- Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution deniedPTAB · Aug 23, 2024 · IPR2024-00458 · APJ Brian D Range · IPR · Institution
The Board denied institution on both §103 grounds because neither combination showed a reasonable likelihood that claims 1–4 and 11–14 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review on the grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (POSITA): would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing [graphical user interfaces (GUIs)] for computing devices. [Ex. 1003] ¶ 20–22. More education could substitute for experience and vice versa. Id. Pet. 14; see also Ex. 1003 ¶ 21 (Dr. Houh testifying that this level of skill is appropriate). Patent Owner does not dispute the level of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner argues that in IPR2021-00786, the Board construed “plurality of views of a plurality of visual representations of computer content” as “referring to a plurality of ways of organizing visual representations of computer content.” Pet. 14–15 (citing IPR2021-00786, Paper 6, 13–16). IPR2021-00786 involved U.S. Patent No. 9,880,715 B2 (“the ’715 patent”). Petitioner further notes that “the Board found [this] limitation ‘is distinct from merely providing a plurality of ways of displaying content (by, for example, changing display orientation, color, resolution, etc.).” Id. Petitioner further argues that during a reexamination proceeding of the ’715 patent, “the Examiner also clarified that the ‘plurality of views’ limitation does not encompass merely changing to entirely different content.” Id. (citing Ex. 1005 (90/014,958 Ex Parte Reexamination)). Petitioner’s witness, Dr. Houh, applied this construction when forming opinions and Petitioner proposes that we adopt this construction in this proceeding. Ex. 1003 ¶ 53; Pet. 15.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Here, claim 1 requires the functionality of, for example, “selecting one of the plurality of views for display on the computer system in response to the detected current computer system configuration.” Ex. 1001, 71:34–36. As in Arendi and DSS, this functionality plays a major role in the subject matter claimed; this selection as at the heart of the ’818 patent. See, e.g., Ex. 1001, 2:49–62 (explaining that patent is directed to providing different views). We also determine that the limitation is not “unusually simple.” The cited art understood that display orientation could be modified based on a change in configuration (Pröll) and understood that a view could be selected based on a user’s active choice (the user shaking the device as in Martinez6), but the cited art did not recognize selecting a view based on a change of configuration. Prelim. Resp. 41. The evidence of record does not indicate that recognition of this function would be “unusually simple.”” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,564,818 - Apple Inc. v. RJ Technology, LLCInstitutedPTAB · Aug 20, 2024 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Apple’s motion to join IPR2023-01183.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition. And, for the reasons set forth below, we grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20197 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. at 11–12 (citing Ex. 1002 ¶¶ 50–51). Upon review of the prior art of record and the Petitioner’s arguments, we adopt Petitioner’s uncontested definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the ’641 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides constructions for the terms “A method for improving . . . characterized in that,” “ratio of positive electrode material to negative electrode material as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V” (claim 5), “as calculated by a specific capacity with a charge voltage limited to 4.2 V” (claim 1), and “at least 7500 of capacity” (claim 11). Pet. 8–11. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,749,641 - Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.Rehearing deniedPTAB · Aug 12, 2024 · IPR2024-00267 · APJ Avelyn M Ross · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show a reasonable expectation of success for the proposed § 103 combination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“green, left), placed inside the housing between the housing and heating element (red), and surrounding the heating element and portions of the liquid storage portion (blue). Otherwise, Combined Figure 4 is nearly the same as Annotated Figure 4. Compare Combined Fig. 4, with Ann. Fig. 4. Thus, Petitioner does not propose a simple substitution to include the mouthpiece housing of Thorens231 in the device of Thorens788 in the same manner as used in Thorens231. Rather, Petitioner proposes including the mouthpiece housing of Thorens231 in the device of Thorens788 and then further modifying its placement by inserting it into the housing. See Combined Fig. 4. Neither Petitioner nor Dr. Janet persuasively explain why this arrangement would be expected to be successful nor do they allege that such a modification would have been within the skill set of the ordinarily skilled artisan. In contrast, Patent Owner explains that Petitioner’s [Combined] Figure 4 appears to block any airflow through the device and out of the mouthpiece. Petitioner and its expert do not account for how the mouthpiece would be secured to the liquid storage portion in Thorens788. Moreover, as drawn by Petitioner, the wick touches what is presumably the air inlet for the mouthpiece (although Petitioner does not discuss where the air inlet is), which could adversely impact performance or user experience, such as draw resistance[.] Prelim. Resp. 50–51. Because Petitioner did not direct our attention to any argument or testimony to account for whether or how the modified device would function, Petitioner did not meet its initial burden of proof of showing that a person of ordinary skill in the art would have had an expectation of success in the combination. See Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1348–49 (Fed. Cir. 2021) (explaining that it is “at all times, [petitioner’s] burden to show that the claims would have” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Prelim. Resp. 50–51. Because Petitioner did not direct our attention to any argument or testimony to account for whether or how the modified device would function, Petitioner did not meet its initial burden of proof of showing that a person of ordinary skill in the art would have had an expectation of success in the combination. See Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1348–49 (Fed. Cir. 2021) (explaining that it is “at all times, [petitioner’s] burden to show that the claims would have been obvious, including that the skilled artisan would have had a reasonable expectation of success in achieving the claimed invention”).” slip op. at 8
§ 103 obviousnesscites KSRPatents in suitUS 11,134,722 - Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.Institution deniedPTAB · Aug 12, 2024 · IPR2024-00536 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution because NJOY did not show a reasonable likelihood of proving any challenged claim obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed prior art.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have at least a B.S. degree in Mechanical Engineering, Electrical Engineering, Industrial Design, Product Design, or similar field, with at least two years of industry experience in one of these fields, and such POSA would have been familiar with electrically powered vaporizing articles, their components, or the underlying technologies.” Pet. 6–7. Patent Owner argues that a person of ordinary skill in the art “would have had a B.S. in mechanical engineering, electrical engineering, or an equivalent degree, and either at least two years of experience designing electro-mechanical consumer products or an advanced degree in mechanical engineering, electrical engineering, or an equivalent field,” and that “[m]ore education can substitute for practical experience and vice versa.” Prelim. Resp. 8 (citing Ex. 2001 ¶¶ 17–22). In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’981 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’981 patent and the prior art. However, our decision would not change if we applied Patent Owner’s definition.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“None of the constructions proffered by Petitioner is dispositive of the issue of whether to institute inter partes review. We determine that it is not necessary to provide an express construction for any term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“integrate Liu783’s connector with its battery component in order to decrease the possibility of damage to the device during assembly/disassembly. Pet. 23. Petitioner, however, does not provide any evidence that such damage was a point of concern. See generally Pet. Nor does Petitioner sufficiently explain how the integrated battery component/connector would result in less damage. See id. (failing to quantify the alleged benefit nor providing any evidence to support its contention that an integrated connector/battery component would decrease damage to the device). Nor does Petitioner sufficiently support its contention that the modified Liu783 device would be more beneficial to the consumer because there are fewer pieces to assemble or misplace. See id. Indeed, Petitioner’s argument runs directly counter to Liu783’s own disclosure which asserts that its three-piece design is more convenient than the previous two-piece design. See, e.g., Ex. 1005 ¶ 19 (stating “assembly and detachment of the atomizer and the connector become very convenient”), ¶ 3 (stating an “object of the present invention is to . . . facilitate the installation, detachment, and replacement of the electronic cigarette). Similarly, Petitioner does not sufficiently support its contention that integrating the components would reduce the complexity and expense of manufacturing the device (Pet. 23), which is counter to Liu783’s statement that the object of its invention is to “decrease manufacture and use cost” (Ex. 1010 ¶ 3). Conclusory statements by an expert that do not disclose the underlying facts or data on which the opinion is based are entitled to little or no weight. 37 C.F.R. § 42.65(a).” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,606,981 - ARM Limited v. Icpillar LLCInstitutedPTAB · Aug 7, 2024 · IPR2024-00566 · APJ Donna M Praiss · IPR · Institution
The Board instituted IPR on claims 1, 5, 6, 8, 9, 15, and 16 on all asserted grounds, finding a reasonable likelihood that claim 1 is unpatentable over Banerjee.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’657 patent, and we determine inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“clarifications concerning the application of the Fintiv factors. See Interim Procedure For Discretionary Denials In AIA Post-Grant Proceedings With Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”).9 The Guidance Memo clarifies “the PTAB’s current application of Fintiv to discretionary institution where there is parallel litigation.” Id. at 2. The Guidance Memo instructs us not to “discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Id. at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Guidance Memo” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“For purposes of this Decision, we construe the term “outputting by the processor software programming commands to be executed by the hardware integrated circuit for controlling the electronic device” as referring to software programming commands that are capable of controlling an electronic device, that are output by a processor, and that are not merely a circuit design for fabrication. We emphasize that this construction is preliminary and based on the current record; to the extent the parties wish to argue for a different construction or to further clarify this construction, we encourage them to present arguments and supporting evidence at trial. For the purposes of this Decision, we need not expressly construe any” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“On the present record, we determine that Petitioner has shown sufficiently that Banerjee teaches outputting software intended to be installed on the designed integrated circuit that is capable of controlling the device into which the designed integrated circuit is installed. At paragraphs 72–83, Banerjee discloses the operation of its operating system optimization module. Ex. 1005 ¶¶ 38, 72–83. In particular, Banerjee teaches that the operating system optimization module can “compile a symmetric multiprocessing operating system” and that “the optimized operating system is compiled into a reduced footprint operating system that is instantiated in the device.” Id. ¶¶ 82–83. Because Banerjee teaches both compiling an operating system and instantiating that operating system in the designed device, the present record shows sufficiently that Banerjee teaches outputting software to run on the designed device. Patent Owner’s declarant, Joseph C. McAlexander III, P.E., disagrees with this interpretation, testifying that Banerjee’s paragraph 83 teaches only “compil[ing] the characteristics of the typical or ‘baseline’ ‘operating system configuration’ . . . in order to analyze its expected ‘footprint’ on the IC and how it is expected to be instantiated on the device.” Ex. 2001 ¶ 65. But the idea that Banerjee is concerned only with analyzing how the operating system is expected to be instantiated appears to contradict Banerjee’s teaching that the “reduced footprint operating system . . . is instantiated in the device,” which suggests actual, not merely expected, instantiation in the device. On the present record, beyond stating that “Banerjee only outputs a hardware description file,” Mr. McAlexander does not explain why Banerjee should be interpreted in this alternate fashion. Id. ¶ 66 (citing Ex. 1005 ¶¶ 44, 69, 84). There is no explanation of why the cited paragraphs of Banerjee should be interpreted to limit Banerjee’s disclosure (which, as discussed above, includes a teaching that the operating system is compiled and instantiated in the designed device) to merely outputting a hardware description file. Id. Accordingly, on the present record, Petitioner has shown sufficiently that Banerjee teaches or suggests limitation 1[d].” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,367,657 - ARM Limited v. Icpillar LLCInstitutedPTAB · Aug 7, 2024 · IPR2024-00476 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted review of claims 1, 5, 6, 8, and 14 on all asserted grounds, finding a reasonable likelihood that Banerjee renders at least claim 1 obvious.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art would be “familiar with automated circuit design” and “possess[] this knowledge through training and work experience, including have a Bachelor’s or Master’s Degree in computer science, electrical engineering, or a related field, with at least three years of practical experience.” Pet. 11–12. At this stage of the proceeding, Patent Owner does not challenge the Petitioner’s definition of a person of ordinary skill in the art. See Prelim. Resp., generally. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’899 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“According to Petitioner, the term should be broadly construed to encompass “internal outputs from compilers that are then used by other portions of the design” and “any form of software or mechanics of ‘providing’ software.” Prelim. Reply 1–3. Petitioner contends that the term must be construed broadly to encompass the embodiment shown in the ’899 patent’s Figure 4 illustrating output 71 of compiler 67, which is an internal input to ASIC Design 69 described as “a circuit design such as a layout or a schematic that can be sent out to a manufacturer for fabrication.” Id. at 1–2 (quoting Ex. 1001, 9:59–61) (emphasis omitted). Petitioner directs us to the disclosure that Figure 4’s output 71 (ASIC Programming) “may be software to be programmed and/or stored in a fabricated ASIC.” Id. at 2 (quoting Ex. 1001, 9:61–62) (emphasis omitted). Petitioner contends that the ’899 patent defines “software” broadly. Id. Specifically, Petitioner directs us to a portion of the ’899 patent’s specification that states “[h]erein, reference to software may encompass one or more applications, byte code, one or more computer programs, one or more executable, one or more instructions, logic, machine code, one or more scripts, or source code, and vice versa where appropriate.” Ex. 1001, 17:6–10. Patent Owner asserts that Petitioner’s proffered claim construction is incorrect because the language of the claim itself “does not suggest ‘internal’ software for use by the design tool, nor that the second recited ‘output[]’ could be part of the first.” Prelim. Sur-Reply 2. According to Patent Owner, viewed in context, the ’899 patent defines “software” broadly for “an exemplary computer system, not the invention’s outputs.” Id. Patent Owner asserts this definition describes the software types that a computer could execute, not a definition of “software programming commands” recited in claim 1[d]. Id. Regarding the ’899 patent’s Figure 4, Patent Owner asserts that Petitioner has not shown that Programming 71 must be an internal output for internal use because both Design 69 and Programming 71 are shown as outputs, not inputs, of the compiler. Id. at 4. Regarding the term “layout,” Patent Owner asserts this is merely a description of physical hardware for fabrication and that “[i]t is impossible for ‘software programming commands’ to be ‘stored in “layouts.”’ Id. at 3 (citing Ex. 2001 ¶¶ 32, 76, 90). For purposes of this Decision, we construe the term “outputting by the processor software programming commands to be executed by the hardware integrated circuit for controlling the electronic device” as referring to software programming commands that are capable of controlling an electronic device, that are output by a processor, and that are not merely a circuit design for fabrication. We emphasize that this construction is preliminary and based on the current record; to the extent the parties wish to argue for a different construction or to further clarify this construction, we encourage them to present arguments and supporting evidence at trial.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“clarifications concerning the application of the Fintiv factors. See Interim Procedure For Discretionary Denials In AIA Post-Grant Proceedings With Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”).5 The Guidance Memo clarifies “the PTAB’s current application of Fintiv to discretionary institution where there is parallel litigation.” Id. at 2. The Guidance Memo instructs us not to “discretionarily deny institution in view of parallel district court litigation where a petitioner presents a 5 Available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf. stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Id. at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). When such a stipulation is offered after the Board’s decision on whether to institute review, it is too late to gain the benefit of the rule articulated in the Guidance Memo. NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13, 4 (PTAB Sept. 7, 2022) (precedential). Here, Petitioner “stipulates ‘not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.’” Prelim. Reply 10 (quoting Ex. 1020, 1). Petitioner offered this stipulation prior to a decision on whether to institute review, so it is timely under NXP. Accordingly, pursuant to the Guidance Memo, we do not exercise discretion under Fintiv to deny institution.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion Regarding Claim 1 Based on the current record, we determine that there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Banerjee. Accordingly, we institute inter partes review with respect to all grounds asserted in the Petition. 3. Claims 5, 6, 8, and 14 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’899 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,924,899 - Philip Morris Products, S.A. v. Rai Strategic Holdings, Inc.All claims unpatentablePTAB · Jul 31, 2024 · PGR2020-00071 · APJ Jeffrey W Abraham · PGR · Remand
On remand, the Board held claims 10 and 27 unpatentable as obvious over Robinson, Greim, and Adams because skilled artisans would have optimized heater length through routine experimentation.
RulingsRemand decision- RemandOther
“Standard Operating Procedure 3 communicating the parties’ positions on submitting additional briefing on remand. Ex. 3001.2 We responded on April 15, 2024, authorizing the parties to file additional briefs limited to the question of “whether the Federal Circuit’s determinations on written description are applicable to an obviousness analysis, and if so, how they should be applied.” Ex. 3001. Petitioner filed its Supplemental Brief on Remand on April 29, 2024 (Paper 41, “Pet. Supp. Br.”), and Patent Owner filed its Supplemental Reply Brief on Remand on May 13, 2024 (Paper 42, “PO Supp. Reply”). B. The Issue on Remand As part of our Final Written Decision, we determined that Petitioner established, by a preponderance of the evidence, that claims 10 and 27 lack adequate written description support. FWD 38–41. In view of this, we declined to address Petitioner’s arguments that claims 10 and 27 are unpatentable as obvious in view of Robinson,3 Greim,4 and Adams.5” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a Bachelor’s degree in mechanical engineering, electrical engineering, chemistry, or physics, or a related field, and three to four years of industry experience, or a Master’s degree in mechanical engineering, electrical engineering, chemistry, or physics, or a related field, and one to two years of industry experience. Such a [person of ordinary skill in the art] would have been familiar with electrically powered smoking articles and/or the components and underlying technology used therein. Pet. 14 (citing Ex. 1004 ¶¶ 26–30). Patent Owner states that “[f]or purposes of the trial in this proceeding, [Patent Owner] accepts Petitioner’s proposed education and experience level of the [person of ordinary skill in the art].” PO Resp. 13. In view of the foregoing, for purposes of this Decision, we adopt Petitioner’s definition of a person of ordinary skill in the art. The prior art of record reflects this level of ordinary skill. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[t]he challenged claims are unpatentable under any reasonable construction,” and, “for purposes of this proceeding . . . adopts the plain meaning of the claims and submits that no claim term requires construction.” Pet. 14. Patent Owner contends it was improper for Petitioner to adopt the plain meaning of the claims without explaining what it considers the plain meaning of each claim term to be. PO Resp. 13. Patent Owner does not offer a construction for any claim term. PO Resp. 13. After considering the full record developed during trial, we determine that no claim limitations need an express construction for purposes of resolving the controversy.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Although Patent Owner is correct that Petitioner does not direct us to any disclosure of a heating member having a length that “falls within the claimed range,” such a disclosure in the art is not required for a showing of obviousness. See, e.g., In re Huang, 100 F.3d 135, 136 (Fed. Cir. 1996). In Huang, the claim required a racquet grip comprising a textile layer and a polyurethane layer, and that the ratio of their thicknesses be “larger than approximately 0.18.” Id. at 137. The prior art disclosed a textile layer and polyurethane layer in thickness ratios ranging from 0.111–0.142. Id. at 136. Although the prior art did not disclose a ratio in the claimed range, the Federal Circuit affirmed the Board’s obviousness rejection because the evidence showed that “one of ordinary skill in the art would have experimented with various thicknesses to obtain an optimum range.” Id. at 139; see In re Aller, 220 F.2d 454 (CCPA 1955) (affirming an obviousness rejection of a claim to a chemical process reciting use of 25– 70% sulfuric acid at 40–80 degrees when the prior art disclosed the same reaction with 10% sulfuric acid at 100 degrees); In re Hill, 284 F.2d 955 (CCPA 1960) (affirming an obviousness rejection of a claim to a chemical process conducted at 150–250 degrees when the prior art disclosed the same reaction at 300 degrees). The Federal Circuit also noted that “Huang does not contend that he has achieved unexpected results by increasing the thickness of the polyurethane layer.” Huang, 100 F.3d at 139–140. Those principles apply with equal force to the facts in this case. Here, the evidence of record demonstrates that heaters having a length that spans some percentage of the length of the disposable aerosol forming substance were known in the art. For example, Robinson discloses one embodiment wherein heating element 72 has an elongated portion that extends into tobacco segment 89. Ex. 1006, 27:35–39, Fig. 3. Greim likewise discloses a heating element having some length, which may be inserted into a plug of an aerosol-forming substrate. Ex. 1007, 13, Fig. 4. Adams discloses similar information. Ex. 1008 ¶ 45 (“The axial length of the projection 72 is selected so that it does not extend all the way through the tobacco plug.”), Fig. 7. Following the reasoning in Huang, these disclosures of a heater having some length, albeit not necessarily a length in the claimed range, are sufficient to demonstrate obviousness if there is evidence demonstrating “one of ordinary skill in the art would have experimented with various [lengths] to obtain an optimum range” and there is no evidence that the claimed range provides unexpected results. Huang, 100 F.3d at 139.” slip op. at 22
Patent outcomesUS 10,492,542 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,492,542 - Apple Inc. v. THL Holding Company, LLCInstitutedPTAB · Jul 25, 2024 · IPR2024-00398 · APJ Elizabeth J Reagan · IPR · Institution
The Board instituted IPR on claims 1–12 and 15–20 based on all asserted grounds, finding a reasonable likelihood of success on claim 10 over Kalliola, Vauclair, and Kalayjian.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Institution of an inter partes review requires that “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] 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review on all of the challenged claims of the ’680 patent based on all of the asserted grounds of unpatentability identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“art, “at the time of the ’680 Patent would have been a person having a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field and 2–4 years of experience with wireless ranging and positioning systems, wireless communication devices, and associated computer programming” but that “[a]dditional industry experience or technical training may offset less formal education, while advanced degrees or additional formal education may offset lesser levels of industry experience.” Pet. 4–5 (citing Ex. 1003 ¶ 35). We find that Petitioner’s proposal is consistent with the evidence of record, including the asserted prior art of the ’680 patent. This proposal is also supported by the Buehrer Declaration. See Ex. 1003 ¶ 35. Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.9” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionNo construction neededOther
“construction in a parallel proceeding,11 for the following term: “[a] pairing signal.” Pet. 6 (emphasis omitted) (citing Ex. 1009, 15–16). Petitioner proposes that we construe “[a] pairing signal” as “[p]rocessor signal to initiate a wireless device pairing sequence.” Id. (emphasis omitted) (quoting Ex. 1009, 15–16). On the present record, Patent Owner does not dispute this proposed construction.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“ordinary skill in the art to “combine the prior art elements of Kalliola’s WCD communicating with a signal emitter via Bluetooth with Vauclair’s pairing menu and processor signals to yield the predictable result of a pairing signal in response to a first indication from a user to pair the WCD to the signal emitter” because “Bluetooth pairing and pairing menus were conventional well prior to the invention of the ’680 patent” and “there would have been a reasonable expectation of success.” Pet. 36 (citing Ex. 1003 ¶ 175; Ex. 1004 ¶ 4).” slip op. at 39
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,265,680 - Apple Inc. v. THL Holding Company, LLCInstitutedPTAB · Jul 25, 2024 · IPR2024-00400 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 20–27 on all asserted grounds, finding a reasonable likelihood that claim 20 would be unpatentable as obvious over the Sweeney combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “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) (2023).” slip op. at 2
- Parallel petitionsDecided for petitioner
“v. Apple Inc. (W.D. Tex.), as a related proceeding. The parties disagree about the case number of the related case, with Petitioner identifying it as Case No. 6:23-cv-00077 and Patent Owner identifying it as Case No. 1:23- cv-00548-OLG. Pet. 82; Paper 6, 1. Petitioner also challenges claims 1–19 of the ’246 patent in a parallel petition filed in IPR2024-00399.1 See Paper 3, 1.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“receive telephone calls via a telephony network and to communicate Internet data.” Ex. 1001, 40:23–25. Petitioner argues that the combination of Kalliola and Turunen teaches this limitation and that a person of ordinary skill in the art would have had a reason to combine the teachings of these references with those of Sweeney. Pet. 26–30. On the present record, Patent Owner does not dispute this argument. Kalliola teaches that its wireless communication device includes “[l]ong-range communications” that “performs functions related to the exchange of information over large geographic areas (such as cellular networks) via an antenna.” Ex. 1006 ¶ 46, Fig. 3. The methods used for these long-range communications include “basic voice communications (e.g., via GSM).” Id. ¶ 46. Turunen teaches the transmission of internet data between a mobile device and the internet. Ex. 1007, 5:30–38. Dr. Buehrer testifies that a person of ordinary skill in the art would have expected Sweeney’s wireless device to be capable of sending and receiving telephone calls using the GSM network taught by Kalliola. Ex. 1003 ¶¶ 179–181. Dr. Buehrer also testifies that a person of ordinary skill in the art would have been motivated to modify the mobile device of Sweeney and Kalliola to be capable of internet data communications over Kalliola’s GPRS link. Id. ¶ 182.” slip op. at 16
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,350,246 - Apple Inc. v. THL Holding Company, LLCInstitutedPTAB · Jul 25, 2024 · IPR2024-00399 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–19 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been shown obvious over Kalliola, Turunen, Oswald, Vauclair, and Kalayjian.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “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) (2023). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims, and we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“1 Patent Owner does not request that we exercise our discretion to deny institution of either parallel petition. On the present record, we find that Petitioner’s explanation of the need for two parallel petitions is sufficient to justify not exercising discretion to deny institution in either case. The parallel petitions challenge different sets of claims of the ’246 patent, and there are a large number of claims challenged collectively between the two petitions.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to “a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field and 2-4 years of experience with wireless ranging and positioning systems, wireless communication devices, and associated computer programming.” Pet. 4 (citing Ex. 1003 ¶ 35). Patent Owner does not dispute Petitioner’s assertion on the present record. Prelim. Resp. 1–22. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’246 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Buehrer. See Ex. 1003 ¶ 35.10” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner proposes construing two terms. Pet. 5–6 (citing Ex. 1011, 6–11). First, Petitioner proposes that we construe “[t]ime of flight calculations” as “[d]etermining the amount of time between when a signal is transmitted and when a reply signal is received.” Id. at 6. Second, Petitioner proposes that we construe “[s]ignal delay” as “[d]ifference in time between when a signal is received at two or more antennas.” Id. On the present record, Patent Owner does not dispute these proposed constructions. Prelim. Resp. 1–22. For the purposes of this Decision, we adopt the constructions proposed by Petitioner. Those constructions are supported by briefing in the parallel district court case, in which they were proposed by Patent Owner. Ex. 1011, 6–11.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,350,246
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.