- PTAB · Oct 8, 2024 · IPR2024-00432 · APJ Frederick C Laney · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that Comcast would show at least one claim unpatentable over Zhang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 12
- Parallel petitionsDenied
“petitions, Petitioner filed a Petition Ranking and Explanation of Material Differences Between Petitions, ranking its three petitions directed to the ’362 patent in accordance with the guidance with respect to parallel petitions in the Board’s November 2019 Consolidated Trial Practice Guide. Paper 3; see Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019, “CTPG”), at 59–60 (available at Available at https://www.uspto.gov/ TrialPracticeGuideConsolidated). In that Paper, Petitioner ranked the instant Petition first. Paper 3, 1.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA” or “skilled artisan”) “would have had a degree in electrical engineering or a similar discipline, along with three-to-four years of experience with digital signal processing and RF tuning systems for satellite and/or cable communications,” and that “[a]dditional education may substitute for professional experience, and significant work experience may substitute for 8 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. See generally Prelim. Resp. formal education.” Pet. 20 (citing Ex. 1002 ¶¶ 30–32). Patent Owner does not address 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 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 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Construction We apply the same claim construction standard used in district court actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2021). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Petitioner states that “[a]ll claim terms herein should be given their” slip op. at 13
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 9,210,362 - PTAB · Oct 4, 2024 · IPR2024-00438 · APJ Michelle N Wormmeester · IPR · Institution
Instituted IPR on claims 1–76 and all asserted challenges because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. See Prelim. Resp. 4–30. As discussed above, Petitioner has complied with our guidance. See CTPG 59–60. For reasons given in our concurrent decisions denying institution in IPR2024-00439 and IPR2024-00440, however, we agree with Patent Owner that plural petitions are not warranted and we deny institution in the concurrently filed decisions for these petitions. Given our decisions to deny institution in IPR2024-00439 and IPR2024-00440, Patent Owner’s arguments on the need for more than one petition are unavailing with regard to the instant Petition. In view of the foregoing, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314(a) in this proceeding.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 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.” For the reasons that follow, we institute an inter partes review as to all the challenged claims of the ’206 patent based on all the challenges raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[a]ll claim terms herein should be given their ordinary and customary meaning to a POSITA, as they would be given in a civil action under 35 U.S.C. § 282(b),” where POSITA stands for “person of ordinary skill in the art.” Pet. 18. Petitioner further notes that “the ’206 patent defines ‘wideband’ as a band that carries multiple channels.” Id. at 18–19 (citing Ex. 1001, 1:36–39). Patent Owner does not respond. At this stage, on the record before us, we determine that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on Petitioner’s arguments and evidence, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that Zhang teaches the recited “digitizing” step of element 1C. For example, Zhang teaches that its ADC 220 “converts the down-converted multi-channel analog RF signal to a multi-channel digital RF signal.” Ex. 1013 ¶ 27 (cited by Pet. 22). Zhang explains that “many modifications, variations, alternatives, and equivalents . . . are intended to be within the scope of [its] invention,” and gives the example that “the RF channels need not be contiguous.” Id. ¶ 48 (cited by Pet. 22). We agree with Petitioner that Zhang’s example teaches or suggests that the RF channels may be contiguous. Zhang further describes “demultiplex[ing] the multi-channel digital RF signal into separate digital RF channels C1 to Cn,” which “contain content channels that are selected or used by a subscriber.” Id. ¶ 28 (cited by Pet. 22). Zhang describes filtering the RF channels so that “only the target RF channel passes.” Id. ¶ 32 (cited by Pet. 23). In addition, Zhang describes “select[ing] one or more of the RF channels D1 to Dm from one or more of the digital RF channels C1 to Cn,” where “only the selected channels are later demodulated unlike the systems using RF tuners which demodulate all of the RF channels.” Id. ¶ 28.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,399,206 - PTAB · Oct 1, 2024 · IPR2024-00435 · APJ Lynne H Browne · IPR · Institution
The Board instituted review of claims 1–82 on all grounds, finding a reasonable likelihood that Comcast would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, we determine, based on the record before us, that there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request for us to exercise our discretion to deny institution in this proceeding based on Petitioner’s filing of two additional parallel petitions challenging the same claims. We therefore institute inter partes review on all claims and all grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357 (2018).” slip op. at 2
- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. See Prelim. Resp. 4–30. As discussed above, Petitioner has complied with our guidance. See CTPG, 59–60. For reasons discussed in our concurrent Decisions Denying Institution in IPR2024-00436 and IPR2024-00437, however, we agree with Patent Owner that plural petitions are not warranted and we deny institution in the concurrently filed Decisions for these petitions. Given our Decisions to Deny Institution in IPR2024-00436 and IPR2024-00437, Patent Owner’s arguments regarding the need for more than one petition are unavailing with regard to the instant Petition.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) “would have had a degree in electrical engineering, or a similar discipline, along with three-to-four years of experience with digital signal processing and RF tuning systems for satellite and/or cable communications,” and that 6 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. See generally Prelim. Resp. “[a]dditional education may substitute for professional experience, and significant work experience may substitute for formal education.” Pet. 15– 16 (citing Ex. 1002 ¶¶ 30–32). Patent Owner does not address 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 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 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “[a]ll claim terms herein should be given their ordinary and customary meaning to a POSITA as they would be given in a civil action under 35 U.S.C. § 282(b).” Pet. 16. Yet, Petitioner proposes claim construction for “wideband” and “digital down converter” / “digital front end.” Id. at 16–19. Patent Owner does not address claim construction. See generally, Prelim. Resp. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,381,866 - PTAB · Mar 26, 2024 · IPR2024-00008 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted IPR of claims 1–5, 7–14, and 16 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314, which provides that 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.” 35 U.S.C. § 314(a). Upon considering the Petition and the Preliminary Response, we determine that Petitioner has satisfied this threshold requirement, and therefore we institute inter partes review of claims 1–5, 7–14, and 16 of the ’121 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Conclusion Based on our review of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny institution.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Section 325(d) requires us to “take into account whether, and reject the petition . . . because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d); see Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, slip op. at 17–18 (Paper 8) (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (setting forth six factors the Board may weigh in evaluating whether to exercise discretion under § 325(d)). The Board applies the following two-part framework in evaluating a request for discretionary denial under this section: (1) whether the same or substantially the same art or arguments were previously presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that, for the ’121 patent: [A] POSA as of November 12, 2010, would have had at least a bachelor’s degree in mechanical or agricultural engineering and 2–4 years experience in the design or manufacture of agriculture equipment. A POSA would have been familiar with the design and operation of known seed distribution meters and with the use of bearings and other plate-like technologies to receive and distribute axial loads by providing bearing surfaces for the transfer of forces. Pet. 21 (citations omitted). Patent Owner “defers its position on this issue until such time as the Board decides to institute a trial.” Prelim. Resp. 28–29. At this stage of the proceeding, we adopt Petitioner’s unopposed definition for purposes of this Decision. We also presume that the cited prior art references reflect the level of ordinary skill at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 8,770,121 - PTAB · Mar 20, 2024 · IPR2023-01289 · APJ James A Tartal · IPR · Institution
The Board instituted inter partes review of claims 1–33 on all petitioned grounds, finding a reasonable likelihood that claims 1 and 17 would have been obvious over Collinge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information presented shows a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, 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). Petitioner contends a person of ordinary skill in the art “would be a person with a Bachelor’s degree in Electrical Engineering or Computer Engineering, or equivalent knowledge, with sufficient mathematical background to understand basic cryptographic techniques, and with two to four years of academic or industry experience in payment systems.” Pet. 24. Petitioner further contends “[a]dditional education could compensate for less practical experience and vice versa.” Id. Patent Owner asserts a person of ordinary skill in the art would have had “the equivalent of an undergraduate degree in electrical and computer engineering (or a related field) and approximately two years of work experience in the field of secure payment system,” and that “[a]dditional education in the field could be substituted for industry experience, and vice versa.” Prelim. Resp. 12. Patent Owner does not suggest that its proposed level of ordinary skill materially differs from the level of skill proposed by Petitioner for purposes of determining whether to institute inter partes review. See id. art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’171 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision. We note we would have reached the same conclusions in this Decision had we adopted Patent Owner’s proposed level of ordinary skill in the art on the current record and Patent Owner may address any material differences in the proposed levels of ordinary skill in its response.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“application data protocol unit containing the response cryptogram and an account identifier for the account” (referred to by Petitioner as the “R-ADPU Term”), which Petitioner argues is “potentially subject to at least two alternative constructions.” Id. at 24–25. In particular, Petitioner asserts the R-ADPU Term may be construed either as “one or more response application data protocol units, collectively containing the response cryptogram and an account identifier for the account” or as “one or more response application data protocol units, each of which contains both the response cryptogram and an account identifier for the account.” Id. Petitioner contends “the challenged claims are anticipated or obvious under either construction” and that that there is no need to construe the R-ADPU Term at this stage of the proceeding. Patent Owner does not propose an express construction of any claim term. See Prelim. Resp. 11. Patent Owner notes the alternative constructions of the R-ADPU Term proposed by Petitioner, but does not advocate one construction over the other and does not propose an alternative construction. Id. We find that an express construction of any claim term is not necessary for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“unpatentability of the Challenged Claims of the ’171 patent. See In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1382 (Fed. Cir. 2015). As to the first consideration, Petitioner provides a detailed claim chart identifying how Petitioner contends the ’095 Provisional provides written description support for each limitation of claim 20 of Collinge. Pet. 29–33. As to the second consideration, using Petitioner’s allegations directed to claim 1 of the ’171 patent as an example, Petitioner provides a detailed analysis of how it contends Collinge discloses or teaches each limitation of claim 1 with supporting citations to both Collinge and to the ’095 Provisional. Id. at 36–52. We find Petitioner’s contentions, on the current record, sufficient to support Petitioner’s contention that Collinge is available as prior art for purposes of institution. We disagree with Patent Owner’s arguments disputing the sufficiency of Petitioner’s showing, at this stage of the proceeding, that Collinge is available as prior art for the following reasons. See Prelim. Resp. 13–19. First, Patent Owner broadly argues that “Petitioner makes no attempt to show” that the ’095 Provisional provides “sufficient support for the subject matter relied upon for prior art purposes in Collinge.” Id. at 16. To the contrary, as explained above, Petitioner includes citations to the ’095 Provisional in support of its unpatentability contentions, which we understand to constitute how Petitioner argues the portions of Collinge relied upon by Petitioner to show the unpatentability of the subject matter of the Challenged Claims was “carried forward” from the ’095 Provisional to Collinge. We disagree with Patent Owner’s assertion that Petitioner had an obligation to provide, at this stage of the proceeding, an “explanation as to Collinge” beyond the support identified in the Petition. Id. at 17. Second, Patent Owner argues that, for certain limitations of claim 1, (i.e., 1.A-3 and 1.E-1) Petitioner “cites to no evidence” from the ’095 Provisional in support of its contentions. Id. at 17–19. We disagree. In each instance in discussing these limitations, Petitioner includes citations to the ’095 Provisional. See Pet. 38–41 (citing Ex. 1009 ¶ 61, Table 1, cl. 19), 45–46 (citing Ex. 1009 ¶¶ 61, 63). Patent Owner does not identify what subject matter it contends is relied upon by Petitioner that lacks written description support from the disclosure of the ’095 Provisional. Instead, Patent Owner appears to suggest that for each citation to Collinge in the Petition, Petitioner was required to provide a corresponding citation to the ’095 Provisional. We are not persuaded that such a formulistic approach, divorced from the merits, is required for Petitioner to show in the Petition how Petitioner contends the ’095 Provisional provides written description support for the subject matter taught by Collinge relied on by Petitioner. For purposes of institution, we find Petitioner has provided sufficient support to show that Petitioner may rely on Collinge as prior art.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,032,171 - Meta Platforms, Inc. v. Eight KHZ, LLCInstitutedPTAB · Jan 9, 2024 · IPR2023-01005 · APJ Justin T Arbes · IPR · Institution
The Board instituted IPR of claims 9–14 and 16–20 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“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.” Director’s Memo 3. With our authorization, Petitioner filed a stipulation which stipulates that [i]f the PTAB institutes the pending IPR in IPR2023-01005 challenging the patentability of claims 9–14 and 16–20 of the ’628 patent, then [Petitioner, Meta Platforms Technologies, LLC, and Twisted Pixel Games, LLC] will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR in the above-captioned district court litigation (No. 6:22-cv-00575-ADA).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13, 21 (PTAB Dec. 20, 2019) (precedential) (“Hulu”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Id. at 13. slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We disagree based on the current record. Schröder “must be considered for everything that it teaches, not simply the . . . preferred embodiment” that involves only adjusting the HRTFs to maintain the sound’s direction when there are small, relatively frequent movements and performing cross-talk filtering in a particular way. In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012); In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) (“A reference may be read for all that it teaches, including uses beyond its primary purpose.”). Petitioner’s position is that (1) Billinghurst teaches spatializing sound for the avatar of a remote collaborator shown on the display, as well as changing the spatialized sound in response to the wearer’s head movements, but does not explicitly describe how it does so, and, therefore, (2) a person of ordinary skill in the art would have looked to a reference like Schröder for details. See Pet. 21–22, 24, 34–36, 45–48. Petitioner relies on Schröder solely for its teachings regarding HRTF processing, not, for example, its description of a particular Schröder processes voice using HRTFs and adjusts HRTFs in response to head movements to maintain direction some of the time (i.e., when there are small, relatively frequent movements); Schröder simply takes a different action in certain other circumstances (i.e., it resets the direction when there is a larger, relatively less frequent movement). See Ex. 1012, pg. 4, l. 12–pg. 6, l. 3; Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002 (Fed. Cir. 2016) (“combinations of prior art that sometimes meet the claim elements are sufficient to show obviousness”).” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’628 patent (June 2014), a person of ordinary skill in the art would have had “at least a bachelor’s degree in computer science or engineering with a focus on audio signal processing and sound localization, with at least two years of relevant experience,” where “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 19 (citing Ex. 1003 ¶¶ 32–34). Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 5. Based on the record presented, including our review of the ’628 patent and the types of problems and solutions described in the ’628 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision, except that we remove the term experience.” slip op. at 14
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,674,628 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Memoryweb, LLCAll claims unpatentablePTAB · Nov 16, 2023 · PGR2022-00034 · APJ Kevin C Trock · PGR · Final written decision
Claims 1–34 are unpatentable: claims 1–25 and 27–34 over Pogue and Engst, and claim 26 over Pogue, Engst, and Ripps.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Cir. 1986)) for its point is also misplaced. In re Hall stands for a different proposition, one which states that “competent evidence of the general library practice may be relied upon to establish an approximate time when a thesis became accessible.” Id. at 781 F.2d at 898. Although Pogue and Engst are not doctoral theses, the principal espoused in In re Hall is still applicable here. Ms. Munford’s testimony provides competent evidence of general library practices which can be relied upon to establish an approximate time when a printed publication became publicly accessible. Accordingly, we credit Ms. Munford’s testimony on general library practices and accept her testimony as credible that Pogue was made available to the public by the Carnegie Library of Pittsburgh shortly after acquiring it on January 21, 2009, and that Engst was made available to the public by the Illinois State University Library shortly after acquiring it on May 25, 2009. Ex. 1010 ¶¶ 8–13.” slip op. at 35
- ExcludeMotion to exclude, deniedDenied
“determination in this case. Accordingly, Patent Owner’s motion to exclude Exhibits 1030–1033 is denied as moot.” slip op. at 100
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“d) Conclusion on Independent Claims 1 and 29 We have considered the evidence and arguments with respect to” slip op. at 86
Patent outcomesUS 11,163,823 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,163,823 - Guangdong Laitu Imaging Technology Co., Ltd. v. Really Right Stuff, LLCInstitution deniedPTAB · Oct 25, 2023 · IPR2023-00853 · APJ Sean P O’Hanlon · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, including due to failures to establish prior art status and claim limitations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION For the foregoing reasons, we are not persuaded that the Petition establishes a reasonable likelihood that Petitioner would prevail in any of its challenges to claims 6–8, 15–17, and 25–28 of the ’037 patent. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted; and FURTHER ORDERED that Petitioner’s Pro Hac Vice Motion to” slip op. at 34
- Adverse judgmentAdverse judgmentOther
“Here, Patent Owner filed a statutory disclaimer of claims 1–5 and 18–24 of the ’037 patent. Prelim. Resp. 7; Ex. 2004. Based on our review of Exhibit 2004 and Office assignment records, we determine that a disclaimer of claims 1–5 and 18–24 of the ’037 patent under 35 U.S.C. § 253(a) has been filed with the Office as of July 27, 2023. Although the disclaimer does not, on its face, indicate the extent of Patent Owner’s interest in the ’037 patent (see Ex. 2004, 2), Office assignment records indicate that Patent Owner owns the entire interest in the ’037 patent. See Ex. 3001, 2. We also note that notice of the disclaimer was included in the September 12, 2023, Official Gazette, Volume 1514, No. 2 at 228. See Ex. 3002, 1. Based on the information in the public record, we find that the disclaimer complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Because claims 1–5 and 18–24 have been disclaimed under 35 U.S.C. § 253(a), in compliance with 37 C.F.R. § 1.321(a), we do not reach challenges to those claims. As a result, the remaining challenged claims are claims 6–8, 15–17, and 25–28 (“the challenged claims”).” slip op. at 6
- Skill levelSkill level board ownDecided for patent owner
“Patent Owner disagrees with Petitioner’s definition, arguing that “a lower level of skill is necessary to understand the mechanical functions of a tripod.” Prelim. Resp. 11. According to Patent Owner, “a hobbyist user of a tripod, such as a hunter or landscape photographer, would have the understanding of a person of ordinary skill in the art. Formal education or years of practical experience building equipment supports are unnecessary to understand the function of a tripod.” Id. Neither of the parties provides the testimony of an expert witness or addresses the factors identified above. The challenged claims are directed to a support, such as a tripod, having an apex that is mountable to a platform and to which equipment to be supported by the tripod may be attached. Based on the teachings of the ’037 patent and the disclosure of the asserted references, we find that the lower level of skill proposed by Patent Owner to be more reasonable and for purposes of this Decision adopt it as our own. We note that we would reach the same conclusion to deny institution under either proposed standard.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner proffers definitions for two terms. Patent Owner argues that “[a]pex should be construed as ‘the structure of the tripod that joins the legs to each other and the rest of the tripod at the legs’ pivot points’” (Prelim. Resp. 11) and “[e]quipment should be limited to devices that may be used either in conjunction with or independent of a support” (id. at 12). For purposes of this Decision, and based on the record before us, we determine that no construction of any term is necessary.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,398,037 - Edwards Lifesciences Corporation / Edwards Lifesciences LLC v. Colibri Heart Valve LLCSome claims unpatentablePTAB · Oct 11, 2023 · IPR2022-00878 · APJ Lynne H Browne · IPR · Final written decision
Claims 55–72, 78–80, 83, and 84 are unpatentable over the instituted grounds; Petitioner did not show claim 85 unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art would have been a mechanical engineer, medical device engineer, or an interventional cardiologist with a working knowledge of stent-based prostheses for use in a patient’s heart or vasculature to replace and/or repair a diseased valve, intravascular delivery systems for the delivery of such prostheses, and methods associated with the delivery and implantation of such prostheses in a patient. Pet. 31 (citing Ex. 1026 ¶ 27). Patent Owner “does not dispute Petitioner[’s] definition of a person of ordinary skill in the art.” PO Resp. 2. 8 The parties have not directed our attention to any objective evidence of obviousness or non-obviousness. reasonable and consistent with 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 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“Terms Defined by the ’400 Patent 1. Both parties discuss claim terms (“substantially conical,” “folds,” “biocompatible membrane [that] does not comprise a treated tissue,” “cusp,” “cuff wall,” “frame,” “mobile leaflet layer” or “mobile leaflet,” “proximal,” “non-transverse”, and “plurality of . . . leaflets”) which are defined by the ’400 patent’s explicit definition of these terms or its explicit definition of a related term (e.g., definition of “folding” also defines claim term “folds”). Pet. 26–28; PO Resp. 26–28. Both parties assert that the definitions in the ’400 patent define these claim terms. Id. We agree. For the claim terms defined by the ’400 patent, Patent Owner has acted as its own lexicographer by setting out the definitions of these claims terms in the specification of the ’400 patent. Thorner v. Sony Comput. Ent. Am., LLC, 669 F.3d 1362, 1365 10 We note that throughout its claim construction arguments, Patent Owner refers to the claim construction of the word “attach;” however, the claim term at issue is “attached.” We understand Patent Owner to be referring to this claim term and treat Patent Owner’s arguments as if they refer to the claim term “attached.” discussed in Sections D–F below, we construe these terms in accordance with their definitions set forth in the ’400 patent.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“f) Conclusion Re Claim Construction For “Attached” We begin our analysis by reiterating that under the Phillips standard, claim terms are generally given their ordinary and customary meaning as would be understood by one with ordinary skill in the art in the context of the specification, the prosecution history, other claims, and even extrinsic evidence including expert and inventor testimony, dictionaries, and learned treatises, although extrinsic evidence is less significant than the intrinsic record. Phillips, 415 F.3d at 1312–17. When a patent owner wishes to employ a definition that is different from the ordinary and customary meaning of a claim term, it may do so by acting as its own lexicographer setting out the definition of that claim term in the specification of its patent. Thorner, 669 F.3d at 1365. As discussed in Section II.C.1 above, Patent Owner has acted as its own lexicographer and defined numerous claim terms in the ’400 patent. See Ex. 1001, 11:41–13:18. Thus, it is readily apparent that when Patent Owner intended to employ a definition of a claim term that differed from the the ordinary and customary meaning of that claim term, Patent Owner provided such a definition. A person of ordinary skill in the art would infer accordance with their ordinary and customary meaning. Having considered the full record before us including the evidence, testimony, and argument in support of the parties’ positions, we agree with Petitioner that the claim term “attached” should be construed in accordance with its ordinary and customary meaning, which the parties agree is “fastened, secured, or joined, directly or indirectly.”12 Pet. Reply 1; PO Resp. 15. We do not find that the context of the ’400 patent further narrows this term such that a person of ordinary skill in the art would have understood “attached” to require attachment “at the same location.” Accordingly, we apply the ordinary and customary meaning of the claim term “attached” in considering the challenges set forth in the Petition discussed below.” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“testimony, and arguments in support of both parties’ positions, we agree with Petitioner that Melsheimer’s cusps are substantially conical as required by independent claim 55. The definition of “substantially conical” set forth in the ’400 patent does not require that every part of the structure in question resemble a cone. Ex. 1001, 12:47–54. Rather, it requires a structure that “resembles a cone or portion thereof at some point in the practical use of the structure” and a “cross-sectional perimeter or area of the structure in the operationally closed position that decreases moving from the level of the leaflet apposition to the proximal end of the valve.” Id. (emphasis added). Melsheimer discloses receptacles 18 that are cone-shaped. Ex. 1003, Fig. 4A. Although, Melsheimer’s leaflet 16 and receptacle 18 pairs are not entirely cone-shaped, they do still resemble a cone. Further, Melsheimer’s receptacles 18 have the required cross-sectional perimeter. See id. Accordingly, we determine that these pairs (i.e., Melsheimer’s cusps) are “substantially conical” in accordance with the definition set forth in the ’400 patent. Conclusion For Grounds 1–3 Having considered the full record before us including the evidence, testimony, and arguments of both parties, we determine that Petitioner shows by a preponderance of the evidence that claims 55, 56, 58, 59–61, 63, 65, and 66 are anticipated by Melsheimer (Ground 1). We further determine that claims 57, 64, 78, and 79 are unpatentable over Melsheimer alone or in combination with Eberhardt (Ground 2) and that claims 62, 83, and 84 are unpatentable over Melsheimer alone or in combination with Pavcnik (Ground 3).” slip op. at 31
Patent outcomesUS 9,737,400 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,737,400 - PTAB · Aug 14, 2023 · IPR2023-00558 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR of claims 1–16 on all petitioned grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a). Applying that standard on behalf of the Director (37 C.F.R. § 42.4(a)), we institute an inter partes review to determine whether Petitioner demonstrates by a preponderance of the evidence that the challenged claims are unpatentable, considering all grounds in the Petition.” slip op. at 2
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“asserted in the Preliminary Response in relation to Horikoshi. Only “analogous” prior art references may be used to support an obviousness determination. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)). A prior art reference is analogous to a challenged patent if: (1) it is from the same field of endeavor as the challenged patent; or (2) it is reasonably pertinent to the particular problem with which the inventor(s) of the challenged patent were involved. Id.; Sanofi-Aventis, 66 F.4th at 1377–78.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“skill in the art “would have been motivated to use the VFD described in Toshiba Manual as the variable frequency drive in Coli, or to enhance the Coli VFD with the features taught by Toshiba Manual.” Pet. 23; Ex. 1002 ¶ 152. In particular, according to Petitioner and Dr. Durham, “Toshiba Manual’s express disclosure of VFD control and monitoring of parameters of the electric motor in Coli, such as current, voltage, speed, temperature, torque, and load” would have motivated “use [of] the diagnostic functionality of Toshiba Manual (e.g., the alarms and fault trips) in order to prevent damage to the electric motor” in Coli. Pet. 24–25 (citing Ex. 1006, 179, 182–85); Ex. 1002 ¶¶ 153, 155–156, 158. Petitioner and Dr. Durham further conclude this could have been achieved with a reasonable expectation of success. See Pet. 24; Ex. 1002 ¶¶ 157–158. We conclude Petitioner’s contentions as to the motivation for combining Coli and Toshiba Manual to practice the invention of claim 1, which are not presently opposed by Patent Owner, are sufficiently supported by the evidence to justify institution of review.” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“sensors (e.g., thermistors).” Pet. 11, 37–38 (citing Ex. 1006, 180, 185); Ex. 1002 ¶¶ 120–123, 186. Thus, Petitioner appears to rely on an inherent disclosure in this regard. See, e.g., In re Montgomery, 677 F.3d 1375, 1379–80 (Fed. Cir. 2012) (an inherent disclosure may be found if it “is necessarily present” in the reference). However, inherency “may not be established by probabilities or possibilities,” and the fact that a certain characteristic may be, but is not necessarily, present in the prior art is not sufficient to establish the inherency of that characteristic. Id.; Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991). In this case, Loucks suggests that measuring the temperature of electrical equipment in order to provide a controlled cooling of the equipment may be accomplished by “measuring the temperature of inlet air, exhaust air, heat sinks, or other areas of” the equipment. Ex. 1009 ¶¶ 1–3. Thus, based on the present record, Petitioner’s assertion that Toshiba Manual inherently associates its heat sinks with its thermal sensors is not supported by the evidence.” slip op. at 26
§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,136,870
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.