- PTAB · Oct 11, 2024 · IPR2024-00771 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR on claims 1–6 of the ’195 patent on all asserted grounds and granted Texas Instruments’ motion to join the Cirrus IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the Preliminary Response in the instant case includes arguments pertaining to the sufficiency of the asserted prior art references, which were not raised in the preliminary response in the Cirrus IPR, we briefly address below the patentability of the challenged claims.” slip op. at 6
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“II. TIMELINESS OF THE PETITION UNDER 35 U.S.C. § 315(B) Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 10– 30. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2024-00017), which we grant as further discussed below, Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“B. Whether to Join Petitioner as a Party to the Cirrus IPR Joinder may be authorized when warranted, but the decision to grant joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. A motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, IPR2013- 00004, Paper 15 (PTAB April 24, 2013). As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). As an initial matter, we find the Motion for Joinder meets the timing requirements of 37 C.F.R. § 42.122(b) because Petitioner filed it on April 4, 2024, no later than one month after the Cirrus IPR was instituted on May 1, 2024.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“5. “Aid the Movement of Minority Carriers” Patent Owner argues that the Petition fails to show that the applied prior art references disclose the claim limitations “requiring ‘aid the movement of minority carriers,’” as twice recited in claim 1. Prelim. Resp. 8. Patent Owner summarizes this dispute as follows: The challenged patent discloses and claims a semiconductor device with (among other things) a “drift layer having a graded concentration of dopants . . . [and] further having a first static unidirectional electric drift field to aid the movement of minority carriers.”[] The Petition should not be instituted, because (among other deficiencies) it fails to show that the prior art discloses the “aid the movement of minority carriers” claim limitation. Rather than pointing to anything in the prior art that would teach this claim limitation, the Petition assumes that any “graded concentration of dopants” would necessarily “aid the movement of minority carriers.” The Petition contains no analysis explaining why the “graded concentration of dopants” in the prior art meet the “aid the movement of minority carriers” limitation, apart from the fact that they are “graded concentration of dopants.” In other words, Petitioner reads the “aid the movement of minority carriers” limitation out of the claims completely. Id. at 1–2. Patent Owner includes additional details in support of its view that the asserted prior art fails to establish obviousness of the “aid carrier movement” limitations of claim 1. Prelim. Resp. 1–10.” slip op. at 8
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,421,195 - PTAB · May 23, 2024 · IPR2024-00215 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR of claims 1–10 on all grounds, finding a reasonable likelihood that claim 1 would be obvious over Foster and Hayhurst.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to all claims challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2
- BurdenDecided for petitioner
“The record at this stage sufficiently supports Petitioner’s argument that Foster’s receiver 430 stores content that it receives. Pet. 65 (citing Ex. 1006 ¶¶ 4, 8, Fig. 8). According to Dr. Rubin’s annotations, receiver 430 can be a personal computer (PC) or set-top box. Ex. 2003 ¶ 83 (labeling the receiver in Figure 16 as such). This is consistent with Foster. Ex. 1006 ¶¶ 49, 51 (describing PC 18 and a set-top box). Foster describes how the receiver stores encrypted content. See id. ¶¶ 8, 79. For example, Foster explains, “Once received, recipient 430 can then synchronously store the encrypted content.” Id. ¶ 79, cited in Pet. 68–69. According to Foster, “The encrypted title key is then attached to the content packet and the header for synchronized transmission to, or storage by a receiver.” Id. ¶ 8 (emphasis added), quoted in Pet. 65. For at least the reason that Foster teaches a PC or at this stage that Foster’s data set is “for storage.” See Pet. 65–66, 80–82. At this stage, we credit Dr. Bhattacharjee’s testimony (Ex. 1003 ¶¶ 221–222) over Dr. Rubin’s (Ex. 2003 ¶¶ 108–109) because it is better supported by the current record. In particular, we see no support for Dr. Rubin’s testimony that Foster’s receiver cannot provide long-term storage or is unlike the ’854 patent’s storage devices. See Ex. 2003 ¶¶ 108– 109. For instance, we see little difference between Foster’s PC 18 and the magnetic or optical disk, USB key drive, or other devices that Dr. Rubin claims are long-term storage devices. Ex. 1001, 67:16–19, cited in Ex. 2003 ¶¶ 108–109. PC 18 has “data storage.” Ex. 1006 ¶ 75. Foster explains “optical media” or “magnetic media” are types of data storage. Id. Foster also states that the receiver stores data. Id. ¶ 8. In view of these parts of Foster, we credit Dr. Bhattacharjee’s testimony that Foster’s receiver has data storage (Ex. 1003 ¶¶ 221–222) over Dr. Rubin’s testimony that Foster’s devices are unlike those described in the ’854 patent (Ex. 2003 ¶¶ 108–109), at this stage.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use.” Pet. 6 (citing Ex. 10032 ¶¶ 37–38). Petitioner also asserts that a “higher level of education may substitute for less experience.” Id. Patent Owner does not respond to Petitioner’s assertions or argue for a definition of a person of ordinary skill in the art. See Prelim. Resp. Here, we apply the skill level proposed by Petitioner. Pet. 6.” slip op. at 4
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“key (the encryption operation Petitioner contends would be reordered/repeated).” Id. at 16. Dr. Rubin explains why reordering the steps in the way that Petitioner proposes would have been pointless: Indeed, a [person of ordinary skill in the art] would recognize that encryption with the alleged external key would not be an appropriate step to repeat or reorder because it is parsed along with the data set into portions and those portions are then encrypted. Consequently, encrypting the shares with the alleged external key (i.e., the session master key) would render the splitting and encryption of the alleged external key pointless. Ex. 2003 ¶¶ 52–53. Dr. Bhattacharjee does not fully explain why the key that is parsed and encrypted is then used to further secure the data. Ex. 1003 ¶¶ 110–111. Thus, we credit Dr. Rubin’s testimony (Ex. 2003 ¶¶ 52–53) over Dr. Bhattacharjee’s (Ex. 1003 ¶¶ 110–111) on this issue. For this additional reason, Petitioner has not shown that Orsini discloses the Different-Order Version. See Pet. 33–35.” slip op. at 29
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 10,452,854 - PTAB · May 23, 2024 · IPR2024-00214 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR on claims 1–10 and all petition grounds, finding a reasonable likelihood of success on Foster grounds for claims 1–3, 7, and 8 and claims 4–6, 9, and 10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’609 patent is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we institute an inter partes review as to all Challenged Claims of the ’609 patent on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’609 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Bhattacharjee (Ex. 1003 ¶¶ 37–38).” slip op. at 9
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“repeated, would not necessarily indicate that the chunks, each encrypted with a separate share key, would be again encrypted using the session master key (the cryptographic operation Petitioner contends would be reordered/repeated).” Prelim. Resp. 16. Dr. Rubin explains why reordering the steps in the way that Petitioner proposes would have been “pointless:” Indeed, [the skilled artisan] would recognize that encryption with the alleged first key would not be an appropriate step to repeat or reorder because it is parsed along with the data set into portions and those portions are then encrypted. Consequently, encrypting the shares with the alleged first key (i.e., the session master key) would render the splitting and encryption of the alleged first key pointless. Ex. 2003 ¶¶ 52–53. Dr. Bhattacharjee does not fully explain why the key that is parsed and encrypted is then used to further secure the data. Ex. 1003 ¶¶ 101–105. Thus, we find Dr. Rubin’s testimony (Ex. 2003 ¶¶ 52–53) more persuasive than Dr. Bhattacharjee’s (Ex. 1003 ¶¶ 101–105) on this issue. For this additional reason, Petitioner has not shown that Orsini discloses the Different-Order Versions.” slip op. at 39
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for petitioner
“Here, however, Petitioner does not insist any construction is incorrect. Rather, Petitioner presents alternative rationales for why the claims are unpatentable, stating that the Petition demonstrates “unpatentability regardless of which proposed construction is correct.” Pet. 9. Even though some stated rationales are based on Patent Owner’s constructions in the District Court Case, the Petition complies with the rule because it explains how the Challenged Claims are to be construed under the alternative challenges. See 37 C.F.R. § 42.104(b)(3). The rule “does not require Petitioner to express its subjective agreement regarding correctness of its proffered claim constructions or to take ownership of those constructions.” Western Digital Corp. v. SPEX Techs., Inc., IPR2018-00084, Paper 14 at 11 (PTAB Apr. 25, 2018).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,068,609 - Opticis Co., Ltd. v. Inneos LLCInstitutedPTAB · Feb 2, 2024 · IPR2023-01256 · APJ Terry J Owens · IPR · Institution
The Board instituted review of claims 1, 2, 6, 7, and 9 on all five §103 grounds in the petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” A decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a) (implemented as a result of SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018)). Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. See 35 U.S.C. § 314(a). For the reasons explained below, we institute an inter partes review of all challenged claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Ground 1 is based upon obviousness, not anticipation. Patent Owner’s argument is not well taken because it does not address what fixing Kurita’s single optical fiber (40) in place.” slip op. at 13
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedInstituted
“The purpose of requiring reasonable diligence by the first to conceive the invention but second to reduce to practice is to assure that the invention was not abandoned or unreasonably delayed by the first inventor during the period after the second inventor entered the field.” Brown v. Barbacid, 436 F.3d 1376, 1379 (Fed. Cir. 2006). “A patent owner need not prove the inventor continuously exercised reasonable diligence throughout the critical period; it must show there was reasonably continuous diligence.” Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1009 (Fed. Cir. 2016). “[T]here need not necessarily be evidence of activity on every single day if a satisfactory explanation is evidenced.” Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1369 (Fed. Cir. 2001). Thus, Patent Owner must provide an explanation that is satisfactory to indicate that the relied-upon computer modeling and prior art search update show reasonably continuous diligence from November 10, 2003 to January 15, 2004. Patent Owner has provided some evidence to show diligence from November 10, 2003 to January 15, 2004, but Patent Owner has not explained why, under the facts of this case, the evidence is sufficient to establish reasonably continuous diligence for the period before Bhandarkar’s effective filing date to the date of constructive reduction to practice. We have reviewed Petitioner’s contentions as to how Bhandarkar teaches the subject matter of the claims, and we find them sufficiently persuasive at this stage. Based upon the above-discussed evidence and that the optical combiner claimed in claims 1, 2, 6, 7, and 9 would have been obvious to one of ordinary skill in the art over Bhandarkar. slip op. at 26
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“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. 68–69). 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”)2 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 (Paper 11). Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,198,416 - 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 - Nespresso USA, Inc. v. K-Fee System GmbHInstitutedPTAB · Sep 13, 2023 · IPR2023-00502 · APJ Grace Karaffa Obermann · IPR · Institution
Instituted IPR on claims 1–16 because Petitioner showed a reasonable likelihood that the claims would have been obvious over Yoakim, Jarisch, and Rapparini.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to claims 1–16 of the ’923 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). One may show support for the claims of a later application by showing that a single, earlier application provides written description support for the claims. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008); Studiengesellschaft Kohle, MBH v. Shell Oil Co., 112 F.3d 1561, 1564 (Fed. Cir. 1997) (noting that a patentee “cannot distinct previous applications”). Once Petitioner identifies a prior art reference with an effective filing date prior to that of the challenged patent, the burden of production to show entitlement to the benefit of the filing date of an earlier filed application shifts to Patent Owner. See In re NTP, 654 F.3d 1268, 1276 (Fed. Cir. 2011) (“a patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120”). Patent Owner may show possession of the invention through “such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). “Although the exact terms need not be used in haec verba, . . . the specification must contain an equivalent description of the claimed subject matter. A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Id.” slip op. at 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“Once Petitioner identifies a prior art reference with an effective filing date prior to that of the challenged patent, the burden of production to show entitlement to the benefit of the filing date of an earlier filed application shifts to Patent Owner. See In re NTP, 654 F.3d 1268, 1276 (Fed. Cir. 2011) (“a patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority . . . Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120”). Patent Owner may show possession of the invention through “such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). “Although the exact terms need not be used in haec verba, . . . the specification must contain an equivalent description of the claimed subject matter. A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Id.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“7. Analysis: Reasons to Combine the References Petitioner shows sufficiently that Yoakim, Jarisch and Rapparini are “analogous art in the field of portion capsule beverage extraction, each disclosing an invention that may be applied in automatic coffee/espresso machines.” Pet. 43. “Yoakim and Jarisch both improve the optimization of beverage parameters in a single-serve brewing system, and use optical codes read by the machine to achieve this.” Id. “Rapparini further improves the the wall of the capsule body like those used in Yoakim and Jarisch.” Id. at 43–44; see id. at 50–51, 53–54 (Petitioner’s further argument that Rapparini discloses “an optimized capsule structure that is stiffer and more stable” by virtue of radially spaced and vertically oriented ribs and grooves, where the vertically oriented grooves are free from extending entirely to the bottom region of the capsule). Petitioner directs us to additional evidence tending to establish that an ordinarily skilled artisan would have been prompted to modify Yoakim’s device, to include the code placement of Jarisch and the grooves and ribs of Rapparini, to arrive at the claimed invention with an expectation of success. Id. at 44–48.” slip op. at 27
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,994,923 - PTAB · Aug 30, 2023 · IPR2023-00521 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on claims 19–61 and 63–81 on all petitioned grounds, finding a reasonable likelihood that Doud anticipates claims 19–61 and 63–75.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . 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 set forth below, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one claim of the ’740 patent. Accordingly, we grant institution of an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“the application describe the claim limitations exactly,” the application must demonstrate to persons of ordinary skill in the art that the applicants invented a composition including those limitations. Wertheim, 541 F.2d at 262. On its face, the range of “at least 0.01 wt. %” encompasses a range that is broader than 0.01–35 wt. %, and Patent Owner does not sufficiently explain why a person of ordinary skill in the art would understand from merely a disclosure of 35 wt.% that the inventors were in possession of the entire claimed range for copper, cobalt, or nickel in the magnesium composition.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedOther
“On this record, the term “at least 0.01 wt. %” in the ’740 patent encompasses values for nickel, copper, and cobalt that are higher than the 35 wt. % (nickel and copper) and 20 wt. % (cobalt) limits outlined in the parent and grandparent applications. Accordingly, we determine that there is a reasonable likelihood that claim 19 of the ’740 patent is not entitled to the benefit of the filing dates of its priority applications. Challenged claims 20–61 and 63–75 depend from claim 19 and there is no argument presented that these claims have independent written description support in Doud. For example, there is no evidence presented that any of these dependent claims narrow the ranges for each of copper, nickel, and cobalt recited in in the ’295 application for these claims.7 Accordingly, for purposes of this Decision, we apply Doud as prior art to challenged claims 19–61 and 63–75.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“as the ’740 patent. For example, Doud and the ’740 patent both disclose a method of forming a novel magnesium composite that includes melting an AZ91D magnesium alloy containing 90 wt. % magnesium, 9 wt. % aluminum, and 1 wt. % zinc. Ex. 1005 ¶¶ 45, 47; Ex. 1001, 21:43–51, 22:48–53, 33:32–43, 34:9–12. To this alloy is added either 7 wt. % nickel or 10 wt. % copper. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:48–51, 22:53–56, 33:35–36, 34:12–13. These additives are mixed in the magnesium alloy at a temperature that is less than the melting point of copper or nickel, and the casting is then cooled. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:51–54, 22:56–58, 33:35, 34:12-13. Doud reports that nickel and copper, when added to molten magnesium, will form Mg2Ni and CuMg2 intermetallic, galvanically-active, in situ precipitates. Ex. 1005 ¶¶ 12–13. Doud discloses that the dissolution rate of the resulting casting material is either 325 mg/cm2-hr (nickel) or 50 mg/cm2-hr (copper) in a 3% KCl solution at 90° C. Ex. 1005 ¶¶ 45, 47, 53, 57; Ex. 1001, 21:60–62, 22:61–63, 33:41–43, 34:15–17. Doud also discloses that the average particle diameter of the additives used in the invention is generally “at least about 0.1 microns” and “typically no more than about 500 microns.” Ex. 1005 ¶ 6. Petitioner explains how the identified disclosures of Doud anticipate independent claim 19. Pet. 39–40. Petitioner also identifies where the limitations of dependent claims 20–61 and 63–75 are disclosed in Doud. Id. at 41–45. Patent Owner does not address Petitioner’s anticipation arguments with respect to claims 19–61 and 63–75, apart from arguing that Doud is not prior art to these claims. Prelim. Resp. 27–39. demonstrates a reasonable likelihood that claims 19–61 and 63–75 are anticipated by Doud.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,689,740 - Bright Data Ltd. v. Oxylabs, UabInstitutedPTAB · Jul 18, 2023 · IPR2023-00186 · APJ Iftikhar Ahmed · IPR · Institution
Instituted IPR of claims 1–20 on all asserted grounds; the Board found a reasonable likelihood of success on at least one claim and compelling merits for Scoda anticipation of claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Office (“USPTO”) issued a Memorandum7 titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Memo”), which states, among other things, that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memo 2. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. “This clarification strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Id. at 5. For the reasons that follow, although we find that Fintiv factors 1–5 weigh in favor of denying institution in this case, we determine that the Petition presents compelling merits as to the challenged claims, and thus, we decline to exercise our discretion to deny the Petition.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the parties’ briefing and the evidence of record, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’162 patent. Accordingly, we institute an inter partes review as to the challenged claims on the grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention of the ’091 patent would have had master’s degree or higher in the field of electrical engineering, computer engineering, or computer science, or would have had a bachelor’s degree in the same fields and two or more years of experience in internet communications. Pet. 15–16 (citing Ex. 1007 ¶¶ 30–31). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’091 patent and the prior art of record and is supported by the testimony of Dr. Williams.” slip op. at 17
- Expert testimonyPetitioner expert creditedDecided for petitioner
“recited in the Petition, does cite throughout to the asserted art and provides support for its assertions that the art discloses the claim language. We, therefore, determine Dr. Williams’s declaration is not without evidentiary support. See 37 C.F.R. § 42.63 (“Evidence consists of affidavits, declarations, transcripts of deposition, documents, and things.”). At this stage, we give weight to Dr. Williams’s testimony, which is the only testimony we have before us in this proceeding relating to the asserted art and how the art discloses the claim limitations. In contrast to the situation presented here, neither the petition nor the declarant in Xerox provided sufficient evidence to support the asserted positions; rather, the petition merely cited to the declaration which merely repeated the unsupported, conclusory assertions set forth in the petition. See Xerox Corp., IPR2022-00624, Paper 12 at 5 (stating the cited declaration testimony is conclusory and unsupported and adds little to the conclusory assertion for which it is offered to support); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”). That is not the case here. As noted above, however, the ultimate weight of Dr. Williams’ testimony will be determined in light of the full record adduced during trial.” slip op. at 28
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,516,091 - PTAB · Jan 12, 2023 · IPR2022-01090 · APJ Garth D Baer · IPR · Institution
The Board instituted inter partes review of claims 1–42 and 46–66 on all asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the present record, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that claims 1–42 and 46–66 would have been obvious over the asserted prior art. See id. at 33–96. Patent Owner raises several objections to Petitioner’s obviousness showing. We address those issues below.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“§ 325(d) because one of the asserted references, Nishitani, “was substantively considered by the Examiner during Supplemental Examination of the ʼ436 Patent.” PO Prelim. Resp. 7–8. In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). For the reasons given below, we are not persuaded to exercise our discretion to deny the Petition based on § 325(d).” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“The main concern motivating the General Plastic framework is “the potential for abuse of the review process by repeated attacks on patents” by a petitioner who files “[m]ultiple, staggered petitions challenging the same patent and same claims . . . . using our decisions as a roadmap, until a ground is found that results in the grant of review.” General Plastic, Paper 19 at 17. Here, the potential for abuse is minimal because this is the first time this petitioner has challenged the ’436 patent, and Patent Owner does not allege any connection or relationship between this Petitioner and the previous petitioners that might warrant exercising our discretion to deny institution. PO Prelim Resp. 14–15; Sur-reply 8–9; compare Valve Corp. v. Elec. Scripting Prods. Inc., IPR2019-00062, Paper 11 at 9–10 (Apr. 2, 2019) (precedential) (exercising discretion to deny institution based on a different petitioner’s earlier-filed petition where the different petitioners were co- defendants in a related district-court litigation, and where both petitioners were accused of infringing the challenged patent based on the same product incorporating technology licensed from petitioner Valve). In addition, it is reasonable that Petitioner filed its own Petition after the three previous petitions filed by unrelated parties given that “the present litigation dispute between Petitioner and Patent Owner did not begin until March 2021—well after the last of the three prior IPR petitions was filed.” Pet. Reply 10. Thus, this subsequent challenge against the ’436 patent appears to be a result of Patent Owner’s litigation activity, rather than Petitioner’s abuse of the review process. We find the circumstances in this case do not warrant denying the Petition under § 314(a).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionOther
“required in claims 1 and 18 “mean[s] that the two images are ‘captured independently of each other and without metadata (or other information) relating angles of cameras that captured the images.’” Pet. 5 (quoting Ex. 1004 ¶ 20). In addition to its expert, Petitioner cites as support the patent’s prosecution history, in which Patent Owner asserted this definition. Id. at 5–6 (citing Ex. 1003, 167–169; Ex.1004 ¶ 21). Patent Owner does not dispute Petitioner’s proposed construction in its Preliminary Response. Based on the present record, we agree with Petitioner that images that are not a stereoscopic pair means that the two images are captured independently of each other and without metadata (or other information) relating angles of cameras that captured the images.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,078,436
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.