- Keysight Technologies, Inc. / Palo Alto Networks, Inc. v. Centripetal Networks, LLCSome claims unpatentablePTAB · Aug 5, 2024 · IPR2023-01353 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–4, 6–11, and 13–20 are unpatentable as obvious over Sourcefire and Emerging Threats; claims 5 and 12 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, supported by Dr. Staniford’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and four years of industry experience,” and “would have had a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attacks.” Pet. 16 (citing Ex. 1003 ¶¶ 23, 25). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. See generally PO Resp. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“We largely agree with Patent Owner that there is no explicit claim- construction dispute. We address Patent Owner’s issues of what ordinarily skilled artisans would have considered in creating and implementing packetfiltering rules in the discussion below. The preservation of the flow of normal legitimate network traffic without disruption is one aspect that those with a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attacks would have considered. Nonetheless, overall, we determine that the plain and ordinary meaning of “configured to prevent an exfiltration operation,” does not require preventing all exfiltrations from occurring, nor allowing all non-exfiltration traffic, and that we need not consider the preservation of the flow of normal legitimate network traffic without disruption in the context of that claim construction. We determine that no claim terms need to be construed expressly for purposes of this Decision.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We agree with Petitioner. The identified aspects of Emerging Threats website would have allowed interested parties to locate the rule sets, download the rule sets and make determinations regarding what rule to use in a packet-handling system, such as Sourcefire. Emerging Threats need not be indexed or broadly searchable under Petitioner’s theory of the ground of unpatentability, namely that Emerging Threats was known, one of ordinary skill in the art would have gone to Emerging Threats, and downloaded the emerging-all.rules file, guided by the documentation wiki. As such, we do not agree with Patent Owner’s argument that “the record evidence of this” slip op. at 16
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“With respect to Petitioner’s assertions of collateral estoppel, notably in the Petition at pages 47, 49, 51, 52, and 54, with respect to limitations [1a] through [1d], we agree with Petitioner that Patent Owner is estopped from asserting that Sourcefire is not prior art to the challenged claims, and also estopped from asserting that those limitations are not taught or suggested by Sourcefire, to the extent that the limitations “do not materially alter the question” of patentability relative to the elements of the claims of the ’552 patent. See Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d 1311, 1319 (Fed. Cir. 2015). Independent Claim 1 a. Petitioner’s Assertions As discussed above, we concur with Petitioner that collateral estoppel exists with respect to limitations [1a] through [1d]. Thus, we begin with a discussion of Petitioner’s assertions regarding claim limitation [1e].” slip op. at 21
Patent outcomesUS 10,567,343 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,567,343 - Keysight Technologies, Inc. / Palo Alto Networks, Inc. v. Centripetal Networks, LLCSome claims unpatentablePTAB · Aug 5, 2024 · IPR2023-00446 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–4, 6–11, and 13–20 are unpatentable as obvious over Sourcefire and Emerging Threats; claims 5 and 12 were not shown unpatentable.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We agree with Petitioner. The identified aspects of Emerging Threats website would have allowed interested parties to locate the rule sets, download the rule sets and make determinations regarding what rule to use in a packet-handling system, such as Sourcefire. Emerging Threats need not be indexed or broadly searchable under Petitioner’s theory of the ground of unpatentability, namely that Emerging Threats was known, one of ordinary skill in the art would have gone to Emerging Threats, and downloaded the emerging-all.rules file, guided by the documentation wiki. As such, we do not agree with Patent Owner’s argument that “the record evidence of this” slip op. at 16
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“With respect to Petitioner’s assertions of collateral estoppel, notably in the Petition at pages 47, 49, 51, 52, and 54, with respect to limitations [1a] through [1d], we agree with Petitioner that Patent Owner is estopped from asserting that Sourcefire is not prior art to the challenged claims, and also estopped from asserting that those limitations are not taught or suggested by Sourcefire, to the extent that the limitations “do not materially alter the question” of patentability relative to the elements of the claims of the ’552 patent. See Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d 1311, 1319 (Fed. Cir. 2015). Independent Claim 1 a. Petitioner’s Assertions As discussed above, we concur with Petitioner that collateral estoppel exists with respect to limitations [1a] through [1d]. Thus, we begin with a discussion of Petitioner’s assertions regarding claim limitation [1e].” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“how and why persons of ordinary skill in the art would have modified the existing rules to prevent exfiltrations. PO Sur-reply 3. Patent Owner also argues that Petitioner’s assertions to make them “drop” rules, per Sourcefire, relies on what an administrator could have done, not what they would have been motivated to do. Id. at 4–5 (citing Pet. 57–58). We disagree with Patent Owner’s arguments. We continue to be persuaded that one of ordinary skill in the art, combining Sourcefire and Emerging Threats, would have understood that downloaded rules should be reviewed, and it would have been obvious to enable rules that such persons deemed appropriate. We find Dr. Staniford’s testimony to be persuasive on this point. See Ex. 2011, 67:10–68:24, 69:8–72; Ex. 1020, 109. We acknowledge that downloading all of a particualr ruleset from Emerging Threats and enabling all the rules, might have resulted in a drop in performance of the network appliance, but, at the same time, we are significant drop in performance, especially if a potential threat might be sufficient to warrant a minor performance hit. Patent Owner’s counsel acknowledged at oral hearing that instituting all rules of a set in “alert” mode would not result in a decrease in performance, even though some computational outlay must be engaged to engage those alert rules. See Hr’g Tr. 24:24–25:4. We are persuaded that judiciously implementing certain rules would not necessary result in a network device that is unusable. Additionally, there is testimony from Dr. Staniford that “you start out with your rules in alert because there might be false positives. I mean, for the best rule in the world, Snort wasn’t known for false positives in the rules, when you apply them to a large network.” Ex. 2011, 68:2–7. As such, we continue to determine that it would have been obvious, in combining Sourcefire with Emerging Threats, for one of ordinary skill in the art to have downloaded rules and implemented specific rules.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Reviewing all of the evidence of record, we are persuaded that the Petition’s obviousness rationale based on Sourcefire and Emerging Threats is not guided by impermissible hindsight bias. We find persuasive Dr. Staniford’s testimony that one of ordinary skill in the art would have understood that “this rule [SID:2003021] was not directed to looking for instances of exploits or attacks (which would be invisible within the encryption) but rather was looking for exfiltration of some kind of encrypted data.” Ex. 1003 ¶ 228. As discussed by Petitioner, such recognition was also made by Mr. Marinho and Dr. Goodrich, such that the rule would have been understood to possibly prevent exfiltrations. We continue to be persuaded that Petitioner provides that a correspondence exists between the REQUIRE-TLS-1.1-1.2 operator in the ’343 Patent and SID:2003021 in Emerging Threats, in that both detect an SSL/TLS version in application packet header field values to detect exfiltration attempts using out-of-date encryption protocols. Pet. 43 (citing Ex. 1003 ¶¶ 229–230). We are ’343 Patent discloses the interruption of a similar type of exfiltration, without resorting to impermissible hindsight bias, that Patent Owner asserts. Patent Owner has provided no evidence that Petitioner used the specification of the ’343 Patent to find an applicable rule in Emerging Threats, as opposed to the testified-version provided by Dr. Staniford that he recalls “working on a similar feature where we looked for large encrypted transmissions outbound from the network on non-HTTP ports as a possible symptom of exfiltration of large amounts of data.” Ex. 1003 ¶ 228. Thus, we are not persuaded by Patent Owner’s arguments.” slip op. at 30
Patent outcomesUS 10,567,343 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,567,343 - Mara Renewables Corporation v. DSM IP Assets, B.V.Institution deniedPTAB · Apr 18, 2024 · IPR2024-00070 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–15 were anticipated by Radianingtyas or obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim term “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.; see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (holding that the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application”). Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not provide a definition of the level of ordinary skill in the art. See Prelim. Resp. 19. Patent Owner also states that any differences between the parties’ proposed definition of the skill level would not impact its arguments. Id. For purposes of this Decision, we adopt Petitioner’s definition of the skill level because it is consistent with the prior art’s demonstration of the level of ordinary skill at the relevant time. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“triglyceride, DHA, and heptadecanoic acid content recited therein. In order to anticipate a claim, a prior art reference “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.” NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008) (quotation marks omitted). A reference, however, can anticipate a claim “even if it does not expressly spell out all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would at once envisage the claimed arrangement or combination.” Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1068 (Fed. Cir. 2017) (quotation marks and brackets omitted). As explained below, here, Petitioner has not shown Radianingtyas discloses a microbial oil comprising the required triglyceride, DHA and heptadecanoic acid content. Specifically, although the exemplified strain ONC-T18 produces oil that meets the claimed triglyceride fraction and heptadecanoic acid level, Petitioner has not shown the same oil contains the recited DHA level.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,207,363 - Mara Renewables Corporation v. DSM IP Assets, B.V.Institution deniedPTAB · Feb 23, 2024 · IPR2023-01342 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was anticipated or obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’959 patent. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that, as of the earliest claimed priority date of the ’959 patent, an ordinarily skilled artisan “would have had a Master of Science degree in an academic discipline emphasizing chemistry, chemical engineering, or biochemistry, in combination with training or at least two to three years of related work experience with lipid chemistry technologies, including but not limited to lipid extraction technologies.” Pet. 6 (citing Ex. 1003 ¶¶ 63–64). Alternatively, Petitioner proposes that an ordinarily skilled artisan “could have also had a Doctorate degree in a relevant academic discipline with one to two years of related work experience in the same discipline.” Id. Petitioner argues that an ordinarily skilled artisan “would have been familiar with microbial oils” and “would have understood the benefits of polyunsaturated fats (PUFAs), microbial sources for obtaining them, and methods for culturing and extracting oils from those microbial sources.” Id. (citing Ex. 1003 ¶¶ 36–48, 64). Patent Owner does not provide a definition of the level of ordinary skill in the art, but “reserves its right to proffer what it contends to be the appropriate level of ordinary skill in the art should the Board institute review.” Prelim. Resp. 15. Patent Owner asserts, however, that a person of ordinary skill in the art would have a detailed understanding of the information provided in its Technology Background section, including “the expected impact of cellular biomass growth characteristics on the proportion of triglycerides and phospholipids produced during a microbial fermentation.” Id. For purposes of this Decision, we adopt Petitioner’s definition of the skill level of an ordinarily skilled artisan as it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). As to the background knowledge possessed by the ordinarily skilled artisan, we agree that such an artisan would have been aware of methods for culturing and extracting oils from microbial sources, including the impact of growth characteristics on the proportions of triglycerides and phospholipids produced during microbial fermentation. Pet. 6; Prelim. Resp. 15.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that all claim terms of the ’959 patent “should be given their plain and ordinary meaning.” Pet. 3. Patent Owner does not contend that any claim terms require construction. Prelim. Resp. 14–15. For purposes of this Decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“3. Analysis In order to anticipate a claim, a prior art reference “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Radianingtyas discloses microbial oils with various levels of DHA and arachidonic acid. There is no disclosure of an individual microbial oil, however, that contains at least 45% DHA and 1.5% or less arachidonic acid by weight as required by claim 1. With respect to the level of DHA, although Radianingtyas might be interpreted to disclose that some microorganisms can produce up to 60% DHA,8 Radianingtyas discloses that the DHA content of ONC-T18 is “typical[ly]” 35% of the total intracellular fatty acids, and in each experiment disclosed in Radianingtyas DHA was produced by ONC-T18 at 8 Radianingtyas discloses that “the oil producing microbe can produce a lipid composition comprising from about 25% to about 40% of an omega-3 fatty acid, such as n-3 DHA.” Ex. 1007, 26:31–33. It then gives examples that include 15%, 20%, 45%, 50%, 55%, and 60%, which are outside of the disclosed range. Id. at 26:33–34. Dr. Curtis contends the disclosure as a whole should be read as “from about 15% to about 60% of an omega-3 fatty acid, such as n-3 DHA.” Ex. 1003, 39 n.1. Dr. Curtis identifies no microbe in Radianingtyas, however, that is shown to produce more than 40% DHA, and Radianingtyas expressly notes that the typical DHA content produced by ONC-T18 is 35%. Thus, we question Dr. Curtis’ conclusions regarding the DHA content disclosure of Radianingtyas. levels less than “at least 45%.”9 Ex. 1007, 32:21–25 (noting that the “typical composition of fatty acids” produced by ONC-T18 includes 25% DHA), 34:4–37:14 (noting that the control microorganism produced 13.54%, 19.98%, 18.77%, 18.77%, 21.48%, 28.48%, and 14.13% DHA) (Figure 12), 91 (Table 5) (noting that total DHA produced by ONC-T18 was from 24- 34.2%), 99:22–24 (“Of particular interest is ONC-T18 which produces up to 90% of its C20 to C22 content as DHA which is approximately 35% of the total intracellular fatty acids.”). Thus, we are not persuaded that Radianingtyas discloses microbial oils produced by ONC-T18 that have a DHA content of “at least 45%.” As noted by Petitioner, Radianingtyas provides a definition of “purify” and “purifying,” and notes that when these terms are used, it means that a composition could be, for example, 90% pure. Pet. 11; Ex. 1007, 7:26–8:2. As an example of how the term “purified” may be used, Radianingtyas states “[f]or example, if a disclosed eukaryotic microorganism, for example, produces 35% DHA, this could be further ‘purified’ such that the final lipid composition was greater than 90% DHA.” Id. at 8:2–4. We are directed to no actual microbial oil in Radianingtyas, however, that was purified to have increased levels of DHA. Rather, Petitioner only proffers what Radianingtyas might say if such an oil existed or had been purified to increase levels of DHA.10” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,757,959 - Zebra Technologies Corporation v. Lone Star SCM Systems, Ltd.All claims unpatentablePTAB · Feb 22, 2024 · IPR2022-01377 · APJ Ken B Barrett · IPR · Final written decision
Claims 1–8, 10–12, and 14–22 are unpatentable: claims 1–8, 12, and 14–22 as anticipated by Garber; claims 10 and 11 as obvious over Garber and Andersen.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“3. The Alleged Anticipation of Claim 1 a. A portable interrogator, comprising: Petitioner contends that the preamble is not limiting, but, to the extent that it is, Garber discloses a portable interrogator. Pet. 12–13 (citing, inter alia, Ex. 1005, 14:59–62, 15:63–65). Petitioner asserts that Garber discloses a portable interrogator in the form of a hand-held RFID device, and points to, inter alia, Garber’s description of Figure 4 as depicting “a block diagram of an RFID interrogation system interacting with an RFID tag.” Id. at 12 (quoting Ex. 1005, 3:46–47) (emphasis omitted). Patent Owner does not raise any arguments regarding this contention. b. an antenna configured to receive a first signal from a first object; Petitioner contends that Garber discloses a hand-held RFID device having an antenna for the RFID reader. Pet. 13–14 (citing Ex. 1005, 15:43– 46, 16:11–13, Fig. 13; Ex. 1002 ¶¶ 75–78). Petitioner further contends that Garber’s Figure 13 depicts the antenna receiving an RFID signal from a tag attached to a library book. Id. at 13. Petitioner additionally contends that Garber discloses the identification, by the RFID device, of multiple items via code signals 202, thus disclosing an antenna configured to receive a first signal from a first object. Id. at 14. Petitioner notes that Garber states, “[t]he hand-held RFID device . . . is capable of identifying multiple items that are within the range of the device.” Id. (quoting Ex. 1005, 14:40–45) (emphasis and alterations in original). Petitioner further asserts that “Garber also teaches that ‘if items used in the library are first placed on a book cart [in close proximity without obstructions], for example, the hand-held device could make a single pass by the items on the cart to record them.’” Id. (quoting Ex. 1005, 18:25–27) (emphasis and alterations in original). Patent Owner does not raise any arguments regarding these contentions. c. a control and processing subsystem configured to discern a presence of said first object from said first signal; and Petitioner contends that: Garber discloses a control and processing subsystem (e.g., the processor in the hand-held RFID device/computer 108) configured to discern a presence of (e.g., decoding response from tags to identify tagged item) said first object (e.g., the RFID tags) from said first signal (e.g., signals produced by tags/response code signal 202). Pet. 17 (citing Ex. 1002 ¶¶ 79–84); see also id. at 14–17. Patent Owner does not raise any arguments regarding this contention.” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“4. Motivation to Combine Garber and Andersen Relying on the testimony of Dr. Sharony, Petitioner argues that one of ordinary skill would have been motivated to combine Garber and Andersen for several reasons. Pet. 49, 52 (citing Ex. 1002 ¶¶ 187–196). First, Petitioner argues that Garber and Andersen are analogous art to the ’293 patent “because they are in the same field of endeavor—namely, interrogation systems.” Id. at 49. Specifically, Petitioner argues that Garber and Andersen are analogous to the ’293 patent “because they are reasonably pertinent to the technical problem allegedly addressed by the claimed invention.” Id. Petitioner contends that “[t]he ’293 Patent identifies deficiencies in the prior art as including [inter alia] a requirement ‘that each device be interrogated separately’ (versus ‘[t]he ability to interrogate a plurality of closely spaced tags simultaneously’).” Id. at 49–50 (citing Ex. 1001, 4:16–25, 5:56–6:15, 6:40–46) (third alteration in original). According to Petitioner, Garber discloses, among other things, that “‘[a]nother benefit’ of the RFID device as ‘the ability to process multiple items at one time’ where ‘conventional devices having only optical bar code scanners can process only a single item . . . at one time.’” Id. at 50 (citing Ex. 1005, 13:25–30, 13:30–36 (“greatly reduc[ing] the time required for library staff to process multiple items.”)) (alterations in original). Petitioner argues that “Andersen is also analogous because it teaches ‘a system for tracking inventory having RFID components” and is designed to remedy the deficiencies of prior art inventory tracking systems using bar codes, which can be torn, destroyed, or hidden from view. Id. at 50–51 (citing Ex. 1007, 1:8–10, 1:58–2:2, 2:4–5). Additionally, according to Petitioner, Andersen is intended to address multipath errors and teaches that one way to refine radio signals received by RFID tags is by using a Kalman filter. Id. at 51 (citing Ex. 1007, 11:25–28, 11:32–36). Petitioner also argus that Andersen “provides ample motivation to add a Kalman filter to Garber’s hand-held device” to provide “correction of multi scanned signal / multipath errors.” Pet. 51 (citing Ex. 1007, 11:25–28, 11:32–36, 12:39–41). “As such,” Petitioner asserts, one of ordinary skill would have found it obvious “to modify Garber’s handheld device, which is used inside a library where shelves and other obstacles can result in multipath errors, to use Andersen’s Kalman filter to address these errors.” Id. Additionally, according to Petitioner, one of ordinary skill “could have combined Andersen’s Kalman Filter with Garber’s hand-held device using known methods, and such a filter would merely perform the same function—resolving errors to improve detection accuracy, which is entirely predictable.” Id. at 51–52. Finally, Petitioner contends, one of ordinary skill would have had a reasonable expectation of success in making the proposed combination because “[t]he interrogator components described in Garber and Andersen were well-known at the time,” and the modification of Garber’s interrogator to include Andersen’s Kalman filter would have been straightforward for a person of ordinary skill. Id. at 52. Patent Owner responds that Petitioner’s motivation to combine Garber and Andersen is insufficient. PO Resp. 29–32; PO Sur-reply 23. First, Patent Owner argues that the combination is based on impermissible hindsight because Petitioner did not explain why one of ordinary skill would have combined Garber and Andersen “to teach a control and processing unit employing an adaptive integrated filter or multiscan, coherent signal processing.” PO Resp. 31. According to Patent Owner, one of ordinary skill would not have been motivated to combine Garber and Andersen because “Andersen teaches the use of filters to correct multipath signal errors arising from the transmission of a single signal,” while the ’293 patent “teaches the use of filters to process multiple diverse inputs with a signal representing an RFID object to discern the presence of that object and teaches multiscan, coherent signal processing to coordinate the processing of a plurality of signals.” Id. “In either case,” Patent Owner contends, “the problems solved by the ’293 Patent involve multiple signals and not the single signal problem addressed by Andersen.” Id.” slip op. at 68
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“5. Objective Indicia of Non-Obviousness Patent Owner asserts that there is evidence of long felt but unresolved need that constitutes objective indicia of nonobviousness. PO Resp. 32–33; see PO Sur-reply 24 (“others in the field had attempted and failed to solve the problems addressed by the ‘293 Patent”). Patent Owner also makes certain assertions regarding the adoption and possible acquisition of its technology. PO Resp. 34; see also PO Sur-reply 24 (referring to “industry acceptance of Lone Star’s inventions”). Petitioner characterizes these latter assertions as allegations of industry praise and commercial success. Pet. Reply 24. In support of its objective indicia arguments, Patent Owner relies solely on the declaration of named-inventor John Volpi (Ex. 2018). See PO Resp. 32. Petitioner argues that there is no nexus to the claimed invention because Patent Owner “has not identified the merits of the claimed invention or any product that embodies the claimed features or is coextensive with them.” Pet. Reply 23–24. Petitioner also argues that Patent Owner “has not established industry praise or commercial success, let alone a nexus to the merits of the claimed invention.” Id. at 24. As the Federal Circuit has explained: For objective evidence of secondary considerations to be relevant, there must be a nexus between the merits of the claimed invention and the objective evidence. See In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995). A showing of nexus can be made in two ways: (1) via a presumption of nexus, or (2) via a showing that the evidence is a direct result of the unique characteristics of the claimed invention. A patent owner is entitled to a presumption of nexus when it shows that the asserted objective evidence is tied to a specific product that “embodies the claimed features, and is coextensive with them.” Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). . . . However, even absent a presumption of nexus, “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373–74 (Fed. Cir. 2019) (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)).” slip op. at 72
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Motion to exclude, deniedDenied
“exhibits for use at oral argument. Paper 31 (Petitioner’s objections); Paper 33 (Patent Owner’s objections). Petitioner contends that certain of Patent Owner’s demonstrative exhibit slides contain new argument not previously made in any paper and evidence not previously asserted or relied on in any paper. See Paper 31. Patent Owner similarly contends that certain of Petitioner’s demonstrative exhibit slides contain new argument and evidence not previously referenced or relied on. See Paper 33. The parties’ demonstrative exhibits are not evidence and we do not rely on them herein. See PTAB Consolidated Trial Practice Guide 84 (Nov. 2019), available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf (explaining that demonstratives exhibits are merely “aids to oral argument and not evidence” and therefore “the Board has not found that such objections are helpful in many cases”). Accordingly, we do not sustain the parties’ objections.” slip op. at 79
Patent outcomesUS 10,482,293 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,482,293 - Zebra Technologies Corporation v. Lone Star SCM Systems, Ltd.All claims unpatentablePTAB · Feb 22, 2024 · IPR2022-01376 · APJ Ken B Barrett · IPR · Final written decision
Claims 1–4 and 6–20 are unpatentable: the Board found the asserted Garber-based anticipation and obviousness grounds established, while not reaching three alternative grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Examiner’s prior art references, in order to read an RFID tag, required each tag to be isolated from others, either by distance or through the use of a strategically placed RF shield. The applicant distinguished the claimed subject matter over those relatively unsophisticated RFID readers (that could only read one tag at a time) by amending the claims to recite, by the inclusion of “close proximity” and “unshielded,” a more sophisticated interrogator that did not need to use spacing or shielding. This is consistent with the background section of the ’717 patent stating that RFID systems at the time of the patent were better than relatively unsophisticated bar code systems. See Ex. 1001, 4:6–22; see also PO Resp. 17–18 (Patent Owner quoting the same after re-stating the Board’s preliminary construction and conceding that “[t]he Board conclusion here is supported by the plain language of the ‘717 Patent.”). Specifically, the ’717 patent explains that “[a]n important attribute of RFID interrogation systems is that a number of tags can be interrogated simultaneously stemming from the signal processing,” and that “[a] related and desirable attribute is that there is not typically a minimum separation required between the tags.” Ex. 1001, 4:6– 12. “Most other identification systems, such as systems employing bar codes, usually impose that each device be interrogated separately.” Id. at 4:17–19.” slip op. at 23
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“means-plus-function limitation governed by 35 U.S.C. §112 ¶ 6 and, accordingly, is limited to corresponding structure (and equivalents) disclosed” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“3. The Alleged Anticipation and Obviousness of Claim 1” slip op. at 39
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“4. Motivation to Combine Garber and Andersen Relying on the testimony of Dr. Sharony, Petitioner argues that one of” slip op. at 84
Patent outcomesUS 9,996,717 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,996,717 - Zebra Technologies Corp. v. Lone Star SCM Systems, Ltd.All claims unpatentablePTAB · Feb 22, 2024 · IPR2022-01375 · APJ Russell E Cass · IPR · Final written decision
The Board held claims 1–4, 6–7, 10–19, 21, and 22 unpatentable, finding the asserted Garber grounds proven and not reaching the alternative grounds.
RulingsFinal written decision- Expert testimonyOther
“4. Motivation to Combine Garber and Andersen Relying on the testimony of Dr. Sharony, Petitioner argues that one of ordinary skill would have been motivated to combine Garber and Andersen for several reasons. Pet. 60 (citing Ex. 1002 ¶¶ 244–254). First, Petitioner argues that “Garber and Andersen are analogous art to the ’182 patent because they are in the same field of endeavor—namely, interrogation systems.” Id. Specifically, Petitioner relies on its arguments in Ground 2 that “Garber is analogous to the ’182 patent because it is reasonably pertinent to the technical problem allegedly addressed by the claimed invention.” Id. at 60–61; see id. at 52–53. Petitioner argues that “Andersen is also analogous because it teaches ‘a system for tracking inventory having RFID components” and is designed to remedy the deficiencies of prior art inventory tracking systems using bar codes, which can be torn, destroyed, or hidden from view. Id. at 61 (citing Ex. 1007, 1:8–10, 1:58–2:2, 2:4–5). Additionally, according to Petitioner, Andersen is intended to address multipath errors and teaches that one way to refine radio signals received by RFID tags is by using a Kalman filter. Id. (citing Ex. 1007, 11:25–28, 11:32–36). Petitioner also argus that Andersen “provides ample motivation to add a Kalman filter to Garber’s hand-held device” to provide “correction of multi scanned signal / multipath errors.” Pet. 61–62 (citing Ex. 1007, 11:25–28, 11:32–36, 12:39–41). “As such,” Petitioner asserts, one of ordinary skill would have found it obvious “to modify Garber’s handheld device, which is used inside a library where shelves and other obstacles can result in multipath errors, to use Andersen’s Kalman filter to address these errors.” Id. at 62. Additionally, according to Petitioner, one of ordinary skill “could have combined Andersen’s Kalman filter with Garber’s hand- held device using known methods, and such a filter would merely perform the same function—resolving errors to improve detection accuracy, which is entirely predictable.” Id. Finally, Petitioner contends, one of ordinary skill would have had a reasonable expectation of success in making the proposed combination because “[t]he interrogator components described in Garber and Andersen were well-known at the time,” and the modification of Garber’s interrogator to include Andersen’s Kalman filter would have been straightforward for a person of ordinary skill. Id. Patent Owner responds that Petitioner’s motivation to combine Garber and Andersen is insufficient. PO Resp. 46–49; PO Sur-reply 27. First, Patent Owner argues that the combination is based on impermissible hindsight because Petitioner did not explain why one of ordinary skill would have combined Garber and Andersen “to teach a control and processing unit employing an adaptive integrated filter or multiscan, coherent signal processing.” PO Resp. 48. According to Patent Owner, one of ordinary skill would not have been motivated to combine Garber and Andersen because “Andersen teaches the use of filters to correct multipath signal errors arising from the transmission of a single signal,” while the ’182 patent “teaches the use of filters to process multiple diverse inputs with a signal representing an RFID object to discern the presence of that object and teaches multiscan, coherent signal processing to coordinate the processing of a plurality of signals.” Id. “In either case,” Patent Owner contends, “the problems solved by the ’182 [p]atent involve multiple signals, not the single signal problem addressed by Andersen.” Id. Petitioner responds that the references themselves provide explicit” slip op. at 83
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“3. Analysis of Independent Claim 1 a) 1[pre]: “[an] interrogator, comprising:” Petitioner argues that, to the extent the preamble is limiting, Garber discloses it. Pet. 16. Petitioner points to Garber’s disclosure that “[a] handheld RFID device can interrogate and identify RFID-tagged items,” and that the hand-held RFID device “preferably includes an RFID reader and writer.” Id. (citing Ex. 1005, 14:49–62, 15:63–65) (emphasis omitted). “Furthermore,” Petitioner contends, “Figure 4 of Garber discloses ‘a block diagram of an RFID interrogation system interacting with an RFID tag,’” and RFID tags “respond to requests for information by the interrogator.” Id. (citing Ex. 1005, 3:46–47, 5:44–45). Patent Owner does not present arguments specifically directed to the preamble of claim 1. See PO Resp. Based on the full trial record, we find that Petitioner’s cited evidence sufficiently supports its contentions regarding the preamble.8” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“4. Motivation to Combine Garber and Andersen Relying on the testimony of Dr. Sharony, Petitioner argues that one of ordinary skill would have been motivated to combine Garber and Andersen for several reasons. Pet. 60 (citing Ex. 1002 ¶¶ 244–254). First, Petitioner argues that “Garber and Andersen are analogous art to the ’182 patent because they are in the same field of endeavor—namely, interrogation systems.” Id. Specifically, Petitioner relies on its arguments in Ground 2 that “Garber is analogous to the ’182 patent because it is reasonably pertinent to the technical problem allegedly addressed by the claimed invention.” Id. at 60–61; see id. at 52–53. Petitioner argues that “Andersen is also analogous because it teaches ‘a system for tracking inventory having RFID components” and is designed to remedy the deficiencies of prior art inventory tracking systems using bar codes, which can be torn, destroyed, or hidden from view. Id. at 61 (citing Ex. 1007, 1:8–10, 1:58–2:2, 2:4–5). Additionally, according to Petitioner, Andersen is intended to address multipath errors and teaches that one way to refine radio signals received by RFID tags is by using a Kalman filter. Id. (citing Ex. 1007, 11:25–28, 11:32–36). Petitioner also argus that Andersen “provides ample motivation to add a Kalman filter to Garber’s hand-held device” to provide “correction of multi scanned signal / multipath errors.” Pet. 61–62 (citing Ex. 1007, 11:25–28, 11:32–36, 12:39–41). “As such,” Petitioner asserts, one of ordinary skill would have found it obvious “to modify Garber’s handheld device, which is used inside a library where shelves and other obstacles can result in multipath errors, to use Andersen’s Kalman filter to address these errors.” Id. at 62. Additionally, according to Petitioner, one of ordinary skill “could have combined Andersen’s Kalman filter with Garber’s hand- held device using known methods, and such a filter would merely perform the same function—resolving errors to improve detection accuracy, which is entirely predictable.” Id. Finally, Petitioner contends, one of ordinary skill would have had a reasonable expectation of success in making the proposed combination because “[t]he interrogator components described in Garber and Andersen were well-known at the time,” and the modification of Garber’s interrogator to include Andersen’s Kalman filter would have been straightforward for a person of ordinary skill. Id. Patent Owner responds that Petitioner’s motivation to combine Garber and Andersen is insufficient. PO Resp. 46–49; PO Sur-reply 27. First, Patent Owner argues that the combination is based on impermissible hindsight because Petitioner did not explain why one of ordinary skill would have combined Garber and Andersen “to teach a control and processing unit employing an adaptive integrated filter or multiscan, coherent signal processing.” PO Resp. 48. According to Patent Owner, one of ordinary skill would not have been motivated to combine Garber and Andersen because “Andersen teaches the use of filters to correct multipath signal errors arising from the transmission of a single signal,” while the ’182 patent “teaches the use of filters to process multiple diverse inputs with a signal representing an RFID object to discern the presence of that object and teaches multiscan, coherent signal processing to coordinate the processing of a plurality of signals.” Id. “In either case,” Patent Owner contends, “the problems solved by the ’182 [p]atent involve multiple signals, not the single signal problem addressed by Andersen.” Id. Petitioner responds that the references themselves provide explicit” slip op. at 83
- ExcludeDenied
“rely on them herein. See PTAB Consolidated Trial Practice Guide 84 (Nov. 2019), available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf (explaining that demonstratives exhibits are merely “aids to oral argument and not evidence” and therefore “the Board has not found that such objections are helpful in many cases”). Accordingly, we do not sustain the parties’ objections.” slip op. at 88
Patent outcomesUS 9,646,182 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,646,182 - Opticis Co., Ltd. v. Inneos LLCInstitutedPTAB · Feb 2, 2024 · IPR2023-01256 · APJ Terry J Owens · IPR · Institution
The Board instituted review of claims 1, 2, 6, 7, and 9 on all five §103 grounds in the petition.
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. 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” A decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a) (implemented as a result of SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018)). Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. See 35 U.S.C. § 314(a). For the reasons explained below, we institute an inter partes review of all challenged claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Ground 1 is based upon obviousness, not anticipation. Patent Owner’s argument is not well taken because it does not address what fixing Kurita’s single optical fiber (40) in place.” slip op. at 13
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedInstituted
“The purpose of requiring reasonable diligence by the first to conceive the invention but second to reduce to practice is to assure that the invention was not abandoned or unreasonably delayed by the first inventor during the period after the second inventor entered the field.” Brown v. Barbacid, 436 F.3d 1376, 1379 (Fed. Cir. 2006). “A patent owner need not prove the inventor continuously exercised reasonable diligence throughout the critical period; it must show there was reasonably continuous diligence.” Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1009 (Fed. Cir. 2016). “[T]here need not necessarily be evidence of activity on every single day if a satisfactory explanation is evidenced.” Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1369 (Fed. Cir. 2001). Thus, Patent Owner must provide an explanation that is satisfactory to indicate that the relied-upon computer modeling and prior art search update show reasonably continuous diligence from November 10, 2003 to January 15, 2004. Patent Owner has provided some evidence to show diligence from November 10, 2003 to January 15, 2004, but Patent Owner has not explained why, under the facts of this case, the evidence is sufficient to establish reasonably continuous diligence for the period before Bhandarkar’s effective filing date to the date of constructive reduction to practice. We have reviewed Petitioner’s contentions as to how Bhandarkar teaches the subject matter of the claims, and we find them sufficiently persuasive at this stage. Based upon the above-discussed evidence and that the optical combiner claimed in claims 1, 2, 6, 7, and 9 would have been obvious to one of ordinary skill in the art over Bhandarkar. slip op. at 26
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution in view of the district court litigation (Prelim. Resp. 68–69). A Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)2 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition” (Interim Procedure 9). Petitioner has submitted such a stipulation (Paper 11). Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,198,416 - PTAB · Jan 17, 2024 · IPR2023-01027 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of all challenged claims on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable over the cited prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may 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) (2018). For the reasons provided below, and based on the record as it now stands, we determine that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute inter partes review. B.” slip op. at 2
- BurdenMixed
“Regarding the claimed “predefined threshold value” or “predefined illuminance,” Petitioner asserts that “Alden’s system can ‘provide illumination to independently controlled segments [e.g., ‘subsections’] each operable within a range of intensities between the high and the low beam state” and that Alden’s “intensities in between high beam and low beam (e.g., medium) are the claimed ‘predefined threshold value’ which the low beam would be below and the high beam would be above.” Pet. 25. We tend to disagree with this analysis, as it does not appear that a “range of intensities” is a “predefined threshold value” or “predefined illuminance,” if those terms are given their ordinary meaning. We thus conclude that, on this record at least, Petitioner has not shown a reasonable likelihood that Alden anticipates these claims. Regarding obviousness in view of Alden alone, Patent Owner argues that Petitioner has “failed to establish or demonstrate multiple elements that are required to support an obviousness conclusion, including explaining how Alden must be modified (i.e., identifying the differences between the claimed invention and Alden) and explaining why a POSA would be motivated to so modify Alden (i.e., providing some articulated reasoning with some rational underpinning to support an obviousness conclusion).” Prelim. Resp. 37. We agree. It does not appear that Petitioner has provided any basis on which to account for differences between Alden and the challenged claims based on Alden’s disclosures alone.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the alleged invention “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems” and that more education could compensate for less experience and vice versa. See Pet. 8–9 (citing Ex. 1003 ¶ 33). Patent Owner “does not dispute Petitioner’s proposed skill level for a person of ordinary skill in the art” (Prelim. Resp. 7), and, as we generally agree that it is consistent with the subject matter disclosed in the ’503 patent and the prior art, we adopt it for purposes of this decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not seek construction of any claim terms and asserts that “all claim terms [discussed in the Petition] are given [their] ordinary and customary meaning.” Petition 8. Patent Owner asserts that “[n]o claim construction is necessary” at this time because its “arguments for denial do not hinge on the outcome of an actual controversy about claim interpretation.” Prelim. Resp. 7. There being no present dispute about the meaning of any claim term, we find that no express claim construction is necessary to resolve the issues addressed in this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,894,503 - PTAB · Jan 17, 2024 · IPR2023-01026 · APJ Aaron W Moore · IPR · Institution
Instituted IPR on claims 1–36 on all petition grounds; the Board found 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
“We may 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) (2018). For the reasons provided below, and based on the record as it now stands, we determine that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute inter partes review. B.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention “would have had an undergraduate degree in 2 U.S. Patent App. Pub. No. 2003/0137849 A1 (Exhibit 1005). 3 PCT Patent App. Pub. No. WO 01/01038 (Exhibit 1006). 4 U.S. Patent No. 4,970,628 (Exhibit 1007). 5 U.S. Patent No. 6,144,158 (Exhibit 1008). 6 U.S Patent No. 6,049,749 (Exhibit 1009). mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems” and that more education could compensate for less experience and vice versa. See Pet. 8–9 (citing Ex. 1003 ¶ 33). Patent Owner “does not dispute Petitioner’s proposed skill level for a person of ordinary skill in the art” (Prelim. Resp. 7), and, as we generally agree that it is consistent with the subject matter disclosed in the ’503 patent and the prior art, we adopt it for purposes of this decision. B.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner does not seek construction of any claim terms and asserts that “all claim terms [discussed in the Petition] are given [their] ordinary and customary meaning.” Petition 8. Patent Owner asserts that “[n]o claim construction is necessary” at this time because its “arguments for denial do not hinge on the outcome of an actual controversy about claim interpretation.” Prelim. Resp. 7. There being no present dispute about the meaning of any claim term, we find that no express claim construction is necessary to resolve the issues addressed in this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“First, Patent Owner asserts that Alden is “fatally ambiguous” and “fails to provide an enabling disclosure” because it describes the use of two-dimensional sensors and switch arrays (as shown in Figure 3, below left), but the headlamp embodiment on which Petitioner relies (which is depicted in Figure 5, excerpted below right), is illustrated as having just a single line of LEDs. See Prelim. Resp. 19–23. Alden’s Figures 3 and 5 We find this argument unpersuasive because we conclude, on the present record, that one of ordinary skill in the art (see Section II.A), would understand that Figure 5 is a schematic/sectional type of drawing intended to show generally how the system components are connected and how the LEDs would project light through the lens, and that for clarity it omits other LEDs that would be necessary to produce a two-dimensional lighting pattern. We find that the skilled artisan would recognize that a headlamp intended to produce a pattern similar to that reflected in the control circuits of Figure 3 would include additional rows of LEDs passing through the center of the lens at different angles arranged around the center of the lens. Alternatively, we conclude that one of ordinary skill in the art wishing to use a headlamp with just a single line of LEDs would understand that the sensor and/or control circuitry would need to be tailored to such an arrangement.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,894,503
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.