- PTAB · Oct 9, 2025 · IPR2025-00847 · APJ Brian D Range · IPR · Institution
Instituted IPR on claims 1–11 because Petitioners showed a reasonable likelihood of proving at least one challenged claim unpatentable across the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioners meet the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–11 of the ’847 patent based upon Petitioners’ asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a master’s degree in electrical engineering, physics, chemistry, materials science, or a related field and three years of work experience in semiconductor manufacturing, such as, for example, in integrated circuit device (or transistor) design and/or manufacturing,” and “[a]dditional relevant education could substitute for professional experience, and significant work experience or training could substitute for formal education.” Pet. 11 (citing Ex. 1003 ¶ 38). Patent Owner does not dispute the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’847 patent specification and the prior art. 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 neededNot reached
“Petitioner does not propose any claim constructions, except to explain that the claim 7 limitation “the spacer further comprises an offset spacer, positioned between the gate and the spacer,” is “satisfied if one layer (an ‘offset spacer’) of the claimed ‘spacer’ lies between another layer of the ‘spacer’ and the gate.” Pet. 11. Patent Owner does not dispute Petitioner’s assertions or offer any claim constructions. See generally Prelim. Resp. Because resolution of Petitioner’s proposed construction is unnecessary to our analyses for purposes of this decision, we do not address the proposal here. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We do not discern a need to construe any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC, 912 F.3d at 1375.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“a. Claim 1 Petitioner contends that claim 1 is anticipated by Lan or, alternatively, obvious in view of Lan. Pet. 18–26. Petitioner explains how Lan teaches or suggests each recitation of claim 1, and Petitioner’s position is supported by adequate evidence for institution. Id. (citing, e.g., Ex. 1003 ¶¶ 100–125). Petitioner, for example, persuasively compares the structure of Figure 12 of Lan to each limitation of claim 1. Id. Patent Owner does not dispute Petitioner’s contentions except to argue that Lan (and the Petition’s other asserted references) “Do Not Mention, Describe, or Concern ‘Raised Epitaxial Layers.’” Prelim. Resp. 22–24. Patent Owner does not persuasively undermine Petitioner’s position.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,745,847 - Crowdstrike, Inc. v. Gosecure, Inc.InstitutedPTAB · May 2, 2025 · IPR2025-00068 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–21 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Capalik and King.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). To institute an inter partes review, we must determine that the information presented in the Petition and the Preliminary Response shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–21 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Patent Owner argued that we should not institute both petitions. Paper 8, 1–5. Patent Owner argued that the challenged claims are not long and Petitioner’s concerns about the construction of “association” in limitation 1(b) are “contrived.” Id. at 1. Patent Owner contends that Petitioner could have addressed all of the challenged claims in one petition. Id. Noting that both the ’70 petition and the instant Petition challenge all claims of the ’872 patent, Patent Owner argued that the number of claims challenged does not necessitate multiple petitions. Id. at 2–3. Patent Owner also argued that Petitioner could have waited until closer to the statutory due the claim language “association” in the related district court proceeding. Id. at 4–5. Considering the facts holistically, we determine the totality of the circumstances here supports Petitioner’s position that two petitions are warranted. Petitioner has challenged a large number of claims directed to complex subject matter. And the task of challenging those claims is complicated by the potential for Patent Owner to argue for a narrow construction of “association” in limitation 1(b). Patent Owner’s suggestion that Petitioner would not have needed to file multiple petitions if it had waited longer to file a petition is not persuasive. Paper 8, 4–5. Patent Owner does not explain why a petitioner should be encouraged to delay the filing of its petition. See id. And the parties appear to agree that Patent Owner has not weighed in on whether “association” should be interpreted narrowly or broadly. Prelim. Reply. 8; Prelim. Sur-Reply 8. The present circumstances, considered as a whole, warrant two petitions challenging the claims of the ’872 patent.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner explains the applicable level of skill in the art as follows: As of June 24, 2010, a person of ordinary skill in the art (POSITA) would be a person having a bachelor’s degree in computer science, computer engineering, or an equivalent, as well as two years of industry experience. A POSITA would also have had a working knowledge of software security analysis and dynamic malware analysis. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. explanation of the level of skill in the art. See Prelim. Resp. 13. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’872 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We first look to the claim language itself. It recites “transmitting to one or more computer systems,” not transmitting to “devices.” Ex. 1001, 19:53. Although the claim language “one or more computer systems” may encompass “protected network devices,” we do not see a reason that its plain meaning would be limited to network devices, much less protected network devices. Nor do we see a reason that the plain meaning of “one or more computer systems” is limited to protected network devices to the exclusion of a network that includes protected network devices and one or more other components. In support of its suggestion that the claim language “one or more computer systems” excludes a combination of protected network devices and one or more other components, Patent Owner cites the claim language “for preventing future attacks, to the one or more computer systems.” Prelim. Resp. 20–24; Prelim. Sur-Reply 1–2. But Patent Owner does not provide reasoning or evidence persuading us to read the claim language more narrowly than its plain meaning, which encompasses preventing future attacks to a computer system that includes both protected network devices and one or more other components.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,954,872 - PTAB · Mar 6, 2025 · IPR2024-01222 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 34–37 and 40–46 over all petitioned grounds after finding a reasonable likelihood that at least one challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“has not requested a stay and there is no evidence the district court would likely grant one. Prelim. Resp. 64. We decline to speculate about how the District Court might rule on a motion that has not been filed. On this record, the first factor is neutral.” slip op. at 6
- Parallel petitionsDecided for petitioner
“of two petitions challenging the same claims of the ’389 patent. See Paper 7, 2. As our Consolidated Trial Practice Guide explains, “one petition should be sufficient to challenge the claims of a patent in most situations.” PTAB Consolidated Trial Practice Guide (Nov. 2019) at 59. However, the Trial Practice Guide recognizes that “there may be circumstances in which more than one petition may be necessary,” including “when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Here, there is such a dispute because even though the ’389 patent was filed on May 2, 2002 and does not claim priority to any earlier application, as noted above, Patent Owner contends that some of the challenged claims are entitled to an earlier priority date. See Prelim. Resp. 6–14. Given this apparent priority dispute, we agree with Petitioner that two petitions—one asserting prior art that is vulnerable to the priority dispute and one asserting art that is not—are justified. See Paper 3, 3.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any preliminary response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reason below, we conclude there is a reasonable likelihood that Petitioner would prevail in demonstrating at least one of the challenged claims is unpatentable. Pursuant to § 314, we hereby institute an inter partes review to the challenged claims of the ’389 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“one barrier layer further comprises depositing by shadow mask, sputtering, ink jet deposition, screen printing, [or] evaporation.” Although the word “or” does not appear in the claim, Petitioner proposes we should construe the claim to include the inserted “or” consistent with the file history, which shows an examiner’s amendment intended to replace an original “and” with the missing “or.” Pet. 10 (citing Ex. 1002, 399, 418). Patent Owner does not dispute Petitioner’s proposed construction. See Prelim. Resp. 18–19. For purposes of institution, given the ’389 patent’s file history, we agree with Petitioner’s construction.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,949,389 - PTAB · Jan 23, 2025 · IPR2024-01094 · APJ Grace Karaffa Obermann · IPR · Institution
Instituted review of claims 1–4, 6, and 8–14 on all asserted grounds; Petitioner showed a reasonable likelihood that claim 1 is obvious over Ma.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We apply a two-part framework when assessing whether to exercise our discretion to deny a petition under Section 325(d). First, we consider whether the same or substantially the same prior art or arguments previously were presented to the Office. Second, if either condition is satisfied, we assess whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (setting forth twopart framework that guides the Board’s decision whether to exercise its discretion to deny review under Section 325(d)).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In Sotera Wireless, Inc. v. Massimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential), the Board declined to exercise its discretion to deny review under Fintiv where the patent owner stipulated “if IPR is instituted, they will not pursue in the District Court Litigation any ground raised or that could have been reasonably raised in an IPR.” Sotera Wireless, Paper 12 at 18. Importantly, moreover, on June 21, 2022, the Director of the United States Patent and Trademark Office issued a Memorandum setting forth an “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Guidance Memo”).6 The Guidance Memo states that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3 (footnote and emphasis omitted).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“POSA”) at the time of the alleged invention of the ’223 patent would have had a university degree in chemistry and additional expertise or a second university degree in the field of electrical engineering, particularly optoelectronics, or alternatively a university degree in electrical engineering and additional expertise or a second university degree in the field of chemistry. The person of ordinary skill in the art has spent several years studying the structure and function of organic optoelectronic components, in particular OLEDs, and has detailed knowledge of the chemical structure of light-emitting organic layers and the transport of charge carriers to these layers. In this respect, the person of ordinary skill in the art works at the interface between electrical engineering/physics (charge carrier transport and light emission processes in optoelectronic components) and chemistry, in particular organic chemistry (materials and layer stack combinations suitable). Pet. 14 (citing Ex. 1003 ¶¶ 46–47). Patent Owner does not dispute Petitioner’s argument. See generally Prelim. Resp. Neither party indicates that the result on institution would change depending on the definition selected. Accordingly, for the sole purpose of deciding whether to institute review, we adopt Petitioner’s uncontested proposed definition, because, on this record, it is consistent with the disclosures of the asserted prior art. See Ex. 1005, (code 57); Ex. 1007, 8107 (abstracts of the references asserted in the patentability challenges).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid 7 Following the parties’ convention, when citing Exhibit 1007, we refer to original page numbers, not page numbers added by Petitioner. Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party indicates that an express construction for any claim term is necessary to our decision whether to institute review. Pet. 15; see generally Prelim. Resp. On this record, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,558,223 - PTAB · Jan 23, 2025 · IPR2024-01093 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR of claims 1–16 on all petition grounds, finding a reasonable likelihood that claim 1 is anticipated by Choulis.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We apply a two-part framework when assessing whether to exercise our discretion to deny a petition under Section 325(d). First, we consider whether the same or substantially the same prior art or arguments previously were presented to the Office. Second, if either condition is satisfied, we assess whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (setting forth twopart framework that guides the Board’s decision whether to exercise its discretion to deny review under Section 325(d)).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Importantly, moreover, on June 21, 2022, the Director of the United States Patent and Trademark Office issued a Memorandum setting forth an “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Guidance Memo”).8 The Guidance Memo states that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3 (footnote and emphasis omitted).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“POSITA”) at the time of the alleged invention of the ’164 patent would have had a Bachelor’s degree in chemistry, physics, or a comparable field of study, and at least three years of research or industrial experience with organic optoelectronic light-emitting devices. An individual with additional education could have less research or industrial experience and vice versa. Pet. 12. Patent Owner does not dispute Petitioner’s argument. See generally Prelim. Resp. Neither party indicates that the result on institution would change depending on the definition selected. Accordingly, for the sole purpose of deciding whether to institute review, we adopt Petitioner’s uncontested proposed definition, because, on this record, it is consistent with the disclosures of the asserted prior art. See Ex. 1004, (code 57); Ex. 1006, code (57); Ex. 1008, code (57); Ex. 1009, code (57) (abstracts of the references asserted in the patentability challenges).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“to the meaning of particular claim terms.”). Claim 1 recites first, second, and third matrix materials but, aside from reciting relationships between the LUMOs and HOMOs of the matrix material, does not require any particular composition or any particular amount for any of the three matrix materials. Ex. 1001, 9:4–22. Nor does claim 1 recite that any of the matrix materials must be present in a continuous phase. Id. Claim 1 does recite that the organic functional layer, which includes the three matrix materials, is doped with at least one emitter material. Id. at 9:21–22. On this record, no words in claim 1 limit a “matrix material” to the meaning advanced by Patent Owner.” slip op. at 24
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,723,164 - PTAB · Jul 31, 2024 · IPR2024-00222 · APJ Garth D Baer · IPR · Institution
The Board instituted inter partes review of claims 1–3, 6–23, and 25–33 on all petition grounds because Chen showed a reasonable likelihood of anticipating claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“21 (quoting Ex. 1006 ¶ 26)). We have reviewed Petitioner’s arguments and the underlying evidence cited in support and are persuaded that, at this stage, Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in its anticipation challenge to claim 1 based on Chen.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Specifically, Petitioner asserts Chen’s lithium battery teaches the claimed battery pack, Chen’s USB outputs 8, 9, and 10 teach claim 1’s first-current output port, and Chen’s high-current, car-battery output unit 11 teaches claim 1’s pair of output terminals capable of starting a vehicle. Id. at 13–20. Further, Petitioner corresponds Chen’s “electronics of ‘U3B and D12’” that “form ‘an output power limit control’” to the claimed first protection circuit (Id. at 20 (quoting Ex. 1006 ¶ 26)) and Chen’s relay K1 that “is automatically turned off to prevent long-term high-current output” to the claimed second protection circuit configured to prevent overcurrent (Id. at 21 (quoting Ex. 1006 ¶ 26)). We have reviewed Petitioner’s arguments and the underlying evidence cited in support and are persuaded that, at this stage, Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in its anticipation challenge to claim 1 based on Chen.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. CLAIM CONSTRUCTION Petitioner asserts “that no claim elements need a formal construction.” Pet. 10. We agree that we need not construe any claim limitations to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. LEVEL OF SKILL IN THE ART Petitioner contends a person of ordinary skill in the art “would have had at least a Bachelor’s of Science in electrical engineering or physics and at least two years of experience in circuit design for portable electronics.” Pet. 10 (citing Ex. 1003 ¶ 17). For the purpose of our decision, we adopt Petitioner’s description.” slip op. at 5
Claim construction§ 102 anticipationPatents in suitUS 9,643,506 - K/S Himpp v. Bragi GmbHInstitutedPTAB · Mar 19, 2024 · IPR2023-01205 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that Hain anticipates claims 1, 2, and 4 and the stated combinations render claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“While we acknowledge that Shaffer was before the Office, that alone is not sufficient to meet the first prong of the Advanced Bionics test. Factor (b) under Becton, Dickinson, which is also considered under the first prong of Advanced Bionics, examines “the cumulative nature of the asserted art and the prior art evaluated during examination.” Advanced Bionics, Paper 6 at 9 n.10. We note that there is no evidence or argument that Hain or Sørensen were previously considered by the Office or cumulative of art that was in front of the Office. Although one reference, Shaffer, was previously presented to the Office, in each asserted ground, Petitioner relies on either Hain or Hain in combination with Sørensen. Because neither of those references was before the office, Patent Owner has not satisfied the first prong of the Advanced Bionics test.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“All of these arguments center on the claim language’s recitation of “one or more of the wireless earpieces.” Id. at 16. Patent Owner agrees with Petitioner that “[i]f both hearing aids detect a magnetic field, such as by being located in the disclosed storage box, the hearing aids are automatically switched off.” Id. at 17; see also Ex. 1004 ¶ 13 (“[I]f both hearing aids detect a relatively strong magnetic field in their immediate vicinity, then this is an indication that the hearing aids are located in the storage box and can be switched off.”). Patent Owner does not appear to dispute that Hain teaches a high power mode when both earpieces do not detect a magnetic field. See Prelim. Resp. 17; see also Ex. 1004 ¶ 21 (“For as long as no magnetic field is detected, the hearing aid is in ‘normal operation.’”). On the current record, we are thus persuaded that Hain discloses a low power mode when both earpieces detect a magnetic field and a high power mode when both earpieces do not detect a magnetic field. The parties’ dispute centers on the mixed situation when one earpiece detects a magnetic field and one does not. Patent Owner directs us to Hain’s disclosure of a “telephone mode” when “there is a magnetic field applied to one hearing aid but not the other, such as by a telephone receiver emitting a magnetic field.” Prelim. Resp. 16. According to Patent Owner, in order “[t]o anticipate the claims, Hain must disclose an earpiece that switches to a high power mode when only it – and not both it and its pair – no longer detects a magnetic field.” Id. at 17. Patent Owner, however, also asserts that “to anticipate the claims, Hain must disclose an earpiece that switches to a low power mode when only it – and not its pair – detects a magnetic field.” Id. at 21. Thus, we understand Patent Owner to be arguing that each earpiece must independently move to a high or low power state based on whether it detects a magnetic field. We, however, are not persuaded that the claim language is so limited. Limitation 1B recites “powering circuitry of the wireless earpieces utilizing a high-power mode in response to detecting a magnetic field is not applied to one or more of the wireless earpieces.” Limitation 1C recites “altering the power sent to the circuitry of the wireless earpiece to a high-power mode in response to detecting a magnetic field is not applied to one or more of the wireless earpieces.” Thus, the disputed portions of these limitations are met if “one or more” of the earpieces detects that a magnetic field is not present and goes into a high power mode. As noted above, on the current record, we are persuaded that Hain discloses that an earpiece goes to a high power state if it does not detect a magnetic field. See Ex. 1004 ¶ 21 (“For as long as no magnetic field is detected, the hearing aid is in ‘normal operation.’”).” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“F. Obviousness over Hain and Shaffer Petitioner asserts that claims 1–6, 8–12, and 14 are unpatentable under 35 U.S.C. § 103 as obvious over Hain and Shaffer, citing the Declaration of Dr. Kiaei for support. Pet. 29–61 (citing Ex. 1002). Patent Owner argues that this ground must fail because Shaffer was previously presented to the Office and it reiterates its arguments addressed above regarding the disclosures of Hain. Prelim. Resp. 21–26. For reasons discussed above, we are not persuaded by those arguments. We have reviewed Petitioner’s arguments and evidence and based on the evidence in the present record, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that the combination of Hain and Shaffer teaches all of the limitations recited in claims 1–6, 8–12, and 14. G. Obviousness over Hain, Shaffer, and Sørensen Petitioner asserts that claims 3, 5–7, and 9–14 are unpatentable under 35 U.S.C. § 103 as obvious over Hain, Shaffer, and Sørensen, citing the Declaration of Dr. Sayfe Kiaei for support. Pet. 61–67 (citing Ex. 1002). Patent Owner argues that this ground must fail because Shaffer was previously presented to the Office and it reiterates its arguments addressed above regarding the disclosures of Hain. Prelim. Resp. 27. For reasons discussed above, we are not persuaded by those arguments. We have reviewed Petitioner’s arguments and evidence and based on the evidence in the present record, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that the combination of Hain, Shaffer, and Sørensen teaches all of the limitations recited in claims 3, 5–7, and 9–14.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,397,688 - K/S Himpp v. Bragi GmbHInstitutedPTAB · Mar 19, 2024 · IPR2023-01204 · APJ Larry J Hume · IPR · Institution
The Board instituted IPR on claims 1–13 on all six asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In light of the argument and evidence before us, we find that Shaffer was previously presented to the Office and as such, the first prong of the Advanced Bionics test is satisfied.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.4 (2023). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim. Therefore, we institute an inter partes review of all challenged claims 1–13 of the ’014 patent, based on the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Supported by the testimony of Dr. Kiaei, Petitioner asserts the level of ordinary skill in the art corresponds to a person having “a bachelor’s degree in Electrical Engineering, or equivalent experience, and one to two years of experience in the field of wireless electronic devices and battery systems, particularly wireless earpieces such as wireless headphones and hearing aids.” Pet. 17 (citing Ex. 1002 ¶ 25). At this stage, Patent Owner “applies Petitioner’s definition of a POSITA [(person of ordinary skill in the art)]” (Prelim. Resp. 15 (citing Pet. 17)), but “reserves the right to present issues relating to the level of a POSITA should the Board institute this IPR.” Prelim. Resp. 15. Based on the current record, and for purposes of this Decision, we preliminarily adopt Petitioner’s position as to the level of ordinary skill in the art at the time of the claimed invention, as articulated above. On this record, we are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’014 patent and the asserted prior art. This definition also is supported by the testimony of Dr. Kiaei. See Ex. 1002 ¶ 25. In addition, Patent Owner “applies Petitioner’s definition of a POSITA . . . but reserves the right to present issues relating to the level of a POSITA should the Board institute this IPR and in other proceedings involving the ’014 Patent.” Prelim. Resp. 15 (citing Pet. 17).” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“10–13, we disagree with Patent Owner’s narrow construction requiring that the smart case includes a rechargeable battery utilized to charge a wireless device. The patent discloses an illustrative embodiment that includes a presumably rechargeable battery, i.e., “[t]he smart case 102 encloses a battery, and various other circuitry (not shown) . . . . For example, the battery of the smart case 102 may be utilized to charge the wireless earpieces 142, 144 any number of times before the smart case 102 and corresponding battery may require charging.” Ex. 1001, 3:28–37. However, as quoted below, we note the ʼ014 patent also discloses alternative embodiments of the smart case that do not require a rechargeable battery to recharge a wireless device: The smart case 402 may have any number of configurations and include various circuitry, connections, and other components. The smart case 402 is one potential embodiment of the smart case 102 of FIGS. 1–3. In one embodiment, the smart case 402 may include a battery 404, a logic engine 406, a memory 408, interfaces 410, 411, a transceiver 412, and a magnet 414. The battery 404 is a power storage device configured to charge the power storage system of the wireless earpieces 401 once or multiple times. In other embodiments, the battery 404 as well as the batteries of the wireless earpieces 401 may represent a fuel cell, thermal electric generator, piezo electric charger, solar charger, ultra-capacitor, or other existing or developing power storage technologies. Ex. 1001, 6:9–22 (emphases added). Accordingly, at this stage of the proceeding, in connection with claims 4, 6–8, and 10–13, we decline to adopt Patent Owner’s proffered claim construction of the phrase “smart case” that requires a rechargeable battery utilized to recharge a wireless device. No further express construction is required for the purposes of this Decision.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,117,014 - PTAB · Jan 8, 2024 · IPR2023-01014 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 4–6, 8, 11–14, and 18–20, finding the asserted obviousness challenges compelling over Lu-577 and Tian and Nielsen-372, Steinberg, and Tian.
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) (2020) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may 1 Petitioner identifies “TVision Insights, Inc.” as the real party-in-interest to this proceeding. Pet. 89. 2 Patent Owner identifies “The Nielsen Company (US), LLC” as the real party-in-interest to this proceeding. Paper 3, 2. Patent Owner states that “it is a subsidiary, either directly or indirectly, of numerous parent entities, and that Brookfield Corporation (NYSE: BN; TSX: BN.TO), through its subsidiaries and investment funds and vehicles, indirectly owns 10% or more of Patent Owner The Nielsen Company (US), LLC.” Id. 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.” After considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we institute an inter partes review as to claims 4–6, 8, 11–14, and 18–20 of the ’243 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Conclusion Regarding Discretionary Denial In summary, factor 1 is neutral, factor 2 weighs heavily against denying institution, factor 3 weighs marginally in favor of denying institution, factor 4 weighs heavily in favor of denying institution, factor 5 weighs in favor of denying institution, and factor 6 weighs very heavily against denying institution. However, the Guidance Memo provides that where the Board “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.” Guidance Memo at 4–5; see Fintiv at 5–6. And, in CommScope Techs. v. Dali Wireless, Inc., IPR2022-01242, Paper 23 (PTAB Feb. 27, 2023) (precedential), the Director instructed that, even where the analysis of Fintiv factors 1–5 favors denial of institution, the Board should not deny institution where there is a showing of unpatentability by compelling merits. As noted above, the Petition in this proceeding meets this high standard. For these reasons, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review.” slip op. at 52
- Strike new argumentNew argument consideredDenied
“29 In its Sur-reply, Patent Owner repeatedly argues that we should disregard Petitioner’s arguments opposing discretionary denial in the Reply because they were waived. See, e.g., Sur-reply 1 (“Petitioner’s Reply to Patent Owner’s Preliminary Response (Paper 7, ‘Reply’) introduces new arguments that could have been included in the Petition for Inter Partes Review (Paper 2, ‘Petition’) and that should be disregarded as being waived accordingly.”). We reject this argument. Petitioner was not required to anticipate in the Petition all of Patent Owner’s arguments for discretionary denial. See Vector Flow, Inc. v. HID Global Corporation, IPR2023-00353, Paper 11 (PTAB Aug. 10, 2023) (Director vacating decision denying institution and ordering filing of a reply to allow petitioner to address discretionary denial arguments in preliminary response.). In this case, the Board specifically authorized Petitioner to file a reply to address the request for discretionary denial by Patent Owner and for Patent Owner to file a sur-reply. Patent Owner was afforded the opportunity to substantively respond to the Reply in the Sur-reply.” slip op. at 47
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that [a] POSITA [(Person of Ordinary Skill in The Art)] would have been a person with a bachelor’s degree in computer science, electrical engineering, or a similar field with at least two years of experience in media analysis or a person with a master’s degree in computer science, electrical engineering, or a similar field with a specialization in media analysis. . . . . A person with less education but more relevant practical experience may also meet this standard. . . . . A POSITA in 2011 would have known or been able to implement systems that collect and analyze audio and image data, techniques for audio feature extraction and identification, techniques for image processing (e.g., resolution adjustment), and face or head analysis techniques. Pet. 7 (citing Ex. 1003 ¶¶ 46–49). Patent Owner does not dispute Petitioner’s assessment of the level of ordinary skill. See generally Prelim. Resp. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the assessment offered by Petitioner, as it is not disputed by the Patent Owner and is consistent with the ’243 patent and the asserted prior art.11” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,470,243 - PTAB · Oct 19, 2023 · IPR2023-00754 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claim 7 based on each of the three asserted anticipation grounds: Stewart, Bryans, and Onno.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the foregoing reasons, we have determined that there is a reasonable likelihood that Petitioner would prevail with respect to the one challenged claim. We therefore institute trial on all grounds stated in the Petition. V. ORDER Accordingly, it is: ORDERED that inter partes review of claim 7 of the ’675 patent is instituted on all grounds in the Petition; and” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a bachelor’s degree in electrical engineering, or equivalent, with about three years of professional work experience in serial and parallel data communication within or between computing devices or systems.” Pet. 13– 14 (citing Ex. 1007 ¶ 33). Petitioner also explains that “[m]ore education can supplement practical experience and vice versa.” Id. At this stage, Patent Owner does not provide a description of the level of ordinary skill. 1 U.S. Patent No. 4,450,572, issued May 22, 1984 (Ex. 1004). 2 U.S. Patent No. 4,979,185, issued Dec. 18, 1990 (Ex. 1006). 3 U.S. Patent No. 5,170,272, issued Dec. 8, 1992 (Ex. 1005). Petitioner’s description is supported by credible expert testimony. For the purpose of our decision, we adopt Petitioner’s description.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“construe claim terms “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2021). Citing the claim’s plain language as well as support from its expert, Petitioner asserts “‘generating a clock signal . . . using second serial data’ would include ways of producing a clock signal by using the second serial data, such as by extracting or recovering a clock signal from the second serial data.” Pet. 15 (citing Ex. 1007 ¶ 37). For purposes of this decision, we agree with and adopt Petitioner’s construction.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“information channel.” Id. at 16 (quoting Ex. 1004, 2:35–39). According to Petitioner, Stewart teaches that the data corresponds to parallel bus data because Stewart also discloses a “parallel-to-serial register 47” that receives parallel data and “effects a shift on a serial basis of the data bits.” Id. at 18– 19 (quoting Ex. 1004, 5:9–22). Petitioner presents evidence that Stewart also teaches claim 7’s corresponding receiving step because Stewart teaches that “interface 10c ‘receives from the receiving channel 16 signals representing serial data.’” Id. at 19–20 (quoting Ex. 1004, 4:5–7). Last, Petitioner presents evidence that Stewart teaches claim 7’s clock-signal generation step because Stewart describes that decoder 22 extracts a “clock (i.e., CLOCK) signal from the information signals.” Id. at 22–23 (quoting Ex. 1004, 4:8–16). We have reviewed Petitioner’s arguments and the underlying evidence cited in support and are persuaded that, at this stage, Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in its anticipation challenge to claim 1 based on Stewart. 2. Anticipation of Claim 7 Based on Bryans” slip op. at 7
Claim construction§ 102 anticipationPatents in suitUS 8,060,675
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.