- PTAB · Sep 21, 2022 · IPR2022-00457 · APJ Sally C Medley · IPR · Institution
The Board instituted IPR of claims 1–9, 11–19, 21, 23, 25, and 27, finding a reasonable likelihood that at least one challenged claim is obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Office during the prosecution of the ’440 patent in an IDS on November 24, 2014” and “the Examiner initialed Lahetkangas as being considered.” Prelim. Resp. 11 (citing Pet. 17; Ex. 1002, 69; Ex. 1011), 33. We agree that Lahetkangas was previously presented to the Office during prosecution of the ’440 patent. Ex. 1001, code (56); Ex. 1002, 69; see also Pet. 17 (Petitioner acknowledging that Lahetkangas was cited in an IDS). Accordingly, we determine that part one of the Advanced Bionics framework is satisfied. 3. Part Two of the Advanced Bionics Framework Patent Owner asserts that Petitioner has failed to show material error by the Examiner during prosecution. Prelim. Resp. 51. We disagree. As Petitioner points out, although the Examiner considered Lahetkangas in an IDS, Lahetkangas was not discussed in any Office Action or Response. Pet. 17–18. We find that Lahetkangas was not extensively evaluated during examination and was not the basis for a rejection. Petitioner has presented a sufficient showing that the Examiner overlooked disclosures in Lahetkangas that render obvious the challenged claims. See infra. We, therefore, agree with Petitioner that the Office erred in a manner material to the patentability of the challenged claims. Pet. 18–19.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“an assessment as to the level of ordinary skill in the art and the general knowledge of a person of ordinary skill at the time of the ’440 patent. See Pet. 3–4 (citing Ex. 1003 ¶ 70). Dr. Kakaes states that a person having ordinary skill in the art (POSITA) “would be someone who had a Master’s degree in Electrical Engineering, Applied Mathematics, Computer Science, Physics or equivalent.” Ex. 1003 ¶ 70. Citing Dr. Kakaes, Petitioner further states that the POSITA would have also had “three to five years of experience working with wireless digital communication systems” and that “[a]dditional education might compensate for less experience, and vice-versa.” Id. Patent Owner does not propose an alternative assessment. See generally Prelim. Resp. We adopt Petitioner’s definition of the level of skill for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“For purposes of this Decision, we need not expressly construe any claim term. 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)). E. Asserted Obviousness of Claims 1–7, 9, 11–17, 19, 21, 23, 25, and 27” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Claim 18 depends from claim 11 and includes a similar limitation. Petitioner provides reasons for employing Wang’s “extended or aggressive MCS table (i.e., a second MCS table).” Pet. 65–70. We have reviewed Petitioner’s showing for dependent claims 8 and 18 and find such showing sufficiently persuasive at this stage of the proceeding. Id. Patent Owner does not contest claims 8 and 18 separately. Prelim. Resp. 63–64. We conclude that, based on the totality of the arguments and evidence currently in the record, Petitioner has sufficiently shown, for purposes of institution, that Lahetkangas and Wang with or without LTE TS 36.213 teach or suggest the limitations of claims 8 and 18, and that a person of ordinary skill in the art would have had reason to combine the references in the manner Petitioner proposes. Accordingly, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that challenged claims 8 and 18 would have been obvious over Lahetkangas and Wang with or without LTE TS 36.213.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,509,440 - PTAB · Sep 7, 2022 · IPR2022-00337 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1–40 on all petitioned grounds, finding a reasonable likelihood of success on the §103 challenges, including obviousness over Bao and Feuersanger.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “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(a) (2018). 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). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–40 in the ’655 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“As also explained in our patentability analysis below, Petitioner demonstrates a reasonable likelihood of prevailing in proving the challenged claims unpatentable as obvious over Kwon. See Pet. 48–83; infra §§ IV.F.2–IV.F.4. In doing so, Petitioner demonstrates that the Examiner erred in a manner material to the patentability of challenged claims when (1) rejecting the claims only due to obviousness-type double patenting and (2) failing to appreciate that Kwon ’790/Kwon teaches the claimed subject matter. See Ex. 1002, 134–41 (rejecting the claims only due to obviousnesstype double patenting and citing Kwon ’790 without explanation), 192–99 (allowing the claims after terminal disclaimer filed); Ex. 1003 ¶¶ 304–520; infra §§ IV.F.2–IV.F.4. Because Petitioner persuasively shows on this record that Kwon teaches the claimed subject matter, we determine that Petitioner demonstrates that the Office erred in a manner material to the patentability of challenged claims. For these reasons, we decline to exercise our discretion under § 325(d) to deny institution.” slip op. at 16
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The descriptions of an ordinarily skilled artisan articulated by Petitioner and Patent Owner differ mainly in the educational level, i.e., “at least a Bachelor’s degree” according to Petitioner and “a Bachelor’s degree” according to Patent Owner. Pet. 6; Prelim. Resp. 8; see Ex. 1003 ¶ 20; Ex. 2001 ¶ 17. Based on the current record and for purposes of institution, we accept Patent Owner’s description of an ordinarily skilled artisan as consistent with the ’655 patent and the asserted prior art. If the prior art renders the claimed subject matter obvious to a person with less experience and less knowledge, then the prior art renders the claimed subject matter obvious to a person with more experience and more knowledge. See Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011).” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner “agrees with Petitioner that no claim terms require an express construction for the purposes of this proceeding.” Prelim. Resp. 9 (citing Pet. 6). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,454,655 - Triller, Inc. v. Tiktok Pte. Ltd.InstitutedPTAB · May 16, 2022 · IPR2022-00180 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds after finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“framework, with the first part being whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (addressing in a two part framework the factors presented in Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III(C)(5), first paragraph)). As we discuss below, we are not persuaded that the first part of the framework is met. Patent Owner does not argue that Abrams previously was presented to the Office. See Prelim. Resp. 7 n.3, 25 n.7. And we are not persuaded that Abrams is substantially the same art as Sittig or Reddick simply because Abrams may have one claimed feature in common with Sittig (i.e., “a generic browser”) and a different claimed feature in common with Reddick (i.e., allowing a user to edit, but not create, profiles). Id. Petitioner is relying on Abrams to teach multiple claimed features, and Patent Owner’s § 325(d) arguments address only a subset of those features. Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.108 (2021). Upon consideration of the papers, we determine that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’322 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in computer science, electrical engineering, or an equivalent discipline, or equivalent experience, including familiarity with multitasking and multithreading, wireless communications and client/server computing, and, in addition, familiarity with digital music distribution and DRM.” Ex. 1025 ¶ 62; Pet. 35. Patent Owner submits that one of ordinary skill in the art would have had “a Bachelor’s degree in Computer Science, Computer Engineering, Human Factors, or an equivalent degree and at least two years of experience working in the fields of user interfaces, communications applications, networking applications, or media applications, or a person with equivalent education, work, or experience in such fields.” Prelim. Resp. 2. The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find in applying either parties’ definition for what comprises the level of ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of the challenged claims. At this stage of the proceeding, however, we adopt Petitioner’s proposed definition as it is supported by expert testimony, and Patent Owner’s is not. slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownOther
“Petitioner does not identify any specific claim term for construction. Pet. 5. Patent Owner submits that the claim term “software application” is defined in the Specification of the ’322 patent. Prelim. Resp. 3. More specifically, Patent Owner submits that the “Definitions” section of the Specification provides the following: “Software Application: The Client software application which is to be delivered over-the-air to, or pre-installed on, the Wireless Computing Device.” See id. (quoting Ex. 1002, 8:63–65). We note that the definition for software application incorporates, based on the capitalization of defined words, the following additional definitions10 from the “Definitions” section of the Specification:” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,992,322 - Triller, Inc. v. Tiktok Pte. Ltd.InstitutedPTAB · May 16, 2022 · IPR2022-00179 · APJ John D Hamann · IPR · Institution
The Board instituted inter partes review of claims 1–3, 6, 22, 26, 27, and 31 on all asserted grounds, finding a reasonable likelihood of unpatentability based on the petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.108 (2021). Upon consideration of the papers, we determine that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’132 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under § 325(d), we use a two-part framework, with the first part being whether the same or substantially the 4 US 2006/0008256 A1, published Jan. 12, 2006 (Ex. 1011, “Khedouri”). 5 US 8,572,169 B2, issued Oct. 29, 2013 (Ex. 1010, “Partovi”). 6 US 2010/0031366 A1, published Feb. 4, 2010 (Ex. 1012, “Knight”). substantially the same arguments previously were presented to the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (addressing in a two part framework the factors presented in Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III(C)(5), first paragraph)). As we discuss below, we are not persuaded that the first part of the framework is met. Patent Owner does not argue that Abrams previously was presented to the Office. See Prelim. Resp. 7 n.3, 26 n.7. And we are not persuaded that Abrams is substantially the same art as Sittig or Reddick simply because Abrams may have one claimed feature in common with Sittig (i.e., “a generic browser”) and a different claimed feature in common with Reddick (i.e., allowing a user to edit, but not create, profiles). Id. Petitioner is relying on Abrams to teach multiple claimed features, and Patent Owner’s § 325(d) arguments address only a subset of those features. Id. Moreover, as we discuss below, we disagree with Patent Owner that Sittig employing a browser was a reason that particular rejection was overcome. See infra Section IV (addressing Applicant’s remarks to a rejection). Rather, the rejection was overcome for failing to teach a limitation (i.e., that a software application allowed a user, over a wireless connection, to create a user account) that Abrams teaches. See id.; infra Section VI(B)(3) (applying Abrams). Nor do we agree with Patent Owner that Abrams (unlike Reddick) fails to teach allowing a user to create an account. See infra Section VI(B)(3) (applying Abrams). substantially the same arguments previously were presented to the Office. See Prelim. Resp. 7 n.3, 26 n.7. In light of the above, we find that the first part of the Advanced Bionics framework is not met, and thus, we do not proceed to the second part. See Advanced Bionics, Paper 6 at 10. Accordingly, we decline to exercise discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find in applying either parties’ definition for what comprises the level of ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of the challenged claims. At this stage of the proceeding, however, we adopt Petitioner’s proposed definition as it is supported by expert testimony, and Patent Owner’s is not. During trial, and in accordance with our Rules, the parties should address what substantive effect, if any, different proposed definitions for the level of ordinary skill in the art have on analyzing what the prior art teaches or in otherwise evaluating unpatentability of the challenged claims.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Pet. 4. Patent Owner submits that the claim term “software application” is defined in the Specification of the ’132 patent. Prelim. Resp. 3. More specifically, Patent Owner submits that the “Definitions” section of the Specification provides the following: “Software Application: The Client software application which is to be delivered over-the-air to, or pre-installed on, the Wireless Computing Device.” See id. (quoting Ex. 1001, 8:61–63). We note that the definition for software application incorporates, based on the capitalization of defined words, the following additional definitions7 from the “Definitions” section of the Specification: (i) “Client: A computing device connected to a network delivering the features and functions of a network-centric application to the user or consumer of the application”; (ii) “Wireless Computing Device: A type of Client which connects to the network via a Wireless Network”; and (iii) “Wireless Network: A network which provides wireless” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,648,132 - Micron Technology, Inc. v. Vervain, LLCInstitutedPTAB · Apr 11, 2022 · IPR2021-01550 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–12, finding a reasonable likelihood that claims 1–9, 11, and 12 are obvious over Dusija and claim 10 over Dusija and Sutardja.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“2023. Ex. 1035, 3. The projected statutory deadline for a final written decision in this case is in April 2023. Because the trial date in the District Court Litigation is only a few months before the projected statutory deadline for a final written decision in this case, we determine that the second Fintiv factor slightly favors exercising our discretion to deny institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived, even if they were presented in the Preliminary Response.” slip op. at 2
- 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) (quotation omitted). in the technology field of the 300 patent would be a person with at least a Bachelor of Science degree in electrical engineering, computer engineering, or a closely related field, along with at least 3–5 years of experience in the design of non-volatile memory devices. An individual with an advanced degree in a relevant field would require less experience in the design of non-volatile memory devices. Pet. 31. Patent Owner’s declarant Dr. Sunil Khatri provides the same description of a person of ordinary skill in the art. Ex. 2001 ¶ 22; see also id. ¶ 23 (noting agreement with Petitioner’s declarant on this definition). We adopt Petitioner’s description for purposes of this Decision, except that we delete the qualifier “at least” to prevent the description from extending beyond the level of ordinary skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“after November 13, 2018, a patent 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) (as amended Oct. 11, 2018).2 This rule adopts the same claim construction standard used by Article III federal courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including 2 See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (final rule). constructions for the phrases “data integrity test,” “comparing the stored data to the retained data,” and the term “periodically.” Pet. 23–28. Patent Owner argues that each phrase should have its plain and ordinary meaning. Prelim. Resp. 17–23. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,950,300 - Micron Technology, Inc. v. Vervain, LLCInstitutedPTAB · Apr 8, 2022 · IPR2021-01547 · APJ Sally C Medley · IPR · Institution
The Board instituted IPR of claims 1–5, 8, 9, and 11 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review of claims 1–5, 8, 9, and 11 of U.S. Patent No. 8,891,298 B2 (Ex. 1001, “the ’298 patent”). Paper 1 (“Pet.”). Vervain, LLC (“Patent Owner”) filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “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). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’298 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–5, 8, 9, and 11 of the ’298 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“For the above reasons, this factor weighs against exercising discretion to deny institution. In particular, in considering this factor, we find that the substantial work that remains on invalidity issues in the parallel district court litigation (Ex. 1035, 2–3) and Petitioner’s expeditious filing of its Petition substantially outweigh any minimal investment so far. D.” slip op. at 38
- Skill levelSkill level petitioner adoptedOther
“Relying on the testimony of Dr. David Liu, Petitioner offers an assessment as to the level of ordinary skill in the art and the general knowledge of a person of ordinary skill at the time of the ’298 patent. See Pet. 27 (citing Ex. 1009 ¶ 37). Dr. Liu states that a person having ordinary skill in the art “would have had at least a Bachelor of Science degree in electrical engineering, computer engineering, or a closely related field, along with at least 3–5 years of experience in the design of non-volatile memory devices.” Ex. 1009 ¶ 37. Patent Owner does not propose an alternative assessment, but rather notes that “[f]or purposes of this preliminary response only, Patent Owner has used Petitioner’s definition of a POSA.” Prelim. Resp. 12 n.2. We adopt Petitioner’s definition of the level of skill for purposes of this Decision, except that we delete the phrase “at least” to avoid including ambiguity in the definition of the level of skill.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we need not expressly construe any claim term. 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 in the context of an inter partes review). D. Asserted Obviousness of Claims 1–5 and 11 over Dusija and Sutardja” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,891,298 - PTAB · Dec 22, 2021 · IPR2021-01055 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR of claims 1–5 and 9–19 on five § 103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’766 Patent. Accordingly, we institute an inter partes review of claims 1–5 and 9–19 of the ’766 Patent on the grounds of unpatentability raised in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“For a reference to qualify as a printed publication, “before the critical date the reference must have been sufficiently accessible to the public interested in the art.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988). “When there is an established publisher there is a presumption of public accessibility as of the publication date.” VidStream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020); see also Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential) (determining that, based on the totality of the evidence, a reference bearing a copyright date, a printing date, and an ISBN date all earlier than the critical date of the challenged patent, and the reference was a “textbook from an established publisher” provided sufficient indicia at the institution state).” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“configuration error” With respect to the limitation “configuration error,” Patent Owner asserts that configuration error means “either (1) the condition that occurs when ‘a rule or series of rules is not properly defined and produces an undesired effect’ or (2) ‘a series of improperly defined rules causes a part to be in more than one state at the same time.’” Prelim. Resp. 10 (citing Ex. 1001, 1:54–61; Ex. 2001 ¶ 40). At this stage of the proceeding, we find that Patent Owner’s proposed construction is supported by the ’766 Patent specification, and adopt Patent Owner’s proposed meaning of “configuration error,” with the following remarks with respect to Patent Owner’s additional arguments regarding the claim construction. Patent Owner, however, also argues that “the specification concerns errors internal to the configuration engine and not ‘errors’ that prevent product configurator users from making their desired but impermissible selections.” Prelim. Resp. 10. We do not agree with Patent Owner’s argument because the first part of the construction, namely rules not being properly defined and “produc[ing] an undesired effect,” does not specify anything about an error being “internal” to the configuration engine. The specification provides that such a configuration error “may occur when a rule or series of rules is not properly defined and produces an undesired effect, such as the exclusion of a part that should be selectable” (Ex. 1001, 1:54–61, emphasis added), but the latter clause provides only one example of the undesired effect. We are not persuaded, based on our review of the Specification of the ’766 Patent that “an undesired effect” should be limited to the exclusion of a part. Thus, although Patent Owner argues that “a configuration error is not a condition that occurs when a user attempts to make a choice that is prohibited by a rule” (Prelim. Resp. 11 (citing Ex. 2001 ¶ 43)), at this juncture, we are not persuaded that such a condition would not be an undesired effect, according to the adopted construction. Therefore, we do not further limit the construction of “configuration error.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS Level of Ordinary Skill in the Art Petitioner, supported by Dr. Wood’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “a Bachelor’s degree in Computer Science, Computer or Electrical Engineering, Engineering Science, an engineering major with a significant computational component, or a similar discipline, or with at least two years of research or experience in configurable systems including testing.” Pet. 8 (citing Ex. 1003 ¶¶ 53–55). Patent Owner argues that “[t]here may be some differences between this and the correct level of skill in the art but those differences will not affect this case at this stage,” such that Patent Owner applies the proposed level of skill in the art without agreeing to it. Prelim. Resp. 10 (citing Ex. 2001 ¶¶ 35–37). At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,836,766
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.