• Tommy John, Inc. v. Pakage Apparel, Inc.Instituted
  PTAB · Jan 8, 2025 · IPR2024-01163 · APJ Robert J Silverman · IPR · Institution

  The Board instituted IPR of claims 1–13, 15, and 16 on all asserted 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

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition and the Preliminary Response (including any authorized submissions) “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.”” slip op. at 5

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

    “demonstrate any motivation to combine Kitsch and Brocks, other than they are both underwear” (Prelim. Resp. 23), we note that Petitioner articulates various reasons for combining the teachings of Kitsch with Brocks’ technique for shirring and gathering fabric with an elastic material, supported by Ms. Wagner’s testimony. See Pet. 25–27 (citing, inter alia, Ex. 1005, ¶¶ 68–72). Patent Owner does not address any of Petitioner’s stated reasons for combining Kitsch and Brocks. Moreover, whether a person of ordinary skill in the art would have had a reason to combine/modify the identified references’ teachings is “a question of fact.” WBIP, 829 F.3d at 1327. Petitioner’s argument is supported by the unrebutted testimony of Ms. Wagner, whereas Patent Owner’s contrary position amounts to attorney argument, which does not persuade us, in this instance, that there is not at least a reasonable likelihood that Petitioner would prevail at trial, based on the record before us. At this stage of the proceeding, Patent Owner provides no sufficient evidence to rebut Ms. Wagner’s testimony as to what a POSITA would have understood, based upon Kitsch and Brocks, and as to the alleged motivations to combine Kitsch and Brocks, as provided in Ground 1.” slip op. at 17

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “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 “stipulates that if the Board institutes, it will not pursue in the related district court case ‘any ground that [Petitioner] raised or reasonably could have raised’ during this proceeding.” Prelim. Reply. 5 (quoting Sotera 18–19). In view of Petitioner’s stipulation, which quotes Sotera and accords with the Interim Procedure, we decline to deny institution under Fintiv.” slip op. at 23

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “(1) 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; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 25

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,834,974
• Sonos, Inc. v. Google LLCSome claims unpatentable
  PTAB · Nov 1, 2024 · IPR2023-00806 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–3, 5, 9–12, and 15–18 are unpatentable as obvious over either Roberts and Asokan or Suumäki; claims 6–8 and 19 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, supported by Dr. Schmidt’s testimony, has proposed that a person of ordinary skill in the art at the time of the invention “would have had a degree in computer engineering, computer science, or a similar discipline, along with 2 years of professional experience in the fields of networking and network-based systems or applications, or an equivalent level of skill, knowledge, and experience,” and would have been “aware of and generally knowledgeable about how devices were provisioned onto wireless networks, along with standards applicable to well-known methods for communication such as Wi-Fi, Bluetooth, and NFC available at the time the ’615 patent was filed.” Pet. 18 (citing Ex. 1003 ¶¶ 37–39). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. See generally PO Resp.; PO Sur-reply. 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 8

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

    “In the Institution Decision, we considered the assertions of Petitioner that the terms of the ’615 patent’s claims do not require further construction and can be afforded their plain and ordinary meaning. Dec. to Inst. 7 (citing Pet. 14; Ex. 1003 ¶¶ 79–82). Patent Owner also does not assert any express constructions. See generally PO Resp.; PO Sur-reply. Given the lack of controversy, we need not explicitly adopt or discuss any explicit constructions in this decision. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 9

  • BurdenMixed

    “that the section of the Petition discussing claim 6 does not discuss the combination of embodiments; it merely asserts what would have been obvious in the context of the cited embodiment. See Pet. 36–37. See, e.g., In re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017), headnote 4, “Whether a rejection of a patent claim for obviousness is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” See also, Intuit Inc. v. Samesurf, Inc., No. IPR2023-00342, 2024 WL 3165359, at *31 (P.T.A.B. June 25, 2024) (Distinguishing Stephan for simultaneous actions). Claim 6 depends on claim 1, and any discussion of claim 6, explaining its obviousness, must consider the obviousness case for the independent claim in its analysis. Petitioner’s observation that Roberts is agnostic as to how network configuration information is conveyed does not relieve Petitioner of the requirement of making that case in the Petition. See 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4).” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “We agree with Patent Owner’s argument. Although Petitioner is correct that Roberts discloses different embodiments for conveying configuration information, those embodiments are distinct. See Ex. 1004, that the section of the Petition discussing claim 6 does not discuss the combination of embodiments; it merely asserts what would have been obvious in the context of the cited embodiment. See Pet. 36–37. See, e.g., In re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017), headnote 4, “Whether a rejection of a patent claim for obviousness is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” See also, Intuit Inc. v. Samesurf, Inc., No. IPR2023-00342, 2024 WL 3165359, at *31 (P.T.A.B. June 25, 2024) (Distinguishing Stephan for simultaneous actions). Claim 6 depends on claim 1, and any discussion of claim 6, explaining its obviousness, must consider the obviousness case for the independent claim in its analysis. Petitioner’s observation that Roberts is agnostic as to how network configuration information is conveyed does not relieve Petitioner of the requirement of making that case in the Petition. See 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4).” slip op. at 20

  Patent outcomesUS 11,050,615 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,050,615
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Chien-Min SungInstituted
  PTAB · Sep 18, 2024 · IPR2024-00533 · APJ Frances L Ippolito · IPR · Institution

  The Board instituted IPR of claims 1–8 on all petitioned grounds, finding a reasonable likelihood that Samsung would prevail on at least one claim.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto 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 arguments presented, we conclude that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–8 of the ’270 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review as to these claims of the ’270 patent.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “We determine a stay exists and the likelihood of a future or continuing stay is reasonably high. Thus, Fintiv factor 1 weighs against exercising our discretion to deny institution.” slip op. at 37

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “start, we agree with Petitioner that Chou is analogous art. The title of the ’270 patent is “CMP Pad Dresser Leveled Tips and Associated Methods.” The Specification discloses CMP which includes the use of a polishing pad in combination with an abrasive slurry for the manufacture of silicon wafers (Ex. 1001, 1:17–26) and discloses further that “while the above disclosure refers primarily to CMP pad dressers, other precision grinding and/or abrading tools are considered to be within the present scope.” Ex. 1001, 17:8–12. Chou discloses “[t]he present invention relates to a grinding tool” for use in “ultra-precision machining technologies,” for example, grinding and polishing wafers. Ex. 1004 ¶¶ 1–2, 4. Thus, it is clear that the claimed invention and Chou are in the same field of precision grinding and/or abrading tools.” slip op. at 15

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

    “explains sufficiently, for the purposes of institution, that a “POSITA would have been motivated to combine references that recognize benefits of having leveled height of abrasive particles.” Pet. 34–35 (citing Ex. 1004 ¶ 17; Ex. 1005 ¶¶ 3, 66–67, 72; Ex. 1002 ¶¶ 119–120). Patent Owner contends that Petitioner has not explained how Chou combined with Sung ’479 would lead to the benefits of a leveled height of abrasive particles. Prelim. Resp. 35. Yet, Sung ’479 expressly teaches specific parameters for the tip height level of superabrasive particles that provide improved machining, which Petitioner and Dr. Shanfield explain Chou does not expressly disclose. Ex. 1005 ¶¶ 66–67, 69, 72; see Ex. 1002 ¶¶ 119–120. Thus, the disclosures in Chou and Sung ’479, and Dr. Shanfield’s testimony support Petitioner’s position that a “POSITA would have considered leveling the height of the superabrasive particles to the level taught by the prior art references, such as a tip-to-tip variation that is less than about 2 microns.” Pet. 35.” slip op. at 21

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,974,270
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Chien-Min SungInstituted
  PTAB · Sep 18, 2024 · IPR2024-00534 · APJ Barry L Grossman · IPR · Institution

  The Board instituted IPR of claims 1–20 on all grounds, finding a reasonable likelihood that Samsung would prevail on at least claim 1 based on Sung ’026.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “When determining whether to exercise discretion to deny institution in view of a parallel district court proceeding, we consider the following six factors: 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 between 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, 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). These factors relate to “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.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id. at 6.” slip op. at 11

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

    “(vi) Conclusion as to Claim 1 Based on the present record, we conclude Petitioner has provided sufficient argument and evidence in relation to the proposed anticipation and obviousness of claim 1 based on Sung ’026, to demonstrate a reasonable likelihood that Petitioner would prevail with respect to this challenge at trial.” slip op. at 45

  • Skill levelSkill level board ownPetitioner expert discountedDecided for patent owner

    “We give Petitioner’s conclusory argument and Dr. Shanfield’s conclusory testimony minimal probative weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, at 15–17 (PTAB Aug. 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it “is conclusory and unsupported, [and] adds little to the conclusory assertion for which it is offered to support”); 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.”).” slip op. at 29

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

    “Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citations omitted)). We determine that a specific construction of the claims is not necessary to reach a decision in this Petition to institute an inter partes review of the challenged claims. Any claim discussion in this Decision does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that final claim construction, in general, is an issue to be addressed at trial. Claim construction will be determined at the close of all the evidence and after any hearing. The parties are expected to assert all their claim construction arguments and evidence in the Petition, Patent Owner’s Response, or otherwise during trial, as permitted by our rules.” slip op. at 31

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,138,862
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentable
  PTAB · Aug 13, 2024 · IPR2022-01006 · APJ Barry L Grossman · IPR · Remand

  The Board revised the construction of “biometric signal” on remand, then held that Petitioner did not prove claims 1–17 unpatentable under the asserted obviousness grounds.

  RulingsRemand decision

  • RemandOther

    “vacated following review by the Director and remanded to us: (1) for additional briefing by the parties on the construction of the claim term “biometric signal;” and (2) our further consideration of the construction of this claim term. Paper 49 (“Director’s Decision” or “Dir. Dec.”).” slip op. at 2

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

    “Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric” slip op. at 2

  • Skill levelSkill level board ownDecided for petitioner

    “(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 9 (citing Ex. 1005 ¶ 30). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 30. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 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.”).” slip op. at 56

  • Expert testimonyPetitioner expert discountedOther

    “(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 9 (citing Ex. 1005 ¶ 30). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 30. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 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.”).” slip op. at 56

  Patent outcomesUS 9,665,705 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,665,705
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentable
  PTAB · Aug 13, 2024 · IPR2022-01089 · APJ Barry L Grossman · IPR · Remand

  On remand, the Board held claims 1–13 not shown unpatentable because the cited combinations did not teach or suggest limitations D(1), D(2), and D(3).

  RulingsRemand decision

  • RemandOther

    “Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric” slip op. at 2

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Sturgell, 553 U.S. at 894–95 to determine whether Apple is a privy of Petitioner. After doing so, we reach the conclusion that there is no persuasive evidence that Apple is a privy of Petitioner because:” slip op. at 50

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The Graham analysis includes a factual determination of the level of ordinary skill in the art. Without that information, a court, or this Board, cannot properly assess obviousness “because the critical question is whether a claimed invention would have been obvious at the time it was made to one with ordinary skill in the art.” Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Thus, the level of skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). “This reference point prevents . . . factfinders from using their own insight or, worse yet, hindsight, to gauge obviousness.” Id. Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a level of ordinary skill, we also may look to the prior art, which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355. Additionally, the Supreme Court informs us that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Petitioner states “[a] person having ordinary skill in the art” slip op. at 55

  • Expert testimonyPetitioner expert discountedOther

    “access-control.” Pet. 8 (citing Ex. 1005 ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 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.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 57

  Patent outcomesUS 9,269,208 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,269,208
• Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentable
  PTAB · Aug 13, 2024 · IPR2022-01045 · APJ Barry L Grossman · IPR · Remand

  The Board revised “biometric signal” to include physical or behavioral attributes and held claims 1–13 not shown unpatentable under the asserted obviousness grounds.

  RulingsRemand decision

  • RemandOther

    “Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric 2 We cite to the record in IPR2022-01045, unless a specific citation to each Petition is required for clarity. Similar documents, generally having the identical exhibit or “Paper” number, were filed in each of the two proceedings to which this Decision applies. signal, as disclosed and claimed in the ’705 patent, is limited only to physical attributes and thus excludes behavioral attributes. The revised claim construction deletes the functional phrase “that provides secure access to a controlled item” in our original claim construction. Paper 42, 70. This functional phrase is unnecessary, and in fact, is redundant of language already in the challenged claims. The Director’s Decision also noted that “[n]either party’s proposed construction includes a requirement of ‘provid[ing] secure access to a controlled item.’” Dir. Dec. 6.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric 2 We cite to the record in IPR2022-01045, unless a specific citation to each Petition is required for clarity. Similar documents, generally having the identical exhibit or “Paper” number, were filed in each of the two proceedings to which this Decision applies. signal, as disclosed and claimed in the ’705 patent, is limited only to physical attributes and thus excludes behavioral attributes. The revised claim construction deletes the functional phrase “that provides secure access to a controlled item” in our original claim construction. Paper 42, 70. This functional phrase is unnecessary, and in fact, is redundant of language already in the challenged claims. The Director’s Decision also noted that “[n]either party’s proposed construction includes a requirement of ‘provid[ing] secure access to a controlled item.’” Dir. Dec. 6.” slip op. at 2

  • Skill levelSkill level board ownOther
  • Expert testimonyPetitioner expert discountedOther

    “access-control.” Pet. 8 (citing Ex. 1005 ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 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.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 57

  Patent outcomesUS 9,269,208 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,269,208
• Global Shade Corporation v. With-U E-Commerce (Shanghai) Co., Ltd.All claims unpatentable
  PTAB · Aug 7, 2024 · IPR2023-00580 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1, 2, 4, 13, and 14 are unpatentable under § 103; proposed substitute claims 15–19 are unpatentable over Rousselle, Tsai, Ohnishi, Hoober, and Seo, so the revised motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 11

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

    “Petitioner asserts construction is unnecessary and does not propose any term for construction. Pet. 7 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Patent Owner does not propose any specific claim construction for any term of the challenged claims. PO Resp. 14. On the full record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe 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 12

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

    “points to any teaching, suggestion, or motivation in either reference” to replace Tsai’s leg locks with Rousselle’s central lock. PO Resp. 44 (citing Pet. 36; Ex. 1002 ¶ 103). Petitioner disagrees, arguing that the Petition cites “voluminous disclosure” from Rousselle identifying the benefits of a central lock. Reply 18 (citing Pet. 35). We agree with Petitioner. The Petition provides several rationales, supported by Dr. Stein’s testimony, for making the alternative modification. Pet. 35–37. For instance, Petitioner argues that one of ordinary skill in the art would have been motivated to make this modification because Rousselle discloses the benefits of a central lock over Tsai’s individual leg locking system, such as making the canopy easier and more convenient for a single user to operate. Id. at 35–36 (citing Ex. 1002 ¶¶ 102–103; Ex. 1003, 3:38–47; Ex. 1005, 4:29–5:5, 8:5–33, Figs. 1, 2, 18, 19). Petitioner also argues that the proposed modification is the simple addition of one known element to another known element to obtain predictable results and uses a known technique to improve a similar device and yield predictable results. Id. at 36–37 (citing Ex. 1002 ¶¶ 105–107; KSR, 550 U.S. at 417). We have reviewed Petitioner’s arguments and evidence and find the reasons to combine persuasive. In sum, we determine that Petitioner’s proposed reasons to combine Rousselle and Tsai in accordance with the alternative modification are realistic, have rational underpinning, and are supported by expert testimony, which we find persuasive and credit. Thus, Petitioner’s evidence shows that a skilled artisan would have had reasons to combine the teachings of in doing so. slip op. at 32

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

    “We agree with Petitioner that Tsai’s disclosure of pulling the poles or legs apart to unfold the frame does not disparage central activation to the extent of discouraging one of ordinary skill in the art from investigating or considering Rousselle’s central lock in connection with Tsai’s shelter frame. See DePuy Spine, 567 F.3d at 1327 (holding a reference does not teach away “if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the manually pulling the four poles 1 outwardly.” Ex. 1005, 10:28–29 (emphasis added). As such, Tsai “merely expresses a general preference” for this technique (see DePuy Spine, 567 F.3d at 1327) and does not specifically require it. We agree with Petitioner that Tsai’s general preference for this technique does not teach away from any other method for unfolding the frame. Furthermore, Tsai’s statement that the shelter frame of Figures 16 and 17 is “somewhat difficult to unfold in that an extra person is sometimes needed to push the center strut C upwardly to its completely extended position” (Ex. 1005, 2:19–22) does not disparage all other center lock configurations, in particular the configuration taught by Rousselle. As Petitioner points out, Rousselle discloses that its collapsible shelter/tent with the central lock arrangement can be erected by a single person. Ex. 1003, 13:59–65. So, instead of requiring “an extra person,” the shelter frame of the combination of Tsai and Rousselle could be erected by a single person. Similarly, Tsai’s statement that the shelter frame of Figures 16 and 17 reduces headroom in the tent (Ex. 1005, 2:17–19) does not disparage all other center lock configurations. We agree with Petitioner that the inner units of both Rousselle and Tsai’s Figure 1 embodiment are different than the inner units shown in Figures 16 and 17, which are large scissors-type linkages located well below the canopy’s roof supported by center strut C. See Reply 11. In contrast, Rousselle discloses shelter/tent 10 in which collapsible frame 100 supports sheet-material cover 200. Ex. 1003, 6:30–32; Fig. 1(A). Unlike the shelter frame of Tsai’s Figures 16 and 17, Rousselle’s frame does not include an upwardly extending center strut propping up the sheet-material cover. Instead, sheet-material cover 200 rests directly on frame in which canopy supporting rods 3 (i.e., the “inner units”) form a canopy support for supporting the canopy material. Ex. 1005, 4:11–25, 7:15–20. Accordingly, neither Rousselle’s or Tsai’s frames present the headroom issue that Tsai identifies with respect to the prior art shelter frame of Figures 16 and 17.” slip op. at 27

  Patent outcomesUS 10,669,738 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,669,738
• Lumi Legend Corporation v. Manehu Product Alliance, LLCInstituted
  PTAB · Aug 5, 2024 · PGR2024-00014 · APJ Barry L Grossman · PGR · Institution

  Instituted PGR on claims 33–36 on all asserted grounds; the Board found it more likely than not that at least one claim would be unpatentable over Clary and Tsuji.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 324(a) (2018); 37 C.F.R. § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute post-grant review on all challenged claims on all asserted grounds. See 37 C.F.R. § 42.208(a) (“When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, electrical engineering, or similar technical degree and at least 2 years of experience in the field of mechanical design or relevant product design experience.” Pet. 27 (citing Ex. 1003 ¶¶ 56–58). Petitioner also asserts that “[f]or individuals with different educational backgrounds, a person could still be of ordinary skill in the art provided that person’s additional experience compensates for any differences in that person’s education as stated above.” Id. At this stage of the proceeding, Patent Owner does not dispute Petitioner’s level of ordinary skill in the art, but “reserves the right to propose or challenge the level of ordinary skill and claim constructions should the Board institute trial.” Prelim. Resp. 21. Based on the record before us, we adopt, for purposes of this Decision, Petitioner’s proposed, and unopposed, level of ordinary skill. We also determine that this level of skill is consistent with the disclosed invention and the cited references.” slip op. at 16

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

    “Having considered the parties’ positions and evidence of record, we determine that no express construction of any claim term is necessary to determine whether to institute post-grant review. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability. Any claim discussion in this Decision does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that final claim construction, in general, is an issue to be addressed at trial. Claim construction will be determined at the close of all the evidence and after any hearing. The parties are expected to assert all their claim construction arguments and evidence in the Petition,” slip op. at 17

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

    “As to why a person of ordinary skill would have modified Clary based on Tsuji, Petitioner asserts “rotatably coupling the actuator assembly directly to a linkage arm instead of a bracket or other intervening part would have been a mere design choice from a finite number of options.” Pet. 98 (citing Ex. 1003 ¶ 142). Petitioner also asserts that “in a four-bar linkage system like Clary, there are only a few options for coupling the actuator.” Id. If one end of the actuator assembly is coupled to the support bracket, then the other end of the actuator assembly can be coupled to a linkage arm or the display bracket. Pet. 98 (citing Ex. 1003 ¶ 142). would have been motivated to directly rotatably couple the actuator assembly to an arm of the arm assembly because this could reduce the number of parts and provide direct force from the actuator to the arm assembly which causes the display bracket to move. This configuration would simplify the design by reducing part count resulting in reduced inventory, assembly and inspection costs. Such a modification could also allow for a shorter actuator. Pet. 99 (citing Ex. 1003 ¶ 142).” slip op. at 23

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham · Nautilus
  Patents in suitUS 11,781,703
• Geotab USA, Inc. / Geotab, Inc. v. Omega Patents, LLCAll claims unpatentable
  PTAB · Jul 18, 2024 · IPR2023-00504 · APJ Amber L Hagy · IPR · Final written decision

  Claims 1–22 are unpatentable as obvious over Flick ’885 and Hunt; the Board denies Petitioner’s motion to exclude evidence.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art. In assessing the level of ordinary skill in the art, various factors may be considered, including (1) educational level of the inventor; (2) type of problems encountered in the art: (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology, and (6) educational level of workers active in the field. Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983). Not all of these factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Relying on the declaration testimony of Mr. Miller, Petitioner contends that an ordinarily skilled artisan for the ’278 patent “would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, automotive engineering, or a related discipline, and at least two years of experience in networking or automotive engineering.” Pet. 9 (citing Ex. 1003 ¶¶ 54–60). Mr. Miller states his opinion is based on “the context of the ’278 patent and the prior art.” Ex. 1003 ¶ 54. Petitioner also contends that an ordinarily skilled artisan “would have understood networking electronics, been familiar with vehicle data buses, regulations and industry standards involving on-board diagnostics (‘OBD-II’), and at least one underlying network protocol used by OBD-II.” Pet. 9. In our Institution Decision, we adopted Petitioner’s articulation of the level of ordinarily skill in the art (i.e., “a Bachelor’s degree in electrical engineering, computer engineering, computer science, automotive engineering, or a related discipline, and at least two years of experience in networking or automotive engineering”), noting that it is consistent with the ’278 patent and the asserted prior art, and we applied it in our obviousness evaluations therein. Dec. 23 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art, itself, can reflect appropriate level of ordinary skill in art)).” slip op. at 17

  • Prior constructionPrior construction adoptedDecided for petitioner

    “We determined in our Institution Decision that we should construe the term “enabling data” because, in its first ground of unpatentability, Petitioner argues that this term constitutes “printed matter” under the printed matter doctrine. Dec. 24. We, therefore, addressed Petitioner’s arguments about printed matter. See id. (citing Praxair Distribution, Inc. v. Mallinckrodt Hosp. Prod. IP Ltd., 890 F.3d 1024, 1033 (Fed. Cir. 2018) (holding that the Board “properly addressed the printed matter doctrine during claim construction”)). Ultimately, following our analysis of the ’278 patent’s written description, as well as relevant caselaw, we rejected Petitioner’s contention and concluded that “enabling data” is not “printed matter.” Id. at 24–27. We then concluded that we see no reason to depart from the Board’s previous construction of “enabling data” from Omega Patents I, wherein the Board construed “enabling data” as data that “enables the recited controller to use a particular vehicle device code from among plural such codes for different vehicles by providing either (1) the code itself to the controller, or (2) data that otherwise enables the controller to select or generate the code.” Omega Patents I (Ex. 1012), 12–13 (citing Ex. 1001, 24:5–25:28, Figs. 10– 13).” slip op. at 19

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

    “’885, but provides evidence of particular advantages that Hunt purportedly provides by combining GPS with a system that is similar to that described by Flick ’885. In particular, Petitioner points out that both references disclose MVCC systems (Pet. 49–50 (citing Ex. 1024, 32:27–35, 3:58–62, 6:62–7:3, 7:43–49, 8:50–63, 9:43–55, 10:31–36), id. at 13–41 (summarizing Hunt’s description of a MVCC relative to claim 1)) and both references disclose the importance of vehicle security (Pet. 49–51; Ex. 1023, 2:35–41, 4:18–22; Ex. 1024, 1:21–23). Petitioner further provides evidence that Hunt “explains there are ‘many advantages’ to adding GPS and location services to such systems,” including “alerting” the owner when the vehicle is moved and aiding in vehicle “recovery.” Pet. 50–51 (citing Ex. 1023, 2:35–41, 4:18–22). Hunt also expressly teaches that vehicle-location data and vehicle diagnostic data “are complementary and, when analyzed together, can improve conventional services such as roadside assistance, vehicle theft notification and recovery, and remote diagnostics.” Ex. 1023, 4:18–23. Petitioner similarly provides a persuasive rationale for combining Hunt’s teachings of a housing with Flick ’885, again presenting evidence that both references teach similar systems, and hence adding Hunt’s housing to Flick ’885’s system would improve that system the same way that it improved Hunt. Pet. 52–53. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. Here, as discussed above, Petitioner has presented persuasive evidence (including the testimony of Mr. Miller, which we credit) that adding GPS and housing, as taught by Hunt, would improve Flick ’885 the same way that these features improved Hunt, particularly in light of overlapping disclosures of these references, both in terms of the technology they disclose as well as their intended purposes. Pet. 49–53; Ex. 1003 ¶¶ 363–376.” slip op. at 27

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “As Petitioner contends, there is insufficient evidence that the alleged commercial success is tied to the elements of the ’278 patent—either individually or as a whole. Pet. Reply 6–7. Petitioner presents evidence that “[t]he identified products—CalAmp LMU-3000 and LMU-3030—include significant unclaimed features like a ‘3-axis accelerometer’ for ‘hard braking, cornering’ and ‘impact detection,’ and an ‘on-board alert engine PEG (Programmable; Event Generator).’” Id. at 6 (citing Ex. 2016, 1, 2 Ex. 2017, 1). Indeed, the very damages award Patent Owner relies upon to show alleged commercial success was vacated by the Federal Circuit on the ground that it was “unsustainable” because Patent Owner had “failed to show the incremental value of the ’278 patent (or that the patented improvement drove demand for the entire accused product).” Omega Patents, 13 F.4th at 1376. As support, the Federal Circuit cited the very unpatented features referenced by Petitioner, stating that “[i]t is undisputed that [‘3-axis accelerometer’ and ‘industry leading on-board alert engine’] are not inventive aspects of the asserted [’278 patent] claims.” Id. “In sum,” concluded the Federal Circuit, “we conclude that the jury could not reasonably have found that the multi-vehicle-compatibility feature of the LMUs drove demand for the entire LMU product.” Id. at 1378. Second, even if we accepted Patent Owner’s contention that there is a nexus between the invention claimed in the ’278 patent and the sales of over 900,000 units, the evidence of commercial success would remain weak. In particular, there is no evidence in the record before us of relative market share establishing that the CalAmp products underlying the jury’s verdict were a commercial success. See, e.g., In re Applied Materials, Inc., 692 F.3d 1289, 1300 (Fed. Cir. 2012) (“An important component of the commercial success inquiry in the present case is determining whether Applied had a significant market share . . . .”). Patent Owner does not provide evidence allowing us to evaluate how the second jury’s damages award relates to the overall industry—in particular, the record does not reflect the scope of that industry or CalAmp’s place within it. Cf. In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (noting that “evidence related solely to the number of units sold provides a very weak showing of commercial success, if any”). Patent Owner’s only attempt to fill this gap is by pointing to the first jury verdict, in which the jury answered “yes” to the question of whether the “accused products covered by the claim were commercially successful due to the merits of the claimed invention rather than due to advertising, promotion, salesmanship, or features of the product other than those found in the claim.” PO Resp. 48–49 (citing Ex. 1027). However, that question was in a verdict form involving findings of infringement of multiple claims of four patents, and the finding of “commercial success” was not broken out by patent or product, leaving us no basis to assess the merits of that finding. Ex. 1027, 2–7, 9. In addition, the second jury’s finding of infringement of the ’278 patent by over 917,000 units was part of a verdict by a different jury, rendered years after the first verdict, with no corresponding question regarding commercial success. Compare Ex. 1027 (first verdict form), with Ex. 1028 (second verdict form). Thus, we cannot draw any connections between the first jury’s finding of “commercial success” in a verdict form covering four patents and the second jury’s award of damages for infringement of the ’278 patent in particular. Further undermining Patent Owner’s proffered evidence of commercial success is the fact that the juries found the same products infringed multiple claims of at least two patents other than the ’278 patent. See Exs. 1027, 1028. As our reviewing court has explained, “[c]ommercial success is relevant because the law presumes an idea would successfully have been brought to market sooner, in response to market forces, had the idea been obvious to persons skilled in the art.” Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1376 (Fed. Cir. 2005). Where, however, “market entry by others was precluded [due to blocking patents], the inference of non-obviousness of [the asserted claims], from evidence of commercial success, is weak.” Id. at 1377. Here, Petitioner contends that the other patents found to be infringed” slip op. at 53

  Patent outcomesUS 8,032,278 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,032,278

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.