- PTAB · Oct 2, 2023 · IPR2023-00626 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 1, 3–8, 14, 15, and 18 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We do not agree with Patent Owner that there is substantial overlap between the Petitioner’s grounds and the issues in the Ecobee litigation. First, although claim 1 is challenged here and in the Ecobee litigation, the dependent claims challenged here are not at issue in the Ecobee litigation. Second, Kates-711 is not asserted in the Ecobee litigation. Ex. 2005, 34, 323–337. We acknowledge that Petitioner admits that Kates-711 and Kates- 505 share much of the same disclosure. Pet. 64–68. Importantly, however, although Kates-505 is asserted in the district court, none of the secondary references asserted here in combination with Kates-505 or Kates-711, e.g., Hitt, Littrell, and Mueller, are asserted in the Ecobee litigation. Ex. 2005, 34, 323–337. We find that there is minimal overlap between the issues raised in this proceeding and the issues in the Ecobee litigation due to the differing claims challenged in this proceeding as well as the differences in the prior art references asserted by Petitioner as discussed above. Patent Owner relies, inter alia, on the Board’s decision in Fitbit, Inc. v. Philips North America, LLC, IPR2020-00828, Paper 13 (PTAB Nov. 13, 2020) to support its contention that “the Board routinely denies institution under Fintiv, even where the petitioner in not involved in the district court litigation.” Prelim. Resp. 9. We note that Fitbit is not a precedential decision but more importantly, in that case, the Board found “that there is likely to be substantial overlap between the issues raised in the Petition” and in a district court proceeding that did not involve the petitioner. Fitbit, Paper 13 at 15. Consequently, we find that this factor weighs heavily in favor of not exercising our discretion to deny institution.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had a minimum of a bachelor’s degree in electrical engineering, or a related field, along with at least two years of professional experience in sensors, controls, and/or wireless communications.” Pet. 13–14 (citing Ex. 1002 ¶ 43–47). Petitioner further contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner does not address the level of ordinary skill in the art. See Prelim. Resp. 8 No evidence of secondary considerations has been presented at this stage of the proceeding. For the purposes of this Decision, we apply Petitioner’s proposed level of skill in the art because it appears consistent with the problems addressed in the ‘887 patent and the prior art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner contends that “[a]ll claim terms should be construed according to their plain and ordinary meaning as would have been understood by a [person of ordinary skill in the art] in view of the specification.” Pet. 14 (citing Ex. 1002 ¶ 48). Patent Owner does not address claim construction in the Preliminary Response. After review of the present record, we determine that no claim term requires express construction for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, the Preliminary Response, the Preliminary Reply, and Preliminary Sur-reply, as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in showing at least one claim of the ’887 patent is unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ‘887 patent on all grounds stated in the Petition.” slip op. at 2
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,746,887 - PTAB · Oct 2, 2023 · IPR2023-00624 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 1–5, 7–11, 13–16, and 20–21 on all petition grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential). The following factors inform our assessment of “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1) whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2) proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3) investment in the parallel proceeding by the court and the parties; 4) overlap of issues raised in the petition and in the parallel proceeding; 5) whether the petitioner and the defendant in the parallel proceeding are the same party; and 6) other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential). When considering these factors, we “[t]ake a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had a minimum of a bachelor’s degree in electrical engineering, or a related field, along with at least two years of professional experience in sensors, controls, and/or wireless communications.” Pet. 10–11 (citing Ex. 1002 ¶¶ 45–49). Petitioner further contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“After review of the present record, we determine that no claim term requires express construction for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,224,282 - PTAB · Jul 19, 2023 · IPR2023-00385 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted IPR of claims 1–7 on all asserted grounds, finding a reasonable likelihood that Oracle would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the Petition and the Preliminary Response, we determine that Petitioner has satisfied this threshold requirement, and therefore we institute inter partes review of claims 1–7 of the ’421 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“at least a Bachelor’s Degree in computer science, electrical engineering, or a related subject, and two years of experience working with augmented reality, portable electronic devices, mobile computing, databases, computer networks, or related technologies. A more advanced degree can substitute for work experience. This POSITA would be aware of and generally knowledgeable about the structure and operation of augmented reality devices as well as different databases and computer networks. Paradiso Decl., ¶¶ 40–43.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner “submit[s] that the terms of the 421 Patent’s claims do not require further construction and can be afforded their plain and ordinary meaning.” Pet. 14–15 (citing Paradiso Decl. ¶ 78). Petitioner submits that the Petition’s “sections comparing the claims to the prior art include further” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“have displayed Ivey’s parking-space-payment information on a real-time camera view, as taught by Matsumoto, to “more efficiently streamline parking enforcement.” Pet. 47–48. Regarding the modified Ivey with Tillotson, Petitioner asserts: A POSITA would have recognized that adapting Ivey in view of Tillotson’s teachings would have been advantageous to both Ivey and Matsumoto and would make the parking management system more efficient and easier to use—a result that would have been highly desirable to a POSITA during the relevant time period, particularly in settings with high usage or limited resources. Id. at 48. Petitioner supports these contentions with Dr. Paradiso’s testimony. Id. at 47–48 (citing Ex. 1003 ¶¶ 279–282). At this stage of the proceeding, and based on the current record, Petitioner’s articulated reasons to combine Ivey, Matsumoto, and Tillotson are supported by rational underpinning.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,438,421 - Hunter’S Manufacturing Company, Inc. D/B/A Tenpoint Crossbow Technologies v. Ravin Crossbows, LLCInstitutedPTAB · Jul 10, 2023 · IPR2023-00407 · APJ Robert J Silverman · IPR · Institution
The Board instituted IPR on claim 1 on all asserted grounds because Grounds 7 and 8 met the reasonable-likelihood threshold.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/ default/files/documents/interim_proc_discretionary_denials_aia_parallel_dis trict_court_litigation_memo_20220621_.pdf (“Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”)). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. In this proceeding, Petitioner offers a stipulation employing language nearly identical to that prescribed in the Interim Procedure: “Petitioner hereby stipulates that it will not pursue in the parallel district court proceeding the same grounds as in this Petition or any grounds that could have reasonably been raised as to claim 1 in this Petition.” Pet. 6–7.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Interpretation In an inter partes review, we construe claims using the same standard applied in a district court. See 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“’015 Patent pertains “would be a technical person who has at least some experience working in the field of archery, reviewing crossbows or engineering related to bows and/or crossbows, and is generally familiar with prior art crossbows” and “would likely have at least a bachelor’s degree in mechanical engineering or, alternatively, would have several years of experience in the field of archery or engineering related to bows and/or crossbows.” Pet. 28 (citing Ex. 1016 ¶ 17). Patent Owner states: “Solely for purposes of this Preliminary Response, Patent Owner does not dispute Petitioner’s proposed qualifications of a person of ordinary skill in the art (‘POSA’).” Prelim. Resp. 2. For the purposes of the present Decision, we adopt Petitioner’s description of a person of ordinary skill in the art pertinent to the ’015 Patent. E.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The Federal Circuit has explained that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden, Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Petitioner relies upon a portion of KSR in which the Supreme Court stated: When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSR, 550 U.S. at 421. Yet, in the analysis of Ground 2, Petitioner does not address the predicate factual determinations that the Supreme Court identifies — e.g., that there would have been “a design need or market pressure,” that there were “identified” and “predictable” solutions. Id. Therefore, based upon the present record, and for the purposes of the present Decision, Petitioner does not provide a sufficient reason for modifying Stanziale ’302, in order satisfy the identified limitation of claim 1. F.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,354,015
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.