- PTAB · Jan 21, 2025 · IPR2023-01458 · APJ Meredith C Petravick · IPR · Remand
On remand, the Board denied institution because the petition failed to show a reasonable likelihood that any challenged claim was unpatentable, including over Hall and Borowski.
RulingsRemand decision- RemandOther
“We entered a first Decision Denying Institution of Inter Partes Review (Paper 8), and Petitioner filed a Request for Director Review (Paper 13). The former Director of the United States Patent and Trademark Office vacated our denial of institution and remanded for further proceedings consistent with the former Director’s decision. Paper 14. After considering the Petition, the Preliminary Response, the Director’s Review Decision, and the post Director’s Review Supplemental Briefing (Papers 16 and 17), and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’236 patent.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the Petition, the Preliminary Response, the Director’s Review Decision, and the post Director’s Review Supplemental Briefing (Papers 16 and 17), and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’236 patent. 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.” Accordingly, we do not institute an inter partes review of the ’236 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts: “A [person of ordinary skill in the art (‘POSITA’)] as of August 24, 2016 would have had an undergraduate degree in mechanical engineering, electrical engineering, or physics, and two to three years of experience in LiDAR design.” Pet. 9 (citing Ex. 1003 ¶¶ 59–64). Patent Owner does not dispute Petitioner’s definition of a POSITA. Prelim. Resp. 9. 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 ’236 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“37 C.F.R. § 42.100(b). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). We do not need to construe any terms explicitly to reach our decision. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))); see also Pet. 10 (“[N]o formal constructions are necessary.”); Prelim. Resp. 10 (“[N]o formal constructions are necessary.”).” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,422,236
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.