- Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentablePTAB · Apr 10, 2023 · IPR2021-01599 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1, 2, 4, and 6–8 are unpatentable as obvious over Kalanick and Kemler, anticipated by Lalancette, or obvious over Lalancette and Kemler.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with one qualification. Inst. Dec. 19. We stated we would also expect a person of ordinary skill to have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Id. at 19–20. We reasoned that our review of the ’987 patent and the cited prior art did not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’987 patent on more general principles of cellular communications and signaling. Id. at 20. However, we observed that our decision would be the same under either formulation. Id. at 20.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We also find unavailing Patent Owner’s argument that Mr. Williams, Petitioner’s expert, “acknowledges that Lalancette does not disclose the use of a mobile communication device associated with the driver.” Id. (citing Ex. 2022, 128:14–129:25, 132:1–8). Patent Owner misrepresents Mr. Williams’s testimony. Mr. Williams was not asked whether Lalancette “discloses” a mobile communication device, but rather was asked “You’ll agree that La[l]ancette doesn’t identify the mobile computer as a mobile communication device associated with the driver?” Ex. 2022, 129:10–13. specifically referenced, that description is not in that passage.” Id. at 129:14–16. Notably, Mr. Williams also testified that (i) “[t]he nature of La[l]ancette requires some sort of computing device in the taxi that has the ability to receive and communicate in order to get information, for example, icon information from the central computer”; (ii) “mobile computer . . . has a variety of form factors inclusive of something like a [s]martphone”; and (iii) “[i]n the passage where [Lalancette] references mobile computer, it doesn’t have a specific form factor discussion such as referencing [s]martphones.” Id. at 125:17–22, 129:20–25, 132:5–8.” slip op. at 38
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“1. “indicator” In our Institution Decision, we construed the term “indicator” as a “code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver.” Inst. Dec. 22. We determined this construction was consistent with the description of an indicator in the specification of the ’987 patent. Id. at 21–22 (citing Ex. 1001, 4:9–13). Neither party challenges this construction, which we maintain for this Final Written Decision. See PO Resp. 6; Pet. Reply 2; PO Sur-reply 2.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Because the specification and prosecution history do not explicitly provide a definition for the term “generate,” we looked to extrinsic sources to determine its plain meaning. Inst. Dec. 24. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. general dictionary definitions as an aid to claim construction.”) (citation omitted). One dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: PRODUCE.” See https://www.merriam-webster.com/dictionary/generate. We therefore construed the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is “to originate or produce the signal.” Inst. Dec. 24–25.” slip op. at 13
Patent outcomesUS 10,169,987 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,169,987 - PTAB · Mar 9, 2023 · IPR2022-01293 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–19 and all petition grounds, finding a reasonable likelihood of unpatentability based on Wu grounds and compelling merits despite Fintiv factors favoring denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“f) Conclusion – Initial Fintiv Analysis We have considered the circumstances and facts before us in view of the first five Fintiv factors. Because our analysis is fact driven, no single factor is determinative of our conclusion. Considering these five Fintiv factors, we determine that they favor a discretionary denial. 2. Assessment of the Compelling Merits As we have found that the first five Fintiv factors favor discretionary denial, we proceed to assess whether the record shows that Petitioner has presented a compelling unpatentability challenge.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. As discussed below, we have considered our whether to exercise our discretion to deny pursuant to 35 U.S.C. § 314(a) and determined not to exercise this discretion. Accordingly, we institute an inter partes review of the challenged claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s definition appears generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as systems. For the purpose of institution, we adopt Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art, which does not encompass an open-ended (“at least 3 years”) amount of experience, and which is supported by the testimony of Dr. Acampora. We would reach the same conclusions if we were to remove the open-ended terminology from Patent Owner’s definition and adopt that.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Thus, the record does not support Patent Owner’s proposed construction of “radio resources,” that requires the RF carriers, CDMA codes, TDMA time slots or other information defining and describing the way data is being transmitted cannot include the user payload data that is transmitted. 4. Our Partial Construction For our present purposes, we do not need to completely construe the term “radio resources.” Nidec Motor Corp., 868 F.3d at 1017. However, a partial construction is required, and for the reasons discussed above, for this Decision, we construe “radio resources” to encompass RF carriers, CDMA codes, and TDMA time slots, including those in which underlying data is transmitted.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,334,499 - Applied Materials, Inc. v. Ocean Semiconductor LLCAll claims unpatentablePTAB · Feb 7, 2023 · IPR2021-01339 · APJ David Cotta · IPR · Final written decision
Claims 1–16, 18–26, and 28–31 are unpatentable: claims 1, 2, 6, 9–13, 18, 19, 21–23, 28, and 29 are anticipated by Brcka; the remaining challenged claims are obvious over Brcka.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposal is generally consistent with the level of skill reflected in the specification and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) 6 Patent Owner does not present objective indicia of nonobviousness in this case. See generally, PO Resp. 9 (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). And we agree with Patent Owner that “additional education can compensate for less work experience and vice versa.” Accordingly, we adopt Petitioner’s proposed definition of the POSA level with the additional clarification proposed by Patent Owner.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not identify any claim terms that require construction. Pet. 18. Patent Owner does not dispute Petitioner’s assertion that no claim terms require construction. PO Resp. 16–17. We do not find it necessary to construe the claims in order to resolve this case. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy’”).” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“The implicit premise of Patent Owner’s argument is that Brcka discloses only failures and thus does not disclose “fault detection.” However, we credit the testimony of Dr. Shanfield that “[g]enerally you always need a fault to have a failure occur. So when there is a failure, a fault has occurred.” Ex. 2003, 74:6–11; see also Ex. 1003 ¶ 37 (“A fault is an abnormal tool condition, such as when a parameter strays beyond its acceptable boundary. Faults may lead to failure, which is the ‘termination of the ability of an item to perform a required function.’”) (internal citation omitted), 81 (“Machine failure, though, means that a fault condition existed requiring termination of the machine function upon the wafer.”). Thus, Brcka’s disclosure of analyzing machine failures is also, necessarily, a disclosure of a analyzing a fault. Accordingly, we find that Petitioner has established, by a preponderance of the evidence, that Brcka discloses “performing in a computer a fault detection analysis relating to processing of a workpiece.”” slip op. at 20
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Petitioner cites to the embodiment depicted in Brcka’s Figure 4 as illustrating Brcka’s “fault detection analysis.” Pet. 32–33; see also Ex. 1003 ¶¶ 72–73. Figure 4 is a “flow diagram demonstrating operation of a learning system and [a] neural network model designed in accordance with at least one embodiment of [Brcka’s] invention.” Ex. 1005 ¶ 44. In step 415 of the operation disclosed in Figure 4, “a determination is made whether maintenance has been performed or a machine failure has occurred.” Id. ¶ 44, Fig. 4. If either of these things has happened, “a new reward value is calculated.” Id. In step 440, “a determination is made whether maintenance is needed.” Id. ¶ 45, Fig. 4. Thus, Brcka determines whether a failure has occurred, accounts for this determination by assigning a “reward value” (Fig. 4, step 425), and then decides whether maintenance is needed. On this record, the analysis reflected in these steps qualifies as a “fault detection analysis.” We recognize that Brcka’s fault detection analysis is used in a method that includes a predictive component. But, we do not find anything in the language of claim 1 that precludes performing the fault detection analysis as part of a predictive model. Indeed, the claim language requires only “performing . . . a fault detection analysis.” Moreover, the “fault detection” itself (i.e., Brcka’s step 415), as opposed to the analysis of the detected fault, is backward-looking, not predictive; it determines “whether . . . a machine failure has occurred.” Id. ¶ 44 (emphasis added).” slip op. at 16
Patent outcomesUS 8,676,538 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,676,538 - PTAB · Jan 4, 2023 · IPR2022-01156 · APJ Nabeel U Khan · IPR · Institution
The Board instituted IPR on claims 1–4, 6–16, 18–24, 28, and 29 on all asserted grounds, finding a reasonable likelihood that Chen-069 anticipates the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitutedDecided for petitioner
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityNot time barredDecided for petitioner
“Notably, the parties do not dispute that Sunny is not time-barred from filing a Petition challenging the ’948 patent. We thus find that for purposes of institution, we need not address whether Sunny is an unnamed real party-in-interest “because, even if it were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18 (PTAB Oct. 6, 2020) (precedential); see also Intel Corp. v. Alacritech, Inc., IPR2017-01391, Paper 8 at 3–6 (PTAB Nov. 28, 2017) (holding that the Board will not address the argument for purposes of institution that a litigation co-defendant should be named as a real party-in-interest in the absence of an allegation that the co-defendant would be time-barred under section 315(b)). We find that this “approach better serves the interest of cost and efficiency.” SharkNinja, Paper 11 at 20; 37 C.F.R. § 42.1(b). Moreover, we disagree with Patent Owner that SharkNinja is not controlling here. Prelim. Sur-reply 2. While we agree that SharkNinja made additional findings (i.e., no allegations of purposefully omitting a party to gain advantage and that the petitioner had offered to add the party as a real party-in-interest), those findings do not limit the reasoning of SharkNinja’s holding, which is based on there being no time bar. SharkNinja, Paper 11 at 18–20. Accordingly, we find that Patent Owner’s arguments concerning Sunny not being named as a real party-in-interest do not form a basis to deny institution under our circumstances.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“at the time of the filing of ’948 Patent “would include someone with (i) a Bachelor’s degree in Physics, Optical Sciences, or equivalent education or training, as well as (ii) approximately three years of experience in designing multi-lens optical systems. Lack of work experience could have been offset by additional education, and vice versa.” Pet. 13–14 (citing Milster ¶ 28). In addition, Petitioner argues that a POSITA would have understood the fundamentals of optical aberration theory, and understood and used standard techniques for making lenses cheaper and more effective, especially for lens systems used in mobile devices. According to Petitioner, a POSITA would have known how to use lens design software such as Code V, Oslo, and ZEMAX, and would have taken a lens design course or had equivalent training. Additionally, Petitioner argues that a POSITA would have regularly used such software to create new lens designs, often using pre-existing lens designs as a starting point and then performing routine optimizations to reach a desired design. Id. ¶¶ 29-31. Petitioner goes on to argue that a POSITA would have followed and regularly consulted books, articles, and other publications and that the knowledge of a POSITA would be reflected in numerous prior art textbooks and publications referenced herein, including Smith (Ex. 1010), Fischer (Ex. 1013), and Kingslake (Ex. 1014). Patent Owner does not propose a level of ordinary skill in the art nor does Patent Owner dispute the level of skill proposed by Petitioner. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose a specific construction for any terms and instead argues that “no claim terms require specific construction to resolve the unpatentability issues presented” in their Petition. Pet. 22. Patent Owner also does not propose any specific constructions in their Preliminary Response.2 We determine that, at this stage of the proceeding, no explicit constructions are required to resolve the dispute between the parties. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all their claim construction arguments and evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, Patent Owner’s Sur-reply, or otherwise during trial, as permitted by our rules.” slip op. at 15
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 9,784,948 - Juniper Networks, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Nov 16, 2022 · IPR2021-00768 · APJ Thu A Dang · IPR · Final written decision
Claims 17–19, 21–23, 25, and 26 are unpatentable: Passint anticipates claims 17, 18, 21, and 22; Passint and Chen render claims 19, 21, and 23 obvious; Dally renders claims 17, 18, 21, and 22 obvious …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Relying on the declaration of Dr. Weissman, Petitioner contends that a person of ordinary skill in the art (“POSITA”) related to the ’998 patent would have “at least a master’s degree in computer science or electrical engineering in the field of computer networking,” wherein “[a]dditional graduate education could substitute for professional experience, or significant experience in the field of computer networking could substitute for formal education.” Pet. 16–17 (citing Ex. 1003 ¶ 33).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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)).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“FIG. 4.” Pet. Reply 7. That is, even if “the parties do not dispute that Figure 1 applies to the Passint invention as a whole” (PO Sur-Reply 15), Petitioner has met its burden of establishing anticipation if it shows that each and every element in claim 17 is found in the single embodiment set forth in Figure 4 of Passint. Thus, although Patent Owner argues that “Petitioner never explains why Passint’s nodes 22, 24, and 26 are alleged to be router cluster nodes in a cluster router” (id.), Petitioner nevertheless can establish anticipation by showing that Figure 4 of Passint discloses router cluster nodes in a cluster router, as recited in claim 17. As Petitioner persuasively points out, contrary to Patent Owner’s contention, “the Petition does not cite Passint’s FIG. 1 as disclosing the ‘router cluster node,’” but rather, “specifically refers to Passint’s router chips 50/150 as disclosing the ‘router cluster node’ of the ‘router cluster’ of Passint’s FIG. 4.” Pet. Reply 12.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“view of Chen renders the limitations as recited in claims 19, 21, and 23 as obvious, contending that it would have been obvious to combine the references and citing Dr. Weissman’s testimony for support. Pet. 37–46 (citing Ex. 1004, 5:52–58, 11:9–16, 12:1–4, 12:39–43, 13:21–28; Ex. 1008, 6, 7, 13; Ex. 1003 ¶¶ 116–136).” slip op. at 22
Patent outcomesUS 7,483,998 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,483,998 - ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentNo claims unpatentablePTAB · Oct 14, 2022 · IPR2021-00698 · APJ John A Hudalla · IPR · Final written decision
Claims 1–45 were not shown unpatentable because the cited references did not establish the claimed limitations arranged as required or cure that deficiency.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art (or “POSITA”) “would at least have [had] a bachelor’s degree in electrical engineering, computer engineering, or a related engineering discipline and two or more years of industry experience in the field of telecommunications, or equivalent experience, education, or both” and “knowledge or familiarity with telecommunication.” Pet. 13 (citing, inter alia, Ex. 1003 ¶ 41). Patent Owner does not propose an alternative definition. See PO Resp. 4. We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifiers “at least” and “or more,” which introduce ambiguity. Based on the full trial record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’505 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“In our Decision on Institution, we determined that 35 U.S.C. § 112 ¶ 6 did not apply to the limitation in claim 14 that recites “a formatter to format the received data into at least one SMS (Short Message Service) message.” Dec. on Inst. 11 (citing Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1298 (Fed. Cir. 2018); Ex. 1001, 1:66–2:1, 4:26–27, 4:46–51). Neither party addressed this determination after institution. We maintain our determination that § 112 ¶ 6 does not apply to this limitation, and we instead apply the plain and ordinary meaning. Thus, we determine that no terms require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Thus, we determine that no terms require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“c. Analysis At the outset, we note that Petitioner relies solely on an express anticipation theory for this ground. Petitioner did not put forth any contentions based on inherent anticipation, and Petitioner did not put forth any arguments or evidence like those in Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015), to show that “a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Thus, we must decide whether Haller discloses “all elements of [the] claimed invention arranged as in the claim.” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).” slip op. at 19
Patent outcomesUS 7,203,505 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,203,505 - ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Sep 1, 2022 · IPR2021-00695 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–14 are unpatentable: claims 1–5, 7–11, 13, and 14 as anticipated and obvious over Huebner, and claims 1–14 as anticipated and obvious over de Haan.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “a Bachelor of Science degree in Electrical Engineering or an equivalent field, with two years of academic or industry experience in computer systems or comparable industry experience.” Pet. 6 (citing Ex. 1003 ¶ 38). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Mr. Stephen Gray. Ex. 1003 ¶ 38. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. PO Resp. 3. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“wherein the movement signalling provides an indication of one or more movement criterion of the projector” means “includes.” See, e.g., PO Resp. 5 (“the movement signaling providing (in other words, included in the movement signaling)”); PO Sur-reply 1 (“the ‘movement signaling provid[ing]’ (in other words, included in the movement signaling)”). As discussed below, even if we were to assume that the term “provides” means “includes,” the asserted prior art nonetheless teaches the disputed claim limitation. See Sections II.D.2, II.F.2. As a result, we need not resolve this particular claim construction issue in order to resolve the parties’ disputes about the asserted grounds of unpatentability. slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree. The claims of the ’071 patent indicate that the movement signaling and movement criterion need not be separate signals. Claim 1, for example, recites “wherein the movement signalling provides an indication of one or more movement criterion of the projector.” Ex. 1001, 11:21–23 (emphasis added). Patent Owner acknowledges that the claim term “provides” indicates that the movement signaling includes the movement criterion, and, thus, the movement criterion is not a separate signal. Id.; PO Resp. 5; PO Sur-reply 1; see Retractable Techs., Inc. v. Becton, Dickson & Co., 653 F.3d 1296, 1303 (Fed. Cir. 2011) (holding that the claim language indicates that the “needle holder” and “retainer member” need not be separate components). The written description of the ’071 patent confirms that the movement signaling and movement criterion need not be separate signals. Specifically, the ’071 patent states that “[b]y providing these movement criterion in the movement signalling, the processor is capable of recognising one or more of different types of movement/combinations.” Ex. 1001, 2:18–21 (emphasis added). Thus, the ’071 patent describes the movement criterion as provided “in” the movement signaling, not as a separate signal. Id.; see Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231–32 (Fed. Cir. 2011) (holding that the specification discloses that the “cutting box” may also function as a “dust collection structure,” and, thus, the claim terms do not require separate components). Because Patent Owner’s interpretation is not consistent with the scope of the claim language and the written description, we decline to adopt it. No further construction of the phrase “wherein the movement signalling provides an indication of one or more movement criterion of the projector” is necessary to resolve the parties’ disputes about the asserted grounds of unpatentability. See Sections II.D.2, II.F.2.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner’s argument is unavailing. As discussed above, we decline to adopt Patent Owner’s interpretation that requires the movement signaling and movement criterion to be separate signals. See Section II.C.1. Further, Huebner discloses both the movement signaling and movement criterion. Huebner discloses a position sensor “that provides movement signals to the control unit 24.” Ex. 1005 ¶ 64. Huebner also discloses that the movement signals “provide[] information to the control unit regarding movement of the entire image projecting device 10 along x, y and z axes.” Id. In other words, Huebner discloses movement signals that include information indicative of the movement of the projector. Id. Thus, as Petitioner explains, Huebner’s movement signals disclose the recited “movement signalling” and the information included in Huebner’s movement signals disclose the recited “movement criterion.”4 Pet. 13, 18– 19; Pet. Reply 4–5.” slip op. at 11
Patent outcomesUS 8,147,071 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,147,071 - Juniper Networks, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Aug 16, 2022 · IPR2021-00538 · APJ Thu A Dang · IPR · Final written decision
Claims 1–7, 13, 15–19, 21–25, 31, and 33–38 were held unpatentable as anticipated by or obvious over Lewis; claims 3, 4, 6, 23, and 24 were also obvious over Lewis and Shankar.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Relying on the declaration of Dr. Weissman, Petitioner contends that A [person of ordinary skill] in the art related to the ’140 patent would possess a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field (or its equivalent), plus at least two years of experience working in networking environments, including at least some 1 U.S. Patent Application Publication No. 2004/0004955 A1, published January 8, 2004, filed March 18, 2003 (Ex. 1004, “Lewis”). 2 U.S. Patent Application Publication No. 2003/0174706 A1, published September 18, 2003, filed March 4, 2003 (Ex. 1005, “Shankar”). experience with networking protocols and network routing. Additional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education. Pet. 18 (citing Ex. 1003 ¶33). Patent Owner replies that it “does not offer a competing definition,” because “Petitioner would still not meet its burden to prove unpatentability of any challenged claim.” PO Resp. 4. We adopt and apply Petitioner’s definition of a person of ordinary” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner points out that “neither party has proposed claim constructions for the ’140 patent in the co-pending district court litigation,” and thus contends that “no construction for these terms is necessary because the claims encompass the prior-art mappings under any construction consistent with Phillips.” Pet. 19. Patent Owner does not propose any claim construction. See PO Resp. 4–5. We determine that it is unnecessary to construe any claim term expressly to resolve the disputed issues before us. To the extent the parties’ arguments about whether the prior art teaches the claimed subject implicate issues of claim interpretation, those matters are addressed in our merits analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6
- BurdenUnpatentable
“1. Principles of Law Petitioner bears the burden of establishing the unpatentability of any claim by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This burden of persuasion never shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). There is no requirement that the prior art must use the same words to describe a claim element in order to teach or disclose that claim element. Identity of terminology is not required for a claim element to be anticipated by the prior art without resort to obviousness. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Even in a nonobviousness setting, it is proper to take into account not only the literal and specific teachings of the reference, but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). For anticipation, the dispositive question is whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference. Eli Lilly and Co. v. Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). There is no requirement that the prior art must use the same words to describe a claim element in order to teach or disclose that claim element. Identity of terminology is not required for a claim element to be anticipated by the prior art without resort to obviousness. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Even in a nonobviousness setting, it is proper to take into account not only the literal and specific teachings of the reference, but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). For anticipation, the dispositive question is whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference. Eli Lilly and Co. v. Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 7
Patent outcomesUS 7,596,140 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,596,140 - PTAB · Jul 18, 2022 · IPR2022-00405 · APJ John D Hamann · IPR · Institution
The Board instituted inter partes review of claims 1–21 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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); see 37 C.F.R. § 42.108 (2021). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’364 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We thus turn to the second part of the framework for these four grounds, and evaluate whether Petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, Paper 6 at 8, 10. More specifically, we evaluate whether the Examiner erred by overlooking express teachings in Bird and Ishii, as Petitioner argues. See Pet. 23–24. In doing so, we look to Becton, Dickinson “factors (c), (e), and (f)[, which] relate to whether the petitioner has demonstrated a material error by the Office.” Id. at 10.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field[,] and at least two years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶ 32). Patent Owner does not identify a proposed level of skill in the art that one would have had at the time of the invention of the ’364 patent or identify any specific shortcoming in Petitioner’s formulation. See generally Prelim. Resp. For purposes of this Decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least” as that language is vague and open-ended. Pet. 6. This assessment is consistent with the ’364 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“We disagree with Patent Owner that Petitioner fails to provide how the challenged claims are to be construed, as required by 37 C.F.R. § 42.104(b)(3). Rather, we find that Petitioner’s statement that no claim terms require express construction is sufficient. Pet. 14; CTPG 44 (“[A] petitioner may include a statement that the claim terms require no express construction.”). Moreover, as we discuss below, we find, at this stage of the proceeding, that Petitioner’s showing for unpatentability of the challenged claims uses the plain and ordinary meaning of the claim terms, rather than using an implicit construction, as Patent Owner argues. See infra Section VI(C)(6). At this stage of the proceeding, we do not provide any express constructions, and we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,547,364 - PTAB · Jul 18, 2022 · IPR2022-00334 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 6–9 under all asserted grounds, finding a reasonable likelihood that claims 6, 8, and 9 would have been obvious over Bird and Ishii.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In evaluating arguments under § 325(d), we use a two-part framework, (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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); see 37 C.F.R. § 42.108. Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’994 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 32, 53–63). Patent Owner does not identify a proposed level of skill in the art that one would have had at the time of the invention of the ’994 patent or identify any specific shortcoming in Petitioner’s formulation. See generally Prelim. Resp. adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least” as that language is vague and open-ended. Pet. 5. This assessment is consistent with the ’994 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We also credit the testimony of Petitioner’s expert, Dr. Bederson, that one of ordinary skill in the art “would have understood that Ishii’s photosensors (red) are at the end of each optical waveguides (orange) and the optical waveguides define the extent of the input area,” as we find this testimony consistent with Ishii’s teachings. Compare Ex. 1002 ¶¶ 92, with Ex. 1010 ¶¶ 45, 51, Fig. 9. Dr. Bederson testifies that Ishii’s photosensors “are thus positioned both ‘at least partially circumscribing and immediately proximate’ and ‘outside’ the input area.” Id. In sum, we agree with Petitioner that Bird and Ishii teach a sensor array (i.e., “an X (or Y)-sensor portion 34” slip op. at 26
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,816,994
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.