- PTAB · Feb 26, 2025 · IPR2024-01161 · APJ Andrew L Nalven · IPR · Institution
Instituted IPR on claims 1–16, finding a reasonable likelihood of prevailing on obviousness over Cooper and over Cooper with Slotznick.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and associated evidence, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing in demonstrating the unpatentability of at least one claim of the ’615 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“On this record, we determine that the limitation “without request or acknowledgement” does not set forth any requirements as to a device handshaking process by which two devices agree to exchange information. Instead, we agree with Petitioner that “without request or acknowledgement” merely qualifies the step of “receiv[ing] . . . information of one definite broadcast program . . . identified by a channel selection of another television set in another place.” Pet. 21–22. Hence, the recitation of “without request or acknowledgement” only requires that a device receives information of one definite broadcast program from another device without requesting that information or acknowledging its reception.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “a bachelor’s degree in electrical or computer engineering or a comparable field of study, plus approximately two to three years of professional experience with television and digital display systems, distributed multimedia communications, and networked computer systems, or other relevant industry experience.” Pet. 4 (citing Ex. 1002 ¶ 46). Patent Owner does not offer a position as to the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment, which is consistent with the level of skill reflected in the Specification and asserted prior art. D. Ground 1: Alleged Obviousness over Cooper and the Knowledge of a” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner contends that a POSITA would have been motivated to replace Cooper’s input/output devices with Slotznick’s TV Phone. Pet. 48– 50. Petitioner argues that the replacement of one input device for another is a simple substitution of one known element for another to obtain the predictable result of controlling Cooper’s set-top box 500 with Slotznick’s TV Phone. Id. at 48 (citing Ex. 1005 ¶ 130; Ex. 1002 ¶ 149). Petitioner further contends that the substitution would have been obvious to try. Id. at 49 (citing Ex. 1005 ¶¶ 12, 18; Ex. 1002 ¶ 150).” slip op. at 37
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,319,615 - Olympus Corporation / Om Digital Solutions Corporation et al. v. Optimum Imaging Technologies, LLCInstitutedPTAB · Feb 24, 2025 · IPR2024-01220 · APJ John F Horvath · IPR · Institution
The Board instituted IPR on claims 1–30 on all grounds, finding a reasonable likelihood that claim 1 would be shown unpatentable as obvious over Iwasawa.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner has provided such a stipulation to Patent Owner. Pet. 79 (citing Ex. 1025); see also Ex. 1025, 1 (Petitioner promising that if we institute “an IPR based on the grounds identified [above], then it will (i) not pursue the grounds identified [above] in the respective District Court Case, and (ii) not pursue any other ground that reasonably could have been raised during the IPR . . . in the respective District Court Case.”). In view of Petitioner’s stipulation and the Director’s guidance, we deny Patent Owner’s request for discretionary denial due to the related district court cases. See Ex. 1025, 1; Fintiv Memo 3.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Petitioner here is not the same petitioner (Sony) that previously filed a petition in IPR2024-00923. Moreover, the entities that constitute Petitioner contend that they “lack any legally significant relationship” with Sony. Pet. 77. Petitioner further contends that discretionary denial is not warranted under General Plastic factor six because “this Petition raises references not cited to in the Sony IPR.” Id. at 78. Patent Owner does not dispute any of these contentions. Prelim. Resp. 2–3. Because the entities that comprise Petitioner and Sony are neither the same party nor significantly related parties under Valve, and because the entities that comprise Petitioner and Sony have individual rights to defend themselves from allegations of patent infringement by challenging the validity of the ’685 patent here and in district court, we deny Patent Owner’s request for discretionary denial due to the petition filed in IPR2024-00923. See Videndum, Paper 12 at 5–6; 35 U.S.C. §§ 282(b)(2), 311, 315.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and argument presented, we preliminarily find Petitioner has articulated sufficient reasoning with a rational underpinning to modify Iwasawa’s Figure 2 embodiment with elements from Figures 1 and 6. Iwasawa discloses correction data can either be precalculated and stored in ROM or calculated and stored in RAM. Storing pre-calculated correction data for known lenses in ROM would be faster than calculating such data at execution time and storing it in RAM, but calculating the correction data at execution time and storing it in RAM would be useful for performing new corrections for new lenses or updating the corrections for known lenses. Moreover, the combination is one of familiar elements according to known methods to achieve predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“reasons, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. GPAC Inc., 57 F.3d at 1579. Accordingly, at this stage of the proceeding, we adopt as our own Petitioner’s description of a person skilled in the art.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,873,685 - PTAB · Jan 17, 2025 · IPR2024-01046 · APJ John F Horvath · IPR · Institution
The Board instituted IPR of claims 1–27, 29, and 30 on all five asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Response, that if we institute review in this proceeding it will not pursue in the related district court litigation the same grounds raised here or that reasonably could have been raised here. See Sony Corp. v. Optimum Imaging Techs. LLC, IPR2024-00923 (PTAB), Ex. 1077, 1. In such cases, the Director has determined “the PTAB will not discretionarily deny institution.” Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022), 3.2 Patent Owner argues we should not consider Petitioner’s stipulation because it moots the Fintiv analysis in Patent Owner’s Preliminary Response and “goes against the interests of fairness and efficiency” that the Director’s guidance seeks to promote. Prelim. Resp. 40–42. We decline to address these policy concerns, which are better addressed to the Director and have already been addressed in proposed regulations. See 89 Fed. Reg. 28693 et seq. (Apr. 19, 2024).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We find Patent Owner has satisfied step 1 of Advanced Bionics because Niikawa, Ng, and Watanabe-US were previously presented to the Office, both in the prior IPRs and in the prosecution of the ’266 patent. Consequently, we proceed to step 2 of Advanced Bionics and consider Becton, Dickenson factors (c), (e), and (f) to determine “whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics, Paper 6 at 10. Factor (c) “focuses on the record developed by the Office in previously reviewing art or arguments” and informs “the petitioner’s showing under factors (e) and (f).” Id. Factor (e) considers whether the petitioner has sufficiently shown how the Office erred in its prior consideration of the prior art and factor (f) considers the extent to which the facts and evidence in the Petition warrant reconsideration of the prior art. Becton, Dickenson, Paper 8 at 24–25.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“image collection, processing, and organization, which applies to “any imaging system that includes interactions between optics, digital image sensors, post-capture integrated circuits and digital storage components.” Ex. 1001, 1:27–30. Artisans and inventors in such fields are not limited to electrical engineers. They include physicists and others with sufficient knowledge of the physics of optical, electronic, and opto-electronic devices. Indeed, many of the pioneering inventions needed to understand the operation of a digital camera were made by physicists, including the computer,6 and the charge-coupled device (CCD).7 For at least these reasons, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. In re GPAC Inc., 57 F.3d at 1579. Accordingly, at this stage of the proceeding, we adopt as our own Petitioner’s description of a person skilled in the art. We further find Petitioner’s declarant, who (a) has a bachelor’s degree in physics as well as post-graduate education in physics and optics, (b) is a member of the Optical Society of America and the Institute of Electrical and Electronic Engineers, and (c) has extensive work experience in signal processing, imaging systems, optical information recording, and electro-optical system design and manufacturing, is at least a person having ordinary skill in the art. Ex. 1004, 5–6. He is therefore competent to provide testimony in this proceeding.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“computer,6 and the charge-coupled device (CCD).7 For at least these reasons, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. In re GPAC Inc., 57 F.3d at 1579. Accordingly, at this stage of the proceeding, we adopt as our own Petitioner’s description of a person skilled in the art. We further find Petitioner’s declarant, who (a) has a bachelor’s degree in physics as well as post-graduate education in physics and optics, (b) is a member of the Optical Society of America and the Institute of Electrical and Electronic Engineers, and (c) has extensive work experience in signal processing, imaging systems, optical information recording, and electro-optical system design and manufacturing, is at least a person having ordinary skill in the art. Ex. 1004, 5–6. He is therefore competent to provide testimony in this proceeding.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,877,266 - PTAB · Dec 12, 2024 · IPR2024-00924 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds after finding a reasonable likelihood that claim 9 is unpatentable over Watanabe.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. § 314(a) Petitioner has provided Patent Owner with a so-called Sotera2 stipulation, stating “if IPR Nos. IPR202400923–00925, & 01046 are instituted, Sony will not pursue ‘any ground that [Sony] raised or reasonable could have raised’ during the IPRS in the related district court proceeding, Optimum Imaging Technologies LLC v. Sony Corporation, 4:23-cv-00928 (EDTX).” Ex. 2015. Per the Director’s guidance, “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.” Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Fintiv Memo”), 3.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“The Board has set forth a two-part framework to consider whether to exercise discretion to deny institution under § 325(d): (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 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 at 8 (PTAB Feb. 13, 2020) (precedential). The” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As noted above, the ’805 patent describes a system for digital optical image collection, processing, and organization, which applies to “any imaging system that includes interactions between optics, digital image sensors, post-capture integrated circuits and digital storage components.” Ex. 1001, 1:21–24. Artisans and inventors in such fields are not limited to electrical engineers. They include physicists and others with sufficient knowledge of the physics of optical, electronic, and opto-electronic devices. Indeed, many of the pioneering inventions needed to understand the operation of a digital camera were made by physicists, including the inventions of the transistor,4 the integrated circuit (IC),5 the digital computer,6 and the charge-coupled device (CCD).7 For at least these reasons, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. In re GPAC Inc., 57 F.3d at 1579. Accordingly, at this stage of the proceeding, we adopt as our own Petitioner’s description of a person skilled in the art. We further find” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededTerm construed board ownOther
“Petitioner argues the following terms or phrases require construction: “using,” “succession,” and “wherein the system software is organized to identify specific optical aberrations and to access the database to identify specific corrections to the aberrations” (the “identifying aberrations” limitation). Pet. 7–8. Patent Owner argues that we should use the plain meaning of these terms and phrases and that they need not be construed because no patentability arguments rely on their precise meaning. Prelim. Resp. 8–10. Petitioner’s proposed terms and phrases because their precise meaning is not needed to resolve the parties’ disputes. We discuss below the meaning of other terms whose meanings are inherently disputed by the parties’ competing patentability contentions in the context of those competing contentions.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,612,805 - PTAB · Nov 18, 2024 · IPR2024-00925 · APJ John F Horvath · IPR · Institution
The Board instituted IPR on claims 1–5 and 14–18 on all grounds, finding a reasonable likelihood that claim 1 is obvious over Watanabe.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We find Patent Owner has satisfied step 1 of Advanced Bionics because Watanabe, Kishida, and Kita were previously presented to the Office in the prior IPRs.4 Consequently, we proceed to step 2 of Advanced Bionics and consider Becton, Dickenson factors (c), (e), and (f) to determine “whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics, Paper 6 at 10. Factor (c) “focuses on the record developed by the Office in previously reviewing art or arguments” and informs “the petitioner’s showing under factors (e) and (f).” Id. Factor (e)” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As noted above, the ’339 patent describes a system for digital optical image collection, processing, and organization, which applies to “any imaging system that includes interactions between optics, digital image sensors, post-capture integrated circuits and digital storage components.” Ex. 1001, 1:22–25. Artisans and inventors in such fields are not limited to electrical engineers. They include physicists and others with sufficient knowledge of the physics of optical, electronic, and opto-electronic devices. Indeed, many of the pioneering inventions needed to understand the operation of a digital camera were made by physicists, including the inventions of the transistor,5 the integrated circuit (IC),6 the digital computer,7 and the charge-coupled device (CCD).8 For at least these reasons, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. In re GPAC Inc., 57 F.3d at 1579. Accordingly, at this stage of the proceeding, we adopt as our own Petitioner’s description of a person skilled in the art. We further find Petitioner’s declarant, who (a) has a bachelor’s degree in physics as well as post-graduate education in physics and optics, (b) is a member of the Optical Society of America and the Institute of Electrical and Electronic Engineers,” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner argues the following terms or phrases require construction: “vignetting” and “uses system software to identify at least one optical aberration.” Pet. 8–10. Patent Owner agrees with Petitioner’s construction of “vignetting” and argues the “identifying aberration” limitation need not be construed because no patentability arguments rely on the precise meaning of that term. Prelim. Resp. 9–11. At this stage of the proceeding, we decline to construe either of Petitioner’s proposed terms because their precise meaning is not needed to resolve the parties’ disputes. We discuss below the meaning of other terms whose meanings are inherently disputed by the parties competing patentability contentions in the context of those competing contentions.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We note the Specification contains neither the phrase “database management system” nor its acronym DBMS. The DBMS acronym does appear in Figure 1 (element 190) and Figure 35 (steps 3510 and 3520). Ex. 1001, Figs. 1, 35. However, only element 190 is part of a digital imaging system, as step 3510 refers to an “External Computer DBMS” and step 3520 refers to a “DBMS in [a] Distributed Network.” Id. at 29:38, 30:39–57, Figs. 1, 35. Moreover, the Specification refers to each of the DBMS’s shown in these Figures as a “database” rather than a DBMS. Id. at 30:52–53 (referring to “database (190)”), 37:15–20 (referring to “an external computer database (3510)” and “the database of a distributed network (3520)”). Consequently, we preliminarily construe claim 1 to require a digital imaging system having a database. This construction provides the only antecedent basis to “the database” recited in a later limitation, which optical aberration by accessing the database.” Id. at 37:47–48. Petitioner contends, in the context of this limitation, that “Watanabe’s tables comprise a database” and “Watanabe describes using a database.” Pet. 16 (citing Ex. 1005 ¶ 47, Fig. 3; Ex. 1022, 2:8–12; Ex. 1003 ¶¶ 159– 163). We agree, and find this is sufficient to demonstrate a reasonable likelihood of showing Watanabe teaches a DBMS as properly construed. Should either party disagree with this preliminary construction, we encourage the parties to identify relevant intrinsic evidence on the meaning of the term DBMS as a component of a digital imaging system and, less preferably, extrinsic evidence showing the functional requirements of a DBMS for use in a digital imaging system, a digital camera, a consumer electronic device, or for general use and what those functional requirements mean, e.g., what does it mean to print the information in a database.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,451,339 - PTAB · Nov 18, 2024 · IPR2024-00923 · APJ John F Horvath · IPR · Institution
The Board instituted IPR on claims 1–19 and 22–30 on all grounds, finding a reasonable likelihood that claim 1 is obvious over Watanabe.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“of the related district court proceeding. Prelim. Resp. 2–9. In exercising our discretion to deny review under § 314(a), the Board may consider “events in other proceedings related to the same patent.” Consolidated Trial Practice Guide November 20192 at 58. In doing so, the Board considers and balances several factors affecting system efficiency, fairness, and patent quality. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). The Director has provided guidance on applying the Fintiv factors. Interim Procedure for Discretionary Denials in” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We find Patent Owner has satisfied step 1 of Advanced Bionics because Watanabe, Kishida, and Kita were previously presented to the 5 Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first para.). Consequently, we proceed to step 2 of Advanced Bionics and consider Becton, Dickenson factors (c), (e), and (f) to determine “whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics, Paper 6 at 10. Factor (c) “focuses on the record developed by the Office in previously reviewing art or arguments” and informs “the petitioner’s showing under factors (e) and (f).” Id. Factor (e) considers whether the petitioner has sufficiently shown how the Office erred in its prior consideration of the prior art and factor (f) considers the extent to which the facts and evidence in the Petition warrant reconsideration of the prior art. Becton, Dickenson, Paper 8 at 24–25.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As noted above, the ’685 patent describes a system for digital optical image collection, processing, and organization, which applies to “any imaging system that includes interactions between optics, digital image sensors, post-capture integrated circuits and digital storage components.” Ex. 1001, 1:18–31. Artisans and inventors in such fields are not limited to electrical engineers. They include physicists and others with sufficient knowledge of the physics of optical, electronic, and opto-electronic devices. Indeed, many of the pioneering inventions needed to understand the operation of a digital camera were made by physicists, including the inventions of the transistor,7 the integrated circuit (IC),8 the digital computer,9 and the charge-coupled device (CCD).10 For at least these reasons, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. In re GPAC Inc., 57 F.3d at 1579. Accordingly, at this stage of the proceeding, we adopt as our own Petitioner’s description of a person skilled in the art. We further find Petitioner’s declarant, who (a) has a bachelor’s degree in physics as well as post-graduate education in physics and optics, (b) is a member of the Optical Society of America and the Institute of Electrical and Electronic Engineers,” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“vignetting” and “uses the in-camera software to identify at least one optical image aberration” (the “identifying aberration” limitation). Pet. 7–8. Patent Owner agrees with Petitioner’s construction of “vignetting” and argues the identifying aberration limitation need not be construed because no patentability arguments rely on the precise meaning of this term. Prelim. Resp. 15–16. At this stage of the proceeding, we decline to construe either of Petitioner’s proposed terms because their precise meaning is not needed to resolve the parties’ disputes. We discuss below the meaning of other terms whose meanings are inherently disputed by the parties’ competing patentability contentions in the context of those competing contentions. slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,873,685 - PTAB · Oct 9, 2024 · IPR2024-00719 · APJ Elizabeth M Roesel · IPR · Institution
Instituted inter partes review of claims 1–64 based on the reasonable likelihood that the Nowka–Borkar combination renders the independent claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, we determine that the reasonable likelihood standard is met, and we institute inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that it is not necessary to provide an express construction for any claim term for purposes of deciding whether to institute review.” slip op. at 10
- Skill levelSkill level board ownOther
“Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a bachelor of science degree in electrical engineering, computer engineering, computer science, or a related field, and two years of experience in the research, design, development, or testing of electronic circuits or components or software for controlling electronic circuits or components, or the equivalent, with additional education substituting for experience and vice versa. Ex. 1003 ¶ 21. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’885 Patent Specification and the asserted prior art references.” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artInstituted
“A prior art reference is analogous and thus can be used in an obviousness combination if it ‘is from the same field of endeavor, regardless of the problem addressed’ or ‘is reasonably pertinent to the particular problem with which the inventor is involved,’ even if it is not within the inventor’s field of endeavor.” Tinnus Enterprises, LLC v. Telebrands Corp., 846 F.3d 1190, 1207 (Fed. Cir. 2017) (citing Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1000–01 (Fed. Cir. 2016); In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)). Here, the parties agree that the ’885 Patent’s field of endeavor is managing power on integrated circuits using power islands. Pet. 2; Prelim. Resp. 3–4 (citing Ex. 1001, 1:23–25). We agree with Petitioner that Borkar’s field of endeavor is power management of integrated circuits on a chip. Pet. 13; Ex. 1006, code (57), 1:8–18, 2:49–57. We also agree with Petitioner that Borkar’s power management solution involves “using distinct units on an integrated circuit whose power can be independently controlled,” i.e., “domains” in Borkar’s terminology and “power islands” in the terminology of the ’885 patent. Pet. 14–15, 25–27, 62; Ex. 1001, 3:59–62; Ex. 1006, 9:48–64, 10:30–42, 12:62–13:30, Figs. 5, 7. Patent Owner asserts that Borkar focuses on transistor body bias. Prelim. Resp. 5. In our view, however, Patent Owner’s characterization of Borkar’s field of endeavor is overly narrow. See Unwired Planet, 841 F.3d at 1001 (“The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.”). If Patent Owner raises a nonanalogous art argument at trial, then based upon the present record, it appears likely that Petitioner will succeed in arguing that Borkar is from the same field of endeavor as the ’885 Patent. In view of this preliminary finding, we do not need to consider whether Borkar is reasonably pertinent to the particular problem addressed by the ’885 Patent. See In re Asset Guard Prod., Inc., No. 2021-1902, 2022 WL 1097363, at *3 (Fed. Cir. Apr. 13, 2022) (A determination that a prior art reference is from the same field of endeavor as the challenged patent “is a slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,945,885 - PTAB · Sep 27, 2024 · IPR2024-00600 · APJ John F Horvath · IPR · Institution
Instituted IPR on claims 1–18 over all grounds raised, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“On the record before us, we construe “power island” to mean “any section, delineation, partition, or division of an integrated circuit where power consumption is controlled within the section, delineation, partition, or division,” which is the express definition provided in the Specification. Ex. 1001, 3:65–4:1; see also Philips, 415 F.3d at 1316 (“[T]he specification may reveal a special definition given to a claim term by the patentee. . . . In such cases, the inventor’s lexicography governs.”). Our construction is consistent with claim 1, considered as a whole, which does not require a power island to be “independently” controlled. See Ex. 1001, 13:10–21. Instead, it requires a power manager “to dynamically change power consumptions of the plurality of power islands.” Id. at 13:10–16. That is, it allows a single power manager to control a plurality of power islands. See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (“This court has repeatedly emphasized that an” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the time of the invention as someone that “would have had at least a bachelor of science degree in electrical or computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, or testing of electronic circuits or components, or software for controlling electronic circuits or components, or equivalent, with additional education substituting for experience and vice-versa.” Pet. 5–6 (citing Ex. 1003 ¶ 24). Patent Owner does not dispute this definition; nor does Patent Owner offer an alternative definition. Prelim. Resp. 1–63. “[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). At this stage of the proceeding, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Accordingly, for purposes of this Decision, we adopt Petitioner’s description as our own.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon consideration of the Petition and Preliminary Response, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’077 patent. Accordingly, we institute inter partes review of all challenged claims on all grounds raised.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner further contends that a POSITA would have found it obvious to modify device 200 in Takahashi’s Figure 16 to include multiple power islands coupled to multiple sleep circuits based on Takahashi’s Figure 10 embodiment, which illustrates transistors 310–380 (sleep circuits) controlling the power consumption of functional circuits 210–280 (power islands). Id. at 27–28 (citing Ex. 1004, ¶¶ 90, 91, 94, Fig. 10; Ex. 1003 ¶¶ 123–125).6 Petitioner contends a POSITA would have “found it obvious to incorporate such additional power islands” in device 200 shown in Figure 16 in order to “provide additional functionality (e.g. memory) and control power consumption in additional power islands using the ‘voltage regulator 10’ and additional ‘switching circuits.’” Id. at 13 (citing Ex. 1003 ¶¶ 92– 95). At this stage of the proceeding, we determine Petitioner has set forth an adequate reason to combine. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[t]he combination of familiar elements according to known methods is likely to be obvious when it does not more than yield predictable results.”).” slip op. at 15
Claim construction§ 103 obviousnesscites MarkmanPatents in suitUS 8,854,077 - PTAB · Sep 26, 2024 · IPR2024-00598 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted inter partes review of claims 1–51, finding a reasonable likelihood that claims 1, 16, and 37 are obvious over Nowka.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, we determine that the reasonable likelihood standard is met, and we institute inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“After considering the parties’ arguments and evidence, we do not adopt Patent Owner’s proposed construction. We see no support in the ’306 Patent for limiting “needs and operation,” as recited in the claims, to “future operational needs and current operating status,” as in Patent Owner’s proposed construction. Our analysis begins with the claims themselves. Claim 1 recites “determining a target power level for one of the power islands based on needs and operation of the integrated circuit.” Ex. 1001, 13:36–38. Claims 16 and 37 contain similar language. Id. at 14:25–27, 15:25–27. We see no support in the claim language for limiting “needs and operation” to “future operational needs and current operating status,” as in Patent Owner’s proposed construction. We next turn to the Specification, where the phrase, “needs and operation of the integrated circuit” appears twice. First, when describing prior integrated circuits, the ’306 Patent states that “[t]he voltages and the frequencies do not dynamically change based on the needs and operation of the integrated circuit.” Ex. 1001, 2:14–16. Second, when describing an embodiment, the ’306 Patent discloses, “The power manager . . . can dynamically change the power consumption of the power islands . . . based on the needs and operation of the integrated circuit . . . . The target power level is a desired, calculated, or specified power consumption of the power islands.” Id. at 4:28–33. We see no support in these passages for limiting “needs and operation” to “future operational needs and current operating status,” as in Patent Owner’s proposed construction.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved based on underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when presented, objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,051,306 - PTAB · Sep 25, 2024 · IPR2024-00599 · APJ Ken B Barrett · IPR · Institution
Instituted IPR of claims 1–11, 23, 24, and 31–35 on all asserted grounds after finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’563 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’563 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Other 314aDenied
“II. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a) Patent Owner asserts that we should discretionarily deny institution under 35 U.S.C. §314(a), arguing that “the Petition here presents excessive grounds of questionable merit.” Prelim. Resp. 62 (citing Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 41–43 (Jan. 24, 2019) (informative); see also Prelim. Resp. 63 (Patent Owner arguing that “[c]ompounding this problem is the Petition’s improper incorporation by reference of large sections of the Min Declaration and the nearly verbatim language shared between the two.”). In Chevon Oronite and Deeper, the petitioners had demonstrated a likelihood of prevailing only as to two claims out of several challenged, and the Board determined that instituting a trial would not be an efficient use of the Board’s time and resources. See Chevron Oronite, IPR2018-00923, Paper 9 at 10–11 (“Petitioner demonstrates, at most, a reasonable likelihood of prevailing with respect to two dependent claims out of a total of twenty challenged claims.”); Deeper, UAB, IPR2018-01310, Paper 7 at 43 (“On this record, and based on the particular facts of this proceeding, instituting a trial with respect to all twenty-three claims and on all four grounds based on evidence and arguments directed to only two claims and one ground would not be an efficient use of the Board’s time and resources.”). In contrast, we, for the reasons discussed below, determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to all of the challenged claims. We decline to exercise discretion to deny institution under § 314(a) for the reasons argued by Patent Owner.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“POSITA”) would have had at least a bachelor of science degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, or testing of electronic circuits or components or software for controlling electronic circuits or components, or the equivalent, with additional education substituting for experience and vice versa. Pet. 5–6 (citing Ex. 1003 ¶ 24). Patent Owner asserts, without citation: [F]or the purposes of this proceeding, a POSITA would have at least [a] bachelors of science degree in electrical engineering or computer engineering and at least two years of clock network design and/or power management design for processors or large system-on-chip (“SoC”) integrated circuits (“ICs”). Prelim. Resp. 4–5. Both parties contend that the ordinary artisan would have had two years of experience, with Patent Owner’s proposal in that regard being somewhat more specific than Petitioner’s. However, we do not see any meaningful distinction between the parties’ definitions of the person of ordinary skill in the art. For purposes of this decision, we apply Petitioner’s definition, which is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We note, however, that were we to apply Patent Owner’s definition, the outcome of this decision would be the same.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for patent owner
“To the extent that Patent Owner argues for a construction narrowing the meaning of “appropriate frequency” beyond that adopted by the District Court, we decline to adopt a narrower construction at this time. We also note that some of the concepts mentioned by Patent Owner are not consistent with the language of the District Court’s construction or, for example, method claim 1.5 For example, the reference to fluctuations in voltage implies multiple voltage readings; however, the method of claim 1 calls for the step of “sensing a delivered voltage,” which need only be performed once. See Ex. 1001, 7:22–23; see also id. at 7:28–30 (dependent claim 2 further limiting claim 1 by requiring the “sensing . . . [to be] continuously repeated during the integrated circuit's operation.”). Also, Patent Owner’s and the District Court’s construction contains the phrase, “at or below a maximum frequency possible.” Limiting the “appropriate frequency” to the optimal or to the “highest possible” frequency seemingly would be at odds with this broad range of possible frequencies. See Ex. 1001, 7:31–33 (dependent claim 3 further limiting the “appropriate frequency” of claim 1 to “a maximum frequency possible for the portion of the integrated circuit at the delivered voltage”). The District Court’s claim construction order states that “Defendants cite testimony of Plaintiff’s expert that the scope of ‘appropriate frequency’ encompasses everything from the maximum possible frequency all the way down to a frequency at which the circuit ceases to operate.” Ex. 2009, 14. That testimony, if applicable to the District Court’s construction (and it appears that it is), suggests that the claims encompass the presumably non-optimal” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,224,563
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.