- PTAB · Oct 8, 2024 · IPR2024-00432 · APJ Frederick C Laney · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that Comcast would show at least one claim unpatentable over Zhang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 12
- Parallel petitionsDenied
“petitions, Petitioner filed a Petition Ranking and Explanation of Material Differences Between Petitions, ranking its three petitions directed to the ’362 patent in accordance with the guidance with respect to parallel petitions in the Board’s November 2019 Consolidated Trial Practice Guide. Paper 3; see Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019, “CTPG”), at 59–60 (available at Available at https://www.uspto.gov/ TrialPracticeGuideConsolidated). In that Paper, Petitioner ranked the instant Petition first. Paper 3, 1.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA” or “skilled artisan”) “would have had a degree in electrical engineering or a similar discipline, along with three-to-four years of experience with digital signal processing and RF tuning systems for satellite and/or cable communications,” and that “[a]dditional education may substitute for professional experience, and significant work experience may substitute for 8 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. See generally Prelim. Resp. formal education.” Pet. 20 (citing Ex. 1002 ¶¶ 30–32). Patent Owner does not address level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. 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 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Construction We apply the same claim construction standard used in district court actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2021). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been 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). Petitioner states that “[a]ll claim terms herein should be given their” slip op. at 13
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 9,210,362 - PTAB · Oct 4, 2024 · IPR2024-00438 · APJ Michelle N Wormmeester · IPR · Institution
Instituted IPR on claims 1–76 and all asserted challenges because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. See Prelim. Resp. 4–30. As discussed above, Petitioner has complied with our guidance. See CTPG 59–60. For reasons given in our concurrent decisions denying institution in IPR2024-00439 and IPR2024-00440, however, we agree with Patent Owner that plural petitions are not warranted and we deny institution in the concurrently filed decisions for these petitions. Given our decisions to deny institution in IPR2024-00439 and IPR2024-00440, Patent Owner’s arguments on the need for more than one petition are unavailing with regard to the instant Petition. In view of the foregoing, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314(a) in this proceeding.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), 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.” For the reasons that follow, we institute an inter partes review as to all the challenged claims of the ’206 patent based on all the challenges raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[a]ll claim terms herein should be given their ordinary and customary meaning to a POSITA, as they would be given in a civil action under 35 U.S.C. § 282(b),” where POSITA stands for “person of ordinary skill in the art.” Pet. 18. Petitioner further notes that “the ’206 patent defines ‘wideband’ as a band that carries multiple channels.” Id. at 18–19 (citing Ex. 1001, 1:36–39). Patent Owner does not respond. At this stage, on the record before us, we determine that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on Petitioner’s arguments and evidence, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that Zhang teaches the recited “digitizing” step of element 1C. For example, Zhang teaches that its ADC 220 “converts the down-converted multi-channel analog RF signal to a multi-channel digital RF signal.” Ex. 1013 ¶ 27 (cited by Pet. 22). Zhang explains that “many modifications, variations, alternatives, and equivalents . . . are intended to be within the scope of [its] invention,” and gives the example that “the RF channels need not be contiguous.” Id. ¶ 48 (cited by Pet. 22). We agree with Petitioner that Zhang’s example teaches or suggests that the RF channels may be contiguous. Zhang further describes “demultiplex[ing] the multi-channel digital RF signal into separate digital RF channels C1 to Cn,” which “contain content channels that are selected or used by a subscriber.” Id. ¶ 28 (cited by Pet. 22). Zhang describes filtering the RF channels so that “only the target RF channel passes.” Id. ¶ 32 (cited by Pet. 23). In addition, Zhang describes “select[ing] one or more of the RF channels D1 to Dm from one or more of the digital RF channels C1 to Cn,” where “only the selected channels are later demodulated unlike the systems using RF tuners which demodulate all of the RF channels.” Id. ¶ 28.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,399,206 - PTAB · Oct 1, 2024 · IPR2024-00435 · APJ Lynne H Browne · IPR · Institution
The Board instituted review of claims 1–82 on all grounds, finding a reasonable likelihood that Comcast would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “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). For the reasons discussed below, we determine, based on the record before us, that there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request for us to exercise our discretion to deny institution in this proceeding based on Petitioner’s filing of two additional parallel petitions challenging the same claims. We therefore institute inter partes review on all claims and all grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357 (2018).” slip op. at 2
- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. See Prelim. Resp. 4–30. As discussed above, Petitioner has complied with our guidance. See CTPG, 59–60. For reasons discussed in our concurrent Decisions Denying Institution in IPR2024-00436 and IPR2024-00437, however, we agree with Patent Owner that plural petitions are not warranted and we deny institution in the concurrently filed Decisions for these petitions. Given our Decisions to Deny Institution in IPR2024-00436 and IPR2024-00437, Patent Owner’s arguments regarding the need for more than one petition are unavailing with regard to the instant Petition.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) “would have had a degree in electrical engineering, or a similar discipline, along with three-to-four years of experience with digital signal processing and RF tuning systems for satellite and/or cable communications,” and that 6 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. See generally Prelim. Resp. “[a]dditional education may substitute for professional experience, and significant work experience may substitute for formal education.” Pet. 15– 16 (citing Ex. 1002 ¶¶ 30–32). Patent Owner does not address level of ordinary skill in the art. See generally, Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. 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 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “[a]ll claim terms herein should be given their ordinary and customary meaning to a POSITA as they would be given in a civil action under 35 U.S.C. § 282(b).” Pet. 16. Yet, Petitioner proposes claim construction for “wideband” and “digital down converter” / “digital front end.” Id. at 16–19. Patent Owner does not address claim construction. See generally, Prelim. Resp. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., 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 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,381,866 - PTAB · Sep 13, 2024 · IPR2024-00619 · APJ Andrew L Nalven · IPR · Institution
Instituted IPR of claims 1–8 on all asserted grounds; the Board found compelling evidence that claims 1 and 6 would have been obvious over Yu and Acharya.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs slightly against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5, overall, favors exercising our discretion to deny institution of an inter partes review. The sixth Fintiv factor takes into account other circumstances that may bear on the decision to exercise discretion to deny, such as the merits of the patentability challenges. Fintiv, Paper 11 at 14–16. Under this factor, if we determine that the other Fintiv factors favor discretionary denial, as we do here, we must also consider whether the Petition presents compelling merits. CommScope, Paper 23 at 5. As discussed above, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo at 4. Accordingly, we first discuss the merits of the Petition. We then discuss our conclusion that the merits are compelling.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), 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.” For the reasons that follow, we institute an inter partes review.” slip op. at 2
- BurdenOther
“we agree with Petitioner that the Petition sufficiently provides notice to Patent Owner of the basis of the challenge. As noted above, the Petition sets forth the evidence necessary to establish that Acharya is prior art under section 102(a)(2) by noting that Acharya’s application was filed before the earliest priority date of the ’383 patent. Pet. 5 (“[T]he earliest priority date of the ’383 patent is March 28, 2013 . . . Acharya . . . was filed on October 5, 2011 and published on April 11, 2013.”). This information is relevant only to an assertion of prior art under § 102(a)(2), not § 102(a)(1). The Petition further includes argument, with citations to the prior art and evidence, as to how the prior art renders each challenged claim unpatentable. Pet. 25–70. Patent Owner does not dispute that Acharya is prior art under 35 U.S.C. § 102(a)(2), nor does Patent Owner assert that the Petition failed to set forth with particularity how the challenged ground addresses each claim element. See generally Sur-Reply. Based on the evidence presented in the Petition (Pet. 5, 25–70), we determine that the Petition sufficiently articulates, with particularity, the evidence that supports the grounds for the challenge to each claim.” slip op. at 24
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“application on April 11, 2013. Ex. 1004, codes (22), (43). The ’383 patent issued on August 7, 2018, and the earliest claimed priority date for the ’383 patent is March 28, 2013. Ex. 1001, codes (45), (63), (30). Thus, Acharya qualifies as prior art under § 102(a)(2) because it was filed on October 5, 2011, and thus was “effectively filed before the effective filing date” of the ’383 patent. Despite the Petitioner’s citation to the wrong sub-part of section 102, we agree with Petitioner that the Petition sufficiently provides notice to Patent Owner of the basis of the challenge. As noted above, the Petition sets forth the evidence necessary to establish that Acharya is prior art under section 102(a)(2) by noting that Acharya’s application was filed before the earliest priority date of the ’383 patent. Pet. 5 (“[T]he earliest priority date of the ’383 patent is March 28, 2013 . . . Acharya . . . was filed on October 5, 2011 and published on April 11, 2013.”). This information is relevant only to an assertion of prior art under § 102(a)(2), not § 102(a)(1). The Petition further includes argument, with citations to the prior art and evidence, as to how the prior art renders each challenged claim unpatentable. Pet. 25–70. Patent Owner does not dispute that Acharya is prior art under 35 U.S.C. § 102(a)(2), nor does Patent Owner assert that the Petition failed to set forth with particularity how the challenged ground addresses each claim element. See generally Sur-Reply. Based on the evidence presented in the Petition (Pet. 5, 25–70), we determine that the Petition sufficiently articulates, with particularity, the evidence that supports the grounds for the challenge to each claim.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,045,383 - Medit Corporation v. 3shape A/SInstitutedPTAB · Mar 28, 2024 · IPR2023-01315 · APJ James J Mayberry · IPR · Institution
The Board instituted review of claims 1, 2, 4, 5, 9, 10, and 12–17 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, we interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe 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.” Id.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundInstituted
“We understand Petitioner to rely on an inherent disclosure of the certainty score in contending that Korten anticipates claim 1. See, e.g., ABS Glob., Inc. v. Cytonome/St, LLC, 84 F.4th 1034, 1042–43 (Fed. Cir. 2023) (“A claim is anticipated if ‘each and every element as set forth in the claim is found, either expressly or inherently, in a single prior art reference.’” (emphasis added). And inherency is a high standard. See, e.g., Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.”). We determine, on the limited record before us, that Petitioner has made a sufficient showing for institution that a certainty score would naturally flow from Korten’s validity and error determinations. Accordingly, upon review of the information in the Petition and corresponding evidence, including Patent Owner’s counter arguments, we determine Petitioner has sufficiently demonstrated, at this stage of the proceeding, that Korten discloses the subject matter of limitation 1[c].” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“teachings of Korten with either Lehmann I or Lehmann II. Prelim. Resp. 22–26, 29 (referencing arguments for Ground 2), 35–36 (referencing arguments for Ground 2 directed to motivation to combine references). Patent Owner argues that, contrary to Petitioner’s assertion, the technology of Korten does not overlap with Lehmann II. Id. at 23. Specifically, Patent Owner argues that Petitioner and Dr. Foroosh fail to address how a person having ordinary skill in the art could have successfully combined the two-dimensional imaging of Lehmann II with the three-dimensional imaging of Korten. See id.; see, e.g., Pet. 31 (“Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models.”). Patent Owner argues that Petitioner should have been aware of this issue given the Board’s prior decision denying institution in IPR2023-00400. Prelim. Resp. 23. Patent Owner then itemizes a list of technical challenges with respect to combining a two-dimensional system with a three-dimensional system. Id. at 24. These challenges include that Petitioner does not explain “how one might associate a Z-coordinate of Korten with the color data obtained by the Lehmann II camera,” how a person having ordinary skill in the art “would have Korten’s processor align the [two-dimensional] color image areas obtained by the Lehmann II camera with the [three-dimensional] entity previously created by Korten, and then provide color values to the entity at aligned X-Y-Z points,” and “how to implement Lehmann II’s [two-dimensional] image into Korten’s [three-dimensional] model.” Id.; see also id. at 24–26 (discussing difficulties in using spectrophotometers to collect color data and associating two-dimensional color data with three-dimensional representations). Petitioner, concentrating on Lehmann II’s best fit technology, contends that “[a]lthough Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models, this difference is immaterial as it relates to determining the certainty score of the selected tooth shade value.” Pet. 31 (referencing Ex. 1015 ¶ 141); cf. Ex. 1015 ¶ 141 (providing the same testimony as is in the Petition). We have reviewed Patent Owner’s argument and determine, on the limited record before us, that Patent Owner identifies a weakness in Petitioner’s position. Petitioner’s contentions concerning motivation to combine Korten and Lehmann II seem to focus on a motivation for using Lehmann’s teachings of the subject matter of limitation 1[c], and does not address Petitioner’s reliance on Lehmann II for the subject matter of limitation 1[b], which recites the step of “determining a tooth shade value for at least one point on the tooth based on the texture data of the corresponding point of the digital 3D representation and on known texture values of one or more reference tooth shade values.” See Pet. 30 (mapping the requirements of limitation 1[b] to disclosures in Lehmann II); Ex. 1001, 21:33–37 (providing limitation 1[b]). Limitation 1[b] seems to require implementing teachings concerning two-dimensional color data from Lehmann II with three-dimensional color data collected at the step of limitation 1[a] by Korten’s system. As such, Petitioner’s reasoning may not be adequately supported by a rational underpinning. Cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). The parties may develop the record concerning this dispute at trial.” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,695,151 - K/S Himpp v. Bragi GmbHInstitutedPTAB · Jan 22, 2024 · IPR2023-01150 · APJ Larry J Hume · IPR · Institution
The Board instituted IPR on claims 1–21 on all seven 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 / argumentsDecided for petitioner
“Although Shaffer was cited by the examiner during prosecution, it was not discussed in any meaningful regard on the record, as explained above.” Pet. 11. Petitioner cites Advanced Bionics’ holding that, “[i]f the record of the Office’s previous consideration of the art is not well-developed or silent, then a petitioner may show the Office erred by overlooking something persuasive.” Id. (citing Advanced Bionics, 10). Petitioner specifically asserts the Examiner erred because Shaffer discloses the precise features that the examiner identified as novel (high-power and low-power modes), which, in combination with the art teaching other known features (e.g., a reed switch), demonstrates that the challenged claims are unpatentable. . . . By overlooking the specific teachings of Shaffer in allowing the challenged claims, the examiner committed a material error even if it could be argued that Shaffer was considered. Pet. 12 (internal citations omitted). See Advanced Bionics, 8 n.9 (“An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.”). We find that Petitioner has demonstrated a material error by the Office in the prior consideration of Shaffer. Under the second prong of Advanced Bionics, we consider “the extent to which the asserted art was for rejection.” Becton, Dickinson, 17. Here, we agree with Petitioner that, although Shaffer was cited by the Examiner on a form PTO-892, Shaffer was not applied as a prior art reference in any rejection because claims 1–20 in the application leading to the ʼ895 patent were allowed in a first action allowance and then, after filing a Request for Continued Examination (RCE), claim 21 was added, and subsequently claims 1–21 were allowed and issued in the ʼ853 patent with no further discussion of Shaffer or any other reference. See, generally Ex. 1008; and see Pet. 10. slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “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 [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 through 21 of the ’853 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, 11 The current record does not include evidence of objective indicia of nonobviousness (secondary considerations). See generally Pet., Ex. 1002, and Prelim. Resp. aids.” Pet. 17 (citing Ex. 1002 ¶ 25). At this stage, Patent Owner “applies Petitioner’s definition of a [person of ordinary skill in the art] POSITA” (Prelim. Resp. 16 (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. 16. 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 ’853 patent and the asserted prior art. This definition also is supported by the testimony of Dr. Kiaei. See Ex. 1002 ¶ 25.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“13, and 17–21, we disagree with Patent Owner’s narrow construction requiring that the smart case be construed as including a rechargeable battery utilized to charge a wireless device, because such a construction ignores intrinsic evidence of multiple additional configurations, actions, or functionality of the smart case disclosed in the ʼ853 patent. These functions, other than charging a wireless device, include preserving battery life of the wireless earpieces, communication with the wireless earpieces through physical interactions or wireless connections, standards, or protocols, configured to store data. See Ex. 1001, 2:38–57.12 More importantly, we note the disclosure of only an illustrative embodiment in the ʼ853 patent 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, 3:25–34. However, as quoted below, we note the ʼ853 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.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,843,853 - Ao Kaspersky Lab v. Open Text Inc.Institution deniedPTAB · Dec 7, 2023 · IPR2023-00895 · APJ Aaron W Moore · IPR · Institution
The Board denied institution because Petitioner did not show Fratric was a § 102 printed publication, so it did not establish a reasonable likelihood that any challenged claim was unpatentable.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“In an IPR, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication.” Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (as amended Sept. 20, 2018). “[T]he key inquiry is whether or not a reference has been made ‘publicly accessible.’” In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004); see Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (explaining that public accessibility is “the touch-stone” in determining whether a reference qualifies as a printed publication). slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For these reasons, we conclude that Petitioner has not met its burden of establishing, by a preponderance of the evidence, that Fratric is a Section 102 printed publication. It follows that Petitioner has not established a reasonable likelihood of proving at least one claim of the ’591 patent unpatentable. III. CONCLUSION Having determined that Petitioner has not established a reasonable likelihood of proving that at least one claim of the ’591 patent is unpatentable over the cited prior art, we do not institute an inter partes review.5” slip op. at 10
§ 102 anticipationPatents in suitUS 10,284,591 - Arthrex, Inc. v. P Tech, LLCAll claims unpatentablePTAB · Nov 21, 2023 · IPR2022-01043 · APJ Cynthia M Hardman · IPR · Final written decision
Claims 1–20 are unpatentable: claims 8, 11, 13, 14, 16, and 18–20 are anticipated by Fumex, and the remaining claims are held unpatentable on obviousness grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“After considering the above factors and Petitioner’s proposed level of skill in the art, for purposes of our Institution Decision, we defined a person of ordinary skill in the art as someone having a medical degree and at least two years of experience performing surgeries with implantable medical devices, such as suture anchors. Inst. Dec. 10. Patent Owner and its expert Dr. Pedowitz agree with our analysis in the Institution Decision, and employ our definition of a person of ordinary skill in the art. PO Resp. 16; Ex. 2001 (Pedowitz Decl.) ¶ 21. After institution, Petitioner did not dispute our definition. See generally Reply. Accordingly, and for the reasons discussed in our Institution Decision, we maintain our definition of a person of ordinary skill in the art as someone having a medical degree and at least two years of experience performing surgeries with implantable medical devices, such as suture anchors. See Inst. Dec. 8–10.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the absence of any meaningful claim construction analysis of this term from the parties, and because we find that for purposes of resolving the disputes at issue in this Decision, a construction of “passage” is unnecessary, we decline to construe this term. 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 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In sum, the Specification and prosecution history use the terms “knotless” and “knot” in ways consistent with their known meanings in the art. “[T]o deviate from the plain and ordinary meaning of a claim term to one of skill in the art, the patentee must, with some language, indicate a clear intent to do so in the patent.” Hill-Rom Servs., Inc., 755 F.3d at 1373. The Specification and prosecution history are devoid of any clear intention to deviate from the so-called “legacy” meaning of “knotless,” as admittedly used in the context of “knotless suture anchors.” We see nothing in the intrinsic record that supports Patent Owner’s argument that it “coined” a different meaning for this term in connection with the claimed fasteners. We agree with Petitioner that “it strains logic that [inventor] Dr. Bonutti would include ‘knotless’ within a lengthy list of characteristics that a fastener could take on—and without any further explanation, definition, or stated benefits—if he intended ‘that it wasn’t the way the term might commonly have been used at that time.’” Reply 5–6 (quoting Ex. 1018 (Pedowitz Depo. Tr.), 20:15–22); see also Ex. 1018 (Pedowitz Depo. Tr.), 24:6–26:1, 27:12–18 (Dr. Pedowitz unable to identify any other portions of the Specification that use or define the term “knotless”), 27:19–24 (admitting that the Specification does not identify any benefits of a “knotless fastener” (per Patent Owner’s proposed construction)).” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In accordance with our construction of the term “knotless” fastener, we agree with Petitioner that because Fumex’s sleeve can be retained in place without tying a knot at the site where it is secured in place, Fumex discloses a “knotless” fastener as recited in claims 19 and 20. See Pet. 37– 38; Ex. 1002 (Jordan Decl.) ¶¶ 111–15. We adopt Petitioner and Dr. Jordan’s reasoning as our own. See id. We note that Patent Owner does not dispute that a knot is not tied in connection with securing Fumex’s fastener.20 See, e.g., Sur-reply 21 (arguing that “Fumex’s bone anchor retains the anchor in place in bone – not by tying a knot – but by forming a knot by pulling on one or both strands of the suture”). Instead, Patent Owner’s argument for why Fumex fails to teach a “knotless” fastener is based on its proposed claim construction. See PO Resp. 20 (“Fumex does not disclose a flexible hollow fastener that is ‘knotless’ as Patent Owner and Dr. Pedowitz have construed this term in this Proceeding.”); Sur-reply 1 (“It is undisputed that the claim construction of a ‘knotless’ fastener will decide this case.”), 23 (“If Patent Owner’s construction of “knotless” fastener is adopted, then claims 19 and 20 of the 20 In this regard, although Dr. Jordan referred to a “bigger knot” when discussing Fumex, he did not describe Fumex as requiring tying of a knot. See Ex. 2002 (Jordan Depo. Tr.), 19:21–20:8. Our construction requires elimination of knot-tying; it does not encompass the elimination of any structure that could be considered a “knot” in the general sense of the word. See Reply 21 n.6; Tr. 16:10–17:10. ‘453 Patent are not anticipated by Fumex, which fails to disclose a knotless fastener.”); see also Reply 21 (asserting that “Patent Owner has not disputed that Fumex meets Petitioner’s proposed construction of ‘knotless.’”). Because we reject Patent Owner’s proposed construction of “knotless” (see supra Section II.C.2), Patent Owner’s argument that Fumex fails to teach a “knotless” fastener is unavailing. In sum, for the reasons discussed above, we determine that Petitioner has shown by a preponderance of the evidence that Fumex anticipates claims 8, 11, 13, 14, 16, and 18–20.” slip op. at 45
Patent outcomesUS 9,814,453 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,814,453 - Ebates Performance Marketing, Inc. Dba Rakuten Rewards / Zillow Group, Inc. et al. v. International Business Machines Corp.Some claims unpatentablePTAB · Oct 11, 2023 · IPR2022-00646 · APJ David C Mckone · IPR · Final written decision
Claims 1–4, 12–16, 18, and 19 are unpatentable; claims 5–11, 17, and 20 are not unpatentable, based on the Sunada grounds.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“certain arguments based on the Kayak FWD. Reply 1–5. Yet, the Federal Circuit vacated the Kayak FWD and remanded to the Board for further consideration. Ex. 1006, 2 (“We vacate the Sunada IPR decision because it rests on an incorrect claim construction of the ‘federated computing environment’ limitation of all claims at issue, and we remand for further consideration under the correct construction.”), 8 (“The Board’s decision in IPR2016-00608 is vacated because it rests on an incorrect claim construction, and the matter is remanded for further proceedings consistent with this opinion.”).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“shown that Sunada discloses “protected resources” under our claim construction of the term and, accordingly, Petitioner has not shown, by a preponderance of the evidence, that Sunada anticipates claims 1, 3, 12, 14, 15, and 18.” slip op. at 17
- Skill levelOther
“1. Level of Skill in the Art Petitioner, relying on the testimony of Dr. Crovella, contends that a” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableMixed
“shown that Sunada discloses “protected resources” under our claim construction of the term and, accordingly, Petitioner has not shown, by a preponderance of the evidence, that Sunada anticipates claims 1, 3, 12, 14, 15, and 18.” slip op. at 17
Patent outcomesUS 7,631,346 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,631,346 - Apple Inc. v. Scramoge Technology Ltd.All claims unpatentablePTAB · Sep 11, 2023 · IPR2022-00573 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1–22 and 28 are unpatentable: Flowerdew anticipates claims 1, 2, 8–11, and 28; the remaining claims are unpatentable as obvious over the stated combinations.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“102 1, 2, 8–11, 28 1, 2, 8–11, 28” slip op. at 112
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“recited switch element of claim 12. We also are persuaded that Petitioner’s proffered reasoning for modifying Flowerdew’s charging system to include Jang’s inverter, namely, to provide a way to implement Flowerdew’s digital driver, is sufficient to support the legal conclusion of obviousness. See In re Kahn, 441 F.3d at 988.” slip op. at 38
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“1. Qualification of Baarman as Prior Art The parties dispute whether Baarman, a pre-grant publication,” slip op. at 57
Patent outcomesUS 7,825,537 unpatentable§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 7,825,537
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.