- Nearmap US, Inc. v. Eagle View Technologies, Inc.All claims unpatentablePTAB · Jan 9, 2024 · IPR2022-01090 · APJ Garth D Baer · IPR · Final written decision
Claims 1–42 and 46–66 are unpatentable as obvious over Littleworth, Linder, Middlebrook, and Nishitani; claims 5, 23, and 38 on the Heller ground were not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“area emphasizing the design of electrical, computer, or software technologies, or a similar discipline, and at least two years of experience related to computerized image analysis and three-dimensional modeling.” Pet. 4. Further, “education could compensate for a deficiency in work experience, and vice-versa.” Id. Although Patent Owner presents its own formulation, see PO Resp. 23, Patent Owner notes that “there does not appear to be any meaningful distinction between” the parties’ formulations. PO Sur-reply 29– 30. We adopt Petitioner’s description as it is consistent with the prior art and ’436 patent’s specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Our decision would not change under either party’s definition of the level of ordinary skill.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“required in claims 1 and 18 “mean[s] that the two images are ‘captured independently of each other and without metadata (or other information) relating angles of cameras that captured the images.’” Pet. 5 (quoting Ex. 1004 ¶ 20). In addition to its expert, Petitioner cites as support the patent’s prosecution history, in which Patent Owner asserted this definition. Id. at 5–6 (citing Ex. 1003, 167–169; Ex.1004 ¶ 21). Patent Owner does not propose a construction for this limitation. We agree with Petitioner that images that are not a stereoscopic pair means that the two images are captured independently of each other and without metadata (or other information) relating angles of cameras that captured the images.” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“B. WHETHER LITTLEWORTH AND LINDER ARE PRIOR ART Patent Owner asserts Petitioner failed to demonstrate that Littleworth and Linder are prior art. PO Resp. 9–19; PO Sur-reply 9–11. We addressed this issue based on the same arguments in IPR2022-01009. See PO Resp. 9– 19; Pet. Reply 31–35; IPR2022-01009, Paper 28 at 21–27, 28–31. As we explained, the evidence of record supports that Littleworth and Linder were publicly available before the critical date. IPR2022-01009, Paper 28 at 25– 27, 31. Thus, for the same reasons explained in IPR2022-01009, we maintain Petitioner has shown sufficiently that Littleworth and Linder were publicly available before the critical date.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“been motivated to correlate the images described in Littleworth based on the selected control points in order to allow the images to be utilized in the threedimensional model generation process, as taught by Linder.” Pet. 29. Patent Owner argues that one of ordinary skill would not have been motivated to combine Littleworth and Linder as Petitioner proposes because Linder is limited to corresponding stereoscopic images and would not have been suitable for correlating Littleworth’s non-stereoscopic imagery. PO Resp. 40–46. We addressed this issue based on the same arguments in IPR2022-01009. See PO Resp. 40–46; Pet. Reply 10–22; IPR2022-01009, Paper 28 at 48–57. As we explained there, the evidence of record, including Dr. Forsyth’s testimony and relevant passages from Linder, supports that Linder’s correlation method applies more broadly than to just stereoscopic images, and none of the additional material Patent Owner cites undermines Petitioner’s proposed combination. See IPR2022-01009, Paper 28 at 52–54, 56–67. Thus, for the same reasons explained in IPR2022-01009, we maintain Petitioner has articulated sufficient rationale to support that its proposed combination of Littleworth and Linder would have been obvious.” slip op. at 19
Patent outcomesUS 8,078,436 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,078,436 - PTAB · Oct 23, 2023 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted review of claims 7–11, 13, and 19–21 on all asserted grounds, finding a reasonable likelihood of prevailing for claims 11 and 13.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, institute inter partes review as to all of the challenged claims of the ’202 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we therefore adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- BurdenMixed
“Figure 6 of Rauhala has been annotated by Patent Owner to show that the parallel connection (outlined in red) including resistors R1, R2. R3 and switches ka, kb is outside the signal path (highlighted in yellow) through differential amplifier 61. Prelim. Resp. 38. Petitioner identifies R1, R2, R3 and switches ka and kb as the claimed variable impedance. See, e.g., Pet. 39–41. The Petition (and the supporting Baker Declaration) do not explain adequately how, under this interpretation by Petitioner and its expert, Rauhala meets the adjusting an impedance “in the signal path” limitation. See Prelim. Resp. 39–41. For the reasons given, therefore, even if we were to disagree with Patent Owner’s construction of “impedance,” we agree with Patent Owner that Petitioner fails to demonstrate sufficiently that Rauhala meets the limitation in claims 7 and 19 requiring “dynamically adjusting one or more of an impedance . . . in the [receiver] signal path.” For the reasons given, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claims 11 and 13 as anticipated by Rauhala. We further determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to claims 7 and 19 as anticipated by Rauhala.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree. Noting in the language of the claims requires that these method steps be performed by separate components, or that these method steps “provide two different channel indications at once” (Prelim. Resp. 38), only that they be performed as stated in the claim. In that respect, this case is distinguished from In re Robertson, where the Federal Circuit determined that the “third fastening means” required by the claims was not inherently disclosed by the prior art. Robertson, 169 F.3d at 745 (“The [prior art] patent does not expressly include a third fastening means for disposal of the diaper, as claim 76 requires.”). In further contrast to this case, Robertson addressed mechanical elements of a product (fasteners for disposable diaper), not steps in a process. More pertinent to our facts is the Federal Circuit’s decision in Microsoft Corporation v. Uniloc, 2017 LLC, No. 2021- 2039, 2022 WL 11531235 (Fed. Cir. Oct. 20, 2022), that addresses steps in a method claim. Reversing the Board’s determination that a petitioner had 6 See Ex. 1001, 14:5–6 (claim 7), 14:41–42 (claim 11), 15:18–19 (claim 13), and 17:28–29 (claim 19). Circuit concluded that the Board had misconstrued the claims to require separate acts: We agree with [petitioner] that the Board misconstrued the claims to require that the comparing and determining step are performed by two separate acts in a certain order. Nothing in the intrinsic record requires such a narrow construction, and neither party presented this construction to the Board. Without any such evidence, we decline to impose such a narrow claim construction. Microsoft Corp., 2022 WL 11531235, at *3 (citation and footnote omitted). We find that at this stage, Petitioner has made a sufficient showing that this limitation is met by Rauhala. Pet. 31–33; Baker Decl. ¶¶ 111–114.” slip op. at 22
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,524,202 - PTAB · Oct 23, 2023 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Institution
The Board instituted review of claims 1, 3, 4, and 8 on all asserted grounds, finding a reasonable likelihood that Rauhala anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314, which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems and solutions in the ’825 patent and prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). On balance, Petitioner’s proposal of education plus a minimum of two years of experience is a better reflection of the level of skill in the prior art. For example, Rauhala presents functional block diagrams of signal strength information. See, e.g., Ex. 1004, Figs. 1–5, ¶¶ 15, 17, 19, 21. Similarly, Masaaki’s Figure 1 shows “a circuit block diagram of a reception unit 40 of a pager” according to an embodiment of the invention. Ex. 1005, 5:3–4. The block diagram shows various components, including an antenna, amplifiers, bandpass filters, a mixer, an oscillator, and a detection circuit. Id. at 5:5–8, Fig. 1. Accordingly, we adopt Petitioner’s definition of the level of ordinary skill for purposes of this Decision. Our decision, however, would not change if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“strength indicator circuits 440 and 450, the written description unambiguously discloses that each circuit determines the cumulative signal level of the desired signal and the interfering signals. Neither circuit determines only the signal strength of the interferer signals, nor does a circuit determine only the signal strength of the desired signal. In other words, the written description does not support a limited reading of the claim language so as to require two separate circuits—one circuit for determining a a signal strength of the desired signal. Thus, based on this preliminary record, we do not construe the circuit limitation as requiring the wireless transceiver necessarily to have two circuits, one circuit for determining a signal strength of the interferer signal and a different circuit for determining a signal strength of the desired signal, because, under that reading of the claim, the only embodiment in the written description would not fall within the scope of the claim. It is well-established that “[s]uch an interpretation is rarely, if ever, correct and would require highly persuasive evidentiary support,” which is not present in this record as discussed below. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“As explained above, however, on this preliminary record, we do not interpret the circuit limitation to impose a timing requirement such that the determining has to occur at precisely the same time. Nor at this preliminary juncture do we read a precise timing requirement into the circuit limitation based on written description disclosure that the desired signal and the interferer signal are part of the received signal input spectrum. As explained above, for example, the written description describes a circuit providing a cumulative signal level corresponding to the sum of the desired and interfering signals. Ex. 1001, 6:59–67. As such, the written description describes making the determinations on two signals that are part of the received signal input spectrum. Patent Owner argues that Rauhala does not disclose “two determinations of two different signal strengths together.” Prelim. Resp. 40. We do not agree with Patent Owner on this preliminary record. Rauhala’s disclosure of providing control bits based on the comparisons of the signal strengths to respective thresholds, discussed above, also undermines Patent Owner’s argument that detector DET, which (i) provides one or the other and (ii) needs to be re-tuned to read the other signal, cannot anticipate the claim. Notably, for example, Rauhala discloses setting control bits based on comparisons of the respective signal strengths to thresholds: cM. Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the same time smaller than Sn. Otherwise, signal cA is 1. Signal cA is taken to amplifiers Al and A2. Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Ex. 1004 ¶ 17 (emphases added). Here Rauhala describes providing control signals based on the strength of both signals from the receive and neighboring channels, which undermines Patent Owner’s arguments.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,129,825 - Netskope, Inc. v. Fortinet, Inc.Institution deniedPTAB · Sep 11, 2023 · IPR2023-00457 · APJ James P Calve · IPR · Institution
The Board denied institution because Netskope did not show a reasonable likelihood that claims 1–9 were unpatentable on any of its four §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore deny institution of an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties substantially agree on the level of ordinary skill in the art and differ mainly in the level of experience required for different levels of education. We consider Patent Owner’s proposed level of ordinary skill to be slightly more consistent with the ’968 patent and the asserted prior art, and we apply it in our obviousness analysis below. We note, however, that our decision would be the same under either party’s proposed definition of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. Claim Interpretation We interpret claims “using the same claim construction standard that would be used to construe the claims in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe a 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.” Id. We construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties agree that no claim constructions are needed. Pet. 21; Prelim. Resp. 15. Having considered the record, we determine that no express claim construction is necessary to reach our decision.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“3. Motivation to Combine Petitioner contends that a skilled artisan would have been motivated to combine Jordan and FortiGate because FortiGate analyzes content in real-time and downloads new or updated virus definitions to identify suspicious network traffic, and this capability would improve Jordan’s complementary system, which generates and updates rules for malware detection. Pet. 25.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 9,231,968 - Bright Data Ltd. v. Oxylabs, UabInstitutedPTAB · Jul 18, 2023 · IPR2023-00186 · APJ Iftikhar Ahmed · IPR · Institution
Instituted IPR of claims 1–20 on all asserted grounds; the Board found a reasonable likelihood of success on at least one claim and compelling merits for Scoda anticipation of claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Office (“USPTO”) issued a Memorandum7 titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Memo”), which states, among other things, that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memo 2. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. “This clarification strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Id. at 5. For the reasons that follow, although we find that Fintiv factors 1–5 weigh in favor of denying institution in this case, we determine that the Petition presents compelling merits as to the challenged claims, and thus, we decline to exercise our discretion to deny the Petition.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the parties’ briefing and the evidence of record, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’162 patent. Accordingly, we institute an inter partes review as to the challenged claims on the grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention of the ’091 patent would have had master’s degree or higher in the field of electrical engineering, computer engineering, or computer science, or would have had a bachelor’s degree in the same fields and two or more years of experience in internet communications. Pet. 15–16 (citing Ex. 1007 ¶¶ 30–31). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’091 patent and the prior art of record and is supported by the testimony of Dr. Williams.” slip op. at 17
- Expert testimonyPetitioner expert creditedDecided for petitioner
“recited in the Petition, does cite throughout to the asserted art and provides support for its assertions that the art discloses the claim language. We, therefore, determine Dr. Williams’s declaration is not without evidentiary support. See 37 C.F.R. § 42.63 (“Evidence consists of affidavits, declarations, transcripts of deposition, documents, and things.”). At this stage, we give weight to Dr. Williams’s testimony, which is the only testimony we have before us in this proceeding relating to the asserted art and how the art discloses the claim limitations. In contrast to the situation presented here, neither the petition nor the declarant in Xerox provided sufficient evidence to support the asserted positions; rather, the petition merely cited to the declaration which merely repeated the unsupported, conclusory assertions set forth in the petition. See Xerox Corp., IPR2022-00624, Paper 12 at 5 (stating the cited declaration testimony is conclusory and unsupported and adds little to the conclusory assertion for which it is offered to support); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”). That is not the case here. As noted above, however, the ultimate weight of Dr. Williams’ testimony will be determined in light of the full record adduced during trial.” slip op. at 28
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,516,091 - Patent Quality Assurance, LLC / Intel Corporation v. VLSI Technology LLCAll claims unpatentablePTAB · Jun 13, 2023 · IPR2022-00479 · APJ Jason W Melvin · IPR · Final written decision
Claims 1–16 are unpatentable: claims 1–7, 9–11, and 13–16 as obvious over Harris, Abadeer, and Zhang; claims 2, 11, and 12 with Cornwell; and claim 8 with Bilak.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“claim 14, which recites a “means for providing the operating voltage to the memory at a value at least as great as the minimum operating voltage in response to the operating value selected by the processor being below the 1 Our bracketed designations for limitations largely follow those used by the parties. See Pet. 25–46. 2 US 5,867,719, issued Feb. 2, 1999 (Ex. 1003). 3 US 2006/0259840 A1, published Nov. 16, 2006 (Ex. 1004). 4 US 2003/0122429 A1, published July 3, 2003 (Ex. 1005). 5 US 7,702,935 B2, issued Apr. 20, 2010 (Ex. 1006). 6 US 2005/0188230 A1, published Aug. 25, 2005 (Ex. 1007). minimum operating voltage.” Pet. 24, 64; Ex. 1001, 14:31–37. Petitioner points out that a district court construed the term as a means-plus-function term under 35 U.S.C. § 112, sixth paragraph, with the claimed function and a corresponding structure of the “power supply selector.” Id. at 64 (quoting Ex. 1028, 2). Patent Owner does not challenge or otherwise address that construction, and we apply it in this decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“This distinction is particularly significant because Harris describes that its low-power feature is realized by using “the test mode.” Ex. 1003, 4:64–65. The test mode uses a software-selected switch that allows the CPU to write to a register to control which power supply is provided to the memory. Id. at 3:9–18, 3:50–51. Thus, Harris describes that the low-power feature uses a software-defined switching threshold, and nothing about that threshold requires that it be the same as the threshold used for the failure mode. The failure mode, in contrast, is “a hardware controlled function” that monitors the voltage on the VDD terminal, and when that voltage “drops below a set level or threshold, the voltage on the Vstby terminal 132 is switched to power the memory 105 to sustain memory contents when either main or VDD power is failing.” Id. at 3:52–60. Accordingly, we do not agree with Patent Owner that “Harris’s system cannot use a threshold [for its low-power feature] lower than the power-failure detection threshold.” PO Resp. 11–12 (emphasis omitted). The two aspects use different mechanisms to control which power supply is provided to the memory. Relatedly, Patent Owner asserts that Petitioner fails to justify “why a POSITA would have been motivated to abandon the ‘failure mode’ in favor of pursuing the specific ‘low power feature.’” Id. at 14. Because Harris’s failure mode and low-power feature are distinct aspects of Harris’s operation, however, there would have been no need for skilled artisans to abandon one in favor of the other. In that regard, we credit Dr. Singh’s testimony that because Harris’s circuitry can be used for multiple functions, skilled artisans would have understood “how the operation of the circuitry would have been configured differently for those different functions or operations.” Ex. 1040 ¶ 9. Patent Owner argues additionally that, even if the low-power feature is distinct from the failure mode, Petitioner has not justified using the failure mode’s “set level or threshold” with a different threshold for the low-power feature. PO Resp. 13–14. But that argument ignores that the low-power feature uses software to control the switch, rather than the hardware-controlled failure mode, as described above. Because the low-power feature and failure mode are based on different controlling mechanisms, Harris already describes using different thresholds for switching the memory’s power supply in the two instances. And as Dr. Singh testifies, achieving the desired power savings or low-power operating parameters would have motivated skilled artisans to select a specific minimum operating voltage for the low-power feature. Ex. 1040 ¶ 9.” slip op. at 11
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“When the evidence shows that a product includes “the invention disclosed and claimed in the patent,” we presume that any commercial success of the product is due to the patented invention. PPC Broadband v. Corning Optical Commc’ns, 815 F. 3d 734, 746–747 (Fed. Cir. 2016). Such a presumed nexus requires not only that a commercial product embodies the claims, but also that it is coextensive with them. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (“[P]resuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.’” (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018))). Petitioner notes that the jury infringement verdict is on appeal. Pet. Reply 23. According to Petitioner, Patent Owner fails to show the verdict demonstrates commercial success with a nexus to the challenged claims. Id. at 24. Petitioner argues that the challenged claims were not the basis for customer demand of the accused products. Id. (citing Ex. 1044, 811:13– 812:24 (Intel employee Adam King testifying that Intel’s customers care about numerous technical attributes, including graphics performance for video editing, camera quality for video conferencing and power efficiency for laptops)). Petitioner notes that Patent Owner accused only the “C6 SRAM multiplexer” feature of infringing the ’373 patent (Ex. 1042, 453:20– 25; Ex. 1044, 815:16–816:21) and that Patent Owner’s damages expert, Dr. Sullivan, “conceded that many of the thousands of other features ‘have nothing to do with what [Patent Owner] accuses.’” Pet. Reply 24 (quoting Ex. 1043, 690:19–691:24). The record before us does not show that Intel’s product or products underlying the infringement verdict are coextensive with “the invention disclosed and claimed.” See Fox Factory, 944 F.3d at 1373, 1377; Facebook, Inc. v. Express Mobile Inc., IPR2021-01457, Paper 38 at 76–80 (PTAB Mar. 14, 2023) (concluding an infringement verdict was insufficient to establish nexus). Rather, the record shows that the accused products contained many features beyond those claimed in the ’373 patent. Ex. 1043, 690:19–691:24; Ex. 1044, 815:16–816:21. That evidence persuades us that, regardless of a presumed nexus, the commercial success does not have a nexus with the challenged claims.” slip op. at 22
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We agree with Petitioner. Both Harris and the ’373 patent are in the field of memory power supply. While Harris describes a voltage-supply system allowing for a particular testing approach, its field is not limited to its primary purpose of soft-defect testing on-chip memory. Rather, Harris also describes that its system allows other features such as failure protection and a low-power feature. Ex. 1003, 3:50–67, 5:59–5:4. Thus, we find that Harris’s field is memory power supply, and more specifically, switchable memory power supplies. As discussed, the ’373 patent describes its related art as making tradeoffs between performance and power when choosing voltage and frequency for processors and memory. Ex. 1001, 1:12–25. While the ’373 patent describes determining the minimum operating voltage for each part and storing that determined value (id. at 2:3–37, 6:22–8:15), its disclosures are considerably broader in scope. The patent describes selecting memory voltage based on multiple considerations, such as using the logic voltage when it is higher than the memory minimum operating voltage, or a variety of minimum voltages depending on operating circumstances. Id. at 3:30–5:41. As to the system controlling a memory’s power supply, the ’373 patent describes mechanisms that may be used to control a memory’s power supply, such as power supply selector 21. Id. at 2:52–59, 5:42–58. It details operation of the power supply controller 28 and selector 21. Id. at 8:33–9:4. The ’373 patent describes alternatively that memory may be permanently coupled to a particular voltage bus that is scaled to provide the desired power. Id. at 2:59–61, 5:61–67. The disclosures regarding mechanisms for controlling the memory power supply show that the ’373 patent’s field is broader than just determining the minimum operating voltage. We find that the ’373 patent’s field includes switchable memory power supplies, supporting that Harris is from the same field as the ’373 patent. As to whether Harris is reasonably pertinent to the problem addressed by the ’373 patent, Petitioner contends that the ’373 patent addresses “lowering power consumption in integrated circuits, considering that ‘different types of circuitry within a data processing system may have different ranges of allowable operating voltages’ and that ‘the processor may be able to operate at a lower voltage than is possible for the memory.’” Pet. Reply 19 (quoting Ex. 1001, 1:12–25, 2:5–7). Petitioner contends that Harris addresses the same problem with its circuit to “ensure the memory is provided with sufficient voltage to avoid data loss.” Pet. 14–15 (citing Ex. 1003, 3:54–56, 3:64–67 (Harris’s disclosure of switching memory power supply “to avoid memory data loss”)). Patent Owner’s expert agrees that the ’373 patent addresses “the problem of providing different voltages to different parts of the circuit” to accommodate different “allowable operating voltages.” PO Resp. 49 (quoting Ex. 2052 ¶ 159). As discussed above, Harris discloses a mechanism for providing different voltages to different parts of its circuit, whether for testing or low-power operation. Ex. 1003, 3:50–67, 5:59–5:4. We find that Harris is reasonably pertinent to the problem of providing different voltages to different parts of the circuit. While the ’373 patent addresses other problems also, that does not undermine the problem to which Harris is reasonably pertinent. See Ethicon LLC v. Intuitive Surgical, Inc., No. 2021-1601, 2022 WL 1576779, at *4 (Fed. Cir. May 19, 2022) (nonprecedential) (holding that the patent owner’s identification of an additional problem beyond that supporting analogous art was irrelevant); Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1361 (Fed. Cir. 2020) (noting the analysis considers “one or more problems to which the claimed invention relates”). Accordingly, Harris is analogous art to the ’373 patent because it is both from the same field of endeavor and reasonably pertinent to a problem confronting the inventor of the ’373 patent.” slip op. at 25
Patent outcomesUS 7,523,373 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,523,373 - Patent Quality Assurance, LLC / Intel Corporation v. VLSI Technology LLCAll claims unpatentablePTAB · Jun 13, 2023 · IPR2021-01229 · APJ Jason W Melvin · IPR · Final written decision
Claims 1–16 are unpatentable as obvious: claims 1–7, 9–11, and 13–16 over Harris, Abadeer, and Zhang; claims 2, 11, and 12 with Cornwell; and claim 8 with Bilak.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“II. ANALYSIS A. CLAIM CONSTRUCTION Petitioner contends that no claim requires construction other than claim 14, which recites a “means for providing the operating voltage to the memory at a value at least as great as the minimum operating voltage in response to the operating value selected by the processor being below the 1 Our bracketed designations for limitations largely follow those used by the parties. See Pet. 25–46. 2 US 5,867,719, issued Feb. 2, 1999 (Ex. 1003). 3 US 2006/0259840 A1, published Nov. 16, 2006 (Ex. 1004). 4 US 2003/0122429 A1, published July 3, 2003 (Ex. 1005). 5 US 7,702,935 B2, issued Apr. 20, 2010 (Ex. 1006). 6 US 2005/0188230 A1, published Aug. 25, 2005 (Ex. 1007). minimum operating voltage.” Pet. 24, 64; Ex. 1001, 14:31–37. Petitioner points out that a district court construed the term as a means-plus-function term under 35 U.S.C. § 112, sixth paragraph, with the claimed function and a corresponding structure of the “power supply selector.” Id. at 64 (quoting Ex. 1028, 2). Patent Owner does not challenge or otherwise address that construction, and we apply it in this decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do not agree. Primarily, Harris’s description of the low-power feature does not restrict the feature to a particular timing for switching the memory’s power supply. Instead, Harris uses “while” as a term of contrast— the memory receives the second power supply voltage, in contrast to the CPU, which receives the first power supply voltage. Ex. 1003, 4:66–5:2. Although Harris does not limit the low-power feature’s switching methodology, Petitioner explains that because Harris separately describes threshold-based voltage switching (in connection with the failure mode), implementing the claimed threshold-based switching in connection with the low-power mode would have involved using that known technique to achieve a predictable result (avoiding memory data loss). Pet. 32–33 (citing Ex. 1002 ¶ 76). We agree, and find that skilled artisans would have had reason to and would have known how to implement Harris’s low-power feature with the threshold-based switching described in Harris’s failure mode.” slip op. at 13
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“When the evidence shows that a product includes “the invention disclosed and claimed in the patent,” we presume that any commercial success of the product is due to the patented invention. PPC Broadband v. Corning Optical Commc’ns, 815 F. 3d 734, 746–747 (Fed. Cir. 2016). Such a presumed nexus requires not only that a commercial product embodies the claims, but also that it is coextensive with them. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (“[P]resuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.’” (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018))).” slip op. at 22
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“and therefore cannot be used in an obviousness combination. PO Resp. 39– 52. To be analogous art, Harris must be in the same field of endeavor as the ’373 patent or be reasonably pertinent to the problem addressed by the ’373 patent. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992).” slip op. at 24
Patent outcomesUS 7,523,373 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,523,373 - Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentablePTAB · Apr 10, 2023 · IPR2021-01599 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1, 2, 4, and 6–8 are unpatentable as obvious over Kalanick and Kemler, anticipated by Lalancette, or obvious over Lalancette and Kemler.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with one qualification. Inst. Dec. 19. We stated we would also expect a person of ordinary skill to have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Id. at 19–20. We reasoned that our review of the ’987 patent and the cited prior art did not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’987 patent on more general principles of cellular communications and signaling. Id. at 20. However, we observed that our decision would be the same under either formulation. Id. at 20.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We also find unavailing Patent Owner’s argument that Mr. Williams, Petitioner’s expert, “acknowledges that Lalancette does not disclose the use of a mobile communication device associated with the driver.” Id. (citing Ex. 2022, 128:14–129:25, 132:1–8). Patent Owner misrepresents Mr. Williams’s testimony. Mr. Williams was not asked whether Lalancette “discloses” a mobile communication device, but rather was asked “You’ll agree that La[l]ancette doesn’t identify the mobile computer as a mobile communication device associated with the driver?” Ex. 2022, 129:10–13. specifically referenced, that description is not in that passage.” Id. at 129:14–16. Notably, Mr. Williams also testified that (i) “[t]he nature of La[l]ancette requires some sort of computing device in the taxi that has the ability to receive and communicate in order to get information, for example, icon information from the central computer”; (ii) “mobile computer . . . has a variety of form factors inclusive of something like a [s]martphone”; and (iii) “[i]n the passage where [Lalancette] references mobile computer, it doesn’t have a specific form factor discussion such as referencing [s]martphones.” Id. at 125:17–22, 129:20–25, 132:5–8.” slip op. at 38
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“1. “indicator” In our Institution Decision, we construed the term “indicator” as a “code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver.” Inst. Dec. 22. We determined this construction was consistent with the description of an indicator in the specification of the ’987 patent. Id. at 21–22 (citing Ex. 1001, 4:9–13). Neither party challenges this construction, which we maintain for this Final Written Decision. See PO Resp. 6; Pet. Reply 2; PO Sur-reply 2.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Because the specification and prosecution history do not explicitly provide a definition for the term “generate,” we looked to extrinsic sources to determine its plain meaning. Inst. Dec. 24. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. general dictionary definitions as an aid to claim construction.”) (citation omitted). One dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: PRODUCE.” See https://www.merriam-webster.com/dictionary/generate. We therefore construed the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is “to originate or produce the signal.” Inst. Dec. 24–25.” slip op. at 13
Patent outcomesUS 10,169,987 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,169,987 - Microsoft Corporation / Samsung Electronics Co., Ltd. v. Intent Iq, LLCInstitution deniedPTAB · Apr 7, 2023 · IPR2022-01420 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 36, or 37 were unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“35 U.S.C. § 314 (2018) and 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine, based on the record before us, there is not a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. The Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the art (“POSITA”) as of the claimed priority date for the ’398 patent would have possessed at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent, and two or more years of experience with designing, programming, configuration, or analysis or research with Internet or similar network-related processes including, for example, user or entity profile management or web-based targeted content delivery, or a related field. A person also could have qualified with more formal education and less technical experience, or vice versa. Pet. 17–18 (citing Ex. 1002 ¶ 11). “Patent Owner does not challenge this definition.” Prelim. Resp. 4. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’398 Patent Specification and the asserted prior art.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We agree with Patent Owner’s arguments. Petitioner does not direct us to evidence sufficient to demonstrate that Madhavan discloses all of the elements of the claimed invention as arranged in the claim, specifically, that “automatically generating and storing electronic indicia of an association between the first device identifier and an electronic identifier of a second device” is “based on automatically recognizing that each of the first and second devices was connected, independently of the other, to a common local area network.” Petitioner’s assertion that a person of ordinary skill in the art “would have understood Madhavan to teach that the stored electronic indicia of an association between user devices (i.e., the IP address of the network interface module 146) is based on automatically recognizing that each device was independently connected to a common LAN” is supported only by Dr. Turnbull’s identical testimony. Pet. 32; Ex. 1002 ¶ 82. Dr. Turnbull’s testimony, however, is not supported by a sufficient underlying factual basis, and, therefore, is entitled to little weight. See 37 C.F.R. § 42.65(a); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 at 5 (PTAB Feb. 10, 2023) (Vidal, Director) (Precedential). The disclosures of Madhavan (Ex. 1007, 5:11–17, 7:22–26, Fig. 2) cited by Petitioner (Pet. 31–32) and Dr. Turnbull (see Ex. 1002 ¶¶ 81–82) are silent regarding any automatic recognition that each of network television 142 and DVR 144 was connected, independently of the other, to a common LAN, and therefore, fail to disclose any generation and storage of the IP address of the network interface module 146 being based on any automatic recognition that each of network television 142 and DVR 144 was connected, independently of the other, to a common LAN. See Ex. 1007, 7:22–26, Fig. 2 (cited by Pet. 31–32). Instead, Madhavan merely discloses that network 120 may be a LAN and “both the television set 142 and the [DVR] 144 may be coupled to the network 120 via a network interface module 146, which may also be identified through a respective IP address.” Ex. 1007, 7:22–26; see also id. at 5:11–16 (similar disclosure). Moreover, Petitioner’s parenthetical quotation of the ’398 Patent disclosure that “[t]he existence of the common IP address associates the online access IP address and the set-top box IP address” is insufficient to support Dr. Turnbull’s testimony because it is not prior art. Pet. 32 (quoting Ex. 1001, 13:47–495))” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner’s arguments. Petitioner does not direct us to evidence sufficient to demonstrate that Madhavan discloses all of the elements of the claimed invention as arranged in the claim, specifically, that “automatically generating and storing electronic indicia of an association between the first device identifier and an electronic identifier of a second device” is “based on automatically recognizing that each of the first and second devices was connected, independently of the other, to a common local area network.” Petitioner’s assertion that a person of ordinary skill in the art “would have understood Madhavan to teach that the stored electronic indicia of an association between user devices (i.e., the IP address of the network interface module 146) is based on automatically recognizing that each device was independently connected to a common LAN” is supported only by Dr. Turnbull’s identical testimony. Pet. 32; Ex. 1002 ¶ 82. Dr. Turnbull’s testimony, however, is not supported by a sufficient underlying factual basis, and, therefore, is entitled to little weight. See 37 C.F.R. § 42.65(a); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 at 5 (PTAB Feb. 10, 2023) (Vidal, Director) (Precedential). The disclosures of Madhavan (Ex. 1007, 5:11–17, 7:22–26, Fig. 2) cited by Petitioner (Pet. 31–32) and Dr. Turnbull (see Ex. 1002 ¶¶ 81–82) are silent regarding any automatic recognition that each of network television 142 and DVR 144 was connected, independently of the other, to a common LAN, and therefore, fail to disclose any generation and storage of the IP address of the network interface module 146 being based on any automatic recognition that each of network television 142 and DVR 144 was connected, independently of the other, to a common LAN. See Ex. 1007, 7:22–26, Fig. 2 (cited by Pet. 31–32). Instead, Madhavan merely discloses that network 120 may be a LAN and “both the television set 142 and the [DVR] 144 may be coupled to the network 120 via a network interface module 146, which may also be identified through a respective IP address.” Ex. 1007, 7:22–26; see also id. at 5:11–16 (similar disclosure). Moreover, Petitioner’s parenthetical quotation of the ’398 Patent disclosure that “[t]he existence of the common IP address associates the online access IP address and the set-top box IP address” is insufficient to support Dr. Turnbull’s testimony because it is not prior art. Pet. 32 (quoting Ex. 1001, 13:47–495))” slip op. at 15
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,677,398 - PTAB · Jan 12, 2023 · IPR2022-01090 · APJ Garth D Baer · IPR · Institution
The Board instituted inter partes review of claims 1–42 and 46–66 on all asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the present record, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that claims 1–42 and 46–66 would have been obvious over the asserted prior art. See id. at 33–96. Patent Owner raises several objections to Petitioner’s obviousness showing. We address those issues below.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“§ 325(d) because one of the asserted references, Nishitani, “was substantively considered by the Examiner during Supplemental Examination of the ʼ436 Patent.” PO Prelim. Resp. 7–8. In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). For the reasons given below, we are not persuaded to exercise our discretion to deny the Petition based on § 325(d).” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“The main concern motivating the General Plastic framework is “the potential for abuse of the review process by repeated attacks on patents” by a petitioner who files “[m]ultiple, staggered petitions challenging the same patent and same claims . . . . using our decisions as a roadmap, until a ground is found that results in the grant of review.” General Plastic, Paper 19 at 17. Here, the potential for abuse is minimal because this is the first time this petitioner has challenged the ’436 patent, and Patent Owner does not allege any connection or relationship between this Petitioner and the previous petitioners that might warrant exercising our discretion to deny institution. PO Prelim Resp. 14–15; Sur-reply 8–9; compare Valve Corp. v. Elec. Scripting Prods. Inc., IPR2019-00062, Paper 11 at 9–10 (Apr. 2, 2019) (precedential) (exercising discretion to deny institution based on a different petitioner’s earlier-filed petition where the different petitioners were co- defendants in a related district-court litigation, and where both petitioners were accused of infringing the challenged patent based on the same product incorporating technology licensed from petitioner Valve). In addition, it is reasonable that Petitioner filed its own Petition after the three previous petitions filed by unrelated parties given that “the present litigation dispute between Petitioner and Patent Owner did not begin until March 2021—well after the last of the three prior IPR petitions was filed.” Pet. Reply 10. Thus, this subsequent challenge against the ’436 patent appears to be a result of Patent Owner’s litigation activity, rather than Petitioner’s abuse of the review process. We find the circumstances in this case do not warrant denying the Petition under § 314(a).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionOther
“required in claims 1 and 18 “mean[s] that the two images are ‘captured independently of each other and without metadata (or other information) relating angles of cameras that captured the images.’” Pet. 5 (quoting Ex. 1004 ¶ 20). In addition to its expert, Petitioner cites as support the patent’s prosecution history, in which Patent Owner asserted this definition. Id. at 5–6 (citing Ex. 1003, 167–169; Ex.1004 ¶ 21). Patent Owner does not dispute Petitioner’s proposed construction in its Preliminary Response. Based on the present record, we agree with Petitioner that images that are not a stereoscopic pair means that the two images are captured independently of each other and without metadata (or other information) relating angles of cameras that captured the images.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,078,436
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.