• Nichia Corporation v. Document Security Systems, Inc.No claims unpatentable
  PTAB · Nov 16, 2021 · IPR2020-00908 · APJ Jason M Repko · IPR · Final written decision

  Claims 1–4, 8, and 11 were not shown unpatentable because Petitioner’s planar construction of “mounting surface” was unsupported and the references did not disclose the claimed surface.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ANALYSIS A. Level of Ordinary Skill in the Art According to Petitioner, “a person of ordinary skill in the art (‘POSA’) would have had at least a B.S. in mechanical or electrical engineering or a related field, and four [years of] experience designing or developing semiconductor—including LED—packages.” Pet. 13 (citing Shealy Decl. ¶ 31). Petitioner adds that “a higher education or skill level might make up for less experience, and vice-versa.” Id. at 13–14. Patent Owner does not propose an alternative assessment but states: “For the purposes of this IPR proceeding, Patent Owner adopts Petitioner’s definition of level of ordinary skill.” PO Resp. 7 (citing Baker Decl. ¶ 26). We apply Petitioner’s proposed definition, which appears to be consistent with the level of skill reflected in the asserted references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect an appropriate level of skill in the art).” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “For purposes of this decision, we need only address the proper construction of “mounting surface,” which is disputed by the parties. Here, Patent Owner’s argument and evidence produced during trial show that Petitioner’s construction of “mounting surface” is not in accordance with the ordinary and customary meaning as would have been understood by one of ordinary skill in the art. In particular, we agree with Patent Owner that “the mounting surface having a plurality of recesses,” as recited in claim 1, means that the recesses are in the mounting surface itself. PO Resp. 10–11. As we discuss further here, this requirement cannot be satisfied by a single planar surface, as used in Petitioner’s analysis. See, e.g., Pet. 18. Both parties acknowledge the argument that the claimed recesses could be interpreted in at least two ways: The recesses could be (1) only in the packaged body, excluding the contacts; or (2) in the device as a whole. PO Resp. 12 n.6; see also Pet. 18–19 (reviewing the second interpretation). Under both interpretations, Petitioner asks the Board to construe the mounting surface as a plane. See Pet. 18–19. We need not resolve which” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “For the reasons discussed in the Claim Construction Section, we disagree that the recited mounting surface can be a plane and still satisfy all the claim limitations. Supra § II.B. In particular, we agree with Patent Owner that Petitioner’s planar mounting surface does not include “recesses” at the side edges of the body as the claim requires. PO Resp. 15. Rather, the planar surface identified by Petitioner sits below the recesses in Kim’s device—i.e., “the depressions or indentations in molded resin package body 37” or the device as a whole. Pet. 41–42; Ex. 1004, Figs. 1, 3. Petitioner argues that, even under Dr. Baker’s analysis, Kim discloses the claimed mounting surface. Pet. Reply 10–11 (citing Ex. 1027). Dr. Baker’s analysis, however, is not consistent with the written description or the claims. Supra § II.B. In its challenge, Petitioner compares Kim’s device to the embodiment shown in Figure 4A of the ’040 patent. See Pet. 38–53. As discussed in the Claim Construction Section, however, of the challenged claim. Supra § II.B. Contrary to the claim’s requirement that the device itself comprise a mounting surface with “recesses and electrical contacts [that] are sized to provide offsets between said mounting surface and said electrical contacts,” both Kim’s device and the Figure 4A embodiment show recesses between the device and a flat surface on which the device is mounted. Compare Ex. 1004, Figs. 1, 3, with Ex. 1001, Fig. 4A, 5:11–14. Thus, Petitioner has not shown by a preponderance of the evidence that claim 1 is unpatentable as anticipated by Kim. Claims 2, 3, and 11 also require a “mounting surface” because those” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “D. Obviousness over Kim and Shirahata Petitioner asserts that claim 8 is unpatentable as obvious over Kim and Shirahata. Pet. 54–59. Claim 8 depends from claim 1. Ex. 1001, 12:3–5. This ground relies on Kim for the limitations of claim 1, including the recited “mounting surface.” Pet. 54–59. Petitioner has not shown that Kim teaches the mounting surface in claim 1. Supra § II.C. Thus, Petitioner has not shown by a preponderance of the evidence that claim 8 is unpatentable as obvious over Kim and Shirahata.” slip op. at 18

  Patent outcomesUS 6,879,040 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,879,040
• Asetek Danmark A/S v. Coolit Systems, Inc.Some claims unpatentable
  PTAB · Oct 12, 2021 · IPR2020-00825 · APJ Scott C Moore · IPR · Final written decision

  Claims 1, 2, 4, 5, and 9 are unpatentable over Bezama or Bezama and Chiang; claims 13–15 were not shown unpatentable over Kang or Anderson.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “the 2007 Provisional describes the material of which plate 240 is made, much less indicates that the inventor had possession of an invention including a manifold body (i.e., plate 240) defining a pair of compliant surfaces. See generally Ex. 1005.” slip op. at 24

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Bezama discloses all limitations of claims 1 and 9. See Pet. 23–39; Ex. 1003 ¶¶ 65–86. Patent Owner’s attempt to disqualify Bezama as prior art fails because claims 1 and 9 are not entitled to a priority date earlier than July 27, 2011. See supra § II.E. On this record, and considering all of the evidence and arguments put forth by the parties, we find that Petitioner has shown by a preponderance of the evidence that claims 1 and 9 are unpatentable as anticipated by Bezama. G.” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “teach or suggest each limitation recited in claims 2, 4, and 5, and these contentions are supported by testimony from Dr. Tilton. See Pet. 54–66; Ex. 1003 ¶¶ 114–137. Petitioner additionally identifies rationales for why a person of ordinary skill in the art would have had reason to combine the teachings of Bezama and Chiang to arrive at the inventions recited in those claims. See id.” slip op. at 31

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “bifurcated flow limitation of claim 13. Resp. 46–52. In particular, Patent Owner asserts, with support from Dr. Pokharna, that the fluid entering any of Kang’s inlet channels 44 would mix with fluid from adjacent inlet channels, and that the bulk of the fluid from any inlet channel would exit through adjacent outlet channels, rather than traveling to the outer-most outlet channels as Petitioner suggests. Id. at 47–48; Ex. 2038 ¶¶ 105–114. Patent Owner’s argument is persuasive and supported by well-reasoned testimony from Dr. Pokharna. For example, Dr. Pokharna correctly points out that Dr. Tilton has admitted that microchannels have high flow resistance. Ex. 2038 ¶ 112 (citing Ex. 1003 ¶ 158). We agree with Dr. Pokharna that because of this high flow resistance, fluid entering a microchannel through any inlet channel 44 would tend to exit through the path of least resistance (i.e., the nearest outlet channel 47) rather than traveling to each end of the microchannel and exiting through the most distant outlets. See id. ¶ 112. contention that in Kang that the bulk of any fluid entering a microchannel would exit through the closest outlet channel 47. See Reply 17–18. Instead, Petitioner contends that at least some portion of the fluid will reach each end of the microchannel. See id. This argument is not persuasive because claim 13 recites that the flow that enters each channel through the one aperture “bifurcates into two sub flows,” and requires that each of the recited outlet regions receives “one of the two sub flows” or “the other of the two sub flows.” This claim language is not satisfied by an outlet region that receives only a portion of one of the two recited sub flows. Claim 13 requires that each outlet region receive one of the same two sub flows that originally entered the microchannel. See also Ex. 2038 ¶ 108. Petitioner neither proposes a claim construction that would encompass such an embodiment, nor offers any persuasive evidence that a POSITA would read claim 13 to encompass such an embodiment. Accordingly, on this record, we are not persuaded by a preponderance of the evidence that Kang teaches or suggests a flow of heat exchange fluid that is bifurcated into two sub flows within each of the microchannels, wherein each of these two sub flows is received by one of the two outlet regions adjacent to the opposing ends of the microchannels, in the manner required by claim 13.” slip op. at 36

  Patent outcomesUS 10,274,266 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,274,266
• Asetek Danmark A/S v. Coolit Systems, Inc.All claims unpatentable
  PTAB · Sep 30, 2021 · IPR2020-00747 · APJ Scott C Moore · IPR · Final written decision

  Claims 1, 2, 3, 5, 7, and 25 are unpatentable as obvious over Lyon and Bezama; the Board did not reach anticipation by Bezama.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the invention of the ’567 Patent (hereinafter, a “POSITA”) would have had the following education and experience: (i) “completed college level course work in thermodynamics, fluid mechanics, and heat transfer,” and (ii) “two or more years of experience in designing liquid cooling systems for computers, servers, or other electronic devices, or very similar technology, or one with a more advanced degree in the above fields may have had less practical experience.” Pet. 11. Patent Owner contends that a POSITA “would have earned at least a bachelor’s degree, such as a B.S. (bachelor of science), or equivalent thereof, in mechanical engineering or a closely related field and possessed at least three years of specialized experience in heat transfer devices for thermal management in electronics and computer systems, or in similar systems.” PO Resp. 4. Patent Owner represents, however, that none of its arguments or its declarant’s opinions turn on any differences between the parties’ alternative formulations concerning the level of ordinary skill in the art. Id. at 4 n.2. In its Reply, Petitioner does not respond to Patent Owner’s alternative formulation, or identify any issues in this case that might turn on differences between the parties’ alternative formulations. See generally Reply. On this record, we adopt Patent Owner’s proposed formulation” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “Considering the intrinsic evidence summarized above, and the evidence and arguments presented by the parties, we determine that the claim limitation “a compliant member matingly engaged with the second side of the housing member” is satisfied when at least a portion of the recited compliant member is fitted within the recessed region defined by the second side of the housing member. This partial construction is sufficient to resolve the issues in dispute. On this record, we decline to address the issue of whether “matingly engaged” could also encompass other types of engagement, and we also decline to construe any other claim terms.9 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., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “139); see also Pet. 62 (citing Ex. 1003 ¶ 110) (“Lyon teaches every limitation of the challenged claims, except a compliant material on top of the microchannel fins . . . and a recessed, transverse ‘groove’ on the microchannel fins.”). Petitioner relies on Bezama to supply both of these claim elements, and sets forth rationales for why one of ordinary skill in the art would have had reason to combine these teachings of Bezama with Lyon so as to arrive at the claimed invention. See Pet. 67–68 (citing Ex. 1003 ¶¶ 121–124) (contending that Bezama discloses a recessed transverse groove, and that a POSITA would have known that incorporating such a groove into Lyon’s microchannel walls would have improved fluid flow characteristics); 71–73 (citing Ex. 1003 ¶¶ 128–132) (contending that Bezama discloses that the separator sheet overlying the fins can be made of a compliant material, and that a POSITA would have known that incorporating such a material into Lyon’s Plate 240 would have minimized coolant bypass between the fins and the plate). Patent Owner makes a single patentability argument for claim 1—it contends that neither Lyon nor Bezama discloses a compliant member that is “matingly engaged” with the second side of the housing member. See Resp. 44–49. We find that Petitioner’s contentions regarding the undisputed limitations of claim 1, and the proffered rationales for combining the teachings of Lyon and Bezama, are persuasive and adequately supported. See Pet. 59–77; Ex. 1003 ¶¶ 107–139; see also Paper 11, 8 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”) We now turn to the single disputed limitation of claim 1.” slip op. at 25

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “For the foregoing reasons, we find that Lyon and Bezama teach or suggest all limitations of claim 1, and that Petitioner has set forth adequate rationales for combining the teachings of these references in a manner that would satisfy claim 1. Petitioner has demonstrated by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. § 103. b) Claims 2, 3, 5, 7, and 25 Petitioner also identifies portions of Lyon and Bezama that allegedly teach or suggest each limitation recited in claims 2, 3, 5, 7, and 25, and that these contentions are supported by testimony from Dr. Tilton. See Pet. 78– 84; Ex. 1003 ¶¶ 140–151. Petitioner additionally identifies rationales for why a person of ordinary skill in the art would have had reason to combine the teachings of Lyon and Bezama to arrive at the inventions recited in those claims. See id. Patent Owner does not dispute these contentions or set forth any separate arguments for the patentability of claims 2, 3, 5, 7, and 25, but instead relies solely on its arguments with respect to claim 1. See Resp. 49. Patent Owner’s arguments regarding claim 1 are not persuasive for the reasons set forth above. On this record, we find that Lyon and Bezama teach or suggest all” slip op. at 28

  Patent outcomesUS 9,057,567 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,057,567
• Cirrus Design Corporation v. Hoyt Augustus FlemingAll claims unpatentable
  PTAB · Sep 28, 2021 · IPR2020-00762 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 95–124 and 126–131 are unpatentable as obvious over POH, James, and Hoffmann; claim 125 was disclaimed.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “this standard, claim terms are given their ordinary and customary 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. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). If the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).” slip op. at 7

  • Skill levelSkill level board ownDecided for petitioner

    “in the art: “[a] person of ordinary skill in the art (“POSA”) would have had (1) a degree in Aerospace Engineering or equivalent technical background and (2) familiarity with parachute systems, related sensing systems, and automated flight control.” Pet. 5 (citing the Hoffmann Declaration, Ex. 1003 ¶¶ 29–32). Patent Owner contends the following: [A] person of ordinary skill would have had a degree in aerospace engineering, or an engineering degree coupled with experience evaluating and/or designing aircraft and/or avionics, on February 10, 2009, which is the date [Patent Owner] filed continuation-in-part Application No. 12/368,911. Ex. 1001 at 6:28–15:9 and bibliographical information. The person of ordinary skill also would be familiar with whole-aircraft ballistic parachute systems. PO Resp. 9. The parties are in apparent substantive agreement as to the level of ordinary skill in the art. We do not discern any material differences in the respective assessments of that level by the parties. For purposes of this Decision, we accept and adopt both assessments of the level of ordinary skill in the art and view them as equivalent to one another. We further find that the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references is consistent with the definitions of a person of ordinary skill in the art proposed by the parties. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Petitioner and Mr. Hoffmann explain that a skilled artisan would have recognized that those parameters would have been parts of an evaluation to determine that parachute deployment can occur safely. It follows reasonably and logically that the necessary threshold levels for safe parachute deployment would constitute the “output” of any “evaluation” for deployment of a parachute.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Furthermore, a reference does not “teach away” if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the applicant’s claimed invention. DePuy Spine Inc. v. Medtronic Sofamor Danek, 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed Cir. 2004)). Here, Patent Owner does not explain how POH’s disclosure, even if it might contemplate overriding an autopilot in some emergency circumstance, constitutes criticism, disparagement, or discouragement of a disclosure, as in James, in which emergency procedures for an aircraft may be initiated automatically or by a pilot, even if such initiation may occur while an autopilot remains engaged. Accordingly, having considered the parties’ respective positions, we conclude that Petitioner accounts adequately in the combined teachings of POH, James, and Hoffmann for the requirements of element (c) of claim 95. See Pet. 47–52.” slip op. at 26

  Patent outcomesUS RE47,474 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
• Eis GmbH v. Novoluto GmbHNo claims unpatentable
  PTAB · Sep 23, 2021 · IPR2020-00007 · APJ Susan L C Mitchell · IPR · Final written decision

  Claims 1–3, 5, 7, 8, 11, 14, 15, and 17–26 were not shown unpatentable under the Taylor anticipation or Taylor-based obviousness grounds.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDenied

    “disclosure of a suction cup “sealingly” receiving the vulva occurs when the vacuum is applied, not before. See Ex. 2034 ¶ 121. We disagree with Petitioner’s conclusion that “Taylor discloses that arm 26 ‘compresses . . . and then expands bellows 160’ after member 156 ‘sealingly’ engages the vulva.” Reply 9. The single statement in Taylor on which Petitioner relies states, with reference to Figure 3 set forth above in Section II.D.1, “[t]he first stimulator 154 includes a suction cup member 156 that conformingly and sealingly receives the upper portion of the vulva.” Ex. 1004, 5:29–31. We agree with Dr. Jensen that this does not support Petitioner’s conclusion that a seal is achieved before the vacuum is applied, and credit Dr. Jensen’s testimony that reads as follows as consistent with Taylor’s disclosure.” slip op. at 35

  • ExcludeMotion to exclude, deniedDenied

    “5. Conclusion For the reasons set forth above, we deny the portion of Petitioner’s” slip op. at 73

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “7 Petitioner presents argument that the term “pressure field generator” should be construed as a means-plus-function term limited to the following structure: at least one first chamber, at least one second chamber, and at least one connection element. Reply 25–26. As we find that it is not necessary to construe this term to resolve the issues before us, we do not address these arguments presented by Petitioner.” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “disclosure of a suction cup “sealingly” receiving the vulva occurs when the vacuum is applied, not before. See Ex. 2034 ¶ 121. We disagree with Petitioner’s conclusion that “Taylor discloses that arm 26 ‘compresses . . . and then expands bellows 160’ after member 156 ‘sealingly’ engages the vulva.” Reply 9. The single statement in Taylor on which Petitioner relies states, with reference to Figure 3 set forth above in Section II.D.1, “[t]he first stimulator 154 includes a suction cup member 156 that conformingly and sealingly receives the upper portion of the vulva.” Ex. 1004, 5:29–31. We agree with Dr. Jensen that this does not support Petitioner’s conclusion that a seal is achieved before the vacuum is applied, and credit Dr. Jensen’s testimony that reads as follows as consistent with Taylor’s disclosure.” slip op. at 35

  Patent outcomesUS 9,849,061 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,849,061
• Intel Corporation v. Pact XPP Schweiz AGAll claims unpatentable
  PTAB · Sep 8, 2021 · IPR2020-00540 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–6, 9, 24, 26, 27, 29, 30, 32, 42, 44, 73, and 74 are unpatentable as obvious under § 103.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “At least with respect to the portions of Dr. Mazumder’s declaration that supports Intel’s arguments on which we rely for our decision, and any cross-examination relevant to that testimony, we disagree that Dr. Mazumder was improperly recalcitrant, or demonstrated a lack of knowledge of the subject matter to the extent that it would discredit him as a credible expert witness. Given the circumstances, we also do not fault Dr. Mazumder for refreshing his recollection during cross-examination. Thus, we do not agree with PACT that we should, as a general proposition, disregard or give less credit to Dr. Mazumder’s testimony for these reasons.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Intel argues that a person of ordinary skill in the art “would have had at least an M.S. degree in electrical engineering, and at least three years of experience with multiprocessor systems design.” Pet. 14 (citing Ex. 1001 ¶ 72). Dr. Mazumder testifies that this level of skill “was the typical level of experience of persons working with multiprocessor systems, including the design of processor, cache, memory, and bus architectures, at the time of the alleged invention.” Ex. 1001 ¶ 72. Dr. Wolfe does not disagree, and in his declaration he applies Dr. Mazumder’s proposed articulation of the level of ordinary skill. See Ex. 2026 ¶ 40. For this decision, we adopt Dr. Mazumder’s uncontested declaratory testimony, which we find consistent with the level of technical expertise assumed by the ’807 patent disclosure and the asserted prior art references.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Neither Intel nor PACT argues that any claim terms need an explicit construction. See Pet. 5 (“Intel does not believe any terms need to be construed to resolve the prior art issues presented in this Petition.”). However, according to Intel, in the co-pending litigation the parties “stipulated that the preambles are not limiting” for all independent claims challenged in the Petition. Id. (citing Ex. 1014). PACT does not challenge this statement, and whether the preambles are limiting does not appear to be material to Intel’s contentions in the Petition. Absent a controversy, we do not need to explicitly construe any terms for our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that our decision involves interpreting claim language, we discuss that language below in our analysis of the claim limitations.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “(quoting Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)). Indicia on the face of the reference, such as a copyright date or ISBN number, “are considered as part of the totality of evidence.” Id. at 17–18 (citing Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1377 (Fed. Cir. 2018)). Based on the evidence as a whole, Intel has shown persuasively that the IEEE published the Barroso article in 2000 as part of a physical volume accessible to researchers in the field. In addition to having a copyright notice dated 2000, Barroso is part of a non-consecutively paginated article, bearing the ISBN number “1-58113-232-8.” Ex. 1005, 282. The document also provides instructions for copying and republication, and specifies a copying fee of $5.00. See id. We also find it credible that Mr. Grenier would be familiar with the publication practices of the IEEE in 2000, and the IEEE’s practices with respect to maintaining publication metadata for articles such as Barroso. Although we would reach this conclusion without the new evidence that Intel submitted with its Reply, this new evidence also supports our finding. We find credible the librarian testimony that copies of Barroso were publicly available in two university libraries before the earliest priority date of the ’087 patent. See Exs. 1053, 1054. We also find credible the testimony of Dr. Colwell that Barroso was well-known in the field, and that it is standard practice to submit a physical, bound copy of proceedings at the ISCA conference. Ex. 1055 ¶ 10. So the evidence suggests that about 230 people would have received a bound copy of Barroso at that time. See id. ¶ 9. Dr. Annavaram’s testimony, as a witness appearing on behalf of PACT in another case, corroborates this, although according to him, attendees to the ISCA conferences might have received an electronic copy rather than a bound copy. See Ex. 1051, 165:6–166:5. Thus, we find that Barroso was a printed publication at the time of the claimed invention.” slip op. at 21

  Patent outcomesUS 9,037,807 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,037,807
• Intel Corporation v. Pact XPP Schweiz AGSome claims unpatentable
  PTAB · Sep 8, 2021 · IPR2020-00539 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1, 5, 6, 8, 12, 14–24, 28, 30, and 33 are unpatentable under the Nicol and Nicol–Bhatia obviousness grounds; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “2. Reason to combine Nicol and Bhatia Intel argues that a person of ordinary skill in the art “would have been motivated to combine the complementary teachings of Nicol and Bhatia” for the following four reasons: (1) both references “are directed to interrelated thermal and power management aspects that are critical and ubiquitous in processor-based systems,” Pet. 52–53 (citing Ex. 1008, code (54); Ex. 1009, 1:6–8; Ex. 1001 ¶¶ 231–233); (2) the references “both describe a flexible multiprocessor architecture in which software residing in a controller is programmed to selectively control the power supply of each processor, notably by dynamically adjusting the processor’s clock frequency during operation,” Pet. 53–54 (citing Ex. 1008, 2:18–27, 3:13–18; Ex. 1009, 1:57– 59, 2:28–31, 3:23–28, 3:33–38, 12:26–37; Ex. 1001 ¶¶ 231–233); (3) since Nicol “does not discuss over-temperature protection,” which is “critical for high-performance systems such as Nicol’s multiprocessor system,” a person of ordinary skill in the art “would have been motivated to consult Bhatia, which discusses well-known techniques of providing over-temperature protection,” Pet. 54–55 (citing Ex. 1008, 3:9–20, 4:11–13; Ex. 1009, 2:18– 22, 3:33–46; Ex. 1001 ¶¶ 231–233); and (4) a person of ordinary skill in the art “would have been motivated to consult Bhatia [to implement] low activity states in Nicol’s system as . . . means to further minimize power consumption,” Pet. 55 (citing Ex. 1009, 12:58–64; Ex. 1001 ¶¶ 231–233). In its Response, PACT argues that Intel’s four arguments “amount to little more than a suggestion that Nicol and Bhatia manage aspects of a computer system and it would be beneficial to combine these aspects,” which, “without any showing of actual motivation is plainly insufficient,” and “evidences application of impermissible hindsight bias.” PO Resp. 43– 44 (citing Ex. 2027 ¶ 110; Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018)). PACT also argues that Intel “makes no attempt to explain how a system combining Nicol and Bhatia would function, likely due to the fact that managing a plurality of metrics to create an efficient processing system is extremely difficult.” PO Resp. 44 (citing Ex. 2027 ¶ 111). Citing Dr. Mangione-Smith’s testimony, Patent Owner contends that a person of ordinary skill in the art “might spend their entire career developing intricate systems for managing processor temperature and clock frequency among a plurality of processors, and [Intel] dismisses it as a mere triviality.” Id. at 44–45 (citing Ex. 2027 ¶ 111).” slip op. at 58

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). For a combination of known elements that are not explicitly found together in the prior art, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). A successful petition must “articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR, 550 U.S. at 418); see also 35 U.S.C. § 322(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4) (2020).” slip op. at 16

  Patent outcomesUS 9,552,047 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,552,047
• Intel Corporation v. Pact XPP Schweiz AGAll claims unpatentable
  PTAB · Sep 7, 2021 · IPR2020-00542 · APJ Sally C Medley · IPR · Final written decision

  Claims 1–5, 8, 9, and 12–18 are unpatentable as obvious over the applied Song-based grounds; the Board did not reach the remaining grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Paul Franzon, who testifies that a person having ordinary skill in the art “would have been a person having at least a Master’s degree in Electrical Engineering, Computer Engineering or Computer Science with three years of industry experience in coupled processors, multi-level caches, and caches.” Pet. 14 (citing Ex. 1001 ¶ 39). Patent Owner’s declarant adopts Petitioner’s definition of a person having ordinary skill in the art. Ex. 2051 ¶¶ 16–17.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Claim 1 recites “an algorithm list buffer.” Ex. 1003, 169:9. Both parties agree that the plain meaning of an “algorithm list buffer” is a buffer that stores a list of algorithms. PO Resp. 14; Pet. Reply 4. We disagree with Patent Owner that an “algorithm list buffer” must be in the form of an interlinked list that points to tables that include instructions and data for the algorithm. PO Resp. 11–13 (citing Ex. 1003, code (57), 10:36–40, 19:22– 56, 19:32–59, Fig. 2). Claim 1 does not recite a list that points to tables that include instructions and data for the algorithm, and we decline the invitation to limit claim 1 to unclaimed features. See Ventana Med. Sys., Inc. v. BioGenex Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006) (“[E]ach claim does not necessarily cover every feature disclosed in the specification [and] it is improper to limit the claim to other, unclaimed features.”). Moreover, and importantly, claim 1 additionally recites that an algorithm “comprises a set of instructions for joint execution.” Ex. 1003, 169:2–4 (emphasis added). Patent Owner overlooks this lexicographic 13 Petitioner alternatively argues that to the extent the claimed “algorithm list buffer” requires “stor[ing] algorithm pointers” as Patent Owner alleges, Song’s fetch unit contains control flow instructions like “Jump to Subroutine” that a POSITA would have understood to point to a new subroutine to be executed. Id. at 5–6. For purposes of this Decision, we need not and do not consider this argument, because we determine that “algorithm list buffer” does not require “storing algorithm pointers.” definition of “algorithm” in presenting its arguments. Taking into account the additional claim limitation that an algorithm “comprises a set of instructions for joint execution,” and the parties’ agreement that an “algorithm list buffer” is a buffer that stores a list of algorithms, claim 1’s “algorithm list buffer” is a buffer that stores a list comprising sets of instructions for joint execution. Claim 1 does not, however, impose any particular organization on how sets of instructions may appear, or be organized, within such a list, or require that the sets have any particular structure at all, apart from appearing in the list and being “for joint execution.”” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “(citing Ex. 1013, 1:62–66; Ex. 1001 ¶¶ 99–100), 46–47 (citing Ex. 1013, 4:32–66, 5:42–6:20, Fig. 2; Ex. 1001 ¶ 103). Petitioner directs attention to Arimilli’s description that a multi-level cache allows the lower level cache (L2) to act as “an intermediary between memory 16 and the on-board caches, and can store a much larger amount of information (instructions and data) than the on-board caches can, but at a longer access penalty.” Id. at 45 (quoting Ex. 1013, 1:63–66). Petitioner further contends that the multi-level cache allows the L1 cache to be rapidly accessed for a small amount of data, and the L2 cache to be accessed for a larger amount of data but at a slower pace. Id. (citing Ex. 1001 ¶ 100). Petitioner argues, and we agree, that to the extent Song does not teach a “multi-level cache,” “[a]dding a second level of cache to Song’s system, like that disclosed in Arimilli, will allow it to ‘store a much larger amount of information’ (Ex. 1013, 1:62–66) than Song’s cache subsystem, and improve efficiency of data transfer by avoiding long memory access.” Pet. 45 (citing Ex. 1001 ¶ 100). Petitioner further argues that a POSITA would have been motivated to “include Arimilli’s cache slices within Song’s caches.” Id. at 46–47. Petitioner argues, and we agree, that read-write operations are improved when the cache is divided into a plurality of slices by allowing “more efficient read and write operations if parallelized into slices rather than serially with the entire cache.” Id. at 47 (citing Ex. 1013, 4:43–66; Ex. 1001 ¶ 103). Petitioner further argues, and we agree, that Arimilli’s sliced cache presents itself as a single cache, confirming that a POSITA would easily integrate Arimilli’s cache slices into Song with a reasonable expectation of success. Id. (citing Ex. 1013, 5:42–6:20, Fig. 2; Ex. 1001 ¶ 103).” slip op. at 45

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Franzon’s testimony that the prior art discloses an “algorithm list buffer,” because “his declaration simply parrots the Petition and he was purposefully evasive and nonresponsive throughout his deposition.” PO Resp. 23–27; Sur-reply 12. We have reviewed the arguments provided by Patent Owner and determine such arguments are insufficient for us to give little weight to Dr. Franzon’s declaration. Rather, it is within our discretion to assign the appropriate weight to be accorded evidence. See 37 C.F.R. § 42.65(a); see also, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); and Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”). Based on the record before us, we are not persuaded that we should give Dr. Franzon’s testimony little weight. For example, Patent Owner faults Dr. Franzon for merely “track[ing]” the Petition and failing to provide any independent analysis of the term “algorithm list buffer.” PO Resp. 23. First, we do not find that Dr. Franzon merely copied the Petition, rather, it is most likely that Petitioner incorporated his testimony into the Petition. Pet. Reply 9. Moreover, Patent Owner first raised the meaning of “algorithm list buffer” in connection with its Patent Owner Response, which came after Dr. Franzon’s initial declaration. PO Resp. 14–17. Accordingly, it is not unusual that Dr. Franzon did not analyze the term “algorithm list buffer” in his original declaration, as he all along applied the plain meaning of the term. Ex. 2053, 37:13–24. Lastly, we do not find that the few parts of Dr. Franzon’s cross-examination testimony that Patent Owner points to justifies us concluding that Dr. Franzon was so evasive in answering questions that we should not consider his testimony altogether.” slip op. at 28

  Patent outcomesUS 9,170,812 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,170,812
• Intel Corporation v. Pact XPP Schweiz AGAll claims unpatentable
  PTAB · Aug 31, 2021 · IPR2020-00541 · APJ Sally C Medley · IPR · Final written decision

  Claims 1–6 are unpatentable as obvious over Nicol and Kling; the Board did not decide the withdrawn grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Carl Sechen, who testifies that a person having ordinary skill in the art “would have been a person with at least a Master’s degree in Electrical or Computer Engineering (or equivalent), and three years of experience with processor design.” Pet. 10 (citing Ex. 1001 ¶¶ 83–85). Patent Owner adopts Petitioner’s definition of a person having ordinary skill in the art. PO Resp. 19. We accept the assessment offered by Petitioner and adopted by Patent Owner as it is consistent with the ’605 patent and the asserted prior art. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Subsequent to the Decision to Institute, the District Court determined that the phrase “each of the plurality of data processing units . . . adapted for sequentially processing data” means “[s]equential data processors that pass results to one or more additional data processing units to perform additional computations.” Ex. 2026, 17, 19. The parties appear to agree with that construction. PO Resp. 8–9; Pet. Reply 8, 27. Petitioner’s showing in the Petition is consistent with the District Court’s construction, because the construction is similar to Patent Owner’s proffered construction and neither party indicates that there is a substantive difference between Patent Owner’s proffered construction and the District Court’s construction for purposes of deciding the issues in this proceeding. Pet. 30–32; PO Resp. 8–9; Pet. Reply 8, 27. Accordingly, for purposes of this Decision, we adopt the District Court’s claim construction for “each of the plurality of data processing units . . . adapted for sequentially processing data.”” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Patent Owner’s arguments focus too narrowly on the individual embodiments shown and described in Nicol Figures 2 and 4, and do not adequately address Petitioner’s showings, which rely on Nicol as a whole. Pet. 25–29, 35–38, 40. For example, the Petition relies on an annotated Figure 4 to show and label different PEs (PE1 and PE2) for purposes of showing the claimed “a first processor” and “a second processor.” Pet. 36, 40. Notably, Petitioner does not rely on the passages related to Figure 4 that Patent Owner points to in arguing that Petitioner improperly mixes and matches embodiments, e.g., Exhibit 1009, 5:60–61, 5:67–6:2. Pet. 35–41. Furthermore, the Petition makes clear that Figure 3, which Petitioner primarily relies on to show setting of the clock frequency for the annotated Figure 4 system illustrates how the claim limitations are met. Id. Patent Owner’s incompatibility arguments are based on glossing over the teachings of Figure 3 altogether, while rigidly focusing only on certain descriptions of Figures 2 and 4. PO Resp. 17–19, 28–30. Indeed, Dr. Mangione-Smith’s testimony regarding the incompatibility of Nicol’s Figure 2 and Figure 4 embodiments does not mention Nicol Figure 3 at all. Ex. 2024 ¶¶ 37, 48–51. With this in mind, we address Patent Owner’s incompatibility arguments.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “motivated and found it obvious to combine the teachings of Nicol and Kling. Pet. 23–25, 42–45. For example, Petitioner contends, and we agree, that a POSITA would have been motivated to combine Kling’s over-temperature protection to Nicol’s multiprocessor system because it was known that overtemperature protection was critical for high-performance multiprocessor systems. Id. at 24, 42 (citing Ex. 1001 ¶ 127; Ex. 1009, 2:18–22, 3:9–20; Ex. 1010, 1:38–46; Ex. 1001 ¶¶ 127, 129, 182). Petitioner further contends, and we agree, that a POSITA would have been motivated to use temperature measurements to improve voltage scaling (taught in Nicol) and for over-temperature protection (taught in Kling). Id. at 42–43 (citing Ex. 1001 ¶ 186). Patent Owner first argues that “[m]ere benefit without any showing of actual motivation is plainly insufficient to suggest a POSITA would combine these reference[s].” PO Resp. 54–55 (citing Ex. 2024 ¶ 82). We are not persuaded by this conclusory argument, because “[i]f a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). In any event, Petitioner explains that a POSITA would have been motivated to combine Kling’s over-temperature protection to Nicol’s multiprocessor system because it was known that over-temperature protection was critical for high-performance multiprocessor systems. Pet. 24, 42 (citing Ex. 1001 ¶ 127; Ex. 1009, 2:18– 22, 3:9–20; Ex. 1010, 1:38–46; Ex. 1001 ¶¶ 127, 129, 182). We find, and it is not disputed, that over-temperature protection was critical for high-performance multiprocessor systems. Ex. 1010, 1:42–47 (explaining that if thermal monitoring is not included “the processor may destroy itself by its own heat”). Nicol describes that temperature tracking would be desirable in its power management system (see, e.g., Ex. 1009, 4:11–13 (explaining that “the operating system can reduce the supply voltage even further by tracking temperature and process variations”). Nicol, however, does not specifically provide details, and we give substantial weight to Dr. Sechen’s testimony that a POSITA would have been motivated to consult Kling and implement Kling’s over-temperature protection, which was known to be “critical for high-performance systems.” Ex. 1001 ¶ 127.” slip op. at 41

  Patent outcomesUS 9,075,605 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,075,605
• Eik Engineering SDN. BHD. v. Wilco Marsh Buggies & Draglines, Inc.Rehearing denied
  PTAB · Mar 4, 2021 · IPR2020-00344 · APJ Barry L Grossman · IPR · Rehearing

  The Board denied rehearing and upheld denial of institution because Grounds 7, 8, 11, and 12 lacked particularity, justifying denial of the entire petition.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. REQUEST FOR REHEARING When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of 1 The PTAB E2E docket system correctly identifies the denial of POP review as Paper “11,” dated “October 26, 2020.” This document itself, however, incorrectly states that it is “Paper 10.” In fact, “Paper 10” in the PTAB E2E docket system for this IPR proceeding is Patent Owner’s “RESPONSE TO PETITIONER’S REQUEST FOR REHEARING,” filed on August 21, 2020 See Paper 10. We note that Patent Owner was not authorized to file this response. See Consolidated Office Patent Trial Practice Guide (“Consolidated Practice Guide”), November 2019, 90 (“The opposing party should not file a response to a request for rehearing absent a request from the Board.”). No such request was made by the Board. Accordingly, Paper 10 will be expunged from this record and will not be considered in deciding Petitioner’s Request for Rehearing. discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . 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. Under 35 U.S.C. § 314, an 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). If an inter partes review is instituted, a final written decision under 35 U.S.C. § 318(a) must decide the patentability of all claims, and all grounds, asserted in the petition. SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 3

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “The Petition fails to identify with particularity what disclosure is relied on from each of the references in Grounds 7, 8, 11, and 12, how it would be combined with the other disclosures, and why the proposed combination would have been obvious to a person of ordinary skill in the relevant technology. Without any explanation as to what, how, and why the references would have been combined in Grounds 7, 8, 11, and 12, we, and the Patent Owner, are left to speculate as to the specific details of asserted unpatentability based on combining the references to arrive at the claimed invention. See Paper 7 (“Decision” or “Dec.”), 14 (citation omitted). We determined that “[t]he lack of particularity [in Grounds 7, 8, 11, and 12] infects the proceeding sufficiently that we do not institute an inter partes review.” Id. at 16–17.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “asserted unpatentability of the claims challenged in Grounds 7 and 8, and why it would have been obvious to combine selected disclosures from each of the three references. We have not been directed to any persuasive evidence that the Petition met this burden.” slip op. at 10

  • Other 314aInstitution denied discretionary otherDenied

    “Petition, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” See, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 6 (PTAB Mar. 20, 2020) (Precedential). Apple v. Fintiv was decided in the context of evaluating the factors related to a co-pending parallel district court proceeding. The same holistic view applies equally to situations where some claims meet the requirements for instituting a trial and some do not. While we consider the number of claims that fail to meet the statutory and other requirements to institute an inter partes review, as well as the number of claims that meet these requirements, there is no fixed threshold or ratio of claims that meet the requirements compared to those that do not meet the requirements that controls our determination, as suggested by Petitioner (see Req. Reh’g 2. The Patent and Trademark Office addressed this issue in its “SAS Q&As”, which stated: D3. Q: Will the Board institute a petition based on the percentage of claims and grounds that meet the reasonable likelihood standard, e.g., 50%? A: No. The Board does not contemplate a fixed threshold for a sufficient number of challenges for which it will institute. Instead, the panel will evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system (see 35 USC § 316(b)), the entire petition should be denied under 35 USC § 314(a). Ex. 3003, 8. As explained in our TPG, If a panel determines that a petition meets the standards for institution in relation to fewer than all the challenges presented, or where deficiencies in the petition (such as a failure to provide a construction under 35 U.S.C. § 112(f)) affect only a portion of the challenges presented, the panel will evaluate all the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied. TPG, 64. Where no trial is instituted, a decision to that effect will be provided, as was done in this proceeding. “The Board expects that the decision will contain a short statement as to why the standards were not met, although this may not be necessary in all cases.” Id. at 64–65.” slip op. at 20

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 6,918,801

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.