- Intel Corporation v. Ax Wireless, LLC.InstitutedPTAB · Feb 14, 2024 · IPR2023-01137 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 7–11, and 13 on both §103 grounds, finding a reasonable likelihood that the Hansen-WWiSE combinations render the challenged claims obvious.
RulingsInstitution decision- 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) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–3, 5, 7–11, and 13 of the ’449 patent. Accordingly, we institute an inter partes review as to claims 1–3, 5, 7–11, and 13 of the ’449 patent on all asserted grounds of unpatentability.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“printed publication is whether it was publicly accessible at the critical time. SRI Int’l v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Public accessibility exists where the reference document “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Patent Owner argues that a relevant person of ordinary skill using reasonable diligence would not reasonably have located the paper residing on the TGn ftp site. Prelim. Resp. 3–4. We discern three potential avenues for public availability in the assertions set forth by Petitioner: (1) availability to the members of TGn through the Wireless World website; (2) availability to others through the ftp” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find Petitioner’s showing sufficient for institution. Petitioner asserts a combination of Hansen, which splits its Signal*-N field into two symbols, with WWiSE, which appends a second copy of a Signal-N field as an ER-Signal-N field. Ex. 1015 ¶ 97; Ex. 1006, Fig. 11, 69:13–18. WWiSE describes that the Signal-N-containing symbol is followed by the ER-Signal- N containing symbol, which supports Petitioner’s assertion that the combination would start with the first bits of the Signal-N header, which Hansen’s Signal-N header bits are split between two symbols, we do not agree with Patent Owner that there is no reason to split the Signal-N symbol into two symbols in the Hansen-WWiSE combination. We agree that Petitioner has sufficiently shown, for purposes of institution, that a person having ordinary skill in the art would have found it obvious to try generating and sending two identical symbols followed by the other two identical symbols when combining Hansen and WWiSE. The application of common sense to try a limited number of known options within the technical grasp of a person of ordinary skill may indicate the obviousness of a combination. KSR, 550 U.S. at 421. When applying WWiSE’s teaching that ER-containing symbols follow non-ER symbols to Hansen’s two-symbol, non-ER Signal-N, we are persuaded by Dr. LaPorta’s testimony that a person of ordinary skill in the art would have anticipated success with either alternative 1 (NR symbol followed by same-bit ER symbol) or alternative 2 (both NR symbols followed by both ER symbols). Ex. 1003 ¶¶ 163–165. Because alternative 1 provides the order required by limitations [1J] and [1K], we determine that Petitioner has sufficiently shown its asserted combination to teach those limitations.” slip op. at 30
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Memorandum titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)7 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 44
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,291,449 - Intel Corporation v. Ax Wireless, LLC.InstitutedPTAB · Feb 14, 2024 · IPR2023-01135 · APJ Michael T Cygan · IPR · Institution
Instituted IPR on claims 1–3, 5, 7–11, and 13 based on two obviousness grounds: Hansen with WWiSE, and Hansen with WWiSE and Choi.
RulingsInstitution decision- 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) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–3, 5, 7–11, and 13 of the ’361 patent. Accordingly, we institute an inter partes review as to claims 1–3, 5, 7–11, and 13 of the ’361 patent on all asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Memorandum titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)7 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-” slip op. at 43
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“printed publication is whether it was publicly accessible at the critical time. SRI Int’l v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Public accessibility exists where the reference document “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Patent Owner argues that a relevant person of ordinary skill using reasonable diligence would not reasonably have located the paper residing on the TGn ftp site. Prelim. Resp. 3–4. We discern three potential avenues for public availability in the assertions set forth by Petitioner: (1) availability to the members of TGn through the Wireless World website; (2) availability to others through the ftp site; and (3) availability to others through Mentor. We address each in turn, taking into account Patent Owner’s arguments.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“shown, for purposes of institution, that each element of claim 1 has been taught or suggested by the combined teachings of Hansen and WWiSE. Further, that Petitioner has sufficiently shown, for purposes of institution, that a person having ordinary skill in the art would have reason to combine the teachings of Hansen and WWiSE as suggested by Petitioner, and would have a reasonable expectation of success in doing so. On the record before us, and for purposes of institution, Petitioner has sufficiently shown that claim 1 would have been obvious over Hansen and WWiSE. 4. Claims 2–3, 5, 7–11, and 13 Petitioner provides a detailed analysis of the limitations of claims 2–” slip op. at 38
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,973,361 - Intel Corporation v. Ax Wireless, LLCInstitutedPTAB · Feb 14, 2024 · IPR2023-01136 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted review of claims 1–3, 5, 7–11, and 13 on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we institute an inter partes review as to the challenged claims of the ’707 patent on the grounds presented.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Id. We determine that Petitioner’s showing that a skilled artisan would have been motivated to combine the relevant teachings of Hansen and July 2005 WWiSE based on the express suggestions in these references supporting their combination is reasonable and supported. Petitioner also argues: [A] POSITA would have been motivated to combine Hansen and July 2005 WWiSE because the combination is merely the application of a known technique (July 2005 WWiSE’s ER capability) to a known device (device with Hansen’s “compromise” greenfield PPDU) ready for improvement and use of a known technique (July 2005 WWiSE’s ER capability) to improve similar devices (device with Hansen’s “compromise” greenfield PPDUs) in the same way (providing ER capability). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415- 421 (2007). The addition of ER capability to Hansen would have been seen by a POSITA as an improvement to a device using Hansen’s “compromise” greenfield PPDU because ER extends the range of reliable communication between a transmitter and receiver by providing diversity to overcome environmental conditions (e.g., fading and/or noise). (INTEL- 1003, ¶95.) A POSITA would have applied the known improvement (ER capability of July 2005 WWiSE) in the same way to Hansen because Hansen’s “compromise” greenfield PPDU has a similar structure to the greenfield PPDU disclosed in WWiSE. (INTEL-1003, ¶95; compare INTEL-1005, Figure 5a with INTEL-1006, Figure 007.) Pet. 23–24 (emphasis added). This argument is reasonable and supported.” slip op. at 35
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and districtcourt decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 50
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,079,707 - PTAB · Feb 1, 2024 · IPR2023-01298 · APJ Devon Zastrow Newman · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood that Chell anticipates at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have possessed a strong understanding in the use and development of genetics and genomics approaches for detecting or monitoring human diseases, such as spatial detection of a target analyte (e.g., mRNA or DNA) in a tissue, and would typically have a Ph.D. in a relevant field (e.g., molecular biology, genetics, and bioinformatics) with two years of experience. Pet. 14 (citing Ex. 1002 ¶¶ 24–25). For the purposes of its Preliminary Response, Patent Owner does not provide its own proposed level of skill. Prelim. Resp. 10. For purposes of this Decision, we apply Petitioner’s unchallenged definition as it is consistent with the cited prior art and disclosure of the ’689 patent.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“a) contacting the tissue sample with a plurality of nucleic acid probes, wherein each of the nucleic acid probes comprise a target binding domain that binds to the at least one target analyte, wherein the tissue sample [has been] is treated to facilitate binding of the nucleic acid probes to the target analyte b/c) collecting the nucleic acid probes, or portions thereof, bound to the at least one target analyte in a first/second location of the tissue sample under conditions that release the nucleic acid probes, or portions thereof, from the first/second location of the tissue sample d/e) performing an extension reaction that incorporates at least one nucleic acid sequence that identifies the first/second location of the tissue sample into each of the nucleic acid probes, or portions thereof, collected in step (b), thereby forming a first plurality of extension products that comprise the nucleic acid probes, or portions thereof, collected in step (b) and the at least one nucleic acid sequence that identifies the first/second location of the tissue sample Ex. 1001, 145:51–147:11 (emphasis added). Thus, according to claim 1, the “nucleic acid probe” must 1) comprise a target binding domain that binds to the at least one target analyte, 2) be bound to the at least one target analyte; 3) be released in whole or as a portion, and 4) have a location-identifying nucleic acid sequence incorporated into it through an extension reaction. Steps a), b), and c) occur in relation to the target analyte, while steps d) and e) occur after the probe is” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We further interpret “collecting the nucleic acid probes” to mean “releasing all or a portion of the nucleic acid probe bound to the at least one target analyte through application of a force followed by retrieval of the released probe or portion of the probe.” The question then becomes whether So-465, which teaches replication of a probe that was bound and then at least partially released to make genomic amplicons, followed by collection of those genomic amplicons, anticipates collection of probes as recited in claims 1 and 16. On this record, we do not see sufficient evidence that the genomic amplicons disclosed in So-456 that Petitioner identifies as “captured” were ever “bound to the analyte” in part or in whole as required by the claim language, but rather were amplified in situ from the probe or partial probe that was released. Ex. 1005 ¶¶ 181–183. In particular, the process of So-456 differs from the ’689 patent claims in that the extension reaction to incorporate the tissue-identifying nucleic acid sequence in So-465 occurs after the identifier nucleotide is cleaved from the tissue sample. “Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference.” In re Skvorecz, 580 F.3d 1262, 1266 (Fed. Cir. 2009). Petitioner has not demonstrated that So-456 teaches this claim limitation or otherwise demonstrates that this limitation would have been inherent in the disclosure of So-456 for claims 1 and 16. For these reasons, on this record we determine that Petitioner has not shown a reasonable likelihood that So-456 anticipates either of independent claims 1 or 16.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,377,689 - Motorola Mobility LLC v. Largan Precision Co., Ltd.All claims unpatentablePTAB · Jan 3, 2024 · IPR2022-01156 · APJ John D Hamann · IPR · Final written decision
Claims 1–4, 6–16, 18–24, 28, and 29 are unpatentable as anticipated by Chen-069, which is prior art because the 2012 application lacks written-description support for their full scope.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art at the time of the invention of the ’948 patent would have had “(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.” Id. at 12 (quoting Pet. 13–14 (citing Ex. 1003 ¶ 28)). We also found that “[l]ack of work experience could have been offset by additional education, and vice versa,” and that one of ordinary skill in the art “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.” Id. (quoting Pet. 14; Ex. 1003 ¶¶ 28, 30). We also agreed with Petitioner and found that one of ordinary skill in the art “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.” Id. (quoting Pet. 14; Ex. 1003 ¶ 29). We also agreed with Petitioner and found that one of ordinary skill in the art “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. at 12–13 (quoting Pet. 14; Ex. 1003 ¶ 29). Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’948 patent or identify any shortcoming in Petitioner’s formulation. See PO Resp. 16–17. Because Petitioner’s definition of the level of skill in the art is consistent with the ’948 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Patent Owner argues that construing the challenged “claims to include first and second lens elements having the same refractive power . . . is improper.” PO Resp. 21. According to Patent Owner, one of ordinary skill in the art “would construe the [’]948 [p]atent claims to include first and second lens elements in the form of a ‘doublet,’ which requires the respective lens elements to have opposite refractive power, and thus includes only configurations” of “positive-negative” and “negative-positive” for the first and second lens elements, respectively. Id. at 20–21. In other words, “[t]he proper construction of the ’948 [p]atent claims is that the first and second lens elements may have positive-negative or negative-po[sitive] refractive powers, but would not include first and second lens elements having the same refractive polarity,” according to Patent Owner. Id. at 26. Thus, the parties agree that the challenged claims should be construed to encompass at least a lens system having a first lens element with a negative refractive power and a second lens element with a positive refractive power. See, e.g., Pet. 33; PO Resp. 21. We conclude that such a lens system is consistent with the plain language of the challenged claims. See, e.g., Ex. 1001, 12:8–26, 13:14–38, 14:16–46 (reciting first and second lens elements without reciting a specific refractive power polarity for the independent claims). And we determine that no claim terms require further construction in light of our findings below. 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. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“In sum, we determine that the 2012 application does not provide written description support for an imaging lens system with a negative refractive power first lens and a positive refractive power second lens. And the agreed scope of the challenged claims includes such a configuration, and thus, the written description of the 2012 application does not support the full breadth of the challenged claims. We therefore determine that the challenged claims of the ʼ948 patent do not benefit from the priority date of the 2012 application. Therefore, we determine that Chen-069 is prior art to the challenged claims of the ʼ948 patent.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“After reviewing Petitioner’s arguments and evidence, which are not addressed by Patent Owner (see generally PO Resp.), we determine that Petitioner demonstrates by a preponderance of the evidence that Chen-069 anticipates claim 1. D. Remaining Challenged Claims Petitioner argues that Chen-069 discloses the limitations recited in claims 2–4, 6–16, 18–24, 28, and 29. Pet. 48–65. Patent Owner does not address Petitioner’s arguments directed to these claims. See generally PO Resp. 32–34. Based on the evidence and arguments of record, we find that Petitioner demonstrates by a preponderance of the evidence that Chen-069 anticipates claims 2–4, 6–16, 18–24, 28, and 29.” slip op. at 24
Patent outcomesUS 9,784,948 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites Phillips · GrahamPatents in suitUS 9,784,948 - PTAB · Nov 15, 2023 · IPR2023-00821 · APJ Stephen E Belisle · IPR · Institution
The Board instituted review of claims 1–20 on all petition grounds, finding a reasonable likelihood that claims 1 and 3 are anticipated by Jones and claims 1–20 are obvious over Jones, Zheng, and Keenan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’008 patent is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we institute an inter partes review” 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 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 also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’008 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Hurlbut (Ex. 1003 ¶ 33).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those claim terms that are 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., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner proffers constructions for two terms, namely, (1) “threat model components” and (2) “attack paths,” as recited, for example, in independent claim 4. Pet. 12. Petitioner submits that it defines these two terms “consistent with the ’008 patent specification and applies the plain and ordinary meaning that [the skilled artisan] would attribute to the remaining terms.” Pet. 12. “Patent Owner submits that the Board need not engage in any pre-institution claim construction of these [two] terms.” Prelim. Resp. 11. Based upon our consideration of the record at this stage of the proceeding, we conclude that it is unnecessary to interpret expressly any term in the ’008 patent claims for which we institute inter partes review. See Nidec, 868 F.3d at 1017. Nevertheless, we determine that briefing during the trial on the proper interpretation of certain claim terms may assist us in resolving issues presented in this case. In particular, we invite the parties to address the proper construction of the limitation “redefine the first threat model by including in it a second threat model associated with the component group,” as recited, for example, in independent claim 1, and to provide evidentiary support therefor (the parties should focus particularly on defining the full scope of what it means to “redefine” the first threat model and to “include” a second threat model “in” a first threat model). To the extent that a party proposes that this limitation should have its ordinary and customary meaning, we encourage the party to explicitly identify such meaning(s) and the evidentiary support therefor. In addition, the parties should consider whether Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792 (PTAB Apr. 28, 2016) (precedential) applies to limitations of the challenged claims, such as claim 1’s recital of “configuring the diagram interface to, in response to receiving one or more user inputs, add a component group to the first threat model.”” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Pet. 35–36 (emphases added) (citing Ex. 1004, 6:12–34; Ex. 1003 ¶¶ 81–84). As we understand Petitioner’s argument (and its expert’s testimony), Petitioner argues Jones “modifies,” i.e., “redefines,” a “first threat model” (level n) by “including” in it cybersecurity threats (e.g., via metadata) associated with nested components (i.e., “a second threat model”), to produce the “modified” (“redefined”) “first threat model” (level n+1). See id.; In re Bond, 910 F.2d at 832–33 (anticipation “is not an ‘ipsissimis verbis’ test”). In other words, Petitioner argues that, although Jones may not use the identical terminology as the ’008 patent, Jones nevertheless explicitly discloses limitation 1[f] to the skilled artisan, by describing modifying a first “threat” model from a level “n” model to a level “n+1” model by including therein threats associated with a particular layer of components (nested components), i.e., a second “threat” model. Based on the record before us, we find Petitioner’s arguments persuasive.” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,699,008 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Oct 20, 2023 · IPR2023-00599 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–12 under all asserted grounds: anticipation by Lee and obviousness over Lee and Chen.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The Director’s Memo provides that “[c]onsistent with Sotera Wireless, Inc.,[5] the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner has filed a stipulation, which stipulates “that, if the PTAB institutes inter partes review, Petitioner ‘will not pursue in [Apex Beam Technologies LLC v. Samsung Electronics Co., Ltd. et al., Case No. 2:22-cv-00188-JRG (E.D. Tex.) (consolidated with Apex Beam Technologies LLC v. ZTE Corporation, Case No. 2:22-cv-00031-JRG-RSP (E.D. Tex.))] the specific grounds [asserted in IPR2023-00599], or . . . any other ground . . . that was raised or could have been reasonably raised in an IPR (i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patent or printed publications).’” Ex. 1022, 1 (quoting Sotera Wireless, Inc., Paper 12 at 13–14) (alterations in original). We determine that the language of this stipulation sufficiently comports with the language of the stipulation discussed in the Director’s Memo. See Director’s Memo 3. We accordingly decline to discretionarily deny institution in view of the related district court litigation.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not read Xerox to require us to give little weight to an expert declaration solely because some or all of it is also repeated within the Petition. Rather, Xerox found a declaration was entitled to little weight where the declaration merely repeated “the conclusory assertion for which it is offered to support.” Xerox, Paper 9 at 15 (emphasis added). If declaration testimony is supported sufficiently and, in turn, supports contentions in the Petition, we do not give it little to no weight simply because it is repeated in the Petition. Patent Owner does not point to any specific statements in Dr. Kakaes’s declaration and explain specifically why Patent Owner believes they are conclusory, and thus, Patent Owner has not sufficiently explained the applicability of Xerox here. See, e.g., Prelim. Resp. 13 n.1, 18 n.2, 21 n.3, 23 n.4, 25 n.5, 28 n.6, 29 n.7, 47–48. Moreover, we can assess the weight to be given to Dr. Kakaes’s declaration testimony, including based on its corresponding factual support, if any, and afford such testimony an appropriate weight. Accordingly, at this stage, we decline Patent Owner’s invitation to assign no weight to all of Dr. Kakaes’s declaration testimony.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art, except we decline to adopt the recitals of “at least” as that language is vague and open-ended. Pet. 13. We also decline to adopt Petitioner’s assertion concerning “[a]dditional relevant work experience,” as it also is vague and open-ended. As adopted, we view the definition for the level of ordinary skill is consistent with the ’081 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “no terms need construction to resolve the controversy in this forum.” Pet. 11. Patent Owner argues that at this stage of the proceeding, “claim construction is not required to resolve any issues.” Prelim. Resp. 10. We determine that no express constructions are needed for us to render our Decision on Institution. 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. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). Rather, at this stage of the proceeding, we apply the plain and ordinary meaning of the claim terms.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,912,081 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Institution deniedPTAB · Oct 19, 2023 · IPR2023-00878 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Grunenwald anticipates claim 1 or that the asserted combinations cure its failure to disclose contacting chromatin.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review requires that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Determining whether to institute has been delegated to the Board. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to any claim. See 35 U.S.C. § 314(a). Accordingly, we deny the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner proposes constructions of four limitations: “insertional enzyme complex,” “nucleic acid insert element,” “adapter sequence,” and “barcode sequence.” Pet. 21–25. Patent Owner, for its part, states that “[n]o terms require construction for considering institution.” Prelim. Resp. 16. We determine that none of the four limitations identified by Petitioner requires an express construction for purposes of this Decision. It bears mentioning, however, that the ’995 patent states that “[t]he insertional enzyme can be a transposase.” Ex. 1001, 3:41–42. There is no dispute that Grunenwald discloses the use of a transposase and, thus, an insertional enzyme complex. See Pet. 27 (citing Ex. 1003 ¶¶98, 161); Prelim. Resp. 34 (“Grunenwald defines ‘transposase’ to include any transposase, thus including those that comprise antibodies that are specific to a protein that is part of said chromatin.” (citing Ex. 1003 ¶93)).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“express construction of the term “chromatin.” The ’995 patent itself provides a definition, stating: The term “chromatin,” as used herein, refers to a complex of molecules including proteins and polynucleotides (e.g. DNA, RNA), as found in a nucleus of a eukaryotic cell. Chromatin is composed in part of histone proteins that form nucleosomes, genomic DNA, and other DNA binding proteins (e.g., transcription factors) that are generally bound to the genomic DNA. Ex. 1001, 12:54–60. This is the meaning that we apply in this Decision.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“B. Ground 1 Petitioner asserts that Grunenwald anticipates independent claim 1, as well some of the dependent claims. Pet. 25. “Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference.” In re Skvorecz, 580 F.3d 1262, 1266 (Fed. Cir. 2009). Patent Owner argues that Grunenwald fails to anticipate claim 1, which failure undermines the entire Petition. Prelim. Resp. 16–17 (“Petitioner has failed to show that Grunenwald discloses each and every limitation as arranged in the claims, including, e.g., ‘contacting chromatin of a genome region,’ and thus cannot meet its burden as to any claim in Ground 1.” (quoting claim 1)), 38 (“Petitioner cannot meet its burden as to Grounds 2–8 for the same reasons Petitioner cannot meet its burden for Ground 1.”). Accordingly, we turn first to claim 1.” slip op. at 7
Claim construction§ 102 anticipationPatents in suitUS 10,150,995 - PTAB · Oct 6, 2023 · IPR2023-00656 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR on claims 1–20 and all petition grounds, finding a reasonable likelihood that Keenan anticipates the claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’366 patent is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we institute an inter partes review as to all Challenged Claims of the ’366 patent on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time of the earliest effective filing date of the ’366 patent: would have had a Bachelor’s degree in computer engineering, computer science, mathematics, or a similar discipline, with at least three years of relevant industry or research experience, including experience in software development and designing or implementing threat models. Additional work or research” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are 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., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner proffers constructions for four terms, namely, (1) “third party software application,” (2) “third party diagram components,” (3) “visual representations of the threat model components,” and (4) “threat model components,” each as recited, for example, in independent claim 1. Pet. 12–14. Petitioner submits “[Patent Owner] defined [these] claim terms in the specification and file history,” “Petitioner is applying those definitions in this petition,” and “[f]or all other claim terms, Petitioner applies the plain and ordinary meaning that a [skilled artisan] would attribute to those terms.” Pet. 12. “Patent Owner submits that the Board need not engage in any pre-institution claim construction of these [four] terms.” Prelim. Resp. 11. Based upon our consideration of the record at this stage of the proceeding, we conclude that it is unnecessary to interpret expressly any term in the ’366 patent claims for which we institute inter partes review. See Nidec, 868 F.3d at 1017. Nevertheless, we determine that briefing during the trial on the proper interpretation of certain claim terms may assist us in resolving issues presented in this case. In particular, we invite the parties to address the proper construction of “threats,” “threat model components,” “visual representations of the threat model components,” and “mapping files,” and the evidentiary support therefor. To the extent that a party proposes that such a term should have its ordinary and customary meaning, we encourage the party to explicitly identify such meaning(s) and the evidentiary support therefor.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“does not disclose the “threats” described and claimed in the ’366 patent. See Prelim. Resp. 5–7, 11–19. Based on the record before us at this stage of the proceeding, we disagree and preliminarily find Patent Owner’s arguments unavailing, as further discussed below. In particular, Patent Owner concedes that “Keenan discloses that color can ‘represent different types of risk (e.g., cyber, environmental, accidental, etc.),’” where Keenan displays such colors associated with objects in a topology. Prelim. Resp. 17 (citing Ex. 1004, 16:40–51) (emphases added); see Ex. 1004, Fig. 7. But Patent Owner then merely concludes, without citing any factual support, that “use of a color identifying the generic nature of a risk still fails to disclose any threats associated with the risk.” Id. at 17– 18. On the other hand, Petitioner’s expert, Mr. Hurlbut, testifies: Keenan demonstrates that its risk measurement and display includes a determination of threats where Keenan discloses a risk measurement view that uses [] color to “represent different types of risk (e.g., cyber, environmental, accidental, etc.).” [Ex. 1004], 16:40–51. [The skilled artisan] would understand that “types of risk,” as disclosed in Keenan are threats because the described examples are all types of threats (cyber, environmental, accidental). Thus, Keenan discloses threats within its risk analysis. Moreover, [the skilled artisan] would understand that risk is a function of threats exploiting vulnerabilities to obtain, damage, or destroy assets. In other words, threat modeling is used to identify risk. Ex. 1003 ¶ 79 (cited at Pet. 21–24); see id. ¶ 82 (cited at Pet. 26–28). Patent Owner disputes this testimony of Mr. Hurlbut using only attorney argument, and without telling us, for example, why Mr. Hurlbut allegedly is wrong (e.g., by explaining why specific “types” of risk do not fall within the scope of “threats” as broadly recited in claim 1, or how “risk” is not a function of “threats” in Keenan, as explained by Mr. Hurlbut). See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Moreover, although Patent Owner characterizes the “types of risk” disclosed in Keenan as identifying a “generic nature of a risk” (Prelim. Resp. 17–18 (emphasis added)), we note that “threats” is broadly recited in claim 1 with no requirement as to any level of specificity of such threats.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,713,366 - Synaffix B.V. v. Hangzhou Dac Biotech Co., Ltd.Institution deniedPTAB · Aug 22, 2023 · IPR2022-01531 · APJ Devon Zastrow Newman · IPR · Institution
Institution was denied for claims 1–17, 20–21, 24–26, and 29–34 because petitioner did not show a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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). Upon consideration of the briefing and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing on its assertion that the challenged claims are unpatentable based on the grounds advanced here. Accordingly, we deny institution of inter partes review of claims 1–17, 20–21, 24–26, and 29–34 of the ’682 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“Ex. 1018, 42–43. The Examiner found that Lees discloses NHS vinyl sulfone as a heterobifunctional linker used to attach a derivatized polysaccharide to one end and a protein to the other and found that this compound anticipated formula 55 of the Specification, which was encompassed by claim 1. Id. at 42–43.” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“For the reasons discussed above regarding claim interpretation of Y, Z, Q and T, Patent Owner has the better argument for claims 1 and 2. Specifically, Y and Z are independent groups that function without reliance this ground for claims 1 and 2 rely on sulfone to assist vinyl to enable the reaction above, Petitioner is unlikely to prevail in establishing that Morales- Sanfrutos discloses the Y or Z limitations and has therefore not established a reasonable likelihood of prevailing in showing that the disclosures of Morales-Sanfrutos in light of Straus anticipate claims 1 and 2. With regard to claims 3, 6, 24, 25, and 33 we are persuaded by Patent Owner’s argument that Petitioner’s assignment of sulfone for the Q moiety is incorrect because that group becomes complexed to HRP through a vinylsulfone mediated reaction, making a derivatized protein, e.g., HRP-11. Prelim. Resp. 48 (citing Ex. 1005, 4046). In this structure, sulfone is no longer an independent group available to be identified as Q because it has been complexed to the Cb moiety, making the Q moiety limitation not shown in the HRP-11 conjugate. Thus, Petitioner has not established a reasonable likelihood of prevailing in showing that Morales-Sanfrutos discloses the Q limitation and has therefore not established a reasonable likelihood of prevailing in showing that the disclosures of Morales-Sanfrutos in light of Straus anticipate claims 3, 6, 24, 25, and 33.17” slip op. at 28
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“d) Petitioner’s allegations of obviousness 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 the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In this section, we determine whether Petitioner shows sufficiently, for purposes of institution, that claims 1, 20, 21, and 29–31 would have been rendered obvious by Harris.” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,131,682
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.