- Apple Inc. v. Paul PoniatowskiInstitutedPTAB · Oct 7, 2024 · IPR2024-00731 · APJ Jennifer S Bisk · IPR · Institution
The Board instituted review of claims 1–6, 8–13, 15–20, and 22–27 based on a reasonable likelihood that Wang, Dua, and Yong render them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary 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.” For the reasons that follow, we institute an inter partes review as to claims 1–6, 8–13, 15–20, and 22–27 of the ’578 patent on the sole ground of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). For purposes of this proceeding, Petitioner argues a person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in computer science, computer engineering, or equivalent with one to two years of experience in the field of mobile transactions.” Pet. 8 (citing Bederson Decl. ¶¶ 35–37). Petitioner adds that “[a]dditional education or experience might substitute for the above requirements.” Id. To the extent necessary, and for purposes of this Decision, we accept this assessment offered by Petitioner, as it is supported by Dr. Bederson’s testimony and appears consistent with the ’578 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“scanner, reader, or camera” that is aimed at a barcode or special code of a product, the price of which is then added to the retail bill. Pet. 10–11 (quoting Ex. 1001, 7:45–49, 9:5–11). According to Petitioner, the Specification does not elaborate further on the meaning of the term “information concerning prices of goods.” Id. at 11. Petitioner, thus, interprets the term to encompass scenarios in which price information is received directly or indirectly. Id. Petitioner notes that during prosecution of the ’578 patent, the Examiner rejected this limitation over prior art, stating that prior art “sends the scanned bar code information to the server,” which “then preferably returns a description of the item and information,” and “[t]his item description and price information is displayed on the telephone’s display.” Id. at 12 (quoting Ex. 1002, 231). According to Petitioner, this is an example of indirectly receiving information concerning the prices of goods as it comes from a queried server, not from the item itself. Id. Petitioner notes that Patent Owner never disputed, and in fact, made statements supporting that these actions were encompassed by the claim limitation. Id. (citing Ex. 1002, 214). We agree with Petitioner that nothing in the claim language or the Specification requires that the claimed optical input receive information concerning the prices of goods directly from the goods themselves. Thus, on this record, we preliminarily construe the term “receiving information concerning the prices of goods” to encompass receiving pricing information from a server.” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In an inter partes review, the burden is on the petitioner to show a reasonable likelihood that it would prevail on a ground of unpatentability. 35 U.S.C. § 314(a). With respect to entitlement to any earlier effective filing date, however, a patent owner is not presumed to be entitled to the earlier filing dates of ancestral applications that do not share the same disclosure, such as in a continuation-in-part situation. See PowerOasis, Inc. v. T–Mobile USA, Inc., 522 F.3d 1299, 1305–06 (Fed.Cir.2008) (stating that once a defendant establishes that a reference is § 102(b) prior art, burden is on patent owner to come forward with evidence proving priority to an earlier filing date).” slip op. at 12
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 8,270,578 - PTAB · Oct 4, 2024 · IPR2024-00761 · APJ Donald E Daybell · IPR · Institution
The Board instituted inter partes review of claims 1–24 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute review. Upon consideration of the arguments and evidence before us, we conclude that Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’684 Patent. The Petition is granted, and inter partes review is instituted. A scheduling order will follow this decision.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“as of the time of the invention of the ’684 Patent “would have had an M.S. in Mechanical Engineering or a related field, and at least five years of experience using laser systems to characterize and test mechanical behavior in materials.” Pet. 5. Patent Owner “generally agrees” with this definition. Prelim. Resp. 26. At this juncture, we adopt Petitioner’s definition. This definition appears to be consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 5 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because the ’684 Patent was filed before March 16, 2013 (the effective date of the relevant amendments), the pre-AIA versions of §§ 102 and 103 apply. 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“On this record, we find that the above noted evidence comprises “evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that [Wang] qualifies as a printed publication.” Hulu, IPR2018-01039, Paper 29 at 13. Patent Owner raises a number of questions about Petitioner’s showing. First, Patent Owner contends that the Morris Declaration “is not credible or legally sufficient for various reasons,” including a lack of corroborating evidence. Prelim. Resp. 28–30 (citing, inter alia, Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1369 (Fed. Cir. 1999)). Nonetheless, Ms. Morris’s testimony at least is consistent with the indicators of publication appearing in the front matter of Wang. See Ex. 1005, 1, 3–6 (added page numbers). As such, we find Ms. Morris’s testimony sufficiently reliable to support a reasonable likelihood that Wang would qualify as a prior art printed publication. At trial, the parties can develop the record about whether, and, if so, the extent to which, testimony regarding publication by a non-inventor witness must be corroborated with other evidence.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“f) Enablement of Wang In order for a prior art reference to anticipate a claim, that reference must enable a person of ordinary skill in the art to make the claimed subject matter. PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1566 (Fed. Cir. 1996) (“To anticipate a claim, a reference must disclose every element of the challenged claim and enable one skilled in the art to make the anticipating subject matter.”) Enablement of a prior art reference does not require that the prior art reference show that the disclosed subject matter would have utility; that is, that it would work for any particular purpose. Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1326 (Fed. Cir. 2005). (“[T]his court has continued to recognize that a prior art reference need not demonstrate utility in order to serve as an anticipating reference under section 102.”), In re Schoenwald, 964 F.2d 1122, 1124 (Fed. Cir. 1992) (“[I]t is beyond argument that no utility need be disclosed for a reference to be anticipatory.”) All that matters is whether the skilled person could have made the claimed subject matter, without undue experimentation. In re Antor Media Corp., 689 F.3d 1282, 1290 (Fed. Cir. 2012) (“Enablement of prior art requires that the reference teach a skilled artisan to make or carry out what it discloses in relation to the claimed invention.”) (emphasis added). Even references that disclose inoperative devices are still prior art for all that they teach. Id. (citing Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989)). Therefore, questions of whether the prior art may teach away from making the claimed subject matter are not relevant to anticipation. Bristol-Myers Squibb Co. v. Ben Venue Lab’ys, Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001) (“Thus, the question whether a reference ‘teaches away’ from the invention is inapplicable to an anticipation analysis.”)” slip op. at 23
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,487,684 - Google LLC v. Motion Offense, LLCInstitutedPTAB · Mar 6, 2023 · IPR2022-01313 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 19, 20, and 51 based on the asserted obviousness ground over Houston, Garcia, and Wu.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art usually is evidenced by the references themselves. 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). Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us. We understand the “at least” phrase to indicate that a POSITA would have a minimum of 2 years of experience in the field of software development and do not agree with Patent Owner that including such minimum makes the proposed definition improperly indefinite. For purposes of this Decision, we apply Petitioner’s statement as our definition of a POSITA.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“At this stage, we agree with Petitioner that the combination of Houston and Garcia teach the required synchronization of folder metadata. Given that the ’215 patent provides no explanation of what is meant by synchronizing folder metadata, we construe that requirement as encompassing synchronization of the metadata of files contained in a folder. Accordingly, based on the evidence and arguments currently of record, for purposes of institution, Petitioner has satisfied its burden for claim element 1o.” slip op. at 37
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We agree that Patent Owner’s contention that Garcia is directed to actions taken by a single user at a single client device is inconsistent with Garcia’s description of a system “for enabling a user to synchronize, manage, and share files and folders across a plurality of client devices and a synchronization server.” Ex. 1006, Abstract. Nor are Patent Owner’s other attorney arguments persuasive. A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Patent Owner does not point to aspects of the cited references that meet this criterion. “[T]hat two inventions were designed to resolve different problems . . . is insufficient to demonstrate that one invention teaches away from another.” Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). In addition, Patent Owner’s arguments are unpersuasive as relying on an alleged inability to modify the specific implementations disclosed in Houston in light of Garcia. However, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“[c]ombining the teachings of references does not involve an ability to combine their specific structures”); see also In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 425) (“The test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.”). Patent Owner’s attorney arguments are not persuasive evidence that the proffered combination of references would have been “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Accordingly, for purposes of this Decision, we find Petitioner cites” slip op. at 29
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“those raised in the Dropbox litigation, because Garcia is not included in that litigation. With respect to Patent Owner’s contention that “Petitioner deliberately decided not to do a full Sotera stipulation,”11 we highlight that in Sand Revolution II, the panel found Petitioner’s stipulation that it would not pursue in district court litigation the same grounds as those asserted in the IPR “mitigates to some degree the concerns of duplicative efforts” and “weighs marginally in favor of not exercising discretion to deny institution.” Sand Revolution II, LLC v. Continental Intermodal Group Trucking LLC, IPR2019-01393, Paper 24 at 11–12 (June 16, 2020) (informative). Also, we disagree with Patent Owner’s contention that NXP USA does not allow stipulations after the Petition is filed. NXP USA states that “the only appropriate time for a petitioner to offer a stipulation . . . is prior to the Board’s decision of whether to institute review” (NXP USA, Paper 13 at 4), which is the case here. Under these circumstances, we find that factor 4 weighs against exercising discretion to deny institution.” slip op. at 47
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,044,215 - Google LLC v. Motion Offense, LLCInstitutedPTAB · Mar 6, 2023 · IPR2022-01312 · APJ Jennifer S Bisk · IPR · Institution
Instituted IPR of claim 14 on the asserted § 103 ground over Houston and Garcia; the Board found a reasonable likelihood that Petitioner would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary 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.” For the reasons that follow, we institute an inter partes review as to claim 14 of the ’737 patent on the sole ground of unpatentability asserted in the Petition (see infra § VI (asserted ground)).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We agree that Patent Owner’s contention that Garcia is directed to actions taken by a single user at a single client device is inconsistent with Garcia’s description of a system “for enabling a user to synchronize, manage, and share files and folders across a plurality of client devices and a synchronization server.” Ex. 1006, Abstract. Nor are Patent Owner’s other attorney arguments persuasive. A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Patent Owner does not point to aspects of the cited references that meet this criterion. “[T]hat two inventions were designed to resolve different problems . . . is insufficient to demonstrate that one invention teaches away from another.” Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). In addition, Patent Owner’s arguments are unpersuasive as relying on an alleged inability to modify the specific implementations disclosed in Houston in light of Garcia. However, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“[c]ombining the teachings of references does not involve an ability to combine their specific structures”); see also In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)) (“The test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.”). Patent Owner’s attorney arguments are not persuasive evidence that the proffered combination of references would have been “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Accordingly, for purposes of this Decision, we find Petitioner cites sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Houston, Garcia, and Wu as described above.” slip op. at 30
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We find that the unpatentability issue raised here, which is based on the combination of Houston and Garcia, does not overlap with those raised in the Dropbox litigation, because Garcia is not included in that litigation. With respect to Patent Owner’s contention that “Petitioner deliberately decided not to do a full Sotera stipulation9,” we highlight that in Sand Revolution II, the panel found Petitioner’s stipulation that it would not pursue in district court litigation the same grounds as those asserted in the IPR “mitigates to some degree the concerns of duplicative efforts” and “weighs marginally in favor of not exercising discretion to deny institution.” Sand Revolution II, LLC v. Continental Intermodal Group Trucking LLC, IPR201901393, Paper 24 at 11–12 (June 16, 2020) (informative). Also, we disagree with Patent Owner’s contention that NXP USA does not allow stipulations after the Petition is filed. NXP USA states that “the only appropriate time for a petitioner to offer a stipulation . . . is prior to the Board’s decision of whether to institute review” (NXP USA, Paper 13, 4), which is the case here. Under these circumstances, we find that factor 4 weighs against exercising discretion to deny institution.” slip op. at 50
- PTAB / AIA Trials › §315(b) time barNot reached
“We agree with Patent Owner that discovery is warranted to determine whether Petitioner has met its burden to establish that the Petition is not time barred under 35 U.S.C. § 315(b). Prelim. Resp. 39–40. Accordingly, we entered an order for discovery concurrently with this Decision. Because discovery has not yet been completed, we will not resolve this issue before institution.” slip op. at 58
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,613,737 - Google LLC v. Motion Offense, LLCInstitutedPTAB · Mar 2, 2023 · IPR2022-01311 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted review of claim 16 under the § 103 ground based on Houston and Garcia, finding a reasonable likelihood that the combined teachings render the claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IX. ANALYSIS A. Legal Standards “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences between the subject matter sought to be patented 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 on the basis of 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 skill in the art; and (4) when in evidence, objective evidence of obviousness or nonobviousness, i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“not involved.” Id. We find that the unpatentability issue raised here, which is based on the combination of Houston and Garcia, does not overlap with those raised in the Dropbox litigation, because Garcia is not included in that litigation.” slip op. at 41
- PTAB / AIA Trials › §315(b) time barNot reached
- PTAB / AIA Trials › Real party in interest / privityNot reached
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,303,353 - Satco Products, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentablePTAB · Nov 4, 2022 · IPR2021-00662 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over Yamazaki, Schubert, and Tadatomo; the Board did not reach the other asserted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have been knowledgeable regarding conventional designs and fabrication techniques pertaining to LEDs, including LED package designs, and would have had at least 2 years of experience in LED design and fabrication as well as at least a master’s degree in a relevant field (e.g., chemical engineering, materials engineering, or electrical engineering), or alternatively would have an equivalent combination of advanced education and practical experience.” Pet. 10–11 (citing Ex. 1035 ¶¶ 27–29). Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. We have reviewed Petitioner’s proposal and find it reasonable and consistent with the prior art, and apply it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Third, and most significantly, Petitioner points to Shimizu, a patent filed in 1999, as repeatedly referring to phosphor as a garnet-based fluorescent material. Reply 3 (citing Pet. 27; Ex. 1013, 10:16–13:50). We agree that Shimizu appears to use the two terms interchangeably. For example, Shimizu states that “[t]he phosphor is specifically garnet fluorescent material” and “the fluorescent material is preferably yttrium- aluminum-garnet fluorescent material (YAG phosphor) activated with cerium.” Ex. 1013, 10:17–30. Patent Owner does not dispute this reading of Shimizu, but argues instead that it is “impermissible to rely on an entirely different reference” in a Reply. See Sur-Reply 4–5 (citing Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015)). For the same reasons discussed above, we do not agree that Petitioner’s use of Shimizu is improper, but is instead a proper response to Patent Owner’s argument that a person of ordinary skill in the art would not have understood Yamazaki to disclose phosphor. Ariosa, relied upon by Patent Owner, confirms that the Board should consider an exhibit “for what it show[s] about the background knowledge that a skilled artisan would have possessed.” Ariosa, 805 F.3d at 1365 (“The Board’s language on its face supports Ariosa’s interpretation of what the Board meant—that the Board was declining to consider Exhibit 1010, even as evidence of the background understanding of skilled artisans as of January 2010, simply because the brochure had not been identified at the petition stage as one of the pieces of prior art defining a combination for obviousness. If that is what the Board meant, the Board erred. Art can legitimately serve to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.”). The Petition relies on Shimizu to show such background understanding. Pet. 27. Specifically, the Petition states that conventional LEDs “were made using the III-nitride material system, with semiconductor layers formed on sapphire substrates and combined with YAG phosphors to efficiently generate white light output.” Id. (citing Ex. 1013, 10:30–11:35). Thus, Shimizu is properly objective evidence supporting a finding that at least as early as 1999, a person of ordinary skill in the art would have used the terms “phosphor” and “fluorescent material” interchangeably. Moreover, Dr. Schubert’s textbook published in 2018 explicitly references Shimizu. Ex. 1039, 3-4. In this context, we find that Dr. Schubert’s textbook and testimony indicate that a person of ordinary skill in the art, at the relevant time, would have understood the terms to be interchangeable.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Based on the complete record, Petitioner establishes by a preponderance of the evidence that an ordinarily skilled artisan would have found the sapphire growth substrate obvious in light of Yamazaki’s disclosure. Petitioner cites Schubert to show an ordinarily skilled artisan’s knowledge about conventional blue LEDs as disclosed in Yamazaki, i.e., that “conventional blue LEDs were III-nitride-based LEDs that commonly included sapphire growth substrates.” See Pet. 71–72, 76–77; Ex. 1007 ¶ 27 (stating the disclosed light-emitting chip “is of a publicly known structure”); Ex. 1008, 166 (discussing “commonly used sapphire and SiC substrates”). We credit Dr. Dupuis’ testimony that is consistent with the prior art of record. Ex. 1035 ¶¶ 238, 248–251 (citing Ex. 1008, 166); Ex. 1007 ¶ 27; Ex. 1009, 1:10–17, 4:61–67; Ex. 1012, 243; Ex. 2013, 10:30–11:35. We are not persuaded otherwise by the deposition testimony of Dr. Dupuis pointed to by Patent Owner. PO Resp. 44 (citing Ex. 2016, 53:7– 12). This testimony confirms that Schubert does not explicitly discuss whether the sapphire growth substrate is included in an LED package. Id. (citing Ex. 2016, 53:7–12). However, Patent Owner does not dispute that sapphire growth substrates were commonly used (as confirmed by Schubert) or that a person of ordinary skill in the art would have reasonably expected a blue LED to include a sapphire growth substrate. See PO Resp. 42–43 (stating only that sapphire is one among several materials that could be used as a growth substrate); Sur-Reply 9–10 (same). Petitioner is not required to show that the proposed combination would have been preferred over other alternatives. Infineum USA L.P. v. Chevron Oronite Co. LLC, No. 2020-1333, 2022 WL 3147683, at *6 (Fed. Cir. Aug. 8, 2022) (“We have rejected the notion that a patent challenger seeking to demonstrate obviousness must prove that a person of ordinary skill would have been motivated to select one prior art disclosure over another.”); In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[O]ur case law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.”). Instead, the question is whether a person of ordinary skill in the art would have understood the disclosure of Yamazaki, in light of the disclosure in Schubert, to teach or suggest the sapphire growth substrate limitation. As discussed above, persuasive evidence in the record establishes that this is true.” slip op. at 38
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“offered to show that the ’213 patent solved a long-felt, but unresolved need in the field and the merits of the challenged claims. See PO Resp. 67–68. First, Patent Owner has not shown a presumption of nexus because none of the cited evidence involves any particular product. Second, Patent Owner 22 Exhibit 2111 is a redacted version of Exhibit 2105. has not established that the any long-felt need resulted directly from the unique characteristics of the claimed subject matter. Other than a general statement that the technology addressed by the ’213 patent is a continuation of Dr. Nakamura’s prize-winning work (see Ex. 2112 ¶ 231), we see no evidence in the record that the subject matter recited by claims 1 and 2 of the ’213 patent, itself, solved the need for a more efficient LED without a heat sink or mirrors. See PO Resp. 65–66; Sur-Reply 23–24.” slip op. at 46
Patent outcomesUS 10,644,213 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,644,213 - Sling TV, L.L.C. v. Uniloc 2017 LLCAll claims unpatentablePTAB · Sep 7, 2022 · IPR2019-01363 · APJ Jennifer S Bisk · IPR · Remand
On remand, claims 1–3 were held unpatentable as obvious over Li; the Board did not reach the alternative Li and Motte ground.
RulingsRemand decision- RemandOther
“For the reasons discussed below, after considering the post-remand briefing, as well as the record previously developed during trial and the Federal Circuit’s decision, we conclude that Sling has shown by a preponderance of the evidence that claims 1–3 are unpatentable.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“5 Citing the testimony of Dr. Storer, Sling asserts that a person of ordinary skill in the art for purposes of the ’273 patent “would have had a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in web page and Internet technology or . . . a master’s degree in electrical engineering, computer science, or a similar field with a specialization in web page and Internet technology. A person with less education but more relevant practical experience may also meet this standard.” Pet. 13 (citing Ex. 1002 ¶ 49). Uniloc “does not offer a competing definition for purposes of this proceeding.” PO Resp. 10. Because we find Petitioner’s proposed definition generally consistent with the subject matter of the ’273 patent and cited references, we adopt it for purposes of this analysis. 6 The parties do not address secondary considerations, which, therefore, do not constitute part of our analysis. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). One seeking to establish obviousness based on more than one reference also must articulate sufficient reasoning with rational underpinnings to combine teachings. See KSR, 550 U.S. at 418.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We also agree with Petitioner that the intrinsic record supports a construction that “presentation data representing content” includes content graphics, including thumbnails, and titles. In particular, the ’273 patent describes an embodiment in which content graphics and titles are “organized to indicate individual presentations.” See Ex. 1001, Figs. 2, 3, 5:16–18; see also id. at 5:20–23 (“A user may select such a presentation for display by selecting individual presentation for streaming or downloading, such as by clicking on an indicator 235, 240, or 245”); 6:53–56, 7:36–40, 8:58–61, 11:31–34 (“In certain embodiments, the requested information may include a content title, date, series information and description, akin to that to be displayed in a corresponding indicator 240 (FIGS. 2, 3).”). We understand this disclosure to teach that content graphics 230 and content information 240, including titles, is presentation data that represents content. Patent Owner does not point us to any other disclosure of the ’273 patent describing presentation data that represents content. See PO Remand Response Br. 3–15; PO Remand Reply Br. 1–4. We also find Dr. Storer’s testimony to support a finding that content graphics, as used in the ’273 patent, include thumbnails. Ex. 1002 ¶ 127 (“[l]ike the ’273 Patent, Li discloses particular content graphics (thumbnails) and particular content information (titles) representing the data files (e.g. videos) of the first collection.”). And Patent Owner does not dispute that the term “content graphics” as used in the ’273 patent includes thumbnails. See PO Remand Response Br. 3–15; PO Remand Reply Br. 1–4. Further, we do not agree with Patent Owner’s argument that titles and thumbnails cannot be “presentation data that represents content” because they are metadata. PO Remand Response Br. 10–15. Whether thumbnails and titles not contained in an RSS feed are metadata is immaterial to whether they are “presentation data that represents content.” The Federal Circuit’s holding does not address metadata other than those contained in an RSS feed. Uniloc, 2022 WL 306468. Thus, the Federal Circuit does not explicitly find that metadata are not data representing content. Id. We also do not make such a finding. Because, as discussed above, the only indication from the ’273 patent is that graphics and titles are considered “presentation data that represents content,” we are not persuaded by Patent Owner to limit the term to exclude them.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner argues that Li’s thumbnails and titles do not qualify as “presentation data that represents content,” under its proposed construction of the term. Reply 3–5; PO Remand Response Br. 3–15; PO Remand Reply Br. 1–4. However, as explained in detail above, we do not adopt Patent Owner’s construction of this term. Instead, we agree with Petitioner that Li’s thumbnails and titles qualify as “presentation data that represents content.” We also agree that these data represent videos stored in a content library of database 11, which are part of a computer system. Ex. 1006 ¶¶ 41, 64, 113; Ex. 1002 ¶¶ 128–131. Thus, Li teaches the presentation data limitation. Based on the record, we are persuaded by Petitioner’s showing that Li teaches or suggests “storing presentation data that represents content of a first collection of one or more presentations using the computer system.” Accordingly, we determine that Petitioner has established by a preponderance of the evidence that Li teaches the presentation data limitation of claim 1.” slip op. at 19
Patent outcomesUS 9,721,273 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,721,273 - Sony Interactive Entertainment LLC v. Intellectual Pixels LimitedSome claims unpatentablePTAB · Jan 11, 2022 · IPR2020-01248 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1–3 are unpatentable as obvious over Schmidt and Keslin; claim 4 was not shown unpatentable over the asserted grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art would have had “at least (1) an undergraduate degree in computer science, electrical engineering, or an equivalent subject, together with two years of post-graduate experience in computer graphics; or (2) a master’s degree in computer science, electrical engineering, or equivalent subject, together with one year of postgraduate experience in computer graphics.” Pet. 18 (citing Ex. 1002 ¶¶ 25–27). Patent Owner agrees with Petitioner but adds that “the experience in computer graphics would include experience with multimedia systems, particularly the delivery of video display information across a network.” PO Resp. 10–11 (citing Ex. 2016 ¶ 26). We determine that Petitioner’s proposed level of ordinary skill is consistent with the ’093 patent and the asserted prior art, and also agree with Patent Owner’s assertion regarding the relevant experience. 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). Accordingly, we determine that one of ordinary skill in the art at the time of the invention would have had at least (1) an undergraduate degree in computer science, electrical engineering, or an equivalent subject, together with two years of post-graduate experience in computer graphics; or (2) a master’s degree in computer science, electrical engineering, or equivalent subject, together with one year of postgraduate experience in computer” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“1. 3-dimensional graphics (and related terms) The parties inform us of certain terms that were construed in pending district court litigation. See Pet. 17 (citing Ex. 1013, 21); PO Resp. 12–13 (citing Ex. 1013, 12–13). We determine that it is not necessary to expressly construe any of these terms for purposes of our Decision.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“unsupported in view of the plain language of claim 1 and the disclosure of the ’093 patent. Inst. Dec. 20–21. We noted that the claim recites “an application, running on a server, which generates 3-dimensional graphics accordingly.” Id. at 20. Rather than Patent Owner’s narrow reading of this limitation, requiring the server to generate 3-dimensional graphics independently from the claimed application, we determined that a more reasonable construction of this limitation is that the server in its entirety, including the application running on the server, generates the 3-dimensional graphics. Id. In other words, the phrase “which generates 3-dimensional graphics accordingly” cannot be read separately from the first two phrases of the limitation in the manner that Patent Owner proposes. Id. Patent Owner argues that our preliminary construction was improper because it “read[s] out the term ‘application’ by lumping together the ‘application’ and the ‘server,’” “effectively re-writ[ing] the limitation ‘sending user input control signals to an application, running on a server, which generates 3-dimensional graphics accordingly . . . .’ as ‘sending user input control signals to a server, which generates 3-dimensional graphics accordingly . . . .’” PO Resp. 54; see also PO Sur-reply 20. We disagree. Claim 1 plainly requires “sending user input control signals to an language, however, does not clearly distinguish between the two components for the purposes of generating the 3-dimensional graphics, and we therefore, gave the limitation its more reasonable interpretation in light of the specification, i.e., not limiting the claim to either the application or the server alone as generating the 3-dimensional graphics.7” slip op. at 20
- Expert testimonyPetitioner expert creditedDecided for petitioner
“statements about “removing all state and computation from the desktop” and characterization of the SLIM client was a “dumb frame buffer” client suggest that an ordinarily skilled artisan would have found implementing decompression on the SLIM client to be extremely computationally burdensome. Dr. Fuchs testifies that a person of ordinary skill in the art would not have understood “removing all state and computation from the desktop” to mean there can be no decompression on the client, but instead that Schmidt was “referring to the use of the server for application-level state and computation, allowing the user to move from one client to another without loss of application state.” Ex. 1035 ¶ 54 (citing Ex. 1004, 33). Dr. Fuchs quotes Schmidt stating that the servers maintain the true state at all times. Thus, the user is isolated from desktop failures and may move freely between terminals. In our implementation, users can simply present a smart identification card at any desktop, and the screen is returned to the exact state at which it was left. Ex. 1004, 33. Dr. Fuchs further testifies a person of ordinary skill in the art would not have understood Schmidt’s statements about removing state to mean that the client cannot perform any processing whatsoever because the client in Schmidt does perform processing, such as CSCS commands. the client for processing the SLIM commands), 33 (Figure 1 showing the client generates “[m]ouse/keyboard events & other input”), 35 (the “SLIM consoles” include a “100MHz microSPARC-IIep processor”)). We credit Dr. Fuchs’s testimony because it is consistent with our findings of Schmidt’s teachings. Aside from the CSCS command, Schmidt discloses other computational tasks that the SLIM client could handle. For example, Schmidt explains, in comparing its protocol to the X protocol, that if video is scaled to a higher resolution, the X server must perform the operation prior to sending the image to the X client, whereas the Sun Ray 1 console, i.e., Schmidt’s SLIM client, “can do it locally at substantial savings in bandwidth.” Ex. 1004, 45; see also id. at 35 (listing the hardware components of the Sun Ray 1 SLIM client). The record therefore fails to support that a person of ordinary skill in the art would have found the SLIM client to be as computationally underpowered as Patent Owner makes it out to be.” slip op. at 32
Patent outcomesUS 8,667,093 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,667,093 - Satco Products, Inc. v. The Regents Of The University Of CaliforniaInstitution deniedPTAB · Nov 10, 2021 · IPR2021-00794 · APJ Steven M Amundson · IPR · Institution
The Board denied institution of inter partes review of claims 1–6 under § 314(a), finding the Fintiv factors overall favored avoiding duplication with the parallel ITC investigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“IPR2020-00019, Paper 11 at 12. As discussed above, the record shows substantial overlap in the arguments and evidence here and at the ITC. That dependent claims 2–6 “are not currently asserted” at the ITC does not diminish the substantial overlap in the issues for claim 1. Nonetheless, the Petition presents some substantively different issues for dependent claims 2–6 that the ITC will not consider. Hence, on balance factor (4) weighs slightly in favor of institution. See Google, IPR2020- 00968, Paper 10 at 13–15; see also Roku, IPR2021-00263, Paper 11 at 8, 15–16 (finding sufficient overlap in the issues even though a parallel ITC investigation involved fewer than half of the challenged claims).” slip op. at 25
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Regarding the merits, we have evaluated Petitioner’s challenges to claims 1–6. In our view, some challenges satisfy the “reasonable likelihood” threshold standard for instituting trial, and some do not. We would not characterize any challenge as sufficiently strong to override concerns about duplication of effort by the Board and the ITC.” slip op. at 27
Discretionary denialPatents in suitUS 10,593,854 - Satco Products, Inc. v. The Regents Of The University Of CaliforniaInstitution deniedPTAB · Nov 8, 2021 · IPR2021-00661 · APJ Steven M Amundson · IPR · Institution
The Board denied institution of review for claims 1 and 2 under § 314(a), finding the Fintiv factors weighed against review because of the advanced, overlapping ITC investigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The Fintiv factors “relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Fintiv, IPR2020-00019, Paper 11 at 6. A stay of parallel litigation pending resolution of a Board proceeding “allays concerns about inefficiency and duplication of efforts.” Id. That the E.D.N.Y. case was stayed “at its earliest stage,” however, does not “allay[] concerns about inefficiency and duplication of efforts” in view of the 1220 investigation. Additionally, the E.D.N.Y. case was stayed “pending completion” of the 1220 investigation, not because of any Board proceeding. Ex. 3002, 1. With dates set in the 1220 investigation for the ALJ’s initial determination and the ITC’s final determination, a stay seems highly unlikely, especially with the initial determination date about a week away. Hence, factor (1) weighs against institution. See Fitbit, Inc. v. Koninklijke Philips N.V., IPR2020-00771, Paper 14 at 16–17 (PTAB Oct. 19, 2020).” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“to institute an inter partes review. We may institute an inter partes review only if “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). But we have discretion to deny a petition even when a petitioner satisfies the “reasonable likelihood” threshold standard for instituting trial. See, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). Based on the current record and for the reasons explained below, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not reached
“essentially the same argument about the ’557 patent’s effective filing date for its challenge based on Nakamura-959 and Nakamura-949 as for its invalidity defense based on insufficient written-description support for claim 1. See Pet. 7, 12–21, 37; Ex. 2004, 29–33; Ex. 2005, 245–48; Ex. 2014, 64–65, 70. As we understand the arguments, resolving the ’557 patent’s effective filing date does not require interpreting any part of § 1.57. See Pet. 12–21; Prelim. Resp. 29–31. Instead, the issue turns on whether the ’154 application supports claim 1 according to § 112’s first paragraph. See Pet. 12–21; Prelim. Resp. 29–31. Also, the challenges based on Tanda present a similar issue whether the ’447 provisional supports claim 1 according to § 112’s first paragraph. See Pet. 12–21, 61; Prelim. Resp. 29–31, 36–37. “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Under the circumstances here, the ITC can apply the test for sufficiency of disclosure to the ’154 application and the ’447 provisional just as well as the Board.” slip op. at 27
§ 112 disclosureDiscretionary denialPatents in suitUS 10,658,557
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.