- Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 4, 2023 · IPR2022-00989 · APJ James A Tartal · IPR · Final written decision
Claims 1, 2, 5–11, 13, and 15–30 are unpatentable as obvious over Sullivan995 and Sullivan460; anticipation was not shown, and the other obviousness ground was not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Petitioner contends that a person of ordinary skill in the art would have had “at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience” and “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 19 (citing Ex. 1003 ¶ 77). Petitioner further states that the “Petition does not turn on this precise definition, and the challenged claims would be unpatentable from the perspective of any reasonable person of ordinary skill in the art at the relevant time.” Id. (citing Ex. 1003 ¶ 78). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. PO Resp. 15–16. We find that the ’539 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’539 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“awake state” Claim 24 recites, in part, “to determine whether breathing patterns indicate an asleep state or an awake state.” Ex. 1001, 11:36–12:7; see also id. at 9:49–64 (claim 1 reciting “between an awake state and an asleep state”), 10:42–56 (claim 11 reciting “at least one of an awake state or an asleep state”). In regard to its allegations of obviousness, Petitioner’s arguments suggest an “awake state” ordinarily means when a patient is not asleep. Pet. 36–37, 42. By contrast, with regard to its allegations of anticipation, Petitioner argues that under Patent Owner’s “implied construction of ‘an awake state’ based on [Patent Owner’s] infringement allegations” in district court, “the patient is in an awake state when there is an absence of obstructions or other breathing patterns indicative of sleep.” Id. at 68–70 (citing, e.g., Ex. 1018 ¶¶ 2, 158, 159). Petitioner provides no further support for this “implied construction” purportedly taken from Patent Owner’s district court allegations. Id. Dr. Kirkness, in support of Petitioner, applied the plain meaning of all terms and phrases. See, e.g., Ex. 1003 ¶ 80. In regard to supporting Petitioner’s allegations of anticipation, Dr. Kirkness merely assumed Patent Owner’s purported district court claim construction “position to be true.” Ex. 1003 ¶ 253. In this proceeding Patent Owner does not propose an express meaning for “awake state.” See PO Resp. 29–33. More generally, Patent Owner states that the ’539 patent “teaches how to distinguish between an awake state and an asleep state.” Id. at 8. From the arguments of the Parties, we discern no dispute in this proceeding that a plain and ordinary meaning of an “awake state” is a state in which a patient is not asleep. See Ex. 1001, 3:1–5 (distinguishing between “a wake state” and “a sleep state”), 7:22–24 (describing an embodiment with a processing arrangement that “may determine whether the patient is in a sleep state or a wake state based on the breathing pattern”).8 We apply the plain and ordinary meaning of “awake state” in this proceeding and further determine that Petitioner has not shown by a preponderance of the evidence that an awake state means “an absence of obstructions or other breathing patterns indicative of sleep.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“Next, we turn to the Specification. “While we read claims in view of the specification . . . we do not read limitations from the embodiments in the specification into the claims.” Hill-Rom Servs., 755 F. 3d at 1371 (citation omitted). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Id. In order for a patentee to act as its own lexicographer, the “patentee must ‘clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning’” and “must ‘clearly express an intent’ to redefine the terms.” Bradium Tech., 923 F. 3d at 1044. In this case, Patent Owner does not argue that it disavowed the full scope of the plain and ordinary meaning of claim 24, nor does Patent Owner argue that it explicitly defined “analyzing the breathing patterns” in the Specification. See, e.g., PO Resp. 29–32. We determine that there is no disavowal nor any explicit lexicographic definition of “analyzing the breathing patterns” in the Specification. Patent Owner instead relies on an “implied lexicography” theory as to why we should construe the phrase as Patent Owner proposes. PO Sur-reply 2, 6–7 (citing, inter alia, AstraZeneca AB v. Mut. Pharm. Co., Inc., 384 F.3d 1333, 1339 (Fed. Cir. 2004)). We disagree.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We disagree with Patent Owner’s arguments—that Petitioner fails to show any motivation to combine and that Sullivan460 is not enabled— merely because Dr. Kirkness indicated in a deposition that he did not know how a preset level is calculated from a sentence in Sullivan460. As Petitioner explains, enablement “is not a requirement to prove invalidity under §103.” Amgen, 314 F.3d at 1357 (under §103, “a reference need not be enabled; it qualifies as a prior art, regardless, for whatever is disclosed therein”). Moreover, we agree with Petitioner that the Challenged Claims do not require any preset level for a flow rate, and a person of ordinary skill “would have understood that a preset level is established from previously-acquired data or data from a previous window of time, such as an average level, for example, as taught in Sullivan995.” Pet. Reply 15 (citing Ex. 2014, 38:2–16; Ex. 1005, 17:3–27, Fig. 12). Patent Owner responds that Petitioner’s assertion is unsupported, and that “Petitioner is obligated to address this challenge, and failed to do so.” PO Sur-reply 18–19 (citing In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013)). We find Petitioner’s arguments persuasive because they are supported by the asserted references. Sullivan995 discloses that the computing system may “calculate control values of patterns for each patient based on moving average values or such values or patterns will be pre-programmed into the computing system.” Ex. 1005, 17:14–18. According to Sullivan995, when “signals deviate from predetermined values or patterns the computer system generates a signal which is sent to the feedback speed controller on the blower motor.” Id. at 17:19–22. Based on this disclosure, and given that Sullivan460 incorporates Sullivan995 by reference, we agree with Petitioner that Sullivan460’s disclosure of detecting that the flow rate has fallen below a preset level would have informed a person of ordinary skill that this level was predetermined, so that “the controller 100 activates the nCPAP apparatus 90 to supply air to the patient 30 at a pressure which ameliorates or eliminates the upper airway flow limitation.”16 Ex. 1006, 10:17–21.” slip op. at 50
Patent outcomesUS 9,427,539 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,427,539 - Abbott Diabetes Care Inc v. Dexcom, Inc.Some claims unpatentablePTAB · Nov 1, 2023 · IPR2022-00909 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–4, 19, and 23 are unpatentable as obvious; claims 5 and 12 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“including a “predictive glucose value,” nowhere do we find the written description or drawings to have delineated such a second function expressly as “the present invention.” See, generally, Ex. 1001; see also Evolusion Concepts, Inc. v. HOC Events, Inc., 22 F.4th 1361, 1367 (Fed. Cir. 2022) (“We have repeatedly held that ‘it is not enough that the only embodiments, or all of the embodiments, contain a particular limitation to limit claims beyond their plain meaning.’”) (citation omitted). And, regardless of the exact wording, the concern we have is that without a persuasive, express, indication in the specification that the “second function” is specifically limited to “predicting glucose values,” it is a disfavored path to read limitations into the claims. Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import limitations into a claim that are not expressly part of may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). The facts and written description here appear to fall more squarely into the category of cases where it is not enough to simply point to embodiments in the specification including the unrecited claim limitation. See Rambus Inc. v. Infineon Techs. Ag, 318 F.3d 1081, 1094 (Fed. Cir. 2003) (Even in cases where a “present invention” statement is provided, the Federal Circuit has explained that ‘[w]hile clear language characterizing ‘the present invention’ may limit the ordinary meaning of claim terms, . . . such language must be read in context of the entire specification and the prosecution history.”) (citation omitted); see also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.”).” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“is any disagreement about the meaning of “a second function” apart from the argument by Patent Owner that the second function should be understood to include “a predictive glucose value.” We are not apprised of any reason for Petitioner to provide an express construction for “second function” in this case. The plain and ordinary reading of limitation 1b is a method step of “evaluating sensor data using a second function to determine whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Ex. 1001, 48:39–41. As far as “second function” goes, the claim language is clear on its face that the second function “determine[s] whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Id. Patent Owner has not offered any construction, nor apart from criticizing Petitioner, indicated in any manner that the “second function” as recited in claims 1 and 19 requires a construction. Our understanding of “second function” is consistent with the specification of the ’215 patent. A plain reading of the specification reveals that the first criteria relates to the claimed “first function,” and the “second criteria” relates to the claimed “second function.” See, e.g., Ex. 1001 3:44–49 (The ’215 Patent describing “a processor configured to: evaluate sensor data using a first function to determine whether a real time glucose value meets one or more first criteria; evaluate sensor data using a second function to determine whether a predicted glucose value meets one or more second criteria.”). The specification description is therefore mostly consistent with the recitations in claim 1 with respect to the first and second functions and relative first and second criteria. Compare id., with Ex. 1001, 48:36–41.” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“second function.” PO Resp. 19. However, neither did Patent Owner provide an express construction. See generally id. is any disagreement about the meaning of “a second function” apart from the argument by Patent Owner that the second function should be understood to include “a predictive glucose value.” We are not apprised of any reason for Petitioner to provide an express construction for “second function” in this case. The plain and ordinary reading of limitation 1b is a method step of “evaluating sensor data using a second function to determine whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Ex. 1001, 48:39–41. As far as “second function” goes, the claim language is clear on its face that the second function “determine[s] whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Id. Patent Owner has not offered any construction, nor apart from criticizing Petitioner, indicated in any manner that the “second function” as recited in claims 1 and 19 requires a construction. Our understanding of “second function” is consistent with the specification of the ’215 patent. A plain reading of the specification reveals that the first criteria relates to the claimed “first function,” and the “second criteria” relates to the claimed “second function.” See, e.g., Ex. 1001 3:44–49 (The ’215 Patent describing “a processor configured to: evaluate sensor data using a first function to determine whether a real time glucose value meets one or more first criteria; evaluate sensor data using a second function to determine whether a predicted glucose value meets one or more second criteria.”). The specification description is therefore mostly consistent with the recitations in claim 1 with respect to the first and second functions and relative first and second criteria. Compare id., with Ex. 1001, 48:36–41. slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision we determined, in accordance with Petitioner’s proposal, that a person of ordinary skill in the art at the time of the ’215 patent [w]ould have had a Bachelor’s degree in biomedical engineering, mathematics, statistics, or computer science (or a related or equivalent field), and two or more years of experience researching, developing, designing and/or evaluating (or supervising the same) medical devices for measuring analyte levels, e.g., analyte sensors, including at least some experience in researching, developing, designing and/or evaluating (or supervising the same) methods, systems, or algorithms for providing indicators (e.g., alerts, alarms or other indicators) of analyte levels to users, or equivalent experience. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. Inst. Dec. 8; Pet. 9–10 (citing Ex. 1002 ¶¶ 24–26). Patent Owner states that “DexCom does not challenge Petitioner’s POSA definition (Petition, 9-10) because the Petition fails even if it is adopted.” PO Resp. 9 (citing Ex. 2008 ¶¶ 20–23). ordinary skill in the art, and because Petitioner’s assessment is consistent with the ’215 patent and the asserted prior art, we continue to rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 11
Patent outcomesUS 10,702,215 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,702,215 - Abbott Diabetes Care Inc. v. Dexcom, Inc.All claims unpatentablePTAB · Oct 27, 2023 · IPR2022-00908 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–3 and 11–13 are unpatentable as obvious over Feldman; the Board did not reach the anticipation and other obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 21–22 (citing Ex. 1002 ¶¶ 77–79). Patent Owner proposes a similar level of ordinary skill in the art including the same educational requirements but with 2–4 years of experience with medical devices for measuring analyte levels. PO Resp. 17 (citing Ex. 2011 ¶ 26). Because there is no material dispute as to Petitioner’s suggested level of ordinary skill in the art, and because Petitioner’s assessment is consistent with the ’193 patent, Patent Owner’s proposed level of ordinary skill, and the asserted prior art, we continue our reliance on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Having considered the complete record before us, we find the evidence does not support the premise that Dr. Smith lacks appropriate knowledge and experience with in vivo sensors or that his testimony is compromised by his analysis of Dobson. Dr. Smith easily has sufficient experience with blood glucose monitoring and the electrochemical instruments and systems used to measure a patient’s blood glucose level in vivo. Ex. 1002 ¶¶ 5–9. By way of background and education, Dr. Smith holds a Bachelor of Science degree in chemistry from Butler University and a Ph.D. in analytical chemistry from the University of Illinois. Id. ¶ 5. Dr. Smith testified that he has worked for 34 years specifically in the blood glucose monitoring field, explaining that his “work includes development of novel electrochemical instrumentation, development of automated clinical laboratory instrumentation, research and development of blood glucose meters and test strips, development of transcutaneous intravascular glucose measurement systems, and development of noninvasive glucose measurement systems.” Id. ¶ 6 (emphasis added). Among his positions, for 12 years Dr. Smith was Vice President of Research, Development, and Engineering Worldwide and Chief Scientific Officer at LifeScan, Inc., a division of Johnson & Johnson. Id. ¶ 8. Dr. Smith testifies that he is an inventor on eleven “issued patents relat[ing] to glucose monitoring, four” slip op. at 25
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Assuming that the challenged claims are entitled to a priority date as early as April 15, 2005, and we are not entirely persuaded that they are, Feldman predates the earliest possible priority date to which the claims of the ’193 patent are entitled because Feldman was filed on December 7, 2004, more than 4 months prior to the asserted April 15, 2005 priority date. Feldman is a U.S. Application Publication, which published September 29, 2005, and was filed in the U.S. on December 7, 2004. Ex. 1008, Codes (22) (43). As explained in the MPEP “[p]re-AIA 35 U.S.C. 102(e) allows the use of certain international application publications and U.S. patent application publications, and certain U.S. patents as prior art under pre-AIA 35 U.S.C. 102(e) as of their respective U.S. filing dates.” MPEP 2136 (emphases added). Patent Owner argues specifically that Feldman “is a September 29, 2005, publication that published after the ’193 Patent’s priority date.” PO Resp. 41. While true, Patent Owner incorrectly relies upon the publication date of Feldman, as opposed to Feldman’s filing date of December 7, 2004, which sets the effective date on which Feldman is prior art under 102(e).” slip op. at 32
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Figures 2A and 4A, that Petitioner and Dr. Smith have explained persuasively that a person of ordinary skill in the art would have understood that “the three conductive layers associated with the electrodes are located overtop each other in a stacked fashion in a similar manner to that depicted in FIG. 2A with respect to the working electrode 29a and the Ag/AgCl counter/reference electrode 29b.” Ex. 1002 ¶ 205. For example, reproduced below are Dr. Smith’s annotated version of Feldman’s Figure 4A side-by-side with Dr. Tapsak’s alternative figure based on Say.” slip op. at 43
Patent outcomesUS 10,702,193 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,702,193 - Unified Patents, LLC v. Intellectual Ventures II, LLCAll claims unpatentablePTAB · Aug 9, 2023 · IPR2022-00429 · APJ Matthew S Meyers · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–5, 7–12, and 14–20 over Chowdhary under §§ 102 and 103, and claims 1–20 over Chowdhary and Tobey under § 103.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityDecided for petitioner
“On this record, we determine that we need not address whether Toyota was improperly excluded as an RPI because, “even if it were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” See SharkNinja, Paper 11 at 18. Other than asserting that “estoppel provisions are implicated by this case” (PO Sur-reply 2311), there is no allegation or evidence that Toyota or any other RPI is barred or estopped from this proceeding, or that 11 Patent Owner asserts without explaining that the ’475 patent “is currently being asserted by Patent Owner against Toyota, as well as GM (another paying Member of Unified similarly situated to Toyota.). PO Sur-reply 23. However, the record indicates that the Toyota case has been dismissed and the GM case stayed. See Paper 32, 1 (Intellectual Ventures I LLC et al. v. Toyota Motor Corp. et al., 2:21-cv00389 (E.D. Tex. October 19, 2021) stipulated dismissal without prejudice on March 20, 2023); see also id. at 2 (Intellectual Ventures I LLC et al. v. General Motors Company, 6:21- cv01088 (W.D. Tex. October 19, 2021) (stayed pending settlement on April 6, 2023)). And, upon further inquiry, PACER Case Locator indicates that the GM case was dismissed in an order granting joint motion to dismiss entered on June 20, 2023. See GM case, Document 116. Petitioner purposefully omitted any other RPI to gain some advantage in our forum. See Unified Patent, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 76 at 5 (PTAB May 22, 2023) (Director Review Decision) (“The Board can and should make a determination of the real parties in interest or privity in any proceeding in which that determination may impact the underlying proceeding, for example, but not limited to, a time bar under 35 U.S.C. § 315(b) or an estoppel under 35 U.S.C. § 315(e) that might apply. That is not the situation here.”). Because we determine that neither the time bar nor estoppel provisions of 35 U.S.C. § 315 are implicated in this case, “we need not address whether [Toyota] is an unnamed RPI.” See Unified Patent, Paper 76 at 5 (“The Board should not have determined whether [there were additional] RPIs in this proceeding given that determination was not necessary to resolve the proceeding.”).” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner asserts that at the time of the invention, one of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, physics, or a related subject, and two to three years of work experience in vehicle telematics.” Pet. 6–7 (citing Ex. 1002 ¶¶ 37–40). Petitioner asserts that “[a] lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 5–6 years).” Id. Patent Owner essentially agrees with Petitioner’s assertion, but contends that the work experience should more broadly be in “mobile communications.” PO Resp. 16 (citing Ex. 2017 ¶ 27). In our Institution Decision, we determined that there was “not much difference between Petitioner’s and Patent Owner’s assertions, but noted that “we find that Patent Owner’s broader definition of a person of ordinary skill in the art is more consistent with the scope and content of the ’475 [p]atent.” Inst. Dec. 16–17 (citing Ex. 1001, 8:53–54; Ex. 1003, 3:15–18, Fig. 1). In its Reply, “Petitioner accepts the level of skill definition adopted in the Institution Decision,” and notes that “[n]either party contends that the differences in the proposed definitions affect the patentability of the challenged claims.” Pet. Reply 7. Based on this record, we apply Patent Owner’s definition of the level of skill, which also was applied in our Institution Decision, because it is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art of record. See Okajima, 261 F.3d at 1355.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We begin our analysis by considering the language of the claims. At the outset, we note that none of independent claims 1, 8, and 15 require “actively notify[ing] the recipient soon after the violation,” as Patent Owner proposes. Independent claim 1 requires that if the computing device located within the vehicle determines that the vehicle committed a violation, the computing device located in the vehicle sends an indication of the violation to a remote computing system. Ex. 1001, 10:55–55. Independent claim 1 further recites “wherein the remote computing device is configured to notify a recipient about the violation committed by the vehicle.” Id. at 10:56–58. Independent claims 8 and 15 includes substantially similar limitations. Id. at 11:14–28, 12:11–25. Thus, the independent claims broadly recite “notify[ing] a recipient about the violation” without reference to any type, i.e., “active” or “passive,” or timing of the notification. Turning to dependent claims 4 and 5, claims 4 and 5 both begin by reciting “[t]he method of claim 1, wherein the remote computing device is configured to notify the recipient about the violation committed by the vehicle by.” Ex. 1001, 10:66–67:1, 11:3–5. Claim 4 further limits independent claim 1 “by permitting the recipient to view the indication of the violation via a browser” (id. at 10:67–11:2) and claim 5 further limits claim 1 “by sending a communication to the recipient in response to receiving the indication of the violation from the computing device” (id. at 11:4–6). Thus, we understand the recitation of “configured to notify a recipient” in claim 1 as being broad enough to cover both the notification recited in claim 4 that “permit[s] the recipient to view . . . via a browser” and the notification recited in claim 5 that “send[s] a communication to the recipient in response to receiving the indication of the violation from the computing device.” Id. at 10:66–11:7.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“At the outset, we agree with Petitioner that Patent Owner’s arguments are all premised upon its proposed construction of the phrase “configured to notify a recipient,” which, we do not adopt. See § III.C.1. As discussed above, we are not persuaded that the phrase “configured to notify a recipient,” as it appears in the context of claim 1, requires any type of active notification, as Patent Owner proposes. Consequently, Patent Owner’s argument that Chowdhary fails to teach the limitation at issue because Chowdhary “is wholly silent with regard to anything that is configured to actively notify someone about a violation” is unavailing. PO Resp. 24 (citing Ex. 2017 ¶ 57); see also id. at 27 (“[N]either the shortcuts to the reports shown in Figure 10 . . . or any other disclosure in Chowd[h]ary, actively notifies the fleet manager that a violation has been committed by the driver of the vehicle.”). Notwithstanding, to address this limitation, Petitioner directs us to Chowdhary’s disclosure that its “VSM application server automatically generates reports when new event data is received based on previously set criteria.” Id. (citing Ex. 1005 ¶¶ 7, 47–51, 96–97, 102–103, 114, Figs. 10–30; Ex. 1002 ¶¶ 84–87). Petitioner provides the following copy of Figure 10 of Chowdhary, annotated to identify, among several items, icon 1102 and icon 1104. Figure 10 illustrates “an example screen display for one embodiment of the VSM user interface” that includes “an ‘Alert/Notifications’ and ‘Messages’ screen.” Ex. 1005 ¶¶ 19, 97. Petitioner explains that Chowdhary discloses VSM application server receives speeding event data and prepares speeding reports based on the received event data. [Ex. 1005 ¶¶ 7, 47–51, 96–97, 114, Figs. 10–30]. An administrator sets alerts and/or notifications for reports that are of particular interest to the administrator so that an Alert/Notification is posted providing the title of the report (orange), the date/time the report was created (green), a link (via icon 1102, blue) to access the report each time a new speed limit violation report is created, and an icon 1104 (red) to remove reports so only new Alerts/Notifications are shown. [Ex. 1005 ¶¶ 97–98, 120, Fig. 10]. Pet. Reply 12–13. Relying on the deposition testimony of Mr. Wilson, Petitioner asserts that “Mr. Wilson testified that a clear notification would occur when a user logs in to a website, and there is an indication that a new message is available for the user to view.” Pet. Reply 13 (citing Ex. 2015,” slip op. at 32
Patent outcomesUS 9,291,475 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,291,475 - Google LLC v. Ipa Technologies Inc.All claims unpatentablePTAB · Jun 1, 2023 · IPR2019-00731 · APJ Trevor M Jefferson · IPR · Remand
Claim 28 is unpatentable under § 103(a) over Martin and Farley; Martin qualifies as prior art because Dr. Moran’s contribution made him a joint inventor of the relied-on disclosure.
RulingsRemand decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’560 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 19:14–19:62. In addition, Patent Owner admits that “large portions of the ’560 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id.” slip op. at 21
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“With respect to Dr. Moran’s contribution to the Martin reference, we find Dr. Moran’s testimony credible over that of Mr. Cheyer and Mr. Martin, because, as the Federal Circuit noted, because the latter testimony conflicts with other evidence of record. Google, 34 F.4th at 1088. Cheyer’s and Martin’s testimony that Dr. Moran’s role was administrative and non-technical with respect to the core infrastructure of OAA is belied by a separate article describing OAA that includes the facilitator and lists Dr. Moran as the lead author. Ex. 1174, 1–2, 4. Indeed, the OAA article lists Dr. Moran and Mr. Cheyer as authors but excludes Mr. Martin. Id. Although Mr. Cheyer disagrees with the article’s description of the origins of OAA and the facilitator (Ex. 2037, 78:23–79:12 (Mr. Cheyer asserting that he “would not agree in the characterization of Open Agent Architecture grew out of [earlier] works” as described in the article)), Mr. Cheyer admits patent]” (id. at 1088), “which is a continuation-in-part of the application that resulted in the ’115 patent” (id. at 1086). in his deposition that Dr. Moran was extremely technical, and probably made technical contributions to OAA (id. at 34:1–20, 64:16–20, 102:2–4). Similarly, Mr. Martin’s testimony also supports that Dr. Moran “may have made contributions to the technological development of either interfaces for use with OAA, agents used with OAA, or systems based on OAA.” Ex. 2038, 116:2–8, 117:7–119:10. When viewed in light of Dr. Moran’s status as a joint inventor on the closely related ’931 patent (Ex. 2002, code (75)) and as a lead author of the substantive paper that discusses OAA’s early development, we find Mr. Martin’s and Mr. Cheyer’s admissions—that Dr. Moran made technical contributions to OAA—undermine their testimony that Dr. Moran’s inclusion as an author on the Martin reference was a matter of administrative respect and not a result of a technical contribution. See PO Remand 11; PO Resp. 50–51. Indeed, we find Cheyer and Martin’s general description of Dr. Moran—as an administrator without technical contributions to the Martin reference—is not supported by the full record, which instead supports Dr. Moran’s contributions to technical work that involves the Martin reference, such as contemporary papers and the ’931 patent. See, e.g., Ex. 1174, 2002. In sum, the testimony and contemporary evidence supports Dr. Moran’s testimony that his conception and contribution to the Martin reference, the facilitator, was technical and not merely administrative. Ex. 1007 ¶ 39.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We disagree with Patent Owner’s contention. Rather, we find that the Petition persuasively explains how Martin discloses a facilitator agent arranged to coordinate cooperative task completion within a distributed computing environment having autonomous service-providing electronic agents. Pet. 39; Ex. 1002 ¶ 100. Further, Petitioner persuasively demonstrates that Farley discloses how agent functionality can be distributed across multiple processes. Pet. 39–40; Ex. 1002 ¶¶ 101–102. Finally, Petitioner also provides persuasive reasons as to why one of ordinary skill in the art would have been motivated to combine Martin and Farley, including reasons expressly provided by Farley. Pet. 40; Ex. 1002 ¶¶ 103–104.” slip op. at 28
- ExcludeMotion to exclude, deniedMixed
“III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 26–30. We maintain these determinations on remand.” slip op. at 29
Patent outcomesUS 7,069,560 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,069,560 - Google LLC v. Ipa Technologies Inc.All claims unpatentablePTAB · Jun 1, 2023 · IPR2019-00728 · APJ Trevor M Jefferson · IPR · Remand
On remand, the Board held claim 63 unpatentable under § 103(a) over Martin and Kohn, finding Martin was prior art because Moran was a joint inventor.
RulingsRemand decision- RemandDecided for petitioner
“Petitioner relies upon is sufficient to establish the degree to which the reliedon portions of the Martin reference were conceived by Dr. Moran, and the significance of those contributions to the overall anticipating disclosure of the Martin reference. See Google, 34 F.4th at 1086–88; Duncan Parking, 914 F.3d at 1358. Contrary to Patent Owner’s contentions, Petitioner is not merely relying on Dr. Moran’s authorship to establish inventorship. PO Remand 8 (citing In re Katz, 687 F.2d 450, 455 (C.C.P.A. 1982)). Instead, Dr. Moran’s testimony establishes how his background led to his contributions to the multiple facilitator architectures disclosed in Martin and in the ’115 patent specification. Google, 34 F.4th at 1087; Ex. 1007 ¶¶ 23– 34 (OAA project), 35–39 (OAA paper). In view of Dr. Moran’s testimony, we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’115 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 18:56–19:36. In addition, Patent Owner admits that “large portions of the ’115 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id. Based on the record, the Federal Circuit’s remand squarely asks whether Dr. Moran’s stated contributions to the conception of the facilitator should be credited over Cheyer and Martin’s conflicting testimony regarding his lack of technical contribution. Google, 34 F.4th at 1088 (stating that “[t]he testimony of Dr. Moran, if credited, might well establish that he was a co-inventor of the particular portions of the Martin reference relied on by Google in, and relevant to, the challenge to particular claims”). When Dr. Moran’s testimony is viewed in combination with the supporting evidence,7 we find that incorporation of the facilitator in general, which is also found in the specification and claims, persuasively supports Dr. Moran’s testimony regarding his inventive contribution to the Martin reference. Specifically, we find Dr. Moran’s testimony persuasively supported and credible over the conflicting testimony and evidence offered by Mr. Cheyer and Mr. Martin. See Pet. Reply 12–13; Ex. 2038, 116:2–8, 117:7–119:10 (Cheyer admission that Dr. Moran made technical contributions to OAA); Ex. 2037, 34:1–20, 64:16–20, 102:2–4.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Upon weighing the parties’ testimony and evidence, we agree with Petitioner that sufficient evidence supports the technical contributions of Dr. Moran to OAA, including admissions by Mr. Martin that Dr. Moran made such contributions (see Ex. 2038, 116:2–116:8, 117:7–119:10; see also id. at 73:3–73:15); contemporaneous papers showing Dr. Moran’s contribution to the OAA including a facilitator (see Ex. 1170; Ex. 1174, 1– 2), and the ’931 patent (Ex. 2002). See Pet. Reply 5–7, 8, 12–13; Pet. Remand 11. In particular, Dr. Moran’s testimony establishes that he contributed to Section 4.5, the facilitator that plays an essential role in the OAA, that differs from prior art agents, and that is found in the ’115 specification. We find Dr. Moran’s contributions to be significant when measured against the full anticipating Martin reference, and to render him a joint inventor of the Martin reference. Google, 34 F.4th at 1085 (quoting Duncan Parking, 914 F.3d at 1358). 5. Conclusion Based on the full record, we find that Petitioner has provided persuasive evidence by a preponderance of the evidence that Dr. Moran is an inventive entity to the Martin reference. Accordingly, we find that Petitioner has established that Martin is “by another” and is prior art under § 102(a) to the ’115 patent. We next turn to the sole remaining ground based on the Martin reference to determine the patentability of the remaining challenged claim.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“combination of Martin and Kohn. Petitioner’s expert, Dr. Olsen, provides persuasive testimony and evidence that Martin teaches compound goals and a skilled artisan would have been motivated in view of Kohn to modify Martin’s facilitator agent to interpret a compound goal that includes both local and global constraints. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. Dr. Olsen’s testimony does not evince hindsight, but instead supports the finding that an ordinarily skilled artisan could use compound goals required in Martin and apply the type of constraints (global and local) disclosed in Kohn. Ex. 2024, 159:4–160:16. In addition, Dr. Olsen testified, the proposed implementation “would have been a mere combination of known components and technologies . . . , according to known methods, to produce predictable results.” Ex. 1002 ¶ 87. We do not agree that this case presents the same technical issues raised in G.B.T. Inc. v. Walletex Microelectronics Ltd., IPR2018-00326, Paper 60 at 16–17 (PTAB June 25, 2019), where the petitioner’s declarant failed to show how the combination would have achieved desired results and features from the combination of the circuits. Here, Dr. Olsen identified known compound goals in Martin to which Kohn’s local and global constraints are applicable. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. In view of the level of skill in the art and the testimony of Dr. Olsen (Ex. 1002 ¶¶ 49, 77–88; Ex. 2024, 159:4–160:16), we find that Petitioner establishes persuasive motivation to combine the software teachings of Kohn’s constraints into the goals of Martin and how the references would have been combined by a preponderance of the evidence.” slip op. at 29
- ExcludeMotion to exclude, deniedMotion to exclude, grantedMixed
“III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 25–28. We maintain these determinations on remand.” slip op. at 30
Patent outcomesUS 6,851,115 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,851,115 - Dji Europe B.V. v. Textron Innovations Inc.All claims unpatentablePTAB · May 31, 2023 · IPR2022-00162 · APJ Michael R Zecher · IPR · Final written decision
Claims 1–7, 10, and 12 are unpatentable: Harding anticipates and renders claims 1–7 and 12 obvious; the listed combinations render claims 3, 4, 10, and 12 obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “detent position” In its Petition, DJI argued that the claim term “detent position,” as recited in independent claim 1 of the ’752 patent, should be construed to mean “zero-force position.” Pet. 9. In its Patent Owner Response, Textron cited documentation from the parallel district court case that the parties “agree to construe ‘detent position’ to have its plain and ordinary meaning,” and stated that “there is no dispute between the parties as to the meaning of the term and . . . no explicit construction is necessary.” PO Resp. 8–9 (citing Ex. 2016, 5). Based on the fully developed trial record, there is no readily discernible controversy between the parties that requires us to construe this claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Based on the fully developed trial record, we agree with DJI that the claim phrase “engaging . . . when both the longitudinal controller and the lateral controller are released” should not be limited to controllers on two separate control sticks. That is, we adopt the plain and ordinary meaning for the phrase “when both the longitudinal controller and the lateral controller are released” and construe this term as encompassing either single control stick or multi-stick control configurations. We begin with a review of the specification of the ’752 patent. See Phillips, 415 F.3d at 1315 (stating that “the specification is ‘the single best guide to the meaning of a disputed term’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The “single stick” aspect of our construction finds support in the specification, which consistently reinforces that the lateral and longitudinal controllers may be embodied by a single control stick. Ex. 1001, 2:55–61, 3:18–29, 5:21–27, 8:27–30, 8:49–57, 9:6–10, 10:44–47. As two examples, the specification refers to when the “pilot moves the control stick,” and in another, the specification references where, “[i]n the preferred embodiment, the first 0.1– 0.2 inch of aircraft stick movement is used to determine whether the stick is in the detent position.” Ex. 1001, 8:49–57, 10:44–47 (emphases added). Textron does not identify explicitly, nor could we find a single instance, where the specification of the ’752 patent references using two control sticks. Furthermore, we agree with DJI that the word “both” recited in dependent claims 6 and 7 does not require two separate control sticks, but rather refers to releasing both the longitudinal and lateral controllers. The crux of Textron’s argument appears to be that, because dependent claims 6 and 7, unlike independent claim 1, require releasing both the longitudinal and lateral controllers to activate a state, they cannot be embodied by a single stick, stating “if the controllers were not separate, how could they be independently released?” PO Resp. 10. Textron’s argument, however, conflates “controllers” and “sticks.” As we discuss above, the specification of the ’752 patent repeatedly teaches having both the longitudinal and lateral controllers be actuated by a single control stick. Textron does not support its argument with evidence from the specification, nor does it support its position that, when dependent claim 6 and 7 refer to “the longitudinal controller” and “the lateral controller,” they are referring to the separate control sticks to actuate these two different controllers. Instead, dependent claims 6 and 7 are agnostic as to whether the longitudinal and lateral controllers are set up to actuate on a single control stick or on multiple control sticks. In summary, we accord the claim phrase “engaging . . . when both the” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 11–12 (citing Ex. 1002 ¶¶ 61–62). In its Patent Owner Response, Textron agrees with the level of skill in the art as proposed by DJI, arguing the following: a person of ordinary skill in the art . . . at the time of the invention of the ’752 Patent would have been someone with at least the equivalent of a Bachelor’s degree in mechanical engineering, aerospace engineering, electrical engineering, robotics or similar discipline covering principles of the design or operation of flight controls for helicopters, drones, or other rotary aircraft, as well as one year of experience working on the design, development, implementation, or operation of such technologies. [Textron] also agrees that significant experience could substitute for formal education, and significant education could substitute for work experience. PO. Resp. 4–5. Based on the fully developed record, the level of ordinary skill in the art is not disputed and is consistent with our review of the technology and descriptions in the ’752 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention”). For purposes of this Final Written decision, we adopt DJI’s proposed level skill in the art and apply it in our anticipation/obviousness analysis below.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“h. Summary In summary, we have reviewed DJI’s arguments and supporting evidence as to how the teachings of Harding account for all the limitations of independent claim 1, and we agree with and adopt DJI’s analysis. See Pet. 16–28. Accordingly, DJI has demonstrated by a preponderance of the evidence that the subject matter of claim 1 is anticipated by and would have been obvious over the teachings of Harding. 5. Claims 2–5 and 12 DJI also contends that dependent claims 2–5 and 12 of the ’752 patent are unpatentable under §§ 102(b) or 103(a) as anticipated by or rendered obvious over the teachings of Harding. Pet. 28–38. DJI explains how the teachings of Harding account for the subject matter of each dependent claim, and provides reasoning as to why a person of ordinary skill in the art would have been prompted to modify the teachings of this reference. Id. During trial, Textron does not address separately DJI’s arguments and supporting evidence as to how the teachings of Harding account for the additional limitations of dependent claims 2–5 and 12. See PO Resp. 10–32. As one example, claim 2 directly depends from independent claim 1, and further recites “maneuvering the rotary aircraft within the first envelope with a translational rate command, the translational rate command being adapted to control longitudinal flight of the rotary aircraft with movement of the longitudinal controller and lateral flight of the rotary aircraft with movement of the lateral controller.” Ex. 1001, 11:47–53. DJI contends that Harding teaches this limitation because it discloses a translational rate command where ground speed follows the cyclic stick, and that while in TRC, longitudinal movement of the cyclic stick controls longitudinal ground speed and lateral movement of the cyclic stick controls lateral ground speed. Pet. 28–30. DJI cites Harding’s Figure 6, reproduced below.” slip op. at 31
Patent outcomesUS 9,162,752 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,162,752 - Laltitude LLC, Dba Picasso Tiles v. Altus Holdings, Inc.All claims unpatentablePTAB · May 10, 2023 · IPR2022-00155 · APJ Bart A Gerstenblith · IPR · Final written decision
The sole challenged claim was held unpatentable as anticipated by Zhao US and Zhao CN; the Board did not reach the three obviousness grounds.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“same as that used for infringement, except that for anticipation, the patented design is compared with the alleged anticipatory reference rather than an accused design. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1238, 1240 (Fed. Cir. 2009). The ordinary observer test for design patent infringement was first enunciated by the Supreme Court in Gorham Co. v. White, 81 U.S. 511 (1871), as follows: [I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. Id. at 528. The ordinary observer test requires the fact finder to consider all of the ornamental features illustrated in the figures that are visible at any time in the “normal use” lifetime of the accused product, i.e., “from the completion of manufacture or assembly until the ultimate destruction, loss, or disappearance of the article.” Int’l Seaway, 589 F.3d at 1241. Further, while the ordinary observer test requires consideration of the overall prior art and claimed designs, [t]he mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Just as “minor differences between a patented design and an accused article’s design cannot, and shall not, prevent a finding of infringement” . . . so too minor differences cannot prevent a finding of anticipation. Id. at 1243 (citation omitted) (quoting Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (1984)).” slip op. at 8
Patent outcomesUS D719,138 unpatentable§ 102 anticipation - Tiktok Inc. v. Advanced Coding Technologies LLCInstitution deniedPTAB · Mar 27, 2023 · IPR2022-01546 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7 were unpatentable as obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we deny the Petition and do not institute an inter partes review of the ’154 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner, supported by Dr. Lett’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have been a person with a working knowledge of digital video and audio technologies.” Pet. 4 (citing Ex. 1003 ¶ 22). Petitioner contends that a person of ordinary skill in the art would have had a Bachelor of Science, a Bachelor of Applied Science, or a Bachelor of Engineering degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to digital video and audio technologies. Id. Alternatively, Petitioner contends, “the person could have also had a Master of Science, Master of Applied Science, or Master of Engineering degree in a relevant academic discipline with less than a year of related work experience in the same discipline.” Id. at 5 (citing Ex. 1003 ¶ 22). Patent Owner states that “[f]or the purpose of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 13. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’154 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner and Patent Owner agree that no claim terms require an express construction at this stage of the proceeding. Pet. 14; Prelim. Resp. 13. Accordingly, we need not construe any claim terms expressly because none are in dispute.7 See Vivid Techs., 200 F.3d at 803.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Third, as noted above, Petitioner also argues that it would have been obvious to one of ordinary skill in the art that elapsed playback time would be indicated by time stamps included in the audio content. Pet. 15–16. But, on this aspect of Petitioner’s contention, neither Petitioner nor Mr. Lett provides any reason why one of ordinary skill in the art would have found it obvious to include a time stamp in Lindroos’ audio data. Id.; Ex. 1003 ¶ 35. As reflected in our discussion above, Mr. Lett’s testimony regarding Exhibits 1010–1013 is unsupported by the references cited. Thus, Petitioner’s assertion that this limitation was “well known” and “would have been obvious” to one of ordinary skill in the art is not supported on the record before us. Accordingly, Petitioner fails to demonstrate on the present 13 Mr. Lett states that he “refer[s] to these other publications . . . merely for purposes of corroborating this common background knowledge recognizable to a [person of ordinary skill in the art] at the time.” Ex. 1003 ¶ 35. record that it was “well known and would have been obvious” “for elapsed playback time to be indicated by time stamps included in the audio content.” Pet. 15–16 (citations omitted).14” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,615,154 - PTAB · Mar 13, 2023 · IPR2022-01303 · APJ Bart A Gerstenblith · IPR · Institution
Instituted review of claims 2, 4–7, 9, 11–13, 45–48, 50, and 54–59 on all grounds; the Board found a reasonable likelihood that claim 54 was obvious over Gottschalk and Kramer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, which includes Petitioner’s strong showing regarding claim 54 and Patent Owner’s weaker evidence of nonobviousness, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Gottschalk and Kramer would have rendered the subject matter of claim 54 of the ’068 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 38
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Additionally, the Director recently clarified the Interim Procedure, stating that “[t]he Board should first assess Fintiv factors 1–5; if that analysis supports discretionary denial, the Board should engage the compelling merits question.” CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 6 (PTAB Feb. 27, 2023) (precedential). Here, we determine that, on balance, Fintiv factors 1–5 do not favor exercising our discretion to deny institution and, therefore, there is no need to determine whether the Petition establishes compelling merits. 7. Conclusion on Fintiv Factors Upon consideration of the Fintiv factors, we determine not to exercise our discretion to deny institution.” slip op. at 19
- Parallel petitionsDenied
“sufficiently address the challenged claims” of the ’068 patent. Notice 1. According to Petitioner, Gentex asserted a large number of claims in the parallel litigation “that are distinct from one another, that collectively comprise several thousand words of claim language.” Id. Petitioner ranks this Petition as “B” and the Petition in IPR2022-01302 as “A.” Id. at 1–2. Petitioner also explains its reasoning for the grouping of the claims challenged in each petition and that the only overlap between the two petitions is claim 1, from which a large number of claims depend. Id. at 2–3. Patent Owner did not file a response to the Notice. Nor did Patent Owner otherwise dispute Petitioner’s contentions that two petitions are necessary. See generally Prelim. Resp. On the present record, we see no reason to exercise our discretion to deny institution of either petition on the basis of Petitioner filing two petitions to address the large number of claims asserted in the related litigation. See PTAB Consolidated Trial Practice Guide, 59 (Nov. 2019)10 (recognizing that one circumstance in which more than one petition may be necessary is when a patent owner asserts a large number of claims in related litigation).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in computer science, or an equivalent field, and three to five years of experience working with computer implemented tracking systems. Additional education might compensate for less experience and vice-versa.” Pet. 25 (citing Ex. 1005 ¶ 48). Patent Owner states that “[f]or purposes of responding to [Petitioner’s] Petition for [inter partes review], Patent Owner accepts [Petitioner’s] proposed person of ordinary skill in the art.” Prelim. Resp. 6. Patent Owner further states, “[h]owever, for any other purpose, Patent Owner disagrees with [Petitioner] at least that such [person of ordinary skill in the art] would be limited to a maximum of five years of experience.” Id. And, Patent Owner further “reserves the right to offer an alternative definition based on expert evidence in the event the Petition is instituted.” Id. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’068 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 6,757,068
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.