- Epic Games, Inc. v. Ingenioshare, LLCInstitutedPTAB · Jun 7, 2022 · IPR2022-00295 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 7–12, 22–24, and 33–67 on all petitioned grounds, finding a reasonable likelihood of success on the § 103(a) combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Mar. 20, 2020) (precedential) (“Fintiv”), Patent Owner argues that we should exercise our discretion under § 314(a) to deny institution in light of the Texas case where Patent Owner has asserted the ’038 patent and other patents against Petitioner. See Prelim. Resp. 7–12; supra § II.B.” slip op. at 16
- Parallel petitionsDecided for petitioner
“Under the circumstances here, two petitions challenging claims in the ’038 patent will not place a substantial and unnecessary burden on the Board or Patent Owner. In IPR2022-00202, the Board will consider challenges to related U.S. Patent No. 10,142,810 B2 based on Diacakis and alternatively the Tanigawa-Hullfish combination. See Epic Games, Inc. v. IngenioShare, LLC, IPR2022-00202, Paper 9 (PTAB May 23, 2022) (granting institution of inter partes review); supra § II.B. In IPR2022-00291, the Board will similarly consider challenges to related U.S. Patent No. 10,708,727 B2 based on Diacakis and alternatively the Tanigawa-Hullfish combination. See Epic Games, Inc. v. IngenioShare, LLC, IPR2022-00291, Paper 10 (PTAB May 24, 2022) (granting institution of inter partes review); supra § II.B. Thus, in other proceedings the Board will consider and become familiar with Diacakis, Tanigawa, and Hullfish and the relevance of those references to claims in related patents.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. Petitioner also asserts that “[a]dditional education might 5 The record does not include evidence concerning objective indicia of nonobviousness. compensate for less experience, and vice-versa.” Id. Dr. Almeroth’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 92–97. At this stage of the proceeding, Patent Owner does not address the educational level or work experience of a person of ordinary skill in the art. See, e.g., Prelim. Resp. 1–7, 12–16. Based on the current record and for purposes of institution, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’038 patent and the asserted prior art.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,492,038 - Epic Games, Inc. v. Ingenioshare, LLCInstitution deniedPTAB · May 26, 2022 · IPR2022-00297 · APJ Joni Y Chang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 2, 5, 7, 53, 54, 56, 57, and 59 obvious over Furlong or Diacakis.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the challenged claims. We hereby decline to institute an inter partes review in this proceeding.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Each of these claims does not reintroduce the term “message” in the body of the claim but instead relies on the instance of “message” introduced in the preamble for antecedent basis. Notably, the first reference to “message” in the body of claim 1 (Element 1.1) appears in a limitation (“receiving, by the server, the message from the person using the first device”), describing a positive step in the claimed “method.” Similarly, the first reference to “message” in the body of claim 53 (Element 53.3) appears in a limitation (“wherein the at least one computing device [of the server] is configured to receive the message from the person using the first device”), describing a structural feature (“computing device”) of the claimed “server.” As Patent Owner notes, the “message” recited in each of Elements 1.1 and 53.3 refers back to the phrase “a person, using a first device, trying to 8 electronically convey a message from the first device to a second device” recited in the preambles. Prelim. Resp. 1−2, 10. Because claims 1 and 53 require the server (or the computing device in the server) to “receive the message from the person using the first device,” the phrase “a person, using a first device, trying to electronically convey a message from the first device to a second device of the user” in the preambles of these claims is essential to understanding the limitations in these claims, not merely reciting an intended purpose of the claimed invention. This “indicates a reliance on both the preamble and claim body to define the claimed invention.” Catalina, 289 F.3d at 808; Bell Commc’ns Research, 55 F.3d at 620; Shoes by Firebug, 962 F.3d at 1368. Therefore, the phrase “a person, using a first device, trying to electronically convey a message from the first device to a second device of the user” in each of the preambles of claims 1 and 53 is limiting.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Notably, neither the authenticated session with PLAS 15, nor the request from the third-party application (steps 500 and 502), is the “message” the person is trying to convey to the device of the user, as required by Element 53.3. Significantly, Furlong discloses that, after PLAS 15 notifies the third-party application of the subscriber’s availability (step 512), “the application sends the message to the subscriber (step 514)” directly, not via the server, PLAS 15. Ex. 1007 ¶ 94 (emphasis added), Fig. 5. Thus, PLAS 15 in Furlong does not receive the message the third-party application (person) is trying to convey to the device of the subscriber (user).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Here, Petitioner asserts that a person of ordinary skill in the art of the ’407 patent would have had “a Bachelor’s degree in Computer Science, or equivalent field and three to five years of experience working with Internet communication systems.” Pet. 23 (citing Ex. 1003 ¶¶ 67−72). At this juncture, Patent Owner does not proffer any assessment regarding the knowledge of an ordinarily skilled artisan. 2 At this time, the parties do not address objective indicia of nonobviousness, which accordingly do not form part of our analysis. See Pet. 75 (“Petitioner is unaware of any evidence of secondary considerations that would support a finding of non-obviousness.”). 10 For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’407 patent, prior art of record, and supported by the testimony of Dr. Kevin Almeroth.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,744,407 - Epic Games, Inc. v. Ingenioshare, LLCInstitutedPTAB · May 24, 2022 · IPR2022-00291 · APJ Patrick M Boucher · IPR · Institution
The Board instituted IPR on claims 1–9 and 15–17 on all asserted § 103 grounds, finding a reasonable likelihood that Epic would prevail on at least one challenged claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation, and Patent Owner does not, at this time, propose any different articulation. See Ex. 1003 ¶¶ 92–97. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2021); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Although “Petitioner does not believe that any terms need to be construed to assess the arguments presented” in its Petition, Patent Owner raises an issue with respect to the challenged claims’ recitation of a “network-based portal.” See Pet. 25; Prelim. Resp. 15–16. In particular, Patent Owner contends that “[t]he specification of the ’727 Patent uses the term ‘network-based portal’ consistently as being at the server-side of a network.” Prelim. Resp. 15. Patent Owner supports its contention by identifying examples where the specification of the ’727 patent describes a “portal” as separate from a “mobile phone” or from a person’s “wireless device.” Id. at 15–16 (citing Ex. 1001, 6:12–13, 6:32–33, 6:55–63, 16:1–3). But the specification also includes numerous examples where the portal functionality is implemented in a “mobile phone,” i.e., a client-side device. See Ex. 1001, 3:10–19, 9:3– 10:2, 10:17–13:27, 14:64–15:54, Figs. 7–11. For example, the specification explains that a “mobile communication device,” such as a “mobile telephone,” may perform steps depicted in Figures 7 through 11. See id. at 9:4–8, 10:17–28, 11:60–12:5, 13:1–9, 14:7–13, 14:66–67, 15:44–46; see also id. at 14:36–38 (identifying a “mobile telephone” as an example of a “mobile communication device), 17:53–55 (same). And Patent Owner categorizes a “mobile phone” as a client-side device. See Prelim. Resp. 16– 22. To adopt Patent Owner’s exclusion of client-side functionality from the scope of the recited “network-based portal” would thus exclude preferred embodiments. See PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016). Accordingly, for purposes of this Decision, we decline to adopt such an exclusion. The parties will have an opportunity to elaborate on their positions for proper construction of “network-based portal” during the trial. On the record before us, we do not find it necessary to construe any other term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Among such reasons, Petitioner identifies both references’ teachings regarding prioritization of communications from certain individuals, as well as the similarity of Diacakis’s “presence and availability” information with Loveland’s “current circumstance” information. Id. at 53–56 (citing Ex. 1007 ¶¶ 8, 24; Ex. 1008, 3:45–5:24, Figs. 1–2). Petitioner supports this identification with testimony by Dr. Almeroth, who also supports Petitioner’s contention that the combination would both yield predictable results and be reasonably expected to succeed. Ex. 1003 ¶¶ 152–161; Pet. 54–57. At this time, Patent Owner disputes neither Petitioner’s reasoning to effect the combination nor Petitioner’s specific analysis of the individual limitations of claims 7–9. On the current record, and mindful of the standard that applies during this preliminary phase of the proceeding, we find that Petitioner’s reasoning is sufficiently supported by rational underpinning.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for petitioner
“discretion under 35 U.S.C. § 314(a) to deny the Petition in light of the state of the related litigation. Prelim. Resp. 9–14 (citing, inter alia, NHK Spring Co., Ltd. v. Intri-plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)). But on the same date Patent Owner filed its Preliminary Response, the district court granted Petitioner’s motion to dismiss for improper venue, thereby terminating the related litigation. See Ex. 3001, 9. We agree with Petitioner that “this dismissal moots Patent Owner’s arguments based on Fintiv” and that “[b]ecause there is no longer any parallel proceeding, there is no basis for a discretionary denial under § 314(a).”4 Reply 1. We accordingly decline to exercise our discretionary authority to deny the Petition.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,708,727 - PTAB · May 24, 2022 · IPR2022-00669 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–30 under all six §103 grounds and granted T-Mobile’s motion to join IPR2021-01552.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the petition and any 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.” As elaborated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim, and we institute an inter partes review as to the challenged claims and grounds raised in the Petition. We also grant the Joinder Motion.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We are persuaded by Petitioner’s arguments. Because the Petition challenges the same claims on the same grounds using the same prior art, Kyocera factor (2) favors joinder. See Kyocera, IPR2013-00004, Paper 15 at 4. Indeed, the Board “routinely grants motions for joinder where the party seeking joinder introduces identical arguments and the same grounds raised in the existing proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Company, IPR2016-00962, Paper 12 at 9 (PTAB Aug. 24, 2016).” slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner states, “[n]o claim term requires express construction.” Pet. 11. Patent Owner states that it “considered the plain and ordinary meaning of each term of the ’196 patent as it would have been understood by one skilled in the art as of October 23, 2001.” Prelim. Resp. 3–4. For purposes of this Decision, we do not construe any claim terms.” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,918,196 - Google LLC v. Defenders Of The American Dream, LLCInstitution deniedPTAB · May 18, 2022 · IPR2022-00112 · APJ Aaron W Moore · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–17 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because Petitioner has not sufficiently shown that Silva discloses “an image recognition task [that] comprises an instruction to select one image corresponding to the selected image category from the matrix of non-overlapping randomly selected images,” we find that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that claims 1–17 would have been obvious in view of Silva, either alone or in combination with Osborn or Osborn and Pinkas.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science or a related field with coursework relating to computer science, plus two years’ academic and/or industry experience in computer security and/or artificial intelligence” and that “[m]ore education could substitute for experience, and vice versa.” Pet. 6 (citing Ex. 1003 ¶¶ 34–39). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, and because we find it generally consistent with the disclosures of the ’578 patent and the prior art, we adopt it for purposes of this analysis. C.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Construction Petitioner asserts that it interprets the claims “using the standard used in civil actions under 35 U.S.C. § 282(b), in accordance with the ordinary and customary meaning as understood by a POSA and the patent’s prosecution history,” but does not identify any constructions. Pet. 6. Patent Owner does not address claim construction in the Preliminary Response. Under these circumstances, we find that we need not engage in formal claim construction, although we do address some claim language in the course of the obviousness analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). D.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“Moreover, the prosecution history removes any doubt about whether these claims are limited to an instruction to select only one image. As explained above, the applicant changed “an instruction to select an image” to “an instruction to select one image” in response to a rejection in which the Examiner was relying on the Pratte reference for the instruction. See Ex. 1002, 404, 427. The applicant then argued that Pratte failed to teach the “image recognition task” because “Pratte does not instruct a user to select ‘one image,’ but instead ‘instructs a user to select all images that are associated with animals.’” Id. at 435. We conclude that the amendment and associated argument evidence a clear and unmistakable narrowing of the claims to systems with instructions to select one image corresponding to the category, and excluding systems, like Pratte, in which the user is instructed to select all images associated with a category. See Genuine Enabling Tech. LLC v. Nintendo Co., Ltd., 29 F.4th 1365, 1374 (Fed. Cir. 2022) (explaining that “for a statement during prosecution to qualify as a disavowal of claim scope, it must be ‘so clear as to show reasonable clarity and deliberateness’ and ‘so unmistakable as to be unambiguous evidence of disclaimer’”) (quoting Omega Engr., Inc, v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003)); see, e.g., SpeedTrack, Inc. v. Amazon.com, 998 F.3d 1373, 1379 (Fed. Cir. 2021) (limiting claims where “the applicants argued that [the prior art] had a ‘hierarchical’ relationship between fields and values that fell outside the scope of the amended claims”). The disclaimer arises even though the applicant made other arguments in the same response. See SpeedTrack, 998 F.3d at 1380. Silva, like Pratte, instructs the user to select all images that fall into a category––see Ex. 1005, 1325 (“The user is then asked to identify, from each column available in the test, which image relates to the label.”)––and thus does not meet the claim language requiring an instruction to select “one” image. Notably, this problem cannot be cured by mapping the claimed “matrix” to a single column of Silva, because the claims also require that the “matrix” comprise at least one of each of the three categories of images, and Silva has three columns that are a mix of images known to be in the category and known to not be in the category, and a fourth column that consists of entirely unknown images. See Ex. 1005, 1325 (“One special column will contain all those images whose relation to the current label we want to verify, while all the others contain the remaining images whose relation to the label the system is confident about, i.e. they certainly do or do not relate to the label.”).” slip op. at 25
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,621,578 - Microsoft Corp. v. Parus Holdings, Inc.Institution deniedPTAB · May 11, 2022 · IPR2022-00137 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 or 2 were obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We accordingly determine that Petitioner fails adequately to support its contention that the combination of Perrone, Kumar, and Madnick meet claim 1’s requirement for “a rank number assigned to each one of said web sites and stored in said database.” See Ex. 1001, 19:56–57. We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Perrone, Kumar, and Madnick.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“Petitioner seeks to fill the resulting gap by contending that a person of ordinary skill in the art “would have understood Kumar’s ranking teachings would have been appropriately applied to distinct web sites when the web sites each represent a satisfactory source for desired information.” Id. at 24. Petitioner advances this contention notwithstanding the fact that Perrone fails to disclose a database containing a list with multiple web sites, and notwithstanding the fact that Kumar fails to disclose distinct web sites. Petitioner’s gap-filling contention thus seeks to compensate for what is absent from the references themselves. But “[t]o draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)). “The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made.” Id. (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)). Petitioner’s additional citation of Anycasting fares no better. Notably, Petitioner does not rely directly on Anycasting as part of its patentability challenge. Instead, Petitioner cites Anycasting to support its gap-filling argument, specifically for the proposition that “distinct web sites may be considered equivalent sources of particular information (‘replicated servers’) for desired information, such as news.” Pet. 24. In doing so, Petitioner relies on Anycasting’s statement that “whereas the many web news sites (e.g., CNN Interactive, Time Magazine and USA Today) carry different information, they, nevertheless, can be construed as being replicated servers for some applications.” Ex. 1008, 1390 (emphasis added).3 Petitioner does not specifically address the limited applications for which this statement might apply. Regardless, Anycasting’s statement falls far short of supporting a general equivalence of replicated servers and distinct web sites 3 Petitioner’s citation to page 1392 appears to be a typographical error. that would thereby render inconsequential Kumar’s silence on distinct web sites. See Prelim. Resp. 31 (“Anycasting fails to remedy Kumar’s failure to disclose the ranking of multiple, distinct web sites.”).” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, Computer Science, or equivalent degree, with at least two years of experience in interactive voice response systems, automated information retrieval systems, or related technologies, such as web-based information retrieval systems.” Pet. 4. Petitioner adds that “[a]dditional education may substitute for lesser work experience and vice-versa.” Id. Dr. Terveen supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1003 ¶¶ 25–28. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Terveen, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner does not believe any claim language requires express construction” to resolve its challenges, nor does Patent Owner propose any express construction of any claim term. See Pet. 6. On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,721,705 - Solaredge Technologies Ltd. v. Koolbridge Solar, Inc.Institution deniedPTAB · Apr 19, 2022 · IPR2022-00009 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution of IPR on claims 1–13 and 20, exercising discretion to entertain the preferred parallel petition instead.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“We decline Petitioner’s invitation to provide advisory opinions by entertaining different Petitions advancing alternative claim constructions. As Petitioner has expressed its preference for Petition 1, which cites Tracy as the primary reference, we exercise our discretion to entertain Petition 1. We decline to institute inter partes review based on Petitions 2 and 3.” slip op. at 13
Discretionary denialPatents in suitUS 8,937,822 - Solaredge Technologies Ltd. v. Koolbridge Solar, Inc.Institution deniedPTAB · Apr 19, 2022 · IPR2022-00008 · APJ Brian J Mcnamara · IPR · Institution
The Board declined to institute IPR on claims 1–13 and 20, exercising its discretion because Petitioner’s multiple petitions did not justify reviewing this petition.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“As to the Group 1 claims, we agree with Patent Owner. The instant Petition contends that Mori anticipates challenged claims 1–3, 8–10, and 12 and that all the challenged claims are at least obvious. For example, Petition 1 asserts that Tracy anticipates claims 1–3 and 8–10 and that all the claims are obvious. Petition 3 asserts that Schmidt anticipates claims 1–3 and 8–10 and that all the claims are obvious. Petitioner contends that the question of which of the Petitions is most paramount could also depend upon the constructions applied to the claims, particularly if the claims are construed to include means-plus-function limitations. Ranking 3. As an example, Petitioner argues that, if independent claim 8 is construed “to allow for the single-phase output and control scheme of the Fig. 15 inverter, Schmidt (Petition 3) provides the most straightforward teaching of the claim 8 ‘sequence.’ But if claim 8 requires multiple phases and in Fig. 16, Tracy (Petition 1) would be the only reference to address this construction.” Id. We decline Petitioner’s invitation to provide advisory opinions by entertaining different Petitions advancing alternative claim constructions. As Petitioner has expressed its preference for Petition 1, which cites Tracy We decline to institute inter partes review based on Petitions 2 and 3.” slip op. at 12
Discretionary denialPatents in suitUS 8,937,822 - Solaredge Technologies Ltd. v. Koolbridge Solar, Inc.Institution deniedPTAB · Apr 19, 2022 · IPR2022-00012 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claims 14–19 under § 314(a), finding the petition insufficiently different from the earlier-ranked petition instituting review of those claims.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“[A]bsent exceptional circumstances, only one petition should be filed against a single patent.” See Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357 et. al. Paper 19 (discretionary factors re: multiple petitions); Valve Corp v. Elec. Scripting Prods., Inc., IPR2019-00062, 00063, -00084, Paper 11 (deny institution – General Plastic factors apply to different Petitioner); Valve Corp v. Elec. Scripting Prods. Inc., IPR2019- 00064, -00065,-00085, Paper 10 (deny institution – General Plastic factor 1 applies to joint Petitioner), Comcast Cable Comm. LLC v. Rovi Guides, Inc., IPR2019-00279 – IPR2019-00283 (July 1, 2019, Paper 10); Comcast Cable Comm. LLC v. Rovi Technologies Corp., IPR2019-00285– IPR2019-00289 (June 10, 2019, Paper 15). As discussed, Petitioner requests that we consider the IPR2022-00010 petition before considering this Petition. Pet. Ranking 1. In the instant Petition, there is no showing that the circumstance of the Petition is consistent with an exception referenced in the Trial Practice Guide (such as whether the patent owner has asserted a large number of claims in litigation or whether there is a dispute about priority date) (see CTPG, 59), which requires additional arguments to be made regarding other prior art references. See Pet. Ranking 1–5. Thus, the instant Petition does not contain sufficiently material differences to support instituting yet an additional inter partes review of the ’822 patent. slip op. at 9
Discretionary denialPatents in suitUS 8,937,822 - Solaredge Technologies Ltd. v. Koolbridge Solar, Inc.Institution deniedPTAB · Apr 19, 2022 · IPR2022-00011 · APJ Thu A Dang · IPR · Institution
The Board denied institution of IPR on claims 14–19 under § 314(a), finding the petition insufficiently different from the instituted parallel petition challenging the same claims.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“petition before considering this Petition. Pet. Ranking 1. In the instant Petition, there is no showing that the circumstance of the Petition is consistent with an exception referenced in the Trial Practice Guide (such as whether the patent owner has asserted a large number of claims in litigation or whether there is a dispute about priority date) (see CTPG, 59), which requires additional arguments to be made regarding other prior art references. See Pet. Ranking 1–5. Thus, the instant Petition does not contain sufficiently material differences to support instituting yet an additional inter partes review of the ’822 patent. Here, the same claims 14–19 are challenged in all three IPR proceedings in Group 2. See Pet. Ranking 1. Petitioner was able to address all of claims 14–19 of the ’822 patent in each of its Petitions in Group 2. Since we institute on all of the challenged claims and all asserted grounds in IPR2022-00010, none of claims 14–19 of the ’822 patent goes unchallenged. Hence, in accordance with Petitioner’s ranking, we first considered the Petition and Patent Owner’s Preliminary Response in IPR2022-00010, and institute on all of the challenged claims and grounds set forth in IPR2022-00010. Because the instant Petition does not contain sufficiently material differences to support instituting an additional inter partes review of the ’822 patent, we exercise our discretion under § 314(a) to deny institution of review in the instant proceeding.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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 (2018); see also 37 C.F.R. § 42.4 (2019). For the reasons stated below, we exercise our discretion under § 314(a) and deny institution of inter partes review in the instant proceeding.” slip op. at 2
Discretionary denialPatents in suitUS 8,937,822
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.