- PTAB · Feb 13, 2025 · IPR2024-00978 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–17 on all petition grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“letter stipulating that if the Board institutes this IPR petition on the grounds presented therein, then Samsung will not pursue in the above-captioned litigation any grounds that were raised or reasonably could have been raised in the IPR. For the sake of clarity, this stipulation does not extend to co-petitioner Google, which is not a party to the above-referenced litigation.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 61. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 61 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co. and Cerence, Inc. as real parties in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not currently take a position on the relevant level of ordinary skill in the art, but believes that “the Board could assume Petitioner’s proposed level of ordinary skill for purposes of deciding whether to institute.” Prelim. Resp. 3. 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 ’078 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 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,395,078 - Adb Safegate Sweden AB / Adb Safegate BV et al. v. Honeywell International Inc.All claims unpatentablePTAB · Feb 12, 2025 · PGR2023-00053 · APJ James P Calve · PGR · Final written decision
Claims 1–20 are unpatentable under § 101; claims 1, 6–10, and 13–20 are also unpatentable over Berkmo, and claims 1–20 over Berkmo and Richman.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a skilled artisan would have “held at least a degree in electrical engineering, computer engineering, computer science or a similar discipline, with at least two years of relevant industry or research experience, including experience designing, planning, or implementing sensor networks using LIDAR, radar and/or cameras and corresponding data analysis” and “[a]dditional work or research experience can substitute for less or different education, and vice versa.” Pet. 10 (citing Ex. 1003 ¶¶ 18– 23). Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. PO Resp. 14. Having considered the record, we adopt Petitioner’s uncontested level of ordinary skill as articulated above. Petitioner’s description appears to be consistent with the prior art cited and the skill reflected in the Specification of the ’349 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We reject Patent Owner’s interpretation because it limits the claims to an exemplary embodiment that “can, for example, provide the remaining distance and the horizontal deviation with respect to the center line of a path” (Ex. 1001, 10:8–11), and it reads limitations of that embodiment into the claims. Absent a lexicographic definition or a disavowal, such claim interpretations are not permissible. See Phillips, 415 F.3d at 1312, 1316 (claims are given their ordinary, customary meaning in the context of the entire patent and the specification absent a lexicographic definition or a disclaimer or disavowal of claim scope by the inventor); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (“Even when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using ‘words or expressions of manifest exclusion or restriction.’”) (citation omitted). Patent Owner has not asserted a definition or a disclaimer to support its interpretation. PO Resp. 16–17. The parties agree that “directional guidance” includes “navigational instructions” and “maneuvering guidance information.” PO Resp. 16 (“the claims make clear that this guidance refers to the navigational instructions to be provided to the pilot guiding the airplane”), 17 (a skilled artisan “reading the challenged claims in light of the specification would understand that ‘directional guidance’ refers to navigational instructions including the horizontal deviation with respect to the center line of a path”); Reply 21 (Berkmo teaches providing “pilot maneuvering guidance information . . . for aiding a pilot of the approaching aircraft towards [a] parking position”); Pet. 54 (Berkmo provides maneuvering guidance information). We interpret “directional guidance” as navigational instructions and maneuvering guidance information. This interpretation is consistent with the claims, which do not recite features of “directional guidance,” much less a horizontal deviation with respect to a center line as Patent Owner asserts.” slip op. at 10
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“We agree with Petitioner that the merging recites mental processes because the algorithms described in the specification (Ex. 1001, 8:50–9:10) can be performed as mental processes. Pet. 20–22; Reply 9–11; Ex. 1044 ¶¶ 56–58; Elec. Power Grp., 830 F.3d at 1351–52, 1353–54 (receiving time stamped synchronized phasor measurements at different points of an electric power grid and analyzing and updating the measurements in real time using limits, sensitivities, and rates of change of dynamic stability metrics derived from voltages, power flows, phase angles, damping, and oscillation modes recite mental processes); id. at 1354 (analyzing data by mental steps or mathematical algorithms is an abstract mental process). Merging data by transforming and converting it from one format to another is an abstract idea. See AI Visualize, Inc. v Nuance Commc’ns, Inc., 97 F.4th 1371, 1379 (Fed. Cir. 2024) (“But ‘converting information from one format to another . . . is an abstract idea.’” (citation omitted); creating virtual views in real time by “creating the requested frames of the requested views from the volume visualization dataset” created a virtual view from the existing volume visualization dataset as “abstract data manipulation”); Hawk Tech. Sys., LLC v. Castle Retail, LLC, 60 F.4th 1349, 1357 (Fed. Cir. 2023) (the method receives, displays, converts, stores, and transmits digital video data using result-based functional language); FICEP Corp. v. Peddinghaus Corp., No. 2022-1590, 2023 WL 5346043, *3–4 (Fed. Cir. Aug. 21, 2023) (the focus of the advance is on automating the identification, extraction, and transfer of a 3D rendering of an object by a CAD design model including dimensions and intersection parameters without specifying how intersection parameter data was generated or used to create a design model and therefore encompasses a human deriving intersection parameters and adding this data to the design model for extraction); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“[A] process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.”) (quoting Parker v Flook, 437 U.S. 584, 595 (1978) (“If a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.”)); MPEP § 2106.04(a)(2) (mathematical relationships include converting binary coded decimal numerals to pure binary numerals as did the claims in Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972)); see also Tr. 22:24–25:23.” slip op. at 20
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“The ordered combination of elements recites no more than when the elements are considered individually and thus does not provide an inventive concept. We disagree with Patent Owner’s argument that “[w]hen considered individually or in combination with the other claimed elements, the reliance on this merged data from a camera and LIDAR/RADAR sensor is itself an inventive concept because it was not conventional and improves the technology of aircraft tracking and guidance.” PO Resp. 49–50. Merging data from two different sensors is part of the abstract idea and therefore cannot provide an inventive concept that makes that abstract idea patent eligible. See, e.g., BSG, 899 F.3d at 1291–92; Guidance at 56. “If a claim’s only ‘inventive concept’ is the application of an abstract idea using conventional and well-understood techniques, the claim has not been transformed into a patent-eligible application of an abstract idea.” BSG, 899 F.3d at 1290–91. “It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” Id. at 1290. Even if merging camera and LIDAR/RADAR sensor data is treated as an additional element, the description of the point cloud process and iterated point cloud algorithm indicates Patent Owner did not invent or improve the merging process. Ex. 1001, 8:64–9:40; MPEP § 2106.05(d)I.2. (a generic description indicates that elements are conventional enough that no further description is needed to satisfy § 112(a)); see AI Visualize, 97 F.4th at 1379 (converting data from one format to another is an abstract idea); Adaptive Streaming Inc. v. Netflix, Inc., 836 F. App’x 900, 903 (Fed. Cir. 2020) (encoding and decoding image data and converting data formats are abstract ideas). Dr. Campbell and Mr. Wilson testify that merging data is known for detecting and tracking objects and navigation. Ex. 1044 ¶¶ 41–51, 56–59; Ex. 1003 ¶¶ 54–65, 81–87; Ex. 1045, 20:6–23:18. A “data fusion process” is not claimed, much less one of any particular features. See PO Resp. 50. Nor do the claims recite a non-conventional arrangement of sensors. See Ex. 1003 ¶¶ 42–67, 83; iLife, 839 F. App’x at 538 (because sensors for measuring static and dynamic acceleration were known, and claim 1 did not recite unconventional means for processing that data, sensing and processing the static and dynamic acceleration information using generic components did not transform the nature of claim 1 into patent eligible subject matter).” slip op. at 39
Patent outcomesUS 11,538,349 unpatentableClaim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Enfish · Phillips · KSR · GrahamPatents in suitUS 11,538,349 - Interactive Communications International, Inc. v. Blackhawk Network Inc.No claims unpatentablePTAB · Feb 6, 2025 · IPR2023-01235 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–6 were not shown unpatentable under either obviousness ground because Szrek did not disclose a pre-printed lottery ticket without lottery numbers associated at customer purchase.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“real party in interest. Prelim. Resp. 1–2, 32–34. In the Institution Decision, we stated: To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party of interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response and the parties may brief and argue the issue during trial. Inst. Dec. 11. In its Patent Owner Response, Patent Owner did not raise the issue of challenging Petitioner’s identified real party in interest. See generally PO Resp. Thus, we need not address this issue further because we find that Patent Owner has waived any challenge to Petitioner’s identification of the real parties in interest in this proceeding. See Paper 12 (Scheduling Order), 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Pet. 2–3 (citing Ex. 1003 ¶ 13).5 Patent Owner states that, “[f]or the purpose of this proceeding, Patent Owner adopts the Petition’s proposed definition of the level of ordinary skill in the art.” PO Resp. 19. 5 Petitioner proposes the same level of ordinary skill in the art that the Board adopted in PGR2020-00084. Pet. 2–3 (citing Ex. 1008, 11). We find that the parties’ agreed-upon level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’135 patent and the prior art of record. See Inst. Dec. 14; 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). Therefore, we adopt the parties’ agreed-upon level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDisclaimer foundDecided for patent owner
“Following the block quote from Yacenda, the applicant then stated, “[b]ased on the foregoing, Yacenda’s system is directly opposite of the instant claims, as the instant claims require a ‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.’” Ex. 1002, 76. This statement is clear and unmistakable. It (1) specifically states that “the instant claims require” and (2) then states what the claims require—a “‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.” We fail to see how the applicant could have been more clear in stating a requirement of the Challenged Claims. And, by doing so, the applicant narrowed the scope of what would otherwise be encompassed in the meaning of “pre-printed lottery ticket” and therefore what would otherwise be encompassed in the scope of the Challenged Claims—a lottery ticket which has lottery numbers associated with it at the time of customer purchase.” slip op. at 27
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We do not find Mr. Hutton’s testimony particularly helpful. First, we have addressed the points raised by his testimony in our discussion above because they are largely the same as the arguments raised in Petitioner’s Reply. Second, we find his testimony entitled to very little weight because he applies an incorrect understanding of the caselaw, which mirrors Petitioner’s incorrect and arguably misleading quotations of the Federal Circuit’s decision in Quest. In particular, in paragraph 5, Mr. Hutton states the following as his understanding of the law as it applies to prosecution disclaimer: “I also understand that in order to disclaim embodiments within the specification, the statements should have some indication that the applicant intended to surrender embodiments from the specification.” Ex. 1038 ¶ 5 (emphasis added). This then leads Mr. Hutton to state: “[t]hus, in my opinion, a [person of ordinary skill in the art] would not view applicant’s statements as a disclaimer, because the applicant never stated that they intended to surrender multiple embodiments described in the specification.” Id. ¶ 13 (emphasis added). As we explained above in responding to a similar argument by Petitioner, the caselaw does not require an applicant to expressly state whether a disclaimer excludes particular embodiments of the subject specification when disclaiming claim scope during prosecution. See Quest, 924 F.3d at 1229. And, as noted above, counsel for Petitioner agreed that such a statement explicitly disclaiming particular embodiments is not required. Tr. 12:18–13:17. Third, although we have considered Mr. Hutton’s testimony, we find it “less significant than the intrinsic record in determining the legally operative meaning of” “pre-printed lottery ticket.” Phillips, 415 F.3d at 1317. In particular, we are cognizant of the Federal Circuit’s guidance that we “should discount any expert testimony that is clearly at odds with the claim construction mandated by . . . the prosecution history.” Id. at 1318 (internal quotation omitted). In this instance, for the reasons explained above, we find that Mr. Hutton’s testimony is clearly at odds with the applicant’s arguments during prosecution and that his testimony is based on a misunderstanding of what is required by the governing caselaw for prosecution history disclaimer.” slip op. at 43
Patent outcomesUS 9,865,135 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,865,135 - Samsung Electronics Co., Ltd. / Samsung Electronics, America, Inc. v. Cerence Operating CompanyInstitutedPTAB · Jan 31, 2025 · IPR2024-01267 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on claims 1–3, 7–9, 12, and 13 on all petitioned grounds, finding a reasonable likelihood that claim 1 is obvious over Arai and Fenwick.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation in Exhibit 1020 satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor before determining that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation. In light of Petitioner’s stipulation, Patent Owner’s request is denied.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“any evidence of objective indicia of nonobviousness. We conclude that on balance, considering the record presently before us, Petitioner has established a reasonable likelihood of showing that the differences between the subject matter of claim 1 and the teachings of Arai and Fenwick are such that the subject matter, as a whole, would have been obvious at the time of the invention to a person having ordinary skill in the art. e. Summary as to Claim 1 For the reasons discussed above, on the present record we find that Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Arai and Fenwick teaches or suggests each element of claim 1 of the ’428 patent. See 35 U.S.C. § 314(a).” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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 ’428 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Relying on the Declaration of Jean Renard Ward, Petitioner contends that “[a] POSITA would have been motivated to incorporate[] Fenwick’s teachings regarding automatically sending recognized words to an application into Arai because this would have furthered Arai’s purpose of having a natural, uninterrupted flow in entering characters without having to press extra keys.” Pet. 31–32 (citing Ex. 1002 ¶ 139). Petitioner concludes that the combination would have been obvious in that it would apply Fenwick’s known technique for recognizing words without additional user confirmation to Arai’s known method of performing handwriting recognition, ready for improvement, to yield the predictable result of the Arai/Fenwick combination: “recognition results are sent to an application without further user confirmation—e.g., pressing the Enter Key—and handwritten character recognition results are removed from the temporary memory such as RAM when the recognition results are sent to the application.” Id. at 32 (citing Ex. 1002 ¶ 140).” slip op. at 18
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,026,428 - PTAB · Jan 31, 2025 · IPR2024-00979 · APJ Lisa A Murray · IPR · Institution
The Board instituted inter partes review of claims 1–18 on all four asserted obviousness grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto. gov/sites/default/files/documents/interim_proc_discretionary_denials_aia_ parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1018) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 57. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 57 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co., a subsidiary of Cerence, Inc., as a real party in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending that Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not currently take a position on the relevant level of ordinary skill in the art and believes that “the Board could assume Petitioner’s proposed level of ordinary skill for the purposes of deciding whether to institute.” Prelim. Resp. 3. 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 ’993 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 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Additionally, only terms that are in controversy need to be construed, and these need to be construed only to the extent necessary to resolve the controversy. 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)). At this time, neither party proposes a specific construction of any given claim term, instead requesting that the claims be given their plain and ordinary meaning. Pet. 10–11; Prelim. Resp. 5.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,081,993 - Mercedes-Benz USA, LLC v. Daedalus Prime LLCAll claims unpatentablePTAB · Jan 24, 2025 · IPR2023-01344 · APJ Gregg I Anderson · IPR · Final written decision
Claims 1–17 are unpatentable: claims 1, 3–7, 11–13, and 15–17 over Sinharoy; claims 2 and 10 over Sinharoy and Xu; and all challenged claims under the listed Tang grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“In the Institution Decision we determined Petitioner’s description was consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of that decision, we adopted Petitioner’s proposal in the Institution Decision. Inst. Dec. 10–11. Now Patent Owner argues for a “more precise definition” offered in the Horst Declaration and adopted in the Brogioli Declaration. PO Resp. 6–7 (citing Ex. 2002 ¶ 25). effects any patentability issue. The only difference between the two is the addition of “two years of experience working with multicore processor systems, central processing unit (CPU) , cache, and memory systems” as the experience level of a person of ordinary skill in the art. Compare Inst. Dec. 10–11 (citing Pet. 8) and Ex. 1007 ¶ 30 and Ex. 2001 ¶ 25. No mention of the difference between the two levels of ordinary skill is made in any of the papers filed. Regardless, inasmuch as both experts agree to the level of ordinary skill, we find the experience associated with the level of ordinary skill is “two years of experience working with multicore processor systems, central processing unit (CPU) , cache, and memory systems.” The level of education is unchanged from the Institution Decision.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We are not persuaded to change our preliminary construction. First, Patent Owner misstates our construction of “single caching agent” by adding the language “each associated with a corresponding one of the plurality of cores.” That language is present in the claim as a separate limitation. See Section I.E (limitation [1g]) above. This added language is not present in our preliminary construction, which states only that a “single caching agent” means “one caching agent for the processor, which may be formed from distributed portions.” Inst. Dec. 12. Thus, that each “single caching agent” is “associated with a corresponding one of the plurality of cores” is a separate limitation. Second, none of the above citations to the ’895 patent is contrary to our construction. Our construction states that a “single caching agent” is recited. That is what is repeated in Patent Owner’s citations. Third, the ’895 patent’s description of Figure 6 explains that a “single caching agent” may be formed from distributed portions, as do the claim limitations in question. See Ex. 1001, 6:35–37. Other than tacking on the second recitation of “distributed portions” to the “single caching agent” portions” part of our construction is incorrect. The Brogioli Declaration repeats the above citations to the ’895 patent” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“In an IPR, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication.” Nobel Biocare Services AG v. Instradent USA, Inc., 903 F. 3d 1365, 1375 (Fed. Cir. 2018) (citing Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)). “A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it.” Medtronic, 891 F.3d at 1380 (citations, quotations, and alterations omitted). The evidence of record supports our finding that Xu was publicly available at an IEEE conference occurring from November 14 through 15, 2011. Ex. 1013 ¶¶ 8–11, Ex. A (Xu). Xu has a copyright date of 2011 which, although not dispositive of the date of public accessibility, is relevant evidence of public accessibility at the conference. Ex. 1005, 1. Exhibit 1014 confirms the conference dates of November 14–15, 2011, which antedates the December 31, 2011, critical data that Patent Owner asserts for the ’895 patent (PO Resp. 26; see Reply 13–14) and the December 13, 2011, priority date of the ’895 patent (Ex. 1001, at code [63], 1:5–7). Ex. 1014. Whether or not Exhibit 1019 is hearsay or authenticated, the MacPherson Declaration and IEEE Explore evidence is sufficient to show that Xu was available at the November 14–15, 2011 conference. The Motion to exclude Exhibit 1019 is denied as moot. slip op. at 41
- ExcludeMotion to exclude, deniedDenied
“The evidence of record supports our finding that Xu was publicly available at an IEEE conference occurring from November 14 through 15, 2011. Ex. 1013 ¶¶ 8–11, Ex. A (Xu). Xu has a copyright date of 2011 which, although not dispositive of the date of public accessibility, is relevant evidence of public accessibility at the conference. Ex. 1005, 1. Exhibit 1014 confirms the conference dates of November 14–15, 2011, which antedates the December 31, 2011, critical data that Patent Owner asserts for the ’895 patent (PO Resp. 26; see Reply 13–14) and the December 13, 2011, priority date of the ’895 patent (Ex. 1001, at code [63], 1:5–7). Ex. 1014. Whether or not Exhibit 1019 is hearsay or authenticated, the MacPherson Declaration and IEEE Explore evidence is sufficient to show that Xu was available at the November 14–15, 2011 conference. The Motion to exclude Exhibit 1019 is denied as moot.” slip op. at 41
Patent outcomesUS 9,575,895 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,575,895 - NXP USA, Inc. v. Parkervision, Inc.InstitutedPTAB · Dec 19, 2024 · IPR2024-01068 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–5, 8, 9, 11–23, 26, 27, and 29–36 on all petitioned grounds and granted NXP's conditional motion to join the TI IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, we institute inter partes review of the Challenged Claims of the ’528 patent. We also grant Petitioner’s Conditional Motion for Joinder and join Petitioner to IPR2024-00936.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, the [Patent Trial and Appeal Board] will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Additionally, we do not see an issue with ambiguity in Petitioner’s stipulation. Specifically, following joinder, this IPR (i.e., IPR2024-01068), which is based on the Petition at issue here (i.e., the Petition filed by NXP), will still be pending even though Petitioner will be joined to IPR2024-00936. Thus, the “IPR from this [P]etition” will be “pending,” which satisfies the language of Petitioner’s stipulation and precludes the actions stated therein. Further, to the extent there was any potential ambiguity, that ambiguity is resolved by Petitioner’s representations in e-mail correspondence (Exhibit 3001), as noted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel litigation.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Compare Pet. with TI IPR, Paper 2 (petition); see also Motion 2 (stating that “NXP’s petition challenges the same claims on the same grounds, relies on the same prior art, and includes the exact same substantive arguments as the TI IPR”). Patent Owner raises the same arguments that it presented in the TI IPR. Regarding the first ground, Patent Owner asserts that (1) Petitioner has not shown that one of ordinary skill in the art would have been motivated to combine Tayloe, TI Datasheet, and Macnally (Prelim. Resp. 5– 9) and (2) Petitioner fails to provide a sufficient reasonable expectation of success in combining Macnally and Tayloe (id. at 9–12). Additionally, Patent Owner contends we should exercise our discretion to deny institution” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“35 U.S.C. § 315(c). We have explained that a motion for joinder should: (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact, if any, joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).” slip op. at 10
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,118,528 - PTAB · Nov 26, 2024 · IPR2024-00936 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1, 5, 8, 9, 11–19, 23, 26, 27, and 29–36 are obvious over Tayloe, TI Datasheet, and Macnally.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Western District of Texas Litigation.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Accordingly, on the present record at this stage of the proceeding and for the reasons discussed above, we find that Petitioner has shown a reasonable likelihood of establishing that one of ordinary skill in the art would have been motivated to combine the teachings of Tayloe, TI Datasheet, and Macnally with a reasonable expectation of success. Patent Owner is invited to elaborate further on its positions in future briefing with potential expert support.” slip op. at 35
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of EM circuit design.” Pet. 6 (citing Ex. 1003 ¶¶ 68–71). Petitioner further proposes that “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree.” Id. Patent Owner does not take a position, in the Preliminary Response, on the level of ordinary skill in the art. See generally Prelim. Resp. On the present record at this stage of the proceeding, 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 ’528 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 12
- Prior constructionPrior construction adoptedTerm construed petitioner constructionDecided for petitioner
“their plain and ordinary meaning, with one exception. Pet. 3. Specifically, Petitioner asserts “storage element” or “energy storage element” are recited “interchangeably” in the claims and should each be construed to mean “an element of a system that stores non-negligible amounts of energy from an input EM signal,” which Petitioner notes was “determined by the Board and affirmed by the [U.S. Court of Appeals for the] Federal Circuit.” Id. (citing ParkerVision, Inc. v. Vidal, 88 F.4th 969, 976 (Fed. Cir. 2023) (holding “ParkerVision acted as its own lexicographer to define the term ‘storage element’” and “the Board’s construction of ‘storage element’ [(quoted above)] correctly tracks the lexicography provided by [ParkerVision]”) (citing U.S. Patent No. 6,061,551 (“the ’551 patent”), 66:55–67)). Petitioner contends that, like U.S. Patent No. 7,110,444 that was at issue in ParkerVision v. Vidal, the ’528 patent also incorporates the ’551 patent by reference. Pet. 4 (citing Ex. 1001, 1:30–34). And Petitioner notes that the ’528 patent “includes an identical disclosure to that deemed dispositive from the incorporated by reference ’551 patent.” Id. (citing Ex. 1001, 73:9–22 (which Petitioner contends defines “storage module”)). Further, Petitioner asserts “[n]o intrinsic evidence demands a different construction” because, even though claim 1 recites “system,” “energy,” and “transfer,” it does so “in isolation” and “does not recite ‘energy transfer system,’ let alone restrict the claimed ‘storage element’ to any energy transfer system.” Id. at 5 (also contending the file history of the ’528 patent does not support a different construction). Petitioner also contends “the proposed combinations teach the claimed ‘storage element’ or ‘energy storage element,’ even including the alleged condition of ‘low impedance load’ that purportedly ‘goes to the heart of what makes an element, a “storage” element.’” Id. Patent Owner does not take a position on claim construction in the Preliminary Response. See generally Prelim. Resp. On the present record at this stage of the proceeding, we agree with Petitioner, for the reasons discussed above, that “storage element” and “energy storage element” are used interchangeably in the claims and should be construed consistently with our prior construction of “storage element,” which, as noted above, was affirmed by the Federal Circuit, to mean “an element of a system that stores non-negligible amounts of energy from an input EM signal.” We need not construe any other claim terms expressly because there is no present controversy as to the meaning of any other claim terms in this proceeding. Realtime Data, 912 F.3d at 1375.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,118,528 - PTAB · Nov 26, 2024 · IPR2024-00935 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claim 14 over all three obviousness grounds, finding a reasonable likelihood of success on the Tayloe and TI Datasheet ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Western District of Texas Litigation.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“h. Summary as to Claim 14 For the reasons discussed above, on the present record we find that Petitioner has established that the combination of Tayloe and TI Datasheet teaches each of the elements of claim 14 and that one of ordinary skill in the art would have been motivated to combine the teachings of these two references as proposed by Petitioner with a reasonable expectation of success in so doing. 3. Objective Indicia of Nonobviousness In the record presently before us, neither Petitioner nor Patent Owner has presented any evidence of objective indicia of nonobviousness. 4. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Tayloe and TI Datasheet would have rendered the subject matter of claim 14 of the ’177 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage of the proceeding and on the present record, we need not construe the term expressly because, for the reasons discussed below, we find that Petitioner has established a reasonable likelihood of showing that claim 14 would have been obvious to one of ordinary skill in the art under each construction, and because there is no present controversy as to the meaning of the term in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“A datasheet is a well-known resource for learning detailed information of the multiplexer/demultiplexer, and a [person of ordinary skill in the art] would have been motivated to consult the TI Datasheet for a more complete understanding of Tayloe’s express teachings of the SN74CBT3253 demultiplexer, the only matching multiplexer available at the time. [Ex. 1023; Ex. 1003] ¶¶ 100–109; see also Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1374–75 (Fed. Cir. 2013) (obvious to combine two prior art references where one reference “refers expressly” to the other). When viewing the detailed diagram of the SN74CBT3253 demultiplexer, a [person of ordinary skill in the art] would have been motivated to apply four of the switches because the architecture of one switch on the demultiplexer is analogous to one of the four switching paths of Tayloe’s commutating switch 38. [Ex. 1003 ¶¶] 100–109. Thus, a [person of ordinary skill in the art] would have thought to implement the multiplexer switches from TI Datasheet in an analogous manner “by simple substitution of one known element for another.” Pet. 23–24 (citing Ex. 1003 ¶¶ 100–109; KSR, 550 U.S. at 401).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,865,177 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · Nov 26, 2024 · IPR2024-00796 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that claims 1 and 11 would be obvious over Nevo and Avitabile.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition 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). Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Stipulate[s] and agree[s] that, if the PTAB institutes an inter partes review proceeding (“IPR”) for U.S. Patent No. 7,483,686 on the grounds presented in [the Petition], [Petitioner] will not pursue an invalidity defense in [the Western District of Texas Litigation] that the patent claims subject to the instituted IPR are invalid based on the same grounds as in the [P]etition or any grounds that could have reasonably been raised in the [P]etition. Ex. 1015 (letter from M. Bernstein to J. Charkow, dated May 21, 2024); see also Prelim. Reply 1 (“Patent Owner’s Preliminary Response (Paper 6) fails to acknowledge, much less address, Petitioner’s Sotera stipulation not to pursue in the related litigation the same grounds or any grounds of invalidity that could reasonably have been raised in this IPR.”); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020) (Decision Granting Institution) (precedential as to § II.A).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of [radio frequency (‘RF’)] circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems,” and “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree.” Pet. 14–15 (citing Ex. 1002 ¶ 38). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. See generally Prelim. Resp. We determine, on the current record, that Petitioner’s proposed level of ordinary skill is consistent with the ’686 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d at 1579. We adopt that level of ordinary skill in the level of ordinary skill in the art based on the full trial record. slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that all claim terms should be given their plain and ordinary meaning. Pet. 15 (citing Ex. 1002 ¶ 74). Petitioner, however, notes that several claim terms in the ’686 patent, or closely related claim terms for patents related to the ’686 patent, have been construed during prior litigation involving Patent Owner. Id. Petitioner discusses five claim terms and various constructions proposed or adopted in prior litigation. Id. at 15–20.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,483,686
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.