- PTAB · Oct 31, 2024 · IPR2024-00858 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 5–7 and 16–19, finding a reasonable likelihood that claims 5–7 and 16–19 are unpatentable over Samartgis and at least claims 5 and 19 over Leoncavallo.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“U.S.C. § 314(a) due to the advanced state of the parallel district court action, and, in doing so, relies heavily on the district court’s scheduled trial date of September 22, 2025. See Prelim. Resp. 51, 54. While the district court’s scheduled trial date may be earlier than the Board’s projected deadline for a final written decision here, CamelBak’s reliance on that date is misplaced. The Office takes the position that a district court’s scheduled trial dates are “unreliable and often change” and that a more reliable indicator is the district court’s “median time-to-trial for civil actions,” which, in this case, would place the district court’s trial date after the projected deadline of any final written decision here. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director’s Interim Procedure”), at 8–9. Thus, CamelBak’s reliance 5 US D586,184 S, issued Feb. 10, 2009 (Ex. 1006, “Miller”). on the district court’s scheduled trial date has no bearing on whether we should discretionarily deny institution. Of greater relevance is Trove’s express stipulation not to pursue the same grounds in the district court action as advanced in the petition or any ground that relies on the prior art references cited in the petition. See Pet. 100. Although not exactly a Sotera stipulation, the Office nonetheless recognizes that such stipulations further mitigate concerns of potentially conflicting decisions and duplicative efforts between us and the district court. See Director’s Interim Procedure, at 7–8. Thus, given Trove’s stipulation and the fact that the district court’s median time-to-trial is after the projected deadline of our final written decision here, we will not discretionarily deny institution under § 314(a).” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We disagree that Samartgis is the substantially the same as the corresponding design patent cited during prosecution, mainly because the design patent fails to show the closure retention mechanism that is clearly shown and described in Samartgis and goes to the very heart of Trove’s showing of anticipation and obviousness. Compare Ex. 1004, Figs. 3–5 (showing lug members 15, 16 and ramp sections 23, 25, 27), with Ex. 2001, Figs. 1–8 (omitting any depiction of lug members or ramp sections). Thus, Samartgis clearly was not considered. And, although Leoncavallo and Miller may arguably have been considered during prosecution, “[w]hen instituting . . . 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.” 42 C.F.R. § 42.108(a). As such, we will not discretionarily deny institution under § 325(d). B. Level of Ordinary Skill in the Art” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Trove proposes that one of ordinary skill in the art would have had: an undergraduate degree in mechanical engineering or equivalent coursework, and a year or more of experience in designing, prototyping, and/or manufacturing fluid containers or similar products . . . [and that] [m]ore work experience may substitute for a lower level of education, and vice versa. Pet. 17–18 (citing Ex. 1003 ¶¶ 25–30). CamelBak appears to agree. See Prelim. Resp. 16 (“Patent Owner assumes Petitioner has correctly stated the level of ordinary skill in the art and does not set forth its own definition.”). At this stage, we see no reason to depart from Trove’s proposed definition, as it appears reasonable and consistent with the asserted prior art and the ’252 patent.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“At this stage, we do not see the need to resolve the § 112(f) issue in light of Trove’s express and unrebutted showing that the prior art teaches sufficiently analogous structure to that identified in the ’252 patent for performing the disputed functional limitations of the claimed “closure retention mechanism.” See Pet. 35 (asserting that “[Samartgis’s] lug members 15 and 16 also are at least equivalent to the structure identified in the specification (i.e., the two or more spaced-apart tabs on the handle)” because “[l]ike the opposed tabs of the ’252 patent, the lug members 15 and 16 are projections that extend from the inner surface of the handle to engage the closure.”). Indeed, at this stage, CamelBak chooses not to address Trove’s showing in this regard, instead arguing that “the construction of ‘closure retention mechanism’ is irrelevant because [Trove] fails to show lug members 15 and 16 are configured to meet other limitations of claims 5 and 19.” Prelim. Resp. 20 n.7. That said, to the extent either party believes it is necessary for final resolution of patentability, they should explore the § 112(f) issue further during the trial phase.” slip op. at 10
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 8,905,252 - PTAB · Oct 1, 2024 · IPR2024-00705 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–6 under all five grounds, finding a reasonable likelihood of unpatentability based on Zeng-014 and Vinciarelli-218.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. 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 Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the first electronic component’ for the first connection part is a structural feature or relationship.” Prelim. Resp. 8 (citing Ex. 2001 ¶¶ 52–54). Here, claim 1 requires a structure in which the first connection part comprises a first terminal at one end coupled to a surface of a carrier such as a circuit board, and a second terminal at the other end attached to a surface of the first component, such that the first connection part has mechanical support of the first electronic component. See Ex. 1001, 15:31–37. We are persuaded by Patent Owner’s contention that “this claim language connotes sufficient structural characteristics that preclude a product-by-process.” Prelim. Resp. 9.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“B. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). There is no requirement that the prior art must use the same words to describe a claim element in order to teach or disclose that claim element. Identity of terminology is not required for a claim element to be anticipated by the prior art without resorting to obviousness. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The Federal Circuit has repeatedly warned that there has to be evidence of “glue” to make this specific combination, and not just the use of the claim as the roadmap for making the combination of prior art. See, e.g., InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1348–49 (Fed. Cir. 2014) (“Dr. Yanco’s testimony was nothing more than impermissible hindsight; she opined that all of the elements of the claims disparately existed in the prior art, but failed to provide the glue to combine these references.”). Here, Petitioner’s alleged motivations to modify the modules Vinciarelli-218 to use the “connection part by curving a piece of metal against an electronic component” of Zeng-014 (Pet. 69) reflect impermissible hindsight bias.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,819,263 - PTAB · Sep 18, 2024 · IPR2024-00702 · APJ Sharon Fenick · IPR · Institution
The Board instituted review of claims 1–6 and 8–16 on all asserted grounds, finding a reasonable likelihood that the Nair and Forsberg combination renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Board has authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be authorized unless the information in the Petition and any preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’817 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner, citing Dr. Bims’s declaration, asserts that, “[a] person of ordinary skill in the art (“POSITA”) in the subject matter of the ’817 patent would have had a master’s degree in electrical engineering, computer engineering, or computer science, or equivalent and at least three years of experience in the field of telecommunications or wireless systems,” and that “[a]dditional education might compensate for less experience, and vice-versa.” Pet. 10–11 (citing Ex. 1002 ¶ 22). Patent Owner asserts that one of ordinary skill would have had “a bachelor’s degree in electrical engineering, computer engineering, or computer science with (1) at least three years of experience in the field of telecommunications or wireless systems; and/or (2) an advanced degree in field of telecommunications or wireless systems.” Prelim. Resp. 16. We do not discern a meaningful difference between the two parties proposals. Petitioner’s proposal appears consistent with the problems and solutions in the ’817 patent and prior art of record and is supported by expert testimony. We note, however, that the open-ended language “at least” expands the range of experience indefinitely with no upper bound. Upon this preliminary record and for the purposes of institution, we adopt Petitioner’s definition of the level of skill with the exception that we delete the words “at least.”” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither party makes a claim construction proposal or indicates that any claim requires construction. Pet. 11; see generally Prelim. Resp. We note that an argument was raised that presents an implicit construction question regarding whether a flag which “only identifies if encryption [is] ‘on’ or ‘off’” (Prelim. Resp. 24) teaches or suggests “an encryption scheme identifier that identifies an encryption scheme used by the UE to encrypt the subscription identifier in the SUCI” (as recited in limitation 1d of claim 1 and identically in claims 9, 10, and 15). We address that argument below, in Sections II.D.3.c.ii and iii of this Decision. With that exception, we do not discern that any claim terms require construction at this point in the proceeding for the purpose of institution. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“i. Nair Provisional’s Support for a Claim in Nair Patent Owner argues that the Petition is deficient because it does not show that the disclosure in the Nair Provisional supports at least one claim in Nair, even though Nair is subject to the AIA and Patent Owner concedes that the Board’s precedential opinion in Penumbra concludes we do not need to make such a determination regarding support for at least one claim to reach a prior art determination under the AIA. Prelim. Resp. 23–24 n.6; Penumbra, 2023) (precedential). Following that precedent, we decline to require a showing of support in the Nair Provisional for at least one claim in Nair and instead only require that the ministerial requirements for claiming priority were met. See Penumbra, Paper 34 at 32–33. Petitioner argues that the “ministerial requirements” described in Penumbra have been met. Pet. 4–5 (noting that Nair contains a priority claim to the Nair Provisional, was filed within 12 months of the Nair Provisional, and includes a common inventor). Patent Owner does not contest that these requirements have been met, and upon our examination, we agree that they appear to have been met. Ex. 1004, codes (22), (60), (72); Ex. 1008, 1, 4, 38. Thus, on the present record and for the purposes of institution, the disclosures of Nair are prior art, to the extent that the relied-upon disclosures are included in the Nair Provisional. ii. Nair Provisional’s Date for Cited Portions of Nair Patent Owner also argues that the Petition relies on material in Nair that was added after the filing of the Nair Provisional, and that this material cannot be properly relied on as prior art. Prelim. Resp. 19–23. We address these specific arguments regarding material Petitioner references from Nair (and the Nair Provisional) below, in our analysis with respect to the respective limitations of claim 1 these citations relate to.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,425,817 - PTAB · Apr 25, 2024 · IPR2024-00024 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–4, finding a reasonable likelihood that claim 1 would be unpatentable over Harada and Gutberlet.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the evidence currently of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’167 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Reasons to Combine Petitioner argues a person of ordinary skill would have been motivated to combine the teachings of Harada and Gutberlet for several reasons, in addition to the reasons discussed above with the claim limitations. Pet. 24–29. Among other things, Petitioner contends Harada and Gutberlet share a similar purpose and architecture, “both teach behavioral synthesis of C code to RTL; both simulate RTL; and both report latency metrics for each behavioral block.” Pet. 24 (citing Ex. 1004 ¶¶ 1–2, 72–73, 98, Figs. 16, 17; Ex. 1005, 1:10–27, 2:11–19, 7:3–6, 34:13–20, Table 38). Further, Petitioner contends combining the references’ teachings would have amounted to combining prior art elements according to known methods to yield predictable results, with Harada teaching “a process including steps for synthesizing behavioral code into RTL; performing RTL logic simulation; and analyzing the results, along with a table showing correspondence between RTL and behavioral code, to calculate latency for each behavioral block,” and Gutberlet teaching “using logic simulation to calculate latency for each behavioral block, measured in clock cycles/ns, and reported in a table.” Pet. 24–25 (citing Ex. 1004 ¶¶ 98, 117, 118, 132–134; Ex. 1005, 2:11–19, Table 38). Patent Owner argues a person of ordinary skill in the art would not have combined Harada and Gutberlet as suggested in the Petition because, according to Patent Owner, among other things, “Harada does not disclose using RTL in the context of its disclosure” and “Gutberlet discloses loop handling techniques on behavioral code, and any performance assessment occurs prior to generating RTL.” Prelim. Resp. 40. Further, Patent Owner argues Gutberlet explicitly teaches away from generating RTL code, analyzing the latency, and re-editing the source code if there is a latency issue and “[t]herefore, a [person of ordinary skill in the art] would not combine Gutberlet with any reference to satisfy the latency analysis elements of the ’167 claims. Prelim. Resp. 41 (citing Ex. 1005, 2:11–19). We again note that Patent Owner’s arguments are not currently supported by declaration testimony and amount to attorney argument at this stage in the proceeding. Petitioner’s arguments, on the other hand, are supported by the testimony of Dr. Lin in addition to the cited portions of the references, and we thus preliminarily find Petitioner has adequately articulated reasons for combining the references for the purposes of institution.” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityOther
“Shin’s Status as Prior Art The parties dispute whether Shin qualifies as a publicly accessible publication. According to Petitioner, prior to the critical date, Shin was published on the Internet by professors at the University of California at Irvine on both the University’s website and on the professors’ webpages. Pet. 17; Prelim. Reply 1–3. According to Petitioner, the authors were prominent and well-known in the industry, Shin was the very first publication listed on the relevant page of the University’s website in 2003, and Shin was one of only 44 papers on that page. Prelim. Reply 1–3. Patent Owner argues that Shin was not indexed or searchable in a meaningful way and that there is insufficient evidence that an interested person of ordinary skill exercising reasonable diligence would have located Shin. Prelim. Resp. 17–18, 21; Prelim. Sur-Reply 1–3. Patent Owner further argues the facts of Shin’s alleged availability are similar to the facts of Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772-74 (Fed. Cir. 2018). Prelim. Resp. 19–21; Prelim. Sur-Reply 1–3. At this preliminary stage, we question whether Petitioner has sufficiently shown that Shin qualifies as a publicly available publication.” slip op. at 17
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or a similar field with at least two years of experience in the field; or a master’s degree with specialization in the field,” and “[a] person with less education but more relevant practical experience may also meet this standard.” Pet. 21 (citing Ex. 1003 ¶¶ 63–64). Petitioner also states that the relevant field is “IC design and manufacturing, including EDA tools and behavioral synthesis.” Pet. 21 (citing Ex. 1001, 1:17–2:37; Ex. 1003 ¶ 62). At this stage, Patent Owner does not address the level of ordinary skill. For the purposes of this Decision, we apply Petitioner’s articulation of the level of ordinary skill, which is supported by the testimony of Dr. Lin and is consistent with the level reflected by the ’167 patent and the asserted prior art.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,971,167 - PTAB · Feb 21, 2024 · IPR2023-01287 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood of success on at least one claim based on the obviousness challenges.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“restriction region” should not be limited to an “exclusionary zone” or “an area where the vehicle is excluded from entry,” as asserted by SZ DJI. See Prelim. Resp. 9; Prelim. Sur-reply 2. Upon reviewing the specification of the ’121 patent, it states the following: “[i]n some embodiments, a flight response measure may include allowing the UAV to remain in the flight restriction region, but imposing certain restrictions on the operation of the UAV within the flight restriction region. The UAV may be forced to remain within the flight restriction region.” Ex. 1001, 17:44–49. Construing the claim term “restriction region” in accordance with SZ DJI’s proposed construction as an “exclusionary zone” would exclude these embodiments, which allow the UAV to remain in the flight restriction region, or force the UAV to remain within the flight restriction region. See, e.g., Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (Although a preferred embodiment should not be read into claims as limitations, construction of a claim term that excludes a preferred embodiment “is rarely, if ever, correct and would require highly persuasive evidentiary support.”). In light of these embodiments, which do not comport with SZ DJI’s proposed construction, and lacking persuasive evidentiary support from the specification to support its narrow construction, the proper construction of the claim term “restricted region” is broader than SZ DJI would allow. At this stage of the proceeding, lacking a clear construction for the claim term “restriction region” in the Petition itself, we decline to adopt Textron’s implied construction for this claim term presented for the first time in the Preliminary Reply. See Prelim. Reply 1. Instead, for the purposes of institution, we preliminary construe the claim term “restricted region” in accordance with its plain and ordinary meaning as “any region in which it is possible to limit or affect operation of a ground vehicle.”3 Our preliminary construction finds support in various embodiments disclosed the specification, which include both confinement and exclusion. See, e.g., Ex. 1001, 17:48–49 (“The UAV may be forced to remain within the flight restriction region.”), 22:46–48 (“For instance, if the user is approaching a flight restriction region, the user may be alerted and may change course of the UAV to exit the flight restriction region.”). During trial, if the construction of the claim term “restriction region” remains in dispute, we invite the parties to provide arguments and evidence regarding the plain and ordinary meaning of this claim term. slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION We conclude that the information presented in the Petition demonstrates that there is a reasonable likelihood that Textron would prevail in challenging at least one of claims 1–30 of the ’121 patent as unpatentable. Accordingly, we institute an IPR as to all challenged claims and all the grounds raised in the Petition. See 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims or the construction of any claim term. IV. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), an IPR is hereby instituted as to all of the challenged claims and all of the grounds raised in the Petition; and” slip op. at 54
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Based on our initial review of Humphries, we are persuaded by SZ DJI’s argument that the reference does not disclose, either expressly or inherently, “private property,” such as residential and commercial buildings. See Ex. 1004. It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it, for example, if the prior art necessarily functions in accordance with, or includes, the claimed limitations. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). However, the fact that a certain thing may result from a given set of circumstances is not sufficient for inherent anticipation. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Figure 2 of Humphries does not meet the exacting standard of anticipation because there is nothing within the four corners of this reference indicating that the geofence objects 220 actually encompass the city of Clinton, Mississippi, much less that such a location would be associated with private property, such as residential or commercial buildings. Notwithstanding, we believe that Humphries, together with the general background knowledge of a person of ordinary skill in the art, teaches that the geofence annotated in Textron’s version of Figure 2 would encompass a real-world location, such as the city of Clinton, Mississippi, which at the very least includes “a location associated with a private property.” We address this below when addressing the asserted ground based on obviousness over Humphries. See infra Section II.C.2.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the preliminary record, the purported deficiencies identified by SZ DJI do not undermine Textron’s asserted obviousness ground based on the combined teachings of Humphries and Marcus. For example, it is not dispositive that both Humphries and Marcus relate to systems applicable to airborne vehicles, whereas the challenged claims require a ground vehicle, because Humphries explicitly contemplates that its system also is applicable to a ground vehicle. Ex. 1004, 4:26–31 (disclosing that tracked device 120 may be “associated with a vehicle such an automobile, truck or the like”), 5:44–46 (“The object being tracked as described in the present invention is a vehicle (e.g., cars, boats, trucks, trains).”). Moreover, as we explain in our preliminary claim construction analysis above, we decline to adopt SZ DJI’s narrow view of the claim term “restriction region” as limited to exclusion. Instead, we preliminary construe the claim term “restricted region” in accordance with its plain and ordinary meaning as “any region in which it is possible to limit or affect operation of a ground vehicle.” See supra Section II.A. Lastly, even if the user and roles in Humphries and Marcus are different or there are certain disclosures in Marcus that might create tension with its proposed combination with Humphries, this would not undermine Textron’s rationale to combine the teaching of these two reference. Textron does not seek to bodily incorporate all of Marcus into Humphries, but instead only relies on Marcus to teach specifying a location associated with private property. See Pet. 47–48 (citing Ex. 1005 ¶¶ 14, 17). In summary, Textron has shown a reasonable likelihood that it would” slip op. at 38
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,482,121 - PTAB · Jan 23, 2024 · IPR2023-01217 · APJ John R Kenny · IPR · Institution
The Board instituted IPR on all asserted grounds challenging claims 1–23, finding a reasonable likelihood of proving at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine that the Petition has met this standard and institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“degree in electrical engineering, computer engineering, or equivalent training or job experience, along with 1–2 years of experience in the field of GPS, location-based-services, and/or geofencing. Pet. 11. Further, Petitioner asserts that additional education could compensate for less practical experience and vice versa. Id. Patent Owner has not challenged Petitioner’s definition for an ordinarily skilled artisan. See generally Prelim. Resp. At this stage, Petitioner’s definition appears consistent with the level of skill reflected in the Specification and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Thus, for purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On this preliminary record, we determine that the term “vehicle restriction region” is not limited to regions that have an area where a vehicle is excluded from entry or warned upon transgression. The dispute between the parties regarding “vehicle restriction region” specifically concerns the meaning of the word “restriction,” in particular whether “restriction” requires the exclusion of vehicles from entry or a warning upon transgression. Pet. 18–37; Prelim. Resp. 5–24. The parties are not disputing whether the asserted prior art discloses vehicles or regions. Pet. 18–37; Prelim. Resp. 5– 24. The Specification teaches that the term “restriction” is not so limited. For example, the Specification discloses that the term “flight restriction zone” “may refer to any region in which it is possible to limit or affect operation of an aerial vehicle.” Ex. 1001, 4:8–11 (emphasis added). This disclosure does not require the exclusion of entry of an aerial vehicle or a warning upon transgression. Further, the Specification teaches that flight restriction strip 2104 in region 2100 in Figure 21 may permit flight of the UAV while other flight restriction strips may prevent flight of the UAV. Id. at 29:20–22. This disclosure further does not require the exclusion of entry of a vehicle or a warning upon transgression. To the contrary, the Specification describes the latter (an alert) as an optional addition, and, as described above, flight restriction strip 2104 can expressly permit flights. Id. at 29:26–31. In light of the Specification’s definition of a “flight restriction zone” as “any region in which it is possible to limit or affect operation of an aerial vehicle,” it would appear that the proper construction of “vehicle restriction zone” is “any region in which it is possible to limit or affect operation of a vehicle.” Ex. 1001, 4:8–11.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We determine that Petitioner has made a sufficient showing for the preamble of claim 1. First, on this preliminary record, we agree with Petitioner that Humphries’s geofenced area constitutes a vehicle restriction region because it is a region in which it is possible to limit or affect operation of a vehicle. Pet. 19. Humphries describes the geofenced regions as areas in which tracked objects are to be confined. Ex. 1004, 1:44–50.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,462,116 - 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 · Jul 21, 2023 · IPR2023-00466 · APJ Sharon Fenick · IPR · Institution
The Board instituted review of claims 7–9, 11, 15, 17, 18, 20, and 21 on all asserted grounds, finding a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) would have had a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in wireless communications networks and engineering, including some knowledge of or experience with distributed antenna systems. An individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1-2 years). Pet. 19 (citing Ex. 1003 (Declaration of Dr. Anthony Acampora) ¶ 24). Patent Owner proposes substantially the same level of skill, but does not require the industry experience in wireless communications networks and engineering to include “some knowledge of or experience with [distributed antenna systems].” Prelim. Resp. 8–9 (citing Ex. 2001 (Declaration of Dr. Daniel Foty) ¶ 13); Ex. 1025, 9–10). For purposes of this Decision, we apply Petitioner’s definition of the level of ordinary skill in the art. Our decision would not be different if we adopted Patent Owner’s proposed level of skill.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“On the present record and for the purpose of this Decision, we agree with Petitioner that the proper construction of “communications unit” encompasses multiple DRUs or antenna units. Although Patent Owner is correct that not every embodiment needs to be reflected in every claim, and indeed, some embodiments may not appear in any claim, we do not agree that there is evidence supporting Patent Owner’s argument that the construction of “communications unit” should be narrowed to the embodiment requiring only one DRU/antenna. The cited claims do not indicate that multiple units may not transmit at the sets of frequencies recited. Additionally, although Patent Owner cites claim 16 as requiring that each communications unit is a single DRU, if that were a correct reading of claim 16, it is not clear what the claim recitation would add, as it would not narrow the prior recitation of a “communications unit” from claim 15. Such interpretations are disfavored. See Cat Tech LLC v. TubeMaster, Inc., 528 F.3d 871, 885 (Fed. Cir. 2008) (refusing to adopt a claim construction that would render a claim limitation meaningless); Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (explaining that “claims are interpreted claim 16 uses the inclusive “comprises” in its recitations, which is an open-ended term and does not exclude the possibility of other DRUs in a communication unit. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.”).” slip op. at 14
- Prior constructionPrior construction adoptedDecided for petitioner
“Additionally, with respect to claim 20, Petitioner argues that “the first frequency band” and “the second frequency band” recited in claim 20 lack antecedent bases and are indefinite. Pet. 42, 64. This issue was addressed in the Eastern District of Texas cases claim construction order that construed “the first frequency band and the second frequency band” as “the first frequency range and the second frequency range.” Ex. 1037, 19–20. For the purposes of this Decision, we agree with and adopt the reasoning and this determination is preliminary and for the purposes of this Decision; the parties may address it further in future briefing in accordance with our rules.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,197,358 - Apple Inc. v. Mullen Industries LLCInstitutedPTAB · May 15, 2023 · IPR2023-00115 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–14 and 73–92 on every asserted ground, finding a reasonable likelihood of success on at least one 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.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’117 patent. Accordingly, we institute inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“teaching of a “group database” in which “users can define a group of specific users that have access to [position] information” (Ex. 1041, 11:63– 65) are relevant to Sheha’s teachings regarding mobile devices, which Sheha describes as similar to landline devices (Ex. 1041, 12:4–7). Further, Sheha describes “the calling local mobile device has privacy settings” and can choose not to reveal its position or enable position transfer “at anytime,” which reasonably suggests that privacy settings can be changed. Ex. 1041, 5:9–20. Sheha also describes that “users can define a group of specific users that have access” to position information “by utilizing a group database.” Id. at 11:63–66. Thus, we preliminarily find that Petitioner’s arguments are supported sufficiently by the cited portions of the asserted art. We further preliminarily find that Patent Owner’s arguments do not undermine Petitioner’s showing based on the preliminary record at this juncture of the proceeding. After consideration of the contentions and the evidence of record at this early stage, we determine that Petitioner has shown sufficiently that Sheha teaches element [1.e] for purposes of institution.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“combination of hardware and software functionalities of the prior art Petitioner contends satisfies limitations [1.f] and [73.f]. Separate from the Petition’s analysis of these limitations, Petitioner addresses the alleged motivation to combine Enzmann and Tobin, McNulty, and Bedingfield in subsection of the Petition titled “Motivation to Combine Sheha and Enzmann with McNulty, Degnbol, Lelievre, Curbow, Tobin, and/or Bedingfield.” Pet. 19–22. Regarding McNulty, Petitioner states in part, “[t]he additional features described in McNulty would easily be applied using the hardware of . . . Enzmann with at most minor software modifications.” Pet. 20. Regarding Tobin, Petitioner states a person of ordinary skill “looking to improve Enzmann’s functionality would have been motivated to also output typical mapping elements such as directions, distance, and location markers, as described in Tobin.” Pet. 22. Regarding Bedingfield, Petitioner states that a person of ordinary skill “would have been motivated to improve location information delivery in . . . Enzmann’s system by also computing travel times via different modes, as described in Bedingfield.” Pet. 23. Petitioner’s motivation statements appear directed to whether a person of ordinary skill could have combined the teachings of the references, rather than to whether a person of ordinary skill would have combined the teachings to arrive at the claimed invention. Further, it is not clear on the current record which features from McNulty, Tobin, or Bedingfield Petitioner contends would have been combined with Enzmann to arrive at limitations [1.f] and [73.f]. Although Tobin at least mentions providing directions, at this stage, we question the sufficiency of Petitioner’s showing for the Enzmann grounds.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b) (2021). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party presents any explicit claim constructions. Pet. 9; see generally Prelim. Resp. At this stage, we determine it is unnecessary to expressly construe any claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,234,117
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.