• Apple Inc. v. Masimo CorporationInstituted
  PTAB · Jul 9, 2024 · IPR2024-00243 · APJ Richard H Marschall · IPR · Institution

  The Board instituted IPR on claims 1–25 on all asserted obviousness grounds, finding a reasonable likelihood that Apple would prevail on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “based on the Delaware Litigation. Prelim. Resp. 16–33; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there is a parallel district court proceeding). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum, issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”).6 Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like that in Sotera, i.e., a stipulation to “not pursue for the instituted claims, in [the Delaware Litigation], the same grounds as in the IPR2024-00243 petition or any grounds that could have reasonably been raised in that Petition” (Ex. 1078, 1), we do not discretionarily deny institution under Fintiv.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “At this point in the proceeding, we do not find it necessary, to expressly construe the term “opening” in order to reach a decision on institution and, under the circumstances, we do not find a basis for denying institution in Petitioner’s application of the claim language requiring an “opening.” But see infra Section F.3.b (identifying a potential issue that may benefit from record development on claim construction). Neither party offers an express construction of the term “opening” to the prior art. Pet. 5; Prelim. Resp. 12–15 (arguing inconsistency but declining to offer an express claim construction). On the present record, we are persuaded that the plain and ordinary meaning of “opening” encompasses Iwamiya’s optical filter 17 as mounted within light shielding frame 18. See Pet. 23–24; see infra at Section F.3.b. This is consistent with Patent Owner’s position, in the Delaware Litigation, that a solid material can provide an opening, and with the finding of the panel in the Final Written Decision in IPR2022-01291. Ex. 2035, 26 (Final Written Decision in IPR2022-01291); Ex. 2037 ¶¶ 463–465 (report by Petitioner’s expert, Dr. Sarrafzadeh in the Delaware Litigation, regarding non-infringement, reproducing an image that Petitioner represents is from Patent Owner’s expert, Dr. Madisetti, in which Dr. Madisetti labeled transparent material an “Opening in Dark-Colored Coating,” and in which Dr. Sarrafzadeh asserts that “every space that Dr. Madisetti . . . identified is” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner

    “prosecution history of a parent application, this language should be construed to exclude “arrangements of two or three detectors.” Prelim. Resp. 15 (citing Ex. 2057, 322 (prosecution history of U.S. Patent Application No. 15/195,199 (“the ’199 Application”))). Patent Owner notes that the panel in IPR2022-01291 adopted this construction for “a nearly identical limitation in Claim 15 of the related ’745 Patent.” Id. at 15–16 (citing Ex. 2035, 109–112). On this preliminary record, we agree with Patent Owner that, due to statements made during prosecution of a parent application, this claim language should be construed to exclude arrangements of two or three detectors. During prosecution of the ’199 Application, application claim 1 was amended to recite: a “tissue measurement site . . . having an at least partially circular shape bounded by a light block”; the light block comprising “an annular ring having a circular shape”; and a “plurality of detectors . . . arranged in an array having a spatial configuration corresponding to the shape of the irradiated portion of the tissue measurement site.” Ex. 2057, 311. Patent Owner argued to the Examiner that the “array” limitation had support in the ’199 Application specification because: The ordinary meaning of the claim term “correspond” means to “have a close similarity; match or agree almost exactly” or “be analogous or equivalent in character, form, or function” or “represent.” New Oxford American Dictionary, 390 (3rd Edition 2010). Consistent with this exemplary definition and the originally-filed application, the phrase “arranged in an array having a spatial configuration corresponding to the shape of the irradiated portion of the tissue measurement site” . . . would be understood by a person having ordinary skill in the art as requiring a sufficient number of detectors such that, when arranged together in an array, can “match,” “have a close similarity,” or “represent” the “at least partially circular shape” of the irradiated portion of the tissue measurement site. . . . In order for the claimed “plurality of detectors” to “match” or “represent” an “at least partially circular shape” or an “annular shape,” the “plurality of detectors” must include sufficient detectors to represent such shapes. For example, six or more detectors could be arranged in an annular shape and meet the recited limitation. However, two detectors, for example, can only be arranged in a spatial configuration representing a line and three detectors, for example, can only be arranged in a spatial configuration representing a line or a triangle. Thus, when read in view of the originally-filed application, the recited “plurality of detectors” would be understood by a person having ordinary skill in the art as including a sufficient number of detectors to represent the desired geometric shape.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On the present record, Petitioner’s definition of a POSITA is consistent with the level of skill reflected in the ’159 patent and the asserted prior art. Accordingly, for purposes of this Decision, we adopt Petitioner’s description. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining “the prior art itself [may] reflect[] an appropriate level” as 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))). We note that we would reach the same outcome in this Decision under either definition of a POSITA. If the parties continue to propose differing levels of ordinary skill in the art during trial, they should state whether any issue in the case turns on those differences.” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,722,159
• Apple Inc. v. Masimo CorporationInstituted
  PTAB · Jul 9, 2024 · IPR2024-00241 · APJ David Cotta · IPR · Institution

  Instituted IPR on all grounds for claims 1–25, 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), inter partes review may not be instituted unless 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.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable based on the grounds advanced here. We decline to deny the Petition on a discretionary basis as requested by Patent Owner. Thus, for reasons explained below, we institute inter partes review of claims 1–25 of the ’743 patent.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there is a parallel district court proceeding). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”).6 Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like that in Sotera, i.e., a stipulation to “not pursue for the instituted claims, in [the Delaware Litigation], the same grounds as in the IPR2024-00241 petition or any grounds that could reasonably have been raised in that petition” (Ex. 1078, 1), we do not discretionarily deny institution under Fintiv. Patent Owner argues that Petitioner’s stipulation “does not carry the benefits underlying the Director’s Guidance” because it was filed “only after the parties and the court conducted extensive and costly fact and expert discovery, and fully briefed and argued dispositive motions.” Prelim. Sur-reply 2. This argument is not persuasive because the Director’s Guidance does not afford discretion to discount a Sotera stipulation based on how far a parallel district court litigation has progressed when the stipulation was made. Director’s Memo 7 (explaining, without qualification, that “the” slip op. at 11

  • Parallel petitionsNot reached

    “B. Discretionary Denial in View of Multiple Petitions Petitioner filed two petitions for inter partes review of the ’743 patent, this Petition challenging claims 1–25 and the petition filed in IPR2024- 00242 challenging claims 1, 3–14, and 16–25. See Apple Inc. v. Masimo Corp., IPR2024-00242, Paper 3 (PTAB, filed Dec. 12, 2023). Patent Owner argues that Petitioner “fails to establish that two petitions on the ’743 Patent are necessary” and that “if the Board institutes one of the Petitions, it should deny the other.” Paper 9, 1. Petitioner requests that we consider this Petition before we consider the Petition in IPR2024-00242. Paper 2, 1. Accordingly, we reserve consideration of whether multiple petitions are merited for our decision in IPR2024-00242. III.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner contends that “[Petitioner’s] asserted level of ordinary skill in the art is relatively low” which “supports the patentability of the 7 The current record in this proceeding does not include any argument or evidence directed to objective indicia of nonobviousness. claims,” and further “notifies the Board that in the Delaware Litigation, [Patent Owner’s] expert presented a slightly different definition of the level of ordinary skill which includes education and/or experience with optical technologies.” Prelim. Resp. 11–12 (citing Ex. 2002 ¶¶ 48–51). Patent Owner asserts that the difference between the parties’ definitions “does not impact [Petitioner’s] patentability challenges here.” Id. On the present record, Petitioner’s definition of the POSA is consistent with the level of skill reflected in the ’743 patent and the asserted prior art. Accordingly, for purposes of this Decision, we adopt Petitioner’s description. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining “the prior art itself [may] reflect[] an appropriate level” as 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))).” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,687,743
• Apple Inc. v. Willow Laboratories, Inc.Instituted
  PTAB · Jun 27, 2024 · IPR2024-00296 · APJ Alyssa A Finamore · IPR · Institution

  The Board instituted IPR on claims 1–4, 6, 8, 10–13, 15, 17, 19–21, 23–26, and 28 based on the asserted § 103 grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “The Director’s Memo7 guides our analysis under Fintiv. Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). In this proceeding, Petitioner has offered a stipulation like that in Sotera, i.e., a stipulation to “not pursue for the instituted claims, in [the Delaware Litigation], the same grounds as in the IPR2024-00296 petition or any grounds that could reasonably have been raised in that petition.” Ex. 1078, 1. Patent Owner argues that Petitioner’s stipulation “differs from Sotera, who filed its stipulation in the early stages of the parallel litigation” and that Petitioner “belatedly attaching the label ‘Sotera stipulation’ only after the Delaware Litigation is ready for trial does not protect against the concerns underlying the Director’s Guidance—gamesmanship and inefficiency.” Prelim. Sur-reply 2. This argument is not persuasive because the Director’s Memo does not afford us discretion to discount a Sotera stipulation based on how far a parallel district court litigation has progressed when the stipulation was made. Director’s Memo 7 (explaining, without qualification, that “the PTAB will not discretionarily deny institution of an [inter partes review] or [post-grant review] in view of parallel district court litigation where a 7 Memorandum from Katherine K. Vidal, Under Sec. of Commerce for Intellectual Property and Dir. of the USPTO, to Members of the PTAB (June 21, 2022), available at https://www.uspto.gov/sites/default/files/ documents/interim_proc_discretionary_denials_aia_parallel_district_court_ litigation_memo_20220621_.pdf (“Director’s Memo”). same grounds as in the petition or any grounds that could have reasonably been raised in the petition”). Thus, in view of Petitioner’s Sotera stipulation, we do not discretionarily deny institution under Fintiv.” slip op. at 12

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “(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 either condition of the first part of the framework is satisfied, 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 Advanced Bionics, GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (footnote omitted). If a condition in the first part of the framework is satisfied, and absent a material error, the Director generally will exercise discretion not to institute inter partes review. Id. at 8–9.” slip op. at 13

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The main differences between the parties’ definitions of the POSITA appear to be that Patent Owner specifies that the POSITA’s knowledge and experience may include optical sensors and that the POSITA may have a degree emphasizing software. On the present record, we do not deem these differences material, particularly because the optical sensors and technologies at issue are those used in physiological monitoring working knowledge of physiological monitoring technologies. Ex. 1003 ¶ 22; Ex. 2002 ¶ 37. Nonetheless, we find the additional specificity of Patent Owner’s definition to be helpful. Also, Patent Owner’s definition appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’911 patent. Accordingly, for purposes of this Decision, we adopt Patent Owner’s proposed definition of the POSITA. We note, however, that we would reach the same outcome under either definition of the POSITA. See also Prelim. Resp. 7 (“[Patent Owner] agrees that the claims’ patentability is confirmed regardless of the level of skill.”).” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “B. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2023). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, at this stage in the proceeding, we expressly construe the claims to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))). Petitioner asserts that “[a]ll claim terms should be construed according to the Phillips standard” and that “no express constructions are required to institute review and find the [c]hallenged [c]laims unpatentable.” meaning and thus require no construction” and notes that this is the same position it took in the Delaware Litigation. Prelim. Resp. 9 (citing Ex. 2031, 57–84). On the current record and for the reasons set forth below in sections IV.D–E, we determine that no claim term requires an express construction for the purpose of determining whether to institute inter partes review.” slip op. at 17

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 10,984,911
• Apple Inc. v. Masimo CorporationInstituted
  PTAB · Jun 27, 2024 · IPR2024-00294 · APJ David Cotta · IPR · Institution

  The Board instituted inter partes review of claims 1–20 on all grounds asserted in the Petition.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims are unpatentable based on the grounds advanced here. We decline to deny the Petition on a discretionary basis as requested by Patent Owner. Thus, for reasons explained below, we institute inter partes review of claims 1–20 of the ’507 patent.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”).11 Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo, 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like that in Sotera, i.e., a stipulation to “not pursue for the instituted claims, in [the Delaware Litigation], the same grounds as in the IPR2024-00293 petition or any grounds that could have reasonably been raised in that Petition” (Ex. 1078, 1), we do not discretionarily deny institution under Fintiv.” slip op. at 10

  • Parallel petitionsDecided for petitioner

    “Discretionary Denial in View of Parallel Petitions Petitioner filed two petitions for inter partes review of claims 1–20 of the ’507 patent, this Petition and the petition filed in IPR2024-00293. See Apple Inc. v. Masimo Corp., IPR2024-00293, Paper 3 (PTAB, filed December 12, 2023). Patent Owner argues that Petitioner “fails to establish that two petitions on the ’507 Patent are necessary” and that “if the Board institutes one of the Petitions, it should deny the other.” Paper 8, 1. This argument is moot because, concurrently herewith, we deny institution of inter partes review in IPR2024-00293 on the merits. III.” slip op. at 11

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The main differences between the parties’ definitions of the POSA appear to be that Patent Owner specifies that the POSA’s knowledge and experience may include optical sensors and that the POSA may have a degree emphasizing software. On the present record, we do not deem these differences material, particularly because the optical sensors and technologies at issue are those used in physiological monitoring technologies and both parties agree that the POSA would have a working knowledge of physiological monitoring technologies. Ex. 1003 ¶ 24; Prelim. Resp. 6. We find the additional specificity of Patent Owner’s definition to be helpful. In addition, Patent Owner’s definition appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’507 patent. Accordingly, for purposes of this Decision, we adopt Patent Owner’s proposed definition of the person of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as 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)). We note that we would reach the same outcome under either definition of the POSA.” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,736,507
• Apple Inc. v. Masimo CorporationInstitution denied
  PTAB · Jun 27, 2024 · IPR2024-00293 · APJ David Cotta · IPR · Institution

  The Board denied institution on claims 1–20 because Petitioner did not show a reasonable likelihood that Bailey’s processing board generated the claimed SpO2 measurement values.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has not established a reasonable likelihood of prevailing on its assertion that the challenged claims are unpatentable based on the grounds advanced here. Thus, for reasons explained below, we deny institution of inter partes review of claims 1–20 of the ’507 patent.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The main difference between the parties’ definitions of the POSA appears to be that Patent Owner specifies that the POSA’s knowledge and experience may include optical sensors and that the POSA may have a degree emphasizing software. On the present record, we do not deem these differences material, particularly because the optical sensors and technologies at issue are those used in physiological monitoring technologies and both parties agree that the POSA would have a working knowledge of 11 physiological monitoring technologies. Ex. 1003 ¶ 24; Prelim. Resp. 6. We find the additional specificity of Patent Owner’s definition to be helpful. In addition, Patent Owner’s definition appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’507 patent. Accordingly, for purposes of this Decision, we adopt Patent Owner’s proposed definition of the person of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as 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)). We note that we would reach the same outcome under either definition of the POSA.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner does not identify any claim terms as needing formal construction. Pet. 3 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Patent Owner asserts that “the claims have 12 their plain meaning and thus require no construction,” noting that this is the same position it took in the Delaware Litigation. Prelim. Resp. 12.11 We determine that no terms require express construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “4. Discussion We agree with Patent Owner that Petitioner’s showing with respect to the claim requirements relating to SpO2 measurement values is deficient. In particular, Petitioner maps the “SpO2 measurement values” “generat[ed]” by the “processing board” to the voltage level signals sent from the microcontroller to the wireless transmitter and then from the wireless transmitter to the mobile device. Pet. 19; Ex. 1004, 47 (“The only data that was actually sent from the digital interface to the user interface [i.e., the mobile device] was the voltage level and its corresponding LED, which was sent over in a 2-bit array of data.”). And Petitioner maps “the SpO2 measurement values” “display[ed]” in a “display portion[]” of the mobile device to a displayed SpO2 percentage. Pet. 21 (relying on Figure 32 of Bailey (reproduced supra § II.D.1), an image of the user interface of Bailey’s mobile device displaying an SpO2 percentage but not a voltage); see also id. at 22 (“As shown in Figure 32 below, Bailey’s mobile device displays at least a SpO2 value and a heart rate (a plurality of physiological parameters comprising at least the SpO2 measurement values).”). Thus, the data generated by the microprocessor (a voltage level) is not the data displayed by the mobile device (an SpO2 percentage). Consistent with this, Bailey indicates that its “User Interface,” i.e., its mobile device, is the system component that calculates the SpO2 level. Ex. 1004, 50 (explaining, in a discussion of the “User Interface,” that blood oxygen saturation was calculated using a “peak detection algorithm”).” slip op. at 20

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,736,507
• Apple Inc. v. Masimo CorporationInstituted
  PTAB · Jun 27, 2024 · IPR2024-00290 · APJ Richard H Marschall · IPR · Institution

  The Board instituted IPR on claims 1–4, 6, 11–22, 27, 28, 32, 34, 36, 37, and 42–44 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”).8 Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo, 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like that in Sotera, i.e., a stipulation to “not pursue for the instituted claims, in [the Delaware Litigation], the same grounds as in the IPR2024-00290 petition or any grounds that could reasonably have been raised in that petition” (Ex. 1078, 1), we do not discretionarily deny institution under Fintiv. Patent Owner argues that Petitioner’s stipulation “does not carry the benefits underlying the Director’s Guidance” because it was filed “only after the parties and the court conducted extensive and costly fact and expert discovery, and fully briefed and argued dispositive motions.” Paper 8, 2. We find this argument unpersuasive because the Director’s Guidance does not afford us discretion to discount a Sotera stipulation based on how far a parallel district court litigation has progressed when the stipulation was made. Director’s Memo, 7 (explaining, without qualification, that “the PTAB will not discretionarily deny institution of an IPR or PGR in view of” slip op. at 7

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” Upon consideration of the evidence and arguments in the record, we institute inter partes review of the ’223 patent on all challenges set forth in the Petition.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The main differences between the parties’ definitions of the POSITA appear to be Patent Owner’s inclusion of a number of alternative ways one could qualify as a POSITA, including a Master’s degree combined with less experience, although Petitioner also acknowledges that “[l]ess work experience may be compensated by a higher level of education.” Ex. 1003 ¶ 22. On the present record, we do not deem the differences in the proposals as material given their substantive overlap. In general, we find the additional specificity and alternatives in Patent Owner’s definition helpful. In addition, Patent Owner’s definition appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’223 patent. Accordingly, for purposes of this Decision, we adopt Patent Owner’s proposed definition of the person of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as 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)). We note that we would reach the same outcome in this Decision under either definition of the POSITA. If the parties continue to propose differing levels of ordinary skill in the art during trial, they should explain the differences and their relevance to the patentability issues in this case, and state whether any issue in the case turns on those differences.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “that would be used to construe the claim in a civil action” under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have frequently stated that the words of a claim ‘are generally given their ordinary and customary meaning.’” (citations omitted)). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner asserts that “no claim terms need to be construed to resolve issues of controversy in the present Petition.” Pet. 3 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Patent Owner asserts that we “should give the claims their ordinary and customary meaning” and that the claims “require no construction.” Prelim. Resp. 15 (noting that this is the same position it took in the Delaware Litigation). Patent Owner then asserts that Petitioner proposed constructions in the Delaware Litigation for several claim terms, but that Patent Owner asserts here, as it does in the Delaware Litigation, that those terms do not require construction. Id. at 15–16. We determine that no terms require express construction at this stage.” slip op. at 11

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,190,223
• Nespresso USA, Inc. v. K-Fee System GmbHInstituted
  PTAB · Jun 25, 2024 · IPR2024-00299 · APJ James J Mayberry · IPR · Institution

  The Board instituted review of claims 1–8 based on a reasonable likelihood that claim 1 is obvious over Yoakim, Jarisch ’929, Rossi, and Rapparini.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “institute review. 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (2023) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that a person of ordinary skill in the art would have had “a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, and experience with sensors for recognizing an identifier.” Pet. 16 (referencing Ex. 1003 ¶ 40; IPR2022-01574, Paper 12, 15). Patent Owner does not dispute Petitioner’s characterization of the level of ordinary skill in the art of the ’910 patent. For purposes of this Decision, based on the prior art, the sophistication of the technology at issue, and Mr. Jobin’s Declaration testimony, we adopt Petitioner’s unopposed definition of the level of ordinary skill. The ’901 patent, as well as the prior art of record, includes systems that use identifiers on a capsule to control the operation of a beverage machine. See, e.g., Ex. 1001, 1:28–34 (“[T]he present invention . . . has an identifier, which allows to individualize the respective portion capsule.”); Ex. 1004 ¶ 25 (discussing the system’s “identification means”); Ex. 1006 ¶ 1 (“The present invention relates in particular to coding supports adapted to store information related to a capsule, capsules associated with/for embedding coding supports, reading and processing arrangements for reading and using such information for preparing a beverage.”); Ex. 1041, code (57) (“The process for controlling the operation of an edible-product making machine [includes] . . . recogni[zing] an” slip op. at 17

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have frequently stated that the words of a claim ‘are generally given their ordinary and customary meaning.’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).” slip op. at 18

  • Obviousness (§103) › Analogous artAnalogous artOther

    “a) Petitioner’s contentions Petitioner contends that Yoakim, Jarisch ’929, Rossi, and Rapparini are “analogous art in the field of portion capsule beverage extraction, each disclosing an invention that may be applied in automatic coffee/expresso machines.” Pet. 37 (referencing Ex. 1004 ¶¶ 2, 3; Ex. 1006 ¶¶ 1, 2; Ex. 1008 ¶ 1; Ex. 1041, 3; Ex. 1003 ¶ 220); cf. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.”). Patent Owner does not dispute this contention at this stage of the proceeding.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,554,910
• Nespresso USA, Inc. v. K-Fee System GmbHInstitution denied
  PTAB · Jun 10, 2024 · IPR2024-00239 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 would have been obvious over either asserted combination.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . 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, Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of claims 1–20 of the ’094 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “The express language of the claim, however, does not support using the “central axis” as the measuring point for determining if one object is laterally offset from another. For example, the term “central axis” is not used in the relevant claim phrase and the dictionary definitions of “lateral” relied upon by Petitioner and Mr. Jobin to show the ordinary meaning of the claim term do not suggest that the “central axis” is the reference point for determining whether a first object is “laterally offset” from a second object. As such, we determine that the claim language supports Patent Owner’s construction requiring that the “groove” be “off to the side” of the entire mandrel, and not merely the “central axis” of the mandrel. Prelim. Resp. 54. We must also resolve whether the entire groove is required to be laterally offset from the chamfered mandrel, or only a portion of it. On this point, the claims do not use the term “portion,” but rather specify that the “groove” is “laterally offset from the chamfered mandrel.” Ex. 1001, 14:4– 5, 15:19–20. This suggests that the entire “groove” must be offset from the “chamfered mandrel.”” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “That argument, however, does not explain why it would have been obvious to laterally offset the groove of Yoakim from the chamfered mandrel. Rather, as demonstrated by Mr. Jobin’s testimony, this argument relates to the general use of a sealing member in a groove, to the extent it was ultimately determined that such a configuration is not expressly disclosed in Yoakim. Id.; Ex. 1003 ¶ 296 (“It would have been obvious to one skilled in the art to position a sealing member in a groove to solidify the between counter-force portion 161 and engaging portion 157 in Figure 35 of Yoakim is more appropriately identified as the claimed “groove.” Prelim. Resp. 60–61. We need not resolve this issue, however, as Petitioner does not persuasively demonstrate that either potential “groove” is “laterally offset” from the chamfered mandrel. placement of the seal and improve its sealing stability and strength. Furthermore, it would have been obvious to one skilled in the art to utilize a groove and seal configuration in the brewing head . . . .”) (emphasis added). Even if we interpret the recited portion of the Petition as an argument for placing the groove entirely to the side of the mandrel in Yoakim, the Petition does not persuasively explain why one of ordinary skill in the art would have sought to do so. In Figure 35 of Yoakim, the seal and groove, as well as an elastic loading means, act as a valve means to control the level of pressure exerted in the capsule and “optimize interaction of water and the ground coffee particles to obtain a good extraction of the coffee and aroma compounds.” Ex. 1004 ¶¶ 370–372, 382, 396–398, 434–436, 445; Ex. 1003 ¶¶ 286–290; Pet. 63. These are the same beneficial properties relied upon by Petitioner to support the proposed combination, and Petitioner does not persuasively explain why one of ordinary skill in the art would have modified Yoakim in order to achieve results that are already obtained in the identified embodiment. Pet. 63. In view of the foregoing, we determine that Petitioner does not demonstrate a reasonable likelihood that claims 1 and 12 would have been obvious over the combined disclosures of Yoakim, Jarisch 929, and Rossi.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,542,094
• HP Inc. / Dell Technologies Inc. et al. v. Litl LLCInstituted
  PTAB · Jun 10, 2024 · IPR2024-00404 · APJ Garth D Baer · IPR · Institution

  Instituted inter partes review of claims 1, 3, 4, 7–10, 13, 14, 16–18, and 22 on all asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “In evaluating arguments under § 325(d), we use a two-part framework: (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 either condition of the first part of the framework is satisfied, 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).” slip op. at 7

  • Prior constructionPrior construction adoptedDecided for petitioner

    “1. “frame mode” Petitioner proposes we construe “frame mode” the same as we did in IPR2021-00822 as “having the keyboard face down on a surface with the screen face up, and the base and display components forming a non-zero angle.” Pet. 8–9. Patent Owner does not dispute Petitioner’s construction in its Preliminary Response. On the current record, we agree with and adopt Petitioner’s proposed construction.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “2. “content mode” Petitioner proposes we construe “content mode” consistent with Patent Owner’s construction during the ’844 Reexam, where Patent Owner “argued for and received a construction of [‘Content Mode’] as meaning ‘displaying some information that represents a higher-level construct into which content is grouped.’” Id. at 9 (citing Ex. 1005, 6). Further, “[t]his recitation is distinct from merely displaying individual things (e.g., applications) that may be grouped into a content mode.” Id. Patent Owner does not dispute Petitioner’s construction in its Preliminary Response. On the current record, we agree with and adopt Petitioner’s proposed construction.” slip op. at 9

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 8,624,844
• Dell Technologies Inc. / Dell Inc. et al. v. Litl LLCInstitution denied
  PTAB · May 28, 2024 · IPR2024-00481 · APJ Brian D Range · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 12, 14, or 16–18 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “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.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review on the grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner asserts that a person of ordinary skill in the art (POSITA) would have had (i) a bachelor’s degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and two to three years of experience in the design and architecture of laptop computers and other portable electronic devices, or (ii) an advanced degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the field. Ex. 1003, ¶102. A POSITA would have been familiar with the structural hardware aspects of laptop computers and other portable electronic devices as well as designs of user interfaces employed and displayed by computer operating systems and their organization of content and functionality. Id. Pet. 10–11. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 18. For this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’229 patent. 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 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “For this decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analysis below and will not assist in resolving the present controversy between the parties. 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 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Lane’s orientation information would generate information indicative of a current mode of operation as claim 18 requires. Instead, we agree with Patent Owner that Petitioner has not carried its burden to establish a reasonable likelihood of prevailing in showing that a person of ordinary skill in the art would have, based on the teachings of Lane or other cited art, used an accelerometer that generates orientation information indicative of the current mode of operation. See Prelim. Resp. 35–42. Lane’s accelerometer provides information only on the “spatial orientation” of the first module (keyboard) or second module (screen). Ex. 1005, 5:23–6. “Spatial orientation,” as used in Lane, refers to the orientation of the first or second module relative to the earth’s gravity because Lane teaches that its accelerometer uses a “movable conductor” that “responds via gravitational forces” to reorientation. Id. Lane does not teach using the accelerometer to determine the orientation of the first and second modules relative to each other, and Petitioner does not suggest that Lane could be modified to determine the orientation of the first and second modules relative to each other. Rather, Petitioner argues that, for example, a determination that the keyboard is “facing upward but at a diagonal angle” (relative to the earth’s gravity) would be indicative of “easel mode.” Pet. 29.” slip op. at 20

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,563,229

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.