- Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 26, 2024 · IPR2024-00819 · APJ Russell E Cass · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Apple would show at least one claim unpatentable over Behbahani, Leete, and Tan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“We determine that the first General Plastic factor does not favor exercising discretion to deny institution of inter partes review. This is Petitioner’s first petition challenging the ’164 patent. There is no evidence in the record that Petitioner has any significant relationship with Lenovo or Samsung—for example, that Petitioner is a co-defendant with either of them or was accused of infringing the ’164 patent or any related patents dbased on the same product. See Valve at 9–10. That Petitioner apparently may have reviewed and considered strategies undertaken by prior petitioners on similar issues does not, in and of itself, create a significant relationship with any of the prior petitioners. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework when determining whether to exercise its discretion under 35 U.S.C. § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).” slip op. at 18
- Skill levelSkill level patent owner adoptedOther
“of the alleged invention would have had “a master’s degree in electrical engineering or the equivalent, and two or more years of experience with wireless communication devices.” Pet. 10 (citing Ex. 1003 ¶¶ 27–29). Petitioner further states that “[a]dditional education or experience might substitute for the above requirements.” Id. Relying on Dr. Larson, Patent Owner argues that a person of ordinary skill “would have at least a Bachelor’s Degree in Electrical or Electronics Engineering, along with ‘approximately five years of relevant experience in the design of transceiver architecture, RF systems and components, and analog and mixed signal circuits, as well as experience in control algorithms for such systems and familiarity with wireless standards.” Prelim. Resp. 27– 28 (citing Ex. 2005 ¶ 50). Patent Owner further states that “[a]dditional education could substitute for experience and vice versa.” Id.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,564,164 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 25, 2024 · IPR2024-00818 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on claims 1, 2, and 4–23, finding a reasonable likelihood that claim 7 is unpatentable over Behbahani, Leete, and Tan under § 103(a).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the present record, Petitioner has made a sufficient showing as to this limitation for purposes of institution.11 Petitioner has sufficiently shown, and Patent Owner does not appear to dispute, that Behbahani switches from its high-power filter to its low-power filter in response to signal strength measurements, and that this “filter swap” varies the impedance and/or bias current in the receiver. The only disputed issues appear to be: (1) whether the claim language excludes Behbahani’s filter” slip op. at 40
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“We determine that the first General Plastic factor does not favor exercising discretion to deny institution of inter partes review. This is Petitioner’s first petition challenging the ’202 patent. Pet. 75. Patent Owner argues that “Apple’s use of prior petitions as a roadmap ‘implicitly create[s] such a relationship’” as set forth in Valve. Prelim. Resp. 55. According to Patent Owner, “Apple’s admitted attempt to improve over issues ‘that have plagued prior invalidity challenges’ ties its interests to the prior Petitioner’s aims.” Id. Under the circumstances in this case, we disagree with Patent Owner’s arguments. There is no evidence in the record that Petitioner has any significant relationship with Lenovo or Samsung—for example, that Petitioner is a co-defendant with either of them or was accused of infringing the ’202 patent based on the same product. See Valve at 9–10. That Petitioner apparently may have reviewed and considered strategies undertaken by prior petitioners on similar issues does not, in and of itself, create a significant relationship with any of the prior petitioners. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We find that Becton, Dickinson factor (c)––the extent to which the asserted art was evaluated during examination––does not favor denying the Petition under Section 325(d) because the Examiner did not cite Behbahani or Tan in any rejection and did not specifically address either reference in any correspondence, other than initialing them in an IDS. Nor did the Examiner address Leete. For factors (e) and (f), we find that Petitioner has explained sufficiently how the Examiner allegedly erred in evaluating Behbahani and Tan, by pointing to the Proposed Grounds, which detail how the challenged claims read on these references over the combination of Behbahani, Leete, and Tan. See Pet. 18–72. We find this sufficient to identify the “specific teachings” that were overlooked, as contemplated in Advanced Bionics, and we agree with Petitioner that the facts and discussion of Behbahani, Leete, and Tan presented in the Petition warrant reconsideration of the challenged claims in view of those references. We thus find that Petitioner has satisfied the second part of the Advanced Bionics framework by demonstrating that the Examiner may have erred by not appreciating that Behbahani, Leete, and Tan teach or suggest the features of the claimed invention. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the parties’ application of the prior art to the claims, it appears that there may be some disagreement concerning the meaning of “signal path” in this proceeding; however, neither party proposes an express construction of the term for this case. See Pet. 8–10; Prelim. Resp. 28–32. We will discuss the term “signal path” below in the context of the parties’ arguments applying this language to the asserted prior art. See § III.F.4.c, infra. The parties may further address the meaning of the term “signal path” during the trial.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,524,202 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 25, 2024 · IPR2024-00817 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR on claims 1–8 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Behbahani, Leete, and Tan.
RulingsInstitution decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner contends a person of ordinary skill in the art “would have had a master’s degree in electrical engineering or the equivalent, and two or more years of experience with wireless communications devices” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 10 (citing Ex. 1003 ¶¶ 39–41). Patent Owner contends that a person of ordinary skill in the art “would have at least a Bachelor’s Degree in Electrical or Electronics Engineering, along with ‘approximately five years of relevant experience in the design of transceiver architecture, RF systems and components, and analog and mixed signal circuits, as well as experience in control algorithms for such system and familiarity with wireless standards’” and that “[a]dditional education could substitute for experience and vice versa.” Prelim. Resp. 28 (Ex. 2005 ¶ 50). Petitioner thus proposes a Master’s degree with two years of experience, while Patent Owner proposes a Bachelor’s degree with five years of experience. Given that both parties also indicate that more education could substitute for less experience and vice versa, we do not see a material difference in the proposals, and thus adopt Patent Owner’s version for the purposes of this Decision. If the parties believe that the choice of one proposal over the other would make a difference in the patentability analysis, they may address that during trial.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Based on the parties’ application of the prior art to the claims, it appears that there may be some disagreement concerning the meaning of “signal path” in this proceeding; however, neither party proposes an express construction of the term in this proceeding. See Pet. 8–10; PO Resp. 29–32. We will discuss the term “signal path” below in the context of the parties’ arguments applying this language to the asserted prior art. See § III.F.4.f, infra. The parties may further address the meaning of the term “signal path” during the trial. Patent Owner also argues that we should dismiss the Petition because Petitioner is relying on a construction that it disagreed with in the related district court litigation, citing the Board’s non-precedential decisions in Samsung Elecs. Am., Inc. v. Cobblestone Wireless LLC, IPR2024-00319, Paper 16 at 13–23 (PTAB Jun. 24, 2024) and Hologic, Inc. v. Enzo Life Sciences, Inc., IPR2018-00019, Paper 21 at 5–7 (PTAB Nov. 28, 2018). Prelim. Resp. 30–32. Patent Owner, however, relies on a flawed understanding of the Samsung case. In Samsung, the Board determined that Petitioner had failed to establish a reasonable likelihood of success because it offered and relied on a claim construction that it failed to support, disagreed with, and disparaged, and that this claim construction was not agreed upon by the patent owner or adopted by a district court. Samsung, Paper 21 at 13–23. Specifically, as the Board pointed out in Samsung, the petitioner argued and submitted testimony from its expert that its proffered construction was “expressly excluded” by the specification of the challenged patent and was “contrary to [the term’s] plain and ordinary meaning.” Id. at 14–15, 19–20. In reaching its decision in Samsung, the Board expressly “distinguish[ed] this case from situations where a petitioner relies on the ordinary meaning of a claim term, offers alternative constructions of a claim term, or relies on a construction agreed upon by the parties in the proceeding at issue.” Id. at 21. Here, unlike in Samsung, Petitioner relies on the plain and ordinary meaning of the dynamic limitation, which is agreed to by the parties in this proceeding and has been adopted by district courts in parallel litigation. We similarly find the facts in Hologic distinguishable from those presented here. See Hologic at 4 (stating, for example, that “[n]early every time [p]etitioner discusses its use in the [p]etition of [p]atent [o]wner’s proposed construction, [p]etitioner affirmatively disagrees with the construction it adopts.”). Therefore, we reject Patent Owner’s argument that Samsung and Hologic support dismissal of the Petition here. Other than the terms discussed above, we determine that it is not necessary to provide an express interpretation of any other claim terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Director Vidal has instructed the Board that General Plastic factor 1 should not be expanded beyond Valve to apply to parties that do not have a significant relationship. See Videndum Production Solutions, Inc. v. Rotolight Limited, IPR2023-01218, Paper 12 at 6 (Director Vidal, April 19, 2024) (“The majority’s Decision in this proceeding improperly expanded the discretionary principles set forth in General Plastic and Valve to apply to petitioners that are not the same and do not have a ‘significant relationship.’”). Moreover, Director Vidal has instructed that where “the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Id. We determine that the first General Plastic factor does not favor exercising discretion to deny institution of inter partes review. This is Petitioner’s first petition challenging the ’825 patent. Pet. 70. Patent Owner argues that “Apple’s use of prior petitions as a roadmap ‘implicitly create[s] such a relationship’” as set forth in Valve. Prelim. Resp. 55. According to Patent Owner, “Apple’s admitted attempt to improve over issues ‘that have plagued prior invalidity challenges’ ties its interests to the prior Petitioner’s aims.” Id. Under the circumstances in this case, we disagree with Patent Owner’s arguments. There is no evidence in the record that Petitioner has any significant relationship with Lenovo or Samsung—for example, that Petitioner is a co-defendant with either of them or was accused of infringing the ’825 patent based on the same product. See Valve at 9–10. That Petitioner apparently may have reviewed and considered strategies undertaken by prior petitioners on similar issues does not, in and of itself, create a significant relationship with any of the prior petitioners. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We find that Becton, Dickinson factor (c)––the extent to which the asserted art was evaluated during examination––does not favor denying the Petition under Section 325(d) because the Examiner did not cite Behbahani or Tan in any rejection and did not specifically address either reference in any correspondence, other than initialing them in an IDS. Nor did the Examiner address Leete. For factors (e) and (f), we find that Petitioner has explained sufficiently how the Examiner allegedly erred in evaluating Behbahani and Tan, by pointing to the proposed grounds, which detail how the challenged claims read on these references over the combination of Behbahani, Leete, and Tan. See Pet. 18–68. We find this sufficient to identify the “specific teachings” that were overlooked, as contemplated in Advanced Bionics, and we agree with Petitioner that the facts and discussion of Behbahani, Leete, and Tan presented in the Petition warrant reconsideration of the challenged claims in view of those references. We thus find that Petitioner has satisfied the second part of the Advanced Bionics framework by demonstrating that the Examiner may have erred by not appreciating that Behbahani, Leete, and Tan teach or suggest the features of the claimed invention. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,129,825 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 25, 2024 · IPR2024-00820 · APJ Aaron W Moore · IPR · Institution
The Board instituted inter partes review of claims 1–3, 5–6, and 8–11 on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable over Behbahani and Tan.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“To the extent Patent Owner is suggesting that considerations such as those set forth in General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential Section II.B.4.i) support denial of institution, we are unpersuaded because the other proceedings to which Patent Owner refers did not involve the ’210 patent. We thus do not exercise our discretion to deny institution under 35” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“First, we find that Becton, Dickinson factor (c)––the extent to which the asserted art was evaluated during examination––does not favor denying the petition under Section 325(d) because the Examiner did not cite Behbahani or Tan in any rejection and did not specifically address either reference in any correspondence, other than initialing them in an IDS. For factors (e) and (f), we find that Petitioner has explained sufficiently how the Examiner allegedly erred in evaluating Behbahani and Tan, by pointing to the Proposed Grounds, which detail how the challenged claims read on these references. See Pet. 17–67. We find this sufficient to identify the “specific teachings” that were overlooked, as contemplated in Advanced Bionics, and we agree with Petitioner that the facts and discussion of Behbahani or Tan presented in the Petition warrant reconsideration of the challenged claims in view of those references. We thus find that Petitioner has satisfied step 2 of the Advanced Bionics framework by demonstrating that the Examiner may have erred by not appreciating that Behbahani and Tan teach or suggest the features of the claimed invention. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Summary for Claim 1 For the foregoing reasons, we are persuaded that Petitioner’s cited evidence and reasoning shows a reasonable likelihood that Petitioner would prevail in its contentions regarding claim 1.5 5. Remaining Claims At this stage, Patent Owner does not separately challenge Petitioner’s contentions as to claims 2–3, 5–6, and 8–11. Because we have preliminarily determined that Petitioner has shown a reasonable likelihood of prevailing in its challenge to at least one claim of the ’210 patent, we institute inter partes review on all claims and grounds. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all” slip op. at 34
- Skill levelSkill level patent owner adoptedDecided for patent owner
“a master’s degree in electrical engineering or the equivalent, and two or more years of experience with wireless communications devices” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 10 (citing Ex. 1003 ¶¶ 38–40). Patent Owner contends that “a person of ordinary skill in the art . . . would have at least a Bachelor’s Degree in Electrical or Electronics Engineering, along with ‘approximately five years of relevant experience in the design of transceiver architecture, RF systems and components, and analog and mixed signal circuits, as well as experience in control algorithms for such system and familiarity with wireless standards’” and that “[a]dditional education could substitute for experience and vice versa.” Prelim. Resp. 27 (citing Ex. 2005 ¶ 50). Petitioner thus proposes a Master’s degree with two years of experience, while Patent Owner proposes a Bachelor’s degree with five years of experience. Given that both parties indicate that more education could substitute for less experience and vice versa, we do not see a material difference in the proposals, and thus adopt Patent Owner’s version for the purposes of this decision. If the parties believe that the choice of one formulation over the other would make a difference in the patentability analysis, they may address that during trial.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,638,210 - PTAB · Oct 23, 2024 · IPR2024-00679 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted review of claims 28, 38, 39, 41–43, 53, 56–59, 61–63, and 65–68 on all asserted grounds after finding a reasonable likelihood that claim 28 was obvious over Krantz and Herrmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of relevant experience in networking and network security, and related fields.” Pet. 4. Petitioner also asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cybersecurity.” Prelim. Resp. 1. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. On the present record, neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’484 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Based on the present record, we agree with Patent Owner that the recited “reconfiguring the communication port” at least encompasses changing the association between the input port and output port of the access point. This is supported by the specification of the ’484 patent, which states: “Access Control 320 is configured to send commands to Switch Logic 317 in order to reconfigure members of Ports 305A-305G. This reconfiguration includes modifying the association of members of Ports 305A-305G with different members of VLANs 310A-310D.” Ex. 1501, 9:21–25; see also id. at 8:16–21 (similar disclosure with respect to “configuring and reconfiguring”). Notwithstanding, based on the present record, we do not agree with Patent Owner that “reconfiguring the communication port” is limited to changing the connection between the input port and the output port of the access point. Instead, the ’484 patent makes clear that reconfiguration is merely “typically,” not necessarily, of this type. Ex. 1501, 3:20–25. For this reason, we need not and do not adopt Patent Owner’s proposed construction at this juncture.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the present record, we find Petitioner’s rationale sufficient for institution. Petitioner points to Krantz’s alleged goals of security and automation. Pet. 19. Petitioner (id.) and Dr. Houh (Ex. 1503 ¶ 64) both cite paragraph 19 of Krantz, which states that “[i]f credentials do not authorize full access . . . the server can respond by sending a notification . . . includ[ing] conditions (e.g., signup, renewal etc.) a user must satisfy to become authorized for []full access to resources.” Ex. 1505 ¶ 19. We are persuaded preliminarily that an ordinarily skilled artisan considering Krantz’s teachings of such conditions for full access would have had reason to apply Herrmann’s technique for checking a client’s antivirus security policy in the manner suggested by Petitioner. See, e.g., Ex. 1503 ¶ 64; Ex. 1506 ¶ 68. Krantz’s express teaching of conditions for a client to fully access a network (Ex. 1505 ¶ 19) also undermines Patent Owner’s argument about impermissible hindsight and Patent Owner’s suggestion that Krantz is limited to user authentication. Finally, we are persuaded that Petitioner has shown sufficiently, for purposes of instituting review, that an ordinarily skilled artisan would have expected success in making the combination because it would only require software modifications to Krantz’s system. See, e.g., Ex. 1503 ¶ 64.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,523,484 - PTAB · Oct 23, 2024 · IPR2024-00675 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–6, 11–13, 15–19, and 23–25 on all asserted grounds, finding a reasonable likelihood of success at least on obviousness over Krantz and Herrmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“e) Conclusion Regarding Claim 1 Based on the current record, we determine that there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Krantz and Herrmann. Accordingly, we institute inter partes review with respect to all grounds asserted in the Petition. 5. Claims 2–6, 11–13, 15–19, and 23–25 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’484 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 22
- Parallel petitionsDecided for petitioner
“III. PARALLEL PETITIONS As noted above, Petitioner challenges the ’484 patent both in this proceeding and in IPR2024-00679. Petitioner argues that we should institute review in both proceedings because “the analysis of all 33 challenged claims . . . of the 484 Patent could not reasonably fit within the word limit for a single petition.” Paper 4, 2. Petitioner notes further that “addressing different sets of independent claims in each petition was most efficient given the differences between independent claim 1 (Petition 1 - IPR2024-00675) and independent claims 28, 41, 56, and 57 (Petition 2 - IPR2024-00679).” Id. Patent Owner does not argue that we should deny institution either in this proceeding or in IPR2024-00679 due to Petitioner’s having filed parallel petitions challenging the ’484 patent. Prelim. Resp. 1–44. Given Patent Owner’s acquiescence and Petitioner’s arguments, we do not exercise our discretion to deny institution due to the parallel petitions.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“in networking operating systems and cybersecurity.” Prelim. Resp. 1. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. On the present record, neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’484 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the present record, we agree with Patent Owner that the recited “reconfigur[ing] the communication device” at least encompasses changing the association between the input port and output port of the access point. This is supported by the specification of the ’484 patent, which states: “Access Control 320 is configured to send commands to Switch Logic 317 in order to reconfigure members of Ports 305A-305G. This reconfiguration includes modifying the association of members of Ports 305A-305G with different members of VLANs 310A-310D.” Ex. 1501, 9:21–25; see also id. at 8:16–21 (similar disclosure with respect to “configuring and reconfiguring”). Notwithstanding, based on the present record, we do not agree with Patent Owner that “reconfigur[ing] the communication device” is limited to changing the connection between the input port and the output port of the access point. Instead, the ’484 patent makes clear that reconfiguration is merely “typically,” not necessarily, of this type. Ex. 1501, 3:20–25. For this reason, we need not and do not adopt Patent Owner’s proposed construction at this juncture. Based on the present record, we need not expressly construe any other claim terms.3 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))).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,523,484 - PTAB · Oct 23, 2024 · IPR2024-00676 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of claims 1–4, 7–10, 14, 16, 22–23, 25, and 27 on the asserted obviousness ground based on Krantz and Herrmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“combination of Krantz and Herrmann (see Pet 19–99) and find that, on the record as it now stands, Petitioner has established a reasonable likelihood that it will prevail with respect to at least one claim. As described above,” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of relevant experience in networking and network security, and related fields.” Pet. 4. Petitioner also asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“combination of Krantz and Herrmann (see Pet 19–99) and find that, on the record as it now stands, Petitioner has established a reasonable likelihood that it will prevail with respect to at least one claim. As described above,” slip op. at 16
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“qualifies as prior art to the ’450 patent “because the InfoExpress inventors conceived of the invention [of the ’450 patent] before the effective dates [of Krantz and Herrmann] and exercised reasonably continuous diligence in reducing the claimed inventions to practice.” Prelim. Resp. 33–45. Petitioner disagrees that the present record sufficiently shows that the inventors of the ’450 patent conceived of the invention before the effective date of Krantz or Herrmann and that the inventors exercised reasonably continuous diligence in reducing that invention to practice. See Prelim. Reply 1–7. In particular, Petitioner raises questions with respect to the independence of Patent Owner’s evidence from the inventor testimony that evidence is intended to corroborate, as well as with respect to whether the evidence offered by Patent Owner sufficiently shows conception, reduction to practice, and reasonably continuous diligence. Id. We do not think the information of record is sufficient to antedate Krantz and Herrmann such that we should deny institution of inter partes review on that basis. First, Patent Owner’s arguments rely on the testimony of inventor Stacey C. Lum, who has not yet been subject to cross-examination. See Prelim. Resp. 35–45 (citing Ex. 2003). Second, Petitioner identifies several issues where further development of the record may be helpful. For example, Patent Owner’s asserted date of conception is associated with the date of an engineering specification included in the record as Exhibit 2011. See Prelim. Resp. 35–36 (citing Ex. 2003 ¶ 12; Ex. 2011; Ex. 2012). We agree with Petitioner (see Prelim. Reply 4–5) that it is unclear, based on the present record, whether Exhibit 2011 corroborates the testimony supporting Patent Owner’s conception date given that the present record does not establish the author of Exhibit 2011. See Ex. 2003 ¶ 22 (inventor Stacey C. Lum testifying only that “InfoExpress personnel drafted EX2011”). These and other issues relating to the prior-art status of Krantz and Herrmann are, in our view, best left for trial after full development of the record.3” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,677,450 - PTAB · Oct 21, 2024 · IPR2024-00697 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–5 on all petitioned grounds, finding a reasonable likelihood that Apple would prevail on at least one claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the degree. Pet. 4 (citing Ex. 1003 ¶ 30–31). Patent Owner contends a POSITA would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience. Prelim. Resp. 3. Additional relevant industry experience may compensate for lack of formal education or vice versa. Id. Patent Owner further contends this is similar to Petitioner’s POSITA contention. Id. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’767 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner contends “the preamble of claim 1 is limiting based on Petitioner’s assertion in the District Court and based on the District Court’s order.” Prelim. Resp. 6. Patent Owner also contends “the District Court agreed with Patent Owner and ordered that the ‘control component’ term has its plain and ordinary meaning and is not subject to means-plus-function treatment.” Id. Patent Owner finally contends “there is no need for the Board to make claim construction determinations about Section 112, Paragraph 6 to decide institution.” Id. As to the preamble, we agree, for purposes of this decision, that claim 1’s preamble is limiting. The parties agreed that this preamble is limiting in the District Court case. Dist. Ct. Const. 10.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed board ownTerm construed patent owner constructionMixed
“As to the “driving component” recitation, the parties agreed to a construction in the District Court case. Dist. Ct. Constr. 11. For purposes of this Decision, we adopt the parties’ agreed construction. Pet. 6. The parties agreed the “driving component” term is a means-plus-function term. Dist. Ct. Constr. 11. The function is “drives the moveable component in each of two opposite directions.” Id. Corresponding structure includes “coils 420, 514, 626, 1202, 1204, 1302, 1304, 1412, 1414, 1510 (also shown in Figs. 16–17); electromagnets shown in Figs. 10–11; and equivalents thereof.” Id. As to “control component,” the District Court held that the term is not a means-plus-function term because the claim defines the term structurally by requiring a “microprocessor,” “control program,” and “switch.” Dist. Ct. Constr. 17–22. For purposes of this Decision, we agree with the District Court that means-plus-function treatment does not apply to the “control component” recitation because structure in claim 1 defines the component. Given the context provided by claim 1 as a whole, a person having ordinary skill in the art would have understood the “control component” as identifying a specific structure (requiring a microprocessor, control program, and switch as claim 1 recites). See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (holding that the means-plus-function inquiry depends on “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for a structure”).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“With respect to other claim terms, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim based on the ordinary and customary meaning of these terms. Thus, no other claim terms require express construction for purposes of this Decision. See, e.g., 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 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,093,767 - PTAB · Oct 21, 2024 · IPR2024-00698 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–5 under all six asserted § 103 grounds, finding a reasonable likelihood that Apple would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–5 of the ’767 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On June 21, 2022, the Director of the U.S. Patent and Trademark Office (“USPTO”) issued a Memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“Memorandum”),7 which states, among other things, that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Memorandum 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). In a September 25, 2024, submission, Petitioner has stated that “[Petitioner] will not pursue [in the related litigation] the same invalidity grounds raised (or any grounds that could have been raised) [in this IPR].” Ex. 1048 (citing Sotera, IPR2020-01019, Paper 12). In view of this stipulation, we do not exercise discretion to deny institution.” slip op. at 12
- Parallel petitionsDecided for petitioner
“Second, we determine both petitions, at this stage, to be strong. Patent Owner has not refuted the obviousness merits of either Petition, and, at this stage, we do not independently identify a flaw in Petitioner’s analysis. Third, we agree with Petitioner that it could not have reasonably addressed both the Shahoian and Izumi theories in one petition. Petitioner’s Notice 4. At the time Petitioner filed its petitions, Petitioner was reasonably uncertain as to whether or not the term “control component” is a means-plus-function term. If means-plus-function, Petitioner was reasonable in taking extra effort to address the term. Petitioner did not have space in one Petition to address both a means-plus-function possibility while also addressing both Shahoian and Izumi theories. Fourth, granting both Petitions will not place an undue burden on Patent Owner. As Patent Owner emphasizes, only five claims are at issue. Resp. 19–20. Moreover, we indicate, in this decision, our preliminary agreement with the U.S. District Court for the Western District of Texas that “control component” should not be construed as means-plus-function. See Section III(C), supra. Based on this indication, we hope that the parties may be able to narrow the focus of this proceeding at trial. We determine that these four reasons, along with all other circumstances specific to this particular matter, cumulatively weigh against exercising discretion to deny institution for this particular matter.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSITA) would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the degree. Pet. 4 (citing Ex. 1003 ¶ 30–31). Patent Owner contends a POSITA would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience. Prelim Resp. 3. Additional relevant industry experience may compensate for lack of formal education or vice versa. Id. Patent Owner further contends this is similar to Petitioner’s POSITA contention. Id. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’767 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,093,767 - Apple Inc. v. Resonant Systems, Inc.InstitutedPTAB · Oct 15, 2024 · IPR2024-00807 · APJ Karl D Easthom · IPR · Institution
The Board instituted review of claims 2 and 3 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Office (“USPTO”) issued a Memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“Memorandum”),8 which states, among other things, that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Memorandum 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). In a September 18, 2024 letter, Petitioner states that “Apple hereby stipulates that if the PTAB authorizes petitioner to enter this stipulation into evidence in IPR2024-00807 and institutes the proceeding, Apple will not pursue in the above-captioned litigation the same invalidity grounds raised (or any grounds that could have been raised) in IPR2024-00807 for any claim of the patent.” Ex. 1048 (citing Sotera, IPR2020-01019, Paper 12). 8 The Memorandum is available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Applying the guidance provided in the Memorandum, we decline to exercise our discretion to deny institution in this proceeding under Fintiv because Petitioner submitted a Sotera stipulation.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless 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.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to all remaining challenged claims, claims 2 and 3, and the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s expert declarant contends that a person of ordinary skill in the art (POSITA), would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the advanced-level degree. Ex. 1003 ¶ 30. Patent Owner offers “a similar level of ordinary skill in the art.” Prelim. Resp. 4. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’337 patent specification.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“For purposes of this proceeding, the parties agree that independent claim 2 includes means-plus-function limitations under 35 U.S.C. § 112 ¶ 6.9 Pet. 2–6; Prelim. Resp. 7–14. An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the 9 As indicated above, statutory citations are to the pre-AIA version of 35 U.S.C. § 112. See supra note 1. recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 35 U.S.C. § 112 ¶ 6. In particular, the parties agree that the “driving component” and “control component” requirements of independent claim 2 are means-plus-function limitations. Pet. 2–6; Prelim. Resp. 7–14. Construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6 involves two steps: 1) identifying the claimed function and 2) identifying in the specification the corresponding structure that performs the claimed function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,860,337
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.