- TCL Electronics Holdings Ltd. / TCL Industries Holdings Co., Ltd. v. University Of Rochester (Intellectual Ventures I, LLC)Institution deniedPTAB · Feb 13, 2025 · IPR2024-01245 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claims 1, 3, 4, 5, 8, 10, and 12 under § 314(a), finding the Fintiv factors favored denial and the petition did not show compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv factors”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) 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.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Thus, although Petitioner contends that Njølstad implements a dynamically changeable frequency for each domain wherein a local “rate requirement can dynamically be configured” such that “the locally generated clock rate is just high enough to perform the actual processing task” at that rate (Pet. 31 (citing Ex. 1009 § IV.D)), such teaching merely supports Petitioner’s contention that the frequency is dynamically changeable at the local level (id.). However, as Patent Owner points out, such showing is not a compelling disclosure of the frequency generation being independent of the frequencies of the other domains, as required by the challenged claims. Prelim. Resp. 28–34. For the foregoing reasons, we conclude that Petitioner has not presented compelling merits that Njølstad teaches “the frequency being dynamically changeable independently of the frequencies of the clock signals generated for others of the plurality of domains” as recited in claim 1 and similarly recited in claim 8.” slip op. at 25
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“However, Patent Owner argues that Iyer published after the invention to the ’443 patent was actually reduced to practice. Prelim. Resp. 27–28. In particular, Patent Owner provides evidentiary testimonies of Dr. Kaeli (Ex. 2001) and Mr. Albonesi (Ex. 2003) to support its contends the ’443 patent incorporates by reference a paper authored by the inventors and published in February 2002 (Ex. 2005), which demonstrates conception by providing a full written description of the claimed invention. Prelim. Resp. 6–16. According to Patent Owner, a simulation described in the paper embodied the invention in a tangible form, wherein the simulation described in the paper showed that the invention worked for its intended purpose. Id. at 16–19 (citing Exs. 2001, 2003, 2005). Similarly, Patent Owner contends that the application from which Soerensen issued was filed on August 29, 2002, which is after the invention date of the ’443 patent. Prelim. Resp. 35. According to Patent Owner, while Soerensen claims priority to the Soerensen Provisional Application (Ex. 1022), the passages from Soerensen relied on in the Petition are not entitled to the benefit of the filing date of the Soerensen Provisional Application because the subject matter was not disclosed in the manner provided by 35 U.S.C. § 112. Id. We recognize potential merits to Patent Owner’s position. That is, we do not find compelling Petitioner’s contention that the challenged claims would have been obvious Iyer or Soerensen.” slip op. at 31
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,089,443 - Lenovo (United States) Inc. v. Intellectual Ventures I LLCInstitution deniedPTAB · Feb 6, 2025 · IPR2024-01224 · APJ Larry J Hume · IPR · Institution
The Board denied institution because Petitioner did not show Dammann was prior art, defeating both obviousness grounds against claims 1-3, 7-11, 13-16, and 18.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “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 [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4 (2024). Having reviewed the parties’ papers and the evidence of record, and applying those standards, we determine that Petitioner has not shown a reasonable likelihood it would prevail in establishing the unpatentability of at least one challenged claim. Therefore, we decline to institute an inter partes review of any of challenged claims 1–3, 7–11, 13–16, and 18 of the ’439 patent, based on the grounds raised in the Petition.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Supported by the testimony of Dr. Ding, Petitioner asserts the level of ordinary skill in the art corresponds to a person having “a bachelor’s degree in electrical engineering, computer engineering, or the equivalent, from an accredited program, and two or more years of experience with wireless communications networks.” Pet. 21 (citing Ex. 1003 ¶ 38). Petitioner contends that “[m]ore practical experience could qualify one not having the aforementioned education as a [person of ordinary skill in the art (POSITA)], while a higher level of education could offset lesser experience.” Id. See generally Prelim. Resp. We note that the open-ended “or more” language set forth by Petitioner expands the range of experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation. Based on the record before us, and as modified above, we adopt Petitioner’s position as to the level of ordinary skill in the art at the time of the claimed invention, as articulated above. On this record, we are satisfied that Petitioner’s proposed definition, apart from the “or more” language, generally comports with the level of ordinary skill as reflected by the ‘439 patent and the asserted prior art. This definition also is supported by the testimony of Dr. Ding. See Ex. 1003 ¶ 38.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“cyclically advancing the first OFDM packet by shifting the samples in a first direction” in claims 1 and 8. Pet. 22. According to Petitioner, “[d]uring the Underlying Litigation, Petitioner explained that this term should be construed to mean ‘cyclically advancing the first OFDM packet by shifting the samples in the direction of transmission.’ Patent Owner argued that the correct construction is plain and ordinary meaning.” Id. Petitioner contends “[t]he construction Petitioner presented during the Underlying Litigation is correct, because that construction is the plain and ordinary meaning,” but “the scope of the claims includes the prior art under any reasonable construction” so “the Board does not need to construe any claim term for purposes of evaluating whether the claims cover the prior art addressed in this Petition.” Id. Patent Owner takes no position on the meaning of any claim terms; however, Patent Owner indicates that the district court construed “cyclically advancing the first OFDM packet by shifting the samples in a first direction” as “cyclically advancing the first OFDM packet by shifting the samples in the direction of transmission” (i.e., Petitioner’s proposed construction). Prelim. Resp. 22 n.2 (citing Ex. 2005, 8; Ex. 2006, 25–26). We do not find it necessary to address the construction of any claim terms or phrases to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 16
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As our reviewing court has held, “public accessibility” requires more than technical accessibility. Acceleration Bay, 908 F.3d at 773. “A reference is considered publicly accessible if it was ‘disseminated or skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 772. Because there is no evidence of record that Dammann was actually physically disseminated to the public, such as at the conference site, our inquiry is focused on whether an interested skilled artisan, using reasonable diligence, would have found Dammann on the “docenti.ing.unipi.it” website.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,623,439 - Zebra Technologies Corporation v. Intellectual Ventures I LLCInstitution deniedPTAB · Nov 20, 2024 · IPR2024-00883 · APJ Larry J Hume · IPR · Institution
The Board denied institution because Zebra did not show Dammann was a publicly accessible printed publication, so it was unavailable as prior art for either obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “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 [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4 (2024).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As our reviewing court has held, “public accessibility” requires more than technical accessibility. Acceleration Bay, 908 F.3d at 773. “A reference is considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 772. Because there is no evidence of record that Dammann was actually physically disseminated to the public, such as at the conference site, our inquiry is focused on whether an interested skilled” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“presented. For the reasons explained above, including Patent Owner’s arguments, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that the subject matter of claims 1, 3, 7–10, 13, 14, and 16 would have been obvious over Dammann and Hervin in view of the knowledge of a person of ordinary skill in the art. We reach this conclusion because, under our case law discussed above, we conclude that Petitioner has not sufficiently shown that Dammann is a printed publication. Accordingly, Dammann is not available in this proceeding as prior art to the claims of the ʼ439 patent. Because all of” slip op. at 32
- Obviousness (§103) › Analogous artNot reached
“b) Hervin’s Status as Analogous Art Patent Owner contends the Petition fails to show that Hervin is analogous art. Prelim. Resp. 38–40. The Petition does not address whether Hervin is analogous art to the invention claimed in the ʼ439 patent. See generally Pet. For purposes of our decision declining to institute trial, we need not reach a determination as to whether Hervin is analogous art to the claimed invention. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (explaining that an administrative agency “is at perfect liberty” to reach a decision based on a “single dispositive issue”); Bos. Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (non-precedential) (recognizing that the “Board need not address issues that are not necessary to the resolution of the proceeding”).” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,623,439 - Bank Of America, N.A. v. Nant Holdings IP, LLCInstitution deniedPTAB · Feb 15, 2022 · IPR2021-01389 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution because Bank of America did not show that Rhoads anticipates claims 1 and 3–5, failing to establish that document validity is determined using the image.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“and the symbol information,” as recited in claim 1. By its express terms, this limitation requires determining a validity of a document based on two things: (1) the image; and (2) the symbol information. Rhoads arguably discloses determining a validity of a document based on the symbol information, for example, the “Bedoop data” extracted from an ID badge. Pet. 36; Ex. 1022, 17:1–16; 17:23–31, 17:46–59. But Petitioner does not show sufficiently that Rhoads discloses determining a validity of a document based on the image, for example, an image of the ID badge.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“and the symbol information,” as recited in claim 1. By its express terms, this limitation requires determining a validity of a document based on two things: (1) the image; and (2) the symbol information. Rhoads arguably discloses determining a validity of a document based on the symbol information, for example, the “Bedoop data” extracted from an ID badge. Pet. 36; Ex. 1022, 17:1–16; 17:23–31, 17:46–59. But Petitioner does not show sufficiently that Rhoads discloses determining a validity of a document based on the image, for example, an image of the ID badge.” slip op. at 12
- Skill levelSkill level petitioner adoptedOther
“We find that Petitioner’s definition of a POSITA is consistent with the scope and content of the ’278 Patent and the asserted prior art, and we apply this definition for purposes of this Decision.” slip op. at 7
§ 102 anticipationcites PhillipsPatents in suitUS 9,031,278 - Shenzhen Mediatek Tong Technology Co., Ltd. v. The Noco CompanyInstitution deniedPTAB · Feb 5, 2021 · IPR2020-01387 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless “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). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the evidence and arguments presented by the parties, we determine that Petitioner has not shown a reasonable likelihood of prevailing on at least 1 of the challenged claims. Accordingly, the Petition is denied, and no inter partes review is instituted.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s articulation of the level of ordinary skill in the art is supported by the Declaration of Dr. Hartup. Ex. 1003 ¶ 46. It also appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Further, it is not objected to by Patent Owner. We adopt Petitioner’s articulation of the level of ordinary skill in the art, but delete the qualifier “a minimum of,” to keep that level from being vague and extending to a range that corresponds to the skill level of an expert. Thus, we regard the level of ordinary skill as being at the level of a person with “a bachelor’s 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284, 287–88 (2011), revised 35 U.S.C. §§ 102 and 103 effective March 16, 2013. Because the challenged patent has an effective filing date after March 16, 2013 (Ex. 1001, Codes (22), (63)), the effective date of the applicable AIA provisions, we refer to the post-AIA versions of §§ 102 and 103. degree in electrical engineering, or its equivalent, and two years of experience in studying or designing battery charging systems.” B.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner has not proposed a specific construction for any term, and is satisfied with their ordinary and customary meanings under the Phillips standard. Pet. 7. For the term “output port,” however, Petitioner states: “Petitioner has recognized the apparent construction given that term by Patent Owner in related litigation, and analyzed the term under both that more expansive interpretation, and its ordinary and customary meaning.” Id. at 7 n.1. Patent Owner also has not proposed a construction for any term, including the term “output port,” and asserts that no express construction for any term is necessary. Prelim. Resp. 7–8. For purposes of this decision, there is no dispute between the parties that would require claim construction to resolve. C.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“The limitation refers to the action of the claimed microcontroller, which receives input signals from the vehicle isolation sensor and the reverse polarity sensor and provides an output signal to the power switch. Ex. 1001, 8:23–25. According to this limitation, if a signal indicates absence of a vehicle battery, or if a signal indicates improper polarity connection to the vehicle battery, the power switch cannot be turned on. Facially, in its broadest possible reading, the requirement might allow the switch to be governed by one condition, not necessarily both. Neither party has read the language that way. Petitioner has applied the language as meaning both conditions govern operation of the power switch. Pet. 1, 4, 15–16. Patent Owner’s argument is consistent with that reading. Prelim. Resp. 15–18, 21–25. We have no reason to disagree with that understanding of the claim language, in light of the Specification of the ’015 patent.4 See e.g., Ex. 1001, 4:32–38 (“A smart switch FET circuit 15 electrically switches the handheld battery booster lithium battery to the vehicle’s electric system only when the vehicle battery is determined by the MCU 1 to be present (in response to a detection signal provided by isolation sensor 12) and connected with the correct polarity (in response to a detection signal provided by reverse sensor 4 The most expansive reading permitted by the literal language and not precluded by an express disclaimer is the broadest possible interpretation not satisfying even the broadest reasonable interpretation standard. See In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017). 10).”). Thus, the power switch can be turned on only in response to a signal indicating presence of a vehicle battery and a signal indicating proper polarity connection to that vehicle battery. Petitioner has not made a sufficient showing that that is true in Richardson.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,007,015 - Kingston Technology Company, Inc. v. Memory Technologies, LLCInstitution deniedPTAB · Jul 8, 2019 · IPR2019-00638 · APJ Jameson Lee · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–3, 5–7, 12–15, 19, or 25 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that 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.” 35 U.S.C. § 314(a). Having considered all submissions of both parties, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of any of claims 1–3, 5–7, 12–15, 19, and 25. The Petition is denied, and no inter partes review is instituted.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“result in permanent write protection to result in permanent write protection—lacks sufficient clarity. It is unclear whether a single instance of permanent write protection is sufficient to meet the limitation, or whether all future executions of the redefined command must result in permanent write protection until another redefinition occurs. We determine that, in the context of the Specification of the ’370 patent, the redefinition, when accomplished, applies to all future executions of the command until it is redefined again. It is insufficient to meet the limitation if, after the redefinition, the redefined command still may function the way it used to function prior to the redefinition.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“respect to the requirements of “to redefine the command to allow permanent write protection” as we have construed and discussed above. Nothing in Chevallier as identified by Petitioner indicates that setting the secure function bit to some value changes the meaning of the write protect command in the sense that it can no longer be used to provide temporary write protection, and can be used thereafter, until the next redefinition, solely to provide permanent write protection. The secure function bit of Chevallier, identified by Petitioner, serves only to enable the secure function (Ex. 1003 ¶¶ 37, 38, 40) and is nowhere described in Chevallier as changing the meaning of the locking command such that it no longer can be used to cause write protection of a memory block temporarily.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not found
“ordinary skill in the art would have found ambiguity in Chevallier’s embodiment in which the same command is used both for “locking” and for “securing.” In that regard, Petitioner refers to “any” ambiguity. The same is true with respect to Dr. Baker, who testifies: “a person having ordinary skill in the art would have been particularly motivated to use the secure function bit in that circumstance because doing so would eliminate any ambiguity as to whether the command meant ‘lock’ or ‘secure.’” Ex. 1006 ¶¶ 259, 270, 276 (emphasis added). Also, neither Petitioner nor Dr. Baker in the cited paragraphs of his Declaration addresses the specific disclosure in Chevallier that implements using one command to cause “locking” and the same command to cause “securing.” Chevallier describes: “The secure command used in the present invention, in one embodiment, is also used for another function within the memory device. However, in such an embodiment, the command is written to a different register that is assigned to that particular function.” Ex. 1003 ¶ 18 (emphasis added). Thus, there is no “ambiguity” as to whether the command means “lock” or “secure” in any instance because Chevallier uses different registers to distinguish between them. We are not sufficiently persuaded that there is ambiguity in Chevallier’s disclosure to be resolved. Petitioner’s assertion of a motivation that lies in resolving an ambiguity is not sufficiently supported by the record. Petitioner also argues, assuming that there is ambiguity: “A POSA [person of ordinary skill in the art] would understand that Chevallier’s secure function bit, which enables and disables the secure function, could provide the beneficial specificity—if the secure function is not enabled, then the command results in the lock function; if the bit is enabled, then the command results in the secure function.” Pet. 42 (emphasis added). This argument also is not persuasive. The issue is not whether one with ordinary skill in the art “could” perform an operation but whether one with ordinary skill in the art, without application of improper hindsight, would have reason and want to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015); Fresenius USA, Inc. v. Baxter Intern., Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009). Here, whether one with ordinary skill in the art would want to do in Chevallier what Petitioner proposes is not sufficiently explained. Chevallier expressly states that the secure function it provides is an added feature relative to the locking function. Ex. 1003 ¶ 29. Thus, the two functions are concurrently supported in Chevallier, not mutually exclusively at any one time. The limitation “to redefine the command to allow permanent write protection” as we have construed it above, is contrary to Chevallier’s concept and implementation. Petitioner has not adequately explained why one with ordinary skill in the art would have wanted to modify Chevallier to eliminate concurrent support for both functions. For determining obviousness, the benefits, both lost and gained, in making a modification, should be weighed against each other. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1348 (Fed. Cir. 2000).” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,827,370 - Adobe Systems Incorporated v. William GreciaInstitution deniedPTAB · Jun 21, 2018 · IPR2018-00418 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because Petitioner did not show Venkataramu was a publicly accessible printed publication, defeating every obviousness ground for claims 1–26.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“We agree with Patent Owner. To determine a date on which Venkataramu was publicly accessible, we look to evidence of the SJSU library’s cataloging and indexing practices, as well as any search capability of the library’s website. See Blue Calypso, 815 F.3d at 1348; Voter Verified, 698 F.3d at 1380; SRI, 511 F.3d at 1196. Neither Petitioner nor Mr. Butler offers sufficient evidence that Venkataramu was sufficiently indexed or catalogued at SJSU for access. That the Internet Archive captured and archived a copy of Venkataramu does not mean, by itself, that Venkataramu was sufficiently indexed or catalogued at SJSU. Nor does it reveal anything about the search capabilities of the SJSU library website. Mr. Butler does not claim to have personal knowledge of the general library practices of the SJSU library, or the search capabilities of the SJSU library website. For example, he does not testify as to the procedures, if any, the university uses to index or catalog project reports, or the manner, if at all, in which project reports are indexed or cataloged (e.g., by author, title, subject). He also does not testify as to the search capabilities of the SJSU library website. Further, neither Petitioner nor Mr. Butler introduces any evidence that Venkataramu was actually disseminated to any interested skilled artisans prior to the earliest possible effective filing date for the ’555 patent. Additionally, Petitioner has not explained why making a copy of Venkataramu accessible on the Internet Archive constitutes publication of Venkataramu on the Internet Archive as of October 2, 2008. In that regard, we note that Mr. Butler’s Affidavit does not indicate that the archived files are searchable through a subject matter index or catalog.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In view of the foregoing, we determine that Petitioner has not shown sufficiently that Venkataramu was publicly accessible prior to the earliest possible effective filing date for the ’555 patent. Therefore, Petitioner has not shown that Venkataramu qualifies as a printed publication. Because each of Petitioner’s asserted grounds relies on Venkataramu, Petitioner has not demonstrated a reasonable likelihood of showing that any of claims 1–26 would have been obvious over any of the asserted grounds. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any challenged claim of the ’555 patent. V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 13
§ 102 anticipationPatents in suitUS 8,402,555 - PTAB · Jan 24, 2017 · IPR2016-01476 · APJ Kerry Begley · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted unless “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.” Having considered the Petition and the Preliminary Response, we determine that the information presented does not show that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’342 patent. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Skill levelSkill level board ownOther
“art. We determine that in this case, no express articulation of the level of ordinary skill is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We conclude that the plain and ordinary meaning of the word “subsystem” as understood by a person of ordinary skill in the art requires that both the “subsystem” and the “system” to which it is subordinate must be “systems.” As evidence of this construction, we note that a dictionary of electrical and electronics terms defines “subsystem” as “[a] system which is subordinate to another system.” Subsystem, WILEY ELECTRICAL AND ELECTRONICS ENGINEERING DICTIONARY 755 (2004) (also defining the term as “[a] system which is a part of, or assists, a larger system”) (Ex. 3001); see subsystem, ACADEMIC PRESS DICTIONARY OF SCIENCE AND TECHNOLOGY 2126 (1992) (“a portion of a system that can be treated as a single element in the main system, but that can also be considered a distinct system itself”) (Ex. 3002).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Under 37 C.F.R. § 42.104(b)(3), the Petition “must set forth . . . [h]ow the challenged claim is to be construed.” Here, the Petition falls short of this requirement by merely listing, without endorsing, Patent Owner’s proposed construction before the district court under a different claim construction standard supported only by a citation to a claim chart filed in the district court, which lacks any analysis or evidentiary support (e.g., citations to the intrinsic record of the ’342 patent). See Pet. 13–14, 16; Ex. 1004, 47; see also PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 734, 740–43 (Fed. Cir. 2016) (explaining that district courts apply the claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and that this standard differs from the broadest reasonable interpretation standard that the Board applies to unexpired patents). Therefore, Petitioner has not complied with 37 C.F.R. § 42.104(b)(3) or adequately proffered the term for construction in this proceeding. Moreover, having considered the specification of the ’342 patent and the parties’ arguments in this proceeding, we determine that “generated . . . for playing on the car audio/video system,” as recited in claims 49 and 73 of the ’342 patent, does not require an express construction beyond the plain and ordinary meaning of its terms to resolve the issues presented by the 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim terms that “are in controversy” need to be construed and “only to the extent necessary to resolve the controversy”). 3. Other Claim Terms Based on our review of the record and the dispositive issues in our determination of whether to institute inter partes review on the asserted grounds of unpatentability, we need not address the construction of any other claim terms. See id.; Pet. 13–16; Prelim. Resp. 5.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,155,342 - Toyota Motor Corporation v. Blitzsafe Texas, LLCInstitution deniedPTAB · Jul 6, 2016 · IPR2016-00422 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Toyota did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that 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.” 35 U.S.C. § 314(a). Having considered both the Petition and the Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of any claim. Thus, we do not institute an inter partes review of any claim of the ’786 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“functionally and structurally separate” from the car stereo, the proposed construction is incomplete in that it omits any requirement of separation or distinctness of the interface from the portable or after-market device connected thereto. Prelim. Resp. 6–7. Second, the proposed construction is too narrow by specifying that the interface “integrates an after-market device with a car stereo.” We note that the Specification of the ’786 patent provides a special definition for “integration” or “integrated.” Ex. 1001, 4:47–52. We discern no reason to import limitations into a claim if they are unnecessary to accord meaning to the claim. Third, the proposed construction is too narrow by requiring the interface to be a microcontroller. In the Specification of the ’786 patent, the term “interface” is described as including not only a microcontroller but also several discrete components, such as resistors, diodes, capacitors, transistors, oscillators, amplifiers, and multiplexers, shown in various embodiments of Figures 3A, 3B1–3B2, 3C1–3C2, and 3D. Ex. 1101, 9:8–20, 10:19–33, 11:4–18, 11:59–67. As such, the term “interface” itself is not limited to a microcontroller. In that regard, note that if the interface itself is construed as a microcontroller, as Petitioner proposes, then the additional claim language reciting that the interface includes a microcontroller would serve no meaningful purpose. slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“dashed lines, and the parts regarded by Petitioner as the portable or after-market device in green and surrounded by dashed lines. We are unpersuaded by Petitioner’s identification of the part colored blue in the above-reproduced illustration to meet the requirement of the interface in claims 57 and 86. First, there is insufficient showing of separate structural identity between the alleged “interface” and the portion colored green by Petitioner in the same illustration and alleged as by Petitioner as the external device. Both blue and green portions are component parts within Lau’s music server 102. It would be incorrect to regard them as having separate structural identities. Petitioner has not adequately explained what accords these portions separate structural identities, e.g., separate supporting frames, independent housing, etc. Also, Petitioner has not identified any description within Lau that refers to the combination of parts labeled in blue as collectively constituting a unit of any kind, or that refers to the combination of parts labeled in green as collectively constituting a unit of any kind. Thus, the separate structural identity requirement between the alleged interface and a portable MP3 player (claim 57) or an after-market video device (claim 86) is not met.” slip op. at 19
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“The above-quoted recitations of claim 92 presumptively set forth elements under 35 U.S.C. § 112, ¶ 6, and are construed to cover the corresponding structure, material, or acts described in the specification and equivalents 3 Paragraphs 1 through 6 of § 112 were renamed as paragraphs (a) through (f) when § 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112– 29, 125 Stat. 284, 329 (2011) (“AIA”) took effect on September 16, 2012. Because the patent application resulting in the ’786 patent was filed before the effective date of the AIA, we refer to the pre-AIA version of § 112. thereof. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). For a means-plus-function element under 35 U.S.C. § 112, ¶ 6, the Board’s trial rules require the Petition to identify the corresponding structure, material, or acts corresponding to each claimed function. Specifically, 37 C.F.R. § 42.104(b)(3) governs the content of a petition with respect to claim construction and provides: “[w]here the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. § 112 [, ¶ 6], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.”4 37 C.F.R. § 42.104(b)(3). The “construction” referred to by 37 C.F.R. § 42.104(b)(3) is the construction proposed by the Petitioner, one that Petitioner believes is the correct construction under applicable law and should apply in the involved proceeding. Here, Petitioner did not comply with 37 C.F.R. § 42.104(b)(3).” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,489,786 - HP Inc. v. Memjet Technology LimitedInstitution deniedPTAB · Jun 16, 2016 · IPR2016-00356 · APJ John F Horvath · IPR · Institution
The Board denied institution because HP did not show a reasonable likelihood that claims 1–5 were anticipated by Mizusawa or obvious over Mizusawa and Freund.
RulingsInstitution decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“When a claim limitation does not include the word “means,” a rebuttable presumption is created that § 112, ¶ 6 does not apply. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). However, this presumption can be overcome if the limitation “fails to ‘recite[] sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.” Id. (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). The limitation “web-feeding mechanism for advancing the web past the printhead” recites a function—advancing the web past the printhead— without reciting sufficient structure for performing that function. The only “structure” recited for advancing the web past the printhead is a web-feeding mechanism. But “mechanism” is a nonce word that fails to connote definite 3 Pub. L. No. 112–29, 125 Stat. 284 (2011) structure. See Williamson, 792 F.3d at 1350 (“Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words . . . reflect nothing more than verbal constructs [that] may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, ¶ 6.”). Thus, the only “structure” recited for performing the function of advancing the web past the printhead—a web-feeding mechanism or mechanism for feeding the web—is little more than a redundant statement of the function that is to be performed. Accordingly, the “web-feeding mechanism” limitation recited in claim 1 is a means-plus-function limitation that is subject to construction pursuant to 35 U.S.C. § 112, ¶ 6.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“plus-function limitation subject to construction under 35 U.S.C. § 112, ¶ 6. To prove unpatentability “of a means-plus-function claim, the invalidating prior art must disclose not simply a means for achieving the desired function, but rather the particular structure recited in the written description corresponding to that function, or an equivalent thereof.” McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1361 (Fed. Cir. 2001). That is, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009). Petitioner has failed to identify any structure, material, or acts in the’475 patent corresponding to the function of advancing the web past the printhead. See 35 U.S.C. § 112, ¶ 6; see also 37 C.F.R. § 42.104(b)(3). Consequently, Petitioner has failed to sufficiently demonstrate that Mizusawa’s paper supplying roller PSR and paper exhausting roller POR are the same as the structure disclosed in the ’475 patent for advancing the web past the printhead, or an equivalent thereof. Accordingly, on this record, Petitioner has failed to show a reasonable likelihood that it would prevail in establishing the anticipation of claims 1–5 by Mizusawa.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“2. Comparison of Claims 1–5 to Mizusawa Claims 1–5 require “a web-feeding mechanism for advancing the web past the printhead.” Ex. 1001, 100:40–41. Petitioner alleges Mizusawa’s paper supplying roller PSR and paper exhausting roller POR, which advance cleaning paper CP past recording head IJH, are a web-feeding mechanism. See Pet. 30–31, 51; Ex. 1004, 8:8–25, Fig. 14. As noted in § II.B supra, the “web-feeding mechanism” is a means- plus-function limitation subject to construction under 35 U.S.C. § 112, ¶ 6. To prove unpatentability “of a means-plus-function claim, the invalidating prior art must disclose not simply a means for achieving the desired function, but rather the particular structure recited in the written description corresponding to that function, or an equivalent thereof.” McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1361 (Fed. Cir. 2001). That is, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009). Petitioner has failed to identify any structure, material, or acts in the’475 patent corresponding to the function of advancing the web past the printhead. See 35 U.S.C. § 112, ¶ 6; see also 37 C.F.R. § 42.104(b)(3). Consequently, Petitioner has failed to sufficiently demonstrate that Mizusawa’s paper supplying roller PSR and paper exhausting roller POR are the same as the structure disclosed in the ’475 patent for advancing the web past the printhead, or an equivalent thereof. Accordingly, on this record, Petitioner has failed to show a reasonable likelihood that it would prevail in establishing the anticipation of claims 1–5 by Mizusawa.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“2. Comparison of claims 1–5 to the combination of Mizusawa and Freund As discussed in § II.C.2, supra, claims 1–5 require “a web-feeding mechanism for advancing the web past the printhead.” Ex. 1001, 100:40– 41. Petitioner alleges Mizusawa’s paper supplying roller PSR and paper exhausting roller POR disclose this limitation. See Pet. 41, 51; Ex. 1004, 8:8–25, Fig. 14. As discussed in § II.C.2, supra, because Petitioner has failed to identify the structure in the ’475 patent corresponding to the web-feeding mechanism for advancing the web past the printhead, Petitioner has failed to sufficiently demonstrate that Mizusawa’s paper supplying roller PSR and paper exhausting roller POR are the same structure, or an equivalent thereof. Accordingly, on this record, Petitioner has failed to show a reasonable likelihood that it would prevail in establishing the unpatentability of claims 1–5 over Mizusawa and Freund.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,056,475
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.