- PTAB · Feb 25, 2025 · IPR2024-01296 · APJ Amee A Shah · IPR · Institution
The Board instituted IPR of claims 1–46 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. In particular, we determine that factors 1 and 5 are neutral, factors 2 and 3 weigh against denial, and factor 4 is of institution, does not outweigh factors 1–3 and 5. As a result, we need not and, therefore, do not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Fintiv Determination The balance of all Fintiv factors do not favor the exercise of our discretionary powers to deny institution. Therefore, we determine that discretionary denial is not appropriate in this case.” slip op. at 20
- Parallel petitionsDenied
“B. 35 U.S.C. § 314(A) – PARALLEL PETITION The Petition seeks inter partes review of the same claims of the ’380 patent that Petitioner previously requested review of in IPR2024-00953. Pet. 1. Patent Owner argues that the Petition should be discretionarily denied under § 314(a) for failure to show good cause for a second petition. Prelim. Resp. 67–73. The Board denied institution in IPR2024-00953, exercising discretion under § 314(a) based on the existence of the petition in this proceeding. IPR2024-00953, Paper 18. We thus decline to deny institution based on a parallel petition.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“However, we find that Fang is not cumulative of the art considered by the Examiner in prosecution. Further, Patent Owner does not direct attention to, and we do not see, how or where the Examiner considered Khalil for teaching removing the air line for directly connecting the external pump to connecting a pump housing to a diaphragm housing” (POPR 50), the Examiner specifically found that Khalil did not teach the diaphragm housing being fixed to a recessed surface of the pump housing (Ex. 1002, 24), for which Petitioner relies on Fang (Pet. 37). And we note that Petitioner relies on Fang for the element the Examiner found was not taught by the prior art, including Khalil. Ex. 1002, 24; Pet. 37. Accordingly, we determine that discretionary denial is not warranted because the asserted combinations, all of which include Fang, were not previously presented to the Office. Because we determine that part one of the framework is not satisfied, we need not, and therefore do not, turn to part two of the analysis, which concerns whether Petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. 5. Conclusion Regarding Discretionary Denial under § 325(d) The Advanced Bionics framework “reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Advanced Bionics, IPR2019-01469, Paper 6 at 9. Under the present circumstances, we determine that the same or substantially the same prior art combinations or arguments were not previously presented to the Office. Accordingly, we decline to exercise our discretion to deny institution under § 325(d).” slip op. at 27
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the foregoing reasons, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the claims challenged in the Petition. Accordingly, inter partes review of the ’380 patent shall proceed in this case on all of the grounds raised in the Petition. See SAS, 138 S. Ct. at 1359–60; PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).” slip op. at 65
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,413,380 - PTAB · May 17, 2024 · IPR2024-00083 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 1–4, 6–13, 15, and 16 under all asserted §103 grounds, finding a reasonable likelihood that claim 1 is unpatentable over Socwell, Magid, and Sclater.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“be considered only if . . . the petition identified all real parties in interest.” Under our precedent, the Board may, under 35 U.S.C. § 312(a), accept updated mandatory notices as long as the petition would not have been timebarred under 35 U.S.C. § 315(b) if it had included the real party in interest. Proppant Express Investments, Paper 86, 7. see also Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc) (“For § 312(a)(2), the Director can, and does, allow the petitioner to add a real party in interest.”). To determine whether to accept Petitioner’s updated mandatory notices, we look to “whether there have been (1) attempts to circumvent the § 315 bar or estoppel rules, (2) bad faith by the petitioner, (3) prejudice to the patent owner caused by the delay, or (4) gamesmanship by the petitioner.” Proppant Express, Paper 86, 6.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“an Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Director’s Memo”)5 to clarify “the [Board’s] current application of Fintiv to discretionary institutions where there is parallel litigation” and to “confirm[ ] that the precedential import of Fintiv is limited to facts of that case.” Director’s Memo 2. The Director’s Memorandum explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Id. at 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the following two-part framework: (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, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential). The Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d). Id. at 9 (referencing Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8, 17– 18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton”)). Under the first part of the Advanced Bionics framework, we consider “whether the same or substantially the same art previously was presented to previously were presented to the Office.” Id. at 8. We evaluate Becton, Dickinson factors (a), (b), and (d) to determine whether Petitioner has demonstrated material error. Id. at 10. Those factors are: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; and (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art. Becton, Paper 8, 17–18. Previously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (“IDS”), in the prosecution history of the challenged patent. Id. at 7–8.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner argues: “It would have been obvious to a POSA to combine Socwell’s treadmill with Magid’s control means to permit only unidirectional movement of the running belt to reduce the risk of a user stepping onto the running belt of the treadmill and losing their balance when the belt moves in the forward direction.” Pet. 24 (citing Ex.1003 ¶ 137); see also Pet. 20–26 (explaining that it was known that injury could occur if a treadmill belt moved in an unexpected direction (citing Ex. 1011, 1:32–67, 2:45–48; Ex. 1013, 1:30–37; Ex. 1019, 3–4; Ex. 1020, 8; Ex. 1003 ¶¶ 71–73, 131–137). Petitioner asserts that Sclater teaches a sprag-type one-way bearing assembly that has an outer race (i.e., first element) that substantially surrounds an inner race (i.e., second element), with a plurality of sprags and rolling elements between the inner race and outer race. Pet. 42–43 (citing Ex. 1017, 312). The sprags act as wedges so that torque is transmitted from one race to another in one direction but not the other direction. Ex. 1017, 312, 318; Ex. 1003 ¶¶ 171–175. Petitioner argues: “A POSA would have been motivated to substitute Sclater’s one-way sprag-type bearing assembly for Magid’s ratchet-and-pawl one-way clutch mechanism to obtain predictable results, e.g., reduced noise and improved durability, while maintaining the backstopping functionality and resultant safety benefits of Magid.” Pet. 26 (citing Ex. 1003 ¶ 141); see also Pet. 27–33 (explaining that ratchet-and-pawl mechanism was known to be noisy and less durable (citing Ex. 1003 ¶¶ 142– 151; Ex. 1017, 303, 316, 320; Ex. 1018, 38–43, 52–53)). and evidence sufficiently disclose limitations 1(f)–(g). d) Conclusion as to claim 1 After considering Petitioner’s evidence and analysis based on the” slip op. at 36
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,465,005 - SNF S.A. v. Chevron U.S.A., Inc.No claims unpatentablePTAB · Apr 18, 2024 · IPR2022-01534 · APJ Barry L Grossman · IPR · Final written decision
Claims 1–25 were not shown unpatentable on any asserted ground because the evidence failed to establish the claimed filter ratio or support the proposed combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“In our Decision to Institute this proceeding, we adopted Dr. Barati’s proposed level of skill based on the prior art, the sophistication of the technology disclosed in the ’320 patent, and Dr. Barati’s opinion testimony. Dec. Inst. 17 (“we adopt Dr. Barati’s definition of the level of ordinary skill”). Patent Owner states it “does not dispute the level of skill applied by the Board in its institution decision.” PO Resp. 7. Accordingly, in this Decision, based on the evidence and the arguments of the parties, we maintain and adopt the level of ordinary skill stated in the Decision to Institute. In this proceeding, a person of ordinary skill would have had a Ph.D. in Chemical or Petroleum Engineering (or related science or engineering discipline) with 2-3 years of experience in the design and implementation of methods for hydrocarbon recovery including use of polymer compositions in such recovery methods. Alternatively, a person of ordinary skill might substitute several years of actual design or implementation experience for the advanced degree. See Ex. 1012 ¶ 18.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citations omitted)). We determine that a specific construction of the claims is not necessary to reach a decision in this inter partes review of the challenged claims.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. [Citations omitted.] If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the 17 Again, to avoid confusion, this citation format is to page 15 of Exhibit C, which is an attachment to Exhibit 1012 in this proceeding. questioned function, it seems to be well settled that the disclosure should be regarded as sufficient. Id. at 1260 (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner fails to provide any persuasive evidence or argument that claims 1, 2, 13–15, and 20–25 would have been obvious in view of Li. As discussed above, anticipation and obviousness are different grounds, requiring different analyses, and different evidence. Petitioner fails to establish what modifications in Li would have been obvious and why it would have been obvious to make the modifications with a reasonable expectation of success. The word “obvious” appears in Ground 1 only in the analysis of claim 24, clause D, on page 37 of the Petition, where Petitioner merely states the conclusion that this clause “would be obvious” [sic, the statute requires a temporal component to establish the claim “would have been obvious”]. Accordingly, we determine that Petitioner fails to provide the requisite evidence and arguments that claims 1, 2, 13–15, and 20–25 would have been obvious in view of Li.” slip op. at 28
Patent outcomesUS 10,626,320 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,626,320 - PTAB · Apr 15, 2024 · IPR2024-00029 · APJ Amee A Shah · IPR · Institution
The Board instituted IPR on claims 1, 3–5, 7–8, 10–14, and 16–25 on all grounds in the Petition, finding a reasonable likelihood of unpatentability on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“It is not disputed that Sim, Doi, and Herz were not previously presented to the Office. And, the prosecution record indicates that Sim and Doi were not listed on an Information Disclosure Statement by Application nor in a List of References or in an Office Action by the Examiner. See Ex. 1002, 9–10, 20–25, 69–74, 196–197, 346–347. Petitioner’s asserted Grounds 1 and 2 rely substantially on Sim and Doi to teach the steps of the claimed system and method. Petitioner’s asserted Grounds 4, 5, and 6 substantially rely on Herz. Sim, Doi, and Herz are meaningful to the prior art combinations set forth in the Petition. Therefore, the asserted combinations regarding Sim and Doi, Sim, Doi, and Waytena, and Waytena and Herz were not previously presented to the Office. It is also not disputed that Waytena was previously presented to the Office and considered by the Examiner. The prosecution history shows that throughout prosecution, the Examiner heavily considered and relied on Waytena for rejections under 35 U.S.C. §§102 and 103 in evaluating the application of the ՚983 patent. See, e.g., Ex. 1002, 9–10, 20–24, 69–73. At this point and based on the present record, we do not discretionarily deny under 35 U.S.C. § 325(d) because Petitioner has 7 The terms “POSITA,” “PHOSITA” or “skilled artisan” refer to a person of ordinary sill in the art. reasonable likelihood that at least one of the Challenged Claims is unpatentable. PGS Geophysical, 891 F.3d at 1360. However, based on the record before us, and because we reach the same conclusion as the Examiner regarding Waytena’s teachings, we find that Patent Owner has, on this record, sufficient support for its contentions that Waytena was previously presented to the Office and the Examiner’s evaluation on the merits regarding Waytena’s teachings was not in error.” slip op. at 14
- 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 thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); see also 37 C.F.R. § 42.108(a) (2023) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). Considering the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we determine that, at this stage based on the evidence presented, Petitioner has demonstrated that there is a reasonable likelihood that at least one of the Challenged Claims is unpatentable. Accordingly, we institute an inter partes review of all challenged claims and on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest or comment on Petitioner’s definition of the level of ordinary skill in the art or offer Patent Owner’s own definition of the level of ordinary skill. Prelim. Resp. 2. that the ’983 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’983 patent is consistent with the level of skill proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art.” slip op. at 17
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“Petitioner contends the claimed “presentation means” is a means-plus- function term under § 112, ¶ 6, that “can perform the function of (a) ‘receiv[ing] said itinerary from said computer’ and (b) ‘present[ing] said itinerary to said party.’” Pet. 8–9. Petitioner further contends the corresponding structure for performing the recited functions is display screen 130. Pet. 9. Patent Owner presents no argument against this contention. We agree that “presentation means” is a means-plus-function claim term. Because it is necessary to know what the structure and function are encompassed by the claim term in order to make a determination that the disagreement, we adopt Petitioner’s construction. Should either party believe that a different construction should apply in the instituted trial, it should explain the proposed construction, how the construction is supported by the record, and how the construction affects our unpatentability analysis.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,212,983 - Askeladden, L.L.C. v. Ohva, Inc.Rehearing grantedPTAB · Mar 15, 2024 · IPR2023-00921 · APJ Amee A Shah · IPR · Rehearing
Granted petitioner’s rehearing request and instituted IPR of claims 1–4 on all asserted grounds, finding a reasonable likelihood of prevailing based on the preliminary construction of “transaction data.”
RulingsRehearing decision- RehearingRehearing, grantedGranted
“institute has the burden of showing the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c).” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Although the ’286 patent distinguishes “account data” from “transaction data” in the embodiment of Figure 11, the “transaction data” is submitted by the user to perform a series of banking transactions after manually entering a PIN code, whereas the “account data” is stored on the server, and the token information is accepted from the smart card’s embedded token, i.e., the output interface of the transaction card. See Ex. 1001, 10:12–18, 10:30–35, 10:40–42, 11:21–22, 11:65–12:4, 12:22–36. Thus, the claimed “transaction data” that is “accepted . . . from an output interface of a transaction card” and “accepted . . . from a transaction card at an input interface of the card reader,” as recited in independent claims 1 and 3, comprises data stored on and read from a card, such as an ID number, password, authentication information, or session information, that can be used to facilitate a transaction. Such claimed “transaction data” is distinct from the “transaction data” described in connection with the Figure 11 embodiment. We therefore do not limit the claimed “transaction data” and instead preliminarily construe that term as encompassing any data involved in a transaction, including account data. As described above, the claimed transaction data must come from the output interface of a transaction card. Should either party believe that a different construction should apply in the instituted trial, it should explain the proposed construction, how the construction is supported by the record, and how the construction affects our unpatentability analysis.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateInstituted
“The dispute relates to whether the ’030 application describes the claimed “smart telephone” accepting transaction data and executing coded instructions to convert the analog signal to digital data representing transaction data as digital data. See Pet. 14–15, 19–27. In Petitioner’s view, that term is supported only by language added to the “Brief Summary of the Invention” during prosecution of the application resulting in the ’286 patent. Id. at 17. In contrast, argues Petitioner, the corresponding section of the ’030 application instead describes transmitting sound to a PC, not a smart telephone. Id. at 19–26. Patent Owner submits that the ’030 application describes generating sounds from a smart phone and using a “key jack sound pass generator” to communicate sounds. Prelim. Resp. 16. Patent Owner contends that the claim language is supported by disclosure of receiving the audio signal at a microphone port and converting the signal to transaction data. Id. at 16–18. Patent Owner points also to description of direct communication between a “client device” and server. Id. at 19. On the present record, we find that Petitioner, at this stage in the proceeding, has shown sufficiently how it contends that the earliest possible effective filing date for claims 1–4 of the ’286 patent is March, 3, 2015, such that the Cho, Aaron, Carpenter, and de Geer references qualify as prior art. Patent Owner has identified a factual dispute regarding the significance of the ’030 application’s disclosures, and we view that dispute as best resolved through trial.” slip op. at 9
- PTAB / AIA Trials › Real party in interest / privityDecided for petitioner
“35 U.S.C. § 312(a)(2) provides that one of the “Requirements of Petition” is that “the petition identifies all real parties in interest.” “Whether a non-party is a RPI is a ‘highly fact-dependent question’ and must be considered on a case-by-case basis.” SharkNinja Operating LLC. v. IROBOT Corp., No. IPR2020-00735, 2020 WL 6050687, at *4 (PTAB Oct. 13, 2020) (precedential) (citing Ventex Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 148 at 6 (PTAB Jan. 24, 2019) (Paper 148) (precedential) (citing Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012))). Here, addressing whether TCH is an unnamed RPI would not create a time bar or estoppel under 35 U.S.C. § 315. There is no allegation or evidence that TCH is “barred or estopped from this proceeding or that Petitioner purposefully omitted [TCH] to gain some advantage.” SharkNinja at *4. Rather, Patent Owner argues that for “once again willfully fail[ing] to identify TCH as a real party in interest, . . . the Petition should be denied on that basis.” Prelim. Resp. 7. In other words, Patent Owner contends only that we deny institution because of “the alleged failure of a procedural requirement that can be corrected under our precedent.” SharkNinja at *4. We understand that” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 9,679,286 - Safe Haven Wildlife Removal And Property Management Experts LLC v. Meridian Wildlife Services LLCInstitution deniedPTAB · Feb 22, 2024 · IPR2023-01341 · APJ Amee A Shah · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3 were obvious over the asserted combinations of Bird Barrier Video and the other references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On the record before us, Petitioner has not demonstrated a reasonable likelihood of establishing obviousness of claims 1–3 based on Bird Barrier Video and/or Kunz and/or Albanese and/or Sheldon. Because we deny institution on the merits, we do not address Patent Owner’s arguments that the proposed combination lacks particularity and that the Chamberlain Declaration is inadmissible. Prelim. Resp. 4–9, 29–33 (citing Ex. 2001; Fed. R. Evid. 801, 802; 37 C.F.R. § 42.62). IV. CONCLUSION Because we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the ’663 patent, we do not institute an inter partes review” slip op. at 39
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that “a POSA10 ‘would have had at least either (i) at least a bachelor’s degree in the study of wildlife management or wildlife ecology or (ii) two or more years of field experience trapping flying animals,’” quoting the definition of a POSA adopted by the Board at the institution stage in IPR2022-01253. Pet. 22 (quoting Ex. 1014, 9). Patent Owner does not challenge this definition of the level of skill at this time. See generally Prelim. Resp.; Sur-Reply. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner argues that (a) Petitioner fails to sufficiently identify how the challenged claims are to be construed, and (b) “[t]he amendments and arguments made during prosecution of the ’663 patent reveal that the phrase ‘configured to raise the entire bird netting’ in Claim 1 [limitation b.iii] must be construed to require the capability to raise the entire bird netting to prevent the netting from blocking activities on the floor of the building it is used in.” Prelim. Resp. 9–15 (citing Ex. 1002, 21). As explained below in Section III.E.3, we find that, for reasons not related to limitation b.iii of claim 1, Petitioner’s arguments and evidence do not demonstrate a reasonable likelihood of establishing that the challenged claims are unpatentable. Thus, we do not find it necessary to construe expressly any language of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 15
- BurdenNot shown unpatentable
“3. Analysis Even assuming, arguendo, that the Bird Barrier Video teaches at least independent claim 1’s device that is “for repeated quick set up for safe live capture of a flying vertebrate indoors in a large building having a floor and a ceiling supported by rafters or beams” and comprises “bird netting capable of catching and holding the flying vertebrate when it flies into the bird underpinning demonstrating how or why a person of ordinary skill in the art would have modified Bird Barrier Video to, at least, have a plurality of poles for sitting on the floor and a hook positioned at a top of each pole configured to attach the poles overhead to the ceiling by attachment over the top of a ceiling rafter and beam, as recited in claim 1’s limitations b and b.i. Regarding limitation b, Petitioner acknowledges that Bird Barrier Video does not disclose or suggest that its poles are “for sitting on the floor.” Pet. 24. Petitioner contends “it would be obvious to place them on the floor if needed to capture a bird in a lower location.” Id. Yet, the claim requires that the poles are for “sitting on the floor,” and not simply “to place” on the floor. Petitioner does not explain, nor does Bird Barrier Video show, the structure of Bird Barrier Video’s poles such that they can be “for sitting on the floor.” Moreover, Petitioner’s reasoning presumes that the net disclosed in the Bird Barrier video, which is suspended from the ceiling, would be incapable of capturing low-flying birds, yet the record does not support such a finding.” slip op. at 33
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,154,663 - Unified Patents, LLC v. Ak Meeting IP LLCAll claims unpatentablePTAB · Jan 5, 2024 · IPR2022-01142 · APJ Ryan H Flax · IPR · Final written decision
Claims 1–14 are unpatentable: claims 1 and 8 are anticipated by and obvious over Roy; claims 1–14 are obvious over Simonoff and Naef; and the listed claims are anticipated by and obvious over Chang.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) would have been a person having, as of the priority date of the ’124 Patent: (1) at least an undergraduate degree in computer science or closely-related field, or similar advanced post-graduate education; and (2) 1–2 years of experience related to multi-user collaboration software. Pet. 7 (citing Ex. 1003 ¶¶ 28–30).10 Patent Owner does not address the level of ordinary skill in the art in its Response, but Patent Owner previously stated in its Preliminary Response that it “adopt[s] Petitioner’s proposed level of ordinary skill in the art because it comports with the technology and claims of the ’124 Patent as well as the asserted prior art.” See generally Resp.; Prelim. Resp. 5. We accept Petitioner’s proposed and unopposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’124 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[]” evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 18
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We conclude, in agreement with Petitioner, that Mr. Landers is not evidenced to have ordinary skill in the art, as such has been defined above in Section II.B of this Decision, because he appears to have neither the requisite education (he is not evidenced to have a degree in computer science or a closely related field) nor experience (he is not evidenced to have experience in multi-user collaboration software). See Ex. 2002 ¶¶ 5–7, Attachment A; see also Hr’g Tr. 23:5–25:2 (Patent Owner, given the opportunity to identify any evidence of record supporting that Mr. Landers has ordinary skill in the art, identified none). There is no argument by Patent Owner to the contrary. For the reasons above, we give no weight to the testimony presented in the Declarations of Mr. Sunatori and Mr. Landers as to the claim construction, anticipation, and obviousness issues discussed below. D.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“[W]e need only construe terms ‘that are in controversy, 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) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner states, “no construction is necessary, as the claims are obvious under any reasonable construction.” Pet. 7. This statement aligns with the testimony of Dr. Terveen. Ex. 1003 ¶ 24 (“Counsel has not instructed me to apply a construction of the claims notwithstanding their ordinary meaning. Therefore, I have applied the meaning of the claim terms of the Challenged Claims that is generally consistent with their ordinary and customary meaning, as a person having ordinary skill in the art would have understood them in the context of the ’124 Patent at the time of the alleged invention.”). Moreover, Petitioner again stated at the final hearing that, “there are no claim construction disputes, at least none explicitly.” Hr’g Tr. 11:21–24. Similarly, Patent Owner states that “[n]o formal claim constructions are necessary because ‘claim terms need only be construed to the extent necessary to resolve the controversy.’” Resp. 4 (quoting Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Therefore, we also do not expressly construe any claim language. slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the evidence of record, we find that the annotated Roy Figure 4B, above, shows how Roy teaches: (1) user input at a client computer, the user input representing content to be shared, such as game plays, and generating messages defining that content, (2) the content being sent to a server, (3) and the server then outputting related messages to all the networked client computers (including the originating computer) so that (4) shared content (e.g., the game play) is displayed over common content (e.g., a game field) at all networked computers (including the originating computer). The above cited portions of Roy, as explained by Dr. Terveen, disclose a central server architecture for the networking of, and sharing common and user-generated content amongst, client computers, and the inherent latency involved in transmission of messages over such an architecture. See Pet. 10–23; Ex. 1001, 1:60–67, 47:44–48, 49:2–7; Ex. 1003 ¶¶ 47–60; Ex. 1005, Abstract, 1:26–48, 1:53–56, 2:1–6, 3:16–56, 3:66–4:1, 4:6–29, 4:44–54, 5:17–6:14, 7:50–52, Figs. 1, 4B, 5A, 5B; Ex. 1020; Ex. 1021. Moreover, to the extent any claim element is not expressly disclosed in Roy, Petitioner has shown that it would have been obvious because one of ordinary skill in the art would understand that displaying shared content over common content on networked computers, where users are collaborating or playing a game, where changes are made to the common view efficiently so that only changes are messaged as rendering commands rather than re-rendering the entire “game world” would provide the benefit of preserving bandwidth consumption. Pet. 20–21; Ex. 1003 ¶ 58.” slip op. at 47
Patent outcomesUS 10,963,124 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,963,124 - Askeladden, L.L.C. v. Ohva, Inc.Institution deniedPTAB · Dec 4, 2023 · IPR2023-00921 · APJ Amee A Shah · IPR · Institution
The Board denied institution on claims 1–4 because Petitioner did not show a reasonable likelihood that the challenged claims were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. 35 U.S.C. § 314. That burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we find that the ’286 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’286 patent is consistent with the level of skill proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“To the extent necessary, we discuss the meaning of a claim term (“transaction data”) in our analysis below. We, however, need not construe explicitly any of the claim terms proposed by Petitioner to reach our decision about institution. See Realtime Data, 912 F.3d at 1375 (“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))). At this stage, neither party has identified any indication that the ’286 patent uses any term differently than it would ordinarily be used or any indication in the prosecution history that “compel[s] a limitation of the claim language different from its plain meaning” as alternatives. Schumer v. Lab. Comput. Sys., Inc., 308 F.3d 1304, 1311, 1314 (Fed. Cir. 2002).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“To the extent Petitioner contends that Cho’s account information, though not explicitly providing for “transaction data,” “renders obvious” the claimed transaction data, Petitioner has not explained such a modification of Cho’s account information that would be necessary to arrive at the ’286 patent’s transaction data. Nor has Petitioner provided articulated reasoning with rational underpinning. In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR, 550 U.S.at 418). Similarly, Petitioner does not explain how skilled artisans would have used Aaron to modify Cho’s system to meet the claimed transaction data. Rather, Petitioner relies on Aaron for teaching facilitating transactions. Pet. 57. Petitioner asserts that “Aaron explains what information is sent in transactions: ‘credit card numbers, debit card numbers, bank accounts, user accounts, user identifying information or other sensitive information.’” Id. at 35 (citing Ex. 1006 ¶ 69). Yet, Petitioner does not explain how Aaron’s customer facing device that communicates with the payment service system 708 to submit a request for authorization of a transaction, the information being credit and debit card numbers, bank and user account information, and other identifying or sensitive information, would have been combined with Cho to render obvious accepting, providing, and converting transaction data—differentiated from account data—and facilitating transactions using that transaction data. Indeed, Petitioner’s contentions do not mention Aaron for limitation [1.1.1] (the initial recitation of transaction data) or for limitation [1.3.1] (where an audio signal is converted to transaction data). Pet. 40–43, 53–56. After considering the parties’ arguments and evidence, we determine” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,679,286 - PTAB · Oct 25, 2023 · IPR2023-00849 · APJ Amee A Shah · IPR · Institution
The Board instituted IPR on claims 1, 4, 7–12, 14, 17, 18, and 20–27, finding a reasonable likelihood that at least one claim is obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“discretionary denial of institution. In particular, we determine that factor 1 is neutral, factors 2–4 weigh against denial of institution, and factor 5, which is the lone factor favoring denial of institution, does not outweigh factors 1–4. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). In addition, Petitioner asserts: (1) the Board is best suited to address the technical issues raised here; (2) a decision on the merits at institution may aid the parties in resolving their dispute; and (3) determining patentability will benefit the public, providing a complete record and rationale absent from a jury verdict form. Pet. 113. Patent Owner responds that Petitioner’s argument does nothing more than “proclaim[] in conclusory fashion that institution will result in some vague benefit to the [’492 litigation] and the public.” Prelim. Resp. 45. We agree with Patent Owner. Petitioner’s assertion is conclusory and does not adequately specify the particular benefits to the proceeding here or to the ’492 litigation. Thus, we determine that the sixth factor is neutral.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“It is not disputed the Sclater was not previously presented to the Office. As can be seen from our analysis below, all of Petitioner’s asserted grounds substantially rely upon Sclater to teach limitations of the safety device. Sclater, thus, is meaningful to the prior art combination. because the asserted combination, all of which include Sclater, were not previously presented to the Office. Because we determine that part one of the framework is not satisfied, we need not turn to part two to determine whether Petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. For the reasons discussed above, we decline to exercise our discretion under § 325(d) to deny the Petition.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“of record, for the reasons set forth below we determine that, at this stage based on the evidence presented, Petitioner has demonstrated that there is a reasonable likelihood that at least one of the Challenged Claims is unpatentable. Accordingly, we institute an inter partes review of all challenged claims and on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention (“POSA” or “skilled artisan”) “would have had a bachelor’s degree in mechanical engineering and at least one year of machine design experience related to power transmission equipment and a demonstrated understanding of the biomechanics of exercise, including knowledge in the field of anthropometry (i.e., the study of human proportion).” Pet. 5 (citing Ex. 1003 ¶¶ 48, 44–49). Patent Owner “does not dispute Petitioner’s proposed qualifications of a person of ordinary skill in the art.” Prelim. Resp. 2. Thus, for purposes of this Decision, we find that the ’745 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,799,745 - PTAB · Oct 24, 2023 · IPR2023-00843 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Under § 314(a), we have discretion to deny institution of an inter partes review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016). We consider several factors when determining whether to deny institution under § 314(a) based on a parallel district court proceeding, specifically 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). We also consider “several clarifications” made by the Director of the United States Patent and Trademark Office (“USPTO”). See USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, 2 (June 21, 2022), available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Fintiv Memo”).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“It is not disputed the Sclater was not previously presented to the Office. As can be seen from our analysis below, all of Petitioner’s asserted grounds substantially rely upon Sclater to teach limitations of the safety device. Sclater, thus, is meaningful to the prior art combination. Accordingly, we determine that discretionary denial is not warranted because the asserted combination, all of which include Sclater, were not previously presented to the Office. Because we determine that part one of the framework is not satisfied, we need not turn to part two to determine whether Petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. For the reasons discussed above, we decline to exercise our discretion under § 325(d) to deny the Petition.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “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.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of challenged claims 30–34, 37–54, 57, and 59 of the ’884 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’884 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSA”) would have had a bachelor’s degree in mechanical engineering and at least one year of machine design experience related to power transmission equipment and a demonstrated understanding of the biomechanics of exercise, including knowledge in the field of anthropometry (i.e., the study of human proportion). Pet. 5 (citing Ex. 1003 ¶¶ 44–49 (supporting testimony of Dr. Giachetti)) (emphasis omitted). Petitioner additionally states that “[t]his description is approximate and additional development experience could make up for less education and vice versa.” Id. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’884 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,561,884
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.