- PTAB · Jan 7, 2025 · IPR2024-01071 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–19 and all asserted grounds, finding a reasonable likelihood that Howell-596 and Howell-158 render claims 1 and 19 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion Based on the foregoing, Petitioner establishes a reasonable likelihood of showing that the combination of Howell-596 and Howell-158 renders claim 1 obvious. We have also reviewed Petitioner’s arguments and evidence addressing independent claim 19. See Pet. 43–44. Based on our review of the current record, Petitioner also establishes a reasonable likelihood of proving that the combination of Howell-596 and Howell-158 renders claim 19 obvious.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Here, Petitioner provides a Sotera stipulation: “Petitioner hereby stipulates that, if the Board institutes review, Petitioner will not pursue in the Litigation invalidity of the ’541 patent based on any ground Petitioner raised or reasonably could have raised in this petition.” Pet. 80–81. Petitioner argues that the Fintiv Memo “unambiguously states three times that the Board ‘will not’ discretionarily deny institution due to parallel litigation when the petitioner files a Sotera stipulation.” Prelim. Reply 1 (citing Fintiv Memo at 3, 7, 9). We agree with Petitioner. In light of the Director’s Fintiv guidance regarding a Sotera stipulation, we decline to exercise discretion under § 314(a) to deny institution of inter partes review. See Fintiv Memo 3 (“[T]he 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.”); see also id. (stating that the Fintiv Memo “is issued under the Director’s authority to issue binding agency guidance to govern the PTAB’s implementation of various statutory provisions”).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Thus, under § 325(d), the Board uses the following two-part framework: (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 [the] challenged claims. Id. at 8.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree,” and “at least 2 years of experience designing consumer electronics, such as eyewear with electronics.” Pet. 11–12 (citing Ex. 1002 ¶¶ 30–34). Petitioner contends that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. Patent Owner does not contest Petitioner’s proposed definition or proffer a definition of its own. See generally Prelim. Resp. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the ’541 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,905,541 - PTAB · Jan 6, 2025 · IPR2024-01069 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–21 and all asserted grounds after finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Thus, under § 325(d), the Board uses the following two-part framework: (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 [the] challenged claims.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute only 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). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 37 C.F.R. § 42.108(a) (“When instituting . . . 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.”). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, we conclude 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. Thus, we institute inter partes review of all challenged claims based on all asserted grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree,” and “would have also had at least 2 years of experience designing consumer electronics, such as eyewear with electronics.” Pet. 15–16 (citing Ex. 1002 ¶ 32). Petitioner contends that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. at 16 (citing Ex. 1002 ¶ 32). Patent Owner does not contest Petitioner’s proposed definition or proffer a definition of its own. See generally Prelim. Resp. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the ’355 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,613,355 - PTAB · Jan 6, 2025 · IPR2024-01070 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“As correctly noted by Petitioner (see Prelim. Reply 1), the Guidance Memo is “binding agency guidance.” Guidance Memo at 3. “[T]the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. at 7. The Guidance Memo makes no exception for parallel litigation in which expert reports have been exchanged or litigation with a third party involving the challenged patent. Nor has Patent Owner identified any instance in which the Board has determined there to be such exceptions to the Director’s guidance. Indeed, Patent Owner admits that it “is unaware of any post- [Guidance] Memo decision discretionarily denying institution in these circumstances.” Prelim. Sur-reply 1. Accordingly, pursuant to the Guidance Memo, we decline to exercise discretion under 35 U.S.C. § 314(a) to deny institution.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“h. Conclusion Accordingly, at this stage of the proceeding, we determine that Petitioner has established a reasonable likelihood of prevailing on its assertion that claim 1 is anticipated by Brunton.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree.” Pet. 9 (citing Ex. 1002 ¶¶ 28–31). Petitioner contends that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. at 9–10 (citing Ex. 1002 ¶¶ 28–31). Patent Owner does not contest Petitioner’s proposed definition or proffer a definition of its own. See generally Prelim. Resp. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the ’174 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no claim terms require an express construction to resolve the challenges here.” Pet. 10. Petitioner notes that “the ’174 patent describes a number of claim terms, many in quotation marks, by what the terms refer to or may refer to” and asserts that “[t]hese descriptions in the specification are consistent with the plain and ordinary meaning of these claim terms.” Pet. 10–11 (citing Ex. 1002 ¶¶ 50–51). Patent Owner does not oppose Petitioner’s contentions or proffer any constructions of its own. See generally Prelim. Resp. At this time, we determine that no express construction of any term is necessary. We note that this determination does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all of their claim construction arguments and evidence during the trial, as permitted by our rules.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,801,174 - PTAB · Dec 31, 2024 · IPR2024-01072 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–26 and all asserted grounds after finding a reasonable likelihood that claim 1 would have been obvious over Jannard.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)9 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv 9 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_m emo_20220621_.pdf. Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 7
- 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); see 37 C.F.R. § 42.108 (2024). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’960 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree,” and “at least 2 years of experience designing eyewear and/or consumer electronics.” Pet. 10 (citing Ex. 1003 ¶ 28). Petitioner adds that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. at 10–11 (citing Ex. 1003 ¶ 28).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b); 83 Fed. Reg. 51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying such standard, claim terms generally are given their ordinary and customary the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Here, neither party sets forth any term for claim construction. Pet. 11; see generally Prelim. Resp. Thus, for purposes of this Decision, we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,598,960 - Google LLC v. Wirelesswerx IP LLCAll claims unpatentablePTAB · Dec 10, 2024 · IPR2023-00850 · APJ John D Hamann · IPR · Final written decision
Claims 1–5 are unpatentable as obvious over Wrappe and Belcea; claims 6–30 are unpatentable as obvious over Wrappe, Belcea, and Christopher.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Decision on Institution, we adopted the definition Petitioner proposes for one having ordinary skill in the art at the time of the invention of the ’203 patent. Dec. on Inst. 11. Namely, we found that one of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in research, design, development, and/or testing of GPS and/or positioning techniques, with additional education substituting for experience and vice versa.” Id. (citing Pet. 11 (citing Ex. 1002 ¶ 40)). Patent Owner states that it “adopt[s] Petitioner’s proffered level of ordinary skill in the art because it comports with the technology and claims of the ’203 Patent as well as the asserted prior art.” PO Resp. 8. Because Petitioner’s definition of the level of skill in the art is consistent with the ’203 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Patent Owner argues that “[t]he most practically near node” “does not have an ordinary meaning.” PO Resp. 6–7. Rather, it is defined in the Specification as “the node that is located at the closest accessible location to the movable entity,” according to Patent Owner. Id. at 7 (citing Ex. 1001, 6:55–67). Petitioner argues that “there is no material difference between how Petitioner and Patent Owner interpret this term, and claim construction is therefore not necessary to resolve this dispute.” Pet. Reply 2. In particular, Petitioner argues that “[t]he construction that the Patent Owner applies is that ‘the most practically near node’ is the node that is closest to the movable entity while being on the same floor as the user.” Id. (citing PO Resp. 14–15, 19–29). Petitioner argues that “[t]he Petition applies that same understanding, explaining that the combination of Wrappe and Belcea renders obvious identifying a node that is on the same floor as the user.” because “the system identifies a beacon ‘nearby’ on the same floor.” Id. (citing Pet. 38). We agree with Patent Owner that the Specification states that “[t]he most practically near node is defined as the node that is located at the closest accessible location to the movable entity.” Ex. 1001, 6:55–57. We conclude that this definition provides the proper construction for this term, and we apply it below. No construction of other terms6 is needed to resolve the disputes between the parties. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“most practically near node is defined as the node that is located at the closest accessible location to the movable entity.” Ex. 1001, 6:55–57. We conclude that this definition provides the proper construction for this term, and we apply it below. No construction of other terms6 is needed to resolve the disputes between the parties. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“router (“FIR”) is present in a stairwell and by an elevator shaft at each floor in a building. Ex. 1008 ¶ 43. Belcea926 explains that because signals lose energy when passing through floors and walls, “a FIR . . . may not be able to communicate with a [device] that is not on the same floor as the FIR.” Id. In accordance with Belcea926’s teachings, “all FIRs deployed on the same floor are on [a] same line of [a] matrix, regardless [of] the position on the floor,” and that “filtered data can be compared for finding the floor where is located the FIR that provides to the targeted mobile device the smallest TOF and the best RSSI simultaneously.” Id. ¶¶ 47, 55. We find persuasive Mr. Andrews’s testimony that one of ordinary skill in the art “would have understood that Belcea teaches to first identify the nodes on a specific floor, disregard nodes on other floors, and then perform location determinations using only the nodes on the specific floor desired,” as this testimony is consistent with these teachings. Compare Ex. 1002 ¶¶ 169–171, with Ex. 1006, 11:26–38, and Ex. 1008 ¶¶ 43, 47, 55. In addition, we find persuasive Mr. Andrews’s testimony that one of ordinary skill in the art “would have been motivated to implement these teachings [from Belcea and Belcea926] with Wrappe to ensure that the user is connected to a beacon from the store that they are in as opposed to a different store on the floor above or below the user.” Ex. 1002 ¶ 172. We also find persuasive Mr. Andrews’s testimony that “[d]ifferent stores on different floors are less relevant to [a] user, because even though they may be nearby in the vertical sense (e.g. directly underneath the user on a different floor), if the user is not in the store, then they are less likely to be interested in messages from that store.” Id. This testimony is consistent with Wrappe and Belcea’s teachings of improving the precision of locating position. See, e.g., Ex. 1005, code (57); Ex. 1006, code (57). In sum, we agree with Petitioner and find that the combination of Wrappe and Belcea teaches that the system narrows the plurality of nodes for use by the user at a first elevational level (i.e., narrows to the nodes on a user’s floor, excluding nodes on other floors), and determines the closest node on that floor to the user (i.e., the node at the closest accessible location to the user).” slip op. at 28
Patent outcomesUS 8,315,203 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,315,203 - DISH Network L.L.C. / DISH Technologies L.L.C. v. Digital Broadcasting Solutions, LLCSome claims unpatentablePTAB · Dec 9, 2024 · IPR2023-00976 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1–16, 18, and 19 are unpatentable over Casagrande and Russ and Dow; claim 17 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Relying on the testimony of Dr. Jeffay, Petitioner proposes that a” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “a first period of time” Patent Owner contends that the term “first period of time,” recited in limitation 1[d][i], would be understood “to start after transmission of the entire ‘video program’ to the DVR.” PO Resp. 5 (citing Ex. 2006 ¶ 47). Patent Owner refers to claim 1 and its recital that the video program is provided “in its entirety.” Id. (citing limitation 1[d][ii]). Patent Owner argues that “[i]n order to ‘provide said video program in its entirety’ from ‘said memory device,’ the entire ‘video program’ must be stored in the ‘memory device,’ which is only possible after transmission of the entire ‘video program’ to the DVR.” Id. (citing Ex. 2006 ¶ 47). Patent Owner contends that in light of dependent claims 6 and 14, the “first period of time” must start after the transmission of the entire video program. Id. at 5–6 (quoting claim 6 (“wherein said first period of time is a period of time that is less than one week from said transmission of said video program”); claim 14 been transmitted.”)). Additionally, Patent Owner refers to the prosecution history of the ’710 patent: a digital video recorder (“DVR”) that stores a video program and plays at least a portion of the video program back at a later time (e.g., a time more convenient to the user of the DVR, etc.) . . . In a first state, the DVR is configured to play the program as it was originally recorded (e.g., with both the program and auxiliary data). In a second state, the DVR is configured to play the program data without the auxiliary data (or a portion thereof) . . . To this end, the claimed invention provides that if the video program is being watched within a first period of time (e.g., within a day or two of the video program being transmitted to the DVR, etc.), then the video program will be played back in its entirety (e.g., including both program and auxiliary data). PO Resp. 6 (quoting Ex. 1003, 108–109). Based on this passage, Patent Owner asserts that the “first period of time” must start after transmission of the entire video program. Id. (citing Ex. 2006 ¶ 49). Patent Owner argues that the referenced statement in the prosecution history is “clear and unambiguous.” PO Sur-reply 3. Petitioner contends that Patent Owner’s interpretation of the term” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“specific reasoning to combine Casagrande and Russ to be persuasive. See PO Resp. 23–24. Dr. Jeffay testifies that “Casagrande acknowledges that one concern expressed by content providers is the decreasing value of interstitial content over time, particularly because commercials may become less relevant to the user or may expire.” Ex. 1002 ¶ 117 (citing Ex. 1006, 10:5–13 (“[T]he supplemental content 602 may also be selected to replace a commercial with a timelier commercial from the same advertiser. For example, a department store may have originally advertised a sale during the original broadcast of the show, but that particular sale may have since ended.”)). Accordingly, the evidence supports that Casagrande identifies that the earlier playback of commercials has value, which provides support” slip op. at 31
- Obviousness (§103) › Objective indicia / secondary considerationsDecided for petitioner
“ix. Conclusion Patent Owner presents no evidence of objective indicia of” slip op. at 39
Patent outcomesUS 8,929,710 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,929,710 - DISH Network L.L.C. / DISH Technologies L.L.C. v. Digital Broadcasting Solutions, LLCAll claims unpatentablePTAB · Dec 9, 2024 · IPR2023-00977 · APJ St John Courtenay III · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Casagrande, Russ, and Miller; the Board did not reach the Dow grounds.
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary Skill We consider the asserted grounds of unpatentability in view of the” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“25), and the doctrine of claim differentiation, support Petitioner’s arguments (Reply 3–4) regarding the “first period of time.” Accordingly, we do not adopt Patent Owner’s proposed construction. We use the plain and ordinary meaning of the term here.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“agree, Russ discloses that trick play functionality is restricted for only a specified period of time. See Ex. 1008 ¶¶ 34–35. Accordingly, we find support for Dr. Jeffay’s testimony that, in the view of one of ordinary skill in the art, Casagrande in combination with Russ teaches that after the expiry of the first period of time there is a second period of time in which commercials may be skipped. Ex. 1002 ¶¶ 148–151; see also Pet. 32. Additionally, we agree that Petitioner has demonstrated a rationale to combine Casagrande and Russ with a reasonable expectation of success of the combination, as discussed above in the discussion of limitation 1[a][i].” slip op. at 63
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
Patent outcomesUS 9,538,122 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,538,122 - Motorola Mobility LLC v. Largan Precision Co., Ltd.Institution deniedPTAB · Oct 28, 2024 · IPR2024-00688 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 would have been obvious over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We determine, on the record before us, that Petitioner does not have a likelihood of success of showing that the “prolonged” etching process that Petitioner proposes to arrive at the structure of limitation 1.6 to be “unusually simple” nor is “the technology particularly straightforward.” CN182’s etching process uses an alkali (sodium bicarbonate) solution with a concentration from 5% to 35% at a temperature of 35 to 55°C stirred for a period of 3 to 5 hours in an ultrasonic generator with power of 300 to 500 watts. Ex. 1004 ¶¶ 7–12. This is done in CN182 to create a matte structure on the inner surface of the body composed of plastic material (polyethylene terephthalate (PET)) between two antistatic coatings comprised of carbon powder layers. See, e.g., Ex. 1004 ¶¶ 5–6. Petitioner does not indicate how much time beyond CN182’s stated range of 3 to 5 hours would be required for the “prolonged” etching process it proposes to achieve a minimum depth of 2.0 μm relative to the outer carbon powder layer, nor whether a POSITA would have considered the prolonged time to be practically viable. Petitioner also does not explain what the reaction is, what its etch rate is, whether its effect would be diminished or exhausted as reactants are consumed or affected by other substances present, or whether other variables, such as the alkali concentration, temperature, or power and frequency of the ultrasonic generator, would need to be changed and how much over the course of the “prolonged” etching process.” slip op. at 30
- Skill levelSkill level petitioner adoptedOther
“Petitioner states as follows: The person of ordinary skill in the art in November 2016 (“POSITA” or “POSA”) would have held a bachelor’s degree in physics, optical sciences, or a closely related field, and approximately three years’ experience in optical system design, including stray light suppression. More education would compensate for less work experience and vice versa. POSITAs understood the fundamentals of stray light suppression. Pet. 35–36 (citing Ex. 1008, 587:18–20, 167, 595:32–33, xiii:24–26; Ex. 1003 ¶¶ 31–37). Petitioner further asserts that various texts in the record reflect the knowledge of a POSITA. Id. at 36 (citing Exs. 1007–1010). Petitioner alleges that a POSITA could be part of a team that includes a lens designer and a stray light specialist. Id. (citing Ex. 1007, 120; Ex. 1003 ¶¶ 33, 36, 38–41). Patent Owner states that Patent Owner “does not dispute Motorola’s articulation of the level of skill in the art in November 2016.” Prelim. Resp. 12–13 (citing Pet. 35–36). For this Decision, we adopt Petitioner’s undisputed proposal for the level of ordinary skill in the art as consistent with the evidence of record, including the ’660 patent and the prior art references on which Petitioner relies. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 9
- Expert testimonyPetitioner expert discountedOther
“Patent Owner correctly argues that the evidence does not show that Petitioner’s declarant, Dr. Milster, has expertise in etching of plastic materials such as PET which CN182 discloses for use as the inner substrate layer. Prelim. Resp. 15 (citing Ex. 1003 ¶¶ 31–37). Dr. Milster states that he has “education, knowledge, skills, and experience in the fields of optics and lens design.” Ex. 1003 ¶ 29. This statement does not provide any evidence of expertise in etching plastic materials. Nor does he indicate that he has any expertise in this field in his curriculum vitae. Ex. 1003, Appendix A. Consequently, on this record, Dr. Milster’s testimony on the subject of etching plastic materials is entitled to little or no weight.” slip op. at 33
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes that the plain and ordinary meaning of the claim terms applies, and does not propose any specific construction for any claim term. Pet. 36. Patent Owner agrees with Petitioner’s statement regarding claim construction, i.e., that the plain and ordinary meaning applies and no express construction is required. Prelim. Resp. 12 (citing Pet. 36–37; Ex. 1003 ¶¶ 82–87). As Petitioner and Patent Owner do not dispute the meaning of any claim term, we decline to expressly construe any claim term, and instead apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b). See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also 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 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,997,660 - Iriusrisk, Inc. v. Threatmodeler Software Inc.No claims unpatentablePTAB · Oct 2, 2024 · IPR2023-00656 · APJ Stephen E Belisle · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Keenan did not disclose the claimed stored threats, and the obviousness combinations did not establish the mapping limitations or a reason to combine.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedDecided for patent owner
“construction of “threat,” which we find in the context of the ’366 patent does not encompass “risk.” See supra § III.D.3.a.1 (discussing “‘Threats’ versus ‘Risks’”). We agree with Patent Owner that Petitioner’s premise that “risk” includes “threats” or knowing risk allows for determination of threats is false, and belied by the parties’ experts who do not disagree on this distinction, namely that “risk” is not a “threat,” but rather represents the likelihood of a threat occurring compounded by the impact of such a threat on a given system (discussed above). See Ex. 2002, 24:3–25:5, 31:5–33:2 (Petitioner’s expert, Mr. Hurlbut, agreeing that “Risk = Likelihood x Impact”); Ex. 2009 ¶ 80; PO Sur-reply 9–10. Thus, we find unavailing Petitioner’s attempt to walk backwards from Keenan’s explicit disclosure of “risk” modeling into an anticipatory (explicit) disclosure of stored “threats” that may give rise to such risk. Viewing Keenan in the light agreed upon by the parties’ experts, where “risk” is a product of the “likelihood” of a threat occurring and the “impact” of such a threat on a given system, persuades us that although Keenan discloses “risk,” “types of risk,” and “risk ranking” (see, e.g., Ex. 1004, 16:21–63), Keenan uses such “risk” as a given value without explicitly disclosing any underlying stored threats or use thereof. See Ex. 2009 ¶ 112 (“Keenan does not disclose a system for measuring risk. The risk for objects is determined before the objects are imported into the [Integrated Object Environment]. Keenan does not make that measurement.”). Indeed, in order to “store” “threats” in “one or more databases” as recited in claim 1, such “threats” must be identified (i.e., known) at some level of specificity to the system. Petitioner does not direct us to any persuasive evidence that Keenan explicitly discloses using “threats” or “storing” an identified “threat,” let alone storing such “threat” in a database along with its association with a particular threat model component, and even more so with a threat model component that itself is correlated with a third-party diagram component as recited in claim 1.” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’366 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Hurlbut (Ex. 1003 ¶ 33).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“43:21–61. Contrary to Petitioner’s arguments (Pet. Reply 3–5), this “subset” feature shows that the “threats” stored in databases in claim 1 represent “potential events” that may or may not occur depending on the composition of a given system undergoing threat modeling—a system may implicate all stored threats, some of them, or even just one of them, leaving the remaining stored threats for use in preparing threat models for other systems. See PO Sur-reply 2–3 (discussing Figure 2 and arguing that “not every threat is necessarily included in the threat model”). We find the claim language itself supports interpreting “threats” as “potential events that, if they occur, can cause adverse effects to a target system.”” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Claim 1 recites, in part, “the one or more mapping files correlating the threat model components with [“third party diagram components”].” Ex. 1001, 43:30–35. Generally, from the standpoint of what claim 1 requires, the parties’ views of “mapping file” are in alignment. Claim 1 plainly recites that a “mapping file” (where a “file” in the context of computer systems is data itself) correlates data A with data B, and when construed in the context of the subject claim language, correlates threat model components (i.e., data A) with third party diagram components (i.e., data B). We find that this interpretation of “mapping files” is sufficient to resolve the controversy between the parties. See Nidec Motor, 868 F.3d at 1017.” slip op. at 39
Patent outcomesUS 10,713,366 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,713,366 - Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCAll claims unpatentablePTAB · Aug 6, 2024 · IPR2023-00312 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 1–17 are unpatentable as obvious: claims 1–3, 5–13, and 15–17 over Benjamin and Giere673; claims 4 and 14 over Benjamin, Giere673, and Parish.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“PHOSITA”) “would have been a person holding a Bachelor’s or Master’s level college degree in Mechanical Engineering, Materials Science, Physics, Electrical Engineering, or a related field, and two years of training or experience in the design of inkjet printheads or semiconductor circuit layout.” Pet. 6 (citing Ex. 1002 ¶¶ 108–110). Although Patent Owner “disagrees that a degree in Materials Science is sufficient,” it “does not dispute [Petitioner’s] characterization of the level of ordinary skill in the art for the purpose of [the] Response.” PO Resp. 34. Patent Owner does not explain its basis for this disagreement, or how the disagreement relates to Petitioner’s proposal, which requires, inter alia, “two years of training or experience in the design of inkjet printheads or semiconductor circuit layout.” Pet. 6; PO Resp. 34. In the Institution Decision, we adopted the assessment offered by Petitioner. Dec. 8. Because Petitioner’s definition of the level of skill in the art is consistent with the ’823 patent and the asserted prior art, we maintain it” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Patent Owner disagrees, and contends “that ‘adjacent’ carries its plain and ordinary meaning throughout the claims.” PO Resp. 34. Patent Owner argues that “Petitioners’ proposed construction of ‘adjacent’ to mean ‘next to and can include’ is not necessary to a proper understanding of the scope and meaning of” the claims, “does not reflect the ordinary meaning of ‘adjacent,’ and is not supported by a proper reading of the claims or specification of the ’823 patent.” Id. at 36. for adjacent (i.e., “next to and can include”) does not reflect the plain and ordinary meaning of adjacent. Rather, we conclude that the term “adjacent” should be afforded its plain and ordinary meaning (e.g., next to) in light of the claim language and intrinsic evidence. As we discuss below, Petitioner’s showing for claims 1 and 11 is consistent with the plain and ordinary meaning of “adjacent.” See Section II.D.3, infra. Based on our review of the complete trial record and the claim construction arguments raised by the parties, we determine that it is not necessary to expressly construe any other claim terms to resolve the parties’ dispute. Realtime Data, 912 F.3d at 1375.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We agree with Petitioner that a PHOSITA would have been motivated to combine the teachings of Benjamin and Giere673 to maintain the substrate at an optimum temperature for producing ink droplets in order to increase the quality of the ink drops, use less energy to fire the heater arrays, and more easily maintain the printhead assembly due to less residue being deposited on the die. Pet. 26; see also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1358 (Fed. Cir. 2006) may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient” are universal motivators to combine/modify prior art.). We also agree with Petitioner that Benjamin and Giere673 address the similar problem of “reduced print quality caused by the printhead operating outside its optimal temperature,” and provide the similar solution of disposing a temperature sense resistor “on the printhead for determining the mean temperature of the printhead and using a controller to maintain the printhead at its optimal temperature by, for example, lengthening and shortening the firing pulses sent to the heater arrays.” Pet. 56 (citing Ex. 1002 ¶ 243). In addition, we agree that Benjamin and Giere673 optimize print quality based upon a temperature value provided by a TSR. Id. at 55–58; Ex. 1002 ¶¶ 242–257. Accordingly, we find that a PHOSITA would have been motivated to make the proffered combination. Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1379 (Fed. Cir. 2023) (“[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”) (citations omitted); KSR, 550 at 417 (“[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.”).” slip op. at 20
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“dispute Petitioner’s evidence that the combination of Benjamin and Giere673 teaches the limitation of claims 1 and 11. See PO Resp. We also reviewed Petitioner’s explanations and supporting evidence as to how Benjamin and Giere673 teaches the other limitations of claims 1 and 11, and we agree with, and adopt as our own, Petitioner’s analysis. Pet. 7–19, 36– 44; Ex. 1002 ¶¶ 112–137, 170–189, 226–227. We also determine that Giere673. Accordingly, we determine that Petitioner establishes by a preponderance of the evidence that independent claims 1 and 11 of the ’823 patent would have been obvious over the combined teachings of Benjamin and Giere673. 4. Analysis of Claims 2, 3, 5–10, 12, 13, and 15–17 Petitioner contends that the combination of Benjamin and Giere673 teaches all of the limitations of claims 2, 3, and 5–10 that depend from claim 1, and claims 12, 13, and 15–17 that depend from claim 11. Pet. 44– 54; Ex. 1002 ¶¶ 190–225, 228–238. Patent Owner does not dispute that the combination of Benjamin and Giere673 teaches the limitations of these claims. See PO Resp. Having reviewed the parties’ arguments and evidence, we are persuaded that Petitioner’s discussion of the particular structures in Benjamin and Giere673, and the explanations in the Petition and the Pond Declaration, shows that the combination of Benjamin and Giere673 teaches all of the limitations of dependent claims 2, 3, 5–10, 12, 13, and 15–17. Accordingly, we determine that Petitioner establishes by a preponderance of the evidence that claims 2, 3, 5–10, 12, 13, and 15–17 of the ’823 patent would have been obvious over the combined teachings of Benjamin and Giere673.” slip op. at 35
Patent outcomesUS 7,484,823 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,484,823
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.