- PTAB · May 12, 2023 · IPR2023-00094 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–22 and 24–40 over all asserted grounds, finding a reasonable likelihood that petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Upon consideration of the Petition and the evidence of record, we conclude that the information presented shows a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we authorize an inter partes review to be instituted as to the Challenged Claims of the ’266 patent on the grounds raised in the Petition. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far. This is not a final decision as to patentability of claims for which inter partes review is instituted. Any final decision will be based on the record, as fully developed during trial.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states in the Petition that it “appl[ies] the ordinary and customary meaning of the claim terms as understood by a [person of ordinary skill in the art].” Pet. 6. Petitioner contends that the Challenged Claims include sequences of terms separated by the disjunctive “or,” which designates that the sequences describe alternatives. Id. (citing SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199–1200 (Fed. Cir. 2013); Schumer v. Lab. Comput. Sys., Inc., 308 F.3d 1304, 1311 (Fed. Cir. 2002)). Petitioner also contends that it “need only show the prior art discloses one of the recited alternatives for each disjunctive sequence.” Id. at 7 (citing Fresenius USA, Inc. v. Baxter Intern., Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009)). Patent Owner, as noted above, did not file a Preliminary Response in this proceeding and, therefore, has not proposed constructions for any claim term. For purposes of this Decision, given that no claim terms are in controversy on the current record, we find that no express claim construction is necessary. See Vivid Techs., Inc., 200 F.3d at 803.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner alleges that a person of ordinary skill in the art would have had certain motivations to implement McNutt’s disclosure of sending position information in a betting message with Garahi’s system. Id. at 25–26 (citing Ex. 1003 ¶¶ 156–160). For example, Petitioner contends that a person of ordinary skill in the art “would have understood that if the user[] is attempting to create a new wager using a mobile device, such as a cell phone, the user’s location may have changed to a location that prohibits wagering,” and “[v]erifying the user’s location when the user attempts to create a new wager was a well-known and predictable way to ensure that the wagering system is complying with local gaming regulations.” Id. (citing Ex. 1003 ¶ 160). Petitioner also contends that a person of ordinary skill in the art would have had a reasonable expectation of success in sending position information with the wagering data transmitted in Garahi’s system. Id. at 26 (citing Ex. 1003 ¶ 161). At this stage of the proceeding, we find Petitioner’s arguments and evidence regarding limitation 1(d) sufficient.” slip op. at 25
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,147,266 - PTAB · May 12, 2023 · IPR2023-00093 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–20 and all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
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 and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1‒20 based on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Electrical Engineering or Computer Engineering or equivalent, and at least two years of experience in the design and development of video game-related hardware and software.” Pet. 4. Mr. Kitchen’s testimony supports Petitioner’s position regarding the level of skill in the art. Ex. 1003 ¶ 45. At this stage of the proceeding, Petitioner’s position regarding the level of skill is undisputed. For purposes of deciding whether Petitioner has demonstrated a reasonable likelihood of prevailing, we adopt Petitioner’s definition of a person of ordinary skill in the art, which we find consistent with the ’341 patent and the asserted prior art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“using the same standard used in federal district court, including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2020). According to the applicable standard, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (citations omitted). Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. America Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,043,341 - PTAB · May 11, 2023 · IPR2023-00095 · APJ Amee A Shah · IPR · Institution
The Board instituted IPR on claims 1–13 and 16–20 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); see also 37 C.F.R. § 42.108(a) (“When instituting . . . 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.”). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a) (2022). Considering the Petition and the evidence of record, for the reasons set forth below, we determine that Petitioner has demonstrated that there is a reasonable likelihood that at least one of the Challenged Claims is unpatentable. Accordingly, we institute an inter partes review of all challenged claims and on all grounds asserted in the Petition. PGS” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSITA,” “PHOSITA,” or “skilled artisan”) “would be a person having a Bachelor of Science Degree in Electrical Engineering or Computer Engineering or equivalent, and at least two years of experience in the design and development of video game-related hardware and software.” Pet. 4 (citing Ex. 1003 ¶¶ 45–46). At this stage, Patent Owner, having declined to file a preliminary response, has not disputed Petitioner’s proposed level of ordinary skill. Thus, for purposes of this Decision, we find that the ’755 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 ’755 patent is consistent with the level of skill proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, neither party has identified any indication that the ’755 patent uses the term differently than it would ordinarily be used or any indication in the prosecution history that “compel[s] a limitation of the claim language different from its plain meaning” as alternatives. Schumer v. Lab. Comput. Sys., Inc., 308 F.3d 1304, 1311, 1314 (Fed. Cir. 2002). Given that no claim terms are in controversy, for purposes of this Decision, we need not formally construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on our review and consideration of Petitioner’s arguments and evidence, we find that at this stage and based on the record, Petitioner has shown sufficiently how it contends the asserted combination of Garahi and McNutt teaches every limitation of claim 1 and why one of ordinary skill in the art would have had sufficient reason to combine Garahi and McNutt, with a reasonable expectation of success in doing so, to support institution.” slip op. at 40
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,255,755 - SNF S.A. v. Chevron U.S.A., Inc.InstitutedPTAB · Apr 19, 2023 · IPR2022-01534 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR on claims 1–25 and all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Accordingly, based on the evidence before us, we determine that Petitioner has established that there is a reasonable likelihood that the Petitioner will prevail with respect to at least independent claims 1, 24, and 25. “The ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide, 53 (Nov. 2019).” slip op. at 25
- Skill levelSkill level board ownDecided for patent owner
“a POSITA, and thus the Board need not resolve the precise required level of skill in order to deny” the Petition. Prelim. Resp. 6. According to Patent Owner, the emphasized terms in the chart above for Petitioner’s proposed level of skill make Petitioner’s proposal “grammatically erroneous and confusing.” Id. We agree. The word “either” in Petitioner’s proposed level of skill is confusing. Patent Owner also criticizes Dr. Barati’s proposed level of skill because it “makes no mention of ‘synthesis’.” Id. at 7. Patent Owner does not provide argument or evidence as to why “synthesis” is critical or necessary in the level of skill. Patent Owner does not propose a level of skill. Id.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citations omitted)). We determine that a specific construction of the claims is not necessary to reach a decision on whether to institute an inter partes review of the challenged claims.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInstituted
“Owner asserts that “none of the grounds of unpatentability properly address the claim requirement that the ‘inverted polymer solution has a filter ratio of 1.5 or less at 15 psi using a 1.2 µm filter’ (the ‘filter ratio limitation’).” Prelim. Resp. 9. Patent Owner also asserts that the “[t]he Petition does not point to any disclosure in Li that expressly meets this requirement. Id. (emphasis added). Patent Owner and Petitioner agree on this point. See, e.g., Pet. 32 (“Li expressly describes IPSs having FRs that were calculated using a different formula than the ’320 patent”). Additionally, Patent Owner asserts correctly that “Petitioner relies on Dr. Barati’s experiment” to establish that Li Products I, III, and VII, if prepared and tested using the standard procedure for determining the filter ratio described in the ’320 patent, provide “an alleged inherent disclosure” of the claimed filter ratio. Prelim. Resp. 10. Patent Owner, and the Declaration testimony (Ex. 2001) of its proffered expert, Dr. Gary Pope,18 take issue with the procedures and results of Dr. Barati’s testing. They question whether he performed his experiments once or multiple times, and, if the latter, they question whether the repeated tests produced consistent results. Prelim. Resp. 12 (citing Ex. 2001 ¶ 26 (Dr. Pope’s testimony stating that Dr. Barati “does not indicate whether his results reflect all of the results he obtained”)).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,626,320 - Meridian Wildlife Services LLC v. Safe Haven Wildlife Removal And Property Management Experts LLCInstitution deniedPTAB · Jan 11, 2023 · IPR2022-01253 · APJ Michael L Woods · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–16 were obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, for the reasons below, we determine that the Petition fails to show a reasonable likelihood that Petitioner would prevail with respect to any of the challenged claims. We thus deny institution of inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“As explained in this Decision, we decline to institute review based on the merits of Petitioner’s challenges. Accordingly, we need not and do not determine whether it would be appropriate to discretionarily deny institution under § 314(a) or § 325(d). B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSITA,” “POSA,” or “skilled artisan” ) “would have had (i) at least a bachelor’s degree in the study of wildlife management or 5 At the time this Decision was in the final stages of panel review, the parties e-mailed the Board informing the Board that Patent Owner withdrew its argument under Fintiv. See Ex. 3001. We need not and do not address, however, whether this e-mail effectuated withdrawal of Patent Owner’s Fintiv argument.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Patent Owner also argues that we should exercise our discretion under 35 U.S.C. § 325(d) and deny institution based on prior prosecution of the ’374 patent. See Prelim. Resp. 23–25. As explained in this Decision, we decline to institute review based on the merits of Petitioner’s challenges. Accordingly, we need not and do not determine whether it would be appropriate to discretionarily deny institution under § 314(a) or § 325(d).” slip op. at 8
- Skill levelSkill level board ownOther
“We decline to adopt either party’s proposed definition. We are not persuaded by Petitioner’s definition that a skilled artisan who lacked a formal bachelor’s degree would fail to qualify as a POSITA if that artisan had several years of experience trapping flying animals. See Pet. 6. Further, we are not persuaded by Patent Owner’s definition that a skilled artisan with an advanced degree in wildlife management would fail to qualify as a POSITA simply because his or her experience fell short of “2 years working with animal capture net systems.” See Prelim. Resp. 6–7. For purposes of this Decision, we adopt a hybrid of Petitioner’s and Patent Owner’s proposed definition of a POSITA. We find that a POSITA would have had at least either (i) at least a bachelor’s degree in the study of wildlife management or wildlife ecology or (ii) two or more years of field experience trapping flying animals. We find that this level of ordinary skill in the art is consistent with the ’374 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,251,374 - Meridian Wildlife Service, LLC v. Safe Haven Wildlife Removal And Property Management Experts, LLCInstitution deniedPTAB · Jan 10, 2023 · IPR2022-01340 · APJ Amee A Shah · IPR · Institution
The Board denied institution on all challenged claims 1–8 because Petitioner did not show a reasonable likelihood that any claim was obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. 35 U.S.C. § 314. That burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“III. ANALYSIS A. DISCRETION TO DENY UNDER 35 U.S.C. § 325(D) Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 325(d) and deny institution because Petitioner presents the same 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103, effective March 16, 2013. Because the’683patent has an effective filing date after the effective date of the applicable AIA amendments, we refer to the AIA version of § 103. 3 Brugh, U.S. Patent Application Publication No. 2017/0238524, published Aug. 24, 2017 (Ex. 1005, “Brugh”), issued as US Patent No. 9,943,073 B2 on Apr. 17, 2018. 4 ECOLOGICAL AND BEHAVIORAL METHOD FOR THE STUDY OF BATS (Thomas H. Kunz, 1998). EX. 1010. 5 Bird Barrier, Mist Kit Assembly and Use, YouTube (Aug. 19, 2014). Ex. 1009 (“Bird Barrier Video”). 6 Petitioner also submits a screenshot from a Bird Barrier webpage advertising “mist nets” (Ex. 1011), a transcript from the Bird Barrier Video (Ex. 1014), and a “Bird Barrier Product Catalog 2013” (Ex. 1015). or substantially the same prior art or arguments that were previously presented to the Office during the prior prosecution of the ’683 patent. Prelim. Resp. 21–23. As explained in this Decision, we decline to institute review based on the merits of Petitioner’s challenges. Accordingly, we need not and do not determine whether it would be appropriate to discretionarily deny institution under § 325(d).” slip op. at 11
- Skill levelSkill level board ownOther
“We decline to adopt either party’s proposed definition. The evidence does not support Petitioner’s proposed definition that a skilled artisan who lacked a formal bachelor’s degree would fail to qualify as a person of ordinary skill in the art if that artisan had several years of experience trapping flying animals. See Pet. 7. Further, the evidence does not support Patent Owner’s proposed definition that a skilled artisan with an advanced degree in wildlife management would fail to qualify as a POSITA simply because his or her experience fell short of “2 years working with animal capture net systems.” See Prelim. Resp. 13. For purposes of this Decision, we adopt a hybrid of Petitioner’s and Patent Owner’s proposed definitions of a POSITA. We find that a POSITA would have had at least either (i) at least a bachelor’s degree in the study of wildlife management or wildlife ecology or (ii) two or more years of field experience trapping flying animals. We find that this level of ordinary skill in the art is consistent with the ’683 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Figure 2 of the ’683 patent (as shown above in Section II.C) depicts a preferred net set up depicting two perimeter nets 12 “set up around the perimeter of the enclosure 36” and three trapping nets 14, one located proximate to the perimeter and two located in the interior. Ex. 1003, 3:56–57, 4:29–42. Although the ’683 patent does not provide a specific definition for a “perimeter net” and describes that the “perimeter net” is only “preferably . . . set up around the perimeter of the enclosure” (id. at 4:29–30), the term “perimeter” qualifies the term “net” and connotes structure, namely, the location of the “net” in relation to the “structure” recited in the preamble of independent claim 1, i.e., the enclosure. Here, the term “perimeter” before net connotes a relationship between the “structure” of the preamble and the location of the net. In other words, “perimeter” is a meaningful modifier for the location of the net as being at or proximate to the perimeter of the enclosure, i.e., the “structure” recited in the preamble of claim 1. Thus, we agree with Patent Owner and determine that the term “perimeter net” is a net located at or proximate to the perimeter.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,064,683 - Meridian Wildlife Service, LLC v. Safe Haven Wildlife Removal And Property Management Experts, LLCInstitution deniedPTAB · Jan 10, 2023 · IPR2022-01254 · APJ Amee A Shah · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–17 were obvious over Brugh, Brugh and Kunz, or Bird Barrier Video and Kunz.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“LEGAL STANDARDS B. In an inter partes review, the petitioner has the burden of showing there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. 35 U.S.C. § 314. That burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“III. ANALYSIS A. DISCRETION TO DENY UNDER 35 U.S.C. §§ 314(A) AND 325(D) Patent Owner argues that we should exercise discretion under 35 U.S.C. § 314(a) and deny institution under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). Prelim. Resp. 25–26. Patent Owner also argues that we should exercise our discretion under 35 U.S.C. § 325(d) and deny institution based on prior prosecution of the ’108 patent. Prelim. Resp. 23–25. As explained in this Decision, we decline to institute review based on the merits of Petitioner’s challenges. Accordingly, we need not and do not determine whether it would be appropriate to discretionarily deny institution under § 314(a) or § 325(d).” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Patent Owner also argues that we should exercise our discretion under 35 U.S.C. § 325(d) and deny institution based on prior prosecution of the ’108 patent. Prelim. Resp. 23–25. As explained in this Decision, we decline to institute review based on the merits of Petitioner’s challenges. Accordingly, we need not and do not determine whether it would be appropriate to discretionarily deny institution under § 314(a) or § 325(d).” slip op. at 12
- Skill levelSkill level board ownOther
“We decline to adopt either party’s proposed definition. The evidence does not support Petitioner’s proposed definition that a skilled artisan who lacked a formal bachelor’s degree would fail to qualify as a person of ordinary skill in the art if that artisan had several years of experience trapping flying animals. See Pet. 6. Further, the evidence does not support Patent Owner’s proposed definition that a skilled artisan with an advanced degree in wildlife management would fail to qualify as a POSITA simply because his or her experience fell short of “2 years working with animal capture net systems.” See Prelim. Resp. 14. For purposes of this Decision, we adopt a hybrid of Petitioner’s and Patent Owner’s proposed definitions of a POSITA. We find that a POSITA would have had at least either (i) at least a bachelor’s degree in the study of wildlife management or wildlife ecology or (ii) two or more years of field experience trapping flying animals. We find that this level of ordinary skill in the art is consistent with the ’108 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,729,108 - PTAB · Jan 9, 2023 · IPR2022-01142 · APJ Ryan H Flax · IPR · Institution
Instituted IPR of claims 1–14 on all asserted grounds: anticipation by or obviousness over Roy or Chang, and obviousness over Simonoff and Naef.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions, we conclude Petitioner demonstrates a reasonable likelihood it would prevail in showing that claims of the ’124 patent are unpatentable under the presented grounds. Therefore, we institute inter partes review of all challenged claims (1–14) under the grounds raised in the Petition, pursuant to 35 U.S.C. § 314. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 7 (citing Ex. 1003 ¶¶ 28–30).9 Patent Owner states that it “adopt[s] Petitioner’s proposed level of ordinary skill in the art because it comports with the technology and claims of the ’124 Patent as well as the asserted prior art.” Prelim. Resp. 5. Patent Owner adds that “[t]he expert witnesses of the parties are persons of (at least) ordinary skill in the art of the ’124 Patent and its claims.” Id. We accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’124 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[]” evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). B.” slip op. at 17
- Expert testimonyPetitioner expert creditedOther
“In re Merck for this point). And, further, when considering obviousness, the prior art must be considered for all of its teachings, including unpreferred embodiments. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). With this precedent in mind, we restate that Simonoff’s disclosure appears to fully include Naef’s disclosure. Ex. 1006, 3:24–29. Further, both references apparently identify the existence and general functionality of central-server systems for remote computer collaboration where the server is in charge of updating all networked computers’ displays, even if Naef’s disclosed invention is not such a system, but instead puts a client computer in control. See generally Ex. 1006; Ex. 1007. Finally, Petitioner’s witness, Dr. Terveen, testifies that the person of ordinary skill in the art would have had good reason to “improve Simonoff’s similar collaboration system” by having its server return update/annotation messages back to the source client along with the other clients during its “multi-casting,” as suggested by Naef, because this would “avoid[] conflicts between user inputs and [would] allow[] the source client to see the edits as the other clients would see them. Ex. 1003 ¶73 (citing Ex. 1015, 12:56–67; Ex. 1008, 45; Ex. 1006, 24:22–27). At this stage of the proceedings, we credit Dr. Terveen’s testimony and find Petitioner’s position reasonable. We are not persuaded by Patent Owner’s arguments or evidence at this stage (we are not entirely sure what qualifies Mr. Sunatori’s as a reliable witness at this point) so as to dissuade us from instituting trial on this ground.” slip op. at 52
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Owner’s positions on claim construction, both identifying that claim construction is unnecessary and then proposing the above-indicated claim construction. Prelim. Reply 1. Petitioner argues that neither the disputed claim language itself nor the Specification supports Patent Owner’s proposed claim construction because the claims simply state “that the output message includes information defining the content to be shared, not the input message itself or a copy of it.” Id. Petitioner cites two portions of the ’124 patent’s written description that contradict Patent Owner’s narrow definition of the claim language––the first indicating that input messages and output messages may be in different formats and have different data and that the output messages can be generated once the input messages are read (Ex. 1001, 14:27–33), and the second indicating that the output messages could combine multiple input messages, and that output messages represent input messages that themselves represent computer input such as a mouse drag (id.at 33:1–9). We agree with Petitioner that the record does not support narrowing the meaning of the disputed claim language as argued by Patent Owner and, based on the present record, we do not expressly construe this claim language.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,963,124
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.