- PTAB · Dec 18, 2024 · IPR2024-00981 · APJ Georgianna W Braden · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood of prevailing on the Kleve-based obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to determine whether to institute review. Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Therefore, pursuant to § 314, we institute an inter partes review of claims 1–20 in the ’188 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Patent Owner that Examiner’s notation indicates that Zaid was considered. We do not agree, however, with Patent Owner’s position regarding Petitioner’s challenges based on Kleve. The challenges over Kleve alone or in combination with Sekiyama, Mottla, and/or Patenaude counsel us not to discretionarily deny institution. Patent Owner does not dispute that Kleve, Sekiyama, Mottla, and/or Patenaude were not before the Office. See Prelim. Resp. 15–24; Prelim. Sur-reply 5. Although Patent Owner characterizes the Petition’s challenges based on Kleve as an “attempt to end-run Section 325(d) by including additional grounds that lack merit” (Prelim. Resp. 23–24), we disagree. Rather, explained in detail below, we are persuaded by Petitioner’s challenges based on Kleve and it is the reason for institution. Accordingly, at this stage of the proceeding, Petitioner’s challenges based on Zaid are not relevant. As such, we determine any analysis under Advanced Bionics is inapplicable, and we do not exercise our discretion under § 325(d) to deny institution. b. Advanced Bionics Prong Two: whether “the Office erred in a manner material to the patentability of the challenged claims” Because the Board is persuaded to instituted based on challenges not involving Zaid, , we will not consider the second part of the Advanced Bionics framework.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We agree with Patent Owner that the language in Petitioner’s stipulation does not eliminate completely any overlap with district court invalidity arguments. Petitioner’s stipulation allows Petitioner to use any prior art reference that is not relied on in the Petition. This may not fully address “concerns of inefficiency and the possibility of conflicting decisions.” See Fintiv, Paper 11 at 12. Nonetheless, Petitioner’s stipulation does decrease the overlap in issues and mitigates to a great degree the concerns regarding duplicative efforts and potentially conflicting decisions. Additionally, we agree with Petitioner that the fact that the Petition challenges claims that are not asserted in the litigation weighs marginally in its favor. Based on the foregoing discussion, we determine that factor four weighs against discretionary denial.” slip op. at 22
- BurdenInstituted
“teaches, or at least suggests, that the user’s “request includes a condition of use of the vehicle as set by the user via the user account” because we are persuaded that the distribution of Kleve’s virtual e-key includes a rental period restriction. Specifically, we are persuaded by the Petition’s reliance on Kleve’s express disclosure that “terms and conditions for the rental period” are agreed to before the virtual key is generated. See Pet. 15 (quoting Ex. 1004 ¶ 38). We preliminarily agree with Petitioner that Kleve describes an e-key that is only operable during a rental period because Kleve discloses “[t]he virtual key may also be sent to the vehicle configuring the VCS to enable the keyless drive system for the appropriate Temporary User during a given rental period.” Ex. 1004 ¶ 39; see Pet. 16. We note Patent Owner’s citations to Kleve’s Figures 2 and 5 that indicate control restrictions are added after the distribution of a virtual key. At this stage of the proceeding, however, based on the disclosure of Kleve we are persuaded the rental period would be included as a restriction when the virtual key is created at step 206 of Figure 2 prior to the distribution of the virtual key at 210. See Ex. 1004 ¶¶ 38–39. At this stage, we credit the testimony of Dr. Almeroth, who opines that Kleve discloses that certain restrictions are sent with the request to generate a virtual key. Ex. 1003 ¶¶ 118–123. Specifically, Dr. Almeroth testifies that Kleve discloses that the virtual key “enable[s] the keyless drive system for the appropriate Temporary User during a given rental period.” restrictions were sent with the request so that the virtual key could be associated with said restrictions.” Id. (citing Ex. 1004 ¶¶ 39, 68 (“Once the rental period has expired the virtual key may be reset and cleared from the VCS.”)). Dr. Almeroth further testifies that the virtual key in Kleve is always generated after the rental agreement. Id. (citing Ex. 1004 ¶¶ 39, 68 (“[O]nce the Temporary User selects the vehicle, pays the appropriate amount and signs a consent agreement, then the system may generate a virtual key to distribute to the Temporary User and VCS.”)). Thus, after review of the arguments and evidence, we find that Petitioner has provided adequate explanation and supporting evidence that Kleve teaches or suggests the challenged claim limitation.” slip op. at 40
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,365,188 - PTAB · Oct 22, 2024 · IPR2024-00786 · APJ Frances L Ippolito · IPR · Institution
The Board instituted IPR of claims 10–20 on all petitioned grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented, we conclude there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 10–20 of the ’268 patent as unpatentable under the challenges presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review as to these claims of the ’268 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Nonetheless, Petitioner’s stipulation mitigates to a great degree the concerns regarding duplicative efforts and potentially conflicting decisions. Thus, we determine that the fourth Fintiv factor weighs against discretionary denial of institution.” slip op. at 48
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). The Federal Circuit has laid out two separate tests to determine whether a reference is analogous art to the claimed invention, i.e., whether one of ordinary skill in the art would even look to the teachings of that reference. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). They are: “(1) whether the art is from the same field of [the inventor’s] endeavor” and “(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id.; see also In re Klein, 647 F.3d at 1348.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“recognizing the heterogeneity of vehicles, one would have been motivated to determine applicable settings (e.g., command codes) that are compatible with settings that are settable in the selected vehicle but would avoid determining applicable settings that are incompatible with settings that are settable in the selected vehicle, ensuring that Xiao’s server 118 does not attempt to command vehicles to do things they cannot do, potentially resulting in unexpected and/or undesired vehicle configurations or errors. Pet. 49; Ex. 1009 ¶ 191. Petitioner adds that “[a]voiding such undesirable effects would be a predictable result of implementing Hayashi’s known method of determining compatibility.” Id. For the purposes of institution, Petitioner’s arguments and Dr. Almeroth’s testimony are better supported by the Xiao and Hayashi. Nevertheless, the parties are encouraged to further develop the record on this issue after institution. After review of the arguments and evidence currently of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that Xiao in combination with Hayashi renders independent claim 10 obvious.” slip op. at 40
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,171,268 - PTAB · Apr 25, 2024 · IPR2024-00146 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1, 3–5, 7–11, 13–20, and 22–27 on all grounds, finding a reasonable likelihood of success on the obviousness grounds.
RulingsInstitution decision- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Our inquiry begins and ends with the first test pertaining to the field of the endeavor. Patent Owner is correct that the ’555 patent is in the field of video streaming over the internet with shifting of streaming content based on network conditions. See Ex. 1001, 1:31–34. Similarly, Ogdon discloses shifting presentation content that is transmitted over the internet based on network conditions. See, e.g., Ex. 1004, 1:9–15. The only potential discrepancy appears to be whether Ogdon’s disclosed presentation content can include streaming video. And Ogdon discloses an example where a presentation version may include “real time or animated video.” Id. at 2:61– 66; see also infra § II.D.3.a (discussing Ogdon’s disclosure of video presentations). We find that Ogdon’s disclosure of transmitting real-time video as part of a presentation is the same as video streaming. Thus, we conclude that Ogdon is analogous art because it is in the same field of endeavor as the ’555 patent. slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“reasonable likelihood of prevailing in showing that an ordinarily skilled artisan would have been motivated to combine Ogdon and Allen to yield this limitation. Ogdon teaches different quality versions of a presentation that may include video (see, e.g., Ex. 1004, 2:8–10, 2:30–66, 13:47–49, 22:44– 47, 24:55), and Allen expressly teaches encoding the same content at bitrates of 56 kbps, 300 kbps, and 600 kbps (see, e.g., Ex. 1005, 12:1–5). Based on these teachings, Petitioner shows sufficiently, on this record, that it would have been obvious to encode streaming video into low, medium, and high quality streams. See, e.g., Ex. 1003 ¶¶ 68–70. We also are sufficiently persuaded on this record that an ordinarily skilled artisan would have combined Allen with Ogdon to enable streaming video presentations for a variety of different available bandwidths. See, e.g., Ex. 1003 ¶ 70; Ex. 1004, code (57). In particular, Ogdon’s teaching of retrieving alternatively sized presentations based on transmission data rates supports Petitioner’s proposed combination with Allen’s teaching of encoding video at different bitrates. See Ex. 1004, code (57) (stating that a greater-sized presentation for a “higher transmission rate” has “corresponding enhanced quality of presentation” compared to a reduced-sized version for a “low transmission data rate”), 22:44–47 (stating that “as the expected amount of time for retrieving one or more presentation elements lengthens, . . . better presentation quality presentation elements may be retrieved (e.g., the presentation quality may be enhanced from limited or no animation to full animation)”). And Petitioner establishes sufficiently that an ordinarily skilled artisan reasonably would have expected success in making the combination, particularly given that Ogdon already contemplates alternative presentations for different transmission rates. See, e.g., Ex. 1003 ¶¶ 68, 70; Ex. 1004, code (57). Patent Owner’s arguments are directed to Ogdon alone and do not account for Petitioner’s proposed modification based on Allen.3 Such arguments do not show nonobviousness where Petitioner’s obviousness ground is based on a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Furthermore, to the extent Patent Owner argues that an ordinarily skilled artisan would not have been motivated to modify Ogdon as proposed, it fails to sufficiently explain this contention. For example, we do not read Ogdon to indicate that its presentation versions must be wholly different types of presentation materials, i.e., presentations in different languages or presentations tailored for different audiences. We also do not agree with Patent Owner (Prelim. Resp. 20–22) that Ogdon fails to teach or suggest video streaming for the same reasons discussed above.” slip op. at 21
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Based on the present record, we find that the secondary considerations findings from the ITC Investigation do not undermine the sufficiency of Petitioner’s obviousness showing at this stage.5 We note that Patent Owner “bears the burden of production with respect to evidence of secondary considerations of nonobviousness.” ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1373 (Fed. Cir. 2018). At this stage, Patent Owner merely references the findings of the ITC rather than adducing evidence of objective indica of nonobviousness in the first instance and attempting to establish a nexus to the invention of the ’555 patent. Further, Petitioner has adduced at least some evidence that the allegedly unique features of the Move Media Player were known in Ogdon, which tends to undermine the ITC’s nexus analysis. See, e.g., Ex. 1004, 14:46–49, 22:48–63. We also disagree with Patent 5 Patent Owner also argues that Dr. Houh’s testimony is unreliable because he failed to consider evidence of secondary considerations from the ITC Investigation. Prelim. Resp. 42–43. We decline to discount Dr. Houh’s testimony on this basis. Regardless of whether Dr. Houh addressed secondary considerations, we find his testimony relevant at this stage to our consideration of (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; and (3) the level of skill in the art. See Graham, 383 U.S. at 17–18. Owner (Prelim. Resp. 41–42) that Ogdon does not disclose streaming video for the same reasons mentioned above. See supra §§ II.D.1, II.D.3.a. For these reasons, we find that the evidence of secondary considerations in the present record does not undermine Petitioner’s showing for purposes of institution. We also decline to exercise our discretion to deny institution based on Petitioner’s alleged failure to address secondary considerations. Patent Owner will have the opportunity at trial to produce evidence related to secondary considerations of nonobviousness.” slip op. at 30
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Claim 18 recites, inter alia, “at least one storage device configured to store live event video, the live event video encoded at a plurality of different bit rates creating a plurality of streams including at least a low quality stream and a high quality stream.” Ex. 1001, 20:45–49. Claim 18 additionally recites that “the low quality stream and the high quality stream each encod[e] the same portion of the live event video.” Id. at 20:50–53. Petitioner cites Ogdon’s discussion of storing different versions of a presentation. See Pet. 17–19. Patent Owner argues that Ogdon fails to teach multiple copies of the same video encoded at different bitrates, as required by the claim. Prelim. Resp. 16 (citing Ex. 2001 ¶ 60). Having reviewed the parties’ arguments and the evidence of record, we determine that Petitioner has not sufficiently shown that Ogdon alone discloses storing the same portion of live event video as a low quality stream and a high quality stream. Although we preliminarily agree that Ogdon teaches the use of video as a version of a presentation, we do not agree that Ogdon alone discloses storing multiple copies of the same video. Specifically, Ogdon describes storing different versions of a presentation, rather than multiple copies of the same video.9 See Ex. 1004, code (57), 2:30–66, 13:47–49, 22:44–47, 24:55, claim 9. For these reasons, Petitioner does not show that there is a reasonable likelihood that it would prevail in establishing that Ogdon discloses claim 18. Petitioner’s analysis for claim 19, which depends from claim 18, is likewise deficient.” slip op. at 39
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,469,555 - PTAB · Apr 16, 2024 · IPR2024-00044 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1, 3–12, 14–20, 22–25, and 27–29 on all petitioned grounds, finding a reasonable likelihood of success on obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“i. Conclusion Regarding Claim 1 Petitioner has shown sufficiently at this juncture that the combination of Ogdon and Allen teaches all limitations of claim 1. Petitioner also has put forth a sufficient rationale for combining Allen with Ogdon with a reasonable expectation of success. Based on the present record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over the combination of Ogdon and Allen.” slip op. at 31
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“must consider “whether the same or substantially the same art previously was presented to the Office.” Advanced Bionics, Paper 6 at 8. Although we agree with Petitioner (Pet. 63–64) that Ogdon was not cited during prosecution, we still must consider whether Ogdon is substantially the same as Carmel. We determine that Ogdon is not substantially the same as Carmel because there are differences between them material to the way the Office previously considered the art. See Nokia of Am. Corp. v. Soto, IPR2023-00680, Paper 18 at 6 (Vidal Mar. 28, 2024) (“[P]rior art references are not ‘substantially the same’ when there are differences between them that are material to the Office’s prior consideration of the art.” (citing Wolfspeed, Inc. v. Trustees of Purdue University, IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023)). Both parties agree that the Examiner distinguished Carmel during prosecution because it did not teach streamlets of the same duration. Pet. 10–11 (citing Ex. 1002, 1270–71); Prelim. Resp. 37 (citing Ex. 1002, 1270–73). In contrast, Petitioner cites Ogdon in the Petition for teaching, inter alia, segments that have “approximately the same presentation duration.” See, e.g., Pet. 27 (quoting Ex. 1004, 2:49–55). For the same reasons discussed above (see supra § II.D.3.f), and based on the present record, we disagree with Patent Owner (Prelim. Resp. 38) that this disclosure does not teach streamlets of the same length. As such, we find that Petitioner applies Ogdon in a manner that is distinguishable from the way Carmel was understood by the Examiner during prosecution of the ’138 patent. Thus, we find that the same or substantially the same art or arguments were not previously presented, so we need not proceed past the first stage of the Advanced Bionics framework with respect to Ogdon. Advanced Bionics, Paper 6 at 8.” slip op. at 41
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Our inquiry begins and ends with the first test pertaining to the field of the endeavor. Patent Owner is correct that the ’138 patent is in the field of video streaming over the internet with shifting of streaming content based on network conditions. See Ex. 1001, 1:31–34. Similarly, Ogdon discloses shifting presentation content that is transmitted over the internet based on network conditions. See, e.g., Ex. 1004, 1:9–15. The only potential discrepancy appears to be whether Ogdon’s disclosed presentation content can include streaming video. And Ogdon discloses an example where a presentation version may include “real time or animated video.” Id. at 2:61– 66; see also infra § II.D.3.a (discussing Ogdon’s disclosure of video presentations). We find that Ogdon’s disclosure of transmitting real-time video as part of a presentation is the same as video streaming. Thus, we conclude that Ogdon is analogous art because it is in the same field of endeavor as the ’138 patent. For purposes of this Decision, we determine that Ogdon qualifies as prior art under 35 U.S.C. § 102(b) because Ogdon’s issue date of December 12, 2000, is more than one year before the earliest effective filing date of the challenged claims, which is April 30, 2004. Ex. 1001, code (60); Ex. 1004, code (45). slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“reasonable likelihood of prevailing in showing that an ordinarily skilled artisan would have been motivated to combine Ogdon and Allen to yield this limitation. Ogdon teaches different quality versions of a presentation that may include video (see, e.g., Ex. 1004, 2:8–10, 2:30–66, 13:47–49, 22:44– 47, 24:55), and Allen expressly teaches encoding the same content at bitrates of 56 kbps, 300 kbps, and 600 kbps (see, e.g., Ex. 1005, 12:1–5). Based on these teachings, Petitioner shows sufficiently, on this record, that it would have been obvious to encode streaming video into low, medium, and high quality streams. See, e.g., Ex. 1003 ¶¶ 65–67. We also are sufficiently persuaded on this record that an ordinarily skilled artisan would have combined Allen with Ogdon to enable streaming video presentations for a variety of different available bandwidths. See, e.g., Ex. 1003 ¶ 67; Ex. 1004, code (57). In particular, Ogdon’s teaching of retrieving alternatively sized presentations based on transmission data rates supports Petitioner’s proposed combination with Allen’s teaching of encoding video at different bitrates. See Ex. 1004, code (57) (stating that a greater-sized presentation for a “higher transmission rate” has “corresponding enhanced quality of presentation” compared to a reduced-sized version for a “low transmission data rate”), 22:44–47 (stating that “as the expected amount of time for retrieving one or more presentation elements lengthens, . . . better presentation quality presentation elements may be retrieved (e.g., the presentation quality may be enhanced from limited or no animation to full animation)”). And Petitioner establishes sufficiently that an ordinarily skilled artisan reasonably would have expected success in making the combination, particularly given that Ogdon already contemplates alternative presentations for different transmission rates. See, e.g., Ex. 1003 ¶¶ 65, 67; Ex. 1004, code (57). Patent Owner’s arguments are directed to Ogdon alone and do not account for Petitioner’s proposed modification based on Allen.3 Such arguments do not show nonobviousness where Petitioner’s obviousness ground is based on a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Furthermore, to the extent Patent Owner argues that an ordinarily skilled artisan would not have been motivated to modify Ogdon as proposed, it fails to sufficiently explain this contention. For example, we do not read Ogdon to indicate that its presentation versions must be wholly different types of presentation materials, i.e., presentations in different languages or presentations tailored for different audiences. We also do not agree with Patent Owner (Prelim. Resp. 22–25) that Ogdon fails to teach or suggest video streaming for the same reasons discussed above. See supra §§ II.D.1, II.D.3.a. Thus, based on the present record, Patent Owner’s arguments regarding this limitation are unavailing.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,470,138 - 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 - PTAB · May 31, 2023 · IPR2023-00171 · APJ Gregg I Anderson · IPR · Institution
The Board instituted inter partes review of claims 1–5, 7–9, 14, and 20 on all asserted grounds, finding a reasonable likelihood that at least claim 1 is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/ default/files/documents/interim_proc_discretionary_denials_aia_parallel_ district_court_litigation_memo_20220621_.pdf (the “Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. In this proceeding, Petitioner stipulates that “it will not pursue an invalidity defense in the parallel district court action based on the same grounds as in this petition or any grounds that could have reasonably been raised before the PTAB.” Pet. Prelim. Reply 1. Petitioner asserts that its stipulation is the same as the one in Sotera. Id. at 1–2. Patent Owner does not dispute that Petitioner adopts the identical stipulation from Sotera but argues it “cannot cure the fact that [Fintiv] Factors 2, 3, 5 and 6 all remain heavily in favor of denying institution.” See PO Prelim. Sur-Reply 3. factors help the Board assess the potential for conflicting decisions and duplicative efforts when there is a PTAB proceeding held in parallel to district-court litigation. See Interim Procedure 1–2. But here, Petitioner’s Sotera stipulation ensures the grounds that the Board resolves will differ from those considered in the parallel district-court litigation. See id. at 7–8. This eliminates the potential for conflicting decisions and duplicative efforts. See id. Thus, in light of Petitioner’s stipulation, we decline to deny institution under Fintiv. Id. at 3.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION As explained above, we determine that Petitioner has established a reasonable likelihood of prevailing in its challenge to at least claim 1 of the ’130 patent. Thus, we institute an inter partes review of all challenged claims on all asserted grounds. VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that inter partes review is instituted with respect to all claims and all grounds of unpatentability raised in the Petition;” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention of the ’130 patent “would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of wireless communication technology.” Pet. 5 (citing Ex. 1003 ¶ 23). Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill because we are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’130 patent.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Declaration, Exhibit 1002, in part because the Declaration merely copies the Petition. Prelim. Resp. 22. This argument finds support in our recent decision in Xerox. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (August 24, 2022) (precedential). In Xerox, we denied institution and held a declaration is entitled to little weight when it contains an exact restatement of the petition’s conclusory arguments without any additional supporting evidence or reasoning. Although we agree that the Petition and supporting evidence or reasoning. For the reasons explained below, at this stage, we are persuaded that the Petition and Ding Declaration are sufficiently supported by the disclosures from Kwak. The weight given to the Ding Declaration is not dispositive for any disputed issue.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,736,130 - PTAB · Apr 4, 2023 · IPR2022-01598 · APJ Gregg I Anderson · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1–2, 6, 8–11, 15, 17, and 18 are anticipated by Kannan.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“4. Analysis As already noted, Becton, Dickinson factors (a), (b), (d) all support a finding that the Kannan Publication was presented to the Office by listing the Kannan Publication in an IDS and the European Report. The first prong of the Advanced Bionics framework is satisfied.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The PTAB will weigh this factor against exercising discretion to deny institution under Fintiv if the median time-to-trial is around the same time or after the projected statutory deadline for the PTAB’s final written decision.” Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)9 (“Interim Procedure for Discretionary Denials”). Because our projected statutory deadline is around the same time as the median time-to-trial here, we weigh this factor as weighing against exercising discretion to deny institution. Factor 3. Investment in the parallel proceeding by the court and the parties. slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On this record, we therefore conclude preliminarily that Petitioner has sufficiently shown that Kannan discloses limitation 1.a.” slip op. at 32
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner’s arguments and evidence as to the short comings of a single code block do not preclude a code block from being the recited “transmission block.” As a result, even if a single code block transmission block is problematic as to transmission or receiving transmission blocks, there is no explanation of why that fact makes a difference in our legal analysis of the scope of this claim term. We leave this issue for the parties to explore during trial. Based on the record before us, we preliminarily determine that the “transport block” of Kannan falls within the scope of the recited “transmission block,” because a transport block can be a transmission block in some scenarios. See Ex. 2001 ¶¶ 46, 48–49. Furthermore, the “transport block” may include a single code block. Moreover, we preliminarily determine that the “code block” of Kannan falls within the scope of the recited “transmission block.” This issue is subject to further development during trial.” slip op. at 24
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 10,594,443 - 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 - PTAB · Oct 28, 2022 · IPR2022-00818 · APJ Patrick M Boucher · IPR · Institution
The Board instituted inter partes review of claims 1–5, 8–11, and 14 on all asserted 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
“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
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with this assessment. We also note that Petitioner takes the position that “[t]he Challenged Claims are unpatentable under both proposed levels,” and Patent Owner takes the position that “the challenged claims are patentable under either proposed level of ordinary skill.” Pet. 8; Prelim. Resp. 7. For purposes of this Decision, we adopt Patent Owner’s proposed articulation of the level of ordinary skill as advanced in the related ITC Investigation. But we note that we would reach the same ultimate conclusion to institute an inter partes review were we to adopt Petitioner’s proposal.” slip op. at 11
- Prior constructionPrior construction adoptedDecided for petitioner
“Ex. 1007, 4; Pet. 8–9; Prelim. Resp. 7 (Patent Owner agreeing that “[t]hose constructions are set out in the Petition”). Petitioner states that it “applied these agreed constructions” in the Petition, and Patent Owner also states that it “applies the agreed constructions” in its Preliminary Response. Pet. 8; Prelim. Resp. 7. We adopt these constructions as preliminary constructions for purposes of this Decision.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“(Petitioner asserting that, in the related ITC Investigation, “Patent Owner attempted to narrowly construe three additional phrases . . . . The ALJ has not addressed these new constructions, but as discussed below, Patent Owner’s new constructions should be rejected.”). Patent Owner does not ask that we construe these phrases and, indeed, asserts that it is not necessary for us to do so to decide whether to institute the proceeding. Prelim. Resp. 8–9 (“the Board does not need to resolve that claim construction dispute in order to properly deny institution”); see also id. at 41 (“Petitioners’ arguments on this point all deal with an aspect of [Patent Owner’s] proposed claim construction in the ITC Investigation that is not at issue here”). At this time, we decline to address construction of these additional phrases. 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 15
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,378,875
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.