- Infinera Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Dec 4, 2023 · IPR2023-00835 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–3, 5–7, 9, and 11–20 were unpatentable over Pang and Vrazel.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We accordingly determine that Petitioner does not sufficiently show that the Vrazel meets the requirements of the recited “m-ary modulator.” We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. F. Dependent Claims Each of claims 2, 3, 5–7, 9, and 11–20 depends directly or indirectly from independent claim 1, and Petitioner challenges those claims as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. Ex. 1001, 15:29–16:33; Pet. 53–67. The deficiency in Petitioner’s analysis of independent claim 1 also applies to each of the dependent claims. We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 2, 3, 5–7, 9, and 11–20.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Petitioner proposes that a person of ordinary skill in the art “would have had at least a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering or a similar degree and at least two years of professional experience with optical communications, networking, and signal processing.” Pet. 7. Petitioner adds that “[m]ore experience can supplement less education and vice versa,” and supports its proposal with testimony by Dr. Min. Id.; Ex. 1003 ¶ 41. Patent Owner does not specifically address the level of ordinary skill in its Preliminary Response. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by Dr. Min’s testimony, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing 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.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner proposes that each claim term in the Challenged Claims be given its plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required.” Pet. 6–7. Patent Owner similarly does not propose any explicit construction of any claim term in its Preliminary Response. On the record before us, we do not find it necessary to construe any term for this Decision. 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))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We accordingly determine that Petitioner does not sufficiently show that the Vrazel meets the requirements of the recited “m-ary modulator.” We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. F. Dependent Claims Each of claims 2, 3, 5–7, 9, and 11–20 depends directly or indirectly from independent claim 1, and Petitioner challenges those claims as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. Ex. 1001, 15:29–16:33; Pet. 53–67. The deficiency in Petitioner’s analysis of independent claim 1 also applies to each of the dependent claims. We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 2, 3, 5–7, 9, and 11–20.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,263,723 - ROKU, Inc. v. Universal Electronics, Inc.Some claims unpatentablePTAB · Nov 28, 2023 · IPR2022-00943 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–7, 9–13, 15, and 16 are unpatentable as obvious; claims 8 and 14 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that: On or before 7/12/2017, [one of ordinary skill in the art] would have had a bachelor’s degree in computer science, in electrical engineering, or a related field, and approximately three years of experience or equivalent study in voice-controlled devices in smart home systems. Additional graduate education could 2 Neither party presents arguments or evidence relating to such objective evidence of nonobviousness. in the field could substitute for formal education. Pet. 18. We adopted this definition for the purposes of the Decision on Institution. Dec. on Inst. 8–9. Patent Owner adopts Petitioner’s definition. PO Resp. 4. We again adopt Petitioner’s definition, which is consistent with the level of skill as reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Absent a recitation of order, or an order mandated by grammar or logic, the steps of a method claim are not construed to require a particular order. See, e.g., Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). Patent Owner argues that the steps of claim 1, a method claim, must be performed in sequential order. PO Resp. 13–16. Without commenting on or conceding Patent Owner’s proposal, Petitioner contends that “the trial grounds meet this proposed construction.” Pet. Reply 24–25; Tr. 8:25–11:16. Our record does not reflect any indication that Patent Owner’s proposed construction requiring the sequential ordering of the method steps is not at least encompassed by the correct construction of claim 1. Because of this, and because Petitioner agrees that the arguments in the Petition meet this construction, we accept Patent Owner’s construction as correct for the purposes of this Decision.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“We do not agree with Patent Owner that Petitioner’s showing uses the same sound data to teach the “first sound data” of limitation 1.a and the “second sound data” of limitation 1.c. Patent Owner is correct that Rosenberg’s claim 5 describes the determination of a volume threshold based on the volume of the ambient audio signal in which characteristic form(s) (e.g., the name of the user of the media player) are present. Ex. 1006, 13:66–21, 14:28–30. However, the Petition describes using Fu’s “predetermined threshold” in combination with Hart-787’s device, which attenuates audio output of a device upon detecting a user’s utterance intended to gain the attention of the device, in order to “include adjusting the audio output volume of a wirelessly-linked audio-producing device when the voice-controlled device determines that the ambient noise level at the time a Ex. 1004, 2:22–37, 5:61–6:10, 9:18–25; Ex. 1005 ¶¶ 24, 32, 54; Ex. 1003 ¶¶ 88–89). Petitioner further proposes including a threshold that is advantageously based on the environment in which the device is operating as described in Fu, for example to respond to differing levels of noise at different times of day. Id. at 26, 29–30, 40 (citing Ex. 1006, 10:42–67, 14:28–30; Ex. 1003 ¶¶ 48–53, 55, 58, 87, 91, 107–109). We agree with Petitioner that Patent Owner’s arguments address the references individually instead of addressing the combination of the teachings proposed in the Petition. See Pet. Reply 8, 13–14; see also Dec. on Inst. 21–22, 23–24, 25–26. The Petition relies upon a combination of elements of Hart-787 with the predetermined threshold as taught in Fu and with establishing such a threshold based on the operating environment of a device as in Rosenberg. Pet. 26–31, 34–41. Patent Owner is correct that Rosenberg’s threshold is set at the time of the utterance in Rosenberg’s claim 5 and cites Petitioner’s declarant as “conceding” issues regarding how “Rosenberg’s volume threshold is determined.” PO Resp. 20–21. But this argument and the ostensible concession do not squarely address the proposed combination, which combines Fu’s teaching of an adjustment unit that “compares the volume of the ambient noise received . . . to a predetermined threshold” with Rosenberg’s teaching that such “a threshold may be ‘determined based on the volume of [an] ambient audio signal.’” Pet. 39, 40 (emphasis omitted) (quoting Ex. 1006, 14:28–30). While Patent Owner argues that “Petitioner has not proposed using a predetermined/pre-set threshold or a previously established threshold based on environmental noise in the combination of Hart-787 with F[u] and Rosenberg” (PO Resp. 46), we find, on the contrary, that the Petition describes a combination based predetermined threshold” and on a threshold “determined according to an environmental noise level.” Pet. 29–30. Thus, we find Petitioner’s unpatentability grounds do not suffer from the issues Patent Owner argues are a consequence of the purported use of the same sound data for the “first sound data” of claim limitation 1.a and for the “second sound data” of claim limitation 1.c. We do not agree with Patent Owner’s arguments regarding Fu’s teachings with respect to limitation 1.e’s “transition from a first state having a first volume level to a second state having a second volume level that is less than the first volume level” because these arguments similarly do not address the proposed combination. See PO Resp. 26–30. The Petition cites Hart-787 for attenuating the volume of an audio-producing device when a wake word is issued. Pet. 32–34, 43–44. The Petition cites Fu for adjusting volume of an audio-producing device if the level of ambient noise exceeds a predetermined threshold. Id. at 36–39, 44–45. Thus, even if Fu teaches only increasing the volume of an audio-producing device if the predetermined threshold is exceeded, the Petition relies on the combination of teachings of Hart-787 and Fu, and Patent Owner’s argument that neither reference teaches “decreasing a controllable appliance’s volume output when a previously established volume threshold is exceeded” (PO Resp. 30) does not address the combination proposed. Patent Owner’s argument that “Petitioner has not proposed modifying Fu to decrease a controllable appliance’s volume output when a volume threshold is exceeded” (PO Resp. 30) similarly does not address the combination proposed in the Petition. We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references. transmitted volume down control signals as the means for attenuating audio output, Petitioner contends that Hart-787 “broadly teaches” that a device transmits control command signals to the audio-producing device, relying on the testimony of its declarant. See Pet. 23 (citing Ex. 1004, 5:47–51; Ex. 1003 ¶ 82), 43–44 (citing Ex. 1004, 1:67–2:7, 2:26–27, 5:47–51; Ex. 1003 ¶ 118). In addition, Petitioner shows that these control signals were well-known in the art and would have been known to one of ordinary skill in the art at the time of the invention, supporting its showing with additional testimony from its declarant. Id. at 44 (citing Ex. 10183, 2:39–47, 5:35–38; Ex. 10194 ¶¶ 3, 13; Ex. 1003 ¶¶ 44–45, 118). We conclude Petitioner’s evidence regarding the showing in Hart-787 is sufficient with respect to this point. Hart-787 describes altering a signal sent to the speaker to attenuate the audio from that speaker. Ex. 1004, 1:67– 2:1. Petitioner’s declarant testifies that using transmitted control signals to do this would have been known to one of ordinary skill. Ex. 1003 ¶¶ 44–45, 82, 118. We consider Petitioner’s evidence regarding what one of ordinary skill in the art would have understood from Hart-787’s disclosure to be sufficient for the showing regarding the “causing one or more commands to be automatically issued to the controllable appliance to thereby cause” that appliance to transition to a lower volume level, as required in limitation 1.e. While Patent Owner argues that Petitioner’s declarant “concede[s] that Hart- 787 does not disclose or teach how its voice-controlled device decreases the audio output of the controllable appliance,” the cited portion of the” slip op. at 25
Patent outcomesUS 10,930,276 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,930,276 - PTAB · Nov 17, 2023 · IPR2023-00900 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR on claims 13–17 on all petitioned grounds after finding a reasonable likelihood of prevailing on at least one obviousness challenge.
RulingsInstitution decision- 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) (2023). 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 demonstrates a reasonable likelihood of prevailing with respect to claims 13–17 of the ’702 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“On this preliminary record, we agree with Petitioner that the intrinsic record does not support a construction of “stackable add-on layer” that encompasses formation of memory cells by sequential deposition on a plain language of the claim does not require merely a “layer” having a plurality of vertically oriented semiconductor memory cells, but rather “a stackable add-on layer” having a plurality of vertically oriented semiconductor memory cells that is bonded to the dielectric layer. Ex. 1001, 12:29–32. The written description of the ’702 patent strongly suggests that such “a stackable add-on layer” is formed separately from the substrate and then stacked on and bonded to the substrate. Id. at 1:47–50 (“Briefly, a plurality of vertically oriented semiconductor memory devices, or cells, may be added to a separately fabricated substrate that includes electrical devices and/or interconnect lines.” (emphasis added)). It is unclear how memory cells sequentially deposited on a substrate could be considered to be a plurality of memory devices “added to a separately fabricated substrate.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends one of ordinary skill in the art would have combined Watanabe and Lee because Watanabe discloses an alternate method of forming a memory device that is applicable to the memory devices of Lee and Watanabe, and Watanabe discloses that its “stacking method” improves the accuracy of the wiring and provides “a semiconductor memory device with improved integration density” and “low interconnection wire resistance.” Id. at 72.” slip op. at 24
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“3. Factor 3 – Investment in the parallel proceeding by the court and the parties Under the third Fintiv factor, we consider the “investment in the parallel proceeding by the court and the parties.” Fintiv, Paper 11 at 6. Petitioner contends that, at the time of the filing of the Petition, the court had not yet held a case management conference or set a Markman or trial date, and that no hearings or substantive activities or hearings have occurred in the case. Pet. 75. “Because the investment in the trial has been minimal and Petitioner acted diligently” in filing the Petition, Petitioner contends “this factor weighs strongly against discretionary denial.” Id. Patent Owner contends the co-pending district court case has been moving forward, with infringement and invalidity contentions being exchanged and discovery and deposition underway. Prelim. Resp. 34. Patent Owner further contends that by the institution deadline of November 28, 2023, the parties will be in the “home stretch of discovery.” Id. at 34– 35. “Based on the considerable resources already expended on contentions and discovery in the district court,” Patent Owner argues that Fintiv factor 3 weighs in favor of denying institution. Id. at 35. directed to no substantive rulings by the district court to suggest that it has invested considerable resources in the case. Nor are we presented with evidence that the parties have expended significant resources in the district court litigation. Fact discovery is not scheduled to be completed until July 1, 2024, and expert discovery is to be completed by August 5, 2024, i.e., more than seven months after the institution deadline. Ex. 2001, 3. Accordingly, we determine that Fintiv factor 3 weighs against discretionary denial of institution. 4. Factor 4 – Overlap between issues raised in the petition and in the parallel proceeding Under the fourth Fintiv factor, we consider the “overlap between issues raised in the petition and in the parallel proceeding.” Fintiv, Paper 11 at 6. Petitioner contends that in the district court litigation Patent Owner asserts infringement under only claim 13, whereas the Petition challenges claims 13–17. Pet. 76. Petitioner argues that because it is challenging more claims than are asserted in the district court litigation, this proceeding “is the only venue in which the invalidity challenges against several claims in the ’702 Patent will be adjudicated,” and this proceeding will promote efficiency because it “will resolve disputes against future district court defendants.” Id. Patent Owner responds that Petitioner’s “invalidity contentions challenge the same Claims 13–16 based on the identical Watanabe, Lee, and Endoh references relied upon in the Petition.” Prelim. Resp. 35. Petitioner responds that it has signed and served a stipulation “not to pursue in the parallel district court proceeding any obviousness ground that includes the primary references in the Petition.” Prelim. Reply 2. According to Petitioner, “[t]his stipulation mitigates concerns of potentially the PTAB.” Id. Patent Owner argues in response that Petitioner’s “meager agreement” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,378,702 - Mahle Behr Charleston Inc. v. Frank Amidio CatalanoInstitution deniedPTAB · Nov 15, 2023 · IPR2023-00861 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On this record, we determine that Petitioner advances Dr. Medlin’s testimony to make out a claim limitation that is not suggested, much less taught, by the text of the prior art reference at hand. Because that testimony lacks objective support or adequate technical reasoning, it is entitled “little weight” and, moreover, is insufficient to support institution of trial. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (Aug. 24, 2022) (precedential). Dr. Medlin’s remaining testimony relies on the testimony we have discussed so far. Ex. 1004 ¶¶ 201–204, 207–210, 224–226. Accordingly, this testimony does not show sufficiently that Tomosada would have suggested to a person of ordinary skill in the art that anodes should be placed within 10 inches of Tomosada’s hot liquid inlet. Because Petitioner relies on Dr. Medlin’s testimony to show that a person of ordinary skill in the art would have understood that Tomosada suggested placing an anode within 10 inches of a hot liquid inlet to a radiator, and because that testimony does not show sufficiently that a person of ordinary skill in the art would have had such an understanding, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to any claim challenged on the basis of Tomosada.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“To show obviousness, it is not enough to merely show that the prior art includes separate references covering each separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). “Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention.” Id. (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)). “This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” KSR, 550 U.S. at 418–19. On the other hand, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Nevertheless, “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421.” slip op. at 6
- 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 “would have had at least a bachelor’s degree in mechanical engineering, metallurgical engineering, or materials science engineering, and have two or more years of experience in mechanical engineering, metallurgical engineering, or materials science engineering and/or corrosion prevention system design.” Pet. 16 (citing Ex. 1004 ¶¶ 72–75). According to Petitioner, “[a] person could also have qualified as a [person of ordinary skill in the art] with some combination of more formal education (e.g., a Ph.D.) and less technical experience,” or vice versa. Id. at 16–17. “To the extent necessary, the [person of ordinary skill in the art] may have collaborated with other skilled artisans, such that the individual and/or team collectively would have had experience and/or knowledge or particular characteristics of a radiator system.” Id. at 17. “For the limited purpose of [its] Preliminary Response, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so if trial is instituted.” Prelim. Resp. 7. 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 ’494 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 and implement the teachings of the ’494 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“C. Claim Construction In an inter partes review, we construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2022). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. Both parties argue that we need not construe any terms in order to decide whether to institute trial. Pet. 17; Prelim. Resp. 8. We agree. After considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to construe any terms expressly for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
Claim constructioncites Phillips · KSR · Graham - Trend Micro, Inc. v. Open Text Inc.Institution deniedPTAB · Nov 6, 2023 · IPR2023-00677 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because Trend Micro did not show a reasonable likelihood that claims 1–19 were obvious over Rockwood and Xie.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“4. Summary In view of the foregoing, we determine that Petitioner has not demonstrated a reasonable likelihood of showing that independent claims 1, 8, and 16 would have been obvious over Rockwood and Xie. Claims 2–7, 9–15, and 17–19 depend from claims 1, 8, or 16. Accordingly, we also determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion as to these dependent claims. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’045 patent. Therefore, we do not institute trial.10 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“10 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the petition based on the state of the related litigation. See Prelim. Resp. 2–19.” slip op. at 23
- BurdenNot shown unpatentable
“For these reasons, we find Petitioner’s first mapping insufficient to establish a reasonable likelihood that Petitioner can prove the challenged claims unpatentable in view of Rockwood and Xie.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We additionally find it unclear which reference Petitioner relies on for the correlating. It appears that Petitioner finds the correlating in Rockwood (the reference with the attacker profile); but if Rockwood is intended to provide the correlating, it is unclear what role Xie has in Petitioner’s proposed combination. See Pet. 17–18. We further find that Petitioner does not adequately describe how these references might be combined. Rockwood describes a system that identifies attacks at a network edge as they occur,8 whereas Xie’s system looks for similar changes across different hosts within a network over multiple days. There is insufficient explanation of how Xie’s correlating technique would be beneficial in a system like that of Rockwood.” slip op. at 18
§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,578,045 - Google LLC v. Parus Holdings, Inc.All claims unpatentablePTAB · Nov 6, 2023 · IPR2022-00805 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–26 are unpatentable: claims 1–26 as obvious over Wise and Woods, claims 1–25 over Wise and Dasan, and claim 26 over Wise, Dasan, and Uppaluru.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 6–7. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Mr. Lipoff supports this articulation, and Patent Owner makes the same proposal. See Ex. 1002 ¶ 77; PO Resp. 1. Because we find the parties’ agreed proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by Mr. Lipoff’s testimony, we adopt it for this Decision. 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 neededDecided for petitioner
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing 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.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner does not believe that any express constructions are necessary” to resolve the parties’ dispute, and Patent Owner agrees that “claim construction is unnecessary.” See Pet. 7; PO Resp. 1. On the record before us, we do not find it necessary to construe any term for this Decision. 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))).” slip op. at 10
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Mr. Occhiogrosso made similarly inconsistent statements on this point on cross-examination. For example, when asked whether the claim requires that the “content-descriptor file be a different file,” Mr. Occhiogrosso responded that “[i]n my opinion, there’s nothing inherent that says it has to be stored in the same physical data file on the same storage medium.” Ex. 1057, 68:11–23. But when asked, “Could the content-descriptor file be one of the web pages that make up a website?” he responded, “In my opinion, no.” Id. at 70:9–13. Notwithstanding such inconsistent statements, we find that, taken as a whole, Mr. Occhiogrosso’s testimony reflects an opinion contrary to that of Mr. Lipoff, namely the recited “content-descriptor file” must be a file separate and distinct from an HTML web page. The Federal Circuit has “viewed extrinsic evidence in general as less reliable than the patent and its prosecution history in determining how to read claim terms,” e.g., because expert testimony “is generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence.” Phillips, 415 F.3d at 1318. In this instance, although we discern certain (but contrary) positions in the experts’ opinions on this point, the inconsistencies in their cross-examination testimony limit our confidence in those opinions. We accordingly give greater weight to the intrinsic evidence, which more strongly supports Petitioner’s position. We accordingly determine that Petitioner’s showing with respect to this limitation is sufficient.” slip op. at 39
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Patent Owner disputes Petitioner’s reasoning because Petitioner’s “motivation to combine argument is centered on the periodic retrieval of information from an information source (webpage) and not on an information source that is periodically updated,” as the claim recites. PO Resp. 24. Nevertheless, Patent Owner concedes that Petitioner “establishes . . . that the Wise website information sources are periodically updated,” which Petitioner correctly observes “is all that the claim requires.” Id.; Reply 9. Patent Owner reasons that there is no motivation to combine teachings from the two references because “the Wise system alone already provides the most up-to-date and complete information to the user.” PO Resp. 27. But the Federal Circuit has criticized such an argument as “reasoning [that] belies its conclusion”: “[t]hat [two prior art references] address the same problem and that [one of the references] was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and [Federal Circuit] precedent.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (quoted in Pet. 10– 11). This is the “known-technique” rationale, in which “[t]here is a motivation to combine when a known technique ‘has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.” Id. at 1380–1381 (citing KSR, 550 U.S. at 417). Implementing periodic updating of information sources as taught by Dasan would be within the skill of an ordinary artisan to implement in Wise’s system. We accordingly determine that Petitioner articulates sufficient reasoning, supported by rational underpinning, to effect the combination it proposes and to meet the first aspect of the preamble.” slip op. at 19
Patent outcomesUS 9,769,314 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,769,314 - Nokia Of America Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Nov 3, 2023 · IPR2023-00680 · APJ Thu A Dang · IPR · Institution
The Board denied institution for all challenged claims under § 325(d), finding substantially the same art and arguments had been presented to the Office and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“5. 35 U.S.C. § 325(d) Conclusion We conclude that (1) substantially the same art was previously presented to the Office, and (2) Petitioner has not demonstrated that the Office erred. We therefore conclude that it is appropriate to exercise discretion under 35 U.S.C. § 325(d) to deny the Petition.” slip op. at 28
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“III. CONCLUSION After considering the evidence and arguments presented in the Petition and Preliminary Response, we determine that, for each of Petitioner’s challenges, it is appropriate to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition with respect to those grounds. We accordingly exercise that discretion for the Petition as a whole and deny institution of an inter partes review.3 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 29
Discretionary denialPatents in suitUS 9,887,795 - Nokia Of America Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Nov 3, 2023 · IPR2023-00681 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same art had been presented to the Office and Petitioner had not shown material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In light of these similarities, we find that the Petition relies on art and arguments that are substantially the same as previously evaluated by the Office.” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. CONCLUSION For the foregoing reasons, we exercise discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.5 IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted. 5 Because we deny the Petition under 35 U.S.C. § 325(d), we do not reach Patent Owner’s request that we deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential). See Prelim. Resp. 53–60. Nor do we reach the parties’ merits arguments.” slip op. at 26
Discretionary denialPatents in suitUS 10,263,723 - Nokia Of America Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Nov 3, 2023 · IPR2023-00682 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same art had been presented to the Office and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”), the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(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.” Advanced Bionics at 8.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“D. Conclusion We conclude that (1) substantially the same art was previously presented to the Office, and (2) Petitioner has not demonstrated that the Office erred. We therefore conclude that it is appropriate to exercise discretion under 35 U.S.C. § 325(d) to deny the Petition. III. CONCLUSION For the foregoing reasons, we exercise discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.5 IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“5 Because we deny the Petition under 35 U.S.C. § 325(d), we do not reach Patent Owner’s request that we deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential). See Prelim. Resp. 53–60. Nor do we reach the parties’ merits arguments.” slip op. at 26
Discretionary denialPatents in suitUS 10,771,181 - Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Netlist, Inc.No claims unpatentablePTAB · Oct 30, 2023 · IPR2022-00744 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–3, 5, 6, 8–10, and 12–14 were not shown unpatentable because Halbert did not disclose the claimed ranks operating at the specified data rate.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not provide a different assessment of the level of ordinary skill, but Dr. Przybylski states that an individual with the level of experience identified by Petitioner “would have less knowledge and familiarity” than presumed by Petitioner’s definition. Ex. 2003 ¶ 46. Dr. Przybylski, however, provides no further discussion explaining this apparent disagreement with Petitioner, nor does he set forth what level of knowledge and familiarity a person of ordinary skill in the art would have had. Based on the complete trial record, we determine that Petitioner’s proposed skill level is consistent with the level of ordinary skill evidenced by the ’314 patent and the asserted prior art, and we adopt that skill level with the exception of the phrases “at least,” which introduce vagueness as to the amount of experience.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We disagree with Petitioner’s interpretation. Taking Petitioner’s point that “‘specified data rate’ means only that the data rate is specified in some way” (Pet. Reply 4), we do not see how, once the rate is specified, claim 1’s later recitations of “the specified data rate” could refer to any other rate, as Petitioner’s arguments suggest. Petitioner argues that “it is clear that the ‘specified data rate’ that provides antecedent basis for later recitations of that term is merely the data rate specified for ‘communicat[ing] data’ between the ‘memory module’ and the external ‘memory controller of the computer (alteration by Petitioner). We agree with this statement, and later recitations of “the specified data rate,” therefore, refer to the data rate that is so specified. Petitioner provides no persuasive argument to support its position that later recitations of “the specified data rate” could be satisfied by data rates that are not the “specified data rate.”” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“PO Resp. 19; see also Ex. 2003 ¶¶ 68–72 (Dr. Przybylski’s testimony explaining this annotated figure). Halbert’s Figure 5 is a timing diagram for two consecutive read operations (Ex. 1005 ¶¶ 16, 37), and Patent Owner includes annotations to show each of ranks 140 and 142 outputting data onto their respective data busses at half the rate that data are output from data interface circuit 120 on the DQ data line. In particular, Halbert explains that each of ranks 140 and 142 is “capable of performing m-bit-wide data transfers.” Ex. 1005 ¶ 30. On a read command, rank 140 sends m-bit-wide data to bi-directional data register 126 on line RDQ0 at the same time that rank 142 sends m-bit-wide data to bi-directional data register 128 on line RDQ1, as shown in Figure 5 between T7n and T8n. Ex. 1005 ¶¶ 31–32, 39. Halbert discloses that register 126 or from register 128 to output to buffer 122, which are then output on line DQ. Ex. 1005 ¶ 33. Halbert explains that “[d]ata is serialized from the data registers onto the memory data bus by reading 2m bits into the data registers during one memory device read cycle, and then driving these bits, m at a time, through MUX 124.” Ex. 1005 ¶ 33. As shown in Halbert’s Figure 5, over one clock cycle (T7n–T8n), each of ranks 140 and 142 outputs one piece of m-bit-wide data, and over one clock cycle (T8–T9), those two pieces of m-bit-wide data are output on line DQ to the system memory data bus. Halbert explains that the second read operation proceeds in the same fashion as the first and that “[t]he net result is that the memory data bus transfers 4m bits of data in two memory bus clock cycles (four mbit transfers), with only two data accesses performed at each memory device on the module.” Ex. 1005 ¶ 42. Thus, Halbert’s memory module outputs data to the system memory data bus at twice the rate that each of ranks 140 and 142 outputs data. See Ex. 2003 ¶¶ 68–73 (Dr. Przybylski’s credible testimony explaining Halbert’s data rates).” slip op. at 11
Patent outcomesUS 10,489,314 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,489,314
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.