- Siemens Industry Software Inc. v. Synopsys, Inc.No claims unpatentablePTAB · Jan 11, 2023 · IPR2021-01213 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–4, 12, 13, and 16–19 were not shown unpatentable because neither asserted combination taught routing each net in a subset in isolation of the other nets.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“the time the ’614 patent was filed. Pet. 11. For purposes of this proceeding, Petitioner and Petitioner’s expert “adopt the [following] definition for the person of ordinary skill in the art”: a person with “a bachelor’s degree in electrical engineering, computer engineering or electrical and computer engineering or equivalent and two or more years of experience with CMOS VLSI (very large-scale integration) circuit design, electronic design 2 Patent Owner does not identify any secondary considerations to be considered. Accordingly, we do not consider this aspect of the obviousness analysis at this stage of the proceeding. automation for VLSI, or ASIC (application-specific integrated circuit) design fields.” Id. at 11; Ex. 1003 ¶ 70 (Robins Declaration). Petitioner notes that this assessment was presented to the district court by Patent Owner, but that Petitioner has also argued for a higher level of skill in the art. Id. Patent Owner and its declarant, Dr. Friedman, adopt this assessment. Resp. 8 (citing Ex. 2020 ¶¶ 25–26). We accept the assessment offered by the parties as it is supported by both declarants and is consistent with the ’614 patent and the asserted prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The term “global nets” is construed as “nets not contained wholly within any single tile on the chip.” Pet. 4 (citing Ex. 1009, 2); Resp. 8; Ex. 2015, 3. The phrase “[e]ach of said global nets within said second subset routed by one of said threads in isolation of said second subset’s other global nets but in respect of the routes of said subset of global nets” is construed as “[e]ach global net of the second subset is independently routed by a respective thread, without reference to the routing of any other net within the second subset, and the resulting routing does not conflict with routings of the first subset of global nets.” Resp. 7; Ex. 2001, 13; Ex. 2020 ¶ 26; Reply 3–4. We apply the same standard that is used to construe a patent claim in a civil action under 35 U.S.C. § 282(b), and construe each claim in accordance with the ordinary and customary meaning of such claim, as understood by one of ordinary skill in the art in the context of the patent, and the prosecution history pertaining to the patent, as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019)). “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” 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)). We do not expressly construe any claim terms beyond the extent necessary in our discussion of the parties’ arguments below.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner that Petitioner’s citations to Mehrotra illustrate that the nets in a first area are processed in isolation from a second area that is processed in parallel with the first area, but do not teach that each net within a given area is processed in isolation of others within that same area. Petitioner’s reasoning is based on the parallel processing of distinct areas. Petitioner attributes the lack of any need for communication between processors as resulting from the “separation distance” between “areas 92 and 96.” Thus, the benefits flowing from Mehrotra’s parallel processing; i.e., improving the speed of routing, are limited to processing areas in parallel, and are not taught to apply to nets within a single processing area. Furthermore, Dr. Robins’ testimony illustrates that the nets within a given area are processed sequentially, not in parallel. Dr. Robins states that the global nets are assigned to the processor for that area when that processor is available, i.e., sequential processing of global nets within an area. Ex. 1003 ¶ 154 (“Mehrotra therefore discloses issuing each global net of a subset to [a] thread (i.e., a processor) because the thread is available”); Ex. 1019 ¶ 26 (“Area 92 contains two traces [that are] assigned to a single processor[, which] would perform routing for a first one of the nets and would then become available to route the second trace”). Dr. Robins clearly states that the second trace is processed “after routing the preceding trace.” Id. Thus, Dr. Robins’ testimony concerning how traces (nets) within a subset are processed in Mehrotra (sequentially) contradicts Petitioner’s reasoning why Mehrotra’s traces would be routed in isolation (to gain the advantages of parallel processing). We further note that Petitioner characterizes Mehrotra’s subset as “those traces and subtraces contained in 92 and 96.” Pet. 35–36. Each of areas 92 and 96 are shown to have multiple traces or subtraces therein. Ex. 1004, Fig. 9. Thus, Petitioner’s subset requires plural traces (nets) within each area, and it is not sufficient that those traces in 92 are routed in isolation from those in 96 if the traces within each area are not routed in isolation from those in the same area (nor does Petitioner argue otherwise). In view of the foregoing, Petitioner’s argument based on Mehrotra’s” slip op. at 18
Patent outcomesUS 8,234,614 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,234,614 - Siemens Industry Software Inc. v. Synopsys, Inc.All claims unpatentablePTAB · Jan 11, 2023 · IPR2021-01212 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–8, 11–20, and 23–25 are unpatentable as obvious over Sano; the Board found the Cheng grounds did not establish unpatentability.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Thus, we look to the language of the claims, the description in the patent disclosure, and the prosecution history to determine to what extent the claims require the registers to be at a fixed location. We begin with the language of the claims. Using claim 1 as an example, the only mention of “fixed locations” occurs in its first step, which recites, “receiving a placement for a chip layout, where the placement includes a set of registers at fixed locations in the chip layout.” Ex. 1001, 10:57–59. The remaining limitations of claim 1 do not address the locations of the registers, instead setting forth generating a timing criticality profile (Ex. 1001, 10:60–63) and clustering the registers based on that profile (Ex. 1001, 10:64–11:7). Thus, the fixed location of the registers is limited, by the plain language of the claim, to the placement for the chip layout that is being received in the first step.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“persuaded by Petitioner’s arguments and disagree with Patent Owner’s. Our claim construction requires that the registers be fixed only during the step of receiving a placement for a chip layout that includes fixed registers, and Patent Owner does not contest that Sano receives a placement of registers at fixed locations in a chip layout. Moreover, even if claim 1 was interpreted to inherently require fixed register locations throughout its recited steps, Petitioner has shown by a preponderance of the evidence that a person having ordinary skill would have found it obvious to perform each of claim 1’s steps of receiving a register placement, generating a timing criticality profile, and clustering the registers based on the timing criticality profile, without physically moving the registers, based on the teachings of Sano. We credit the statement of Dr. Robins that, “[t]he timing information used to create the setup evaluation value depended on the locations of the FFs. Thus, if the FFs were moved during this process then the evaluation values would become inaccurate.” Ex. 1003 ¶ 85. Dr. Robins further clarified that “if registers were allowed to move . . . during the clock synthesis phase. . . . “any timing-based information would then become inaccurate . . . because it was based on the old positions of these registers and not their purportedly new positions,” and therefore, a person having ordinary skill in the art would know that “you should keep the registers in fixed locations and not move them because otherwise you are creating moving targets with respect to timing behavior and possible timing violations.” Ex. 2022, 43–44. This reasoning is consistent with Dr. Friedman’s explanation of how setup timing evaluation is determined. Dr. Friedman stated that it involves determining “the delay of the data signal to propagate through” the data path between two registers. Ex. 1018, 11–12. Dr. Friedman separately characterized Figure 3 of the ’567 patent as an abstraction of a clock-tree structure that is “about data paths and there’s a long path and a short path and you treat them differently.” Ex. 1018, 74. Dr. Friedman contests the obviousness of keeping the registers in fixed locations in Sano’s first embodiment because the locations could be changed for reasons such as satisfying a power dissipation or speed criterion. Ex. 2019 ¶¶ 62, 66. However, Dr. Friedman does not contest Dr. Robins’ statement that such a change in locations would create inaccuracies in Sano’s timing-based clustering process. Thus, considering the arguments of the parties and the entirety of the evidence, we determine that Petitioner has sufficiently shown that a person of ordinary skill in the art reading Sano would have found it obvious to maintain the physical locations of the registers during clustering, particularly in situations not requiring consideration other possible factors such as satisfying a power dissipation or speed criterion. Furthermore, we agree that Petitioner’s citations to the first embodiment alone, located at Sano column 17, line 20 through column 26, line 3, provide teachings for each claim element. Thus, Patent Owner’s arguments that registers move in the fourth embodiment (Resp. 38–39) do not show that Sano’s first embodiment requires register movement. Moreover, we agree with Petitioner’s arguments that claim 1’s generation of a clock tree ends with the clustering steps, and any movement of registers after that step, such as Sano’s subsequent optimization method (Resp. 39– 41) or Sano’s moving clusters of registers into a placement restriction area (Response 41; Sur-reply 5–7), does not bear on whether Sano teaches the steps set forth in claim 1. Reply 8; Ex. 2001 (“the location of the registers [in the ’567 patent] do not change during clock-tree generation but may change during post processing optimization”). Patent Owner argues that these arguments are newly presented because Petitioner did not argue that Sano’s silence discloses the “fixed location limitation,” and should not be considered. Sur-reply 1. We do not agree. The Petition advanced the assertion that the claimed “fixed registers” were met by Sano’s receiving a network placement having registers in fixed locations, without setting forth any separate description in Sano to show that those registers were fixed. Thus, Petitioner’s assertion of Sano’s silence on this issue is not a different theory of obviousness, but a further explanation provided to address arguments presented in Patent Owner’s Response. In view of the foregoing, we determine that Petitioner has shown, by a preponderance of the evidence, that claim 1 would have been obvious over Sano.” slip op. at 31
- Obviousness (§103) › KSR rationalesUnpatentableUnpatentable
“We agree that Petitioner has made the requisite showing. Patent Owner admits that Sano’s evaluation values are based on data path delays. Sur-reply 9. Dr. Friedman states that a person of ordinary skill in the art in the computer science world would be familiar with timing slack with respect to a setup requirement. Ex. 1018, 14–16. Dr. Friedman further states that a person of ordinary skill in the art in the electrical engineering world would also “definitely understand” the concept, which is the “idea that you’ve got clock period minus the path delay plus any effective skew.” Id. at 27–28. Dr. Friedman further states that such a timing slack calculation would involve not only subtraction of data path delays, but also any effect of clock skew and “all the delays from getting out of that initial register . . . to set up into that register,” including the “setup time into the final register.” Id. at 17, 26, 29–30. Dr. Robins states that Sano’s Figure 9A–E illustrate that setup error depends on the length of time it takes data to travel from the output Q of launcher FF 502A to the input D of capturer FF 502B (i.e., the data path delay), a time Ts by which the changing data must precede the rising clock edge at the capturer FF 502B (i.e., setup time or setup requirement of the FF), the relationship between the rising clock edge CK1 at the launcher FF 502A and the rising clock edge CK2 at the capturer FF 502B (i.e., the clock skew), and the time between rising edges of the clock CK (i.e., the clock period). Ex. 1003 ¶ 104 (citing Ex. 1004, 22:48-65, 23:8-17). Based on the cited description of Sano, which describes setup error, Dr. Robins’ statements explaining how Sano’s Figure 9 illustrates each of the claimed variables to be considered in determining setup error, and Dr. Friedman’s statements explaining how timing slack, including the claimed calculation, would have been known to the person of ordinary skill in the art, we determine that Petitioner has shown, by a preponderance of the evidence that claims 2 and 14 would have been obvious to one having ordinary skill in the art.” slip op. at 36
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“Patent Owner argues, and we agree, that Cheng teaches only a binary (true/false) determination of whether a violation exists for each pair. Resp. 59–60; Sur-reply 22–23. There is no teaching in Cheng that such values should be stored for later use for the claimed purpose of clustering a pair of registers having a higher timing criticality and clustering a second pair of registers having a lower timing criticality. Resp. 60; Ex. 1001, 10:64–11:3. As Patent Owner points out, “Cheng does not disclose clustering a pair of registers that does not violate a timing condition.” Id., n.4. Petitioner counters that Cheng must store such values in order to perform its step 490, clustering the registers “as needed in order to correct any setup time and/or hold time violations.” Reply 23–24 (citing Ex. 1005, 8:278–30; Ex. 1019 ¶ 55). Petitioner argues that Cheng performs all violation analysis at step 480, and that information from the analysis is used at step 490 to generate a clock-tree. However, Patent Owner argues, and we agree, that Cheng does not describe how the presence of a violation is used in a comparison of timing calculations. Sur-reply 23–24. Although Cheng “attempts to correct the violations by changing positions of registers in the clock tree . . . registers can be swapped from cluster to cluster in the clock tree,” or “change the order in which a pair of dependent registers are clustered,” Petitioner does not explain how this correction relies on any comparison of timing value calculations between register pairs, either in Cheng or in the knowledge of a person having ordinary skill in the art.” slip op. at 51
Patent outcomesUS 7,546,567 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,546,567 - Beable Education, Inc. v. Achieve3000, Inc.All claims unpatentablePTAB · Jan 3, 2023 · IPR2021-01169 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1–14 are unpatentable as obvious over Cappellucci_949, Cappellucci_934, Cupp, and Tudor.
RulingsFinal written decision- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“nonobviousness. Objective evidence of nonobviousness, when present, must be considered as part of an obviousness inquiry. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012). Notwithstanding what the teachings of the prior art would have suggested to one of ordinary skill in the art, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that one or more of the challenged claims would not have been” slip op. at 70
- ExcludeMotion to exclude, deniedMixed
“and 1022 are inadmissible in that any copyright dates on these exhibits are hearsay not falling into any exception. MTE 3–4. We are not persuaded by this argument. As an initial matter, for the same reasons discussed as to the first argument, the copyright date goes to public availability, which, under Yeda Research, is not a basis to exclude these two exhibits. See MTE Opp. 7 (relying on the prior discussion as to this argument). Thus, Petitioner need not rely on the date in the copyright marks for the truth of the matter asserted—i.e., the years.17 See id. (arguing that “the dates listed on the disputed evidence are not hearsay because Petitioner is not relying on them ‘to prove the truth of the matter asserted’” (quoting Fed. R. Evid. 801(c)(2)). Accordingly, the copyright marks in Exhibits 1017 and 1022 are not hearsay in the context of how they are relied on by Petitioner in this proceeding.” slip op. at 90
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentable
Patent outcomesUS 9,652,993 unpatentable§ 103 obviousnesscites PhillipsPatents in suitUS 9,652,993 - Delta T, LLC v. Macroair Technologies, Inc.All claims unpatentablePTAB · Dec 12, 2022 · IPR2021-01214 · APJ Tina E Hulse · IPR · Final written decision
The Board held claim 15 unpatentable as obvious over Madsen, finding the mounting shaft could be detachably secured in the hub openings and have a constant cross section.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not discern a substantive difference between the parties’ respective definitions of the level of ordinary skill in the art, nor do the parties assert that there exists any such difference. Although Petitioner’s definition includes specific knowledge of fans or other rotary machines, we understand Patent Owner’s broader definition to include such knowledge. We, therefore, adopt Petitioner’s definition of the level of ordinary skill in the art as reasonable and consistent with the level of skill reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining the prior art itself may reflect an appropriate level of skill in the art). We also find Drs. Sheard and Paulus are qualified to opine on the perspective and understanding of a person of ordinary skill in the art, as they have at least ordinary skill in the art. See Ex. 1002 ¶¶ 3–11; Ex. 1003; Ex. 2001 ¶¶ 4–11; Ex. 2002; see also Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F. 4th 1369, 1376–77 (Fed. Cir. 2022) (“To offer expert testimony from the perspective of a skilled artisan in a patent case— like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.”).” slip op. at 7
- Prior constructionPrior construction adoptedDecided for petitioner
“2. District Court Constructions In the related district court proceeding, the district court construed certain claim terms of the ’588 patent. Ex. 1014. Petitioner proposes claim constructions that are consistent with the district court’s constructions. Pet. 10–17. Patent Owner states that it “adopts the district court’s claim constructions for the purposes of this Response.” PO Resp. 10 (citing Ex. 1014). The district court has construed the following ’588 patent claim terms: Term Construction “hub assembly” “a hub with multiple parts that are assembled together” (Ex. 1014, 13– 14) “openings” “one or more locations where the arm members may be detachably secured” (Ex. 1014, 12–13) “detachably secured”” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Rather than rely on the definitions of “secure” from a general dictionary, we focus on the Specification as the “single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (internal citation omitted). The Specification describes the use of nuts and bolts that can be used to fix or attach the arms into the slots of the hub. Ex. 1001, 4:47–51 (stating “nuts 212 can then be used to secure the arms 144 in the slots 202”) (emphasis added). But that is not the only use of “secure” in the Specification. As Petitioner notes, the Specification also describes a “securing assembly 152 that inhibits the hub from falling when the motor shaft breaks or the hub otherwise disengages from the shaft.” Id. at 3:42–45 (emphasis added). We also credit Dr. Sheard’s explanation of the operation of the ’588 patent’s securing assembly as allowing for rotational movement while preventing loss: [T]he hub 110 of the ‘588 Patent is “secured” to the motor mount 106 by way of the “securing assembly 152.” This securing assembly prevents the hub from “falling away from the motor mount” (i.e., prevents the hub from becoming lost or coming loose), but the relative engagement between the first member 154 and the second member 170 of the securing assembly continues to allow for relative rotation between the hub 110 and the motor mount 106. This relative rotation between the hub 110 and the motor mount 106 of the ‘588 Patent is not only allowed, but is absolutely necessary if the hub is going to rotate so that the fan blades may turn. Ex. 1024 ¶ 67. Patent Owner argues that the securing assembly is irrelevant to the construction of “secured” because it does not refer specifically to the arm members being detachably secured in the openings. PO Sur-reply 13. We disagree. Claim terms must be read in light of the specification and must not import limitations from the specification into the claims. Phillips, 415 F.3d at 1323. Moreover, we presume the specification uses a word consistently throughout the patent, even if describing a different embodiment. See Energy Transp. Grp., Inc. v. William Demant Holding A/S, 697 F.3d 1342, 1349–50 (Fed. Cir. 2012) (relying on the specification’s use of the word “programmable” to describe a different embodiment to construe the same term in the claim, as “there is no reason to construe the term ‘programmable’ differently when used to describe [the embodiment of the claimed invention]”); see also Phillips, 415 F.3d at 1314 (noting “claim terms are normally used consistently throughout the patent”). Thus, we decline to limit the construction of “secured” to the preferred embodiment, as proposed by Patent Owner, and consider the Specification’s description of the “securing assembly” to inform the meaning of “secured” as encompassing rotational movement and preventing loss. Accordingly, we construe the term “secured” to mean the arm members are “fixed or attached (while allowing for rotational movement) so that the arm members cannot be lost.”” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“presented at trial, we find Petitioner has the better position. We are persuaded that a person of ordinary skill in the art, seeing the unlabeled fasteners identified by Petitioner, would have found it obvious to use removable fasteners such as screws or bolts to detachably secure the mounting shafts in the openings formed by the bearing housings. See Ex. 1006, Figs. 3 and 5 (reproduced and annotated at Pet. 41). We credit the testimony of Dr. Sheard that a person of ordinary skill in the art would have been motivated to make the fan blade mounting shaft of Madsen detachably secured in the openings of the hub to “allow for the replacement of worn or broken parts, or for replacement of parts according to an ordinary course of maintenance.” Ex. 1002 ¶ 119. Dr. Sheard explains that the bearings of Madsen facilitate the rotation of the fan blade mounting arms within the bearing housing and are subject to wear and tear by the nature of the friction to which they are exposed during normal use. Id. ¶ 120. Thus, we are persuaded that a person of ordinary skill in the art would understand that the bearings of Madsen may need to be repaired, replaced, or maintained over time, which would require a user to access the inside of the bearing housing. Id. According to Dr. Sheard, “the [person of ordinary skill in the art’s] general knowledge of the need to repair, replace, or maintain fan parts such as bearings would motivate the [ordinary artisan] to combine this knowledge with Madsen in order to make the bearing housing 54 detachable from the hub.” Id. Moreover, as Dr. Sheard further explains, we find that the ordinary artisan “would be motivated to make the unlabeled fasteners illustrated in Figure 3 of Madsen . . . to be removable fasteners (e.g. screws, bolts, or other threaded fasteners). This use of removable fasteners provides a well known and easy manner for the user to access these parts in need of replacement.” Id. Dr. Sheard opines that because fans of different sizes may require blades of different lengths and fan blade mounting shafts of different designs, a person of ordinary skill in the art would have been motivated to make a single hub that accommodates different mounting shafts and blade lengths using a detachably secured mounting shaft. Id. ¶ 123. In doing so, manufacturers could avoid the cost of making multiple different hubs for different sized mounting shafts and would allow the end user the advantage of choosing different blades lengths and types for a given hub. Id. Thus, we are persuaded that these known problems in the art would have motivated a person of ordinary skill to modify Madsen to use a detachably secured mounting shaft. See ABT Sys., LLC v. Emerson Elec. Co., 797 F.3d 1350, 1360 (Fed. Cir. 2015) (“It is well settled that, even where references do not explicitly convey a motivation to combine, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”) (internal quotations and citation omitted). Finally, we find a preponderance of the evidence supports Petitioner’s assertion that because detachably secured connections between an intermediate arm member and hub were well known to a person of ordinary skill in the art, it would have been obvious to combine those known connections with the design of Madsen “as an art equivalent type of connection, yielding the predictable result of restraining movement of the intermediate arm member with respect to the hub.” Id. ¶ 124; see also KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).” slip op. at 25
Patent outcomesUS 8,579,588 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,579,588 - Exactech, Inc. v. Zimmer, Inc.Institution deniedPTAB · Nov 9, 2022 · IPR2022-00840 · APJ Sean P O’Hanlon · IPR · Institution
Institution was denied for claims 18–21 because Petitioner did not show a reasonable likelihood that DeOrio and Stulberg rendered the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“press-fit or screwed to the tibia. Pet. 33. Petitioner and its declarant, Mr. Drewry, rely on column six, lines 28–33 and Figure 4 to support the contention that “DeOrio discloses an intramedullary rod 28 that is secured to the tibia by being press-fit or screwed into a bore drilled into the intramedullary canal of the tibia.” Id. (emphasis added) (citing Ex. 1004, 6:28–33, Fig. 4; Ex. 1003 ¶¶ 50, 73); Ex. 1003 ¶ 73 (citing Ex. 1004, 6:28–33, Fig. 4). However, DeOrio makes no such disclosure of a press-fit or screwed connection between the intermedullary rod and the tibia. The relevant portion of column six discloses only that “a bore is drilled into the intramedullary canal of a patient’s tibia.” Ex. 1004, 6:30–31. Figure 4 illustrates shaft 30 of intermedullary rod 28 extending into the tibia, presumably in the bore drilled therein. DeOrio does not provide details regarding how the intermedullary rod is positioned within the bore, and certainly makes no disclosure of a press-fit or screwed connection as asserted by Petitioner. Thus, DeOrio does not support Petitioner’s contentions.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“For at least the foregoing reasons, Petitioner has not shown sufficiently that DeOrio discloses or teaches a fastener as recited in claim 18. Petitioner’s reliance on Stulberg to teach a computer-assisted tracking system does not correct this deficiency. See Pet. 38–41. Therefore, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claim 18 or its dependent claims 19–21 would have been obvious in view of DeOrio and Stulberg.” slip op. at 16
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,029,477 - PTAB · Sep 21, 2022 · IPR2022-00707 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted review of claims 1, 2, 4–10, 12–17, 19, and 20 on all asserted grounds, finding a reasonable likelihood that Smith renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“from Mr. Crevelt. Based largely on this testimony, Petitioner demonstrates a reasonable likelihood that Smith discloses a “method of electronic fund transfer between a stored value account and a gaming account” as recited in limitation [1.0].” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“based on Sommer. Pet. 49–84. Because, as discussed above, Petitioner meets the threshold for institution by demonstrating a reasonable likelihood that at least claim 1 is unpatentable as obvious over Smith, we need not decide whether Petitioner’s other challenges demonstrate the same. The challenges based on Sommer, in our view, are best left for trial after full development of the record. Because “[e]qual treatment of claims and grounds for institution purposes has pervasive support in SAS,” we institute review of all the challenges as raised in the Petition. See PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).” slip op. at 20
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,785,926 - PTAB · Sep 21, 2022 · IPR2022-00706 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 4–10, 12–17, 19, and 20 on all petitioned grounds, finding a reasonable likelihood that Smith renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314, the Office may not institute review of fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). For the reasons expressed below, we determine that Petitioner has demonstrated a reasonable likelihood of establishing that at least claim 1 is unpatentable. In accordance with the SAS decision and 37 C.F.R. § 42.108(a), we institute an inter partes review of all challenged claims of the ’176 patent on all grounds alleged by Petitioner. D. THE CHALLENGED CLAIMS” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Here, neither party proposes an interpretation of the claim terms beyond their ordinary and customary meaning. See Pet. 10. Thus, at this stage, we see no reason to depart from that approach. B. LEVEL OF ORDINARY SKILL IN THE ART” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, Patent Owner does not contest Mr. Crevelt’s testimony, and we discern no reason to question Mr. Crevelt’s credibility. Thus, for purposes of institution, we adopt the level of skill in the art proffered by Petitioner. C. LEGAL STANDARDS” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner challenges claims 1, 2, 4–10, 12–17, 19, and 20 as obvious based on Sommer. Pet. 49–84. Because, as discussed above, Petitioner meets the threshold for institution by demonstrating a reasonable likelihood that at least claim 1 is unpatentable as obvious over Smith, we need not decide whether Petitioner’s other challenges demonstrate the same. The challenges based on Sommer, in our view, are best left for trial after full development of the record. Because “[e]qual treatment of claims and grounds for institution purposes has pervasive support in SAS,” we institute review of all the challenges as raised in the Petition. See PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,466,176 - PTAB · Aug 31, 2022 · IPR2022-00614 · APJ Scott C Moore · IPR · Institution
The Board instituted IPR of claims 1, 2, 6–11, 14–20, and 22–26 based on a reasonable likelihood that claim 1 is obvious over Smith.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner’s arguments (id. at 10–24) and the supporting testimony of Dwight Crevelt (Ex. 1001 ¶¶ 99–131) demonstrate, in a manner that is sufficiently persuasive at this stage of the proceeding, that Smith teaches or suggests each limitation of claim 1. Accordingly, Petitioner has shown a reasonable likelihood that it will prevail on its argument that claim 1 is unpatentable under 35 U.S.C. § 103. We, therefore, institute an inter partes review as to all grounds and all challenged claims. See 35 U.S.C. § 314(a); SAS, 138 S. Ct. at 1359–60; AC Techs., 912 F.3d at 1364.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“during the relevant time frame “would have a Bachelor’s degree in Computer Engineering or Computer Science, or an equivalent degree, with at least two years of experience in casino or gaming transaction facilitation, or related technologies.” Pet. 9 (citing Ex. 1001 ¶ 37). Patent Owner does not presently challenge Petitioner’s definition of the level of ordinary skill in the art. On this record, we adopt Petitioner’s formulation regarding the level of ordinary skill in the art. We also find that Petitioner’s formulation is consistent with the level of skill reflected by the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes construction for any of the claim terms. Pet. 9–10. Accordingly, we decline to construe any claim terms at this time. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and then 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner’s arguments (id. at 10–24) and the supporting testimony of Dwight Crevelt (Ex. 1001 ¶¶ 99–131) demonstrate, in a manner that is sufficiently persuasive at this stage of the proceeding, that Smith teaches or suggests each limitation of claim 1. Accordingly, Petitioner has shown a reasonable likelihood that it will prevail on its argument that claim 1 is unpatentable under 35 U.S.C. § 103. We, therefore, institute an inter partes review as to all grounds and all challenged claims. See 35 U.S.C. § 314(a); SAS, 138 S. Ct. at 1359–60; AC Techs., 912 F.3d at 1364.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,708,809 - PTAB · Aug 31, 2022 · IPR2022-00663 · APJ Carl M Defranco · IPR · Institution
Review instituted for claims 1, 2, 4–9, 11–17, 19, and 20; Everi showed a reasonable likelihood that claim 1 is obvious over Smith.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“6. Conclusion We have fully considered Everi’s showing with respect to how Smith discloses or renders obvious each of the steps of method claim 1. See Pet. 14–27. In doing so, we conclude that Everi demonstrates a reasonable likelihood that the method of challenged claim 1 is unpatentable as obvious over Smith.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“over Smith. See Pet. 10–47. In challenging claim 1, Everi provides a detailed mapping of how Smith satisfies each of the recited steps. See id. at 17–27. Although Sightline does not respond to Everi’s challenge at this stage, we nonetheless consider Everi’s showing with respect to each of the recited steps of method claim 1.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13. Here, neither party proposes an express construction of the claim terms beyond their ordinary and customary meaning. See Pet. 10. Thus, at this stage, we see no reason to further construe any claim terms.” slip op. at 6
- Skill levelSkill level petitioner adoptedOther
“Everi’s declarant, Mr. Crevelt, testifies that one skilled in the art during the relevant time frame “would have at least a Bachelor’s degree in Computer Engineering or Computer Science, or an equivalent degree, with at least two years of experience in casino or gaming transaction facilitation, or related technologies.” Ex. 1001 ¶ 37. At this stage, Everi’s formulation of the relevant skill in the art appears reasonable. Hence, we adopt it for purposes of institution. We also note that Everi’s formulation appears consistent with the level of skill reflected in the asserted prior art.” slip op. at 6
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,196,123 - PTAB · Jul 14, 2022 · IPR2022-00411 · APJ Paul J Korniczky · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 6–9, 11, or 13 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). After considering the Petition, Preliminary Response, and other evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims. Thus, we deny Petitioner’s request to institute an inter partes review of claims 1, 2, 6–9, 11, and 13 of the ’690 patent.” slip op. at 2
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“2 The substantive discussion in Petitioner’s three declarations are essentially identical to each other and to the Petition. For example, pages 40–74 of the Petition are essentially identical to a single paragraph in each of the declarations –– Hopkins Decl. ¶ 88 on pages 54–92, Keough Decl. ¶ 88 on pages 63–97, and Denton Decl. ¶ 65 on pages 46–81. Thus, we question whether the declarations provide independent analysis and we give the declarations little, if any, weight. See Intex Recreation Corp. et al. v. Team Worldwide Corp., IPR2018-00875, Paper 129 at 40, n. 15 (PTAB Sept. 11, 2019) (“We further note that Dr. Stevick’s testimony is nearly identical to the language appearing in the Patent Owner Response, down to the case citation. This identity in language causes us to attribute less weight to a declarant’s testimony.” (citations omitted)).” slip op. at 7
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that Petitioner’s definition is unclear. Prelim. Resp. 14. Petitioner’s definition includes unclear and subjective requirements such as that the person of ordinary skill in the art have (a) worked “long enough to be aware of” certain items, including unexplained “primary existing RV features,” (b) familiarity with unexplained “common terminology,” (c) “good mechanical aptitude,” (d) “good spatial perception,” (e) “significant experience” with a wide variety of roles, and (f) “sufficient awareness of the various governmental regulations applicable to RVs.” Id. (citing Pet. 18–20). Patent Owner’s proposed definition of the person of ordinary skill in the art appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’690 patent. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Patent Owner.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“While we generally agree with Patent Owner that a person of ordinary skill in the art would understand that a truss and beam, as used in the ’690 patent, are two different structures, serve different purposes, and provide different benefits to the overall design of a chassis, Patent Owner identifies the function, but not the structure, of a truss and beam. After considering the extrinsic and intrinsic evidence, we construe: (1) a beam to be a “body, with one dimension large compared with the other dimensions, configured to carry lateral loads (perpendicular to the large and bending dimension) and bending movements;” and (2) a truss to be a “frame built from members in tension and compression.” These definitions are consistent with the support structures shown in Figures 7 and 9 and discussed in column 3, lines 21–48 of the Specification. Referring to Figures 7 and 9, for example, truss 93C is a frame built from members in tension and compression and beam 93D has one large dimension and supports loads applied to its perpendicular axis. In addition, third section 93 of chassis 90 has beams, not trusses. Ex. 1001, 3:26–28.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,046,690
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.