- Viken Detection Corp. v. American Science And Engineering, Inc.All claims unpatentablePTAB · Apr 26, 2023 · IPR2022-00027 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–12 are unpatentable: claims 1–3, 7–9, and 12 are anticipated or obvious; claims 4–6 and 10–11 are obvious on the grounds stated.
RulingsFinal written decision- Skill levelOther
“Despite the lesser amount of experience, i.e. two years, as proposed by Patent Owner compared to 5 years as Petitioner proposes, Petitioner’s and Patent Owner’s asserted levels of ordinary skill in the art are not terribly disparate. Both require at least a bachelor’s degree in an engineering or science field and experience with X-ray penetrating radiation to include radiation sources, detectors and imaging systems. To the extent there is a difference, it does not effect, nor do the parties argue that it should, our decision with respect to the challenged claims as either anticipated or obvious. See, e.g., PO Resp. 20 (Patent Owner describing that “Petitioner comparable additional education), Pet., 18, but even with that difference, the claims of the ’763 patent are not anticipated nor would they have been obvious to an ordinary artisan.”).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Given the relative consistency between the parties’ interpretations, the claims, and the specification of the ’763 patent, as well as to harmonize the record to the extent it is even necessary, we rely on Patent Owner’s interpretation, which is that “an ordinary artisan would have understood that an ‘inspection space’ is defined by the physical characteristics of a particular inspection system.” PO Resp. 25.” slip op. at 15
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We credit Petitioner’s Declarant, Dr. Lanza, who persuasively explains that a person of ordinary skill in the art would have understood that “Chalmers ’764 scanning beam 58 thus enters the inspection space at a first entry point, as shown in annotated Figure 1 of Chalmers ’764 below.” Ex. 1003 ¶ 131 (citing Ex. 1007, Figure 1). We reproduce Dr. Lanza’s annotated Figure 1 below. with objects (contents) 30 and 50 within an inspection space bounded by dashed red line as defined by a first entry point at top right of the inspection space where rotating pencil beam 58, highlighted purple, starts scanning. Id. We further credit Dr. Lanza’s testimony because it is consistent with Grodzins disclosure incorporated by reference into Chalmers. See Ex. 1007 1:6–10 (Chalmers stating that Grodzins, “as U.S. Pat. No. 6,151,381 . . . all of which applications and patents are herein incorporated by reference.”). Grodzins explains that it was “known to persons skilled in the art to provide for scanning of beam 70 across a region of space which may include the target container 10.” Ex. 1008, 5:24–26. By way of example, Grodzins Figure 3 is reproduced below. Grodzins Figure 3 illustrates a four spoke rotating wheel 74 and “X-ray beam 70, generated by an x-ray source 72 in the center of a rotating wheel is visually depicted here, that Grodzins’ X-ray beam 70, based on the collimator opening, will sweep the vertical length of backscatter detector 82. This results in scanning of the entire container 10, as Grodzins describes. Id. at 5:24–26. Dr. Lanza’s testimony, Chalmers, and Grodzins as incorporated by” slip op. at 33
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014).” slip op. at 10
Patent outcomesUS 8,300,763 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,300,763 - Early Warning Services, LLC / Samsung Electronics Co., Ltd. v. Wepay Global Payments LLCAdverse judgmentPTAB · Feb 9, 2023 · PGR2022-00045 · APJ Grace Karaffa Obermann · PGR · Adverse judgment
The Board entered adverse judgment against Patent Owner and cancelled claim 1 based on statutory disclaimers; alternatively, it held claim 1 unpatentable on every asserted ground.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“first embodiment, including Figures 1 and 2. Ex. 1106; Paper 32, 2. On January 26, 2023, Patent Owner filed a statutory disclaimer of the second embodiment, including Figures 3, 4, and 5. Ex. 1107; Paper 32, 2. Patent Owner successfully paid the statutory disclaimer fees in connection with both disclaimers. Ex. 1106, 4; Ex. 1107, 4; Paper 32, 2–3. Based on the information presented, we find that Patent Owner, by disclaiming all figures and embodiments described in the ’702 patent, has disclaimed the entire scope of the sole design claim at issue, such that no challenged claim remains in this proceeding. Specifically, in that regard, the ’702 patent claims and describes two embodiments, where the first embodiment is depicted in Figures 1 and 2, and the second embodiment is depicted in Figures 3, 4, and 5. Ex. 1001, code (57). The statutory disclaimers, taken together, disclaim both embodiments and all five figures set forth in the ’702 patent. Exs. 1106, 1107. Accordingly, we determine that adverse judgment against Patent Owner based on the disclaimers is warranted. 37 C.F.R. §§ 42.73(b)(1), 42.73(b)(2); Paper 32, 3.8” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In particular, we find that Reddy discloses a design having substantially the same overall appearance as the claimed design, as shown in Petitioner’s comparison illustration reproduced below. Paper 22, 10 (citing Pet. 63). The above illustration compares the claimed design in the upper half to Reddy’s design in the lower half. Both designs include an image of a Three Square Arrangement9 followed by an image of “a $0.00 in practically identical style and font.” Id. at 10–11 (quoting Pet. 64). We determine that Petitioner proves by a preponderance of the evidence, moreover, “that ‘the overall visual effect of the claimed design,’ when compared to ‘the design disclosed in Reddy[,] would be substantially the same to an ordinary observer.’” Id. at 11 (alteration in original) (citation omitted); Pet. 64–67 (and evidence cited therein). Based on the full trial record, we agree with Petitioner and find that “there is no material difference” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“To the extent “any ‘slightly different spacing of the squares,’ as between the claimed and prior art designs,” is not de minimus, we find “that the ordinary designer would have modified Reddy’s design to mirror the claimed design” in order “to increase the amount of data” contained in the code. Paper 22, 13 (quoting Pet. 72 (citing Ex. 1002 ¶ 97)). The ordinary designer, considering Reddy alone, “would find the claimed ‘design as a whole has substantially the same overall visual appearance as the Reddy design,’ as so modified.” Id. (quoting Pet. 73 (citing Ex. 1002 ¶ 99)). Based on the full trial record, we determine that Reddy renders the challenged claim unpatentable as obvious.” slip op. at 9
- BurdenUnpatentable
“We conclude that Patent Owner has forfeited any arguments opposing the information advanced in the Petition with respect to the other asserted grounds of invalidity. We adopt the reasoning set forth in the Petition with respect to those grounds. See Pet. 23–45 (arguments and evidence directed to publication and accessibility of SGQR, GrabPay, Digital Debit Video, and Digital Debit Patent), 73–88 (arguments and evidence directed to the grounds that assert SGQR, GrabPay, Digital Debit Video, and Digital Debit Patent). On this record, Petitioner demonstrates by a preponderance of the evidence that the subject matter of the challenged claim would have been obvious based on the other grounds asserted in the Petition. Id.” slip op. at 9
§ 102 anticipation§ 103 obviousness - Early Warning Services, LLC / Samsung Electronics Co., Ltd. v. Wepay Global Payments LLCAdverse judgmentPTAB · Feb 9, 2023 · PGR2022-00031 · APJ Grace Karaffa Obermann · PGR · Adverse judgment
Adverse judgment was entered after Patent Owner disclaimed the sole claim; alternatively, the claim was held unpatentable on the asserted anticipation and obviousness grounds.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“On October 5, 2022, Patent Owner filed a statutory disclaimer of the first embodiment, including Figures 1 and 2. Ex. 1106; Paper 32, 2. On January 26, 2023, Patent Owner filed a statutory disclaimer of the second embodiment, including Figures 3, 4, and 5. Ex. 1107; Paper 32, 2. Patent Owner successfully paid the statutory disclaimer fees in connection with both disclaimers. Ex. 1106, 4; Ex. 1107, 4; Paper 32, 2–3. Based on the information presented, we find that Patent Owner, by disclaiming all figures and embodiments described in the ’702 patent, has disclaimed the entire scope of the sole design claim at issue, such that no challenged claim remains in this proceeding. Specifically, in that regard, the ’702 patent claims and describes two embodiments, where the first embodiment is depicted in Figures 1 and 2, and the second embodiment is depicted in Figures 3, 4, and 5. Ex. 1001, code (57). The statutory disclaimers, taken together, disclaim both embodiments and all five figures set forth in the ’702 patent. Exs. 1106, 1107. Accordingly, we determine that adverse judgment against Patent Owner based on the disclaimers is warranted. 37 C.F.R. §§ 42.73(b)(1), 42.73(b)(2); Paper 32, 3.8” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In particular, we find that Reddy discloses a design having substantially the same overall appearance as the claimed design, as shown in Petitioner’s comparison illustration reproduced below. Paper 22, 10 (citing Pet. 63). The above illustration compares the claimed design in the upper half to Reddy’s design in the lower half. Both designs include an image of a Three Square Arrangement9 followed by an image of “a $0.00 in practically identical style and font.” Id. at 10–11 (quoting Pet. 64). We determine that Petitioner proves by a preponderance of the evidence, moreover, “that ‘the overall visual effect of the claimed design,’ when compared to ‘the design disclosed in Reddy[,] would be substantially the same to an ordinary observer.’” Id. at 11 (alteration in original) (citation omitted); Pet. 64–67 (and evidence cited therein). Based on the full trial record, we agree with Petitioner and find that “there is no material difference” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“To the extent “any ‘slightly different spacing of the squares,’ as between the claimed and prior art designs,” is not de minimus, we find “that the ordinary designer would have modified Reddy’s design to mirror the claimed design” in order “to increase the amount of data” contained in the code. Paper 22, 13 (quoting Pet. 72 (citing Ex. 1002 ¶ 97)). The ordinary designer, considering Reddy alone, “would find the claimed ‘design as a whole has substantially the same overall visual appearance as the Reddy design,’ as so modified.” Id. (quoting Pet. 73 (citing Ex. 1002 ¶ 99)). Based on the full trial record, we determine that Reddy renders the challenged claim unpatentable as obvious.” slip op. at 9
§ 102 anticipation§ 103 obviousness - PTAB · Jan 3, 2023 · IPR2022-00971 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–7, 9, 13, and 19 on all petitioned grounds, finding a reasonable likelihood that Gelvin anticipates at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“record, and does not expressly dispute Petitioner’s definition of a person of ordinary skill in the art. See gen. Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’771 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioner argues that even though the Board construed these terms under the broadest reasonable standard in the Motorola IPR, “[f]or purposes of this Petition, the Phillips standard does not require any different construction, and Petitioner’s proffered grounds are consistent with the above constructions.” Id. at 11. Patent Owner does not provide any express claim constructions nor dispute Petitioner’s proposed constructions from the Motorola IPR. At this preliminary stage of the proceeding, at least for the sake of consistency at institution, we rely on the Board’s earlier constructions in the Motorola IPR. We acknowledge that Patent Owner has not yet provided any substantive claim construction in its Preliminary Response, however Patent Owner has the opportunity to address this matter in its Patent Owner’s Response should it desire to do so.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted
“We consider Patent Owner’s argument, and agree to an extent, that Gelvin describes the PDA in Figure 5 as “coupl[ing] to the Internet 599 through a service provider that specializes in low-rate communications,” rather than through WINS network architecture 500. Ex. 1005, 9:48–50. But read in context, Gelvin does not appear limited to this embodiment. For example, after describing the three ways that Gelvin’s WINS network architecture 500 can couple to the internet, Gelvin broadly describes that “[t]he WINS vehicle internetwork of an embodiment includes functionality that enables convenient and secure coupling of diverse networks and devices.” Id. at 9:58–60. Also, Gelvin explains other ways in which the vehicle network connects with the Internet. Gelvin for instance, describes with respect to Figure 6 that “[i]n operation, the vehicular network 602 tries to select the most cost-effective communication alternative that provides the desired level of service.” Id. at 10:20–22. When connecting to an external ISP (Internet Service Provider), Gelvin explains that one option is “the ISP uses the vehicle’s cellular phone number to attempt to establish a coupling over the telephone network, and tunnel the packet through. While the cell associated cost, and thus the reason for attempting other means of communication.” Id. at 10:35–40. Gelvin’s disclosure does not, on the record at this stage of the proceeding, appear limited to the PDA communicating via the internet on its own network. Particularly, where Gelvin provides various embodiments and communication methods and explains that given the WINS architecture, “[p]otentially, any number of available methods of communication can be attempted.” Id. at 10:40–41.” slip op. at 20
Claim construction§ 102 anticipationPatents in suitUS 7,382,771 - Toyota Motor Corp. v. Intellectual Ventures II LLCInstitution deniedPTAB · Jan 3, 2023 · IPR2022-01127 · APJ Scott A Daniels · IPR · Institution
The Board denied institution because Toyota did not show a reasonable likelihood that any challenged claim was unpatentable, including because Peisa did not disclose selecting data from fewer than all radio bearers.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The following limitation 1[g], however, provides that “in the first iteration . . . data is selected from a subset of the plurality of radio bearers.” Id. at 14:10–11 (emphasis added). This clause does not simply reiterate “the plurality of radio bearers,” but expressly adds “a subset.” The word “subset” plainly modifies “a plurality of radio bearers,” and must have some limiting meaning. For example, if we were to interpret “subset” as encompassing all or less than all of the radio bearers as Petitioner asserts, than the word, i.e., limitation, “subset” is entirely unnecessary, given that the claim already provides such broader meaning. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in claims superfluous). See Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim”). Indeed, if “a subset” can include data selected from all the radio bearer’s then Petitioner’s interpretation reads the term “subset” essentially, if not entirely, out of the claim.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“This argument and Dr. Akl’s testimony is problematic because it does not explain technically, or logically, why input flows that transmit less than “a determined fair distribution” are “non-selected.” Neither the arguments in the Petition, nor Dr. Akl’s testimony, fully address this particular jump in logic. Even if the input flow transmits less than its fair distribution of bandwidth, (and a backlog counter is incremented to reflect that the input flow has buffered data that was not transmitted), this does not explain that a particular radio bearer is excluded from being allocated bandwidth resources such that it is “non-selected,” i.e., that resources are applied only to less than all of the radio bearers. The Petition even tacitly acknowledges that each input flow in Peisa transmits data, explaining that “[w]hen the scheduling algorithm does reach step 445 in the first iteration, it will ‘update’ the ‘backlog counters’ for each input flow that did not get to transmit all of its data during the first iteration.” Id. at 49 (citing Ex. 1004, 9:1–34).” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“Apart from “a processor,” Petitioner does not discuss or analyze any additional limitations, including limitations 1[g] and 8[h], with respect to obviousness. See Pet. 63 (“Thus, the “processor” and ‘processor configured to . . .’ limitations of claims 1 and 8 would have at least been obvious based on Peisa.”). Petitioner relies on its evidence and arguments with respect to ground 1 for the remainder of the obviousness ground. See id. (The Petitioner states “given the above-discussed disclosures of Peisa in Ground 1 for the other limitations of claims 1–4, 6–11 and 13–14, Peisa would have at least rendered obvious claims 1–4, 6–11 and 13–14) (citing Ex. 1003 ¶¶ 169–73). Petitioner’s obviousness ground based on Peisa, thus does not provide persuasive evidence or arguments that a person of ordinary skill in the art would have understood Peisa to disclose the limitations in limitations 1[g] and 8[h]. Accordingly, based on the arguments and evidence of parties on the record before us, we determine that Petitioner has not established a reasonable likelihood of showing any of the challenged claims as obvious over Peisa.” slip op. at 31
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,292,138 - PTAB · Nov 2, 2022 · IPR2022-00909 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–5, 12, 19, and 23 on all asserted grounds after finding a reasonable likelihood that claim 1 would be obvious over the Guide, alone or with Harper.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not expressly dispute Petitioner’s asserted level of ordinary skill in the art asserting that “the Petition fails even if Petitioner’s POSA definition is adopted.” Prelim. Resp. 8. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’215 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The claim limitations which Patent Owner desires Petitioner to construe read clearly and unambiguously. Limitation 1[b] recites the step: evaluating sensor data using a second function to determine whether a parameter indicative of glucose value meets one or more non user settable second criteria; Ex. 1001, 48:39–41. The plain and ordinary meaning of this phrase is that the claimed “second function,” “determine[s] whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Id. At this stage of the proceeding neither party has indicated that this phrase or any specific terms in the phrase cannot be understood by a person of ordinary skill in the art, nor has either party provided an express claim construction for the Board to consider. Patent Owner contends that [i]n its claim construction briefing in the related litigation, DexCom explained that “second function” should be construed as a “function that provides a predictive alert/alarm” in part because the specification’s statement that “the present systems and methods relate to providing accurate predictive alarms” (Ex[1001], 1:30–33) limits the scope of the invention. Prelim. Resp. 14 (citing Ex. 1024, 15) (emphasis added). Patent Owner’s argument is that the Board should read the term “predictive” from the specification into the meaning of the “second function,” although neither independent claim recites the word “predictive.” Id. What is not clear at this point in the proceeding is why we should read the term “predictive” into claim 1. Patent Owner argues, for example, that Petitioner’s “[g]round 1 reads the ‘second function’ onto an alleged Guide function that does the same thing the alleged first function does – it compares a real-time glucose value against a threshold.” This characterization of the plain meaning of the claim language and the first and second functions is not entirely accurate however. The “second function” in claim 1 is determined based on “non user settable second criteria,” and is readily distinguishable from the “first function” determined based on “user settable second criteria.” See Ex. 1001, 48:36–41. On the evidence and arguments at this stage of the proceeding, we find persuasive Petitioner’s position that the Guide discloses a “first function” that alerts the user as to low and high glucose levels based on user settable thresholds. See Ex. 1004, 54 (“One of the benefits of the DexCom™ STS™ System is your ability to select high and low glucose alerts that will tell you when your glucose values are out of your target range.”). Also, we are persuaded that the Guide teaches a “second function,” “[w]hen the STS Sensor detects a glucose level below 55 mg/dL (3.1 mmol/L) your STS Receiver will vibrate to notify you of a very low glucose value by displaying the following screen:” Ex. 1004, 56. The Guide states that “[y]ou cannot change or turn off the Low Glucose Alarm.” Id.” slip op. at 25
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“unavailable as of October 2006, instead Patent Owner disputes that the Petition “allege[s] facts sufficient to establish the Guide was a printed publication.” Prelim. Resp. 10 (citing Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018)). Petitioner however, expressly describes the archived Guide scraped by the Wayback Machine and refers the reader to the declarations of Hall and Hall-Ellis for supporting testimonial evidence as to the asserted public availability of the archived Guide. Pet 11 (citing Ex. 1010; Ex. 1011; Ex. 1014; Ex. 1015). LKQ has made a sufficient evidentiary showing for purposes of institution that the Guide qualifies as prior art under § 102. See Ex. 1010 ¶¶ 7–8, see also Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039 (PTAB Dec. 20, 2019) (Paper 29) (holding that under 35 U.S.C. § 311(b), for purposes of institution, a petitioner must show a reasonable likelihood that an asserted reference qualifies as a printed publication) (Precedential), see also, Sandoz Inc. v. Abbvie Biotechnology Ltd., No. IPR2018-00156, 2018 WL 2735468, *4-5 (P.T.A.B. June 5, 2018) (finding Wayback Machine screenshot and expert testimony adequate evidence to establish FDA website as a prior art printed publication). In addition, Petitioner provides corroborating exhibits, including U.S. Food & Drug Administration Premarket Approval Order indicating, consistent with the Internet Archive records, that DexCom STS Continuous Monitors received pre-market approval on March 24, 2006. Ex. 1014. Also, consistent with both the Internet Archives evidence and the FDA Approval Order, Petitioner provides a June 2006 JP Morgan research paper discussing the American Diabetes Association scientific session in Washington, DC stating that “[h]ighlights included the results of two studies using Abbotts FreeStyle Navigator and two more from Dexcom involving its recently approved STS device.” Ex. 1015, 1. Overall, we determine that Petitioner has shown a reasonable likelihood that the Guide was publicly available more than one year before, October 30, 2012, the filing date of the earliest filed application in the priority chain for the ’215 patent. Patent Owner is in the best position to show when and to whom the Guide was available and may present additional arguments, evidence, and testimony to support its position during trial.” slip op. at 23
Claim construction§ 102 anticipationPatents in suitUS 10,702,215 - Toyota Motor Corp. v. Intellectual Ventures II LLCInstitution deniedPTAB · Oct 26, 2022 · IPR2022-00710 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on claims 1–20 because the Petition did not show a reasonable likelihood that either Ikeda or Nakajima disclosed the limitations of independent claims 1, 9, and 15.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“whether an individual asserted fact is indisputable or whether a preponderance of the evidence supports Petitioner. Our review is to determine whether the totality of the information presented in the Petition and Preliminary Response shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. For the above reasons, we determine Petitioner has not established a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the ’158 patent. Therefore, we deny inter partes review of the ’158 patent on all challenged claims and all grounds asserted in the Petition. See 35 U.S.C. § 314(a). IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of the ’158 patent is denied.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, and based on the current record, we adopt Petitioner’s characterization of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least,” as that language is vague and open-ended. However, we note Patent Owner’s proposed characterization of a skilled artisan is not meaningfully different than the one proposed by Petitioner without the “at least” language. Because we find the parties’ characterizations to be consistent with the ’158 patent and the asserted prior art, we apply in our analysis below Petitioner’s characterization, as modified by the Board, for the level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“phrase “wherein each optics component of the plurality of optics components is configured to pass light to a sensor of the plurality of sensors” requires each optics component to pass light separately to a distinct sensor of the plurality of sensors.6 Ex. 1001, 25:34–36. This is so because the phrase expressly singles out “each optics component” from “the plurality of optics components” and associates it with passing light to “a sensor” that is 6 In the context of the ’158 patent, a sensor may be an array of photo-detectors and multiple sensors may be formed on a single semiconductor substrate or chip. Ex. 1001, code (57), 4:18–21, 4:67–5:3, 7:17–39, 11:62– 676, 14:45–47, 15:46–65, 16:8–15, Figs. 2, 3, 9, 14, 15. distinguished from “the plurality of sensors.” Id. (emphasis added). As a result, claim 1 requires each optics component to have a configuration that allows it to pass light separately to an individual sensor distinct from the other sensor(s) in the plurality of sensors.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“We agree. For the reasons discussed above (supra §II.C.1), “each optics component of the plurality of optics components is configured to pass light to a sensor of the plurality of sensors,” as recited in claim 1, requires each of the plurality of optics components to be configured to pass light separately to a distinct sensor of the plurality of sensors and cannot rely on a common optics component to pass light to all of the sensors. Although Petitioner provides little guidance, the only two structures in Figure 11 of Ikeda that can even arguably be optics components “configured to pass light” are lens 1 and prism 23. And Ikeda discloses those structures as functioning as a single unit that is common to the three disclosed sensors. See Ex. 1005, 11:62–12:1. As such, Ikeda only discloses a single optical component/unit configured to pass light to a plurality of sensors, rather than a plurality of optical components/units that are each able to pass light to their respective sensor(s) out of the plurality of sensors. In fact, the only structure included in Figure 11 that Petitioner’s expert, Dr. Bovik, suggests is configurable to pass light to a sensor is the lens. See Ex. 1004 ¶¶ 39–41, 49, 66. For example, Dr. Bovik describes that, during operation of the device Ikeda discloses, the light from an object enters lens 1, which then passes the light through filters to projects the light upon an image sensing device. Id. ¶ 39. Although the Petition and Dr. Bovik lump “a lens 1, a prism 23, optical low-pass filters 2, and a color filter 20 (all purple)” together and refer to them collectively as “provid[ing] a ‘light path’ to pass light (yellow) from an object image to be ‘projected upon the first, second, and third image sensing devices 18, 3, and 19’” (Pet. 16, Ex. 1004 ¶ 66), Ikeda suggests that lens 1 is the only structure configured to pass light (i.e., establish the light path) to a sensor. This is evidenced by the fact that Ikeda describes the prism, optical low-pass filters, and a color filter as all being “provided at the intermediate position of the light path” that begins at lens 1. Ex. 1005, 13:34–38, 13:59– 63 (emphasis added). In order for the prism, optical low-pass filters, and a color filter to be at an intermediate position of the light path, the light path must necessarily have been established before reaching them. Consistent with this understanding, Dr. Bovik only describes lenses as being configurable to pass light to a sensor (i.e., to zoom and focus incident light); the diaphragms, irises, and neutral density (ND) filters are described as “varying the amount of incident light” that has been passed; the optical low pass filters are described as “combat[ing] high-frequency moiré patterns” in the light that has been passed; and the color filters and filter arrays are described as “filtering specific wavelengths, or colors” of light that has been passed. Ex. 1004 ¶ 40. Therefore, because Ikeda only discloses a single optical component” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,232,158 - PTAB · Oct 12, 2022 · IPR2022-00708 · APJ Matthew S Meyers · IPR · Institution
The Board instituted IPR on claims 1–20 over all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“[W]here the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) 4–5 (“Interim Procedures”).9 Further, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we agree with Petitioner that “[t]he petition presents ‘compelling evidence of unpatentability.’” Pet. Reply 1 (citing Interim Procedures 1). As Petitioner notes, “despite the centrality of the merits to the Fintiv analysis, the POPR is silent on the substance of the petition.” Id. For the reasons below in our analysis, we determine that the merits of Petitioner’s anticipation grounds based on Fernandez appear to be particularly strong for the independent claims and for the dependent claims for this ground. See infra § III.G (explaining that, on the current record, slip op. at 7
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“were co-defendants in the District Court litigation and were accused of infringing the [challenged] patent based on HTC’s VIVE devices that incorporate technology licensed from Valve.” Id. By contrast, here Petitioner asserts that it “has no control over the [429] IPR, did not participate or provide input into the [429] IPR, and had no knowledge of the [429] IPR until after it was filed.” Pet. 15; see also Pet. Reply 2. Although we agree with Patent Owner that Unified’s subscription fees provide an incentive to challenge patents asserted against its members, and recognize that Unified has challenged at least eight patents asserted against Petitioner in the past (Prelim. Resp. 25–27), that alone does not create the type of “significant relationship” that was found in Valve to favor denying institution.10 Moreover, the Director recently initiated a sua sponte Director review “to clarify the application of General Plastic.” IPR2022-00861, Paper 18 at 3 (PTAB Aug. 23, 2022). There, the Director determined that “factors 1–3 only weigh in favor of discretionary denial when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.” Id. at 5. The Director stated that “‘road-mapping’ concerns are minimized when, as in this case, a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those in the previously-filed petition and the later petition is not refined based on lessons learned from 10 See, e.g., Netflix Inc. and Hulu, LLC v. DivX, LLC, IPR2020-00052, Paper 42 at 8–11 (PTAB May 14, 2020); Mercedes-Benz USA, LLC v. Carucel Investments, L.P., IPR2019-01404, Paper 12 at 12–13 (PTAB Jan. 22, 2020) (finding petitioner’s membership in Unified did not amount to a relationship that justifies discretionary denial in light of other General Plastic factors); Apple, Inc. v. Uniloc 2017 LLC, IPR2019-01667, Paper 7 at 7–8 (PTAB Apr. 21, 2020). later developments.” Id. Here, road-mapping is minimized because the present Petition was filed less than two months after the petition in the 429 IPR, no patent owner preliminary response was filed at that time, and no decision to institute was issued to refine the later petition. See Pet. 16. This is further evident from our below discussion of General Plastic factors 2 and 3.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one of claims 1–20. Accordingly, we institute an inter partes review of all challenged claims on all asserted grounds pursuant to 35 U.S.C. § 314. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–1360 (2018) (requiring institution on all claims, if any); see also Patent Trial and Appeal Board” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Having considered Petitioner’s unrebutted position, we conclude that, at this stage of the proceeding, Petitioner has shown a reasonable likelihood that it would prevail in challenging the patentability of independent claim 1. 3. Dependent Claims 2 and 4–7 Petitioner contends that the additional limitations of dependent claims 2 and 4–7 are disclosed by Flick. Pet. 27–32. Patent Owner does not specifically dispute Petitioner’s contentions for dependent claims 2 and 4–7 at this time. See generally Prelim. Resp. Petitioner has made a sufficient showing that Flick discloses the limitations of these dependent claims by providing an analysis of each limitation and a comparison of the limitations to the disclosure of Flick. See Pet. 27–32. We have reviewed Petitioner’s cited evidence and explanation regarding why Flick anticipates claims 2 and 4–7, and find it sufficient at this stage. For example, claim 2 requires that “the information about the vehicle comprises one or more of a location of the vehicle, a time that the vehicle was at a location, or a speed of the vehicle.” Ex. 1001, 10:59–62. Flick discloses (“‘vehicle speed and location that the speeding started and how long speeding accrued’ (Detected from GPS).”) Ex. 1005 ¶ 147. On this record, we determine that Petitioner has shown a reasonable likelihood of success that Flick anticipates claims 2 and 4–7.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,291,475 - Ironridge, Inc. v. Pegasus Solar, Inc.Institution deniedPTAB · Aug 10, 2022 · PGR2022-00024 · APJ Eric C Jeschke · PGR · Institution
The Board denied institution because the Petition did not show that any challenged claim 1–12 was more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324. Upon consideration of the evidence and arguments in the record, for the reasons below we determine that the information presented does not show that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of post-grant review. See 37 C.F.R. § 42.208(b) (“At any time prior to institution of post-grant review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute post-grant review.”).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Patent Owner’s counsel was sufficient to meet the service requirements of 37 C.F.R. § 42.205. Section (a) of that regulatory provision states that “[t]he petition and supporting evidence must be served on the patent owner at the correspondence address of record for the subject patent. The petitioner may additionally serve the petition and supporting evidence on the patent owner at any other address known to the petitioner as likely to effect service.” Section (b) adds that, “[u]pon agreement of the parties, service may be made electronically.” 37 C.F.R. § 42.205(b) (emphasis added). Although Petitioner does appear to have emailed the Petition to persons satisfying the requirements in § 42.205(a), there is nothing in the record indicating an agreement between the parties that service may be made electronically, as required by § 42.205(b). See, e.g., Ex. 1020 at 1 (showing an attorney for Petitioner in this proceeding asking Mr. Holm if Patent Owner would “agree to electronic service” without any showing of a subsequent agreement). Without an agreement between the parties as to sufficiency of electronic service, we find Petitioner’s emailing of the Petition to Mr. Holm and Mr. Fisher insufficient to effect service.” slip op. at 12
- PTAB / AIA Trials › Discretionary denialNot reached
“B. Discretion Under 35 U.S.C. § 324(a) and § 325(d) Patent Owner argues that we should exercise our discretion under § 324(a) and under § 325(d) to deny institution. See Prelim. Resp. 50–51 (discussing § 324(a)), 11–21 (discussing § 325(d)). Because we deny the Petition after considering the merits of each ground, we need not and do not reach Patent Owner’s arguments based on discretion.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art at the time of the alleged invention “would have had at least a bachelor’s degree in mechanical engineering, structural engineering, or similar technical field, with at least three years of relevant (metal fabrication, aluminum extrusion, architectural glass structural) product design experience.” Pet. 36 (citing Cinnamon Decl. ¶ 51). Petitioner adds that “[a]n increase in experience could compensate for less education.” Id. (citing Cinnamon Decl. ¶ 51). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,998,847 - Metromont Corporation v. Reigstad & Associates, Inc.All claims unpatentablePTAB · Jul 26, 2022 · IPR2021-00467 · APJ Ryan H Flax · IPR · Final written decision
Claims 1–7, 9, 10, and 13 are unpatentable as obvious; substitute claims 16–19 are also unpatentable, and the motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s definition of the ordinarily skilled artisan and takes no position on the definition of the person of ordinary skill in the art. See generally Resp. We accept Petitioner’s unopposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which is consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’196 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). It is from this perspective that we consider the claims and the asserted prior art, as has Petitioner and its witness, Dr. Nanni.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We agree with Petitioner that the claim term “concrete” can be accorded its plain and ordinary meaning as would have been understood by the ordinarily skilled artisan. Petitioner’s proposed understanding of this term as “cement-based composite material” appears to be consistent with such a plain and ordinary meaning. See generally Ex. 1001 (no express explanation of the composition of concrete); see also, e.g., Ex. 1002 ¶¶ 52– 64; Ex. 1014, 1 (explaining concrete includes various mixtures of cement, water admixtures, fine and course aggregates); Ex. 1015, 4:26–30 (definition of concrete is broad and includes cement, grout, and mortar). We interpret the claim term “concrete,” as have the parties, to encompass a “cement-based composite material.”” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“102 is a legal conclusion based on underlying factual findings.” M&K Holdings, Inc. v. Samsung Elec. Co., 985 F.3d 1376, 1379 (Fed. Cir. 2021) (citing Jazz Pharms., Inc. v. Amneal Pharms., Inc., 895 F.3d 1347, 1356 (Fed. Cir. 2018)). As our reviewing court explains, deciding whether a reference is a “printed publication” requires a case-by-case analysis whether the reference was disclosed to the public, where “the key inquiry is whether or not a reference has been made ‘publicly accessible.’” Id. at 1379 (citing Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018)). Of critical importance is determining whether the reference was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quoting Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016), which itself was quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)).” slip op. at 23
- Expert testimonyPetitioner expert creditedDecided for petitioner
“20 Patent Owner argues in its Response that Petitioner’s expert witness, Dr. Nanni, lacks credibility, presents merely conclusory opinions, and resorts to hindsight bias in his testimony. See Resp. 10–11. We do not agree with Patent Owner’s positions. The evidence shows that Dr. Nanni is qualified to testify on the issues in this proceeding and we find his opinions are based on his understanding of the perspective of the ordinarily skilled artisan, his experience, and the disclosures of the prior art, and are supported by evidence, and do not rely on the ’196 patent as a roadmap so as to infect his opinions with improper hindsight. See generally Ex. 1002; Ex. 1026.” slip op. at 29
Patent outcomesUS 10,337,196 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,337,196
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.