- ROKU, Inc. v. Ecolink Intelligent Technology, Inc.All claims unpatentablePTAB · Oct 28, 2024 · IPR2023-00792 · APJ Jason M Repko · IPR · Final written decision
Claims 1, 2, 6, 11, 12, and 16 are unpatentable as obvious over Lamb and Williams; claims 1 and 11 are also unpatentable as obvious over Sharma.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“In sum, we determine that Mr. McNair has experience in residential security and alarm systems and sixty years of experience in the research, design, development, and engineering of the technology underlying such systems that is sufficient for him to at minimum possess ordinary skill in the art. Id. ¶¶ 6–12. Also, his years of experience at the Security and System Reliability Architecture Group at AT&T Bell labs alone (id. ¶ 10; see also, id. at p. 147) meets the three or more years of commercial design and development experience in security and alarm systems, under Patent Owner’s definition (PO Resp. 6 (citing Ex. 2003 ¶ 34)). Thus, on this record, we disagree with Patent Owner’s argument that Bruce McNair lacks knowledge and skill at least of an ordinarily skilled artisan—even under Patent Owner’s definition. See PO Resp. 6. In this decision, we assign Bruce McNair’s testimony the appropriate weight, as discussed in our analysis below.” slip op. at 7
- Skill levelSkill level board ownOther
“had a bachelor’s degree in computer science, in electrical engineering, or a related field, and approximately two or more years of experience or equivalent study in sensor systems.” Pet. 12 (citing Ex. 10031 ¶¶ 37–40). Petitioner also asserts that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. at 12–13. Patent Owner disagrees and argues, [A person of ordinary skill in the art] would have had at least a bachelor’s or equivalent degree in electrical or electronic engi-neering or an equivalent field, and three or more years of com-mercial design and development experience in residential or business security and alarm systems. 1 Exhibit 1003 is the declaration of Bruce McNair. The differences between the two skill levels does not affect the Board’s analysis of Petitioner’s challenge. In fact, Patent Owner’s addition of experience in “security and alarm systems” only increases the skill level of a person of ordinary skill in the art. Id. at 6. Our conclusion that Petitioner has shown that all challenged claims are unpatentable is the same under either definition.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“Either way, “defining a particular claim term by its function is not improper.” Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1374–75 (Fed. Cir. 2014). For example, the Court of Appeals for the Federal Circuit has found that there is “nothing improper about defining ‘datalink’ as a link that conveys data.” Id. at 1375. “Many devices take their names from the functions they perform. The examples are innumerable, such as ‘filter,’ ‘brake,’ ‘clamp,’ ‘screwdriver,’ or ‘lock.’” Id. (quoting Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996)). Here, the functions recited in claims 1 and 11 limit what the “timed alarm signal” indicates, how it is used as well as its relationship to a timer, alarm, and security panel. If not for a timer associated with the security panel, there is no clear purpose for transmitting the “timed alarm signal” only when the specific determination is made, and that claimed determination would be rendered superfluous. A construction that requires the purpose of initiating a timer associated with the security panel is consistent with rest of the functions and steps recited in claims 1 and 11. Considering the claim as a whole, the other expressly recited functions and steps support our decision to include the signal’s purpose in our construction.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We disagree. Petitioner’s obviousness rationale is persuasive and supported by the evidence of record. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Essentially, Lamb assumes that the detected person is authorized. Ex. 1009 ¶¶ 37, 40, 58–59, cited in Pet. 17. Williams’s system permits authorized persons to use the space, while retaining security against intruders. Ex. 1010, 2:31–38, cited in Pet. 18. Petitioner persuasively supports the assertion that waiting for an authorization code would enhance system security in Lamb because one of ordinary skill in the art would been motivated “to verify—and not assume— that a potential alarm was triggered by an authorized person.” Pet. 18 (citing Ex. 1010, 2:35–38). We credit Bruce McNair’s testimony on this issue (Ex. 1003 ¶¶ 52–54) because it is supported by the record (Ex. 1010, 2:31–38; Ex. 1009 ¶¶ 37, 40, 58–59).” slip op. at 33
Patent outcomesUS 10,692,340 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,692,340 - PTAB · Oct 25, 2024 · IPR2024-00572 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 6–9, 11, 15, 21, and 23, finding a reasonable likelihood of success on at least one claim and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “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(a) (2018). 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
- Other 314aInstitution denied discretionary otherDecided for petitioner
“IV. DISCRETIONARY DENIAL UNDER § 314(a) Under § 314(a), the Director possesses “broad discretion” in deciding” slip op. at 82
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Although VCEG-N52 was previously presented to the Office, the Examiner did not consider whether the challenged claims would have been obvious over VCEG-N52 and Sriram. See Ex. 1002, 108–15, 146–60, 162–69, 332–38, 359–67, 388–98. Patent Owner does not contend otherwise. Prelim. Resp. 50. For the “same or substantially the same arguments” inquiry under the Advanced Bionics framework, Patent Owner does not contend that any arguments in the Petition parallel any arguments made during prosecution. Prelim. Resp. 50. Accordingly, we determine that Petitioner relies on different art and different arguments than the art and arguments previously presented to the Office. Although Au was previously presented to the Office, only one of Petitioner’s four patentability challenges relies on Au. See supra § II.F, III.E–III.H. Hence, § 325(d) is not sufficiently implicated by granting institution such that doing so would undermine § 325(d)’s statutory purpose to avoid duplicative effort by the Office. Because we determine that Petitioner relies on different art and different arguments than the art and arguments previously presented to the Office, we do not address “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” See Advanced Bionics, Paper 6 at 8. For these reasons, we decline to exercise our discretion under § 325(d) to deny institution.” slip op. at 86
Discretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,724,818 - Amazon.Com, Inc. / Amazon.Com Services LLC v. Nokia Technologies OYInstitution deniedPTAB · Oct 4, 2024 · IPR2024-00725 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 were unpatentable; Yagasaki did not disclose the claimed intentional discontinuity in image-frame numbering.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). 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). 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) (footnote omitted). Upon consideration of the contentions of the parties and the evidence before us, we conclude that Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’134 patent. We decline to institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Havlicek and not 8 The record does not include any evidence of secondary considerations of nonobviousness. disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Also, our conclusion would be the same even if we applied Patent Owner’s stated level of ordinary skill in the art. C.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. 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))). Petitioner has not proposed a construction for any claim term and asserts that “no constructions are necessary to resolve any disputes identified in this Petition.” Pet. 7 (footnote omitted). Patent Owner does not disagree and also has not itself proposed any construction. Prelim. Resp. 9. We find that no express construction for any claim term is necessary. D.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“According to limitation 1[a], the decoded “indication” must “inform[] an intentional discontinuity of numbering of the image frames.” Petitioner has not sufficiently shown any discontinuity of the numbering of image frames. Patent Owner asserts that “Petitioner relies on continuously incremented ‘temporal_reference codes’ as the claimed numbering, but these continuously incremented ‘temporal_reference codes’ never have a discontinuity.” Prelim. Resp. 11. We determine that Petitioner has not sufficiently shown, for institution purposes, a discontinuity in these temporal_reference codes. Petitioner’s argument assumes, without adequate supporting basis, that when a duplicate picture is eliminated by the encoder such that no image picture content is provided in the encoder output, the temporal_reference code for that duplicate picture is also eliminated and not provided in the encoder output to be furnished to the decoder. To prevail, this alleged fact must be sufficiently shown and not assumed. The Petition made no adequate showing. Yagasaki expressly states: “The temporal reference generator [within the encoder] feeds the temporal reference code to the variable-length coder 1006 for inclusion in the coding apparatus output signal VC1.” Ex. 1005, 19:27–29. We find no statement or indication of an exception for a duplicate picture of which the image data is “eliminated,” and Petitioner has not pointed us to any such description.” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,204,134 - PTAB · Sep 25, 2024 · IPR2024-00646 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Al-Shyoukh and Ivanov.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and Trademark Office under 37 C.F.R. § 42.4(a), we may institute an inter partes review when “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); see also 37 C.F.R. § 42.108(c). Applying that standard, we institute an inter partes review of all the challenged claims of the ’074 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Chen’s testimony, Petitioner argues that a person of ordinary skill in the art would have had “a Master’s Degree in Electrical Engineering, or alternatively a Bachelor’s Degree in Electrical Engineering and two years of experience working on analog circuit design.” Pet. 9 (citing Ex. 1002 ¶ 38). At this stage, Petitioner’s argument is uncontested, and it appears to be supported by the types of problems and solutions in the ’074 patent. See, e.g., Ex. 1001, 1:25–2:44. Thus, we adopt the formulation preliminarily for this decision.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“claim constructions that correspond to constructions it expects Patent Owner to assert. See Pet. 20 n.2. After Patent Owner filed its Preliminary Response, Petitioner notified us that the district court in the parallel district court litigation issued a claim construction order interpreting two terms relevant to this proceeding, as shown below: Claim Term District Court’s Construction” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“limitation was indefinite because it was subject to 35 U.S.C. § 112 para. 6 and the ’074 patent failed to disclose sufficient corresponding structure. See Ex. 3001, 9. However, in its Petition, Petitioner adopts what it understands to be Patent Owner’s claim-construction in the parallel proceeding: “that 1[d] is not a means-plus-function element under [§ 112 paragraph 6], and to the extent it is, the claimed function is to enable/disable the biasing circuit for reducing standby current, and the corresponding structure is the signal input line at node M in Figure 3.” Pet. 21–22. Assuming that limitation 1[d] does not invoke § 112 paragraph 6, Petitioner argues that “Al-Shyoukh discloses inputs from a biasing circuit into its LDO but does not specify a design,” but Ivanov discloses a specific design for implementing the recited enable/disable function, and a person of ordinary skill in the art would have had reason to incorporate Ivanov’s design into Al-Shyoukh’s LDO. Pet. 22–26 (citing Ex. 1004, 1732; Ex. 1005, 1:6–18, 3:43–49, 3:54–63, 4:26–33, 5:19–25, 6:7–22, 6:47–54, Figs. 1, 2; Ex. 1002 ¶¶ 60–70). Alternatively, if limitation 1[d] invokes § 112 paragraph 6 and Patent Owner is correct that the corresponding structure is the signal input line at node M in Figure 3 of the ’074 patent, Petitioner argues that this structure is identical to Ivanov’s input line 8. Pet. 26 (citing Ex. 1001, Figs. 1, 3; Ex. 1002 ¶ 69).” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,471,074 - PTAB · Sep 25, 2024 · IPR2024-00627 · APJ Jason M Repko · IPR · Institution
The Board instituted review of claims 19–36 on all grounds, finding a reasonable likelihood that claims 19, 25, and 31 are unpatentable over Walker and Karczewicz I and II.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Under 35 U.S.C. § 325(d), the Board may exercise discretion to deny a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. To evaluate arguments for discretionary denial under § 325(d), the Board uses 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 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. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 5
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (POSITA): at the time of the alleged invention of the ’267 patent would have had a (1) Bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study such as physics, and (2) approximately two to three years of practical experience with video encoding/decoding. Additional experience can substitute for the level of education, and vice-versa. Pet. 11–12 (citing Ex. 10038 ¶¶ 33–36). Patent Owner applies Petitioner’s definition. Prelim. Resp. 27. For this decision, we also apply this definition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction “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) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). 8 Exhibit 1003 is a declaration of Immanuel Freedman, Ph.D. According to Petitioner, the term “‘precision’ is satisfied by, but not necessarily limited to, ‘a number of bits needed to represent possible values.’” Pet. 12. According to Patent Owner, the Preliminary Response does not address the definition of “precision” because Patent Owner’s arguments do not depend on it. Prelim. Resp. 27. At this stage, we need not construe the term “precision” because it is not necessary to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionOther
“values and final predictions, however, is not expressly recited in the claim. See id. Rather, claim 19 merely recites a “first” and “second” prediction. As noted by both parties, the claim limits predictions to those obtained from the reference block. See Ex. 1001, 23:35–39.11 The first and second reference blocks are determined from motion vectors. Id. at 21:15–31. The first and second predictions form a “combined prediction.” Id. at 21:28–29. Under Patent Owner’s description of intermediate values (Prelim. Resp. 46–56), the first and second predictions can be thought of as intermediate values with respect to the combined prediction. Thus, the plain language of the claim is not consistent with the argument that intermediate values cannot be predictions. Nor do we see, at this stage and on this record, any part of the specification of the ’267 patent that provides a clear standard for determining what it means for a value to be a “final” prediction. Indeed, the “claims ‘must be read in view of the specification,’” which “‘is always highly relevant” and usually dispositive. Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The specification “is the single best guide to the meaning of a disputed term.’” Id.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,805,267 - PTAB · Sep 24, 2024 · IPR2024-00691 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 8–11 on all petitioned grounds, finding a reasonable likelihood that Amazon would show at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “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(a) (2018). 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). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 8–11 in the ’321 patent on all challenges included in the Petition.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–16 (PTAB Aug. 24, 2022) (precedential), the Board accorded little weight to a proffered expert’s declaration that (1) repeated verbatim a conclusory statement in a petition and (2) did not “cite to any additional supporting evidence or provide any technical reasoning to support” the conclusory statement. But verbatim duplication between a petition and a declaration does not require giving the declarant’s testimony little or no weight. See Unified Patents, LLC v. Togail Techs., Ltd., IPR2023-00338, Paper 7 at 11 (PTAB Aug. 18, 2023) (declining to give “little or no weight” to declaration testimony “simply because it is verbatim to” statements in a petition); Hum Indus. Tech., Inc. v. Amsted Rail Co., IPR2023-00540, Paper 10 at 37 (PTAB Aug. 11, 2023) (explaining that “[i]f declaration testimony is supported sufficiently and, in turn, supports contentions in the Petition, we do not give it little to no weight simply because it is repeated in the Petition”); Epic Games, Inc. v. IngenioShare, LLC, IPR2022-00202, Paper 29 at 9 (PTAB May 19, 2023) (declining to disregard a declarant’s testimony that mirrored a brief). The Board decisions that Patent Owner cites do not hold otherwise. See Kinetic, IPR2014-00529, Paper 8 at 14–16; Volkswagen, IPR2021-00717, Paper 12 at 34–38; Samsung, IPR2022-00251, Paper 17 at 23–26; Prelim. Resp. 21–22.” slip op. at 65
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention would have had “a (1) Bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study such as physics, and (2) approximately two to three years of practical experience with video encoding/decoding.” Pet. 9. Petitioner also asserts that “[a]dditional experience can substitute for the level of education, and vice-versa.” Id. Dr. Havlicek’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 18–20. Patent Owner asserts that the Preliminary Response “does not depend on the level of ordinary skill in the art.” Prelim. Resp. 17. For purposes of the Preliminary Response, Patent Owner applied Petitioner’s description of an ordinarily skilled artisan. Id. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’321 patent as well as the asserted references. See Ex. 1003 ¶ 20.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,050,321 - PTAB · Sep 23, 2024 · IPR2024-00626 · APJ Jason M Repko · IPR · Institution
Instituted review of claims 1–18 on all grounds; Petitioner showed a reasonable likelihood of prevailing on the Walker and Karczewicz I–Karczewicz II obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Thus, with respect to the ground based on Walker, we determine that the same or substantially the same art was not previously presented to the Office under part one of Advanced Bionics, and thus, we do not proceed to part two.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, the Board must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons discussed in this decision, the Petition meets this standard. Thus, the Board institutes an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (POSITA): at the time of the alleged invention of the ’267 patent would have had a (1) Bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study such as physics, and (2) approximately two to three years of practical experience with video encoding/decoding. Additional experience can substitute for the level of education, and vice-versa. Pet. 11–12 (citing Ex. 10038 ¶¶ 33–36). Patent Owner applies Petitioner’s definition. Prelim. Resp. 27. For this decision, we also apply this definition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“C. Claim Construction “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) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). According to Petitioner, the term “‘precision’ is satisfied by, but not necessarily limited to, ‘a number of bits needed to represent possible values.’” Pet. 12. According to Patent Owner, the Preliminary Response does not address the definition of “precision” because Patent Owner’s arguments do not depend on it. Prelim. Resp. 27. At this stage, we need not construe the term “precision” because it is not necessary to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,805,267 - PTAB · Aug 29, 2024 · IPR2024-00671 · APJ Avelyn M Ross · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 15, 17, 18, 51, 54, and 57 on all four asserted obviousness grounds, finding a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Here, Petitioner relies on modifying Richardson with Zhao to increase the USB input voltage. See Pet. 25–27; 34–42. Therefore, because Petitioner has shown sufficiently, based on the current record, that Zhao teaches the USB charging limitations missing from Tinaphong, Balmefrezol, and Lenk, Zhao is therefore not substantially the same as Tinaphong, Balmefrezol, or Lenk. Thus, Petitioner does not rely on Zhao in the same manner as the Examiner relied on Tinaphong, Balmefrezol, or Lenk during prosecution and we are not persuaded that the combination of Richardson and Zhao, a combination not considered by the Examiner, is duplicative or cumulative of prior art and arguments previously considered by the Examiner. Accordingly, we are persuaded, based on the totality of the evidence presented, that the combination of Richardson and Zhao does not present “the same or substantially the same prior art that was previously presented to the Office.”” slip op. at 19
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On this record, Patent Owner’s arguments are unpersuasive. Although Patent Owner contends that Petitioner fails to address “the nature” of Richardson’s jump starter (see Prelim. Resp. 45), Richardson’s jump starter charges batteries at various voltages (see Ex. 1005 ¶ 54). Petitioner, at this stage of the proceeding, has established that an ordinary artisan would have understood that Zhao’s step-up convertor can “charge a plurality of series connected (e.g., lithium) batteries” (see Ex. 1006, 6–11) and that Zhao would “be well-suited for starting a traditional lead-acid vehicle starter battery” like the one in Richardson (see Pet. 35–36). Moreover, the claims recite “converting power from a USB power source to increase power voltage.” At this stage and on this record, the Board disagrees that this limitation requires increasing to a particular power voltage. See Ex. 1001, 8:40–9:6, 11:4–6, 11:46–12:49, 13:29–65, 14:11–15:12. Patent Owner’s contrary argument that an ordinary artisan would not have been motivated to modify Richardson to include a charging port because Richardson did not have a charging port (see Prelim. Resp. 45–47) is conclusory. In contrast, Petitioner argues that an ordinary artisan would have been motivated to include Zhao’s charging port in Richardson’s jump starter for convenience, as USB connectors are considered “standard” and to avoid the need to supply proprietary chargers. Pet. 35–39. Petitioner’s proposed reasons to combine Richardson and Zhao have rational underpinnings. Accordingly, we are persuaded that Petitioner has shown sufficiently at this stage of the proceeding that an ordinarily skilled artisan would have had reason to combine Richardson and Zhao with a reasonable expectation of success in the combination.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“On this record, Patent Owner’s arguments are unpersuasive. Although Patent Owner contends that Petitioner fails to address “the nature” of Richardson’s jump starter (see Prelim. Resp. 45), Richardson’s jump starter charges batteries at various voltages (see Ex. 1005 ¶ 54). Petitioner, at this stage of the proceeding, has established that an ordinary artisan would have understood that Zhao’s step-up convertor can “charge a plurality of series connected (e.g., lithium) batteries” (see Ex. 1006, 6–11) and that Zhao would “be well-suited for starting a traditional lead-acid vehicle starter battery” like the one in Richardson (see Pet. 35–36). Moreover, the claims recite “converting power from a USB power source to increase power voltage.” At this stage and on this record, the Board disagrees that this limitation requires increasing to a particular power voltage. See Ex. 1001, 8:40–9:6, 11:4–6, 11:46–12:49, 13:29–65, 14:11–15:12. Patent Owner’s contrary argument that an ordinary artisan would not have been motivated to modify Richardson to include a charging port because Richardson did not have a charging port (see Prelim. Resp. 45–47) is conclusory. In contrast, Petitioner argues that an ordinary artisan would have been motivated to include Zhao’s charging port in Richardson’s jump starter for convenience, as USB connectors are considered “standard” and to avoid the need to supply proprietary chargers. Pet. 35–39. Petitioner’s proposed reasons to combine Richardson and Zhao have rational underpinnings. Accordingly, we are persuaded that Petitioner has shown sufficiently at this stage of the proceeding that an ordinarily skilled artisan would have had reason to combine Richardson and Zhao with a reasonable expectation of success in the combination.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art, “as of the claimed priority date of July 3, 2014, would have been a person with at least a bachelor’s degree in electrical engineering or its equivalent and at least two years of experience in the field of electrical engineering including some experience with DC power supply or battery charger design[;] . . . [l]ess work experience could be compensated for by a higher level of education, such as a master’s degree, and vice versa.” Pet. 17–18 (citing Ex. 1003 ¶¶ 41–44; Ex. 1014 at 10–11). Patent Owner “does not propose a different level of skill in the art[.]” Prelim. Resp. 25. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’243 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’243 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 11
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,584,243 - PTAB · Aug 29, 2024 · IPR2024-00577 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR on claims 1, 32, 38, 39, 47, 52, and 54 on all asserted grounds after finding a reasonable likelihood of prevailing on the Richardson–Zhao challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided 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.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art, “as of the claimed priority date of July 3, 2014, would have been a person with at least a bachelor’s degree in electrical engineering or its equivalent and at least two years of experience in the field of electrical engineering including some experience with DC power supply or battery charger design[;] . . . [l]ess work experience could be compensated for by a higher level of education, such as a master’s degree, and vice versa.” Pet. 22 (citing Ex. 1003 ¶¶ 39– 42; Ex. 1014, 10–11). Patent Owner “does not propose a different level of skill in the art.” Prelim. Resp. 20. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’023 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’023 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner submits there are no formal claim constructions necessary in this proceeding.” Pet. 23. Patent Owner responds that “denial of institution [does] not require addressing the construction of claim terms.” Prelim. Resp. 19. However, Patent Owner also notes that “during the related ITC investigation[, Petitioner] proposed a specific construction for ‘USB input circuit’ that excludes USB input circuits having bidirectional capabilities . . . [and is] contrary to the Petition’s interpretation of Paparrizos as teaching a USB input circuit.” Prelim. Resp. 19–20 (citing Ex. 2009, 25– 33; Pet. 65). Patent Owner contends that the proposed construction in the ITC investigation is “contrary to the Petition’s interpretation of Paparrizos as teaching a USB input circuit, and is therefore clearly germane to this proceeding.” Id. at 25 (citing Pet. 65). Patent Owner’s argument regarding purported inconsistent positions by Petitioner may have some merit. But, on this record, Patent Owner’s argument is not fully developed. As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary to decide whether to institute, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). 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 Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,447,023 - Duration Media LLC v. Rich Media Club LLCNo claims unpatentablePTAB · Aug 19, 2024 · IPR2023-00953 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1–10 were not proven unpatentable under either §103 ground because the evidence did not show the claimed viewability determination.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find Patent Owner’s argument persuasive. Indeed, it is unclear how Petitioner’s proposal accounts for the types of problems encountered in the art or prior art solutions to those problems. See Daiichi Sankyo, 501 F.3d at 1256 (identifying these factors, among others, as “a guide to determining the level of ordinary skill in the art”). Nor does Petitioner, in its Reply, address, let alone rebut, Patent Owner’s arguments that a person of ordinary skill in the art would have had some experience and/or knowledge in internet advertising. See generally Pet. Reply. Patent Owner proposes that a “person of ordinary skill in the art would have a bachelor’s degree in computer science or a similar major involving computer programming (or at least four years of practical computer programming experience) and at least two years of experience (in or out of college) in the field of internet advertising.” PO Resp. 12 (citing Ex. 2045 ¶54). We agree that a person of ordinary skill in the art would have some experience in internet advertising, although we fail to see why one year would not be enough to familiarize sufficiently a computer scientist and/or programmer with the types of problems encountered in the art or prior art solutions to those problems. Based on the competing proposals, arguments, and evidence before us, we adopt and apply the following level of skill in assessing Petitioner’s challenges to the patentability of the claims of the ’329 patent: a person that would have had a bachelor’s degree in computer science, computer engineering, or electrical (or similar) engineering with about three years of experience being in the field of internet advertising.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Petitioner’s resurrected argument is based on a fundamental misunderstanding of § 311(b). Section 311(b) provides: “A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed cancel the claims of the ’329 patent on the basis of Badros, Harkins, and Krassner. Pet. 11. Petitioner did not base its request, in whole or in part, on the Krassner publication. Id. Krassner clearly is a patent. It issued on August 13, 2019, far too late to be § 102(b) prior art. Even if we assume Krassner is also a “printed publication” withing the meaning of § 311(b), the same date would apply: August 13, 2019. Petitioner has not presented any evidence that the document that is Krassner was published prior to when it issued on August 13, 2019. That another document (the Krassner publication), which published much earlier, may contain the same or similar disclosure is not relevant to when Krassner was patented or published. In sum, Krassner is not prior art under 35 U.S.C. § 102(b). b) Whether Krassner is Prior Art Under 35 U.S.C. § 102(e) Although Krassner is not prior under 35 U.S.C.§ 102(b), we” slip op. at 13
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Petitioner responds that, contrary to Patent Owner’s argument, “Harkins teaches that its invention can be used in web pages.” Pet. Reply 18 (citing Ex. 1004 ¶30). Although Petitioner’s citation is off by one paragraph, Petitioner’s response about what Harkins teaches is correct. See Ex. 1004 ¶29 (“The present invention may be implemented for provision of virtually any type of advertising (e.g., print, radio, television, Internet, billboard, etc.) via any type of advertising medium (e.g., newspaper, magazine, radio broadcast, Web pages, billboards, etc.) without departing from the scope of the present invention.”). We find that Harkins is from the same field based on its express statement that it is applicable to “virtually any type of advertising” and “any type of advertising medium,” including “Web pages.” Ex. 1004 ¶29. Further, even if this were insufficient to place Harkins in the same field as the ’329 patent, we find that Harkins is reasonably pertinent to the particular problems with which the ’329 patent inventors were involved. In sum, we find that Harkins is analogous art to the ’329 patent.” slip op. at 19
- Strike new argumentNew argument disregardedGranted
“Paper 60 (“PO Mot. To Exclude”), 9–10.6 Patent Owner is correct in this regard and, thus, we grant Patent Owner’s Motion to Exclude with respect to the testimony in the second Smedley Declaration and the Madansky Declaration opining that Badros teaches the determination limitation. Paper 60, 9–12. Petitioner, in its Opposition to the Motion to Exclude, argues that Patent Owner’s arguments about the “viewability test” were “surprising.” Paper 62, 8. We are not persuaded by Petitioner’s argument. The “viewability test” is a claim limitation. Petitioner should have anticipated that Patent Owner would argue that limitation. See In re Gardner, 449 F. App’x 914, 916 (Fed. Cir. 2011) (“This court has held that when evaluating claims for obviousness under 35 U.S.C. § 103, all the limitations of the claims must be considered and given weight.” (citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983)); Univ. of Strathclyde v. 6 Patent Owner’s Motion to Exclude seeks to exclude, in part or in whole, Exhibits 1020–1022, 1025–1030, and 1034–1040, which were submitted with Petitioner’s Reply, of which Exhibits 1026 and 1027 are the declaration by Dr. Madansky and the second declaration by Dr. Smedley, respectively. Mot. To Exclude. The Motion to Exclude also seeks to exclude “Exhibits” 1017 and 1018, which are not filed or of record in this case but which are referenced in the Reply. Id. For example, Exhibit 1017 is the Krassner publication, which Petitioner unsuccessfully moved to add to the record as supplemental information. See Paper 21, 3 n.1 (expunging the Krassner publication and stating that it “need not -- and indeed may not -- be re-filed under a new exhibit number”). Apart from the portions of Dr. Smedley’s second declaration and Dr. Madansky’s declaration opining that Badros teaches the “determination” limitation, we dismiss the Motion to Exclude as moot. obviousness determination generally requires a finding that “all claimed limitations are disclosed in the prior art’.” (citing PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014)). Petitioner argues that “[v]iewability tests were well known for well over a decade prior to the ’329 patent’s priority date.” Reply 9. If that were the case, then Petitioner should have made its argument in the Petition. Section 312(a) of Title 35 is titled “Requirements of Petition,” and it specifies that a petition must identify, among other things, “the evidence that supports the grounds for the challenge to each claim, including . . . (B) affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions.” 35 U.S.C. § 312(a)(3); see also 37 C.F.R. § 42.104(b)(4)–(5) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon; and . . . the supporting evidence relied upon to support the challenge.”). Thus, “Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Board’s Consolidated Trial Practice Guide, 73 (Nov. 21, 2019).7 Dr. Smedley’s testimony in his second declaration, that “Badros discloses Patent Owner’s ‘viewability test’” (Ex. 1027 ¶11), is clearly evidence to make out a prima facie case of unpatentability. The same is true of Dr. Madansky’s testimony that she agrees with Dr. Smedley in this regard. Ex. 1026 ¶4.” slip op. at 25
Patent outcomesUS 11,443,329 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,443,329
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.