- 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 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Apr 17, 2024 · IPR2022-00615 · APJ Jon M Jurgovan · IPR · Final written decision
Claim 16 is unpatentable as obvious over Ellsberry; the Board did not reach the Perego-422 grounds because Ground 3 was dispositive.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“We entered an Order for Petitioner to complete the additional discovery as authorized by the Director, and for the parties to propose a briefing schedule for the additional discovery. Paper 42. Petitioner filed the authorized additional discovery as exhibits and a Summary of Responses to the Additional Discovery (Paper 46) along with a Motion to Seal (Paper 43), which we granted (Paper 49). We then authorized a schedule for the parties to brief the applicability of the additional discovery to the issue of whether Google was a real party in interest and the Petition thus time-barred under 35 U.S.C. § 315(b). Papers 51–57. After consideration of the evidence, we determined by Order on Remand from the Director (Paper 62 (parties and Board), Paper 64 (public)) that Google was not a real party in interest and that this proceeding thus was not time-barred.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“After briefing on the additional discovery but before our Order on Remand from the Director, Micron Technology, Inc., Micron Semiconductor Products, Inc., and Micron Technology Texas, LLC (“the Micron entities”) filed a petition and requested joinder to this proceeding. IPR2023-00203, Papers 1, 3. We granted the Micron entities’ petition for inter partes review and joined them as parties on the petitioner side of this case. Id. at Paper 8. A copy of that institution decision was entered in this proceeding. Paper 58. We refer to Samsung and the Micron entities together as “Petitioner” in this Decision.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we accept Petitioner’s statement of the level of ordinary skill in the art except that we omit the qualifiers “at least” before years of education and experience because they render the level ambiguous and may encompass levels that are beyond ordinary. Otherwise, we find Petitioner’s statement of the level of ordinary skill in the art consistent with the ’912 patent and the applied prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“However, the subsequent emphasized sentences (id. at 8:54–60) could only be understood in favor of Petitioner’s interpretation. If “the command signal is passed through to both associated ranks” and “the command signal is sent to both memory devices,” each rank must have only one memory device. Thus, we agree with Petitioner that this passage means that a rank may have only one memory device. Patent Owner argues that this paragraph of the ’912 patent (id. at 8:44–64) must be read in conjunction with its Figures which show multiple memory devices per rank. PO Resp. 7 (citing Ex. 1001, 6:31–38, 20:64–65, 22:34–35, Figs. 1A, 1B, 2A, 3A; Ex. 2062 ¶¶ 106–107). However, the disputed paragraph refers to “certain embodiments” which do not necessarily correspond exactly to what the Figures depict, and the Figures are described as “exemplary” and “compatible with” or “in accordance with certain embodiments described herein.” See, e.g., Ex. 1001, 3:32–48. We find no statement here or elsewhere in the ’912 patent that a rank must include multiple memory devices, and cannot include a single memory device.” slip op. at 18
Patent outcomesUS 7,619,912 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,619,912 - PTAB · Feb 16, 2024 · IPR2023-01321 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR on claims 1–19 and 37–58 based on the asserted grounds and granted Porsche’s motion to join IPR2023-00335, subject to participation restrictions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. INSTITUTION OF INTER PARTES REVIEW Petitioner represents that the “Petition is essentially a copy of the petition filed in” the VW IPR and that the evidence and arguments “are substantively identical to the evidence and arguments supporting the VW Petition.” Mot. 1, 4. Our independent review of the Petition and the VW IPR petition confirms Petitioner’s representations, and that the petitions in the two proceedings are substantially the same. Further, although Petitioner relies on a different expert declarant, Petitioner submits that the two declarations are “substantively identical.” Id. at 3. Having already considered the merits of those challenges and the evidence in the VW IPR, and having determined that the threshold for institution of inter partes review has been met, we determine that this Petition also establishes a reasonable likelihood that Petitioner will prevail with respect to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 59–69) are not persuasive.10 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition.” slip op. at 7
- 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 substantially identical to the petition in the VW IPR, contains the same grounds based on the same evidence, and relies on a substantively identical declaration. Petitioner also represents that joinder will not impact the VW IPR schedule. See Mot. 4. Additionally, Petitioner represents that it is willing to accept a limited, “understudy role” to Volkswagen (the original petitioner in the VW IPR), taking over only in the event VW no longer participates. See id. at 5; id. at 5 n.3. Specifically, Petitioner represents that in its understudy role, it agrees that the following conditions will apply: (a) Petitioner will not make any substantive filings and shall be bound by the filings of VW, unless a filing concerns termination and settlement, or issues solely involving Petitioner; (b) Petitioner will not present any argument or make any presentation at the oral hearing unless an issue solely involves Petitioner, or when addressing motions that do not affect VW; (c) Petitioner will not seek to cross-examine or defend the cross-examination of any witness, unless the topic of cross-examination concerns issues solely involving Petitioner, within the time permitted by VW alone and with VW’s agreement; (d) Petitioner will not seek discovery from Patent Owner, unless issues arise that are unique to, and only applicable to, Petitioner; and (e) Petitioner will not rely on expert testimony beyond that submitted by VW unless and until VW is terminated as party to the proceeding prior to any necessary depositions. See id. at 5–6. Patent Owner has not filed an opposition to Petitioner’s Motion. Thus, Petitioner’s Motion stands unopposed. Under these circumstances, we agree with Petitioner that joinder is appropriate and will not unduly impact the ongoing trial in the VW IPR. We limit Petitioner’s participation in the VW IPR proceeding as follows: (1) VW alone is” slip op. at 8
- PTAB / AIA Trials › Discretionary denialNot reached
“Having already considered the merits of those challenges and the evidence in the VW IPR, and having determined that the threshold for institution of inter partes review has been met, we determine that this Petition also establishes a reasonable likelihood that Petitioner will prevail with respect to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 59–69) are not persuasive.10 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition.” slip op. at 7
Discretionary denialPatents in suitUS 10,894,503 - PTAB · Feb 16, 2024 · IPR2023-01320 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR on claims 26–36 and 65–70 on the petition’s grounds and granted Porsche’s motion to join IPR2023-00328, subject to participation restrictions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim, and we institute inter partes review.” slip op. at 2
- 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 substantially identical to the petition in the VW IPR, contains the same grounds based on the same evidence, and relies on a substantively identical declaration. Petitioner also represents that joinder will not impact the VW IPR schedule. See Mot. 4.” slip op. at 8
- PTAB / AIA Trials › Discretionary denialDenied
“the VW IPR, and having determined that the threshold for institution of inter partes review has been met, we determine that this Petition also establishes a reasonable likelihood that Petitioner will prevail with respect to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 63–71) are not persuasive.10 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition.” slip op. at 7
Discretionary denialPatents in suitUS 10,894,503 - PTAB · Jan 29, 2024 · IPR2023-01296 · APJ Jason W Melvin · IPR · Institution
The Board instituted inter partes review of claims 56–87 on the asserted grounds and granted Porsche’s motion to join IPR2023-00318, subject to participation restrictions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. INSTITUTION OF INTER PARTES REVIEW Petitioner represents that the “Petition is essentially a copy of the petition filed in” the VW IPR and that the Petition is “based on the same grounds.” Mot. 1, 2–3. Our independent review of the Petition and the VW IPR petition confirms Petitioner’s representations, and that the petitions in the two proceedings are substantially the same. Further, although Petitioner relies on a different expert declarant, Petitioner submits that the two declarations are “substantively identical.” Id. at 3. Having already considered the merits of those challenges and the evidence in the VW IPR and having determined that the threshold for institution of inter partes review has been met, we determine that the Petition here also presents a reasonable likelihood of prevailing on the challenges to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 29–40) are not persuasive.9 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See IPR2023-00318, Paper 11.” slip op. at 7
- PTAB / AIA Trials › Discretionary denialDenied
“the VW IPR and having determined that the threshold for institution of inter partes review has been met, we determine that the Petition here also presents a reasonable likelihood of prevailing on the challenges to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 29–40) are not persuasive.9 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See IPR2023-00318, Paper 11.” slip op. at 7
- 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 substantially identical to the petition in the VW IPR, contains the same grounds based on the same evidence, and relies on a substantively identical declaration. Petitioner also represents that joinder will not impact the VW IPR schedule. Mot. 4–5.” slip op. at 8
Discretionary denialPatents in suitUS 9,955,551 - Motorola Mobility LLC v. Largan Precision Co., Ltd.No claims unpatentablePTAB · Jan 24, 2024 · IPR2022-01210 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–27 were not shown unpatentable because Petitioner did not establish a reason to combine Chung Embodiment 11 or 12 with Sekine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s declarant, Dr. Bentley, testifies that “a [POSITA] around the time of the invention would have had a bachelor’s degree in physics or optics, and at least three years of experience in the field of optical design, or its equivalent experience.” Ex. 2001 ¶ 28. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill. We note, however, that the two proposed levels of ordinary skill are similar and our analysis and conclusions would not change under Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction, “and only to the extent necessary to resolve the controversy.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner does not propose a specific construction for any terms and instead argues that “no claim terms require specific construction to resolve the unpatentability issues presented” in their Petition. Pet. 12. Patent Owner also does not propose any specific constructions in their Response, nor does their declarant, Dr. Bentley. We determine that no explicit constructions are required to resolve the dispute between the parties.” slip op. at 13
- Exclude
“G. Motion to Exclude Patent Owner filed a Motion to Exclude the portions of Mr. Aikens declaration testimony present in Exhibit 1003 and Exhibit 1045 relating to or arising from “lens design studies, simulations, or optimizations using Zemax lens design software, or otherwise rely[ing] on undisclosed facts and data.” Paper 45, 1. Because we do not rely on any of this evidence in this decision in a manner adverse to Patent Owner, we dismiss Patent Owner’s Motion to Exclude.” slip op. at 44
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“F. Motion to Amend and Revised Motion to Amend As we determine that motivation to combine has not been shown by a preponderance of the evidence, we dismiss the Motion to Amend and Revised Motion to Amend pursuant to 35 U.S.C. § 316(d) because they were contingent upon our finding a claim of the ’519 patent to be unpatentable. MTA 1; Revised MTA 1.” slip op. at 44
Patent outcomesUS 9,696,519 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,696,519 - PTAB · Jan 22, 2024 · IPR2023-01225 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 24–55 on the asserted §103 grounds and granted Porsche’s motion to join IPR2023-00315, subject to participation restrictions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having already considered the merits of those challenges and the evidence in the VW IPR and having determined that the threshold for institution of inter partes review has been met, we determine that the Petition here also presents a reasonable likelihood of prevailing on the challenges to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 29–39) are not persuasive.8 Therefore, for the same reasons stated in our 8 Patent Owner notes that “the non-institution arguments in this Preliminary Response essentially repeat the non-institution arguments that were raised in the already-instituted target case.” Prelim. Resp. 1. Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See IPR2023-00315, Paper 11.” slip op. at 7
- PTAB / AIA Trials › Discretionary denialDenied
“the VW IPR and having determined that the threshold for institution of inter partes review has been met, we determine that the Petition here also presents a reasonable likelihood of prevailing on the challenges to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 29–39) are not persuasive.8 Therefore, for the same reasons stated in our 8 Patent Owner notes that “the non-institution arguments in this Preliminary Response essentially repeat the non-institution arguments that were raised in the already-instituted target case.” Prelim. Resp. 1. Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See IPR2023-00315, Paper 11.” slip op. at 7
- 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 substantially identical to the petition in the VW IPR, contains the same grounds based on the same evidence, and relies on a substantively identical declaration. Petitioner also represents that joinder will not impact the VW IPR schedule. Mot. 4.” slip op. at 8
Discretionary denialPatents in suitUS 9,955,551 - PTAB · Jan 19, 2024 · IPR2023-01231 · APJ Aaron W Moore · IPR · Institution
The Board instituted inter partes review of claims 20–25 and 59–64 on all asserted grounds and granted Porsche’s motion to join IPR2023-00197, subject to participation restrictions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having already considered the merits of those challenges and the evidence in the VW IPR, and having determined that the threshold for institution of inter partes review has been met, we determine that this Petition also establishes a reasonable likelihood that Petitioner will prevail with respect to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 65–74) are not persuasive.9 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition.” slip op. at 7
- 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 substantially identical to the petition in the VW IPR, contains the same grounds based on the same evidence, and relies on a substantively identical declaration. Petitioner also represents that joinder will not impact the VW IPR schedule. See Mot. 4.” slip op. at 7
NonePatents in suitUS 10,894,503 - PTAB · Jan 16, 2024 · IPR2023-01122 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 1–33 on both asserted §103 grounds and granted Porsche’s motion to join IPR2022-01586, subject to participation restrictions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim, and we institute inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denialDenied
“the VW IPR and having determined that the threshold for institution of inter partes review has been met, we determine that the Petition here also presents a reasonable likelihood of prevailing on the challenges to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 68–75) are not persuasive.8 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See IPR2022-01586, Paper 7.” slip op. at 6
- 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 substantially identical to the petition in the VW IPR, contains the same grounds based on the same evidence, and relies on a substantively identical declaration. Petitioner also represents that joinder will not impact the VW IPR schedule. Mot. 6.” slip op. at 7
Discretionary denialPatents in suitUS 11,208,029
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.