- PTAB · Jun 14, 2023 · IPR2022-01593 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–19 on all petitioned grounds, finding a reasonable likelihood that Truist would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedInstituted
“On June 21, 2022, the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (“Director”) issued a memo that further clarifies how we should approach analyzing the Fintiv factors. Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. (“Director Memo”). Notably, the Director stated that “the PTAB [Patent Trial and Appeal Board] will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the PTAB.” Director Memo at 3. With this guidance in mind, we decline to exercise our discretion to deny institution of this proceeding based on Fintiv because Truist has provided a Sotera stipulation. Ex. 1028; see also Prelim. Sur-reply 1–2 (USAA acknowledging receipt of the Truist’s Sotera stipulation, and then stating “USAA understands that under the June 21, 2022 Memorandum issued by Director Vidal, such a stipulation is dispositive of the Fintiv analysis”).” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any response thereto shows “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) (2020). Taking into account USAA’s Preliminary Response, Truist’s Preliminary Reply, and USAA’s Preliminary Sur-reply, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Truist would prevail in challenging at least one of claims 1–19 of the ’090 patent as unpatentable. Pursuant to § 314, we hereby institute an inter partes review as to these claims of the ’090 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“For purposes of this proceeding, Truist contends that “the plain meaning of each claim term can be applied.” Pet. 4 (citing Ex. 1002 ¶ 30 (Declaration of Dr. David Doermann in support of Petition)). For purposes of its Preliminary Response only, “[USAA] does not assert that any claim terms need to be construed” to determine whether the Petition meets the reasonable likelihood threshold standard for institution. Prelim. Resp. 18. Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on the preliminary record, we are not persuaded by USAA’s argument for two reasons. First, USAA’s argument is not commensurate in scope with the disputed limitation, which merely requires, “when the monitoring criterion is determined to be satisfied, control the image capture device to capture an image depicting the target document in the field of view of the image capture device.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (explaining that limitations not appearing in the claims cannot be relied upon for patentability). Based on the arguments and evidence currently before us, we are persuaded that the plain language of this limitation is agnostic as to whether the phrase “control[ling] the image capture device to capture an image” requires automatic or manual image capture.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,818,090 - Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentablePTAB · Jun 12, 2023 · IPR2022-00235 · APJ Stacey G White · IPR · Final written decision
Claims 1–7 are unpatentable: claims 1–7 over Takeda-322 under §§ 102 and 103, claims 1–6 over Murayama under § 102, and claim 7 over Murayama under §§ 102 and 103.
RulingsFinal written decision- Adverse judgmentDecided for patent owner
“Under the circumstances of this case, we do not agree that adverse judgment with respect to the disclaimed claims is appropriate. Our Rules, provide that a party may request judgment against itself. 37 C.F.R. § 42.73(b). Here, Patent Owner is not requesting adverse judgment against itself. While it is true that 37 C.F.R. § 42.73(b) provides that “[a]ctions construed to be a request for adverse judgment include . . . (2) [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial” (emphasis added), we decline to construe Patent Owner’s statutory disclaimer as a request for adverse judgment in this proceeding because Patent Owner does not disclaim all challenged claims and the majority of the challenged claims remain in this trial.” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). Petitioner points out that “the claims are not limited to a [Booster Antenna (BA)] operating at any particular frequency range.” Reply 25. In addition, Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, we are not persuaded that the level of ordinary skill should be narrowly confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1– 2 years of experience researching and developing antennas used in RFID applications.” Pet. 87.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“testimony of Petitioner’s declarant, Dr. van der Weide, because he “he lacks relevant experience, his testimony runs counter to fundamental principles of the RFID technology disclosed in the ’932 patent, and his testimony evidences a lack of candor.” PO Resp. 46. According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. Van der Weide’s experience exceeds even Patent 7 We further note that our final determination, on the merits, would be the same even under Patent Owner’s definition of the level of ordinary skill in the art. Owner’s articulation of the level of ordinary skill in the art. Reply 25–27. Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner asserts that “[n]o claim term requires an exact outer boundary construction, because the prior art relied upon herein meets the claim terms under any reasonable interpretation.” Pet. 9. Patent Owner proposes constructions for the claim terms “booster antenna,” “card antenna component,” “coupler coil component,” and “extension antenna component.” PO Resp. 25–45. According to Patent Owner, Petitioner also has proposed its own constructions for these terms, despite stating that no claim term requires construction. Id. at 25–26. We address “booster antenna” and “extension antenna” below.8 It is unnecessary to construe “card antenna component” or “coupler coil component” in this Decision 8 Patent Owner also argues that Petitioner belated construes “card body” in Petitioner’s Reply. Sur-Reply 16–18. We do not construe “card body” because this construction is not necessary to resolve this matter. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). because none of the parties’ disputes turn on the meaning of either term. See, e.g., Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 13
Patent outcomesUS 9,195,932 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,195,932 - Microsoft Corporation v. Throughputer, Inc.Institution deniedPTAB · May 31, 2023 · IPR2022-01566 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable over grounds relying on Tuan, which was not shown to be a printed publication.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“Id. ¶ 11; see id. at pp. 22–30 (Appendix TUAN01). Ms. Munford does not otherwise address Tuan, and Ms. Munford’s conclusory assertion that Tuan “was made available to the public” (id. ¶ 11) is insufficient. As our reviewing court has explained, it is “critical” that there be “some evidence that a person of ordinary skill could have reasonably found” the reference. Samsung, 929 F.3d at 1369; see also id. at 1372 (stating that a reference “is not publicly accessible if the only people who know how to find it are the ones who created it”). In other words, even assuming that Ms. Munford establishes Tuan was technically available to the public in October 2009, her testimony fails to support a finding that an ordinary artisan could have located Tuan with reasonable diligence.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“identify, with particularity, evidence sufficient to establish a reasonable likelihood that Tuan was publicly accessible before the critical date. See Hulu, IPR2018-01039, Paper 29 at 13. As a result, we determine that Petitioner fails to show a reasonable likelihood that Tuan qualifies as a printed publication. See id. Each of the grounds presented in the Petition relies on a combination of Kupferschmidt and Tuan (Pet. 2), so we determine that Petitioner has not shown a reasonable likelihood that it will prevail with respect to its assertions that claims 1–8 would have been unpatentable over the proposed combinations of Kupferschmidt and Tuan. As a consequence, we do not institute an inter partes review.” slip op. at 16
§ 102 anticipationcites KSR · GrahamPatents in suitUS 11,036,556 - PTAB · May 31, 2023 · IPR2023-00171 · APJ Gregg I Anderson · IPR · Institution
The Board instituted inter partes review of claims 1–5, 7–9, 14, and 20 on all asserted grounds, finding a reasonable likelihood that at least claim 1 is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/ default/files/documents/interim_proc_discretionary_denials_aia_parallel_ district_court_litigation_memo_20220621_.pdf (the “Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. In this proceeding, Petitioner stipulates that “it will not pursue an invalidity defense in the parallel district court action based on the same grounds as in this petition or any grounds that could have reasonably been raised before the PTAB.” Pet. Prelim. Reply 1. Petitioner asserts that its stipulation is the same as the one in Sotera. Id. at 1–2. Patent Owner does not dispute that Petitioner adopts the identical stipulation from Sotera but argues it “cannot cure the fact that [Fintiv] Factors 2, 3, 5 and 6 all remain heavily in favor of denying institution.” See PO Prelim. Sur-Reply 3. factors help the Board assess the potential for conflicting decisions and duplicative efforts when there is a PTAB proceeding held in parallel to district-court litigation. See Interim Procedure 1–2. But here, Petitioner’s Sotera stipulation ensures the grounds that the Board resolves will differ from those considered in the parallel district-court litigation. See id. at 7–8. This eliminates the potential for conflicting decisions and duplicative efforts. See id. Thus, in light of Petitioner’s stipulation, we decline to deny institution under Fintiv. Id. at 3.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION As explained above, we determine that Petitioner has established a reasonable likelihood of prevailing in its challenge to at least claim 1 of the ’130 patent. Thus, we institute an inter partes review of all challenged claims on all asserted grounds. VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that inter partes review is instituted with respect to all claims and all grounds of unpatentability raised in the Petition;” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention of the ’130 patent “would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of wireless communication technology.” Pet. 5 (citing Ex. 1003 ¶ 23). Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill because we are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’130 patent.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Declaration, Exhibit 1002, in part because the Declaration merely copies the Petition. Prelim. Resp. 22. This argument finds support in our recent decision in Xerox. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (August 24, 2022) (precedential). In Xerox, we denied institution and held a declaration is entitled to little weight when it contains an exact restatement of the petition’s conclusory arguments without any additional supporting evidence or reasoning. Although we agree that the Petition and supporting evidence or reasoning. For the reasons explained below, at this stage, we are persuaded that the Petition and Ding Declaration are sufficiently supported by the disclosures from Kwak. The weight given to the Ding Declaration is not dispositive for any disputed issue.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,736,130 - Dji Europe B.V. v. Textron Innovations Inc.All claims unpatentablePTAB · May 31, 2023 · IPR2022-00162 · APJ Michael R Zecher · IPR · Final written decision
Claims 1–7, 10, and 12 are unpatentable: Harding anticipates and renders claims 1–7 and 12 obvious; the listed combinations render claims 3, 4, 10, and 12 obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “detent position” In its Petition, DJI argued that the claim term “detent position,” as recited in independent claim 1 of the ’752 patent, should be construed to mean “zero-force position.” Pet. 9. In its Patent Owner Response, Textron cited documentation from the parallel district court case that the parties “agree to construe ‘detent position’ to have its plain and ordinary meaning,” and stated that “there is no dispute between the parties as to the meaning of the term and . . . no explicit construction is necessary.” PO Resp. 8–9 (citing Ex. 2016, 5). Based on the fully developed trial record, there is no readily discernible controversy between the parties that requires us to construe this claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Based on the fully developed trial record, we agree with DJI that the claim phrase “engaging . . . when both the longitudinal controller and the lateral controller are released” should not be limited to controllers on two separate control sticks. That is, we adopt the plain and ordinary meaning for the phrase “when both the longitudinal controller and the lateral controller are released” and construe this term as encompassing either single control stick or multi-stick control configurations. We begin with a review of the specification of the ’752 patent. See Phillips, 415 F.3d at 1315 (stating that “the specification is ‘the single best guide to the meaning of a disputed term’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The “single stick” aspect of our construction finds support in the specification, which consistently reinforces that the lateral and longitudinal controllers may be embodied by a single control stick. Ex. 1001, 2:55–61, 3:18–29, 5:21–27, 8:27–30, 8:49–57, 9:6–10, 10:44–47. As two examples, the specification refers to when the “pilot moves the control stick,” and in another, the specification references where, “[i]n the preferred embodiment, the first 0.1– 0.2 inch of aircraft stick movement is used to determine whether the stick is in the detent position.” Ex. 1001, 8:49–57, 10:44–47 (emphases added). Textron does not identify explicitly, nor could we find a single instance, where the specification of the ’752 patent references using two control sticks. Furthermore, we agree with DJI that the word “both” recited in dependent claims 6 and 7 does not require two separate control sticks, but rather refers to releasing both the longitudinal and lateral controllers. The crux of Textron’s argument appears to be that, because dependent claims 6 and 7, unlike independent claim 1, require releasing both the longitudinal and lateral controllers to activate a state, they cannot be embodied by a single stick, stating “if the controllers were not separate, how could they be independently released?” PO Resp. 10. Textron’s argument, however, conflates “controllers” and “sticks.” As we discuss above, the specification of the ’752 patent repeatedly teaches having both the longitudinal and lateral controllers be actuated by a single control stick. Textron does not support its argument with evidence from the specification, nor does it support its position that, when dependent claim 6 and 7 refer to “the longitudinal controller” and “the lateral controller,” they are referring to the separate control sticks to actuate these two different controllers. Instead, dependent claims 6 and 7 are agnostic as to whether the longitudinal and lateral controllers are set up to actuate on a single control stick or on multiple control sticks. In summary, we accord the claim phrase “engaging . . . when both the” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 11–12 (citing Ex. 1002 ¶¶ 61–62). In its Patent Owner Response, Textron agrees with the level of skill in the art as proposed by DJI, arguing the following: a person of ordinary skill in the art . . . at the time of the invention of the ’752 Patent would have been someone with at least the equivalent of a Bachelor’s degree in mechanical engineering, aerospace engineering, electrical engineering, robotics or similar discipline covering principles of the design or operation of flight controls for helicopters, drones, or other rotary aircraft, as well as one year of experience working on the design, development, implementation, or operation of such technologies. [Textron] also agrees that significant experience could substitute for formal education, and significant education could substitute for work experience. PO. Resp. 4–5. Based on the fully developed record, the level of ordinary skill in the art is not disputed and is consistent with our review of the technology and descriptions in the ’752 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention”). For purposes of this Final Written decision, we adopt DJI’s proposed level skill in the art and apply it in our anticipation/obviousness analysis below.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“h. Summary In summary, we have reviewed DJI’s arguments and supporting evidence as to how the teachings of Harding account for all the limitations of independent claim 1, and we agree with and adopt DJI’s analysis. See Pet. 16–28. Accordingly, DJI has demonstrated by a preponderance of the evidence that the subject matter of claim 1 is anticipated by and would have been obvious over the teachings of Harding. 5. Claims 2–5 and 12 DJI also contends that dependent claims 2–5 and 12 of the ’752 patent are unpatentable under §§ 102(b) or 103(a) as anticipated by or rendered obvious over the teachings of Harding. Pet. 28–38. DJI explains how the teachings of Harding account for the subject matter of each dependent claim, and provides reasoning as to why a person of ordinary skill in the art would have been prompted to modify the teachings of this reference. Id. During trial, Textron does not address separately DJI’s arguments and supporting evidence as to how the teachings of Harding account for the additional limitations of dependent claims 2–5 and 12. See PO Resp. 10–32. As one example, claim 2 directly depends from independent claim 1, and further recites “maneuvering the rotary aircraft within the first envelope with a translational rate command, the translational rate command being adapted to control longitudinal flight of the rotary aircraft with movement of the longitudinal controller and lateral flight of the rotary aircraft with movement of the lateral controller.” Ex. 1001, 11:47–53. DJI contends that Harding teaches this limitation because it discloses a translational rate command where ground speed follows the cyclic stick, and that while in TRC, longitudinal movement of the cyclic stick controls longitudinal ground speed and lateral movement of the cyclic stick controls lateral ground speed. Pet. 28–30. DJI cites Harding’s Figure 6, reproduced below.” slip op. at 31
Patent outcomesUS 9,162,752 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,162,752 - PTAB · Apr 4, 2023 · IPR2022-01598 · APJ Gregg I Anderson · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1–2, 6, 8–11, 15, 17, and 18 are anticipated by Kannan.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“4. Analysis As already noted, Becton, Dickinson factors (a), (b), (d) all support a finding that the Kannan Publication was presented to the Office by listing the Kannan Publication in an IDS and the European Report. The first prong of the Advanced Bionics framework is satisfied.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The PTAB will weigh this factor against exercising discretion to deny institution under Fintiv if the median time-to-trial is around the same time or after the projected statutory deadline for the PTAB’s final written decision.” Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)9 (“Interim Procedure for Discretionary Denials”). Because our projected statutory deadline is around the same time as the median time-to-trial here, we weigh this factor as weighing against exercising discretion to deny institution. Factor 3. Investment in the parallel proceeding by the court and the parties. slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On this record, we therefore conclude preliminarily that Petitioner has sufficiently shown that Kannan discloses limitation 1.a.” slip op. at 32
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner’s arguments and evidence as to the short comings of a single code block do not preclude a code block from being the recited “transmission block.” As a result, even if a single code block transmission block is problematic as to transmission or receiving transmission blocks, there is no explanation of why that fact makes a difference in our legal analysis of the scope of this claim term. We leave this issue for the parties to explore during trial. Based on the record before us, we preliminarily determine that the “transport block” of Kannan falls within the scope of the recited “transmission block,” because a transport block can be a transmission block in some scenarios. See Ex. 2001 ¶¶ 46, 48–49. Furthermore, the “transport block” may include a single code block. Moreover, we preliminarily determine that the “code block” of Kannan falls within the scope of the recited “transmission block.” This issue is subject to further development during trial.” slip op. at 24
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 10,594,443 - ADT, LLC v. Vivint, Inc.All claims unpatentablePTAB · Mar 28, 2023 · IPR2022-00071 · APJ Jameson Lee · IPR · Final written decision
Claims 1, 2, 4, 8–10, and 12 are unpatentable as anticipated by Monroe and obvious over Monroe, Monroe and Fadell, Jin, or Jin and Monroe.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“including a “bachelor’s degree in electrical engineering,” that is not a literal test. We know of no precedent from the U.S. Court of Appeals for the Federal Circuit, and Patent Owner has cited none, that requires the stated level of education for the level of ordinary skill in the art to be met literally without considering any equivalence. The inclusion of a statement of formal technical education in the articulated statement facilitates understanding for comparison purposes because, typically, (1) an expert would have a formal technical education, and (2) a formal degree is associated with an ascertainable or known curriculum. Accordingly, Petitioner may show that Mr. Parker possesses at least the level of skill corresponding to that of one who has a bachelor degree in electrical engineering.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“4. “predefined area” The term “a predefined area” is recited in each of independent claims” slip op. at 20
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“g) Conclusion Petitioner has proven by a preponderance of the evidence that claim 1” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“2. Obviousness over Monroe Alone Petitioner’s arguments for obviousness over Monroe alone for claims 1, 2, 4, 8–10, and 12 are the same as its assertion that Monroe anticipates these same claims. Petitioner states: “As discussed above in [the ground based on anticipation by Monroe], Monroe discloses all the limitations of claims 1, 2, 4, 8, 9, 10, and 12. Thus, the claims can be cancelled on singlereference obviousness grounds as well as anticipation grounds.” Pet. 26. Petitioner cites Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1373 (Fed. Cir. 2019), for the position that a disclosure that anticipates under 35 U.S.C. § 102 also renders the claim obvious under 35 U.S.C. § 103. Id. Patent Owner presents no arguments to the contrary. We agree that an anticipatory reference can be deemed, pro forma, to render the anticipated claims obvious. All the limitations are disclosed by the single reference and no modification is necessary. Accordingly, for the same reasons discussed above, Petitioner has proven by a preponderance of the evidence that claims 1, 2, 4, 8–10, and 12 would have been obvious over Monroe alone.” slip op. at 52
Patent outcomesUS 10,325,159 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,325,159 - Google LLC v. Sonos, Inc.All claims unpatentablePTAB · Feb 15, 2023 · IPR2021-00475 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–3, 5, 6, 10, 15, 18, and 19 are unpatentable based on anticipation by Maher and obviousness over Maher, Maher and Hooley, Zurek and Levy, or Zurek, Levy, and Hooley.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposal is consistent with the technology described in the Specification of the ’460 patent and the cited prior art. For purposes of this proceeding, we adopt Petitioner’s undisputed proposed level of ordinary skill in the art and apply it in our anticipation/obviousness analysis below.10” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“equalization setting” recited in claims 1 and 15 should be construed as “an equalization setting for audio playback.” Prelim. Resp. 15–18. We did not adopt Patent Owner’s proposed construction in our Institution Decision and accorded “an equalization setting” its ordinary and customary meaning, without express construction. Dec. on Inst. 10. As noted above, Patent Owner does not reassert its argument regarding claim construction in its Response. See generally PO Resp. For the reasons stated in the Institution Decision, we do not agree with Patent Owner’s proposed construction of “an equalization setting.” See Dec. on Inst. 9–11. And, by failing to renew its claim construction argument in the Response, Patent Owner has waived this argument.11 See Paper 19, 8 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”). Based on the fully developed trial record, we determine that claim construction is not disputed and that no claim construction is necessary to make 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 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on our consideration of the contentions of the parties and our weighing of the related evidence, we determine that a preponderance of the evidence supports a conclusion that Maher discloses in Figure 4 and the related description an embodiment that can be used to practice the methods of Figures 1–3. We disagree with Patent Owner’s arguments that Maher does not describe a method where a device determines equalization settings for an integrated speaker and Patent Owner’s attempt to distinguish claim 1 from Maher and the Maher/Hooley combination on this basis.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“Based on our consideration of the contentions of the parties and our weighing of the related evidence, we determine that a preponderance of the evidence supports a conclusion that the combination of Zurek and Levy teaches all the limitations of claim 1 and that a skilled artisan would have been motivated to combine the relevant teachings of Zurek and Levy as recited in claim 1. We disagree with Patent Owner’s argument that combining the teachings of Zurek and Levy as proposed in the Petition would render Zurek inoperable for its intended purpose. More specifically, we do not share Patent Owner’s view that adding Levy’s output processing to Zurek’s system would result in rendering Levy’s input processing inoperable for its intended purpose because we agree with Petitioner that (1) Zurek is not limited to processing voice inputs, and (2) input and output equalization are not mutually exclusive, but rather the underlying acoustic processing is the same.” slip op. at 41
Patent outcomesUS 9,219,460 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,219,460 - ADT LLC / Alarm.Com, Inc. v. Vivint, Inc.All claims unpatentablePTAB · Feb 10, 2023 · IPR2022-00714 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1–17 are unpatentable: claims 1–3 and 6–11 as obvious over Oh, and claims 4, 5, and 12–17 as obvious over Oh, Forbes, and TS23.141.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1313). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). Neither of those exceptions apply here, and for the reasons discussed below, we find the plain and ordinary meaning of “determining a current location of the user” to include determining a physical location of a computing device associated with the user.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“b) Our Analysis For the reasons below, we construe “aggregate presence service” to mean “a service that receives, stores, and provides presence-related information,” and we disagree with Patent Owner that such a service needs to include geographic location information obtained from a location service. The parties agree that that “presence-related information” already includes location information. Patent Owner’s proposal would have us read the requirement of using a location service into the claims, which, as discussed above, we decline to do on the record before us. As with “determining a current location,” discussed in Section III.C.1 above, we see no lexicographic definition or clear intent in the specification defining “aggregate presence service” in the manner that Patent Owner argues. To be sure, the ’739 patent specification does define other terms. See, e.g., Ex. 1001, 4:42–44 (“The term computer readable media as used herein refers to both storage media and communication media.”). But the specification does not define “aggregate presence service” in any way, much less using such express language. The portions of the specification that Patent Owner points us to (PO Resp. 20–22) as defining the claim term fall well short of what is required under Federal Circuit precedent to show a lexicographic definition. In relevant part, all the specification says is that a “doorbell presence application” may provide an “[a]ggregate presence service” with information regarding a user’s location, and that “aggregate presence service 534 updates a presentity store 528 and enables watcher client application 504 to provide the notification to the user.” See Ex. 1001, 7:20–26, Fig. 5; see also id. at 7:40–61, 9:42–61, Figs. 6, 9. There is no disclosure in the specification distinguishing the term “aggregate presence service” from the term “presence service” in a specific way, let alone any other disclosure requiring the use of a location service in the manner that Patent Owner argues. The record therefore does not support Patent Owner’s position.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art would have had a bachelor’s degree in computer science, electrical engineering, or computer engineering (or equivalent experience) and two years of experience in monitoring or telecommunications systems. Pet. 6 (citing Ex. 1017 ¶ 25). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See generally PO Resp. We determine, on the complete record, that the level of ordinary skill proposed by Petitioner is consistent with the ’739 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt that level in deciding unpatentability of the challenged claims.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
Patent outcomesUS 7,956,739 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,956,739 - Fanduel, Inc. v. Winview Inc.InstitutedPTAB · Jan 31, 2023 · IPR2022-01307 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1, 2, 9, 14–16, 20, 21, 23, 24, 26, 27, 31–33, 40, 41, 43, and 49 on all asserted grounds, finding a reasonable likelihood of anticipation by Vänskä.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“1. Principles of Law To establish anticipation, “all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). When evaluating a single prior art reference in the context of anticipation, the reference must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)). “‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (second and third alteration in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991)). We analyze this asserted ground based on anticipation with the principles stated above in mind.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“1. Principles of Law To establish anticipation, “all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). When evaluating a single prior art reference in the context of anticipation, the reference must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)). “‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (second and third alteration in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991)). We analyze this asserted ground based on anticipation with the principles stated above in mind.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Skill in the Art Factors pertinent to a determination of the level of ordinary skill in the art include “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case.” Id. at 696–97. For purposes of institution, there is sufficient evidence in the record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Rubin, FanDuel argues that “a person of ordinary skill in the art . . . as of June 20, 2005 [(the filing date of the ’356 application)], would typically have at least a bachelor’s degree, or equivalent, in Computer Science and several years of experience in software development.” Pet. 13 (citing Ex. 1003 ¶¶ 20, 21). To the extent necessary, we adopt FanDuel’s assessment of the level of skill in the art as it appears consistent with the ’543 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“FanDuel contends that, “[f]or purposes of this proceeding only, [FanDuel] does not believe any claim construction is necessary to resolve this [unpatentability] analysis.” Pet. 12 (citing Ex. 1003 ¶ 41). As we note above, WinView elected not to file a Preliminary Response. Based on the preliminary record, there is no controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
Claim construction§ 102 anticipationPatents in suitUS 10,721,543
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.