- PTAB · Jul 19, 2023 · IPR2023-00385 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted IPR of claims 1–7 on all asserted grounds, finding a reasonable likelihood that Oracle would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the Petition and the Preliminary Response, we determine that Petitioner has satisfied this threshold requirement, and therefore we institute inter partes review of claims 1–7 of the ’421 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“at least a Bachelor’s Degree in computer science, electrical engineering, or a related subject, and two years of experience working with augmented reality, portable electronic devices, mobile computing, databases, computer networks, or related technologies. A more advanced degree can substitute for work experience. This POSITA would be aware of and generally knowledgeable about the structure and operation of augmented reality devices as well as different databases and computer networks. Paradiso Decl., ¶¶ 40–43.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner “submit[s] that the terms of the 421 Patent’s claims do not require further construction and can be afforded their plain and ordinary meaning.” Pet. 14–15 (citing Paradiso Decl. ¶ 78). Petitioner submits that the Petition’s “sections comparing the claims to the prior art include further” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“have displayed Ivey’s parking-space-payment information on a real-time camera view, as taught by Matsumoto, to “more efficiently streamline parking enforcement.” Pet. 47–48. Regarding the modified Ivey with Tillotson, Petitioner asserts: A POSITA would have recognized that adapting Ivey in view of Tillotson’s teachings would have been advantageous to both Ivey and Matsumoto and would make the parking management system more efficient and easier to use—a result that would have been highly desirable to a POSITA during the relevant time period, particularly in settings with high usage or limited resources. Id. at 48. Petitioner supports these contentions with Dr. Paradiso’s testimony. Id. at 47–48 (citing Ex. 1003 ¶¶ 279–282). At this stage of the proceeding, and based on the current record, Petitioner’s articulated reasons to combine Ivey, Matsumoto, and Tillotson are supported by rational underpinning.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,438,421 - Hunter’S Manufacturing Company, Inc. D/B/A Tenpoint Crossbow Technologies v. Ravin Crossbows, LLCInstitutedPTAB · Jul 10, 2023 · IPR2023-00407 · APJ Robert J Silverman · IPR · Institution
The Board instituted IPR on claim 1 on all asserted grounds because Grounds 7 and 8 met the reasonable-likelihood threshold.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/ default/files/documents/interim_proc_discretionary_denials_aia_parallel_dis trict_court_litigation_memo_20220621_.pdf (“Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not 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.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”)). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. In this proceeding, Petitioner offers a stipulation employing language nearly identical to that prescribed in the Interim Procedure: “Petitioner hereby stipulates that it will not pursue in the parallel district court proceeding the same grounds as in this Petition or any grounds that could have reasonably been raised as to claim 1 in this Petition.” Pet. 6–7.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Interpretation In an inter partes review, we construe claims using the same standard applied in a district court. See 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning, as would have been 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. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“’015 Patent pertains “would be a technical person who has at least some experience working in the field of archery, reviewing crossbows or engineering related to bows and/or crossbows, and is generally familiar with prior art crossbows” and “would likely have at least a bachelor’s degree in mechanical engineering or, alternatively, would have several years of experience in the field of archery or engineering related to bows and/or crossbows.” Pet. 28 (citing Ex. 1016 ¶ 17). Patent Owner states: “Solely for purposes of this Preliminary Response, Patent Owner does not dispute Petitioner’s proposed qualifications of a person of ordinary skill in the art (‘POSA’).” Prelim. Resp. 2. For the purposes of the present Decision, we adopt Petitioner’s description of a person of ordinary skill in the art pertinent to the ’015 Patent. E.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The Federal Circuit has explained that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden, Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Petitioner relies upon a portion of KSR in which the Supreme Court stated: When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSR, 550 U.S. at 421. Yet, in the analysis of Ground 2, Petitioner does not address the predicate factual determinations that the Supreme Court identifies — e.g., that there would have been “a design need or market pressure,” that there were “identified” and “predictable” solutions. Id. Therefore, based upon the present record, and for the purposes of the present Decision, Petitioner does not provide a sufficient reason for modifying Stanziale ’302, in order satisfy the identified limitation of claim 1. F.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,354,015 - Ecobee Technologies Ulc v. Ollnova Technologies Ltd.Institution deniedPTAB · May 8, 2023 · IPR2023-00082 · APJ Robert J Silverman · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to Pasternak, we are not persuaded that the Petitioner adequately establishes that Pasternak teaches or suggests claim 1’s limitation: “the first [lower-level] wireless network is operable to control, free of communications with the second [higher-level] wireless network, building components in response to sensors operable within the first [lower-level] wireless network.”” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“to Pasternak, we are not persuaded that the Petitioner adequately establishes that Pasternak teaches or suggests claim 1’s limitation: “the first [lower-level] wireless network is operable to control, free of communications with the second [higher-level] wireless network, building components in response to sensors operable within the first [lower-level] wireless network.”” slip op. at 12
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,860,495
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.