- PTAB · Feb 9, 2024 · IPR2023-01235 · APJ Bart A Gerstenblith · IPR · Institution
Instituted review of claims 1–6 on all petition grounds; the Board found a reasonable likelihood of success on obviousness over Szrek and did not reach the Llach–Szrek ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“We disagree. First, we agree with Patent Owner that the fact pattern presented here is not the typical situation in which the factors from General Plastic are considered. In particular, this proceeding challenges claims of a different patent than at issue in IPR2020-00084. Second, although the parties may have gained insight as to how the Board would handle challenges based on the same references asserted in the earlier proceeding, that insight (to the extent it gives an advantage) applies to both parties. Third, the first proceeding was a post-grant review that had a specific timing requirement (see 35 U.S.C. § 321(c)), in contrast to the present proceeding in which the filing of the Petition did not have the same or similar time constraint.6 In these circumstances, we find it appropriate to give less weight to factors based on the mere passage of time such as whether Petitioner knew of the prior art at the time of filing the petition in PGR2020- 00084 (clearly Petitioner did because two of the same references are asserted here) and whether Petitioner had received Patent Owner’s preliminary response from PGR2020-00084 at the time of filing the instant Petition. Accordingly, we decline to exercise our discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Even assuming Linq3 is a real party in interest to Petitioner and assuming we may exercise our discretion to deny institution based on unclean hands (see Kavo Dental Techs, LLC v. Osseo Imaging, Inc., IPR2020-00659, Paper 10 at 19 (PTAB June 10, 2020)), Patent Owner essentially asks us to resolve multiple factual issues related to its contract dispute with Linq3 to justify denial of institution. See, e.g., Prelim. Resp. 1– 26. Many, if not all, of these issues appear to be involved in the contract dispute, which will be resolved by the Arizona state court. We are not in a good position to make determinations about these particular issues at this stage of the proceeding, on the limited record before us. Rather, we find that the state court is better suited to address the conduct of Linq3 of which Patent Owner complains. Accordingly, we do not dive headfirst into these matters that are better addressed by the state court. To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party of interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response and the parties may brief and argue the issue during trial.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 2–3 (citing Ex. 1003 ¶ 13).7 Patent Owner does not propose a level of ordinary skill in the art in its Preliminary Response. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’135 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner contends that we should follow the Board’s decision in PGR2020-00084 and construe “transaction processor” and “data package” in accordance with each term’s plain and ordinary meaning. Pet. 13; see id. at 13–19. Patent Owner does not take a position as to claim construction at this stage of the proceeding. See generally Prelim. Resp. In PGR2020-00084, the Board construed “transaction processor”8 in accordance with its plain meaning as “a processor . . . that processes transactions between two devices” and specifically “decline[d] to limit processors . . . to ‘third party’ processors . . . because the intrinsic record does not justify such a modification and it would create uncertainty.” Ex. 1008, 22. And, as Petitioner indicates, the Board determined that “data package” also is understood in accordance with its plain and ordinary meaning. Id. at 22–24; see id. at 24 n.10. At this stage of the proceeding 8 In that proceeding, the Board also construed “transaction processor system.” Ex. 1008, 13–22. and on the present record, we need not construe any claim terms expressly because none are in dispute. See Realtime Data, 912 F.3d at 1375.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,865,135 - PTAB · Jan 29, 2024 · IPR2023-01032 · APJ Scott B Howard · IPR · Institution
Instituted IPR on claims 1–7 on all asserted grounds; the Board found a reasonable likelihood that Suzuki, Cullen, and Scherer render at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018). “When instituting inter partes 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.” 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In performing an analysis under § 325(d), “the Board uses the following two-part framework: 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 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. . . . If, after review of [Becton Dickinson] factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8, 10 (PTAB Feb. 13, 2020) (Institution Decision) (precedential) (footnote omitted). Consequently, we first turn to an analysis of Becton Dickinson factors (a), (b), and (d) to determine 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.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Scherer also teaches using a high pass filter to filter a torque demand signal. See Ex. 1003 ¶ 99; Ex. 1007, 3:59–63, 4:20–45, Figs. 1, 2. rapidly to sudden changes of the engine torque” arising during transient engine operations. Ex. 1007, 4:20–4:31; see also id. at 4:31–5:15; Ex. 1003 ¶ 100. A person having ordinary skill in the art would have included Scherer’s high pass filter in Suzuki’s torque controller to produce the Spark Timing Correction for a Homogeneous Mode and the Equivalence Ratio for Stratified Mode because it would enable the system to adjust for dynamic changes in torque values more accurately. Ex. 1003 ¶ 100; see also id. ¶¶ 65–69.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We do not agree with Patent Owner that Scherer teaches away from the claimed invention. First, Scherer is not limited to Diesel engines. Although the Figure 2 embodiment discusses a Diesel engine, the Figure 1 embodiment involves an Otto engine that uses spark plugs. See Ex. 1007 Figs. 1–2, 3:59–60, 5:16–18. Second, a reference teaches away from the claimed invention if “a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed Cir. 1994). The discussion of using a high pass filter with a Diesel engine, “does not teach away” from using a high pass filter with a DISI engine as “it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,581,565 - PTAB · Jan 23, 2024 · IPR2023-01031 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 4–7, and 9–13 on all asserted grounds, finding a reasonable likelihood of unpatentability and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018). “When instituting inter partes 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.” 37 C.F.R. § 42.108(a) (2022). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We are persuaded by Petitioner’s argument. As the parties agree, the petitioner in the Volkswagen IPR relied on Luff. See Pet. 23; Prelim. Resp. 20. In that proceeding, we denied institution because the petition did not sufficiently show that Luff teaches or suggests “waste production data” as recited in claims 1 and 9. Volkswagen, IPR2020-00894, Paper 11 at 11–14. However, neither Amaratunga nor Seem were considered during the prosecution of the ’482 patent or the Volkswagen IPR. Pet. 23; Prelim. Resp. 22. Moreover, Petitioner relies on Amaratunga in combination with Luff to teach “waste production data,” the limitation we found missing in the Volkswagen IPR. See Pet. 39–41. Additionally, to the extent Petitioner relies on Luff, Petitioner is relying on a different section of the reference than was raised in the Volkswagen IPR. Compare Pet. 39–41 (relying on 5:57–6:26), with Volkswagen, IPR2020-00894, Paper 2 (relying on 9:24–31, 17:65–18:3). The Office never considered this combination either during the prosecution of the ’482 patent or during the Volkswagen IPR. Furthermore, we do not agree with Patent Owner that Amaratunga and Seem are substantially the same and cumulative to references asserted in the Volkswagen IPR. Patent Owner neither identifies how the references are cumulative of Amaratunga and Seem nor why the references are cumulative Amaratunga and Seem. Although, at a very high level, Amaratunga and Seem involve the same technology as the references asserted in the Vokswagen IPR, that is not enough. The issue is not just whether the same elements can be found in each of the references, but whether the elements function the same way. Patent Owner does not provide any explanation as to how both Amaratunga and Seem operate or how their operations are substantially the same as the operations disclosed by the references asserted in the Volkswagen IPR. See Prelim. Resp. 20. Accordingly, we are not persuaded by Patent Owner that Amaratunga and Seem are substantially the same as references the Office previously considered. 3. Conclusion Because we find that the evidence of record demonstrates that Becton Dickinson factors (a), (b), and (d) have not been satisfied, we find that the same or substantially the same art or arguments were not previously presented. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We consequently decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“If factors one through five do not favor discretionary denial, “the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.” CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (precedential, decision upon Director Review). But if factors one through five favor discretionary denial, “the Board shall then assess compelling merits.” Id. at 5; see also Volvo Penta v. Brunswick Corp., IPR2022-01366, Paper 15 at 4–5 (PTAB May 2, 2023) (Director Review) (holding that the PTAB must perform a compelling merits analysis even when the District Court has already invalidated the challenged claims under 101, but the decision is still pending appeal if the Board determines that Fintiv factors 1–5 favor exercise of discretion to deny institution.) Here, on balance, factors one through five favor discretionary denial. See supra §§ II.E.1–II.E.5 (finding that five factors favor discretionary denial and one factor does not favor discretionary denial). Because factors one through five favor discretionary denial, we assess compelling merits. See CommScope, IPR2022-01242, Paper 23 at 5. To provide better context when doing so, however, we assess compelling merits after addressing the patentability issues. See § II.H, infra. Based on the current record and for the reasons explained below, we determine that Petitioner presents compelling evidence of unpatentability for at least one challenged claim. See § II.H, infra.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On one hand, Patent Owner presents only attorney argument, unsupported by any evidence. See Prelim. Resp. 8. Accordingly, we give it no weight. Elbit Systems of America, LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (“‘[a]ttorney argument is not evidence’ and cannot rebut other admitted evidence” (quoting Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017))); Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (unsworn attorney argument is not evidence). On the other hand, Petitioner’s formulation is supported by conclusory testimony which does not provide supporting evidence or reasoning. See Ex. 1003 ¶¶ 49–50. We give such testimony little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Although we give Dr. Bower’s testimony little weight, it is consistent with the invention disclosed in the ’482 patent, which claims using a computer to a calculate an ecological parameter based on power consumption and waste production data. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.9” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,909,482 - Wellmatics, LLC / GR Energy Services Management, LP et al. v. Canatex Completions Solutions, Inc.Institution deniedPTAB · Jan 8, 2024 · IPR2023-01149 · APJ Brent M Dougal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “does not dispute” these qualifications. Prelim. Resp. 10. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’122 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the example of “a fluid line that provides gas or liquid to expansion chamber 38 from [the] surface” in the specification, does not require that a fluid line be a source of fluid pressure. We further agree that Petitioner’s analysis ignores the fact that this example makes clear that the source of fluid pressure is at the surface. Prelim. Resp. 20 (citing Ex. 2001 ¶¶ 66–67). Both Patent Owner and Petitioner agree that “source” should be construed in accordance with its ordinary meaning. Prelim. Resp. 13, 18; Pet. 18–19 (Patent Owner has not “identified any clear definition or clear and unambiguous disclaimer that would justify departing from the ordinary meaning of the claim language.”). ordinary meaning of “source.”2 See Prelim. Resp. 13–18 (citing Ex. 1001, 3:55–65, 4:5–12, Ex. 2001 ¶¶ 52–63, Ex. 2003, 7, 8, Ex. 2004, 5, Ex. 2005 ¶¶ 29–30, Fig. 1, Ex. 2006, 4:64–5:9, Fig. 1, Ex. 2007, 13:23–35, Ex. 2009, Abstr., 3:54–60, Ex. 2010. Patent Owner provides dictionary and declaratory evidence that the ordinary meaning of “source” is ‘“origin’— i.e., the place from which something originates.” Id. at 13 (citing Ex. 2001 ¶ 52, Ex. 2003, 7, 8, Ex. 2004, 5). Patent Owner provides further evidence and explanation as to why that definition is consistent with the usage of “source of fluid pressure” in the ’122 patent. Id. at 13–15 (citing e.g., Ex. 1001, 3:55–65, 4:5–12). Patent Owner provides further evidence of how the term “source” is used in other patents and documents “in the oil and gas industry” that is consistent with its definition. Id. at 15–18 (citing Ex. 2001 ¶¶ 57–63, Ex. 2005 ¶¶ 29–30, Fig. 1, Ex. 2006, 4:64–5:9, Fig. 1, Ex. 2007, 13:23–35, Ex. 2009, Abstr., 3:54–60, Ex. 2010). Thus, based on the current record, we construe “source of fluid pressure” to mean the place from which the fluid pressure originates.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“As noted by Patent Owner, Petitioner’s declarant merely asserts that Bebak’s hydraulic pump would have been considered part of the second part of a releasable connection, and thus it is entitled to little weight. Prelim. Resp. 28; see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper No. 9 at 15 (Aug 24, 2022) (precedential) (“Dr. Jones does not cite to any additional supporting evidence or provide any technical reasoning to support his statement. Thus, the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.”) (citing 37 C.F.R. § 42.65(a)). For all of the above reasons, we determine that the Petition does not provide a reasonable basis to determine that Bebak teaches “a second part [of the releasable connection] comprising: . . . a source of fluid pressure,” as required by independent claims 1 and 13.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,794,122 - PTAB · Dec 12, 2023 · IPR2023-00910 · APJ Nathan A Engels · IPR · Institution
Instituted IPR on claims 1–6 over all petitioned grounds after finding a reasonable likelihood of prevailing; denied joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 9
- Other 314aInstitution denied discretionary otherDenied
“Patent Owner argues the Petition should be denied under 35 U.S.C. § 314(a) because (1) “Petitioner’s inability to commit to non-duplicative efforts between the District Court Litigation and this proceeding weighs in favor of discretionary den[ial]” (Prelim. Resp. 59), and (2) Petitioner failed to request a conference call prior to filing its Motion for Joinder (Prelim. Resp. 59–60). Petitioner asserts that no trial date has been set in the parallel district court litigation, which Patent Owner does not dispute. Pet. 55; Prelim. Resp. 59–60. Additionally, the Patent Trial and Appeal Board Consolidated Trial Practice Guide (CTPG) states that “[a] party who files a motion for joinder should arrange a conference call . . . within five business days of filing the motion.” CTPG 76 (Nov. 2019) (emphasis added).8 In light of the termination of the earlier proceeding, Petitioner’s failure to request a conference call is harmless error. Thus, we find Patent Owner’s arguments unpersuasive and decline to exercise our discretion to deny the Petition under § 314(a).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Pet.”) requesting inter partes review of claims 1–6 of U.S. Patent No. 9,445,041 B2 (Ex. 1001, “the ’041 patent”). Petitioner also filed a Motion for Joinder requesting joinder with IPR2022-01548 (Paper 2), but IPR2022- 01548 has since terminated due to settlement (IPR2022-01548, Paper 18). Therefore, we deny the Motion as moot. Patent Owner Advanced Coding Technologies, LLC filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention would have had “at least a [b]achelor’s degree in computer science, electrical engineering, computer engineering, or a related field, with 2–3 years of experience in digital video processing, or a related field, or equivalent research or professional experience.” Pet. 7 (citing Ex. 1003 ¶ 26). Patent Owner states that it applies Petitioner’s proposed level of ordinary skill for the purposes of its Preliminary Response. Prelim. Resp. 29. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill, with the exclusion of “at least” in defining the education 6 US 2011/0097059 A1, published Apr. 28, 2011. Ex. 1008. Petitioner refers to “Sekiguchi” as “Seikiguchi.” See, e.g., Pet. 3. level, which would render the definition open-ended and inclusive of persons of expert-level skill.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,445,041 - PTAB · Dec 12, 2023 · IPR2023-00798 · APJ Justin T Arbes · IPR · Institution
The Board instituted review of claims 1–24 on all asserted grounds, finding a reasonable likelihood that claims 1 and 13 are unpatentable over Wright and Daswani.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“and its preliminary invalidity contentions do not include the two references asserted in this proceeding, Wright and Daswani. Pet. 67. Petitioner also “stipulates that, if the Board institutes trial in this IPR, Petitioner will not pursue, in the [district court case], the specific grounds asserted in the IPR petition, nor any ground based on any prior art reference asserted in the IPR petition.” Paper 7. On November 27, 2023, the district court issued an Order granting a Joint Motion to Stay All Deadlines and Notice of Settlement filed by the parties in the district court case. Ex. 3001. The Order states that “the parties represent that they have reached a settlement in principle and request a stay of all case deadlines for thirty-five days for the parties to finalize such settlement and file dismissal papers with the Court.” Id. The parties also notified the Board of the settlement and timing with respect to the Joint Motion by email on November 27, 2023. Given the parties’ settlement in the district court case, there will be no trial of Patent Owner’s asserted claims against Petitioner in the district court case, and thus there is no basis to deny institution under § 314(a). We decline to exercise our discretion to deny the Petition.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“combined teachings of Wright and Daswani that we find persuasive based on the current record. Pet. 34–36. Petitioner contends that “[w]hile Wright indicates that the combination or series of behaviors will be ranked to create increasing levels of confidence that an application is malware, Daswani application is malicious, and thus poses a threat to the system.” Id. at 34. Petitioner relies on Daswani’s teachings of “hard and soft signals that represent indications of how much a system call or action is likely to contain malware, a significant indicator of risk,” modeling behaviors as signals, and calculating a value called the “probability of maliciousness,” or “X,” based on a set of observed signals. Id. at 34–36 (citing Ex. 1006, code (57), col. 6, ll. 47–55, col. 7, ll. 9–20). According to Petitioner and Dr. Nielson, a person of ordinary skill in the art would have understood the calculated probability of maliciousness to be a “behavior score.” Id. at 36 (citing Ex. 1003 ¶ 174). Petitioner also provides an explanation for why an ordinarily skilled artisan would have been motivated to “use Daswani’s approach in Wright’s system.” Id. at 12–17; see Ex. 1003 ¶¶ 103–115. For example, Petitioner argues that Wright ranks phenotypes “based on confidence,” Daswani “discloses how to create these confidence levels,” and using Daswani’s method would maximize classification flexibility while minimizing false positives. Pet. 12–16. Patent Owner argues that “Petitioner does not explain how a [person of ordinary skill in the art] would identify Daswani’s ‘calculated probability of maliciousness’ based on Wright’s ‘identification of a known family of malware,’” as Daswani’s probabilities of maliciousness are calculated based on hard and soft signals “prior to classifying an application as malicious.’” Prelim. Resp. 23–24 (citing Ex. 1006, col. 8, ll. 13–27). We disagree based on the current record. As explained above in connection with limitation 1[d], we are persuaded on this record that Wright identifies a runtime risk by monitoring actions at runtime and determining that a pattern of actions matches a stored phenotype, where the phenotype has a recognized other phenotypes that may indicate the presence of malware with different levels of confidence. See Pet. 28–31. Daswani discloses a specific method of scoring such confidence levels (i.e., calculating a probability of maliciousness). See id. at 34–36; Ex. 1006, col. 7, ll. 9–28. Daswani’s calculated probability of maliciousness is based on observed soft signals that occur at runtime, similar to Wright’s determination of a particular phenotype based on observed behaviors occurring at runtime. See Ex. 1005 ¶¶ 82–88; Ex. 1006, col. 8, ll. 6–16. Petitioner’s asserted combination is to use Daswani’s calculated probability of maliciousness (i.e., a “behavior score” in Petitioner’s view) in Wright’s system as a numerical measure of the connection to the known family of malware, and Petitioner provides sufficient explanation at this stage as to why doing so would have been advantageous. See Pet. 12–17, 34–36. Petitioner’s contentions regarding claim 1 are supported by the testimony of Dr. Nielson and are persuasive based on the current record. See Pet. 9–39; Ex. 1003 ¶¶ 102–192. Petitioner has made a sufficient showing on this record that Wright and Daswani collectively teach all of the limitations of claim 1 and that a person of ordinary skill in the art would have been motivated to modify Wright’s system, based on the teachings of Daswani, to identify a behavior score, with a reasonable expectation of success in doing so to achieve the claimed method. We are persuaded that Petitioner has shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Wright and Daswani. Accordingly, we institute review “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a).” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’517 patent (January 2013), a person of ordinary skill in the art would have had “a bachelor’s degree in computer science, or a related field, or an equivalent technical degree or equivalent work experience, and an additional one to two years of education or experience in the field of computer security,” where “[m]ore education can supplement practical experience and vice versa.” Pet. 7–8 (citing Ex. 1003 ¶ 87). Patent Owner adopts Petitioner’s definition for purposes of including our review of the ’517 patent and the types of problems and solutions described in the ’517 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision. See, e.g., Ex. 1001, col. 1, ll. 5–39. We note that a slightly different definition was adopted in the -704 case (“a bachelor’s degree in computer science or computer engineering, or an equivalent field and at least two to three years of experience in computer and network security”). See -704 Dec. on Inst. 16–17. Our conclusions herein, however, would be the same if that definition is used.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner does not propose interpretations of any claim terms. Pet. 8. Patent Owner only notes that the parties agreed in the district court case that the term “runtime” in claims 1, 10, 13, and 22 means “the time the application is running.” Prelim. Resp. 11 (citing Ex. 2003, 45–54). No claim terms were interpreted in the -704 case. See -704 Dec. on Inst. 17–18. We conclude that no express claim interpretation is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,850,517 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 7, 2023 · IPR2022-00993 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1, 6, 7, 10–14, 19, 20, 23–30, and 32 are unpatentable under § 103 based on Sullivan995, Sullivan460, and Matthews.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“not implicitly define the phrase “analyzing the breathing patterns,” as proposed, because Patent Owner has failed to show any sufficient evidence that the ’994 patent clearly expresses an intent to redefine the phrase or define the phrase in terms other than its plain and ordinary meaning. In other words, implied lexicography does not apply here. Accordingly, after reviewing Patent Owner’s contentions in light of all the evidence of record, we do not adopt Patent Owner’s proposed construction; instead, we apply the plain and ordinary meaning of “analyzing the breathing patterns” in our consideration of the issues before us.18” slip op. at 31
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“D. Other Claim Terms The Parties do not dispute the construction of any other claim terms, and we find that no other terms require express construction to resolve the controversy between the Parties. Accordingly, we do not construe any other claim terms expressly. 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., 200 F.3d at 803)).” slip op. at 31
- Skill levelOther
“G. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Kirkness’s testimony, proposes that a” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“19, 20, 23–26, 28–30, and 32 and supported on the complete record before us, and, therefore, we adopt them as our own findings. See Pet. 66– 77. Accordingly, for the reasons explained by Petitioner, we find that the combination of Sullivan995, Sullivan460, and Matthews satisfies the elements of claims 6, 7, 10–14, 19, 20, 23–26, 28–30, and 32.” slip op. at 49
Patent outcomesUS 6,988,994 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,988,994 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 7, 2023 · IPR2022-00992 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–14 are unpatentable as obvious: claims 1–5 and 7–14 over Sullivan995 and Sullivan460, and claim 6 over those references and Matthews.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“A. “troubled wakefulness” Petitioner proposes that we construe “troubled wakefulness” to mean” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“not implicitly define the phrase “analyzes the data to determine the patient’s breathing patterns,” as proposed, because Patent Owner has failed to show any sufficient evidence that the ’024 patent clearly expresses an intent to redefine the phrase or define the phrase in terms other than its plain and ordinary meaning. In other words, implied lexicography does not apply here. Accordingly, after reviewing Patent Owner’s contentions in light of all the evidence of record, we do not adopt Patent Owner’s proposed construction; instead, we apply the plain and ordinary meaning of “analyzes the data to determine the patient’s breathing patterns” in our consideration of the issues before us.” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, for the reasons explained above, we find Petitioner has” slip op. at 53
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“because it too is based on Patent Owner’s proposed construction of “analyzes the data to determine the patient’s breathing patterns,” which we do not adopt for the reasons explained above. Patent Owner’s additional arguments in response to Ground 2 are directed to motivation to combine, reasonable expectation of success, and objective indicia of nonobviousness, which we address below. For the reasons discussed above, we find Petitioner’s arguments persuasive as to claim 6 and supported on the complete record before us. Accordingly, we find that the combination of Sullivan995, Sullivan460, and Matthews satisfies the subject matter of claim 6.” slip op. at 70
Patent outcomesUS 10,384,024 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,384,024 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 6, 2023 · IPR2022-00994 · APJ Alyssa A Finamore · IPR · Final written decision
Claims 1, 3, 7, 9, 11, and 13 are unpatentable as obvious over Sullivan995, Sullivan460, and Matthews; the Board did not reach the other grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“the specification . . . we do not read limitations from the embodiments in the specification into the claims.” Hill-Rom Servs., 755 F. 3d at 1371 (citing Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed. Cir. 2004)). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Id. In order for a patentee to act as its own lexicographer, the “patentee must ‘clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning’” and “must ‘clearly express an intent’ to redefine the terms.” Bradium Tech., 923 F.3d at 1044.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience” and that “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 23 (citing Ex. 1003 ¶ 89). Petitioner further contends that the “Petition does not turn on this precise definition, and the challenged claim[s] would be unpatentable from the perspective of any reasonable person of ordinary skill in the art at the relevant time.” Id. (citing Ex. 1003 ¶ 90). Patent Owner does not object to Petitioner’s definition for the level of ordinary skill in the art. PO Resp. 11. Petitioner’s definition for the level of ordinary skill in the art is consistent with the problems addressed in the ’344 patent and the prior art. We, therefore, apply Petitioner’s level of ordinary skill in the art in this Decision.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“At the outset, we agree with Petitioner that “enablement ‘is not a requirement to prove invalidity under § 103.’” Pet. Reply 23 (quoting Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1357 (Fed. Cir. 2003)). Moreover, we also agree with Petitioner that a person of ordinary skill in the art would have understood a preset level is established from previously-acquired data, such as an average level, as Sullivan995 discloses. Id. at 22 (citing Ex. 1005, 17:3–27, Fig. 12; Ex. 2015, 38:2–16). Sullivan995 discloses the computing system may “calculate control values of patterns for each patient based on moving average values or such values or patterns will be pre-programmed into the computing system.” Ex. 1005, 17:14–18. According to Sullivan995, when “signals deviate from predetermined values or patterns the computer system generates a signal which is sent to the feedback speed controller on the blower motor.” Id. at 17:19–22.” slip op. at 48
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“The Board uses a two-step analysis in evaluating nexus between the claimed invention and objective evidence. Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33 at 32–33 (PTAB Jan. 24, 2020) (precedential), aff’d sub nom. Zaxcom, Inc. v. Lectrosonics, Inc., 2022 WL 499848 (Fed. Cir. Feb. 18, 2022). We first consider whether the patent owner has demonstrated “that its products are coextensive (or nearly coextensive) with the challenged claims,” resulting in a rebuttable presumption of nexus. Id. at 32. If not, that “does not end the inquiry into secondary considerations”; “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. at 33 (quoting Fox Factory, 944 F.3d at 1373–75). “Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.” Id. (citing In re Kao, 639 F.3d 1057, 1068–69 (Fed. Cir. 2011)). There is no requirement that the objective evidence of non-obviousness be tied exclusively to claim elements that are not disclosed in the prior art, and the claimed combination as a whole may serve as a nexus for the objective evidence. Id. (citing WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1331 (Fed. Cir. 2016)).” slip op. at 56
Patent outcomesUS 9,168,344 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,168,344 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 4, 2023 · IPR2022-00989 · APJ James A Tartal · IPR · Final written decision
Claims 1, 2, 5–11, 13, and 15–30 are unpatentable as obvious over Sullivan995 and Sullivan460; anticipation was not shown, and the other obviousness ground was not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Petitioner contends that a person of ordinary skill in the art would have had “at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience” and “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 19 (citing Ex. 1003 ¶ 77). Petitioner further states that the “Petition does not turn on this precise definition, and the challenged claims would be unpatentable from the perspective of any reasonable person of ordinary skill in the art at the relevant time.” Id. (citing Ex. 1003 ¶ 78). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. PO Resp. 15–16. We find that the ’539 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 ’539 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“awake state” Claim 24 recites, in part, “to determine whether breathing patterns indicate an asleep state or an awake state.” Ex. 1001, 11:36–12:7; see also id. at 9:49–64 (claim 1 reciting “between an awake state and an asleep state”), 10:42–56 (claim 11 reciting “at least one of an awake state or an asleep state”). In regard to its allegations of obviousness, Petitioner’s arguments suggest an “awake state” ordinarily means when a patient is not asleep. Pet. 36–37, 42. By contrast, with regard to its allegations of anticipation, Petitioner argues that under Patent Owner’s “implied construction of ‘an awake state’ based on [Patent Owner’s] infringement allegations” in district court, “the patient is in an awake state when there is an absence of obstructions or other breathing patterns indicative of sleep.” Id. at 68–70 (citing, e.g., Ex. 1018 ¶¶ 2, 158, 159). Petitioner provides no further support for this “implied construction” purportedly taken from Patent Owner’s district court allegations. Id. Dr. Kirkness, in support of Petitioner, applied the plain meaning of all terms and phrases. See, e.g., Ex. 1003 ¶ 80. In regard to supporting Petitioner’s allegations of anticipation, Dr. Kirkness merely assumed Patent Owner’s purported district court claim construction “position to be true.” Ex. 1003 ¶ 253. In this proceeding Patent Owner does not propose an express meaning for “awake state.” See PO Resp. 29–33. More generally, Patent Owner states that the ’539 patent “teaches how to distinguish between an awake state and an asleep state.” Id. at 8. From the arguments of the Parties, we discern no dispute in this proceeding that a plain and ordinary meaning of an “awake state” is a state in which a patient is not asleep. See Ex. 1001, 3:1–5 (distinguishing between “a wake state” and “a sleep state”), 7:22–24 (describing an embodiment with a processing arrangement that “may determine whether the patient is in a sleep state or a wake state based on the breathing pattern”).8 We apply the plain and ordinary meaning of “awake state” in this proceeding and further determine that Petitioner has not shown by a preponderance of the evidence that an awake state means “an absence of obstructions or other breathing patterns indicative of sleep.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“Next, we turn to the Specification. “While we read claims in view of the specification . . . we do not read limitations from the embodiments in the specification into the claims.” Hill-Rom Servs., 755 F. 3d at 1371 (citation omitted). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Id. In order for a patentee to act as its own lexicographer, the “patentee must ‘clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning’” and “must ‘clearly express an intent’ to redefine the terms.” Bradium Tech., 923 F. 3d at 1044. In this case, Patent Owner does not argue that it disavowed the full scope of the plain and ordinary meaning of claim 24, nor does Patent Owner argue that it explicitly defined “analyzing the breathing patterns” in the Specification. See, e.g., PO Resp. 29–32. We determine that there is no disavowal nor any explicit lexicographic definition of “analyzing the breathing patterns” in the Specification. Patent Owner instead relies on an “implied lexicography” theory as to why we should construe the phrase as Patent Owner proposes. PO Sur-reply 2, 6–7 (citing, inter alia, AstraZeneca AB v. Mut. Pharm. Co., Inc., 384 F.3d 1333, 1339 (Fed. Cir. 2004)). We disagree.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We disagree with Patent Owner’s arguments—that Petitioner fails to show any motivation to combine and that Sullivan460 is not enabled— merely because Dr. Kirkness indicated in a deposition that he did not know how a preset level is calculated from a sentence in Sullivan460. As Petitioner explains, enablement “is not a requirement to prove invalidity under §103.” Amgen, 314 F.3d at 1357 (under §103, “a reference need not be enabled; it qualifies as a prior art, regardless, for whatever is disclosed therein”). Moreover, we agree with Petitioner that the Challenged Claims do not require any preset level for a flow rate, and a person of ordinary skill “would have understood that a preset level is established from previously-acquired data or data from a previous window of time, such as an average level, for example, as taught in Sullivan995.” Pet. Reply 15 (citing Ex. 2014, 38:2–16; Ex. 1005, 17:3–27, Fig. 12). Patent Owner responds that Petitioner’s assertion is unsupported, and that “Petitioner is obligated to address this challenge, and failed to do so.” PO Sur-reply 18–19 (citing In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013)). We find Petitioner’s arguments persuasive because they are supported by the asserted references. Sullivan995 discloses that the computing system may “calculate control values of patterns for each patient based on moving average values or such values or patterns will be pre-programmed into the computing system.” Ex. 1005, 17:14–18. According to Sullivan995, when “signals deviate from predetermined values or patterns the computer system generates a signal which is sent to the feedback speed controller on the blower motor.” Id. at 17:19–22. Based on this disclosure, and given that Sullivan460 incorporates Sullivan995 by reference, we agree with Petitioner that Sullivan460’s disclosure of detecting that the flow rate has fallen below a preset level would have informed a person of ordinary skill that this level was predetermined, so that “the controller 100 activates the nCPAP apparatus 90 to supply air to the patient 30 at a pressure which ameliorates or eliminates the upper airway flow limitation.”16 Ex. 1006, 10:17–21.” slip op. at 50
Patent outcomesUS 9,427,539 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,427,539
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.