- PTAB · Mar 18, 2025 · IPR2024-01380 · APJ Richard H Marschall · IPR · Institution
The Board instituted inter partes review of claims 1–10 based on a reasonable likelihood that the Polinski and Piepho combination renders claims 1–8 obvious.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art relating to the ’568 patent would have had “a bachelor’s degree in mechanical engineering or a related field, and at least 2 years of experience with industrial equipment design and development.” Pet. 5 (citing Ex. 1002 ¶ 30). Petitioner also contends that one of ordinary skill “may also have a combination of more formal education and less work experience or a combination of less or different formal education and more work experience.” Id. We view Petitioner’s definition as consistent with the problems and solutions disclosed in the ’568 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 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under that standard, we give the words of a claim their plain and ordinary meaning as would have been understood by one skilled in the art at the time of the invention and in the context of the entire patent disclosure. Id. at 1312–13. Only terms in controversy need be construed, and only to the extent necessary to resolve the controversy. See 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)). Petitioner argues that “[n]o terms need construction because the claims read on the prior art identified below under any construction consistent with Phillips.” Pet. 14–15. Based on the record before us, we need not expressly construe any claim terms to resolve the issues presented at this stage of the proceeding.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the current record, Petitioner sufficiently establishes for the purposes of institution that one of ordinary skill in the art would have been motivated to combine Piepho and Polinski in the manner Petitioner proposes and further demonstrates that the combination discloses all of the limitations of claim 1. 3. Conclusion Based on the foregoing, Petitioner establishes a reasonable likelihood of proving that the combination of Piepho and Polinski renders claim 1 obvious. We have also reviewed Petitioner’s arguments addressing claims 2–8. See Pet. 31–40. Based on our review of the current record, Petitioner also establishes a reasonable likelihood of proving that claims 2–8 would have been obvious over Piepho and Polinski.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“and Piepho renders claim 1 obvious. For each limitation in claim 1, Petitioner points to specific portions of the references that support its position that the combination discloses the limitations in question. See Pet. 16–31. Petitioner also cites to declarant testimony addressing the limitations. Id. (citing Ex. 1002). In support of its combination of Polinski and Piepho, Petitioner argues that both references disclose “gyratory rock crusher[s],” “Piepho further teaches the interchangeability between a cylindrical joint and a tapered joint,” and one of ordinary skill in the art (a “POSITA”) would have been motivated to combine Piepho’s tapered joint with Polinski. Id. at 16–17 (citing Ex. 1002 ¶¶ 80–81; Ex. 1015, 1010; Ex. 1016, 3:24–35). According to Petitioner, “Piepho teaches the interchangeability between a cylindrical joint and a tapered joint” and “a POSITA would understand the advantages afforded by the use of a tapered joint as compared with a cylindrical joint,” including the fact that “tapered interference joints, while more expensive to manufacture, provide[] advantages in assembly, alignment, and fit-up.” Id. at 17 (citing Ex. 1002 ¶¶ 80–81).” slip op. at 11
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,827,568 - PTAB · Mar 18, 2025 · IPR2024-01381 · APJ Richard H Marschall · IPR · Institution
The Board instituted review of claims 1–14 based on a reasonable likelihood that the Polinski, Piepho, and Harless combination renders claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 314. Under § 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 challenged claims in the petition.” 35 U.S.C. § 314(a). Because we determine that Petitioner demonstrates a reasonable likelihood that at least one challenged claim is unpatentable, we institute an inter partes review of all claims as challenged in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art (“POSITA”) relating to the ’090 patent would have had “a bachelor’s degree in mechanical engineering or a related field, and at least 2 years of experience with industrial equipment design and development.” Pet. 3 (citing Ex. 1002 ¶ 29). Petitioner also contends that one of ordinary skill “may also have a combination of more formal education and less work experience or a combination of less/different formal education and more work experience.” Id. Patent Owner states that, for purposes of its Preliminary Response, it “does not object to Petitioner’s position on the level of ordinary skill in the art.” Prelim. Resp. 21 (citing Ex. 2001 ¶ 27). At this stage, and based on Petitioner’s undisputed contentions, we view Petitioner’s definition as consistent with the problems and solutions disclosed in the ’090 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 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Pursuant to 37 C.F.R. § 42.100(b), we apply the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under that standard, we give the words of a claim their plain and ordinary meaning as would have been understood by one skilled in the art at the time of the invention and in the context of the entire patent disclosure. Id. at 1312–13. Only terms in controversy need be construed, and only to the extent necessary to resolve the controversy. See 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)). Petitioner argues that “[n]o terms need construction because the claims read on the prior art identified below under any construction consistent with Phillips.” Pet. 10–11. Patent Owner “submits that the Board need not construe any claim terms as the claims are patentable under any reasonable construction.” Prelim. Resp. 20. Based on the record before us, we need not expressly construe any claim terms to resolve the issues presented at this stage of the proceeding.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner does not contest Petitioner’s combination of Polinski and Piepho, but instead argues that no motivation to combine exists because Harless “would render both Polinski and Piepho inoperable for their intended purpose of preventing shaft failure.” Prelim. Resp. 22–31 (citing, inter alia, Ex. 2001 ¶¶ 48–59). When addressing intended purpose, Patent Owner argues that “Polinski mitigates shaft fatigue failure . . . specifically by omitting threads that are typically cut into gyratory shafts to attach a crusher mantle.” Id. at 23 (citing Ex. 1017, 1:61–67). Patent Owner asserts that Polinski instead teaches that shaft stress can be reduced “by cutting threads into a bearing sleeve.” Id. at 24 (citing Ex. 1017, 1:1–67). Piepho, according to Patent Owner, seeks a similar goal: “to prevent fretting wear and corresponding fatigue,” by “coating a portion of the shaft fit into a yoke bushing (which Petitioner alleges is a sleeve) with a ceramic coating.” Id. at 24 (citing Ex. 1007, 2:15–25; Ex. 2001 ¶¶ 42–43). Patent Owner argues that introducing Harless’s groove onto the main shaft would undermine the purposes of Piepho and Polinski because these would “introduce stress concentrations,” “lead to increased fretting wear,” and “increase the likelihood of fatigue failure.” Id. at 24–29. Patent Owner also argues that Petitioner’s approach relies on impermissible hindsight because one of ordinary skill would not seek to rely on Harless’s grooved shaft for use in “mounting of gears and similar components” rather than “for crushing applications, much less in a gyratory crusher, as claimed.” Id. at 30. According to Patent Owner, Harless fails to disclose “that its shaft is subjected to the same substantial stresses generated by the cyclic loading as the shafts disclosed by Polinski and Piepho.” Id. As to Petitioner’s argument that a POSITA would be motivated to make the combination to simplify the equipment and process for interference fits, Patent Owner contends that “Petitioner impermissibly picks and chooses aspects of the three references” and ignores what they teach to a POSITA, namely that “Polinski and Piepho are both directed to mitigating shaft fatigue” and adding Harless’s oil groove introduces several problems, as noted above. Id. at 31 (citing Ex. 2001 ¶¶ 48–59). Based on the current record, Petitioner sufficiently establishes for the purposes of institution that one of ordinary skill in the art would have been motivated to combine Piepho, Polinski, and Harless in the manner Petitioner proposes. Notably, Patent Owner does not directly contest Petitioner’s stated reasons why a POSITA would be motivated to make the proposed combination, i.e., that the combination would save money and simplify the equipment and process for making and breaking interference fits. See Pet. 19–21; Prelim. Resp. 22–31. Patent Owner instead suggests that Petitioner improperly ignores disadvantages when adding Harless’s groove to Polinski and Piepho, which at best suggests a weighing between the advantages Petitioner contends the addition of Harless’s groove provides and the alleged disadvantages. See Prelim. Resp. 22–31. While Patent Owner’s arguments may ultimately prevail, given the highly factual nature of the competing expert testimony and the weighing necessary to resolve this issue, we view the issues as best resolved after further development during trial and after Petitioner has the opportunity to respond to Patent Owner’s arguments and evidence. On this record and at this stage of the proceeding, Petitioner’s arguments and supportive declarant testimony adequately establishes a motivation to combine the references.” slip op. at 17
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,014,090 - Cimbria Srl v. 3u Vision SrlInstitutedPTAB · Sep 20, 2024 · PGR2024-00018 · APJ Kevin W Cherry · PGR · Institution
The Board instituted PGR on claims 1–15 and all petitioned grounds, finding a reasonable likelihood that claims 1–3, 6, and 10 are obvious over ElMasry.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Post-grant review is available for patents that issue from applications that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). After considering the briefing and the evidence of record, for the reasons set forth below, we determine that Petitioner has shown that the ’947 patent is eligible for post-grant review, and has shown it is more likely than not that at least one challenged claim of the ’947 patent is unpatentable under § 324(a). Accordingly, we institute a post-grant review of the challenged claims of the ’947 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have a B.S. degree in Electrical Engineering, Physics, Chemistry, or an equivalent field, and at least 2-3 years of academic or industry experience in engineering related to optical sorting systems.” Pet. 17 (citing Ex. 1009 ¶ 21). Patent Owner did not file a Preliminary Response to the Petition and, therefore, at this point, does not contest Petitioner’s definition for one of ordinary skill in the art. Petitioner’s proposed definition appears to be consistent with the disclosure of the ’947 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may “reflect[] an appropriate level” of ordinary skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Having considered the record, we determine that no express claim construction is necessary for any claim terms for the purposes of rendering a decision to institute trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). At this stage, we find it unnecessary to resolve whether “electronic control unit” and “processing module” should be construed as mean plus function limitations under § 112(f), because it is possible to address the obviousness grounds presented whether or not these limitations are so construed, and even if the claims were indefinite in the manner Petitioner contends. See Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 813 (Fed. Cir. 2021) (noting indefiniteness of a means-plus-function limitation does not always render it impossible to adjudicate a prior-art challenge). We direct the parties to address the construction of these claim terms and Petitioner’s interpretation during trial.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We have reviewed Petitioner evidence and citations and, on the current record, we find that Petitioner has shown that it is more likely than not that ElMasry teaches all the limitations of claim 1, without need for any modification. Thus, we find that Petitioner has shown that it is more likely than not that claim 1 would have been unpatentable as obvious over ElMasry.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 11,666,947 - Toast, Inc. v. Gratuity, LLCInstitutedPTAB · Mar 27, 2024 · IPR2023-01408 · APJ Cynthia L Murphy · IPR · Institution
Instituted IPR of claims 1–13 on all asserted grounds; the Board found a reasonable likelihood that claim 1 is unpatentable over Marshall.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. In particular, we determine that factors 2– 4 weigh against denial of institution and factor 5, which is the lone factor favoring denial of institution, does not outweigh factors 2–4. Factor 1 is neutral. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Marshall (alone and with Phillips and Webb) when addressing the claims added during prosecution that ultimately issued as the Challenged Claims.” Pet. 68. As pointed out by Petitioner, “Marshall was never considered by the Examiner” against the claims that ultimately issued as claims 1–13 of the ‘050 Patent. Pet. 67, see also Ex. 1008, 263–289, 323–353. As also pointed out by Petitioner, “even when the Examiner considered Marshall” against claims that were subsequently cancelled, “he considered Marshall only as a secondary reference.” Pet. 67, see also Ex. 1008, 203–236, 263–289, 323–353. Patent Owner argues that Petitioner “fails to provide an adequate explanation as to how the examiner erred.” Prelim. Resp. 22. Patent Owner contends that Petitioner’s explanation “makes no sense,” and is “both conclusory and uncompelling.” Id. We disagree with Patent Owner’s characterization of the Petitioner’s position, especially because it is supported by prosecution history of the ’050 Patent. (See Ex. 1008, 203–236, 263–289, 323–353.) Patent Owner also argues that the prosecution history of the ‘050 Patent “establishes that the Examiner reviewed Marshall thoroughly and applied it against the claims, some of which he rejected and other he later allowed.” Id. at 21. To support this argument, Patent Owner points to findings made by the Examiner during prosecution of the ‘050 Patent. See id. at 20. These findings, however, related to the Examiner’s rejections against claims that were subsequently cancelled. See Ex. 1008, 203–224. And these findings were made in conjunction with Marshall being applied as a secondary reference to reject those claims. See id. The Examiner rejected those claims over a combination of three prior art references (Kessler, Delany, and Tidwell), and added Marshall, in lieu of using official notice, to show that it was known in the art to configure a processor to execute computer executable instruction stored in a memory. See id. at 211–214. Thus, these findings do not contradict Petitioner’s position that overlooking Marshall as primary obviousness reference in connection with the Challenged Claims was a material error. The prosecution history does not sufficiently show that the Examiner considered Marshall, Philips, Web, or the combinations of these references asserted in the Petition, with respect to the claims that issued as the ’050 Patent. In particular, the Examiner asserted as Reasons for Allowance that the prior art did not teach” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Patent Owner argues that “Marshall fails to disclose a cloud-based computing system remote from a plurality of client business systems” as recited in independent claim 1. Prelim. Resp. 22. Per Patent Owner, the cited-by-Petitioner paragraphs in Marshall (Ex. 1004) say “nothing about ‘cloud computing,’ only data transmission.” Id. at 22–23. And, per Patent Owner, the cited-by-Petitioner paragraphs from a declaration (Ex. 1002), do not provide “any additional evidence” beyond Marshall’s cited paragraphs. Id. at 22. We disagree with Patent Owner’s characterization of the evidence presented by Petitioner. The cited paragraphs of Marshall talk not only about data transmission, but also data transmission to remote locations via the Internet. See Ex. 1004, ¶¶ 25, 110. Also, one of these paragraphs talks about data transmission to a remote location being performed “via uploading and downloading via HyperText Transfer Protocol (‘HTTP’), Extensible Markup Language (‘XML’), and/or HTML as is known in the art.” Id. ¶ 110. The 9 The ’050 Patent says that “[i]n some embodiments, [a] point of sale system 110 and/or [an] employee records system 112 may be implemented in cloud computing systems reducing the burden on businesses to host these systems using local computing resources.” Ex. 2002, 4:65–5:2. If so, “[t]he gratuity management system 100 may be similarly implemented in a cloud computing system that interfaced with cloud-based point of sale and/or employee record systems.” Id. at 5:2–5. The gratuity management system “is contemplated to operate in conjunction with both local and cloud-based point to sale and/or employee record systems.” Id. at 4:8–11. cited paragraphs from the declaration provide additional evidence that these “communication protocols describe by Marshall (HTTP, XML, HTML) support a cloud-based infrastructure” and that “cloud computing solutions were well known and commonly used in the art by 2012.” Ex. 1002, ¶ 148. Thus, collectively, Petitioner’s evidence adequately establishes for the purposes of institution that Marshall indicates to POSITA that Marshall’s gratuity management system would be a cloud computing system remote from the plurality of client business systems.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Patent Owner argues that “Marshall fails to disclose a cloud-based computing system remote from a plurality of client business systems” as recited in independent claim 1. Prelim. Resp. 22. Per Patent Owner, the cited-by-Petitioner paragraphs in Marshall (Ex. 1004) say “nothing about ‘cloud computing,’ only data transmission.” Id. at 22–23. And, per Patent Owner, the cited-by-Petitioner paragraphs from a declaration (Ex. 1002), do not provide “any additional evidence” beyond Marshall’s cited paragraphs. Id. at 22. We disagree with Patent Owner’s characterization of the evidence presented by Petitioner. The cited paragraphs of Marshall talk not only about data transmission, but also data transmission to remote locations via the Internet. See Ex. 1004, ¶¶ 25, 110. Also, one of these paragraphs talks about data transmission to a remote location being performed “via uploading and downloading via HyperText Transfer Protocol (‘HTTP’), Extensible Markup Language (‘XML’), and/or HTML as is known in the art.” Id. ¶ 110. The 9 The ’050 Patent says that “[i]n some embodiments, [a] point of sale system 110 and/or [an] employee records system 112 may be implemented in cloud computing systems reducing the burden on businesses to host these systems using local computing resources.” Ex. 2002, 4:65–5:2. If so, “[t]he gratuity management system 100 may be similarly implemented in a cloud computing system that interfaced with cloud-based point of sale and/or employee record systems.” Id. at 5:2–5. The gratuity management system “is contemplated to operate in conjunction with both local and cloud-based point to sale and/or employee record systems.” Id. at 4:8–11. cited paragraphs from the declaration provide additional evidence that these “communication protocols describe by Marshall (HTTP, XML, HTML) support a cloud-based infrastructure” and that “cloud computing solutions were well known and commonly used in the art by 2012.” Ex. 1002, ¶ 148. Thus, collectively, Petitioner’s evidence adequately establishes for the purposes of institution that Marshall indicates to POSITA that Marshall’s gratuity management system would be a cloud computing system remote from the plurality of client business systems.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,741,050 - PTAB · Nov 17, 2023 · IPR2023-00833 · APJ Cynthia L Murphy · IPR · Institution
Instituted IPR of claims 1–20 on all asserted grounds after finding a reasonable likelihood that Corazza anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). Here, Petitioner demonstrates a reasonable likelihood that it would prevail in establishing the unpatentability of at least independent claim 1 of the Challenged Patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Independent claim 1 sets forth limitations involving a “dynamic emoticon.” Ex. 1001, 12:1, 12:5, 12:9. Petitioner proposes a claim construction in which a “dynamic emoticon” includes “graphics, symbols, characters, emojis, videos, avatars, or the like, that reflect the expression a sender uses to help explain the context of the message.” Pet. 10–11. As Patent Owner did not file a Preliminary Response, Patent Owner does not offer a contrary construction. Petitioner’s proposed claim construction is aligned with the Challenged Patent’s specification (see Ex. 1001, 5:6–8, 8:60–64), the Challenged Patent’s prosecution history (see e.g., Ex. 1002, 192–193, 317–318), and Patent Owner’s position in the district court action (see Ex. 1007, 4–5). We therefore adopt Petitioner’s proposed construction. Insofar as a party believes that supplemental claim construction would be beneficial, this can be addressed during development of the record for trial.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“(Pet. 6.) A claim is anticipated under 35 U.S.C. § 102 only if “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). A. CLAIM 1 Petitioner demonstrates a reasonable likelihood that it will prevail in establishing that Corazza (Ex. 1004) discloses each and every element in independent claim 1. See Pet. 7–16.” slip op. at 6
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,042,623 - PTAB · Sep 26, 2023 · IPR2023-00642 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted review of claims 1–4, 14, 15, 19–22, 24, and 25 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Beach-127 and Wiese.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We determine that, on the current record, Petitioner is reasonably likely to show that the combination of Beach-127 and Wiese teaches the window limitation. First, we agree with Petitioner that “Wiese teaches ‘a window that extends into optical communication with the sealed interior cavity.” Pet. 39. Wiese teaches “a window at the housing” of tool 1, the window transmissive to the signal—which may be optical—of a transceiver within the sealed interior of the tool. Ex. 1004 ¶ 5, 14, 15. Second, Petitioner, through its Declarant, adequately explains how one of ordinary skill in the art would have incorporated Wiese’s teachings with Beach-127, i.e., Dr. Rodger’s two example configurations. Ex. 1022 ¶¶ 132–136. The second example, in particular, reflects Wiese’s teachings, as the window is sealed and the antenna/transceiver combination is within the sealed interior of the tool. Thus, Petitioner has reasonably shown, at this stage of the proceeding, that one of ordinary skill in the art would have had a reasonable expectation of success in combining Beach-127 and Wiese. Third, Petitioner has articulated a reason why one of ordinary skill in the art would have combined Beach-127 and Wiese, and supported the articulated reason with rational underpinning. That is, according to Petitioner, one of ordinary skill in the art would have modified Beach-127’s Figure 2 embodiment with a window that extends into optical communication with the sealed interior cavity, in accordance with Wiese’s teachings, because that configuration allows downloading information without having to open the downhole assembly at surface locations, which otherwise would take time and subject the downhole assembly to damage or contamination. Pet. 38–39 (citing Wiese ¶¶ 3, 10). Petitioner further contends that using Wiese’s optical communication link to communicate between Beach-127’s transceiver and remote unit would have constituted the application of known techniques to a known device ready for improvement to obtain predictable results. Id. at 41–42.” slip op. at 29
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Although Beach-127 has previously been before the Office, the same cannot be said for Wiese. It does not appear that Wiese was identified in an IDS or considered by the Examiner during the examination of the grandparent application, the parent application, or the application that issued as the ’013 patent. Further, Wiese differs from Beach-127: whereas Beach- 127 does not expressly disclose or depict a window as part of its device, or disclose optical communication with the interior of the device, Weise does both. As noted above, Wiese describes a MWD/LWD bottom hole assembly that includes “a window at the housing, the window being transmissive to the signal of at least one transceiver of a tool having a memory in operable communication with the transceiver, such that the signal is receivable outside of the housing through the window.” Ex. 1004 ¶ 5. The signal may be optical, e.g., IR, in which case the window is “optically transmissive.” Id. ¶ 14, claim 8. This difference between Wiese and Beach-127—teaching an optically transmissive window—is material, because it addresses the sole limitation in dispute at this stage of the proceeding. Thus, although Beach-127 was considered by the Examiner, the combination of Beach-127 and Wiese was not. Moreover, for the grounds that rely on the combination of Beach-127 and Wiese, the Petition relies on Beach-127 essentially to teach the same limitations that the Examiner previously found Beach-127 to teach or suggest. See, e.g., Ex. 1011, 54–56; Pet. 22–48.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had “a bachelor’s degree in petroleum, mining, mechanical, or electrical engineering (or a closely related field), and at least two years’ experience in designing and developing electromechanical downhole tools, including working with sensors and electronics.” Pet. 10–11.7 Patent Owner does not address the level of ordinary skill in its Preliminary Response, and therefore does not oppose Petitioner’s contention. At this stage of the proceeding, we adopt Petitioner’s unopposed definition for purposes of this Decision. We also presume that the cited prior art references reflect the level of ordinary skill at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“Petitioner proposes constructions for “window” and “selectively sealed.” Pet. 11–13. Patent Owner responds that “[n]o claim construction is necessary to deny institution,” and its “arguments for denial do not hinge on the outcome of an actual controversy about construction of a claim term.” Prelim. Resp. 28. No claim term requires an express construction for us to determine whether to institute an inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Accordingly, we proceed with the understanding that each term should be accorded its plain and ordinary meaning.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,830,013 - PTAB · Sep 8, 2023 · IPR2023-00693 · APJ Cynthia L Murphy · IPR · Institution
The Board instituted IPR of claims 1–5, 9–10, 12–17, and 23–25 on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). In addition, a petition for inter partes review may be considered only if “the petitioner provides copies of any of the documents required under paragraphs (2), (3), and (4) to the patent owner or, if applicable, the designated representative of the patent owner.” 35 U.S.C. § 312(a)(5). Our rules expand on this service requirement stating that “[s]ervice may be by Priority Mail Express® or by means at least as fast and reliable as Priority Mail Express®.” 37 C.F.R. § 42.105(b).2 slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unpatentable under 35 U.S.C.§ 103(a) over Zha and POSITA’s knowledge. Pet. 2 (Ground 1). Having considered the arguments and evidence before us, 7 US 2014/0006485 A1, filed May 22, 2013, published January 2, 2014 (Tsushima, “Ex. 1010”). 8 US 9,591,083 B1, filed November 23, 2005, issued March 7, 2017 (“Gumbula,” Ex. 1011). 9 US 2012/0017236 A1, filed July 13, 2010, published January 19, 2012 (“Stafford,” Ex. 1012). 10 US 2015/0011318 A1, filed Nov. 27, 2012, published January 8, 2015 (“Takahashi,” Ex. 1007). we determine that the record establishes a reasonable likelihood that the Petitioner would prevail on this asserted ground of patentability.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that “[a] person of ordinary skill in the art (‘POSITA’) at the time of the alleged invention of the ’376 patent would have a bachelor’s degree in electrical or computer engineering or computer science or a comparable field of study, plus approximately two years of professional experience in the field of computer and/or network design and security or other relevant industry experience.” Pet. 5. For the purposes of this proceeding, we adopt Petitioner’s definition of the level of ordinary skill in the art, which is consistent with the ’376 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits that, for the purposes of institution, “[t]erms should be given their plain meaning.” Pet. 5. We determine that at the present time, no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,064,376 - PTAB · Jul 10, 2023 · IPR2023-00474 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1, 2, 5, 7, 8, 12-15, 18, 19, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Zhou.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Prelim. Resp. 5–12; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation”4 (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because 4 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Petitioner has offered a stipulation like in Sotera, i.e., “[to] not pursue in the Litigation the Grounds asserted herein or any other grounds that reasonably could have been raised in this IPR” (Pet. 91), we do not discretionarily deny institution under Fintiv, for the reasons set forth in the Director’s Memo.” slip op. at 7
- Parallel petitionsDecided for petitioner
“Petitions. Prelim. Resp. 2–5. Petitioner filed two Petitions challenging the ’583 patent and, as required in our Consolidated Trial Practice Guide (Nov. 2019)5 (“CTPG”), submitted an explanation of why two petitions were necessary. Paper 2. According to the Consolidated Trial Practice Guide, “the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” CTPG 59. It also states that “the patent owner may seek to avoid additional petitions by proffering a stipulation that certain . . . references qualify as prior art.” Id. at 61. We have a dispute over the priority date of the ’583 patent as it relates to the Wang reference in IPR2023-00473. This issue is not present here. Therefore, we have a situation recognized by the Consolidated Trial Practice Guide where multiple petitions are permitted. Accordingly, we do not discretionarily deny institution based on multiple petitions.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Conclusion for Zhou Anticipation Ground Reviewing the Petition and the Preliminary Response, we find that Petitioner has sufficiently identified where Zhou discloses each limitation of claim 1. Accordingly, we determine that Petitioner has established a reasonable likelihood of showing that claim 1 is anticipated. E. Alleged Obviousness in View of Zhou, Bannister, Gentry, and Durfee” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSA with respect to the ’583 patent would have been an individual educated in mechanical engineering with a bachelor’s degree and at least one or two years of experience in the development of drill bits, or an associate’s degree and at least five years of experience in the development of drill bits. A POSA would typically work in a team with machinists and would be aware of developments in the field of machine tools, particularly drill bits, for example by attending trade shows, and by reading patents and trade journals. Pet. 25 (internal citations omitted); see also Ex. 1004 ¶ 14. Patent Owner does not appear to challenge this proposed level of skill or offer its own. We adopt Petitioner’s definition for purposes of this Decision, which appears consistent with the ’583 patent and prior art.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,007,583 - PTAB · Jul 10, 2023 · IPR2023-00473 · APJ William V Saindon · IPR · Institution
Instituted IPR on claims 1, 2, 5, 7, 8, 12–15, 18, 19, and 22 on all asserted grounds; petitioner showed a reasonable likelihood that claim 1 was obvious over Wang, Gentry, and Durfee.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Prelim. Resp. 5–12; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation”4 (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like in Sotera, i.e., “to not pursue in the Litigation the Grounds asserted herein or any other grounds that reasonably 4 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. could have been raised in this IPR” (Pet. 87), we do not discretionarily deny institution under Fintiv.” slip op. at 7
- Parallel petitionsDecided for petitioner
“multiple petitions. Prelim. Resp. 2–5. Petitioner filed two Petitions challenging the ’583 patent and, as required in our Consolidated Trial Practice Guide (Nov. 2019)5 (“CTPG”), submitted an explanation of why two petitions were necessary. Paper 3. According to the Consolidated Trial Practice Guide, “the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” CTPG 59. It also states that “the patent owner may seek to avoid additional petitions by proffering a stipulation that . . . certain references qualify as prior art.” Id. at 61. Here, we have a dispute over the priority date of the ’583 patent as it relates to the Wang reference. This issue is not present in IPR2023-00474. Therefore, we have a situation recognized by the Consolidated Trial Practice Guide where multiple petitions are permitted. Accordingly, we do not discretionarily deny institution based on multiple petitions. 5 Available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=Tri alPracticeGuideConsolidated.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“’583 patent can claim priority to Wang’s application, and thus consider Wang prior art for the purposes of determining whether Petitioner has met its burden on institution. Patent Owner presents no other substantive arguments against the Wang ground. After review of Petitioner’s evidence and analysis, on this record, we determine that Petitioner has sufficiently shown that a person of ordinary skill in the art would have considered it obvious to modify Wang to have non-perpendicular cutting blades, such as shown in Gentry and Durfee, to provide the known benefits of axial relief. Thus, reviewing the Petition and Preliminary Response, as well as the evidence cited therein, we are persuaded that Petitioner has established a reasonable likelihood that claim 1 of the ’583 patent would have been obvious in view of Wang, Gentry, and Durfee.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner does not offer a position on claim construction. We apply the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips, 415 F.3d at 1312–13. We adopt Petitioner’s construction for purposes of this Decision, based on the visual disclosure in Figure 3 of the ’583 patent and the paucity of any further description. Specifically, we construe “spirally” formed cutting blades to be cutting blades that are not perpendicular to the drill bit’s rotational axis, which would include a cutting blade with axial relief.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,007,583 - PTAB · Mar 23, 2023 · PGR2022-00058 · APJ Benjamin D M Wood · PGR · Institution
The Board instituted PGR on claims 1–17 on all asserted grounds, finding it more likely than not that claim 1 is unpatentable under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence), the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), the Preliminary Reply, and the Preliminary Sur-reply, we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute post-grant review on all” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of skill in the art at this stage of the proceeding. See Prelim. Resp. 18 (“[f]or purposes of this Preliminary Response only, Patent Owner uses Petitioner’s proposed level of skill in the art.”). We discern no reason, at this stage of the proceeding, to question Petitioner’s proposed level of ordinary skill, which is supported by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- BurdenDecided for petitioner
“Section 42.6(a)(3) states that “[a]rguments must not be incorporated by reference from one document into another document.” The purpose of this rule to prevent a party from circumventing page limits and to conserve Board resources. See Cisco, 10 (“incorporation by reference of numerous arguments from Dr. Roy’s 250-page Declaration into the Petition serves to circumvent the page limits imposed on petitions for inter partes review, while imposing on our time by asking us to sift through over 250 pages of Dr. Roy’s Declaration . . . to locate the specific arguments corresponding to the numerous paragraphs cited to support Petitioner’s assertions.”). Patent Owner does not identify specific arguments in Mr. Plunkett’s declaration that are not in the Petition, or specific conclusory statements within the Petition that are overly reliant on the Plunkett Declaration. Nor have we found any improper incorporation in the course of our own review. Accordingly, we are not persuaded that we should ignore any portion of the Plunkett Declaration on this basis.” slip op. at 28
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Claim terms using the word “means” are presumed to invoke § 112(f), and terms without the word “means” are presumed not to invoke this subsection. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Because “server gateway” does not include the word “means,” it is presumed not to be a means-plus-function claim term under § 112(f). This presumption can be rebutted, however, by demonstrating that the term fails to “recite sufficiently definite structure,” or recites “function without reciting sufficient structure for performing that function.” Id. at 1349 (internal quotation marks omitted). It is Patent Owner’s burden to produce sufficient evidence to overcome this presumption. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1367 (Fed. Cir. 2022) (“From a procedural standpoint, this presumption imposes on the party challenging the presumption the burden of going forward with evidence . . . that a person of ordinary skill in the art believes the term does not recite sufficiently definite structure.”) (internal citation, quotation marks, and alterations omitted). There does not appear to be a dispute, at this stage of the proceeding, that “server gateway” denotes at least some structure to persons of ordinary skill: a server connecting a game user computational device and a blockchain. Thus, we are not persuaded, on the current record, that “server gateway” is a “generic term[] or black box recitation[] of structure or abstractions.” MTD Prods. v. Iancu, 933 F.3d 1336, 1341 (Fed. Cir. 2019). Patent Owner nonetheless argues that although the term may recite some structure, the recited structure is insufficient to perform “the recited functions,” which Patent Owner asserts are: (1) “operating a blockchain” slip op. at 14
Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Phillips · KSR · GrahamPatents in suitUS 11,189,131
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.