- Google LLC v. Flypsi, Inc.All claims unpatentablePTAB · Jul 26, 2024 · IPR2023-00357 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–4 are unpatentable: claims 1, 2, and 4 as obvious over Backhaus and Taylor, and claim 3 as obvious over Backhaus, Saksena, and Taylor.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of telecommunication.” Pet. 4–5 (citing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute Petitioner’s description. PO Resp. 5. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner proposes construing the term “channel” in all challenged claims to refer to “[a] channel [that] does not have to be fully connected on both ends or actually transmitting a particular type of information to qualify as a channel.” PO Resp. 6. Petitioner asserts that Backhaus teaches transmitting an access telephone number via a data channel in two ways. Pet. 22–26. We rely only on the “second way” for purposes of this Decision. See Section II.D.3; Pet. 25–26. Patent Owner’s proposed construction of the term “channel” does not impact the parties’ dispute about the “second way” that Backhaus teaches transmitting an access telephone number via a data channel. PO Resp. 21–23; PO Sur-reply 11; Tr. 10:2–11, 68:3–24.1 Therefore, we determine that the term “channel” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“had reason to combine the cited teachings of Backhaus and Taylor. Pet. 50– 54 (citing Ex. 1002 ¶¶ 94–100). We agree with Petitioner’s rationale. Specifically, it would have been obvious to a person of ordinary skill in the art to combine the teachings of Backhaus and Taylor so that Backhaus’s SLS platform communicates with the PSTN using Taylor’s PSTN interface. Id. at 53; Ex. 1002 ¶ 97. Doing so would have been obvious because Backhaus teaches using its SLS platform with a PSTN, and Taylor provides an interface that allows an external system, such as Backhaus’s SLS platform, to communicate with a PSTN. Pet. 52–53; Ex. 1002 ¶ 97; Ex. 1005 ¶ 32; Ex. 1007 ¶¶ 4, 8. In addition, a person of ordinary skill in the art would have had a reasonable expectation of success in using Taylor’s PSTN interface with Backhaus’s SLS platform. Pet. 53–54; Ex. 1002 ¶ 98.” slip op. at 21
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Sur-reply 15–17. In particular, Patent Owner contends that the Lin Declaration “does not contain any statement of the legal standards the expert understood or was applying, such as standards relating to defining the person of ordinary skill in the art, anticipation, or obviousness,” and Dr. Lin “could not recall whether Petitioner gave him instructions on any legal principle.” PO Resp. 39–40 (citing Ex. 2009, 9:1–11, 14:5–17:6, 23:6–11, 25:3–10, 26:9–22, 33:11–34:1, 34:3–11); PO Sur-reply 16. Patent Owner’s argument is unavailing. We do not rely on the Lin Declaration as evidence of any legal standard or for Dr. Lin’s legal conclusions. Rather, we rely on the Lin Declaration to support our factual determinations regarding the teachings of Backhaus, Saksena, and Taylor, as well as why and how a person of ordinary skill in the art would have combined those teachings. See Sections II.D.3, II.D.6, II.E.1, II.E.2. Thus, irrespective of whether the Lin Declaration discusses a particular legal standard, we do not disregard the entire Lin Declaration.” slip op. at 26
Patent outcomesUS 11,218,585 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,218,585 - Google LLC v. Flypsi, Inc. (D/B/A Flyp)All claims unpatentablePTAB · Jul 26, 2024 · IPR2023-00359 · APJ James J Mayberry · IPR · Final written decision
Claims 1–4 are unpatentable: claims 1, 2, and 4 over Backhaus and Taylor, and claim 3 over Backhaus, Taylor, and Saksena.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art . . . at the time of the alleged invention of the ’554 patent would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of telecommunication . . . More education can supplement practical experience and vice versa. Pet. 4–5 (referencing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 5. For the purposes of this Decision, we apply Petitioner’s undisputed definition of the level of ordinary skill in the art. We find that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’554 patent.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“challenged claims to resolve the underlying controversy.” Pet. 8. Patent Owner proposes construing the term “channel” in all challenged claims to refer to “[a] channel [that] does not have to be fully connected on both ends or actually transmitting a particular type of information to qualify as a channel.” PO Resp. 6. Petitioner asserts that Backhaus teaches transmitting an access telephone number via a data channel in two ways. Pet. 22–26. As will be evident from our analysis below, we rely only on the “second way” for purposes of this Decision. Patent Owner’s proposed construction of the term “channel” does not impact the parties’ dispute about the “second way” that Backhaus teaches transmitting an access telephone number via a data channel. PO Resp. 21–22; Pet. Reply 3 (“Flyp does not even allege that its construction is relevant to the ‘second way’ the Petition addresses limitation [1.b].”); PO Sur-reply 11; Tr. 10:2–11, 68:3–24.5 Therefore, we determine that the term “channel” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Also, we determine that we need not expressly construe any other claim terms to resolve the parties’ disputes. To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next.” slip op. at 13
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“suggest that we categorially disregard Dr. Lin’s declaration. As a general point, our precedential decision in Xerox does not provide a blank condemnation of declaration testimony that is identical or virtually identical to language in a paper. Xerox found that the “cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox at 15; see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Here, Dr. Lin cites to evidence to support certain testimony. See, e.g., Ex. 1003 ¶ 73 (citing to Ex. 1007 and Ex. 1011). Also, we do not rely on the Lin Declaration as evidence of any legal standard or for Dr. Lin’s legal conclusions. Rather, we rely on the Lin Declaration to support our factual determinations regarding the teachings of Backhaus, Saksena, and Taylor, as well as why and how a person of ordinary skill in the art would have combined those teachings. Finally, Patent Owner’s arguments go to the weight of Dr. Lin’s testimony. We assess the appropriate weight to give the testimony in our analyses below.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“provided a motivation to combine the teachings of a PSTN interface in Backhaus’s system, even though Backhaus discloses interfacing with the PSTN. Backhaus is silent as to how its system interfaces with the PSTN. As such, we agree with Petition that a person having ordinary skill in the art would have been motivated to connect SLS platform 115 with the PSTN and to also include a PSTN interface in order to facilitate such an connection when implementing Backhaus’s system and processes—such that SLS platform 115 could provide the disclosed second line services to many device users connected to the PSTN that is known to provide reliable communications. Pet. 50. Indeed, Patent Owner’s argument that Backhaus discloses interacting with the PSTN strengthens Petitioner’s position, demonstrating that a person having ordinary skill in the art, when considering Backhaus’s and Taylor’s teachings together, would have used a PSTN interface to ensure a connection with a PSTN. Cf. Pet. Reply 19 (“Rather, it shows that a [person having ordinary skill in the art] would have been motivated to ‘include a PSTN interface similar to that discussed in Taylor when implementing Backhaus’s telephony service system.’” (citing Pet., 49–51)).” slip op. at 32
Patent outcomesUS 11,012,554 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,012,554 - Nespresso USA, Inc. v. K-Fee System GmbHInstitutedPTAB · Jun 25, 2024 · IPR2024-00299 · APJ James J Mayberry · IPR · Institution
The Board instituted review of claims 1–8 based on a reasonable likelihood that claim 1 is obvious over Yoakim, Jarisch ’929, Rossi, and Rapparini.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (2023) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art would have had “a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, and experience with sensors for recognizing an identifier.” Pet. 16 (referencing Ex. 1003 ¶ 40; IPR2022-01574, Paper 12, 15). Patent Owner does not dispute Petitioner’s characterization of the level of ordinary skill in the art of the ’910 patent. For purposes of this Decision, based on the prior art, the sophistication of the technology at issue, and Mr. Jobin’s Declaration testimony, we adopt Petitioner’s unopposed definition of the level of ordinary skill. The ’901 patent, as well as the prior art of record, includes systems that use identifiers on a capsule to control the operation of a beverage machine. See, e.g., Ex. 1001, 1:28–34 (“[T]he present invention . . . has an identifier, which allows to individualize the respective portion capsule.”); Ex. 1004 ¶ 25 (discussing the system’s “identification means”); Ex. 1006 ¶ 1 (“The present invention relates in particular to coding supports adapted to store information related to a capsule, capsules associated with/for embedding coding supports, reading and processing arrangements for reading and using such information for preparing a beverage.”); Ex. 1041, code (57) (“The process for controlling the operation of an edible-product making machine [includes] . . . recogni[zing] an” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally 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. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have frequently stated that the words of a claim ‘are generally given their ordinary and customary meaning.’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).” slip op. at 18
- Obviousness (§103) › Analogous artAnalogous artOther
“a) Petitioner’s contentions Petitioner contends that Yoakim, Jarisch ’929, Rossi, and Rapparini are “analogous art in the field of portion capsule beverage extraction, each disclosing an invention that may be applied in automatic coffee/expresso machines.” Pet. 37 (referencing Ex. 1004 ¶¶ 2, 3; Ex. 1006 ¶¶ 1, 2; Ex. 1008 ¶ 1; Ex. 1041, 3; Ex. 1003 ¶ 220); cf. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.”). Patent Owner does not dispute this contention at this stage of the proceeding.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,554,910 - Nespresso USA, Inc. v. K-Fee System GmbHInstitution deniedPTAB · Jun 10, 2024 · IPR2024-00239 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 would have been obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of claims 1–20 of the ’094 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The express language of the claim, however, does not support using the “central axis” as the measuring point for determining if one object is laterally offset from another. For example, the term “central axis” is not used in the relevant claim phrase and the dictionary definitions of “lateral” relied upon by Petitioner and Mr. Jobin to show the ordinary meaning of the claim term do not suggest that the “central axis” is the reference point for determining whether a first object is “laterally offset” from a second object. As such, we determine that the claim language supports Patent Owner’s construction requiring that the “groove” be “off to the side” of the entire mandrel, and not merely the “central axis” of the mandrel. Prelim. Resp. 54. We must also resolve whether the entire groove is required to be laterally offset from the chamfered mandrel, or only a portion of it. On this point, the claims do not use the term “portion,” but rather specify that the “groove” is “laterally offset from the chamfered mandrel.” Ex. 1001, 14:4– 5, 15:19–20. This suggests that the entire “groove” must be offset from the “chamfered mandrel.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“That argument, however, does not explain why it would have been obvious to laterally offset the groove of Yoakim from the chamfered mandrel. Rather, as demonstrated by Mr. Jobin’s testimony, this argument relates to the general use of a sealing member in a groove, to the extent it was ultimately determined that such a configuration is not expressly disclosed in Yoakim. Id.; Ex. 1003 ¶ 296 (“It would have been obvious to one skilled in the art to position a sealing member in a groove to solidify the between counter-force portion 161 and engaging portion 157 in Figure 35 of Yoakim is more appropriately identified as the claimed “groove.” Prelim. Resp. 60–61. We need not resolve this issue, however, as Petitioner does not persuasively demonstrate that either potential “groove” is “laterally offset” from the chamfered mandrel. placement of the seal and improve its sealing stability and strength. Furthermore, it would have been obvious to one skilled in the art to utilize a groove and seal configuration in the brewing head . . . .”) (emphasis added). Even if we interpret the recited portion of the Petition as an argument for placing the groove entirely to the side of the mandrel in Yoakim, the Petition does not persuasively explain why one of ordinary skill in the art would have sought to do so. In Figure 35 of Yoakim, the seal and groove, as well as an elastic loading means, act as a valve means to control the level of pressure exerted in the capsule and “optimize interaction of water and the ground coffee particles to obtain a good extraction of the coffee and aroma compounds.” Ex. 1004 ¶¶ 370–372, 382, 396–398, 434–436, 445; Ex. 1003 ¶¶ 286–290; Pet. 63. These are the same beneficial properties relied upon by Petitioner to support the proposed combination, and Petitioner does not persuasively explain why one of ordinary skill in the art would have modified Yoakim in order to achieve results that are already obtained in the identified embodiment. Pet. 63. In view of the foregoing, we determine that Petitioner does not demonstrate a reasonable likelihood that claims 1 and 12 would have been obvious over the combined disclosures of Yoakim, Jarisch 929, and Rossi.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,542,094 - Sony Interactive Entertainment LLC v. Intellectual Pixels LimitedAll claims unpatentablePTAB · Jun 5, 2024 · IPR2021-00237 · APJ Iftikhar Ahmed · IPR · Remand
Claims 1–12 are unpatentable as obvious over Wiltshire and Saha, with Chen or PC Magazine additionally applied to the specified dependent claims.
RulingsRemand decision- RemandOther
“Petitioner filed a Notice of Appeal of the Final Written Decision with the Federal Circuit. See Paper 39. On October 13, 2023, the Federal Circuit issued a decision in the appeal vacating our Final Written Decision and remanding for further proceedings consistent with its decision. Sony, 2023 WL 6773879. The Federal Circuit found that our determination that Petitioner’s asserted reference Wiltshire does not disclose the “generating” limitation of claims 1 and 8 was not supported by substantial evidence. Id. at *2–4. The Court vacated our Final Written Decision and remanded for further proceedings consistent with the Court’s opinion. Id. at *5. After the Federal Circuit issued its mandate, we asked the parties to propose a procedure on remand. Ex. 3001, 2. The parties proposed an agreed-upon procedure to allow post-remand briefing with no additional evidence or expert declarations. Id. at 1. We issued an Order authorizing each party to file opening and responsive briefs. Paper 43. The parties then filed the following briefs: Petitioner’s Opening Brief Pursuant to Paper No. 43 (Paper 47, “Pet. Remand Br.”), Patent Owner’s Opening Brief on Remand (Paper 46, “PO Remand Br.”), Petitioner’s Response Brief Pursuant” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“6773879, at *4. The Federal Circuit concluded that was improper. As the Court explained, “the existence of those examples does not exclude other examples where new images are created,” and “[a]lthough both parties agree[d] the game Doom requires creating new images, [we incorrectly] determined that listing Doom in the specification was not a sufficient disclosure.” Id. Contrary to Patent Owner’s assertion, the logical conclusion from the Federal Circuit’s reasoning is that our finding that Wiltshire is silent as to the content of that compressed MPEG stream has now been rejected. We must “credit[] Wiltshire’s disclosure of applying its system to video games like Doom, which require ‘generating’ new images.” Id. Based on that reading of Wiltshire, Petitioner persuasively shows that the combination of Wiltshire and Saha teaches compressing those new images using MPEG and transmitting those as compressed frames. Dr. Fuchs testifies that a person of ordinary skill in the art would have understood from Wiltshire’s disclosure that “if the image is displayed or updated, it is then sent to the client in the form of a ‘video stream,” and that “[t]ransmitting the updated images as a video stream allows Wiltshire’s system to be used with the wide variety of games it contemplates, including arcade games (like Doom) that continually update images on the screen.” Ex. 1033 ¶ 46; see also id. ¶ 49 (“The video stream must be dynamically generated because Wiltshire system must be capable of playing real-time interactive games like Doom.”); Pet. Reply 13–16. We find Dr. Fuchs’s testimony persuasive and consistent with the Court’s guidance as to Wiltshire’s disclosure.” slip op. at 48
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“objection to excluding Exhibit 1024 from the record. Id. Accordingly, Patent Owner’s motion to exclude as to Exhibit 1024 is granted.” slip op. at 89
Patent outcomesUS 10,681,109 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,681,109 - Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCAll claims unpatentablePTAB · May 20, 2024 · IPR2022-01541 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–7, 9, 10, 20–22, and 24 are unpatentable as obvious over Hamafuku, Whitman, and Imanaka, with Cleland added for claim 5.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Upon review of the prior art of record, we determine that no claim terms require construction for purposes of this Final Written Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Upon review of the prior art of record, we adopt Petitioner’s definition of a person of ordinary skill in the art as it is consistent with the prior art of record, but note that neither party contends the outcome of this case depends on whether a person of ordinary skill could include an individual with a degree in Materials Science.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“In this case, there was a known desire to increase nozzle pitch in inkjet printheads, Imanaka’s heater and nozzle configuration had been used in the art to achieve this goal, and there is no suggestion that combining the teachings of Hamafuku, Whitman, and Imanaka was beyond the skill of an ordinarily skilled artisan. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. 2023). Thus, we credit the testimony of Mr. Curley that one of ordinary skill in the art would have sought to use Imanaka’s heater and nozzle pitch in Hamafuku in order to provide a more compact and higher density printhead. Ex. 1002 ¶¶ 404–05. A conclusion of obviousness requires a reasonable expectation of success. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1365 (Fed. Cir. 2016). This inquiry asks whether one of ordinary skill in the art would have had a reasonable expectation of combining the references to achieve what is claimed in the patent-at-issue. Id. at 1367. The inquiry does not look to whether unclaimed elements or functions would or would not also be achieved, or whether “one would reasonably expect the prior art reference to operate as those references intended once combined.” Id.” slip op. at 42
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“As noted by Patent Owner, the components of Imanaka are made of silicon-based materials, manufactured using thin film technology. PO Resp. 53–54 (citing Ex. 1008, 6:50–61). We are not persuaded, however, that Imanaka’s preference for silicon-based materials would teach away from, or otherwise discourage, one of ordinary skill in the art from combining Hamafuku, Whitman, and Imanaka. Imanaka does not suggest that failure to use silicon-based materials would result in an inoperable device. Rather, Imanaka states that use of silicon-based materials may “improve the mechanical characteristics” and “reliability” of “the liquid discharge head.” Ex. 1008, 6:50–61. Given the considerable increase in printhead nozzle pitch and print resolution provided by Imanaka’s heater and nozzle pitch configuration, we are not persuaded that a failure to capture the same improvement in mechanical characteristics and reliability from the use of silicon-based materials would prevent one of ordinary skill in the art from implementing Imanaka’s nozzle pitch in Hamafuku and Whitman or counsel against this modification.” slip op. at 41
Patent outcomesUS 7,152,951 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,152,951 - Mara Renewables Corporation v. DSM IP Assets, B.V.Institution deniedPTAB · Apr 18, 2024 · IPR2024-00070 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–15 were anticipated by Radianingtyas or obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority under 35 U.S.C. § 314, which provides that 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). For the reasons provided below, we determine Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim term “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (holding that the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application”). Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not provide a definition of the level of ordinary skill in the art. See Prelim. Resp. 19. Patent Owner also states that any differences between the parties’ proposed definition of the skill level would not impact its arguments. Id. For purposes of this Decision, we adopt Petitioner’s definition of the skill level because it is consistent with the prior art’s demonstration of the level of ordinary skill at the relevant time. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“triglyceride, DHA, and heptadecanoic acid content recited therein. In order to anticipate a claim, a prior art reference “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.” NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008) (quotation marks omitted). A reference, however, can anticipate a claim “even if it does not expressly spell out all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would at once envisage the claimed arrangement or combination.” Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1068 (Fed. Cir. 2017) (quotation marks and brackets omitted). As explained below, here, Petitioner has not shown Radianingtyas discloses a microbial oil comprising the required triglyceride, DHA and heptadecanoic acid content. Specifically, although the exemplified strain ONC-T18 produces oil that meets the claimed triglyceride fraction and heptadecanoic acid level, Petitioner has not shown the same oil contains the recited DHA level.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,207,363 - PTAB · Apr 1, 2024 · IPR2023-01360 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR on claims 1–23 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“A claim “shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). At this stage of the proceeding, neither party presents any claim terms for construction. Pet. 2– 3; Prelim. Resp. 3. Based on the present record, we determine that it is not necessary to provide an express interpretation of any claim terms at this time. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art would have had “(1) at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) three to five years of experience with networking, power consumption of networked computing devices, and/or wireless communication systems.” Pet. 5, n.1; Ex. 1003 ¶ 17. Dr. Butler further states that “[m]ore education, e.g., a doctorate in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, would compensate for fewer years of work experience.” Id. Patent Owner states that “[f]or the purposes of this preliminary response,” it “does not challenge that definition.” Prelim. Resp. 3. For purposes of this Decision, we adopt the assessment of the level of ordinary skill in the art proposed by Petitioner and Dr. Butler and not disputed by Patent Owner as reasonable and consistent with the prior art. See Okajima v Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the present record, we determine that Petitioner has made a sufficient showing as to this limitation for purposes of institution. In this regard, Petitioner has introduced sufficient evidence at this stage of the proceeding that one of ordinary skill would have been motivated to combine Rao and Araujo as Petitioner proposes. This evidence includes the testimony of Dr. Butler that one of ordinary skill “would have found it obvious to combine a Remote Access Client as taught by Rao with a PPM and request deflector as taught by Araujo to provide a client that better ‘use[s] the energy in a way that strikes a balance between providing functionality and maintaining longevity of the charge.’” Ex. 1003 ¶ 75. It also includes Dr. Butler’s testimony that, in implementing Rao’s filtering, prioritization, and queuing functionality, one of ordinary skill “would have perceived opportunities for improving the policy management capabilities already present in Rao to impart additional advantages, such as optimizing power use,” and would have known that “mobile devices use techniques for optimizing the use of constrained resources, including network bandwidth and battery power.” Id. ¶ 77. Dr. Butler further explains that one of ordinary skill “would have recognized the importance of power management at least because, in mobile devices, applications cannot execute without sufficient power.” Id. Additionally, Dr. Butler testifies that, for these reasons, one of ordinary skill “would have looked to policy-based power management such as taught in Araujo to serve as one of Rao’s ‘multitude of ways to define client-side application priorities,’” to create a device that “would both manage power according to the PPM techniques of Araujo and manage network use according to the techniques of both Rao and Araujo.” Id. ¶ 78. And, Dr. Butler explains, based on Rao and Araujo, one of ordinary skill “would have understood and found obvious that policy enforcement” in the Rao-Araujo combination “may be based on application state (foreground, background) and power state (battery/plugged-in). Id. ¶ 80. We determine that this testimony is reasonable and credible based on the record presently before us, and is unrebutted by countervailing evidence from Patent Owner. We also determine that Petitioner has introduced sufficient evidence that one of ordinary skill would have had a reasonable expectation of success in achieving the proposed Rao-Araujo combination. This evidence includes the testimony of Dr. Butler that one of ordinary skill “would have expected success integrating a PPM and deflector components as taught by Araujo into a remote access client as taught by Rao,” that “the request deflector (Araujo) and packet capture mechanism (Rao) serve similar functions,” and that “[c]ombining such functions would have required only routine programming skill well within the skill set of” a person of ordinary skill. Ex. 1003 ¶¶ 81, 83.” slip op. at 22
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,609,544 - Samsung Electronics Co., Ltd. v. Headwater Research LLCInstitution deniedPTAB · Mar 29, 2024 · IPR2023-01462 · APJ Russell E Cass · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–26 were unpatentable, finding the asserted combinations did not teach blocking an Internet service access request.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, the Petition is denied, and no trial is instituted.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “(1) at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) three to five years of experience with networking, power consumption of networked computing devices, and/or wireless digital communications systems.” Pet. 3 (citing Ex. 1003 ¶¶ 15– 17). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Kevin Butler. Ex. 1003 ¶¶ 15–17. Patent Owner does not dispute Petitioner’s description. Prelim. Resp. 4. For purposes of this Decision, we adopt Petitioner’s description, which is consistent with the ’445 patent and the asserted prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction A claim “shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). At this stage of the proceeding, neither party presents any claim terms for construction. Pet. 2– 3; Prelim. Resp. 4. Based on the present record, we determine that it is not necessary to provide an express interpretation of any claim terms at this time. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“that its system can “classify[] and/or control[] network access requests (e.g., IP address requests).” Ex. 1001, 11:27–32 (emphasis added). In particular, the ’455 patent describes an example where “before a connection is allowed to be opened . . . it is blocked and a message is sent back to the application . . . that the network access attempt was not allowed/blocked.” Id. at 91:41– 49 (emphasis added). In contrast, the ’455 patent explains that its system also can “classify[] and/or control[] . . . network capacity/resources usage (e.g., bandwidth usage).” Id. at 11:27–32. For example, a “socket can be allowed to open but after some point in time (e.g., based on network service usage . . . ), the stream is blocked or the socket is terminated.” Id. at 91:49– 54. In other words, the ’455 patent distinguishes between 1) blocking an Internet service access request before a connection is open; and 2) blocking a network stream after a connection is open. Id. at 11:27–32, 91:41–54.” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 9,277,445 - Samsung Electronics Co., Ltd. v. Headwater Research LLCInstitution deniedPTAB · Mar 29, 2024 · IPR2023-01362 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 7–9 were unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless “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). Here, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, the Petition is denied, and no trial is instituted.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“On this record, we agree with Patent Owner. The ’184 patent states that its system can “classify[] and/or control[] network access requests (e.g., IP address requests).” Ex. 1001, 11:27–32 (emphasis added). In particular, the ’184 patent describes an example where “before a connection is allowed to be opened . . . it is blocked and a message is sent back to the application . . . that the network access attempt was not allowed/blocked.” Id. at 91:41– 49 (emphasis added). In contrast, the ’184 patent explains that its system also can “classify[] and/or control[] . . . network capacity/resources usage (e.g., bandwidth usage).” Id. at 11:27–32. For example, a “socket can be allowed to open but after some point in time (e.g., based on network service usage . . . ), the stream is blocked or the socket is terminated.” Id. at 91:49– 54. In other words, the ’184 patent distinguishes between 1) blocking an Internet service access request before a connection is open; and 2) blocking a network stream after a connection is open. Id. at 11:27–32, 91:41–54; see also id. at 106:39–43 (distinguishing between an “Internet service access request” and “network activity”).” slip op. at 7
§ 103 obviousnessPatents in suitUS 9,271,184
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.