- PTAB · Mar 20, 2024 · IPR2023-01401 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 17–25 on all asserted grounds, finding a reasonable likelihood that Hisense would prove at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.108 (2023). 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 ’331 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find in applying either parties’ definition for what comprises the level of likelihood that it would prevail in proving the unpatentability of the challenged claims. At this stage of the proceeding, however, we adopt Petitioner’s proposed definition of the level of skill for one of ordinary skill in the art. Pet. 9. This definition for the level of ordinary skill is consistent with the ’331 patent and the asserted prior art, and we apply it in our analysis below. During trial, and in accordance with our Rules, the parties should address what substantive effect, if any, different proposed definitions for the level of ordinary skill in the art have on analyzing what the prior art teaches or in otherwise evaluating unpatentability of the challenged claims.” slip op. at 7
- 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 meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention and in the context of the entire patent disclosure. Phillips, 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). Pet. 9; Prelim. Resp. 5–6. Thus, for purposes of our Decision on Institution, 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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We agree with Petitioner and find that one of ordinary skill in the art would have been motivated to combine Lys and Grootes’s teachings to have a current supply circuit for each LED string in Lys’s lighting unit to achieve better color and brightness control and uniformity, and to achieve a desired white point. Pet. 18–20 (citing Ex. 1003 ¶¶ 82–84, 89), 24 (citing Ex. 1003 ¶ 61). At this stage, we find persuasive Mr. Betancourt’s cited testimony on this issue as it is consistent with Lys and Grootes’s teachings. For example, Lys teaches with respect to a lighting unit 102 that “[t]he sources 300 can also be mixed, including sources 300 of varying wavelength, intensity, power, quality, light output, efficiency, efficacy or other characteristics,” allow light of different colors or color temperatures, including color temperatures of white.” Ex. 1005, 37:3–8 (emphasis added). And Grootes explains, for example, that “[e]ach current source 40–42 is controllable to control the brightness of its associated LEDs to achieve the desired white point.” Ex. 1006 ¶ 41. We also agree with Petitioner and find that one of ordinary skill in the art would have had a reasonable expectation of success in combining Lys and Grootes’s teachings to produce a lighting system having separate circuits for supplying each of the currents for the LED strings. Pet. 18; Ex. 1003 ¶ 88. Nor at this stage do we find that Lys’s lighting units having separate current supply circuits for each LED string would have been uniquely challenging or difficult for one of ordinary skill in the art. See Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419–20) (finding that obviousness was supported because there was no evidence that making the combination was uniquely challenging or difficult for one of ordinary skill in the art). Accordingly, at this stage, we find that Petitioner has provided sufficiently articulated reasoning with rational underpinning to support combining Lys and Grootes in the manner Petitioner proposes. See In re Kahn, 441 F.3d at 988; see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374 (Fed. Cir. 2019) (“A motivation to combine may be found ‘explicitly or implicitly in market forces; design incentives; . . . and the background knowledge, creativity, and common sense of the person of ordinary skill.’”) (quoting ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1371 (Fed. Cir. 2018)).” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,941,331 - K/S Himpp v. Bragi GmbHInstitutedPTAB · Mar 19, 2024 · IPR2023-01205 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that Hain anticipates claims 1, 2, and 4 and the stated combinations render claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“While we acknowledge that Shaffer was before the Office, that alone is not sufficient to meet the first prong of the Advanced Bionics test. Factor (b) under Becton, Dickinson, which is also considered under the first prong of Advanced Bionics, examines “the cumulative nature of the asserted art and the prior art evaluated during examination.” Advanced Bionics, Paper 6 at 9 n.10. We note that there is no evidence or argument that Hain or Sørensen were previously considered by the Office or cumulative of art that was in front of the Office. Although one reference, Shaffer, was previously presented to the Office, in each asserted ground, Petitioner relies on either Hain or Hain in combination with Sørensen. Because neither of those references was before the office, Patent Owner has not satisfied the first prong of the Advanced Bionics test.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“All of these arguments center on the claim language’s recitation of “one or more of the wireless earpieces.” Id. at 16. Patent Owner agrees with Petitioner that “[i]f both hearing aids detect a magnetic field, such as by being located in the disclosed storage box, the hearing aids are automatically switched off.” Id. at 17; see also Ex. 1004 ¶ 13 (“[I]f both hearing aids detect a relatively strong magnetic field in their immediate vicinity, then this is an indication that the hearing aids are located in the storage box and can be switched off.”). Patent Owner does not appear to dispute that Hain teaches a high power mode when both earpieces do not detect a magnetic field. See Prelim. Resp. 17; see also Ex. 1004 ¶ 21 (“For as long as no magnetic field is detected, the hearing aid is in ‘normal operation.’”). On the current record, we are thus persuaded that Hain discloses a low power mode when both earpieces detect a magnetic field and a high power mode when both earpieces do not detect a magnetic field. The parties’ dispute centers on the mixed situation when one earpiece detects a magnetic field and one does not. Patent Owner directs us to Hain’s disclosure of a “telephone mode” when “there is a magnetic field applied to one hearing aid but not the other, such as by a telephone receiver emitting a magnetic field.” Prelim. Resp. 16. According to Patent Owner, in order “[t]o anticipate the claims, Hain must disclose an earpiece that switches to a high power mode when only it – and not both it and its pair – no longer detects a magnetic field.” Id. at 17. Patent Owner, however, also asserts that “to anticipate the claims, Hain must disclose an earpiece that switches to a low power mode when only it – and not its pair – detects a magnetic field.” Id. at 21. Thus, we understand Patent Owner to be arguing that each earpiece must independently move to a high or low power state based on whether it detects a magnetic field. We, however, are not persuaded that the claim language is so limited. Limitation 1B recites “powering circuitry of the wireless earpieces utilizing a high-power mode in response to detecting a magnetic field is not applied to one or more of the wireless earpieces.” Limitation 1C recites “altering the power sent to the circuitry of the wireless earpiece to a high-power mode in response to detecting a magnetic field is not applied to one or more of the wireless earpieces.” Thus, the disputed portions of these limitations are met if “one or more” of the earpieces detects that a magnetic field is not present and goes into a high power mode. As noted above, on the current record, we are persuaded that Hain discloses that an earpiece goes to a high power state if it does not detect a magnetic field. See Ex. 1004 ¶ 21 (“For as long as no magnetic field is detected, the hearing aid is in ‘normal operation.’”).” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“F. Obviousness over Hain and Shaffer Petitioner asserts that claims 1–6, 8–12, and 14 are unpatentable under 35 U.S.C. § 103 as obvious over Hain and Shaffer, citing the Declaration of Dr. Kiaei for support. Pet. 29–61 (citing Ex. 1002). Patent Owner argues that this ground must fail because Shaffer was previously presented to the Office and it reiterates its arguments addressed above regarding the disclosures of Hain. Prelim. Resp. 21–26. For reasons discussed above, we are not persuaded by those arguments. We have reviewed Petitioner’s arguments and evidence and based on the evidence in the present record, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that the combination of Hain and Shaffer teaches all of the limitations recited in claims 1–6, 8–12, and 14. G. Obviousness over Hain, Shaffer, and Sørensen Petitioner asserts that claims 3, 5–7, and 9–14 are unpatentable under 35 U.S.C. § 103 as obvious over Hain, Shaffer, and Sørensen, citing the Declaration of Dr. Sayfe Kiaei for support. Pet. 61–67 (citing Ex. 1002). Patent Owner argues that this ground must fail because Shaffer was previously presented to the Office and it reiterates its arguments addressed above regarding the disclosures of Hain. Prelim. Resp. 27. For reasons discussed above, we are not persuaded by those arguments. We have reviewed Petitioner’s arguments and evidence and based on the evidence in the present record, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that the combination of Hain, Shaffer, and Sørensen teaches all of the limitations recited in claims 3, 5–7, and 9–14.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,397,688 - K/S Himpp v. Bragi GmbHInstitutedPTAB · Mar 19, 2024 · IPR2023-01204 · APJ Larry J Hume · IPR · Institution
The Board instituted IPR on claims 1–13 on all six asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In light of the argument and evidence before us, we find that Shaffer was previously presented to the Office and as such, the first prong of the Advanced Bionics test is satisfied.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.4 (2023). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim. Therefore, we institute an inter partes review of all challenged claims 1–13 of the ’014 patent, based on the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Supported by the testimony of Dr. Kiaei, Petitioner asserts the level of ordinary skill in the art corresponds to a person having “a bachelor’s degree in Electrical Engineering, or equivalent experience, and one to two years of experience in the field of wireless electronic devices and battery systems, particularly wireless earpieces such as wireless headphones and hearing aids.” Pet. 17 (citing Ex. 1002 ¶ 25). At this stage, Patent Owner “applies Petitioner’s definition of a POSITA [(person of ordinary skill in the art)]” (Prelim. Resp. 15 (citing Pet. 17)), but “reserves the right to present issues relating to the level of a POSITA should the Board institute this IPR.” Prelim. Resp. 15. Based on the current record, and for purposes of this Decision, we preliminarily adopt Petitioner’s position as to the level of ordinary skill in the art at the time of the claimed invention, as articulated above. On this record, we are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’014 patent and the asserted prior art. This definition also is supported by the testimony of Dr. Kiaei. See Ex. 1002 ¶ 25. In addition, Patent Owner “applies Petitioner’s definition of a POSITA . . . but reserves the right to present issues relating to the level of a POSITA should the Board institute this IPR and in other proceedings involving the ’014 Patent.” Prelim. Resp. 15 (citing Pet. 17).” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“10–13, we disagree with Patent Owner’s narrow construction requiring that the smart case includes a rechargeable battery utilized to charge a wireless device. The patent discloses an illustrative embodiment that includes a presumably rechargeable battery, i.e., “[t]he smart case 102 encloses a battery, and various other circuitry (not shown) . . . . For example, the battery of the smart case 102 may be utilized to charge the wireless earpieces 142, 144 any number of times before the smart case 102 and corresponding battery may require charging.” Ex. 1001, 3:28–37. However, as quoted below, we note the ʼ014 patent also discloses alternative embodiments of the smart case that do not require a rechargeable battery to recharge a wireless device: The smart case 402 may have any number of configurations and include various circuitry, connections, and other components. The smart case 402 is one potential embodiment of the smart case 102 of FIGS. 1–3. In one embodiment, the smart case 402 may include a battery 404, a logic engine 406, a memory 408, interfaces 410, 411, a transceiver 412, and a magnet 414. The battery 404 is a power storage device configured to charge the power storage system of the wireless earpieces 401 once or multiple times. In other embodiments, the battery 404 as well as the batteries of the wireless earpieces 401 may represent a fuel cell, thermal electric generator, piezo electric charger, solar charger, ultra-capacitor, or other existing or developing power storage technologies. Ex. 1001, 6:9–22 (emphases added). Accordingly, at this stage of the proceeding, in connection with claims 4, 6–8, and 10–13, we decline to adopt Patent Owner’s proffered claim construction of the phrase “smart case” that requires a rechargeable battery utilized to recharge a wireless device. No further express construction is required for the purposes of this Decision.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,117,014 - PTAB · Mar 14, 2024 · IPR2023-01385 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1–7, 10–12, 14–21, and 23 on all asserted grounds, finding a reasonable likelihood that Chou renders claim 1 obvious.
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 “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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim of the ’812 patent. We therefore institute inter partes review as to all of the challenged claims of the ’812 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Based on the current record, we determine that Petitioner has established compliance with the statutory requirement under 35 U.S.C. § 312(a)(2) to identify all real parties in interest. C. The ’812 Patent” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We regard Petitioner’s definition as consistent with the complexity of the technology described in the ’812 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Patent Owner’s use of the term “technical field” is unduly vague. Therefore, for the purpose of this Decision, we adopt Petitioner’s proposed formulation. C. Claim Construction” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“On this record, we preliminarily agree with Patent Owner that the ’812 patent shows alternative ways for a reflector sheet “to conform to a shape of a protruding feature” on a lighting tile that does not demand the reflector sheet have “the same shape, outline, or contour of a protruding feature” as Petitioner’s proposed construction in the Underlying Litigation would require. To illustrate this, Figures 3 and 4 from the ’812 patent are shown in their entirety below.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,690,812 - PTAB · Feb 26, 2024 · IPR2023-01275 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 6, and 8 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Clark and Manner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s argument that Industrial Design does not have a set definition is supported by Dr. Ben-Tzvi’s testimony. Nonetheless, we give little weight to his testimony on this point because he does not disclose the underlying facts or data on which the opinion is based. See 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.”). Ex. 2001 ¶ 22. Based on the present record, we do not exclude Industrial Design from the definition of the level of ordinary skill in the art, although the parties are free to address this issue further during trial. For the purposes of this Decision, we apply Petitioner’s level of skill in the art because it appears consistent with the problems addressed in the ’650 patent and the prior art. Our Decision would be not be affected if we were to apply Patent Owner’s definition.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“C. Mr. Kemnitzer’s Testimony Patent Owner contends that we should give little to no weight to Mr. Kemnitzer’s testimony because his “education and experience is in industrial design, rather than mechanical engineering.” Prelim. Resp. 57 (citing Ex. 1003 ¶¶ 4–6). According to Patent Owner, “[s]uch qualifications are directed more toward aesthetics than hard science,” while “[m]echanical engineering concerns are at the core of certain deficiencies in Mr. Kemnitzer’s analysis.” Id. (citing Ex. 2001 ¶ 58). Regardless of the precise contours of industrial design, Mr. Kemnitzer testifies that he has “substantial direct experience in designing products that utilize the manufacturing processes, components, and materials of the designs at issue in this matter” and “in designing fully adjustable products for the commercial furniture, computer, and healthcare industries.” Ex. 1003 ¶ 5. Thus, on the present record at this stage of the proceeding, we decline to minimize the weight given to his testimony for this reason. The parties, however, are free to address this issue further during trial.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner contends that “the ’650 patent is obvious under any reasonable construction of the claims.” Pet. 9. Petitioner points out that it contends in district court that the term “an actuator for controlling the driver” is indefinite for invoking means-plus-function claiming without providing corresponding structure. Id. (citing Ex. 1023, 36–40; Ex. 1024, 28–32). Petitioner, however, adopts Patent Owner’s construction of this term for the purposes of this proceeding—“a mechanism to activate or control equipment, e.g., by use of pneumatic, hydraulic, or electronic signals.” Id. at 10 (quoting Ex. 1012, 3–4). Petitioner also points out that in the district court, the parties’ proposed constructions of “work surface” also differ. Id. Specifically, Petitioner advocates that the term should be construed as “a curved surface at the top of a cart large enough to dispense medication or hold work papers,” while Petitioner characterizes Patent Owner’s position as advocating “for a broader ‘plain and ordinary meaning’ construction. Id. (citing Ex. 1012, 8–9). Petitioner, however, states that it “includes alternate grounds using Gillis to demonstrate how the claims are invalid under either Petitioner or Patent Owner’s construction.” Id. Patent Owner contends that Petitioner fails to expressly adopt or set forth any claim definitions aside from the term “work surface.” Prelim. Resp. 17. Patent Owner, however, contends that the claimed invention is valid under any reasonable construction. Id. Patent Owner also contends that the term “compartment” should be construed as “an enclosed space for containing an item” and that the construction of “work surface” is not dispositive here. Id. at 18–20. We agree with Patent Owner that it is not necessary to construe “work surface” at this stage of the proceeding because the construction of the term does not resolve 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 ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,215,650 - PTAB · Feb 26, 2024 · IPR2023-01274 · APJ Arthur M Peslak · IPR · Institution
Instituted review of claims 3 and 4 on all grounds; the Board found a reasonable likelihood that claims 3 and 4 would be unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, the Preliminary Response, Preliminary Reply, Preliminary Sur-reply as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in showing at least one claim of the ’668 patent is unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’668 patent on all grounds stated in the Petition. See 37 C.F.R. § 42 (“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.”); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1359–60 (Fed. Cir. 2018) (interpreting the relevant statutory provisions, in light of SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018), to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s argument that Industrial Design does not have a set definition is supported by Dr. Ben-Tzvi’s testimony. Ex. 2001 ¶ 22. Nonetheless, we give little weight to his testimony on this point because it 9 Patent Owner is reminded that arguments may not be incorporated by reference from one document into another document. 37 C.F.R. § 42.6(a)(3). does not disclose the underlying facts or data on which the opinion is based. See 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.”). Based on the present record, we do not exclude Industrial Design from the definition of the level of ordinary skill in the art, although the parties are free to address this issue further during trial. For the purposes of this Decision, we apply Petitioner’s level of skill in the art because it appears consistent with the problems addressed in the ’668 patent and the prior art. Our Decision would not be affected if we were to apply Patent Owner’s definition.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Regardless of the precise contours of industrial design, Mr. Kemnitzer testifies that he has “substantial direct experience in designing products that utilize the manufacturing processes, components, and materials of the designs at issue in this matter” and “in designing fully adjustable products for the commercial furniture, computer, and healthcare industries.” Ex. 1004 ¶ 5. Thus, on the present record and at this stage of the proceeding, we decline to minimize the weight given to his testimony for this reason. The parties, however, are free to address this issue further during trial.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that it is not necessary to construe “work surface” expressly at this stage of the proceeding because the construction of the term does not resolve 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 ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,594,668 - Netflix, Inc. v. Divx, LLCNo claims unpatentablePTAB · Feb 22, 2024 · IPR2020-00558 · APJ Iftikhar Ahmed · IPR · Remand
The majority determined claims 1–24 were not shown unpatentable over Chen, Lindahl, and Hurst; the dissent would have found them obvious.
RulingsRemand decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We determine Patent Owner’s reading of the claim limitation is the better one. The limitation begins with the verb “locating,” and it therefore makes sense that the clause would recite what is located (i.e., encryption information) and where it is located (i.e., within the requested portions of the selected stream of protected video). In other words, it is reasonable that the second and third clauses of the limitation both modify the first clause (for example, as could perhaps be expressed through the use of commas as “locating encryption information, that identifies encrypted portions of frames of video, within the requested portions of the selected stream of protected video”).10 On the other hand, Petitioner’s reading of the limitation, 10 In general, we recognize that the use of commas to set off phrases in claim drafting is not consistent. We included commas above to illustrate Patent Owner’s understanding of the claim limitation. allowing only the second clause to modify the first, while not unreasonable, makes less sense. That is, the encrypted information identifies the encrypted portions of frames, which in turn are within the requested portions of the selected stream of protected video. Reading the claim in its entirety, the encrypted portions of frames would be understood to be located within the requested portions of the stream; it does not seem necessary for the claim to expressly recite that aspect. For example, the very next limitation— limitation [m] of claim 1—refers to “each encrypted portion of the frames of video” but does not expressly recite “within the requested portions of the selected stream.” Ex. 1001, 27:58–60. Thus, when limitation [l] recites “within the requested portions of the selected stream,” it seems more likely that the clause refers to where that encrypted information is located rather than simply to indicate the obvious location of the encrypted portion of the frames of video. We therefore view Patent Owner’s reading of the claim language as the better one.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundMixed
“I am persuaded that the Petition demonstrates that one of ordinary skill in the art would have had a motivation to combine Chen, Lindahl, and Hurst, as asserted by Petitioner. As the Federal Circuit found, the Petition pointed to and relied upon the portions in Chen describing pre-Chen art, without scalability or FEC features that were part of what Chen describes as aspects of its own inventive system. Netflix, slip op. at 9–10 (citing Pet. 17– 19, 69–70). I agree with Petitioner that “Chen-924 teaches several embodiments that adaptively stream alternative representations of a video using partially encrypted container files.” Pet. 20 (citing Ex. 1010, 14:41– 15:60). I determine that Chen-924 provides support for the rationale provided in the Petition, and that one of ordinary skill in the art would have been motivated to combine Chen and Lindahl in view of the disclosure of Chen-924. As discussed above, the Petition does not rely solely on privacy concerns and improvements to efficiency as its motivation to combine the references. See Pet. 18–19 (specifying piracy concerns, improvements to the efficiency of adaptive streaming, optimization of the balance between bitrate and bandwidth, and improvements to the end-user experience with fast startup and seek). With respect to whether one of ordinary skill in the art would have” slip op. at 52
- Strike new argumentNew argument disregardedDecided for petitioner
“I agree with Petitioner that Patent Owner’s Remand Brief, specifically pages 1–7, attempt to address aspects of claim 1 for the first time on remand. I also agree that Patent Owner’s arguments attempt to recharacterize limitations [j] and [k] to raise issues that Patent Owner did not raise previously, in contravention of our Order that issues raised needed support from “where those issues were raised in previous briefings by the parties.” Paper 56, 2. I have addressed whether scalability and FEC are integral to how Chen operates above, as well as whether the Petition relies on those aspects, supra. The questions about how Chen operates and what portions of Chen are asserted in the ground of unpatentability were previously raised, but now are being considered or reconsidered, based on the Federal Circuit’s decision. In Patent Owner’s Remand Brief, pages 1–7, the citations to argument previously raised do not support the arguments now presented by Patent Owner on remand. As such, I determine Patent Owner’s new arguments fall outside the scope of remand, and I dismiss these arguments seeking to distinguish limitations [j] and [k] from the cited prior art combination.24” slip op. at 62
- ExcludeMotion to exclude, grantedMixed
“7 Patent Owner’s Brief on Remand recognizes that there are two arguments Patent Owner raised in its Patent Owner Response that were not addressed in the Final Written Decision. See PO Remand Br. 1 (citing PO Resp. 24–37 (the construction of “locating encrypted information . . . within requested portions”), 38–58 (referring to Patent Owner’s “common keys” argument)). 8 The Final Decision also addressed Petitioner’s Motion to Exclude (Paper 42). See Final Dec. 28–37 (granting-in-part, denying-in-part, and dismissing-in-part Petitioner’s Motion). Our determinations on that Motion were part of Petitioner’s appeal to the Federal Circuit. See Paper 52. Because the Federal Circuit did not address this aspect of the Final Written Decision and the Federal Circuit’s decision does not impact our previous rulings on the Motion, we maintain those rulings here. Additionally, on remand, Petitioner requested authorization to file a motion for sanctions, which we held in abeyance until the parties’ briefing on remand was complete. See Ex. 3003, 1. Petitioner requests sanctions because of the impropriety of Patent Owner’s remand brief, including new claim construction arguments for limitations [1j] and [1k], and prejudice to Petitioner. Id. at 3, 5. Although we reserved further consideration of Petitioner’s request, we expanded both the time and pages allowed for Petitioner’s responsive brief, and also allowed Petitioner to address any related issues in its responsive brief. Id. at 1. Having considered the parties’ briefing on remand, and given that we do not reach the claim construction arguments that Petitioner objected to in its request for authorization to file a motion for sanctions, we deny Petitioner’s request.” slip op. at 5
Patent outcomesUS 10,225,588 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,225,588 - PTAB · Feb 21, 2024 · IPR2023-01281 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–23 on all asserted § 103 grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to all of the challenged claims of the ’878 patent on all of the asserted grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have possessed a bachelor’s degree in electrical engineering or computer science, 8 U.S. Pat. Pub. 2006/0282328 A1, published Dec. 14, 2006 (Ex. 1010, “Gerace”). and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 5 (citing Ex. 1002 ¶¶ 10–14). At this time, Patent Owner does not challenge Petitioner’s description of the level of ordinary skill in the art. Prelim. Resp. 3. We are persuaded that Petitioner’s description is consistent with the prior art and patent specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we adopt Petitioner’s description.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “does not believe claim construction is necessary at this time.” Pet. 7. Patent Owner “does not believe that any terms require express construction to resolve the parties’ dispute.” Prelim. Resp. 4. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“b) Entitlement of Baig to Earlier Effective Filing Date Petitioner asserts that Baig is entitled to the November 10, 2006 filing date of Provisional Application No. 60/858,204 (Ex. 1004, “’204 Provisional”), and is prior art to the ’878 Patent under pre-AIA 35 U.S.C. § 102(e). Pet. 9. Petitioner asserts that the ’204 Provisional provides support for the disclosure of Baig and provides § 112 support for at least one claim in Baig. Id. Petitioner asserts that there are no material differences between Baig and the ’204 Provisional. Id. at 10 (citing Ex. 1002 ¶ 43 (citing Ex. 1005 (redline comparison of Ex. 1003 and Ex. 1004))). Petitioner further contends that the ’204 Provisional includes 17 claims that are identical to the claims in Baig, and, therefore, provides written description support for the corresponding claims in Baig. Id. Petitioner also asserts the ’204 Provisional provides enablement. Id. At this preliminary stage in which Patent Owner has not challenged the status of Baig as prior art, Petitioner has shown sufficiently that Baig is entitled to the earlier effective filing date of the ’204 Provisional Application. Although the burden of production may shift between the parties during trial, the burden of persuasion to show that Baig is entitled to an earlier effective filing date always remains with Petitioner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,715,878 - PTAB · Feb 9, 2024 · IPR2023-01235 · APJ Bart A Gerstenblith · IPR · Institution
Instituted review of claims 1–6 on all petition grounds; the Board found a reasonable likelihood of success on obviousness over Szrek and did not reach the Llach–Szrek ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“We disagree. First, we agree with Patent Owner that the fact pattern presented here is not the typical situation in which the factors from General Plastic are considered. In particular, this proceeding challenges claims of a different patent than at issue in IPR2020-00084. Second, although the parties may have gained insight as to how the Board would handle challenges based on the same references asserted in the earlier proceeding, that insight (to the extent it gives an advantage) applies to both parties. Third, the first proceeding was a post-grant review that had a specific timing requirement (see 35 U.S.C. § 321(c)), in contrast to the present proceeding in which the filing of the Petition did not have the same or similar time constraint.6 In these circumstances, we find it appropriate to give less weight to factors based on the mere passage of time such as whether Petitioner knew of the prior art at the time of filing the petition in PGR2020- 00084 (clearly Petitioner did because two of the same references are asserted here) and whether Petitioner had received Patent Owner’s preliminary response from PGR2020-00084 at the time of filing the instant Petition. Accordingly, we decline to exercise our discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Even assuming Linq3 is a real party in interest to Petitioner and assuming we may exercise our discretion to deny institution based on unclean hands (see Kavo Dental Techs, LLC v. Osseo Imaging, Inc., IPR2020-00659, Paper 10 at 19 (PTAB June 10, 2020)), Patent Owner essentially asks us to resolve multiple factual issues related to its contract dispute with Linq3 to justify denial of institution. See, e.g., Prelim. Resp. 1– 26. Many, if not all, of these issues appear to be involved in the contract dispute, which will be resolved by the Arizona state court. We are not in a good position to make determinations about these particular issues at this stage of the proceeding, on the limited record before us. Rather, we find that the state court is better suited to address the conduct of Linq3 of which Patent Owner complains. Accordingly, we do not dive headfirst into these matters that are better addressed by the state court. To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party of interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response and the parties may brief and argue the issue during trial.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 2–3 (citing Ex. 1003 ¶ 13).7 Patent Owner does not propose a level of ordinary skill in the art in its Preliminary Response. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’135 patent and 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). Therefore, we adopt Petitioner’s level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner contends that we should follow the Board’s decision in PGR2020-00084 and construe “transaction processor” and “data package” in accordance with each term’s plain and ordinary meaning. Pet. 13; see id. at 13–19. Patent Owner does not take a position as to claim construction at this stage of the proceeding. See generally Prelim. Resp. In PGR2020-00084, the Board construed “transaction processor”8 in accordance with its plain meaning as “a processor . . . that processes transactions between two devices” and specifically “decline[d] to limit processors . . . to ‘third party’ processors . . . because the intrinsic record does not justify such a modification and it would create uncertainty.” Ex. 1008, 22. And, as Petitioner indicates, the Board determined that “data package” also is understood in accordance with its plain and ordinary meaning. Id. at 22–24; see id. at 24 n.10. At this stage of the proceeding 8 In that proceeding, the Board also construed “transaction processor system.” Ex. 1008, 13–22. and on the present record, we need not construe any claim terms expressly because none are in dispute. See Realtime Data, 912 F.3d at 1375.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,865,135 - Unified Patents, LLC v. Ideahub Inc.All claims unpatentablePTAB · Feb 5, 2024 · PGR2022-00044 · APJ Monica S Ullagaddi · PGR · Final written decision
Claims 1–13 are unpatentable for lack of written description under § 112(a); the Board did not reach the anticipation and obviousness grounds based on HEVC265.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that: A person of ordinary skill in the art at the priority date for the ’274 Patent (“POSITA”) would have had a bachelor’s degree in electrical or computer engineering, or a closely related scientific field such as physics or computer science, and two years of work experience with video processing. A lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 4–5 years). This definition would apply at the earliest claimed priority date of the ’274 Patent as well as any later date. Pet. 12 (citing Ex. 1005 ¶¶ 50–52). Patent Owner does not dispute the level of ordinary skill in the art. See generally PO Resp. We adopt Petitioner’s definition as it appears to be consistent with the Specification of the ’274 patent and the cited reference.” slip op. at 14
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“A party is collaterally estopped from relitigating an issue if: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX Inc. v. Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)).” slip op. at 21
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“For the reasons that follow, we determine that the ’928 application does not provide sufficient written description support, for at least independent claim 1 of the ’274 patent, so as to “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date” of the ’928 application. Ariad, 598 F.3d at 1351. Accordingly, we are persuaded that the ’928 application lacks sufficient written description support for the invention recited in claim 1 of the ’274 patent, and thus, claim 1 does not receive an effective filing date as early as that of the ’928 application (i.e., December 23, 2010). We further determine that Petitioner filed the Petition within the 9-month statutory period for requesting post-grant review in accordance with 35 U.S.C. § 321(c). The ’274 patent issued on September 14, 2021 (see Ex. 1001, code (45)), and the present Petition was accorded a filing date of June 9, 2022 (see Paper 5). Accordingly, the Petition was filed less than 9 months after the date of issuance of the ’274 patent. In view of the above, we are persuaded that the ’274 patent is eligible for post-grant review.” slip op. at 16
Patent outcomesUS 11,122,274 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,122,274
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.