (Saindon, concurring) (“There are legitimate reasons why a petition may be filed after [a decision on institution)].”). Proposed factor 8 analyzes situations where a second petitioner strategically waits to file its petition to see what happens to an earlier filed petition. Shenzhen, IPR2018-00898, Paper 9 at 7. If both of the petitioners were sued at or around the same time, but one waits until the other goes first, it can lead to an inference that the delay in filing a different petition was to gain an unfair advantage. Id. at 14 (looking with disfavor on a wait-and-see strategy to use the first petition as a “test case”). That is not the case here, where the second petition is a copycat petition. The Petition here cannot be said to have been filed second in order to glean knowledge from the first petition because it is the same petition. Thus, we do not see this Petition as being a strategic attempt to use Cisco’s petition as a “test case,” and do not consider factor 8 to weigh toward denial. Finally, reviewing factor 6, we do not find that granting Petitioner’s motion to join would cause an undue burden on the Board. Petitioner is serving as an “understudy” and thus, from our perspective, Petitioner’s presence does not change the existing Cisco IPR. Patent Owner argues that if Cisco were to settle then Petitioner would continue the proceeding. Opp. Mot. Join. 15. We do not see this as an undue burden in this situation. Petitioner’s Motion for Joinder serves to lessen our burden (as well as Patent Owner’s) compared to the scenario of it filing its own unique petition. We do not see the present case as similar to the Apple case, in which a copycat joinder petition was denied. See Apple, IPR2020-00854, Paper 9. That case, in our view, turned on the fact that the petitioner had already filed a petition that was denied on the merits. See id. at 4 (“In effect, it would be as if [the petitioner] had brought the second challenge to the patent in the first instance,” and labeling this a “serial attack.”). The situation here is not analogous to the Apple case because this is Petitioner’s only petition against the ’436 patent. The Petition is not a “serial attack” on the ’436 patent, it is merely Petitioner’s statutorily required vehicle to join as a party to an existing petition. Accordingly, we do not find factor 6 to weigh towards denial. Reviewing the General Plastic factors as a whole, including proposed factor 8, we find no factors to weigh toward denial and decline to exercise our discretion to deny institution.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,566,612 - PTAB · May 9, 2024 · IPR2024-00099 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–4, 7–14, 16, 17, 21, and 22 on all asserted grounds and granted joinder to IPR2023-00673.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine that Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’436 patent is unpatentable, we institute an inter partes review. 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“compressed, or use security protocols, then the packets transit the packet engine. Pet. 41–42 (citing Ex. 1004 ¶¶ 49, 51, 53). Patent Owner argues that only the SA parameter association task in Pham may be offloaded. Prelim. Resp. 26–27 (citing Ex. 1004 ¶¶ 38, 51). Patent Owner’s argument here implies that the filtering function remains at the ingress processor and that some packets will be filtered and never reach the packet engine. See id. (citing, e.g., Ex. 1004 ¶ 38); Ex. 1004 ¶ 38 (“In the preferred embodiments of the present invention, the ingress processors 30, 34 are tasked with filtering and routing functions . . . .”). The statement Patent Owner relies on is not in the same section as the one Petitioner relies on. In other words, it does not appear on this record that we can limit the disclosure of paragraph 51 based on the statements in paragraph 38. On this record, we are not persuaded that only the SA parameter association task can be offloaded. As Pham notes, tasks can be moved between processors to perform load balancing. Ex. 1004 ¶ 54. We see no disclosure that prevents certain tasks from being load balanced or otherwise tasked to the security processor.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“find them persuasive on this record. Id. at 32–33. At a high level, Patent Owner’s arguments are that Petitioner’s modification to Pham would “increase[] complexity and resources.” Id. at 33. On this record, this argument is unpersuasive because even if the addition of Wu’s intrusion detection system was somehow more complex, the reason to combine it is to gain certain beneficial features. See, e.g., Pet. 30–31. Patent Owner’s arguments do not show that the alleged increase in complexity would somehow dissuade a person of ordinary skill in the art from including these beneficial features. See, e.g., Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (alteration in original); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the related district court matters identified above. Opp. Mot. Join 4–12. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the copending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Reply Mot. Join 4–5), we do not discretionarily deny institution under Fintiv.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,685,436 - Infineon Technologies AG v. Amatech Group LimitedRehearing grantedPTAB · Apr 3, 2024 · IPR2022-00951 · APJ Stacey G White · IPR · Rehearing
On rehearing, the Board held claim 3 unpatentable as obvious over Eray-WO799, revising the final written decision’s outcome for that claim.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“unrebutted expert testimony corroborated by two prior art patents describing RFID smart cards” and that this evidence “demonstrated that a conventional and obvious way to manufacture Eray-WO799’s smart card was by forming a card antenna on a card body before adding the chip.” Req. Reh’g 2 (citing Pet. 39–40; Paper 20 (“Reply”) at 31). Thus, Petitioner argues a person of ordinary skill in the art would have understood that an obvious and conventional way of manufacturing the card body of Eray- WO799 would have had unconnected ends as required by our construction. Id. Paragraph 149 of Dr. van der Weide’s declaration states that a person of ordinary skill in the art “would have understood that an obvious and conventional way to construct the smart card as shown in Eray-WO799 FIG. 12 would have been to form the turns S1, S2, SC3 and SC4 on or in the card body (e.g., by laying wire) before connecting the wire to (or forming) access terminals and connecting module M.” Ex. 1003 ¶ 149. In support of that because it was “directed to solving problems that occur during the manufacture of cards.” Dec. 42 (citing Ex. 1028, 1:25–2:53). Petitioner points out that “[w]hile Ryu discloses manufacturing techniques, Ryu also describes and claims a ‘communication system’ with a smart card and a reader.” Reh’g Req. 9 (citing Ex. 1028, code (57), claims 1–2). Petitioner is correct in noting that Ryu’s disclosures are not so narrow as we described in the Decision. As to Finn-089, we found that reference unhelpful because it was “directed to a process for the contacting of a wire conductor in the course of manufacture of a transponder unit.” Dec. 41–42 (citing Ex. 1015, 1:15–17). Petitioner asserts that we failed to acknowledge to the fact that Finn-089 was incorporated by reference in the ’240 patent noting that “[p]atents incorporated by reference ‘are effectively part of the host [patents] as if [they] were explicitly contained therein.’” Reh’g Req. 9 (citing X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in Rehearing Request)). On this record, we agree that we overlooked and misapprehended the import of Ryu and Finn-089 and if those references are given appropriate weight, they lend further credence to Dr. van der Weide’s testimony that one of ordinary skill in the art would have known that an obvious way to manufacture Eray-WO799 would have created an intermediate product with requisite free ends. Further, we adopt the full reasoning stated in the Dissent as to the unpatentability of claim 3 (Dec. 53–57). Therefore, we GRANT Petitioner’s Request for Rehearing slip op. at 6
- Skill levelSkill level petitioner adoptedOther
“As stated in our Final Written Decision, we adopted Petitioner’s definition of the person of ordinary skill in the art and found that the person of ordinary skill in the art would have possessed “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Dec. 6–7 (citing Pet. 8; PO Resp. 18). Petitioner’s declarant, Dr. Daniel van der Weide, supported Petitioner’s definition, which was adopted for this proceeding. Ex. 1003 ¶ 25. Dr. van der Weide defined himself as “a person of more than ordinary skill in the art during the relevant timeframe” because “[b]y 2010, [he] held a Ph.D. in electrical engineering, and [he] had at least” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“unrebutted expert testimony corroborated by two prior art patents describing RFID smart cards” and that this evidence “demonstrated that a conventional and obvious way to manufacture Eray-WO799’s smart card was by forming a card antenna on a card body before adding the chip.” Req. Reh’g 2 (citing Pet. 39–40; Paper 20 (“Reply”) at 31). Thus, Petitioner argues a person of ordinary skill in the art would have understood that an obvious and conventional way of manufacturing the card body of Eray- WO799 would have had unconnected ends as required by our construction. Id. Paragraph 149 of Dr. van der Weide’s declaration states that a person of ordinary skill in the art “would have understood that an obvious and conventional way to construct the smart card as shown in Eray-WO799 FIG. 12 would have been to form the turns S1, S2, SC3 and SC4 on or in the card body (e.g., by laying wire) before connecting the wire to (or forming) access terminals and connecting module M.” Ex. 1003 ¶ 149. In support of that because it was “directed to solving problems that occur during the manufacture of cards.” Dec. 42 (citing Ex. 1028, 1:25–2:53). Petitioner points out that “[w]hile Ryu discloses manufacturing techniques, Ryu also describes and claims a ‘communication system’ with a smart card and a reader.” Reh’g Req. 9 (citing Ex. 1028, code (57), claims 1–2). Petitioner is correct in noting that Ryu’s disclosures are not so narrow as we described in the Decision. As to Finn-089, we found that reference unhelpful because it was “directed to a process for the contacting of a wire conductor in the course of manufacture of a transponder unit.” Dec. 41–42 (citing Ex. 1015, 1:15–17). Petitioner asserts that we failed to acknowledge to the fact that Finn-089 was incorporated by reference in the ’240 patent noting that “[p]atents incorporated by reference ‘are effectively part of the host [patents] as if [they] were explicitly contained therein.’” Reh’g Req. 9 (citing X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in Rehearing Request)). On this record, we agree that we overlooked and misapprehended the import of Ryu and Finn-089 and if those references are given appropriate weight, they lend further credence to Dr. van der Weide’s testimony that one of ordinary skill in the art would have known that an obvious way to manufacture Eray-WO799 would have created an intermediate product with requisite free ends. Further, we adopt the full reasoning stated in the Dissent as to the unpatentability of claim 3 (Dec. 53–57). Therefore, we GRANT Petitioner’s Request for Rehearing slip op. at 6
§ 103 obviousnessPatents in suitUS 9,165,240
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.