- PTAB · May 23, 2024 · IPR2024-00215 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR of claims 1–10 on all grounds, finding a reasonable likelihood that claim 1 would be obvious over Foster and Hayhurst.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to all claims challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2
- BurdenDecided for petitioner
“The record at this stage sufficiently supports Petitioner’s argument that Foster’s receiver 430 stores content that it receives. Pet. 65 (citing Ex. 1006 ¶¶ 4, 8, Fig. 8). According to Dr. Rubin’s annotations, receiver 430 can be a personal computer (PC) or set-top box. Ex. 2003 ¶ 83 (labeling the receiver in Figure 16 as such). This is consistent with Foster. Ex. 1006 ¶¶ 49, 51 (describing PC 18 and a set-top box). Foster describes how the receiver stores encrypted content. See id. ¶¶ 8, 79. For example, Foster explains, “Once received, recipient 430 can then synchronously store the encrypted content.” Id. ¶ 79, cited in Pet. 68–69. According to Foster, “The encrypted title key is then attached to the content packet and the header for synchronized transmission to, or storage by a receiver.” Id. ¶ 8 (emphasis added), quoted in Pet. 65. For at least the reason that Foster teaches a PC or at this stage that Foster’s data set is “for storage.” See Pet. 65–66, 80–82. At this stage, we credit Dr. Bhattacharjee’s testimony (Ex. 1003 ¶¶ 221–222) over Dr. Rubin’s (Ex. 2003 ¶¶ 108–109) because it is better supported by the current record. In particular, we see no support for Dr. Rubin’s testimony that Foster’s receiver cannot provide long-term storage or is unlike the ’854 patent’s storage devices. See Ex. 2003 ¶¶ 108– 109. For instance, we see little difference between Foster’s PC 18 and the magnetic or optical disk, USB key drive, or other devices that Dr. Rubin claims are long-term storage devices. Ex. 1001, 67:16–19, cited in Ex. 2003 ¶¶ 108–109. PC 18 has “data storage.” Ex. 1006 ¶ 75. Foster explains “optical media” or “magnetic media” are types of data storage. Id. Foster also states that the receiver stores data. Id. ¶ 8. In view of these parts of Foster, we credit Dr. Bhattacharjee’s testimony that Foster’s receiver has data storage (Ex. 1003 ¶¶ 221–222) over Dr. Rubin’s testimony that Foster’s devices are unlike those described in the ’854 patent (Ex. 2003 ¶¶ 108–109), at this stage.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use.” Pet. 6 (citing Ex. 10032 ¶¶ 37–38). Petitioner also asserts that a “higher level of education may substitute for less experience.” Id. Patent Owner does not respond to Petitioner’s assertions or argue for a definition of a person of ordinary skill in the art. See Prelim. Resp. Here, we apply the skill level proposed by Petitioner. Pet. 6.” slip op. at 4
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“key (the encryption operation Petitioner contends would be reordered/repeated).” Id. at 16. Dr. Rubin explains why reordering the steps in the way that Petitioner proposes would have been pointless: Indeed, a [person of ordinary skill in the art] would recognize that encryption with the alleged external key would not be an appropriate step to repeat or reorder because it is parsed along with the data set into portions and those portions are then encrypted. Consequently, encrypting the shares with the alleged external key (i.e., the session master key) would render the splitting and encryption of the alleged external key pointless. Ex. 2003 ¶¶ 52–53. Dr. Bhattacharjee does not fully explain why the key that is parsed and encrypted is then used to further secure the data. Ex. 1003 ¶¶ 110–111. Thus, we credit Dr. Rubin’s testimony (Ex. 2003 ¶¶ 52–53) over Dr. Bhattacharjee’s (Ex. 1003 ¶¶ 110–111) on this issue. For this additional reason, Petitioner has not shown that Orsini discloses the Different-Order Version. See Pet. 33–35.” slip op. at 29
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 10,452,854 - PTAB · May 23, 2024 · IPR2024-00214 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR on claims 1–10 and all petition grounds, finding a reasonable likelihood of success on Foster grounds for claims 1–3, 7, and 8 and claims 4–6, 9, and 10.
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) (2023). 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 ’609 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 ’609 patent on all grounds raised in the Petition.” 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 may be 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 ’609 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 Dr. Bhattacharjee (Ex. 1003 ¶¶ 37–38).” slip op. at 9
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“repeated, would not necessarily indicate that the chunks, each encrypted with a separate share key, would be again encrypted using the session master key (the cryptographic operation Petitioner contends would be reordered/repeated).” Prelim. Resp. 16. Dr. Rubin explains why reordering the steps in the way that Petitioner proposes would have been “pointless:” Indeed, [the skilled artisan] would recognize that encryption with the alleged first key would not be an appropriate step to repeat or reorder because it is parsed along with the data set into portions and those portions are then encrypted. Consequently, encrypting the shares with the alleged first key (i.e., the session master key) would render the splitting and encryption of the alleged first key pointless. Ex. 2003 ¶¶ 52–53. Dr. Bhattacharjee does not fully explain why the key that is parsed and encrypted is then used to further secure the data. Ex. 1003 ¶¶ 101–105. Thus, we find Dr. Rubin’s testimony (Ex. 2003 ¶¶ 52–53) more persuasive than Dr. Bhattacharjee’s (Ex. 1003 ¶¶ 101–105) on this issue. For this additional reason, Petitioner has not shown that Orsini discloses the Different-Order Versions.” slip op. at 39
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for petitioner
“Here, however, Petitioner does not insist any construction is incorrect. Rather, Petitioner presents alternative rationales for why the claims are unpatentable, stating that the Petition demonstrates “unpatentability regardless of which proposed construction is correct.” Pet. 9. Even though some stated rationales are based on Patent Owner’s constructions in the District Court Case, the Petition complies with the rule because it explains how the Challenged Claims are to be construed under the alternative challenges. See 37 C.F.R. § 42.104(b)(3). The rule “does not require Petitioner to express its subjective agreement regarding correctness of its proffered claim constructions or to take ownership of those constructions.” Western Digital Corp. v. SPEX Techs., Inc., IPR2018-00084, Paper 14 at 11 (PTAB Apr. 25, 2018).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,068,609 - PTAB · Oct 23, 2023 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted review of claims 7–11, 13, and 19–21 on all asserted grounds, finding a reasonable likelihood of prevailing for claims 11 and 13.
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.” 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, therefore, institute inter partes review as to all of the challenged claims of the ’202 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we therefore adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- BurdenMixed
“Figure 6 of Rauhala has been annotated by Patent Owner to show that the parallel connection (outlined in red) including resistors R1, R2. R3 and switches ka, kb is outside the signal path (highlighted in yellow) through differential amplifier 61. Prelim. Resp. 38. Petitioner identifies R1, R2, R3 and switches ka and kb as the claimed variable impedance. See, e.g., Pet. 39–41. The Petition (and the supporting Baker Declaration) do not explain adequately how, under this interpretation by Petitioner and its expert, Rauhala meets the adjusting an impedance “in the signal path” limitation. See Prelim. Resp. 39–41. For the reasons given, therefore, even if we were to disagree with Patent Owner’s construction of “impedance,” we agree with Patent Owner that Petitioner fails to demonstrate sufficiently that Rauhala meets the limitation in claims 7 and 19 requiring “dynamically adjusting one or more of an impedance . . . in the [receiver] signal path.” For the reasons given, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claims 11 and 13 as anticipated by Rauhala. We further determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to claims 7 and 19 as anticipated by Rauhala.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree. Noting in the language of the claims requires that these method steps be performed by separate components, or that these method steps “provide two different channel indications at once” (Prelim. Resp. 38), only that they be performed as stated in the claim. In that respect, this case is distinguished from In re Robertson, where the Federal Circuit determined that the “third fastening means” required by the claims was not inherently disclosed by the prior art. Robertson, 169 F.3d at 745 (“The [prior art] patent does not expressly include a third fastening means for disposal of the diaper, as claim 76 requires.”). In further contrast to this case, Robertson addressed mechanical elements of a product (fasteners for disposable diaper), not steps in a process. More pertinent to our facts is the Federal Circuit’s decision in Microsoft Corporation v. Uniloc, 2017 LLC, No. 2021- 2039, 2022 WL 11531235 (Fed. Cir. Oct. 20, 2022), that addresses steps in a method claim. Reversing the Board’s determination that a petitioner had 6 See Ex. 1001, 14:5–6 (claim 7), 14:41–42 (claim 11), 15:18–19 (claim 13), and 17:28–29 (claim 19). Circuit concluded that the Board had misconstrued the claims to require separate acts: We agree with [petitioner] that the Board misconstrued the claims to require that the comparing and determining step are performed by two separate acts in a certain order. Nothing in the intrinsic record requires such a narrow construction, and neither party presented this construction to the Board. Without any such evidence, we decline to impose such a narrow claim construction. Microsoft Corp., 2022 WL 11531235, at *3 (citation and footnote omitted). We find that at this stage, Petitioner has made a sufficient showing that this limitation is met by Rauhala. Pet. 31–33; Baker Decl. ¶¶ 111–114.” slip op. at 22
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,524,202 - PTAB · Oct 23, 2023 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Institution
The Board instituted review of claims 1, 3, 4, and 8 on all asserted grounds, finding a reasonable likelihood that Rauhala anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314, which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems and solutions in the ’825 patent and prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). On balance, Petitioner’s proposal of education plus a minimum of two years of experience is a better reflection of the level of skill in the prior art. For example, Rauhala presents functional block diagrams of signal strength information. See, e.g., Ex. 1004, Figs. 1–5, ¶¶ 15, 17, 19, 21. Similarly, Masaaki’s Figure 1 shows “a circuit block diagram of a reception unit 40 of a pager” according to an embodiment of the invention. Ex. 1005, 5:3–4. The block diagram shows various components, including an antenna, amplifiers, bandpass filters, a mixer, an oscillator, and a detection circuit. Id. at 5:5–8, Fig. 1. Accordingly, we adopt Petitioner’s definition of the level of ordinary skill for purposes of this Decision. Our decision, however, would not change if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“strength indicator circuits 440 and 450, the written description unambiguously discloses that each circuit determines the cumulative signal level of the desired signal and the interfering signals. Neither circuit determines only the signal strength of the interferer signals, nor does a circuit determine only the signal strength of the desired signal. In other words, the written description does not support a limited reading of the claim language so as to require two separate circuits—one circuit for determining a a signal strength of the desired signal. Thus, based on this preliminary record, we do not construe the circuit limitation as requiring the wireless transceiver necessarily to have two circuits, one circuit for determining a signal strength of the interferer signal and a different circuit for determining a signal strength of the desired signal, because, under that reading of the claim, the only embodiment in the written description would not fall within the scope of the claim. It is well-established that “[s]uch an interpretation is rarely, if ever, correct and would require highly persuasive evidentiary support,” which is not present in this record as discussed below. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“As explained above, however, on this preliminary record, we do not interpret the circuit limitation to impose a timing requirement such that the determining has to occur at precisely the same time. Nor at this preliminary juncture do we read a precise timing requirement into the circuit limitation based on written description disclosure that the desired signal and the interferer signal are part of the received signal input spectrum. As explained above, for example, the written description describes a circuit providing a cumulative signal level corresponding to the sum of the desired and interfering signals. Ex. 1001, 6:59–67. As such, the written description describes making the determinations on two signals that are part of the received signal input spectrum. Patent Owner argues that Rauhala does not disclose “two determinations of two different signal strengths together.” Prelim. Resp. 40. We do not agree with Patent Owner on this preliminary record. Rauhala’s disclosure of providing control bits based on the comparisons of the signal strengths to respective thresholds, discussed above, also undermines Patent Owner’s argument that detector DET, which (i) provides one or the other and (ii) needs to be re-tuned to read the other signal, cannot anticipate the claim. Notably, for example, Rauhala discloses setting control bits based on comparisons of the respective signal strengths to thresholds: cM. Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the same time smaller than Sn. Otherwise, signal cA is 1. Signal cA is taken to amplifiers Al and A2. Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Ex. 1004 ¶ 17 (emphases added). Here Rauhala describes providing control signals based on the strength of both signals from the receive and neighboring channels, which undermines Patent Owner’s arguments.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,129,825 - PTAB · Aug 2, 2023 · IPR2023-00455 · APJ Daniel J Galligan · IPR · Institution
The Board instituted inter partes review of claims 1–29 on all asserted grounds, finding a reasonable likelihood of success on the Perego and JESD79-2 obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution in view of the district court litigation. Prelim. Resp. 53–56. A Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)6 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation for all claims in this proceeding, which are all of the claims of the ’215 patent. Ex. 1093; Paper 8 at 1; Paper 9 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On this record, we are sufficiently persuaded by Petitioner’s argument that a person of ordinary skill in the art would have combined the teachings of Perego and JESD79-2. As Petitioner correctly points out (Pet. 32), Perego discloses using DDR2 memory devices. Ex. 1071, 10:56–59 (“Other memory devices may be implemented on module 400, for example, Double Data Rate 2 (DDR2) DRAM devices and Synchronous DRAM (SDRAM) devices.”). On this record, we find this teaching to use DDR2 sufficiently supports Petitioner’s rationale to combine Perego with JESD79-2, which is the JEDEC DDR2 SDRAM Specification. Ex. 1064, 1 (cover page); see also Prelim. Resp. 44 (parenthetical noting that “JESD79-2 is a specification for individual DDR2 SDRAMs”). As to Patent Owner’s argument that Rambus memories lack a chip select network (Prelim. Resp. 25–26), the reference on which Patent Owner relies discloses that chip select information is still used in the particular Rambus devices described. See Ex. 1069, 11 (“[I]n the Rambus bus organization, all addresses, commands, data, and chip-select information are sent on the same bus lines.”), 12 (“[T]he example system uses a total of nine (9) lines to carry all necessary information, including addresses, commands, chip-select information, and data.”). Thus, on this record, Patent Owner’s focus on the lack of a chip select network, which is not recited in the claims of the ’215 patent, appears misplaced. We address Patent Owner’s more specific arguments below in the discussion of individual claim recitations.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Claim 21 is method claim and recites similar structure in the preamble. Petitioner cites this claim language in support of its position that a rank can have just one memory device. Pet. 28 (citing Ex. 1001, 37:32–38 (portion of claim reproduced above)). On this record, we determine that the claim language supports Petitioner’s position. Claim 1 recites “at least one first memory integrated circuit in the first rank and at least one second memory integrated circuit in the second rank.” This language is met if there is one memory integrated circuit in each rank because “at least one” includes just one. On this record, we disagree with Patent Owner’s argument that this claim language “do[es] not define the term ‘rank’” but, rather, “provide[s] context that a claimed ‘buffer’ can be, but need not be, coupled to multiple memory devices in the rank.” See Prelim. Resp. 9–10. Claim 1 recites “a buffer coupled between the at least one first memory integrated circuit and the memory bus, and between the at least one second memory integrated circuit and the memory bus,” and it further recites “enabl[ing] communication of the first data burst between the at least one first memory integrated circuit and the memory controller through the buffer” and “enabl[ing] communication of the second data burst between the at least one second memory integrated circuit and the memory controller through the buffer.” If there is only one memory device in each rank, then the buffer will only be connected to the one memory device in each rank. If two memory devices are the “at least one first memory integrated circuit in the first rank” then the buffer would be “coupled between the [two memory devices] and the memory bus.”” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,858,215 - PTAB · Aug 2, 2023 · IPR2023-00454 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–15 on all asserted grounds, finding a reasonable likelihood that Samsung would show at least one claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)6 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district 2 US 7,363,422 B2, issued Apr. 22, 2008 (Ex. 1071). 3 Joint Electron Devices Engineering Council (JEDEC) DDR2 SDRAM Specification (JESD79-2), September 2003 (Ex. 1064). 4 US 2006/0277355 A1, published Dec. 7, 2006 (Ex. 1073). 5 US 7,024,518 B2, issued Apr. 4, 2006 (Ex. 1078). 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation for all claims in this proceeding, which are all of the claims of the ’417 patent. Ex. 1093; Paper 8 at 1; Paper 9 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, 7 Chapter 31 (35 U.S.C. §§ 311–319) relates to inter partes review. IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“competent evidence” to show that “the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. Prelim. Resp. 44. We disagree. Petitioner presents detailed testimony from Dr. Wolfe explaining how Perego’s registered data transfers would have introduced delay. In particular, Dr. Wolfe, citing Perego’s disclosures of data latches and an internal clock to generate synchronizing clock signals (Ex. 1071, 12:65–13:5, 17:61–63, Fig. C), provides the following testimony: A Skilled Artisan would have understood from these disclosures that Perego’s latching of the data signals and the use of internal synchronizing clock signals adds a predetermined amount of time delay for each data transfer through the buffer because the output of the latch needs to be in synchronization with an internal clock. A Skilled Artisan would have understood that such registering of the data signals would require the addition of a fixed time delay, such as one clock cycle, for each registered data transfer through the circuitry with respect to the actual operational CAS latency of each of the plurality of memory integrated circuits. Ex. 1003 ¶ 360. Dr. Wolfe further explains how Perego’s “latching delays in the buffer device of Perego increase the overall CAS latency of the memory module compared to the CAS latency of the memory devices.” Ex. 1003 ¶ 362 (citing Ex. 1071, 12:65–13:5, 18:65–19:3, Figs. 5B, 5C). On this record, we find Petitioner’s evidence sufficiently persuasive to show that Perego teaches that “data transfers through the circuitry are registered for an amount of time delay such that the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. We are sufficiently persuaded by Petitioner’s contentions for the” slip op. at 33
- Skill levelSkill level board ownOther
“To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,093,417 - Bright Data Ltd. v. Oxylabs, UabInstitutedPTAB · Jul 18, 2023 · IPR2023-00186 · APJ Iftikhar Ahmed · IPR · Institution
Instituted IPR of claims 1–20 on all asserted grounds; the Board found a reasonable likelihood of success on at least one claim and compelling merits for Scoda anticipation of claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Office (“USPTO”) issued a Memorandum7 titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Memo”), which states, among other things, that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memo 2. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. “This clarification strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Id. at 5. For the reasons that follow, although we find that Fintiv factors 1–5 weigh in favor of denying institution in this case, we determine that the Petition presents compelling merits as to the challenged claims, and thus, we decline to exercise our discretion to deny the Petition.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the parties’ briefing and the evidence of record, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’162 patent. Accordingly, we institute an inter partes review as to the challenged claims on the grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention of the ’091 patent would have had master’s degree or higher in the field of electrical engineering, computer engineering, or computer science, or would have had a bachelor’s degree in the same fields and two or more years of experience in internet communications. Pet. 15–16 (citing Ex. 1007 ¶¶ 30–31). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’091 patent and the prior art of record and is supported by the testimony of Dr. Williams.” slip op. at 17
- Expert testimonyPetitioner expert creditedDecided for petitioner
“recited in the Petition, does cite throughout to the asserted art and provides support for its assertions that the art discloses the claim language. We, therefore, determine Dr. Williams’s declaration is not without evidentiary support. See 37 C.F.R. § 42.63 (“Evidence consists of affidavits, declarations, transcripts of deposition, documents, and things.”). At this stage, we give weight to Dr. Williams’s testimony, which is the only testimony we have before us in this proceeding relating to the asserted art and how the art discloses the claim limitations. In contrast to the situation presented here, neither the petition nor the declarant in Xerox provided sufficient evidence to support the asserted positions; rather, the petition merely cited to the declaration which merely repeated the unsupported, conclusory assertions set forth in the petition. See Xerox Corp., IPR2022-00624, Paper 12 at 5 (stating the cited declaration testimony is conclusory and unsupported and adds little to the conclusory assertion for which it is offered to support); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”). That is not the case here. As noted above, however, the ultimate weight of Dr. Williams’ testimony will be determined in light of the full record adduced during trial.” slip op. at 28
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,516,091 - PTAB · Jan 12, 2023 · IPR2022-01090 · APJ Garth D Baer · IPR · Institution
The Board instituted inter partes review of claims 1–42 and 46–66 on all asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the present record, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that claims 1–42 and 46–66 would have been obvious over the asserted prior art. See id. at 33–96. Patent Owner raises several objections to Petitioner’s obviousness showing. We address those issues below.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“§ 325(d) because one of the asserted references, Nishitani, “was substantively considered by the Examiner during Supplemental Examination of the ʼ436 Patent.” PO Prelim. Resp. 7–8. In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). For the reasons given below, we are not persuaded to exercise our discretion to deny the Petition based on § 325(d).” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“The main concern motivating the General Plastic framework is “the potential for abuse of the review process by repeated attacks on patents” by a petitioner who files “[m]ultiple, staggered petitions challenging the same patent and same claims . . . . using our decisions as a roadmap, until a ground is found that results in the grant of review.” General Plastic, Paper 19 at 17. Here, the potential for abuse is minimal because this is the first time this petitioner has challenged the ’436 patent, and Patent Owner does not allege any connection or relationship between this Petitioner and the previous petitioners that might warrant exercising our discretion to deny institution. PO Prelim Resp. 14–15; Sur-reply 8–9; compare Valve Corp. v. Elec. Scripting Prods. Inc., IPR2019-00062, Paper 11 at 9–10 (Apr. 2, 2019) (precedential) (exercising discretion to deny institution based on a different petitioner’s earlier-filed petition where the different petitioners were co- defendants in a related district-court litigation, and where both petitioners were accused of infringing the challenged patent based on the same product incorporating technology licensed from petitioner Valve). In addition, it is reasonable that Petitioner filed its own Petition after the three previous petitions filed by unrelated parties given that “the present litigation dispute between Petitioner and Patent Owner did not begin until March 2021—well after the last of the three prior IPR petitions was filed.” Pet. Reply 10. Thus, this subsequent challenge against the ’436 patent appears to be a result of Patent Owner’s litigation activity, rather than Petitioner’s abuse of the review process. We find the circumstances in this case do not warrant denying the Petition under § 314(a).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionOther
“required in claims 1 and 18 “mean[s] that the two images are ‘captured independently of each other and without metadata (or other information) relating angles of cameras that captured the images.’” Pet. 5 (quoting Ex. 1004 ¶ 20). In addition to its expert, Petitioner cites as support the patent’s prosecution history, in which Patent Owner asserted this definition. Id. at 5–6 (citing Ex. 1003, 167–169; Ex.1004 ¶ 21). Patent Owner does not dispute Petitioner’s proposed construction in its Preliminary Response. Based on the present record, we agree with Petitioner that images that are not a stereoscopic pair means that the two images are captured independently of each other and without metadata (or other information) relating angles of cameras that captured the images.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,078,436 - PTAB · Dec 14, 2022 · IPR2022-01009 · APJ Russell E Cass · IPR · Institution
The Board instituted review of claims 1, 2, 7, 8, 21, 22, 24, 25, 27, and 29 on all petition grounds, finding a reasonable likelihood of success on the Littleworth-Linder-Middlebrook obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined 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 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). 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). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Patent Owner has not persuaded us that we should exercise our discretion to deny institution of trial. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“when there is an early trial date in related litigation as part of assessing all relevant circumstances, including the merits, to balance considerations such as system efficiency, fairness, and patent quality. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv Order”); NHK Spring Co. v. Intri-Plex Technologies, Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential). The Board evaluates six factors when making this assessment. See Fintiv Order, at 5–6. Further, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). Petitioner proposes constructions for two terms, “pitch” and “oblique perspective view.” 1. “Pitch” Petitioner argues that the term “pitch” should be construed to mean either “pitch” or “slope.” Pet. 8. Petitioner asserts that, during prosecution, the applicant stated that “prior versions of the claims ‘use[d] the word “pitch” while other places use the word “slope” and that ‘[t]hese words have the same meaning in the context of these claims, however to avoid confusion, the term “slope” [was] removed and replaced with the word “pitch” throughout to maintain consistency.’” Pet. 8 (citing Ex. 1002, 76– 77). Petitioner further argues that its construction is “supported by the ’961 patent itself which treats the terms interchangeably.” Id. (citing Ex. 1001, 1:52–67, 3:11–19, 4:19–30, 6:5–17, claims 1, 10, 16, 21–22, 24). Patent Owner does not dispute Petitioner’s proposed construction of “pitch” in its Preliminary Response. See Prelim. Resp. Based on the present record, we agree with Petitioner that “pitch” should be construed to encompass “pitch” and “slope.”” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“At the institution stage, the relevant issue is whether the record includes “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, Paper 29 at 13. As Hulu explains, 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.” Id. Hulu additionally observes that, after institution, certain limited opportunities are available for a petitioner to present new evidence in support of its position, including in a motion to file supplemental information under 37 C.F.R. § 42.123. Hulu at 14–16. Based on the present record, we find that there is a reasonable likelihood that Littleworth was publicly accessible before the critical date of the ’961 patent. Petitioner introduces the testimony of Ms. Munford that “I have reviewed Exhibit NEARMAP-1005, “Three-Dimensional Mapping and As-Built Computer Modelling by Analytical Photogrammetry” by R.M Littleworth, D.M. Stirling and J.H. Chandler as published in International Archives of Photogrammetry and Remote Sensing: ISPRS 17th Congress, Washington, D.C., 1992, Volume B5.” Ex. 1019 ¶ 6. This statement suggests that Ms. Munford reviewed information indicating that Exhibit NEARMAP-1005 was published in the International Archives of Photogrammetry and Remote Sensing: ISPRS 17th Congress, Washington, D.C., 1992, Volume B5, and is sufficient for purposes of institution. As for Patent Owner’s argument that the 008 field does not show the date when Littleworth was cataloged by the Rochester Institute of Technology library, Petitioner introduces testimony from Ms. Munford that “the 008 field of the MARC record is reserved for denoting the date of creation of the library record itself.” Ex. 1019 ¶ 4. Ms. Munford further testifies that because the date of creation “typically occurs during the process of preparing materials for public access, it is my experience that an item’s MARC record indicates the date of an item’s public availability.” Id. Additionally, Ms. Munford states that because the 008 field “is the only date reflecting the inclusion of said materials within the library’s collection, it is my experience that an item’s 008 field accurately indicates the date of an item’s public availability.” Id. ¶ 5. Patent Owner does not introduce any expert testimony to the contrary, but rather relies on attorney argument about the nature of the 008 and 040 fields of a MARC record. Prelim. Resp. 38– 42. Based on the present record, we determine that the testimony of Ms. Munford provides sufficient evidence for purposes of institution that the 008 field of the MARC record for Littleworth indicates the date that Littleworth was cataloged and made publicly available.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,670,961 - Google LLC v. Parus Holdings, Inc.InstitutedPTAB · Nov 7, 2022 · IPR2022-00805 · APJ Patrick M Boucher · IPR · Institution
The Board instituted IPR on claims 1–26, finding a reasonable likelihood of prevailing on the Wise–Dasan obviousness grounds and the Wise–Dasan–Uppaluru ground for claim 26.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant the Petition and institute an inter partes review. The Board has not made a final determination regarding the patentability of any claim.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“testimony—“throughout the Petition”—for the understanding of a person of ordinary skill in the art as “baseless” because “the expert declaration does nothing more than repeat the unsupported attorney argument in the Petition.” Prelim. Resp. 28. Although we agree with Patent Owner’s general characterization that Mr. Lipoff largely repeats most of the Petition verbatim and that such testimony is of less probative value than more elaborative testimony, we disagree with Patent Owner’s implication that we should therefore summarily discount Mr. Lipoff’s testimony. See id. (“This type of copy-and-paste analysis has no probative value and is therefore unhelpful.”).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 6–7. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Mr. Lipoff supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1002 ¶ 77. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Mr. Lipoff, we adopt it for purposes of this Decision. 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 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,769,314
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.