- Zebra Technologies Corp. v. Lone Star SCM Systems, Ltd.All claims unpatentablePTAB · Feb 22, 2024 · IPR2022-01375 · APJ Russell E Cass · IPR · Final written decision
The Board held claims 1–4, 6–7, 10–19, 21, and 22 unpatentable, finding the asserted Garber grounds proven and not reaching the alternative grounds.
RulingsFinal written decision- Expert testimonyOther
“4. Motivation to Combine Garber and Andersen Relying on the testimony of Dr. Sharony, Petitioner argues that one of ordinary skill would have been motivated to combine Garber and Andersen for several reasons. Pet. 60 (citing Ex. 1002 ¶¶ 244–254). First, Petitioner argues that “Garber and Andersen are analogous art to the ’182 patent because they are in the same field of endeavor—namely, interrogation systems.” Id. Specifically, Petitioner relies on its arguments in Ground 2 that “Garber is analogous to the ’182 patent because it is reasonably pertinent to the technical problem allegedly addressed by the claimed invention.” Id. at 60–61; see id. at 52–53. Petitioner argues that “Andersen is also analogous because it teaches ‘a system for tracking inventory having RFID components” and is designed to remedy the deficiencies of prior art inventory tracking systems using bar codes, which can be torn, destroyed, or hidden from view. Id. at 61 (citing Ex. 1007, 1:8–10, 1:58–2:2, 2:4–5). Additionally, according to Petitioner, Andersen is intended to address multipath errors and teaches that one way to refine radio signals received by RFID tags is by using a Kalman filter. Id. (citing Ex. 1007, 11:25–28, 11:32–36). Petitioner also argus that Andersen “provides ample motivation to add a Kalman filter to Garber’s hand-held device” to provide “correction of multi scanned signal / multipath errors.” Pet. 61–62 (citing Ex. 1007, 11:25–28, 11:32–36, 12:39–41). “As such,” Petitioner asserts, one of ordinary skill would have found it obvious “to modify Garber’s handheld device, which is used inside a library where shelves and other obstacles can result in multipath errors, to use Andersen’s Kalman filter to address these errors.” Id. at 62. Additionally, according to Petitioner, one of ordinary skill “could have combined Andersen’s Kalman filter with Garber’s hand- held device using known methods, and such a filter would merely perform the same function—resolving errors to improve detection accuracy, which is entirely predictable.” Id. Finally, Petitioner contends, one of ordinary skill would have had a reasonable expectation of success in making the proposed combination because “[t]he interrogator components described in Garber and Andersen were well-known at the time,” and the modification of Garber’s interrogator to include Andersen’s Kalman filter would have been straightforward for a person of ordinary skill. Id. Patent Owner responds that Petitioner’s motivation to combine Garber and Andersen is insufficient. PO Resp. 46–49; PO Sur-reply 27. First, Patent Owner argues that the combination is based on impermissible hindsight because Petitioner did not explain why one of ordinary skill would have combined Garber and Andersen “to teach a control and processing unit employing an adaptive integrated filter or multiscan, coherent signal processing.” PO Resp. 48. According to Patent Owner, one of ordinary skill would not have been motivated to combine Garber and Andersen because “Andersen teaches the use of filters to correct multipath signal errors arising from the transmission of a single signal,” while the ’182 patent “teaches the use of filters to process multiple diverse inputs with a signal representing an RFID object to discern the presence of that object and teaches multiscan, coherent signal processing to coordinate the processing of a plurality of signals.” Id. “In either case,” Patent Owner contends, “the problems solved by the ’182 [p]atent involve multiple signals, not the single signal problem addressed by Andersen.” Id. Petitioner responds that the references themselves provide explicit” slip op. at 83
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“3. Analysis of Independent Claim 1 a) 1[pre]: “[an] interrogator, comprising:” Petitioner argues that, to the extent the preamble is limiting, Garber discloses it. Pet. 16. Petitioner points to Garber’s disclosure that “[a] handheld RFID device can interrogate and identify RFID-tagged items,” and that the hand-held RFID device “preferably includes an RFID reader and writer.” Id. (citing Ex. 1005, 14:49–62, 15:63–65) (emphasis omitted). “Furthermore,” Petitioner contends, “Figure 4 of Garber discloses ‘a block diagram of an RFID interrogation system interacting with an RFID tag,’” and RFID tags “respond to requests for information by the interrogator.” Id. (citing Ex. 1005, 3:46–47, 5:44–45). Patent Owner does not present arguments specifically directed to the preamble of claim 1. See PO Resp. Based on the full trial record, we find that Petitioner’s cited evidence sufficiently supports its contentions regarding the preamble.8” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“4. Motivation to Combine Garber and Andersen Relying on the testimony of Dr. Sharony, Petitioner argues that one of ordinary skill would have been motivated to combine Garber and Andersen for several reasons. Pet. 60 (citing Ex. 1002 ¶¶ 244–254). First, Petitioner argues that “Garber and Andersen are analogous art to the ’182 patent because they are in the same field of endeavor—namely, interrogation systems.” Id. Specifically, Petitioner relies on its arguments in Ground 2 that “Garber is analogous to the ’182 patent because it is reasonably pertinent to the technical problem allegedly addressed by the claimed invention.” Id. at 60–61; see id. at 52–53. Petitioner argues that “Andersen is also analogous because it teaches ‘a system for tracking inventory having RFID components” and is designed to remedy the deficiencies of prior art inventory tracking systems using bar codes, which can be torn, destroyed, or hidden from view. Id. at 61 (citing Ex. 1007, 1:8–10, 1:58–2:2, 2:4–5). Additionally, according to Petitioner, Andersen is intended to address multipath errors and teaches that one way to refine radio signals received by RFID tags is by using a Kalman filter. Id. (citing Ex. 1007, 11:25–28, 11:32–36). Petitioner also argus that Andersen “provides ample motivation to add a Kalman filter to Garber’s hand-held device” to provide “correction of multi scanned signal / multipath errors.” Pet. 61–62 (citing Ex. 1007, 11:25–28, 11:32–36, 12:39–41). “As such,” Petitioner asserts, one of ordinary skill would have found it obvious “to modify Garber’s handheld device, which is used inside a library where shelves and other obstacles can result in multipath errors, to use Andersen’s Kalman filter to address these errors.” Id. at 62. Additionally, according to Petitioner, one of ordinary skill “could have combined Andersen’s Kalman filter with Garber’s hand- held device using known methods, and such a filter would merely perform the same function—resolving errors to improve detection accuracy, which is entirely predictable.” Id. Finally, Petitioner contends, one of ordinary skill would have had a reasonable expectation of success in making the proposed combination because “[t]he interrogator components described in Garber and Andersen were well-known at the time,” and the modification of Garber’s interrogator to include Andersen’s Kalman filter would have been straightforward for a person of ordinary skill. Id. Patent Owner responds that Petitioner’s motivation to combine Garber and Andersen is insufficient. PO Resp. 46–49; PO Sur-reply 27. First, Patent Owner argues that the combination is based on impermissible hindsight because Petitioner did not explain why one of ordinary skill would have combined Garber and Andersen “to teach a control and processing unit employing an adaptive integrated filter or multiscan, coherent signal processing.” PO Resp. 48. According to Patent Owner, one of ordinary skill would not have been motivated to combine Garber and Andersen because “Andersen teaches the use of filters to correct multipath signal errors arising from the transmission of a single signal,” while the ’182 patent “teaches the use of filters to process multiple diverse inputs with a signal representing an RFID object to discern the presence of that object and teaches multiscan, coherent signal processing to coordinate the processing of a plurality of signals.” Id. “In either case,” Patent Owner contends, “the problems solved by the ’182 [p]atent involve multiple signals, not the single signal problem addressed by Andersen.” Id. Petitioner responds that the references themselves provide explicit” slip op. at 83
- ExcludeDenied
“rely on them herein. See PTAB Consolidated Trial Practice Guide 84 (Nov. 2019), available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf (explaining that demonstratives exhibits are merely “aids to oral argument and not evidence” and therefore “the Board has not found that such objections are helpful in many cases”). Accordingly, we do not sustain the parties’ objections.” slip op. at 88
Patent outcomesUS 9,646,182 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,646,182 - PTAB · Jan 17, 2024 · IPR2023-01027 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of all challenged claims on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable over the cited prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review if “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) (2018). For the reasons provided below, and based on the record as it now stands, we determine that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute inter partes review. B.” slip op. at 2
- BurdenMixed
“Regarding the claimed “predefined threshold value” or “predefined illuminance,” Petitioner asserts that “Alden’s system can ‘provide illumination to independently controlled segments [e.g., ‘subsections’] each operable within a range of intensities between the high and the low beam state” and that Alden’s “intensities in between high beam and low beam (e.g., medium) are the claimed ‘predefined threshold value’ which the low beam would be below and the high beam would be above.” Pet. 25. We tend to disagree with this analysis, as it does not appear that a “range of intensities” is a “predefined threshold value” or “predefined illuminance,” if those terms are given their ordinary meaning. We thus conclude that, on this record at least, Petitioner has not shown a reasonable likelihood that Alden anticipates these claims. Regarding obviousness in view of Alden alone, Patent Owner argues that Petitioner has “failed to establish or demonstrate multiple elements that are required to support an obviousness conclusion, including explaining how Alden must be modified (i.e., identifying the differences between the claimed invention and Alden) and explaining why a POSA would be motivated to so modify Alden (i.e., providing some articulated reasoning with some rational underpinning to support an obviousness conclusion).” Prelim. Resp. 37. We agree. It does not appear that Petitioner has provided any basis on which to account for differences between Alden and the challenged claims based on Alden’s disclosures alone.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the alleged invention “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems” and that more education could compensate for less experience and vice versa. See Pet. 8–9 (citing Ex. 1003 ¶ 33). Patent Owner “does not dispute Petitioner’s proposed skill level for a person of ordinary skill in the art” (Prelim. Resp. 7), and, as we generally agree that it is consistent with the subject matter disclosed in the ’503 patent and the prior art, we adopt it for purposes of this decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not seek construction of any claim terms and asserts that “all claim terms [discussed in the Petition] are given [their] ordinary and customary meaning.” Petition 8. Patent Owner asserts that “[n]o claim construction is necessary” at this time because its “arguments for denial do not hinge on the outcome of an actual controversy about claim interpretation.” Prelim. Resp. 7. There being no present dispute about the meaning of any claim term, we find that no express claim construction is necessary to resolve the issues addressed in this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,894,503 - PTAB · Jan 17, 2024 · IPR2023-01026 · APJ Aaron W Moore · IPR · Institution
Instituted IPR on claims 1–36 on all petition grounds; the Board found 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
“We may institute an inter partes review if “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) (2018). For the reasons provided below, and based on the record as it now stands, we determine that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute inter partes review. B.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention “would have had an undergraduate degree in 2 U.S. Patent App. Pub. No. 2003/0137849 A1 (Exhibit 1005). 3 PCT Patent App. Pub. No. WO 01/01038 (Exhibit 1006). 4 U.S. Patent No. 4,970,628 (Exhibit 1007). 5 U.S. Patent No. 6,144,158 (Exhibit 1008). 6 U.S Patent No. 6,049,749 (Exhibit 1009). mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems” and that more education could compensate for less experience and vice versa. See Pet. 8–9 (citing Ex. 1003 ¶ 33). Patent Owner “does not dispute Petitioner’s proposed skill level for a person of ordinary skill in the art” (Prelim. Resp. 7), and, as we generally agree that it is consistent with the subject matter disclosed in the ’503 patent and the prior art, we adopt it for purposes of this decision. B.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner does not seek construction of any claim terms and asserts that “all claim terms [discussed in the Petition] are given [their] ordinary and customary meaning.” Petition 8. Patent Owner asserts that “[n]o claim construction is necessary” at this time because its “arguments for denial do not hinge on the outcome of an actual controversy about claim interpretation.” Prelim. Resp. 7. There being no present dispute about the meaning of any claim term, we find that no express claim construction is necessary to resolve the issues addressed in this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“First, Patent Owner asserts that Alden is “fatally ambiguous” and “fails to provide an enabling disclosure” because it describes the use of two-dimensional sensors and switch arrays (as shown in Figure 3, below left), but the headlamp embodiment on which Petitioner relies (which is depicted in Figure 5, excerpted below right), is illustrated as having just a single line of LEDs. See Prelim. Resp. 19–23. Alden’s Figures 3 and 5 We find this argument unpersuasive because we conclude, on the present record, that one of ordinary skill in the art (see Section II.A), would understand that Figure 5 is a schematic/sectional type of drawing intended to show generally how the system components are connected and how the LEDs would project light through the lens, and that for clarity it omits other LEDs that would be necessary to produce a two-dimensional lighting pattern. We find that the skilled artisan would recognize that a headlamp intended to produce a pattern similar to that reflected in the control circuits of Figure 3 would include additional rows of LEDs passing through the center of the lens at different angles arranged around the center of the lens. Alternatively, we conclude that one of ordinary skill in the art wishing to use a headlamp with just a single line of LEDs would understand that the sensor and/or control circuitry would need to be tailored to such an arrangement.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,894,503 - PTAB · Dec 12, 2023 · IPR2023-01040 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 48–87 based on the petition’s asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“previously challenged the same claims of the same patent. General Plastic, Paper 19, 16. Here, Patent Owner asserts that although Petitioner did not do so, we should consider Petitioner as having a substantial relationship to Volkswagen, which is also as a defendant in Patent Owner’s infringement suit. Prelim. Resp. 50–51. In that regard, Patent Owner relies on Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11, 2 (PTAB April 12, 2019) (precedential). We do not agree, because Valve involved parties that were accused of infringement based on the same product. Valve, Paper 11, 9–10. Here, Patent Owner asserts that Petitioner is accused of infringing “based on the same type of headlight technology” (Prelim. Resp. 51), but that is insufficient. Patent Owner asserts that both parties’ accused headlights were “developed jointly with Hella KGaA Hueck & Co.” (id.), but that also is an insufficient connection for us to consider two parties substantially related for purposes of discretionary denial. As Petitioner points out, it and VW are direct competitors, and they are accused of infringing based on two different products, not as a supplier and customer of a single product, as at issue in Valve. Prelim. Reply 1. Additionally, although Patent Owner asserts that Petitioner and VW “have a history of coordinating serial IPR petitions against asserted patents” (Prelim. Resp. 52), the facts of each case are unique and we will not infer a motive from prior proceedings. Having considered Patent Owner’s arguments,8 we conclude that the first General Plastic factor weighs strongly against discretionary denial.” slip op. at 8
- Skill levelSkill level petitioner adoptedOther
“B. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that an ordinarily skilled artisan “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems.” Pet. 9 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute that level of ordinary skill in the art. Prelim. Resp. 6. We adopt the undisputed level of ordinary skill in the art for purposes of this decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. CLAIM CONSTRUCTION The parties agree that no express claim construction is required at this stage. Pet. 8; Prelim. Resp. 6. As discussed below, however, Patent Owner applies and argues for a particular construction of “classifying an object.” See infra at 11 (§ II.D.1.a). We discuss that potential construction below. Beyond that term, we agree with the parties and therefore do not further construe the claims for this decision. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“an object is an oncoming vehicle or anything else, i.e., classifying an object.” Prelim. Resp. 17. In Patent Owner’s view, Alden’s CPU instead “simply determines whether detected incoming light has a threshold intensity and controls the beam segments produced by the LED elements 119 of headlight 123 accordingly.” Id. at 17–18. Patent Owner takes the position that “classifying an object requires identifying an object and distinguishing that object among multiple classes or types of objects, such as distinguishing between vehicles, road signs, and pedestrians as described in the ’551 patent. Id. at 18 (citing Ex. 1001, 44:36–45:44, 52:66–53:4). We do not agree that the two specification passages Patent Owner cites compel such a construction. The first passage relates to a preferred embodiment that includes “a machine vision system with pattern recognition capabilities as is known in the art.” Ex. 1001, 44:37–40. The ’551 patent describes that, using known pattern-recognition methods, camera outputs “are analyzed by appropriate computational means employing trained pattern recognition techniques to classify, identify or locate the contents.” Id. at 44:63–45:3. Although the specification states that known technologies can be sued to classify an image’s contents, that does not define or restrict the understanding of what is required to “classify” an object. The second passage states that, “[u]sing color and pattern recognition techniques it is possible to determine what is a sign.” Id. at 52:66–67. To the extent that informs our understanding of “classify,” is supports a simple correlation between an image and an object. It does not include distinguishing the object among multiple classes or types of objects as Patent Owner contends.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,955,551 - PTAB · Dec 12, 2023 · IPR2023-01039 · APJ Jason W Melvin · IPR · Institution
Instituted review of claims 8, 10–18, and 24–47 based on the petition grounds because Mercedes-Benz showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denialDenied
“1. Lack of particularity First, Patent Owner contends that the Petition lacks particularity under 35 U.S.C. § 312(a)(3) because it improperly combines anticipation and obviousness 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), effective March 16, 2013, amended the applicable statutes. Because the application from which the ’551 patent issued was filed before this date, the pre-AIA versions of §§ 102 and 103 apply. 4 US 2003/0137849 A1, filed Jan. 22, 2002 (Ex. 1005). 5 US 6,049,749, issued Apr. 11, 2000 (Ex. 1006). 6 US 2002/0057572 A1, published May 16, 2002 (Ex. 1007). 7 WO 2001/07538 A2, published Sept. 27, 2001 (Ex. 1008). grounds based on Alden alone. Id. at 49–52. We do not agree that the Petition’s approach presents a problem or is hard to understand. As discussed below, we agree with Patent Owner that Petitioner has not adequately supported its obviousness contention based on Alden alone (see infra at 17 (§ II.D.2)), but that does not undermine the anticipation ground or make it difficult to understand. Accordingly, we do not agree with Patent Owner that the Petition warrants discretionary denial for lack of particularity.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Resp. 54–59. In that regard, Patent Owner relies on Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11, 2 (PTAB April 12, 2019) (precedential). We do not agree, because Valve involved parties that were accused of infringement based on the same product. Valve, Paper 11, 9–10. Here, Patent Owner asserts that Petitioner is accused of infringing “based on the same type of headlight technology” (Prelim. Resp. 55), but that is insufficient. Patent Owner asserts that both parties’ accused headlights were “developed jointly with Hella KGaA Hueck & Co.” (id. at 56), but that also is an insufficient connection for us to consider two parties substantially related for purposes of discretionary denial. As Petitioner points out, it and VW are direct competitors, and they are accused of infringing based on two different products, not as a supplier and customer of a single product, as at issue in Valve. Prelim. Reply 1. Additionally, although Patent Owner asserts that Petitioner and VW “have a history of coordinating serial IPR petitions against asserted patents” (Prelim. Resp. 56), the facts of each case are unique and we will not infer a motive from prior proceedings. Having considered Patent Owner’s arguments,8 we conclude that the first General Plastic factor weighs strongly against discretionary denial.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that an ordinarily skilled artisan “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems.” Pet. 9 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute that level of ordinary skill in the art. Prelim. Resp. 6. We adopt the undisputed level of ordinary skill in the art for purposes of this decision.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,955,551 - Ao Kaspersky Lab v. Open Text Inc.Institution deniedPTAB · Dec 7, 2023 · IPR2023-00895 · APJ Aaron W Moore · IPR · Institution
The Board denied institution because Petitioner did not show Fratric was a § 102 printed publication, so it did not establish a reasonable likelihood that any challenged claim was unpatentable.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“In an IPR, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication.” Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (as amended Sept. 20, 2018). “[T]he key inquiry is whether or not a reference has been made ‘publicly accessible.’” In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004); see Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (explaining that public accessibility is “the touch-stone” in determining whether a reference qualifies as a printed publication). slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For these reasons, we conclude that Petitioner has not met its burden of establishing, by a preponderance of the evidence, that Fratric is a Section 102 printed publication. It follows that Petitioner has not established a reasonable likelihood of proving at least one claim of the ’591 patent unpatentable. III. CONCLUSION Having determined that Petitioner has not established a reasonable likelihood of proving that at least one claim of the ’591 patent is unpatentable over the cited prior art, we do not institute an inter partes review.5” slip op. at 10
§ 102 anticipationPatents in suitUS 10,284,591 - Continental Automotive Systems, Inc. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Dec 5, 2023 · IPR2022-00974 · APJ Aaron W Moore · IPR · Final written decision
Claims 6–9, 11, 13, 14, 18, 22–25, 27, 28, 32, and 36–38 are unpatentable as obvious over Hwang and McFarland.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention “would have had a Bachelor of Science in electrical engineering, computer engineering, or an equivalent field as well as three years of experience in wireless communication technology, or a master’s degree in electrical engineering, or other equivalent degree.” Pet. 6–7 (citing Ex. 1003 ¶¶ 38–40). Patent Owner has not proposed an alternative, and, having reviewed the arguments and evidence in the full record, we adopt Petitioner’s definition, as we did in the Institution Decision, finding it consistent with the ’641 patent and the asserted prior art. C.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes a construction for the term “radio network information” in dependent claims 9, 14, and 28. See Pet. 7. Patent Owner has not proposed a specific construction for any claim term and has not disputed Petitioner’s proposed construction for “radio network information.” In view of the analysis below, we determine that we need not expressly construe “radio network information,” and that no other claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 10
- ExcludeMotion to exclude, deniedDenied
- Expert testimonyPetitioner expert creditedPetitioner expert discountedMixed
“Figure from Page 17 of the Akl Supplemental Declaration We find it unclear from this figure and the associated explanation in the Declaration (see Ex. 1038 ¶¶ 30–32) how the map burst and traffic burst blocks in green and blue factor in, because they cannot be received by the 2.5 MHz device. Dr. Akl testified that “McFarland teaches that necessary messages, e.g., including broadcast messages, or any other messages that need to be received by multiple nodes, ‘must be transmitted in a mode that all nodes to which they are directed are able to receive,’ that is, the base mode (e.g., the core-band).” Ex. 1038 ¶ 31 (quoting Ex. 1004 ¶ 60). He then states that one “would understand that because Hwang’s AAS_MAP_Burst_Location_IE contains system information and an index of where the MAP bursts are going to be, it is a message that needs to be received by multiple nodes, and thus is a necessary message that must be transmitted in a mode that all nodes to which they are directed are able to receive.” Id. It does not appear, however, that the blue and green blocks could be part of “broadcast messages” intended for a 2.5 MHz mobile station because they cannot be received by that mobile station. We thus do not agree that McFarland would suggest including map burst blocks in the 2.5 MHz band because they are “broadcast messages.” We also fail to see why the map burst locations would need to be received by multiple nodes, as that seems to be data that is tailored to the mobile device with which the base station is communicating.7 However, we do find it readily apparent that if the base station and the mobile station have determined to communicate using a particular bandwidth, as contemplated by the combination presented in the Petition, the map bursts necessarily would be included in that bandwidth in order for the communication scheme to be successful. The mobile station would need to” slip op. at 16
Patent outcomesUS 8,953,641 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,953,641 - Telefonaktiebolaget LM Ericsson / Ericsson Inc. et al. v. K.Mizra LLCNo claims unpatentablePTAB · Oct 26, 2023 · IPR2022-00730 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 22, 23, 30, 32, and 33 were not shown unpatentable because Pakzad did not disclose the claimed combined macro and femto timing information, and the obviousness grounds did not address that limitation.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“information from all three types of sources together or at the same time. Patent Owner argues that “a [person of ordinary skill in the art] would understand that this passage in Pakzad ‘any one of several sources’ confirms that Pakzad only uses a single signal source at a time.” PO Resp. 34 (citing Ex. 2002 ¶ 69). Dr. Chrissan testifies that he understands this disclosure to mean that “Pakzad teaches a single signal source at a time, not more than one.” Ex. 2002 ¶ 70 (emphasis added). We find Patent Owner’s interpretation, supported by Dr. Chrissan’s testimony, to be a reasonable reading of Pakzad’s disclosure. Dr. Chrissan further testifies that “Pakzad’s invention is about using both a course [sic] routing graph and fine routing graph to make computation of a motion model (e.g., a particle filter) more efficient,” and “Pakzad was not directed to leveraging a heterogenous network by incorporating both macro and femto cells concurrently.” Id. ¶ 68. We agree with Dr. Chrissan’s explanation for the lack of clear disclosure in Pakzad about which measurements Pakzad uses with its particle filter.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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 been someone with at least (1) a bachelor’s degree in electrical engineering, computer engineering/science, or a related scientific field, and (2) either (a) a master’s degree in electrical engineering, computer engineering/science, or a related filed, or (b) two or more years of work or research experience in wireless networking and/or computing.” Pet. 21 (citing Ex. 1009 ¶ 23). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art, but adds that the person of ordinary skill in the art “may alternatively have additional years of practical and relevant work or research experience as substitution for less or different technical education, and vice versa.” See PO Resp. 17. We determine that the level of ordinary skill proposed by Petitioner is consistent with the ’819 patent and the asserted prior art. 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). We adopt Petitioner’s proposed level in deciding the patentability of the challenged claims.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“claim 30 should be construed “to refer to the previously recited ‘femto base station timing information,’ ‘macro base station timing information,’ and ‘femto base station position information.’” PO Resp. 18. Patent Owner argues that its proposed construction is “based on at least three aspects of the intrinsic record: (1) the claim language itself; (2) guidance from the specification defining the disputed term; and (3) illustrative embodiments confirming the meaning of the disputed term.” Id. (citing Ex. 2002 ¶ 47). Specifically, Patent Owner contends that “the specification describes two embodiments that further confirm to a [person of ordinary skill in the art] that ‘the base station information’ consists of the [three types of information previously] recited.” Id. at 19–23 (citing Ex. 1001, 19:29–33, 20:50–54, Figs. 8, 9; Ex. 2002 ¶¶ 47–55).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“More importantly, anticipation requires that the four corners of a single, prior art document describe every element of the claimed invention, and we are not persuaded that Pakzad describes the combinational use of the two different types of timing information as claimed. See Xerox Corp. v. 3Com Corp., 458 F.3d 1310, 1322 (Fed. Cir. 2006) (citing Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000)). The Federal Circuit has made it clear that “it is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371 (citation omitted) (emphasis added). In Net MoneyIN, although a prior art reference described two protocols, which when taken together, disclosed “all five links arranged or combined in the same way as claimed,” the Federal Circuit determined that the reference did not anticipate the claim. See id. Rather, the Federal” slip op. at 28
Patent outcomesUS 8,958,819 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Enfish · Phillips · KSR · GrahamPatents in suitUS 8,958,819 - PTAB · Aug 7, 2023 · IPR2023-00446 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that Sourcefire and Emerging Threats render the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [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.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’343 Patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’343 Patent on the grounds of unpatentability raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“We agree with Petitioner’s arguments. The fact that the disclosures of cited references are the same or similar is unremarkable in that they are applied against the same claims. Additionally, Patent Owner has not presented evidence that the instant Petitioner applied the prior petition, and its non-institution, as a roadmap to try and correct errors of the prior petition. As such, we agree with Petitioner that factor (1) weighs strongly against discretionary denial.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“After reviewing the evidence, we do not agree with Patent Owner’s assessment that Emerging Threats is cumulative to Stolfo, which the Examiner considered during prosecution. Patent Owner previously distinguished its claims from Stolfo by arguing, in part, that “Stolfo describes that network statistics may be used to ‘modify the decoy traffic such that it appears statistically similar to normal traffic,’” and that “Stolfo describes generating decoy traffic and not applying a transformation to existing network traffic.” Ex. 1002, 87 (quoting Ex. 2001 ¶ 124). Patent Owner also argued that “the decoy traffic used in Stolfo does not prevent an exfiltration operation[, but instead,] Stolfo explains that ‘[t]hese traps use decoy information . . . to attract, deceive, and/or confuse attackers (e.g., inside attackers, external attackers, etc.) and/or malware.’” Id. (quoting Ex. 2001 ¶ 124). In contrast, as Petitioner asserts, Emerging Threats discloses its rules to be Snort rules for preventing exfiltration. Pet. 37–43. Petitioner’s explanations of the different rules disclosed in Emerging Threats illustrate their use in preventing exfiltration, and not merely applying processes to decoy traffic. Id. Petitioner also discusses the correspondences between specific rules provided in Emerging Threats and operators disclosed in the ’343 Patent. Id. As such, we are not persuaded by Patent Owner that Emerging Threats is merely cumulative to Stolfo. Therefore, we are not persuaded that Petitioner’s combination of Sourcefire and Emerging Threats is cumulative to the art previously considered by the Examiner in the prosecution of the application that issued as the ’343 Patent, or that the proposed grounds are based on the same or substantially the same art or arguments previously presented to the Office. In conjunction with Patent Owner’s contention that Petitioner has not shown that the Office erred, we conclude that, given the circumstances presented here, Patent Owner has not demonstrated that Petitioner’s proposed grounds are based on the same or substantially the same art or arguments previously presented to the Office. As a result, we need not further consider whether Petitioner has shown error on the part of the Office. Accordingly, although we have considered Patent Owner’s request for our exercise of discretion to deny institution under 35 U.S.C. § 325(d), on the record before us, we conclude that denial of institution on that basis is not warranted. We proceed to consider the merits of Petitioner’s proposed grounds of unpatentability below.” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Weighing the evidence of the public accessibility of Emerging Threats in the relevant timeframe, we determine that Petitioner has established that Emerging Threats qualifies as a printed publication under § 102(b) for purposes of institution. The presence of the Internet Archive’s Wayback Machine copy suggests that the document was available and was accessible on December 2, 2010, prior to the March 12, 2013 effective filing date of the ’343 Patent. We have concerns that Dr. Staniford is only able to vaguely assert that the rules provided in the text document appear to be true copies of the rules that existed in 2010. See Ex. 1003 ¶ 204. Given the nature of inter partes review, however, we can be concerned only with the publication itself; we cannot rely on or inquire into how some system performed or was used in the relevant timeframe. Nonetheless, we are persuaded by Dr. Staniford’s unrebutted testimony that Snort was begun as an open source project in the late 1990s, that the Bleeding Snort project launched in 2004 as an independent clearing house for Snort rules, and that the project continues as Emerging Threats. See Ex. 1003 ¶¶ 202–203. This testimony is sufficient, for purposes of institution, to show that one of ordinary skill in the art, at and prior to the effective filing date of the ’343 Patent, would have known to look to the Emerging Threats website for Snort rules that could be applied to conventional cyber defense systems. We determine this to be a reasonable showing, at this stage of the proceeding, that Emerging Threats was sufficiently publicly accessible to be a printed publication. With respect to Patent Owner’s arguments regarding searchability of the Emerging Threats website, given its notoriety, we are unpersuaded that persons of ordinary skill in the art proceeding to the website would not have been able to search its contents and find the rules logged thereon that would have been applicable to the users’ network security concerns. Even based on Patent Owner’s presentation of the website (Prelim. Resp. 40 (citing Ex. 1030, 11; Ex. 1054)), we are persuaded that it would only have required the exercise of reasonable diligence to find the rules list, given the knowledge that one of ordinary skill would have had regarding Emerging Threats. Petitioner asserts that specific rules can be located within Emerging Threats by searching for their unique SID (Pet. 38 n.9), but persons proceeding to the website without knowledge of a specific SID would have found this to be of little help. Nonetheless, the number of locations that the rules may be located on the Emerging Threats website is still limited and users would have been able to utilize the “Last Modified” indicator, showing which directories had been modified recently, to narrow down any search, assuming that items that had not been modified for some time would be less worthy of search. As such, we are not persuaded that persons of ordinary skill in the art, proceeding to the Emerging Threats website, would not have been able to have searched its contents and find the rules contained thereon.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,567,343 - Toshiba Tec Corporation / Toshiba America Business Solutions, Inc. v. K.Mizra, LLCInstitution deniedPTAB · Mar 2, 2023 · IPR2022-01426 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because none of the asserted anticipation or obviousness grounds showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’400 patent. Accordingly, we do not institute inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Critically, though, Figures 4 and 6 of Kitaoka I do not depict the document platen, and Petitioner does not address how Kitaoka I satisfies the disputed claim language. To the contrary, Patent Owner argues, and we agree, that Figure 1 of Kitaoka I depicts the document platen extending beyond the document holder, as illustrated in Patent Owner’s annotated version of Figure 1 of Kitaoka I, reproduced below. Figure 1 of Kitaoka I (annotated) Patent Owner’s annotated version of Figure 1 of Kitaoka I depicts “pressing plate white sheet 90” (document holder) shaded in red and “contact glass 21b” (platen) in green. Prelim. Resp. 17. As evidenced by Figure 1 of Kitaoka I, the cited platen extends laterally beyond the cited document holder, such that Kitaoka I does not disclose “the document holder being positioned so as to extend over the whole length and breadth of the document platen,” as recited in claim 1. Accordingly, Petitioner has not shown a reasonable likelihood that it would prevail in showing that any of claims 1–4 is anticipated by Kitaoka I.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“Petitioner does not specifically argue that the disputed limitation would have been an obvious modification of Kitaoka II and Kitaoka I. Accordingly, Petitioner has not shown a reasonable likelihood that it would prevail in showing that any of claims 1–4 are unpatentable in view of Kitaoka II and Kitaoka I. 5. Remaining Grounds Petitioner additionally asserts that dependent claim 4 is unpatentable in view of Tsutsui and Kitaoka I or in view of Tobinaga and Kitaoka I. Pet. 72–73. None of Petitioner’s arguments regarding these combinations addresses the deficiencies noted above regarding base claim 1. Accordingly, Petitioner has not shown a reasonable likelihood that it would prevail with respect to Petitioner’s challenge to claim 4 as unpatentable in view of Tsutsui and Kitaoka I or in view of Tobinaga and Kitaoka I.” slip op. at 11
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,570,400
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.