- PTAB · May 10, 2024 · IPR2024-00031 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 15–20, 24, 26, and 27 on all asserted grounds, finding a reasonable likelihood of success on anticipation and obviousness.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, 35 U.S.C. § 103 requires us to resolve 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). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id.” slip op. at 6
- Prior constructionPrior construction adoptedDecided for petitioner
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.7” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,400,358 - NXP USA, Inc. v. Bell Semiconductor, LLCInstitutedPTAB · May 8, 2024 · IPR2024-00168 · APJ Brian D Range · IPR · Institution
Instituted inter partes review of claims 1–6 and 8 on all petition grounds addressing those claims, based on a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–6 and 8 of the ’245 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in a field relating to the semiconductor manufacturing process, such as materials science, physics, electrical engineering, and/or other related subjects, and at least two to three years of experience with fabrication of integrated circuits.” Pet. 4 (citing Ex. 1002 ¶ 20). Petitioner also contends “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 4–5. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’245 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Claim 1 affirmatively recites, for example, “a plurality of layers under the top layer.” Ex. 1001, 4:13. Claim 1 also affirmatively recites that the “plurality of layers compris[es] a bottom routing layer having signal traces thereon.” Id. at 4:14–15. So, claim 1 requires a bottom routing layer having signal traces. Claim 1 then recites “where[] none of the signal traces of the bottom routing layer are located over ball pads of the ball pad layer which are disposed in an area within two ball pad pitches of the corner of the die.” Id. at 4:17–20. This recitation serves to describe the “signal traces of the bottom routing layer.” The recitation does not affirmatively recite a required location of any ball pads. Likewise, the claim as a whole also does not state that the ball pad layer comprises ball pads disposed within two ball pad pitches of the corner of the die. Rather, the claim recites “said ball pad layer having a plurality of ball pads” without affirmatively indicating where those ball pads must be located within the ball pad layer. Thus, on the present record, we interpret claim 1’s recitation of “none of the signal traces . . . within two ball pad pitches of the corner of the die” as requiring that no signal traces of the bottom routing layer be located over ball pads of the ball pad layer disposed within two ball pad pitches of the corner of the die if any such ball pads exist in this location. We do not interpret claim 1 as affirmatively requiring ball pads disposed within two ball pad pitches of the corner of the die. To the extent Patent Owner maintains arguments regarding this recitation in a Patent Owner Response, we invite the parties to further address this claim construction issue at trial to the extent permitted by our rules.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We have reviewed Petitioner’s contentions for all of the elements of independent claim 1, as well as the supporting evidence. Pet. 45–55. Based on the record before us, we are persuaded that Petitioner’s discussion of the particular structures and methods in Chung and Celeron establishes a reasonable likelihood of prevailing at trial on the issue of whether the combined teachings of Chung and Celeron teach or suggest all of the limitations of independent claim 1. Id. Also, based on the present record, we are persuaded that Petitioner adequately establishes that a person having ordinary skill in the art would have had reason to combine the teachings of Chung and Celeron.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,345,245 - 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 - PTAB · Feb 20, 2024 · IPR2023-01210 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1, 15, 18, 41, and 52 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far. This is not a final decision as to patentability of the challenged claims. Any final decision will be based on the full trial record, including any response to the Petition timely filed by Patent Owner.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“7. Conclusion We have considered the circumstances and facts before us in view of the Fintiv factors. Because our analysis is fact-driven, no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a). We take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11, 6. Evaluating all of the factors on this record, we determine that weight of factors 1, 2, and 4 outweigh the remaining factors. Thus, based on our assessment of the Fintiv factors, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny inter partes review.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems, having at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 13 (citing Ex. 1012 ¶ 30). Patent Owner does not dispute Petitioner’s definition for the level of ordinary skill in the art. Prelim. Resp. 30. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“The first four of Petitioner’s proposed constructions are consistent with the clam constructions issued by the district court in the Google Action—the only difference being that although the district court found the corresponding structure for “positioning determining equipment” indefinite, Petitioner applies the corresponding structure proposed by Patent Owner in the Google Action. Ex. 1028, 8, 10–16, 20; Pet. 16. Petitioner cites Exhibit 1024 as supporting its contention that the parties have stipulated as to the order of the “collecting,” “modifying,” and “comparing” steps in claim 1, but this Exhibit does not appear to support the stipulation. See Ex. 1024. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [the] Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.”7 Prelim. Resp. 31. For purposes of this Decision, we adopt the undisputed claim constructions that Petitioner proposes. These constructions are consistent 7 In other sections of the Preliminary Response, Patent Owner appears to argue in favor of a modified construction of “grid point.” Prelim. Resp. 18– 25; see also id. at 32 (“As further explained above in Section III, the district court concluded that ‘grid point,’ as used in the ’358 Patent, specifically refers to ‘a point associated with representative calibration data for an area’ that is generated based on analysis of calibration data.”). We disagree with these arguments for the reasons discussed below. with the claim language and the specification of the ’358 patent and are further supported by the reasoning provided by the district court’s claim construction order. See Ex. 1028. We do not discern a need to construe explicitly any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,400,358 - PTAB · Feb 20, 2024 · IPR2023-01209 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 1–3 and 11 on all asserted grounds, finding a reasonable likelihood that Google would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“is finality as that relates to Fintiv issues. In a similar instance in Volvo, where a district court’s § 101 determination was appealed to the Federal Circuit, the Director determined that the Board had the authority to institute an inter partes review and a Fintiv analysis should be performed. See Volvo, Paper 15 at 1–8. The Director has additionally distinguished a Fintiv analysis under similar circumstances to those here, where “the district court’s judgment of invalidity under 35 U.S.C. § 101, i.e., a statutory ground that could not have been raised before the Board, does not raise concerns of inefficient duplication of efforts or potentially inconsistent results between the Board and the district court.” AviaGames, Inc., Paper 14 at 3. Further, the Director determined that, “the challenged claims have not yet been cancelled and remain in force until the opportunity to appeal has been exhausted,” noting that “[b]y the time an appeal will have concluded, Petitioner will be barred under 35 U.S.C. § 315(b) from bringing a new challenge in an IPR petition.” Id. at 3–4. Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. We also agree with Petitioner that the timing of the progress of the appeal and any potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any anticipation or obviousness issues, the present circumstances with a” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems, having at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 13–14 (citing Ex. 1012 ¶ 31). Patent Owner does not dispute Petitioner’s definition for the level of ordinary skill in the art. Prelim. Resp. 31. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“The first four of Petitioner’s proposed constructions are consistent with the clam constructions issued by the district court in the Google Action (see Ex. 1028, 8, 10, 20) or a position taken by Patent Owner in the Google Action (see Ex. 1016 ¶¶ 108–109). Petitioner cites Exhibit 1024 as supporting its contention that the parties have stipulated as to the order of the “collecting,” “modifying,” and “comparing” steps in claim 1, but this Exhibit does not appear to support the stipulation. See Ex. 1024. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [the] Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.”8 Prelim. Resp. 31. For purposes of this Decision, we adopt the undisputed claim constructions that Petitioner proposes. These constructions are consistent with the claim language and the specification of the ’104 patent and are further supported by the reasoning provided by the district court’s claim construction order. See Ex. 1028. We do not discern a need to construe explicitly any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 7,561,104 - PTAB · Feb 20, 2024 · IPR2023-01212 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1, 7, 9, 32, 38, and 40, finding a reasonable likelihood of prevailing on anticipation by Spain and obviousness over Spain as evidenced by Agiwal.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. We also agree with Petitioner that the timing of the progress of the appeal and any potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.6 Thus, we determine that this factor weighs against the exercise of discretionary denial.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“As Petitioner asserts, in the prosecution history, Dressler is only referred to for the rejection of dependent claims for limitations not found in the challenged claims. Ex. 1002, 56; see also Pet. 45–46; PO Resp. 9–10. Further, Petitioner points out that the Examiner’s reliance on Dressler was for a disclosure that is common to Spain, but is not relied upon in the Petition. Pet. 45–46, Ex. 1006 ¶ 53. As such, there is no evidence in the prosecution history that the Examiner’s reliance on Dressler is related to any issue in the challenges here. Moreover, while the Examiner’s reference to Dressler infers that the Examiner performed some evaluation of that reference, Spain contains additional disclosures that are not in Dressler. See Ex. 1006 ¶¶ 64–65, 67, 82–84, 70–72, 80, Fig. 15; Ex. 1016. Accordingly, any evaluation of Dressler does not reflect a full evaluation of Spain. There is no support in the prosecution history of an evaluation of Spain, except for the Examiner’s initialization of an Information Disclosure Statement, which is not indicative of a substantive evaluation. Similarly, the references to the prior art disclosures alleged by Patent Owner to be the same as Spain were only initialed on Information Disclosure Statements. See Prelim. Resp. 12. Accordingly, the record does not provide support that Spain was substantively evaluated by the Examiner during prosecution.” slip op. at 19
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“viii. Conclusion Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is anticipated by Spain. b. Claim 32 Claim 32 is a system claim that recites similar limitations to the limitations of method claim 1. Petitioner relies on similar evidence and argument to that presented for claim 1 in support of Spain’s disclosures of the claim 32 limitations. Pet. 35–38. Patent Owner presents no additional arguments specifically directed to claim 32 that we have not already addressed. See generally Prelim. Resp. We have reviewed the Petition’s showing for this claim and find that sufficient evidence has been provided in support of the anticipation challenge at this stage of the proceeding. Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 32 is anticipated by Spain.” slip op. at 34
- Prior constructionPrior construction adoptedDecided for petitioner
“The district court issued claim constructions in the Google action for all disputed terms of the ’753 patent claims at issue. Ex. 1028. Petitioner uses the district court’s construction for the terms: “calibration data,” “calibration points,” “grid point,” “network measurement report,” and the order of the “providing,” “generating,” “evaluating,” and “selecting” steps of claim 1. Pet. 19–21 (citing Ex. 1008 ¶ 54; Ex. 1024, 1, 2; Ex. 1028, 8, 18, 20). Petitioner proposes that any other claim terms not addressed by the district court should be interpreted consistent with the Phillips standard. Id. at 19. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [the] Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.” Prelim. Resp. 39. For the purposes of this Decision, we will use the district court’s claim constructions, which have been agreed to by the parties at this juncture. We determine that we need not expressly construe any claim terms at this juncture. 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 22
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,406,753 - Google LLC v. Geoscope Technologies Pte. Ltd.Institution deniedPTAB · Feb 20, 2024 · IPR2023-01214 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over Almgren or Haartsen, alone or with other prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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). Upon consideration of the Petition, the Preliminary Response, the Petitioner Preliminary Reply, the Patent Owner Preliminary Sur-reply, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’264 patent. Accordingly, for the reasons that follow, we decline to institute inter partes review of claims 1, 3, 6, 11, 13, 15, 20, 21, 23, and 25–27 of the ’264 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active 8 Petitioner asserts that Haartsen is prior art under § 102(b). Pet. 6. 9 US 5,491,837, filed March 7, 1994, issued February 13, 1996 (Ex. 1005, “Haartsen”). workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner, without the qualifier “at least” because its use introduces vagueness, for the purposes of this Decision because it is consistent with the ’264 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Petitioner, however, argues that “[t]he phrase ‘without disabling any other communication channel’ encompasses not dedicating a specific frequency channel for measuring path loss.” Pet. 25; see also Ex. 1008 ¶ 124. That is, Petitioner’s position appears to be that the recited limitation could be sufficiently disclosed or met by prior art if it instead meets the different requirement of “not dedicating a specific frequency channel for measuring path loss.” We do not agree. For support, Petitioner cites portions of the ’264 patent Specification that discuss not dedicating specific frequency channels for measuring path loss. Pet. 25 (citing Ex. 1001, 1:58– 61, 3:39–45, 3:48–50, 4:60–63). Petitioner does not explain, however, why the term “without disabling any other communication channel” should be taught by this disclosure of this alternative requirement or, in other words, Petitioner does not explain why that term should encompass “not dedicating a specific frequency channel for measuring path loss.” Mr. William does not provide any additional explanation and merely repeats the statements of the Petition in a conclusory manner. Ex. 1008 ¶ 124. As discussed above, and as the parties agreed, we will proceed with the assessment of the merits using the plain meaning of the claim term “without disabling any other communication channel.”” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“claim limitations at issue, and, specifically, the burden extends to negative limitations such as “without disabling any other communication.” See IBM v. Iancu, 759 F. App’x 1002, 1011 (Fed. Cir. 2019) (explaining that a reference’s silence was not by itself sufficient to establish that the reference teaches a process involving only one user authentication action). Petitioner does not appear to dispute its required showing, that is, Petitioner does not argue that the absence of an element in the prior art is sufficient per se to satisfy a negative limitation. Rather, the Petition affirmatively asserts that Almgren discloses or teaches the limitation “without disabling any other communication.” Pet. 25–26. Petitioner, however, argues that “[t]he phrase ‘without disabling any other communication channel’ encompasses not dedicating a specific frequency channel for measuring path loss.” Pet. 25; see also Ex. 1008 ¶ 124. That is, Petitioner’s position appears to be that the recited limitation could be sufficiently disclosed or met by prior art if it instead meets the different requirement of “not dedicating a specific frequency channel for measuring path loss.” We do not agree. For support, Petitioner cites portions of the ’264 patent Specification that discuss not dedicating specific frequency channels for measuring path loss. Pet. 25 (citing Ex. 1001, 1:58– 61, 3:39–45, 3:48–50, 4:60–63). Petitioner does not explain, however, why the term “without disabling any other communication channel” should be taught by this disclosure of this alternative requirement or, in other words, Petitioner does not explain why that term should encompass “not dedicating a specific frequency channel for measuring path loss.” Mr. William does not provide any additional explanation and merely repeats the statements of the Petition in a conclusory manner. Ex. 1008 ¶ 124. As discussed above, and as the parties agreed, we will proceed with the assessment of the merits using the plain meaning of the claim term “without disabling any other communication channel.”” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,320,264 - PTAB · Feb 20, 2024 · IPR2023-01211 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1, 4, 25, 26, and 35, finding a reasonable likelihood that Google would prevail on at least one asserted anticipation or obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1, 4, 25, 26, and 35 of the ’494 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.10 Thus, we determine that this factor weighs against the exercise of discretionary denial.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“in the pertinent art at the critical time. Graham, 383 U.S. at 17. The resolution of this question is important because it allows us to “maintain[] objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”). Petitioner contends that a person of ordinary skill in the art (POSITA) would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems, having at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 13 (citing Ex. 1012 ¶ 30). Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 30–31. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’494 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The first four of Petitioner’s proposed constructions are consistent with the clam constructions issued by the district court in the Google Action (see Ex. 1028, 8, 10, 20) or a position taken by Patent Owner in the Google Action (see Ex. 1016 ¶¶ 108–109). Petitioner cites Exhibit 1024 as supporting its contention that the parties have stipulated as to the order of the “collecting,” “modifying,” and “comparing” steps in claim 1, but this Exhibit does not appear to support the stipulation. See Ex. 1024. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [the] Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.”6 Prelim. Resp. 31. For purposes of this Decision, we adopt the undisputed claim constructions that Petitioner proposes. These constructions are consistent with the claim language and the specification of the ’104 patent and are further supported by the reasoning provided by the district court’s claim construction order. See Ex. 1028. We do not discern a need to construe explicitly any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The 6 In other sections of the Preliminary Response, Patent Owner appears to argue in favor of a modified construction of “grid point.” Prelim. Resp. 17– 25; see also id. at 32 (“As further explained above in Section III, the district court concluded that ‘grid point,’ as used in the ’104 Patent, specifically refers to ‘a point associated with representative calibration data for an area’ that is generated based on analysis of calibration data.”) (Patent Owner’s emphasis). We disagree with these arguments for the reasons discussed below. 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 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,786,494
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.