• Early Warning Services, LLC v. Intellectual Ventures II LLCNo claims unpatentable
  PTAB · Feb 11, 2026 · IPR2024-01221 · APJ Iftikhar Ahmed · IPR · Final written decision

  Petitioner failed to prove claims 1, 2, 4, 5, 7, 8, 12, 13, 17, 19–21, 23, 24, 26, 27, 29, 30, 34, 39–41, and 43 unpatentable because the cited grounds did not establish the required …

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “image capture device” refers to an imaging-based barcode reader and not a laser-based barcode scanner because we are persuaded that claim language and Specification support that interpretation and also because Patent Owner persuasively shows that a person of ordinary skill in the art would have understood the term as such. Claim 1 recites an “image capture device configured to capture an image.” Ex. 1001, 16:24–25. The plain meaning of the claim term requires that the image be captured, not just scanned. The claim further requires “generating an output based on the information embedded in the image,” requiring that information is retrieved from the captured image. Id. at 16:32–33. A device that does not capture an image is not an “image capture device” under the plain language of the claim. A laser-based barcode scanner employs light reflected from a laser beam to “generate an electrical signal that corresponds to the bars and spaces in the barcode being scanned.” See Ex. 2029 ¶¶ 42–43 (explaining in detail how laser-based barcode self-emitting a laser light across a code to be scanned, with a sensor tuned to capture the reflected light from the laser.”). It simply does not capture an image. slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the complete record, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. The field of the ’167 patent “relates generally to secure transactions, and more specifically, to methods and devices for providing secure identification, verification, and authorization using a portable secure device.” Ex. 1001, 1:8–11. The ’167 patent seeks “to provide methods and devices that are capable of providing secure transactions in a more efficient manner.” Id. at 3:11–13. Accordingly, we adopt Petitioner’s definition. We note, however, that our patentability analysis would be the same under Patent Owner’s definition.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Wang fails to disclose limitation 1[a]. Wang discloses a portable electronic authorization device (PEAD) that can be used as a self-checkout terminal. Ex. 1004 ¶ 115. In this context, Wang discloses By entering the UPC code or barcode using keypad on the PEAD or scanning in the UPC code or barcode using the input device built into the PEAD such as a barcode scanner or OCR reader, the PEAD can generate the receipt with the list of item prices through the wireless network and Internet by querying the item price using the barcode as the index for price lookup table which is Stored in a Server System. Id. (emphasis added). As discussed above (Section III.C.1), we are persuaded by Patent Owner’s arguments that the claimed “image capture device” refers to an imaging-based device and not a laser-based barcode scanner. Petitioner does not contend that Wang’s disclosure of the barcode scanner necessarily refers to an imaging-based device, but argues that Wang’s disclosure is sufficient because “both imaging-based barcode scanners and laser-based barcode scanners constitute image capture devices.” Reply 11. In light of our claim construction above, we disagree.” slip op. at 27

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Petitioner contends that claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 are unpatentable as obvious over the combination of Wang and Drummond. Pet. 30–43. 1. Drummond Drummond is a patent titled “Automated Banking Machine System and Method,” and “relates to an automated banking machine apparatus and system that are capable of use in a wide area network, and which provides a user with a remote electronic receipt or other record related to a transaction performed at the machine.” Ex. 1008, code (54), ¶ 2. Drummond discloses that its automated banking machine, may “initiate the sending of a non-paper transaction receipt to the customer,” “[t]he receipt may be sent using a wide area network, such as the Internet,” and “[t]he receipt may be an electronic receipt, for example a receipt in the form of an e-mail message.” Id. ¶ 247. 2. Claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 For this obviousness ground, Petitioner relies on the same arguments and evidence as its Ground 1a (anticipation by Wang), discussed above, for the majority of claim limitations. See Pet. 33–43. Importantly, Petitioner relies solely on Wang as teaching independent claim limitations [1a], [23a], and [43b] relating to an image capture device and embedded information. Pet. 36, 41, 43. Accordingly, for the reasons discussed above with respect to Ground 1a, Petitioner has not established by a preponderance of the evidence, that the subject matter of claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 would have been obvious to one of ordinary skill in the art over the combination of Wang and Drummond.” slip op. at 31

  Patent outcomesUS 7,314,167 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,314,167
• Luxottica Of America Inc. v. E-Vision Optics, LLCSome claims unpatentable
  PTAB · Dec 23, 2025 · IPR2024-01030 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–20, 22–31, and 33–37 are unpatentable; claims 21 and 32 were not shown unpatentable, principally because the proposed combinations failed to establish motivation to combine or the required airtight seal.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We find that the proposals from the parties substantially overlap, such that it remains unclear whether any substantive difference exists. Notably, neither party argues that the minor differences in the proposals lead to a different outcome on any issues in this proceeding. Based on our review of the proposals, we apply Patent Owner’s proposal because it is consistent with the problems and solutions disclosed in the ’483 patent and prior art of record. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record). The outcome of the issues addressed in this Decision would not change if we applied Petitioner’s proposal.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “hermetically sealed” module does not encompass waterproof modules that are not airtight. First, as Petitioner admits, as a general matter, “[s]omething that is hermetically sealed is sealed so as to be airtight.” Pet. 28 (citing Ex. 1002 ¶ 103; Ex. 1010, 269); PO Sur-reply 16. Petitioner later tries to argue that the specification puts a different spin on this meaning, but still acknowledges that “[o]utside the context of the ’483 patent, a hermetic seal is sometimes equated with an airtight seal.” See Pet. Post-hearing 2–3 (citing Ex. 1002 ¶ 103; Ex. 1010, 269). Based on our review of the record, the “ordinary meaning” of “hermetically sealed” means “airtight,” and, as noted above, “airtight” is not the same thing as “waterproof.” Second, the claims support Patent Owner’s position by including dependent claims that separately claim a “hermetically sealed” module (claims 13 and 32) and a “waterproof” module (claims 15 and 34), strongly suggesting that the terms have a different scope to avoid rendering some claims redundant. See Ex. 1001, 11: 65–66, 12:3–4, 12:52–53, 12:55–56. Petitioner argues in its Post-hearing brief that claims requiring waterproof modules are “a narrower species” of hermetic seal, but fails to explain how hermetic, airtight, and waterproof seals would not fall within the scope of both claims using its approach. Pet. Post-hearing Reply 2. Petitioner’s earlier argument in its Reply also seems to cut against this position by asserting that the specification “treats hermitically sealing as conventional and equivalent to waterproofing,” with different dependent claims directed to two allegedly “equivalent” terms making little sense. Pet. Reply 14 (emphasis added). The most natural reading of the claim language suggests that “hermetically sealed” means airtight, and does not encompass modules that are waterproof but not airtight. Third, while the specification does not define “hermetically sealed” and uses “waterproof” and “hermetically sealed” in similar contexts, it does not suggest that “hermetically sealed” does not require an airtight seal consistent with its ordinary meaning. See Pet. Reply 14–15 (citing Ex. 1001, 6:47–53, 9:15–18, 10:47–50). Instead, the specification states that hermetic seals prevent water from contacting electronics, which remains consistent with Patent Owner’s position because airtight hermetic seals are also waterproof. See Ex. 1001, 6:47–53, 9:15–18. The specification also states that “[t]he module preferably houses any of the aforementioned electrical components in a substantially water-proof and wear resistant/moisture resistant environment and is preferably hermetically sealed.” Id. at 10:47–50 (emphasis added). This passage supports Patent Owner’s position by suggesting that the preferable “hermetically sealed” module goes beyond mere water resistance. See PO Sur-reply 16–17. slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “2. Petitioner’s Anticipation Arguments and Evidence Petitioner argues that Howell-596 discloses every limitation of claims 1, 9, 10, 14, 15, and 18, and points to specific portions of Howell-596 and expert testimony to support its arguments. See Pet. 10–20 (citing Ex. 1002; Ex. 1003). We have reviewed the evidence and arguments of record and find that Petitioner has shown, by a preponderance of the evidence, that the limitations in claims 1, 9, 10, 14, 15, and 18 are disclosed by Howell-596 for the reasons set forth in the Petition, which we adopt as our own. See id.11 Accordingly, we find that Petitioner has established, by a preponderance of the evidence, that Howell-596 anticipates claims 1, 9, 10, 14, 15, and 18.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Based on these undisputed points and the parties’ arguments, we agree with Patent Owner that Petitioner fails to establish that a POSITA would have been motivated to locate Howell-596’s module housing 1700, which contains its UV detection system 1500, behind a user’s ear. Petitioner never squarely addresses the fact that placing Howell-596’s UV detection system behind a user’s ear would negatively impact its performance. Pet. 31–33; Pet. Reply 17–22. As a result, even if we accept Petitioner’s arguments and evidence as to the various advantages when placing electronics behind a user’s ear, it fails to establish a motivation to combine that requires placing Howell-596’s module housing 1700, and therefore its UV detection system, behind a user’s ear. Petitioner never acknowledges the readily apparent disadvantages of placing a UV detection system behind the ear, where it may not work at all. See Pet. 31–33. Nor does Petitioner argue that, in its combination, adjustments would be made to ensure accurate operation of Howell-596’s UV detection system. See id. Similarly, Petitioner notes that both Howell-596 and Howell-833 disclose UV sensors behind the ear of a user, but those teachings do not establish that placing Howell-596’s module behind the ear would ensure proper operation of its UV detection system housed within that module. See Pet. Reply 17–22. Instead, even though Howell-596 discloses a sensor behind the ear of a user, it maintains the UV detection system in a module toward the front of the temple, away from the ear. See id. at 18–19; PO Surreply 21–22; Ex. 1003 ¶ 205 (describing UV detection system 2102), Fig. 21 (showing UV detection system 2102 toward the front of the temple). Moreover, Petitioner’s reliance on the sensor placed behind the ear of the user in Howell-596 lacks weight because that sensor merely indicates that the device “is being worn by a user,” which serves a very different purpose than Howell-596’s UV detection system, which seeks to monitor a user’s exposure to UV radiation, a central purpose of Howell-596’s eyewear. See Ex. 1003 ¶ 205, code (57). Howell-833 also employs a UV sensor behind the ear, but Petitioner does not establish that it operates any differently than the “being worn” sensor in Howell-596, and therefore does not establish that Howell-596’s UV detection system would still work for its intended purposes in Petitioner’s proposed combination. See Pet. Reply 19–20.” slip op. at 29

  Patent outcomesUS 8,708,483 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,708,483
• Apple Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Nov 14, 2025 · IPR2025-00907 · APJ Justin T Arbes · IPR · Institution

  The Board instituted IPR on claims 1–20 and all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over the three 3GPP references.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “inter partes review unless the information in the petition and 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.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute an inter partes review as to claims 1–20 of the ’944 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’944 patent (November 2019),2 a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology,” where “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Pet. 10 (citing Ex. 1003 ¶¶ 39–44). Patent Owner “utilizes Petitioner’s proposed level of skill in the art” for its Preliminary Response. Prelim. Resp. 8. Based on the record presented, including our review of the ’944 patent and the types of problems and solutions described in the ’944 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.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “no claim terms need be construed.” Pet. 8. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding, but encourage the parties to address various claim interpretation issues identified below during trial. See infra Section II.D.5; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted

    “Patent Owner responds that Petitioner fails to show that the 3GPP-38.213-CR “document sent to [the] 3GPP email list on November 3 was available to non-3GPP members by November 5, 2019” (the alleged critical date for the ’944 patent). Prelim. Resp. 3 (emphasis omitted); see Pet. 10. According to Patent Owner, the listserv archive of emails cited by Mr. Rodermund “only shows that the November 3, 2019 email is available now—not that it was uploaded within a day of when the original email was sent”—and Mr. Rodermund provides only his uncorroborated opinion that uploads were “automatic” and “immediate.” Prelim. Resp. 5–6 (citing Ex. 1008 ¶¶ 43–63, 72–80). Patent Owner also contends that the November 2, 2019, metadata only relates to creation of 3GPP-38.213-CR and does not support Petitioner’s contention that the email was immediately uploaded. Id. at 6. Finally, Patent Owner argues that whether the subject matter of 3GPP-38.213-CR was discussed at the 3GPP meeting in October 2019 is “irrelevant,” given the date of the metadata, and has no bearing on whether the document itself was later publicly accessible. Id. at 6–7. Assessing the evidence of record collectively, however, we are persuaded that Petitioner has shown a reasonable likelihood that 3GPP-38.213-CR was publicly accessible from the ETSI email archive before November 5, 2019. Given his many years of experience with ETSI, in particular his responsibilities pertaining to management of documents like change requests, and as the “list owner” “responsible for managing and administrating” several email exploder lists, Mr. Rodermund appears to be well-qualified to testify to the matters in his declaration. See Ex. 1008 ¶¶ 7, 10–15, 47. He explains in detail how, based on his experience, emails sent” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,139,944
• Qualcomm Incorporated v. Network System Technologies, LLCAll claims unpatentable
  PTAB · Jun 13, 2025 · IPR2024-00343 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–7 are unpatentable as obvious over Rădulescu2004 and OCP; the Board did not reach the Weber-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “35 U.S.C. § 112 ¶ 6 (2006). “[T]he use of the word ‘means’ in a claim element creates a rebuttable presumption that § 112, para. 6 applies.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part); Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998). “[This] presumption may be rebutted if the properly construed claim limitation itself recites sufficiently definite structure to perform the claimed function.” Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1361 (Fed. Cir. 2000).” slip op. at 16

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner

    “Ex. 1001, 4:46–50. This passage indicates that the interconnect can be a network on a chip and the network on a chip can include wires and buses. That does not necessarily mean that the interconnect can be just wires or buses; rather, it discloses that the interconnect can include wires and buses. In context, the disclosure regarding wires and buses does not support construing the corresponding structure broadly enough to encompass just wires and buses. The networks that constitute the corresponding structure, however, could include networks with wires and buses. Therefore, we agree with Patent Owner that the corresponding structure for the interconnect means should not include a mere bus, switch, and point-to-point wire and instead find that the corresponding structure under 35 U.S.C. § 112 ¶ 6 is a network, which the ’052 patent describes as a multi-hop interconnection between modules separated by one or more network nodes. See Ex. 1001, 2:33–37. Because this structure corresponds to the construction of “interconnect means” proposed by Patent Owner and adopted by the district courts in the TI and Qualcomm litigations (see supra Section III.C.3.b), and we do not rely in our analysis below on a recourse to “equivalents thereto” as permitted by § 112 ¶ 6, we note that our ultimate conclusions on the unpatentability of the challenged claims would be the same if § 112 ¶ 6 did not apply. iii. Conclusion For the reasons stated above, we construe “interconnect means” to cover the structure described in the Specification corresponding to the specified functions of “coupling said plurality of processing modules (M, S)” in the context of claim 6 and “coupling said plurality of processing modules (M, S)” and “enabling a connection-based communication having a set of connection properties” in the context of claims 1 and 7—i.e., a “multi-hop interconnection between modules separated by one or more network nodes”—and equivalents thereof.” slip op. at 28

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms 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, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 15

  Patent outcomesUS 7,594,052 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,594,052
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Instituted
  PTAB · Apr 30, 2025 · IPR2024-01494 · APJ Justin T Arbes · IPR · Institution

  The Board instituted review of claims 5, 6, and 9–20 on all asserted grounds after finding a reasonable likelihood that claim 5 would have been obvious over Bowen and Soukup.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and 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.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute an inter partes review as to claims 5, 6, and 9–20 of the ’909 patent on all grounds of unpatentability asserted with respect to those claims in the Petition.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We disagree with Patent Owner’s arguments based on the current record. Dr. Bokor testifies that “as is evident from the TMR equation, . . . lowering the resistance (barrier height) for parallel spin electrons [(i.e., Rp)] compared to antiparallel [(i.e., Rap)] improved TMRs.” Ex. 1024 ¶ 169 (citing Ex. 1035, 3273) (emphasis added). Dr. Bokor’s testimony is consistent with the TMR equation above, which has Rp as the only term in the denominator, and reflects that Rp would be lowered disproportionally, or otherwise the TMR would not have “improved.” Id. It also appears to be supported by other evidence of record. See Ex. 1035, 3273 (noting the” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “Finally, we note that, although Petitioner has made a sufficient showing with respect to obviousness, we are not persuaded by Petitioner’s inherency argument. See Pet. 36. Specifically, Petitioner has not established that a barrier height of 0.1–0.85 eV is necessarily present in, or the natural result of, a tunnel barrier layer having some amount of oxygen vacancy defects. See Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 1329 (Fed. Cir. 2020) (“When the prior art does not expressly disclose a claim limitation, ‘inherency may supply a missing claim limitation in an obviousness analysis.’ . . . Inherency is established in the context of obviousness when ‘the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.’”). Petitioner points to the ’909 patent’s statement that “[w]hen there are oxygen vacancy defects, the potential barrier height of the MgO tunnel barrier is thought to decrease (such as in the range of 0.10 to 0.85 eV; more specifically, 0.2 to 0.5 eV), which is thought to result in an increase in the tunneling current.” Ex. 1017, col. 7, ll. 19–23; see Pet. 36. Bowen, however, has “oxygen vacancy defects” in its MgO layer and “[o]xygen vacancies are naturally present in every oxide” according to Petitioner, but Bowen discloses a barrier height of 0.9 eV, which is outside the claimed range (albeit only slightly). Pet. 13, 23–24. Thus, Bowen contradicts Petitioner’s assertion that a barrier height within the claimed range of 0.1–0.85 eV is inherent when there are oxygen vacancy defects.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’909 patent (2004), a person of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 18–19 (citing Ex. 1024 ¶ 25). Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 17. Based on the record presented, including our review of the ’909 patent and the types of problems and solutions described in the ’909 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.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,968,909
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution denied
  PTAB · Mar 14, 2025 · IPR2024-01449 · APJ Justin T Arbes · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 2 were unpatentable under any of the four asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “inter partes review unless the information in the petition and 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.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 29 (citing Ex. 1024 ¶ 25). Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 17. Based on the record presented, including our review of the ’463 patent and the types of problems and solutions described in the ’463 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.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 25–26. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Further, because Bowen’s disclosed barrier height is outside the claimed range, Petitioner relies on Soukup’s purported teaching of a barrier height of “about 0.33 eV” and contends that a person of ordinary skill in the art would have been motivated to “achieve” that barrier height for the MgO barrier of Bowen’s device. Id. at 34–36. The data that Petitioner relies on from Soukup for the “about 0.33 eV” barrier height, though, was determined using the slope of an Arrhenius plot, not Simmons’ formula. Ex. 1028, 3229 (Abstract), 3231–33, Table I. In Soukup, apparent barrier heights for the samples were determined using (1) the slope of an Arrhenius plot, and (2) the zero-field intercept of the straight line logI versus V1/2 plot. Id. at 3229 (Abstract), 3230–32, Fig. 3, Table I. Reproduced below is Table I of Soukup, as annotated by Patent Owner (Prelim. Resp. 39): Annotated Table I of Soukup includes the results of analyses of sample test data, with the column highlighted in yellow showing the barrier heights obtained by a zero-field intercept method and the column highlighted in blue showing barrier heights obtained from the slope of an Arrhenius plot. See Ex. 1028, 3233; Prelim. Resp. 38–39. Dr. Bokor testifies that “Soukup disclosed that Simmons’ formula was used to approximate tunnel barrier height” and “[o]ne of skill would have understood the ‘height and the bias dependence of the insulator potential-energy barrier’ [referenced in Soukup] included the tunnel barrier height.” Ex. 1024 ¶¶ 145–147 (quoting Ex. 1028, 3229; citing Ex. 1024 ¶¶ 45–49). We do not find this testimony persuasive. Although Soukup refers to “Simmons’ model” and the Simmons 1963 paper in its “Introduction,” it does not teach any calculation using Simmons’ formula to obtain a barrier height within the claimed range. See Ex. 1028, 3229, 3236 n.1; Prelim. Resp. 63. Soukup plainly recognizes that there are methods of calculating barrier height other than Simmons’ formula, and discusses at length its calculations using two such methods: the Arrhenius plot method and the zero-field intercept method. See, e.g., Ex. 1028, 3229 (Abstract) (“These results . . . indicate a potential barrier height of about 0.72 eV when determined from the zero-field intercept of the straight line logI vs V1/2 plot and about 0.33 eV when obtained from an Arrhenius plot.”), 3232–33. Petitioner does not address whether the 0.33 eV barrier height it relies on from Soukup (determined using the Arrhenius plot method) would still be within the claimed range if calculated using Simmons’ formula. See Prelim. Resp. 63. Nor does Petitioner rely on any values from Soukup’s disclosure that would be used as the variables in Simmons’ formula—Petitioner relies solely on Bowen. See Pet. 39–42. Thus, Petitioner’s argument that Bowen and Soukup teach a barrier height within the claimed range, obtained using equation (1), is not persuasive. See id. at 34–42.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,123,463
• Early Warning Services, LLC v. Intellectual Ventures II LLCInstituted
  PTAB · Feb 14, 2025 · IPR2024-01221 · APJ Iftikhar Ahmed · IPR · Institution

  Instituted review of claims 1, 2, 4, 5, 7, 8, 12, 13, 17, 19–21, 23, 24, 26, 27, 29, 30, 34, 39–41, and 43 on all asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had “a relatively high level of skill, such as having at least a bachelor’s degree in the field of computer science and/or electrical engineering, together with 2–3 years in the financial technology sector.” Pet. 16. Petitioner adds that a person having ordinary skill in the art “would have knowledge of the commercial and scientific literature pertaining to securing transactions” and “would also have knowledge of processing devices.” Id. at 16–17 (citing Ex. 1002 ¶ 19). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. See Prelim. Resp. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “At this stage of the proceeding, we are not persuaded that the term “embedded” should be narrowly construed in the manner proposed by Patent Owner. We find nothing in the claims that requires us to import a “hidden” or a “provide security” limitation into the claims. Claim 1, for example, merely recites “the image having information embedded therein, including information related to a transaction,” and “generat[ing] an output based on the information embedded in the image.” Ex. 1001, 16:24–33 (emphasis added). The claim language therefore does not require limiting embedded information in the proposed way.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “As discussed above, disclaiming or disavowing claim scope requires a “clear and unmistakable disclaimer.” Thorner, 669 F.3d at 1367. We are not persuaded that the cited portion can be read to clearly and unmistakably disavow claim scope. The cited portion of the Specification discusses various input parameters for decoding a captured image. Ex. 1001, 6:8–10. When viewed in context, “other information” refers to other predetermined information, including “the corresponding private key,” “stored in the memory 150,” which “may be used to decrypt or decode the captured image.” Id. at 6:13–22; see also id. at 5:18–20 (private keys are stored in memory). We therefore read the Specification as merely listing possible input parameters for decoding an image and not disclaiming “the corresponding private key” from the scope of “predetermined information.” After all, the very next sentence states that “predetermined information may include, for example, address information, personal profile information, and payment account information.” Id. at 6:17–22 (emphasis added). Given the various broad categories included in “predetermined information,” we are not persuaded, for purposes of institution, that “predetermined information” excludes a private key. We further determine that this preliminary construction is sufficient to resolve the Petitioner’s anticipation and obviousness contentions presented under Petitioner’s Ground 1, and no further construction of the term is necessary.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,314,167
• Peloton Interactive, Inc. v. NEC CorporationAll claims unpatentable
  PTAB · Feb 5, 2025 · IPR2023-01241 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 10–13, 19, 21, 23, and 33 are unpatentable as obvious over Ueda, the SIP Standard, and the SDP Standard, with Cohee added for claims 11, 13, 19, and 23.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner argues that a person of ordinary skill in the art “would have had a bachelor’s degree, or equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience researching, designing, or developing content delivery systems and related hardware, software, and firmware, or equivalent experience.” Pet. 4 (citing Ex. 1008 ¶¶ 36–40). Patent Owner does not dispute this. See PO Resp. 3 (citing Ex. 2001 ¶ 22). Because it is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’427 patent, we adopt the above articulation of the level of ordinary skill for this decision.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We agree with Patent Owner that the term should be construed according to its ordinary and customary meaning, and that we need not construe the term explicitly because the meaning of the term is not relevant to the contested issues in the proceeding. 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 13

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “Having considered all the evidence of record relating to Mr. Taniguchi’s activities during the relevant time frame, we find that Patent Owner has not produced sufficient corroborating evidence to show that Mr. Taniguchi’s work on reducing to practice the claimed invention was reasonably continuous during the critical period between September 19, 2008 (the filing date of Ueda), and November 18, 2008 (the filing date of the Japanese patent application). Although there is corroborating evidence of diligence beginning on November 6, 2008, when Mr. Taniguchi transmitted a draft application to the Baba law firm, there is no evidence of any diligence prior to that date, other than Mr. Taniguchi’s own testimony. We do not agree with Patent Owner that the evidence of Mr. Taniguchi’s other activities for NEC, or research relating to IPTV, corroborate Mr. Taniguchi’s reduction to practice of the claimed invention. Although these activities may have something to do with the general subject matter of IPTV, Patent Owner has not shown any nexus between these activities and the challenged claims. See Naber, 567 F.2d at 385 (“It is well settled that, to satisfy the ‘reasonable diligence’ requirement . . . , the work relied on must ordinarily be directly related to reduction to practice of the invention . . . in issue.” (citing cases)). Although Mr. Taniguchi doubtlessly spent substantial time preparing the application he completed on November 6, 2008 (see Ex. 2017), there is no corroborating evidence that this work was reasonably continuous during the critical period. As far as the corroborating evidence attests, Mr. Taniguchi could have done no work on the draft until early November, or he could have worked on the draft briefly in August and put it aside until early November. Considering all the evidence as to Mr. Taniguchi’s activities, we find that Patent Owner has not met its burden of producing corroborating evidence that the named inventors of the ’427 patent exercised reasonably continuous diligence during the critical period when Ueda was filed until the constructive reduction to practice that occurred on November 18, 2008. Therefore, we determine, by a preponderance of the evidence, that Ueda is prior art to the challenged claims.” slip op. at 24

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “In general, we disagree with Patent Owner that, in showing a reason to incorporate the SIP Standard’s teachings about proxy servers, Petitioner must necessarily show that Ueda’s system was deficient or inferior. A patent challenger “does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016). Also, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416. For this reason and the specific reasons discussed below, we find Patent Owner’s arguments unpersuasive. The evidence of record suggests that it would have been within the ordinary skill in the art to modify Ueda’s system by replacing direct communication between content-providing device 150 and servers 191 or 192 with an indirect connection in the form of proxy servers using well-known, predictable techniques as described in the SIP Standard.” slip op. at 33

  Patent outcomesUS 9,769,427 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,769,427
• Peloton Interactive, Inc. v. NEC CorporationAll claims unpatentable
  PTAB · Feb 5, 2025 · IPR2023-01240 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–9, 14–18, 20, 22, 32, and 34–36 are unpatentable as obvious over Ueda, the SIP Standard, and the SDP Standard, with dependent claims 2, 3, 15, and 17 also relying on Cohee.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner

    “Taniguchi’s activities during the relevant time frame, we find that Patent Owner has not produced sufficient corroborating evidence to show that Mr. Taniguchi’s work on reducing to practice the claimed invention was reasonably continuous during the critical period between September 19, 2008 (the filing date of Ueda), and November 18, 2008 (the filing date of the Japanese patent application). Although there is corroborating evidence of diligence beginning on November 6, 2008, when Mr. Taniguchi transmitted a draft application to the Baba law firm, there is no evidence of any diligence prior to that date, other than Mr. Taniguchi’s own testimony. We do not agree with Patent Owner that the evidence of Mr. Taniguchi’s other activities for NEC, or research relating to IPTV, corroborate Mr. Taniguchi’s reduction to practice of the claimed invention. Although these activities may have something to do with the general subject matter of IPTV, Patent Owner has not shown any nexus between these activities and the challenged claims. See Naber v. Cricchi, 567 F.2d at 385 (“It is well settled that, to satisfy the ‘reasonable diligence’ requirement . . . , the work relied on must ordinarily be directly related to reduction to practice of the invention . . . in issue.” (citing cases)). Although Mr. Taniguchi doubtlessly spent substantial time preparing the application he completed on November 6, 2008 (see Ex. 2017), there is no corroborating evidence that this work was reasonably continuous during the critical period. As far as the corroborating evidence attests, Mr. Taniguchi could have done no work on the draft until early November, or he could have worked on the draft briefly in August and put it aside until early November. Considering all the evidence as to Mr. Taniguchi’s activities, we find that Patent Owner has not met its burden of producing corroborating evidence that the named inventors of the ’427 patent exercised reasonably continuous diligence during the critical period when Ueda was filed until the” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “In general, we disagree with Patent Owner that, in showing a reason to incorporate the SIP Standard’s teachings about proxy servers, Petitioner must necessarily show that Ueda’s system was deficient or inferior. A patent challenger “does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016). Also, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416. For this reason and the specific reasons discussed below, we find Patent Owner’s arguments unpersuasive. The evidence of record suggests that it would have been within the ordinary skill in the art to modify Ueda’s system by replacing direct communication between content-providing device 150 and servers 191 or 192 with an indirect connection in the form of proxy servers using well-known, predictable techniques as described in the SIP Standard.” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “(4) Whether Ueda Teaches Away from Providing Play-list Information While Establishing a Connection Finally, Patent Owner argues that Ueda teaches away from providing “play-list information” at the same time as establishing a connection, because Ueda teaches successfully completing user authentication before transmitting the playlist. PO Resp. 52–53 (citing Ex. 1003 ¶¶ 56, 365, Fig. 25; Ex. 2001 ¶ 99). According to Patent Owner, “Petitioner’s argument fails to reconcile[] this ordering of Ueda, which would prevent implementation of the proposed combination with the SDP Standard, in which the playlist is transmitted as part of the ‘Session Initiation.’” Id. at 53 (citing Ex. 2001 ¶ 100). In its Reply, Petitioner argues that limitation 1g “does not require transmitting ‘play-list information’ ‘at the same time’ as authentication, but at a same time ‘the one or more connection control servers executes a process for guaranteeing a communication bandwidth . . . as a process for establishing the connection.’” Pet. Reply 23. Petitioner also argues that the ’427 patent also describes an authentication step before transmitting the play-list information. Id. (citing Ex. 1001, 12:56–13:13, 13:50–58, Fig. 4). We find Petitioner’s arguments persuasive, and we disagree with Patent Owner that claim 1 restricts the timing of user authentication. As Petitioner notes, user authentication occurs in the ’427 patent before the process of establishing a connection as depicted in Figure 5. See Ex. 1001, 12:36–55, Fig. 4 (user authentication occurs when user equipment 2 is powered-up); id. at 13:50–58 (SIP message A501, at the beginning of Figure 5, includes “user authentication success information”). But we find nothing in the claim language, itself, that requires any particular timing for authentication. Nor do we understand Petitioner’s motivation-to-combine argument to hinge on the timing of authentication. Thus, Ueda does not “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).” slip op. at 58

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner

    “We find Petitioner’s arguments persuasive. Petitioner does not rely solely on the SDP Standard for teaching the sending of play-list information, but also relies on Ueda, which discloses sending a playlist including an identification of main content, commercial content, and an output sequence, as we discuss in more detail below in the context of limitation 1h. See infra Section III.D.3(g). Petitioner relies on the SIP and SDP Standards for teaching that Ueda’s playlist, as with other data describing a session, may be formatted and transmitted as payload within a standard SIP message, for example using SDP fields. Based on the evidence of record, we find it persuasive that a person of ordinary skill in the art would have recognized SDP as a known way to format play-list information, since SDP has specific fields to convey the features of a playlist such as metadata and links to the content. See Pet. 50–52. Petitioner’s arguments are not based on improper hindsight bias. Although Petitioner argues that the SDP Standard “can” or “could” be used to format Ueda’s playlist, the evidence suggests that doing so would merely be “[t]he combination of familiar elements according to known methods,” and that kind of combination “is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. The evidence shows that is the case here. As such, the Petition relies on the predictable combination of the prior art according to known methods and on various motivations to combine the references (see Supra Sections III.D.1–2), not on the ’427 patent itself, for teaching the combination.” slip op. at 57

  Patent outcomesUS 9,769,427 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,769,427
• Luxottica Of America Inc. v. E-Vision Optics, LLCInstituted
  PTAB · Jan 7, 2025 · IPR2024-01030 · APJ Richard H Marschall · IPR · Institution

  The Board instituted review of claims 1–37 on all asserted grounds after finding a reasonable likelihood that Howell-596 anticipates claims 1, 9, 10, 14, 15, and 18.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “2. Discussion “Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).” slip op. at 19

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Proceedings with Parallel District Court Litigation (June 21, 2022)9 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the 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.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id. Here, Petitioner provides a Sotera stipulation: “Petitioner hereby stipulates that, if the Board institutes review, Petitioner will not pursue in the Litigation invalidity of the ’483 patent based on any ground Petitioner raised or reasonably could have raised in this Petition.” Pet. 82. Petitioner argues that the Fintiv Memo “unambiguously states three times that the Board ‘will not’ discretionarily deny institution due to parallel litigation when the petitioner files a Sotera stipulation.” Prelim. Reply 1 (citing Fintiv Memo at 3, 7, 9). We agree with Petitioner. In light of the Director’s Fintiv guidance regarding a Sotera stipulation, we decline to exercise discretion under § 314(a) to deny institution of inter partes review. See Fintiv Memo 3 (“[T]he PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue” slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “We agree with Petitioner that the record fails to show that Hattori-912 is cumulative of Krulevitch. As Petitioner correctly points out, Patent Owner does not adequately support its cumulativeness argument by comparing the disclosures of Hattori-912 and Krulevitch. See Prelim. Resp. 27. Patent Owner seems to assume that Petitioner’s mere reliance on Hattori-912 to teach similar limitations as those arguably disclosed by Krulevitch establishes the cumulative nature of the disclosures, but merely relying on new prior art to teach the same limitations as art before the Examiner, standing alone, does not establish cumulativeness of the art as a whole. See id. The situation here underscores this point, where the new prior art (Hattori-912) expressly discloses aspects of eyewear that the prior art before the Examiner (Krulevitch) does not, rendering Hattori-912 arguably more readily combinable with other eyewear prior art such as Blum-741. See Pet. 53–65. Moreover, Petitioner expressly argues that Hattori-912 discloses eyewear limitations that Krulevitch does not. See id. at 55–59 (“Hattori-912 discloses an eyewear frame having a ‘hollow part 30’ in which electronic components are embedded”), 64–65 (“Hattori-912 discloses that the sealed module is embedded in the eyewear frame.”). Under these circumstances, we do not view the disclosures of Hattori- 912 and Krulevitch, or the obviousness arguments they raise, as sufficiently similar to satisfy the first prong of the Advanced Bionics framework. We also decline Patent Owner’s invitation to discretionarily deny on the basis that the grounds based on Blum-741 and Hattori-912 would present a waste of resources.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted

    “2. Discussion “Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citing Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (quoting Cont’l Can, 948 F.2d at 1269).” slip op. at 19

  Claim construction§ 102 anticipationDiscretionary denialcites Phillips
  Patents in suitUS 8,708,483

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.