- PTAB · Aug 2, 2023 · IPR2023-00455 · APJ Daniel J Galligan · IPR · Institution
The Board instituted inter partes review of claims 1–29 on all asserted grounds, finding a reasonable likelihood of success on the Perego and JESD79-2 obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution in view of the district court litigation. Prelim. Resp. 53–56. A Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)6 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation for all claims in this proceeding, which are all of the claims of the ’215 patent. Ex. 1093; Paper 8 at 1; Paper 9 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On this record, we are sufficiently persuaded by Petitioner’s argument that a person of ordinary skill in the art would have combined the teachings of Perego and JESD79-2. As Petitioner correctly points out (Pet. 32), Perego discloses using DDR2 memory devices. Ex. 1071, 10:56–59 (“Other memory devices may be implemented on module 400, for example, Double Data Rate 2 (DDR2) DRAM devices and Synchronous DRAM (SDRAM) devices.”). On this record, we find this teaching to use DDR2 sufficiently supports Petitioner’s rationale to combine Perego with JESD79-2, which is the JEDEC DDR2 SDRAM Specification. Ex. 1064, 1 (cover page); see also Prelim. Resp. 44 (parenthetical noting that “JESD79-2 is a specification for individual DDR2 SDRAMs”). As to Patent Owner’s argument that Rambus memories lack a chip select network (Prelim. Resp. 25–26), the reference on which Patent Owner relies discloses that chip select information is still used in the particular Rambus devices described. See Ex. 1069, 11 (“[I]n the Rambus bus organization, all addresses, commands, data, and chip-select information are sent on the same bus lines.”), 12 (“[T]he example system uses a total of nine (9) lines to carry all necessary information, including addresses, commands, chip-select information, and data.”). Thus, on this record, Patent Owner’s focus on the lack of a chip select network, which is not recited in the claims of the ’215 patent, appears misplaced. We address Patent Owner’s more specific arguments below in the discussion of individual claim recitations.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Claim 21 is method claim and recites similar structure in the preamble. Petitioner cites this claim language in support of its position that a rank can have just one memory device. Pet. 28 (citing Ex. 1001, 37:32–38 (portion of claim reproduced above)). On this record, we determine that the claim language supports Petitioner’s position. Claim 1 recites “at least one first memory integrated circuit in the first rank and at least one second memory integrated circuit in the second rank.” This language is met if there is one memory integrated circuit in each rank because “at least one” includes just one. On this record, we disagree with Patent Owner’s argument that this claim language “do[es] not define the term ‘rank’” but, rather, “provide[s] context that a claimed ‘buffer’ can be, but need not be, coupled to multiple memory devices in the rank.” See Prelim. Resp. 9–10. Claim 1 recites “a buffer coupled between the at least one first memory integrated circuit and the memory bus, and between the at least one second memory integrated circuit and the memory bus,” and it further recites “enabl[ing] communication of the first data burst between the at least one first memory integrated circuit and the memory controller through the buffer” and “enabl[ing] communication of the second data burst between the at least one second memory integrated circuit and the memory controller through the buffer.” If there is only one memory device in each rank, then the buffer will only be connected to the one memory device in each rank. If two memory devices are the “at least one first memory integrated circuit in the first rank” then the buffer would be “coupled between the [two memory devices] and the memory bus.”” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,858,215 - PTAB · Aug 2, 2023 · IPR2023-00454 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–15 on all asserted grounds, finding a reasonable likelihood that Samsung would show at least one claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)6 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district 2 US 7,363,422 B2, issued Apr. 22, 2008 (Ex. 1071). 3 Joint Electron Devices Engineering Council (JEDEC) DDR2 SDRAM Specification (JESD79-2), September 2003 (Ex. 1064). 4 US 2006/0277355 A1, published Dec. 7, 2006 (Ex. 1073). 5 US 7,024,518 B2, issued Apr. 4, 2006 (Ex. 1078). 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation for all claims in this proceeding, which are all of the claims of the ’417 patent. Ex. 1093; Paper 8 at 1; Paper 9 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, 7 Chapter 31 (35 U.S.C. §§ 311–319) relates to inter partes review. IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“competent evidence” to show that “the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. Prelim. Resp. 44. We disagree. Petitioner presents detailed testimony from Dr. Wolfe explaining how Perego’s registered data transfers would have introduced delay. In particular, Dr. Wolfe, citing Perego’s disclosures of data latches and an internal clock to generate synchronizing clock signals (Ex. 1071, 12:65–13:5, 17:61–63, Fig. C), provides the following testimony: A Skilled Artisan would have understood from these disclosures that Perego’s latching of the data signals and the use of internal synchronizing clock signals adds a predetermined amount of time delay for each data transfer through the buffer because the output of the latch needs to be in synchronization with an internal clock. A Skilled Artisan would have understood that such registering of the data signals would require the addition of a fixed time delay, such as one clock cycle, for each registered data transfer through the circuitry with respect to the actual operational CAS latency of each of the plurality of memory integrated circuits. Ex. 1003 ¶ 360. Dr. Wolfe further explains how Perego’s “latching delays in the buffer device of Perego increase the overall CAS latency of the memory module compared to the CAS latency of the memory devices.” Ex. 1003 ¶ 362 (citing Ex. 1071, 12:65–13:5, 18:65–19:3, Figs. 5B, 5C). On this record, we find Petitioner’s evidence sufficiently persuasive to show that Perego teaches that “data transfers through the circuitry are registered for an amount of time delay such that the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. We are sufficiently persuaded by Petitioner’s contentions for the” slip op. at 33
- Skill levelSkill level board ownOther
“To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,093,417 - Lightricks Ltd. v. Plotagraph, Inc. And Sascha ConnellyInstitution deniedPTAB · Jun 20, 2023 · IPR2023-00152 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that all claim terms should be given their plain and ordinary meaning at this stage of the proceeding. Pet. 8 (citing Ex. 1002 ¶ 42). Patent Owner proposes claim constructions for “set of pixels,” “pixels that lie along a link/length of pathway between the starting point and the ending point,” and “in a loop.” Prelim. Resp. 17–28. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“First, the disclosure of AEM that Petitioner relies on for teaching selecting certain pixels to be transparent or nontransparent pertains to “compositing,” i.e., creating a composite image from multiple images. Ex. 1003, 315–16. AEM states specifically: “To create a composite from multiple images, you can make parts of one or more of the images transparent so that other images can show through.” Id. at 315. Thus, each pixel in the composite image is either transparent or nontransparent such that every pixel is “selected” under Petitioner’s usage of the term “selecting.” The possibility that some of these pixels, in theory, could extend along a non-linear motion path of a Deform pin is mere happenstance—we are not directed to any disclosure in AEM of actually selecting a set of pixels (either transparent or nontransparent) that extend along a non-linear motion path. See In re Facebook, Inc., 743 F. App’x. 998, 1001–02 (Fed Cir. 2018) (deciding that an example in a prior art reference showing that it is possible for image elements to be contiguous is not sufficient to teach a claim limitation that requires contiguity). We are not persuaded on the record before us that AEM’s disclosure of designating pixels as transparent or nontransparent satisfies selecting a first set of pixels extending along a nonlinear pathway. Second, Petitioner’s argument relies on AEM teaching that “AECS6 necessarily allows a user . . . to select any or all pixels of the layer to be nontransparent and thus included in the layer’s mesh to be moved and animated.” Pet. 21. We disagree, however, that AEM discloses selecting pixels to be nontransparent and including these pixels in a mesh to be moved and animated. That AECS6 arguably allows selected nontransparent pixels to be included in a mesh is not sufficient to establish that AEM discloses doing so. Petitioner contends that AECS6 and the screenshots of AECS6 created by Dr. Greenspun establish the background knowledge possessed by a person of ordinary skill in the art but does not explain adequately why AECS6’s alleged capability would cause one of ordinary skill in the art to understand AEM to teach selecting pixels of a layer to be nontransparent and including the selected pixels in the layer’s mesh. See Pet. 17 n.6 (quoting Qualcomm, 24 F.4th at 1376). Again, any pixels selected to be nontransparent being included in a mesh is mere happenstance.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,558,342 - Netflix, Inc. v. Robocast, Inc.Institution deniedPTAB · May 11, 2023 · IPR2023-00081 · APJ David C Mckone · IPR · Institution
The Board denied institution because Netflix had not shown a reasonable likelihood of proving claims 1, 2, 37, or 38 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). 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 . . . 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 explained below, we decline to institute an inter partes review of the ’451 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not see a substantial difference between the parties’ proposals. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by 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). However, our Decision would be the same under Patent Owner’s proposal.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for patent owner
“we consider whether that construction was intended to encompass varying durations during the creating step or the displaying step. In its opinion, the Microsoft court observed that the defendants in that case argued that “before created,” and that “the ‘duration information’ is a parameter that the user can then interact with in order to vary the display of each resource.” Ex. 1014, 22. Patent Owner, the court continued, argued that “all that is required is for the user to maintain control over the actual presentation of the resource during the ‘displaying’ step, and that no duration information need be provided during the ‘creating a show structure of nodes’ step.” Id. at 22–23. The Microsoft court “agree[d] with [Patent Owner] that the user should be able to vary the duration of the content during show structure playback. This is the ‘interactive’ component of the claim.” Id. at 23; see also Prelim. Resp. 29 (arguing that this reasoning supports Patent Owner’s position that “the claim language expressly requires that the end user be able to ‘vary said duration’ for how long resource content currently ‘is being displayed’ to the user in ‘accordance with said show structure’ to which the resource belongs”). Here, the Microsoft court expressly states that the duration is varied during show structure playback, which is a clear reference to claim 1’s step of “displaying a content corresponding to each of said resources automatically in accordance with said show structure.” The Microsoft court “also finds that some duration information must be provided when the show structure of nodes is created,” that “‘parameter’ is a helpful concept for construction,” and that “the ‘duration information’ may be understood to be synonymous with a ‘parameter,’ as that timing information is the variable that will specify how long a particular content will be displayed.” Ex. 1014, 23. Thus, the Microsoft court construed claim 1 to require providing a variable duration parameter in the creating” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“As noted above, the Microsoft court construed “interactively variable duration information” to mean “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1014, 22. The construction itself suggests that the duration information is varied during display, because it is in the context of resources being displayed sequentially and “the viewer of the content can change the parameter.” As to Escobar, Petitioner contends that “[w]hen playing decision lists/timelines in the authoring tool using Button 174 (invoking subroutine E), the user is the viewer of the content.” Pet. 49 (citing Ex. 1004, 6:40–45). Thus, Petitioner appears to contend that, during the process of creating a show structure, the creator is a viewer if the creator can view the edited content corresponding to a node as the show structure is being created. Here, Petitioner would satisfy the “viewer” aspect of the Microsoft court’s construction by pointing to a creator viewing a piece of the show structure during the creating step, although Escobar does not teach that the creator can vary the duration of content while viewing it or that durations can be varied while a show structure (as opposed to a node being created) is being displayed in the displaying step, as discussed in more detail below.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,155,451 - Solaredge Technologies Ltd. v. Koolbridge Solar, Inc.All claims unpatentablePTAB · Apr 17, 2023 · IPR2022-00007 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–13 and 20 are unpatentable: claims 1–3 and 8–10 over Tracy, claims 4 and 11 over Tracy and Fujimoto, claims 6 and 20 over Tracy and De, claim 7 over Tracy and Bond, and …
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“IV. CLAIM CONSTRUCTION In the Decision to Institute we declined to treat any of the claim terms as mean-plus-function terms because the terms have an ordinary and customary meaning. Dec. to Inst. 14–15. Neither party has proposed any other claim constructions. We apply the plain and ordinary meaning in this Decision.” slip op. at 7
- Expert testimonyPetitioner expert creditedOther
“Dr. Baker’s testimony is persuasive evidence that Tracy discloses the claimed floating DC power source, as Tracy’s terminals are not permanently connected to the neutral.” slip op. at 24
- Skill levelOther
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that Patent Owner unrealistically reads this definition to mean there can never be a connection to ground or neutral, because Patent Owner ignores the disclosure in the ’822 patent of temporarily connecting one or the other of the floating DC sources to neutral, as discussed above. Id. at 9–10 (citing Ex. 1001, 3:52–60, 4:27–40, 10:44–47, 11:1–7, 11:25–28, 23:47–52; Ex. 1074, Baker Reply Decl. ¶¶ 12–13).” slip op. at 20
Patent outcomesUS 8,937,822 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,937,822 - PTAB · Apr 12, 2023 · IPR2022-01563 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR of claims 1–14 because Petitioner showed a reasonable likelihood that claims 1–14 would have been obvious over Yong and Xavier.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1‒14 based on the ground set forth in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Weighing the arguments and evidence, we determine that Petitioner has met its burden under 35 U.S.C. § 314 of demonstrating a reasonable likelihood that Yong qualifies as prior art. Hulu at 13. As Petitioner asserts, the KIPO logo and the multiple instances of publication number 10-2007-0087811 on Yong’s first page provide some evidence of authenticity. Ex. 1009, 1; Reply to Prelim. Resp. 3. Additionally, KIPO Yong tends to show that Yong constitutes an authentic version of Korean Publication No. 10-2007-0087811. Yong’s and KIPO Yong’s Figures appear substantially the same. Compare Ex. 1009, 42–48, with Ex. 2001, 28–33. Additionally, the content starting on page 2 of Yong, where Patent Owner contends “claims appear to be present,” closely resembles the content starting on page 11 of KIPO Yong, which Patent Owner posits “may be claims.” Prelim. Resp. 22, 29; Ex. 1009, 2–30; Ex. 2001, 11–27. Consistent with Patent Owner’s observations, these portions of Yong and KIPO Yong appear to present claims. Specifically, these sections of Yong and KIPO Yong each appear to present exactly 140 claims. Ex. 1009, 2–30; Ex. 2001, 11–27. These sections share a number of other similarities, also. For example, in both Yong and KIPO Yong, in the midst of Korean characters, what appears to be claim 69 recites “POS.” Ex. 1009, 16; Ex. 2001, 19. Similar commonalities appear numerous places within these portions of Yong and KIPO Yong. Ex. 1009, 2–30; Ex. 2001, 11–27. The similarities between Yong and KIPO Yong tend to show that Yong is an authentic version of Korean Publication No. 10-2007-0087811 and has the same substantive content as KIPO Yong, just formatted and arranged differently. This is not significantly undermined by Patent Owner’s observations about certain differences between the documents, especially in the absence of a translation of KIPO Yong, which would have facilitated comparing the documents’ content. Indeed, considering Patent Owner’s omission of a translation of KIPO Yong, Patent Owner’s complaints of prejudice and “Petitioner’s hide-the-ball tactics” ring hollow. Prelim. Sur-reply 2, 5. Although we agree with Patent Owner that Petitioner has not yet met the requirements of Rule 42.63(b) for the translation of Yong, we do not find it warranted to deny institution on this basis. Instead, we treat Patent’s Owner’s pre-institution arguments that Petitioner fails to comply with Rule 42.63(b) as evidentiary objections. If Patent Owner wishes to preserve its objections, Patent Owner must formally object to Petitioner’s evidence after institution of inter partes review by this Decision.” slip op. at 16
- Parallel petitionsDecided for petitioner
“As discussed above, Petitioner filed four petitions challenging the ’435 patent on the same day, including this proceeding, IPR2022-01563, as well as IPR2022-01528, IPR2022-01561, and IPR2022-01564. In this proceeding, IPR2022-01563, and in IPR2022-01561 and IPR2022-01564, Petitioner challenges claims 1–14 of the ’435 patent over various prior art grounds. Pet. 11; Not. 2. In IPR2022-01528, Petitioner challenges claims 15–19 of the ’435 patent over various prior art grounds. Not. 2. Pursuant to the Board’s Consolidated Trial Practice Guide (Nov. 2019) (“TPG”),3 Petitioner’s Notice provides a ranking of the four petitions in the order in which Petitioner wishes the Board to consider them on the merits and a succinct explanation of the differences between the Petitions. See TPG 59–60; Not. 1–5. Petitioner ranks the instant Petition as “3,” the petition in IPR2022-01528 as “1,” the petition in IPR2022-01561 as “2,” and the petition in IPR2022-01564 as “4.” Not. 2–5. Petitioner, however, contends that “all four Petitions merit institution” because “[a]ll four Petitions present significant material differences which are not redundant and which demonstrate different substantive bases for rendering obvious or for showing anticipation of each of the challenged claims of the ’435 Patent,” and “[d]ue to word count limitations, Petitioner 3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. was not able to present all these grounds in a single petition.” Id. at 1, 3. Petitioner elaborates that 1) the claims of the ’435 Patent comprise over 1,500 words, such that to cover a plurality of grounds in one petition covering all the claims would use at least twenty percent of the 14,000-word petition limit; and 2) Patent Owner has asserted 15 of the 19 claims of the patent in the pending district court litigation (see Ex. 1026). Id. at 2. Patent Owner argues that “the panel should, at most, address the -01528 petition on the merits, as petitioner requested, and discretionarily deny the other three petitions under § 314(a).” Prelim. Resp. 3–4. Regarding the ’435 patent’s claims’ length, Patent Owner argues that “the ’435 Patent claims is indicative of the quality of examination, rather than an excuse for the piling on that Petitioner exhibits in these challenges.” Id. at 6. Under the circumstances presented, where Patent Owner does not dispute Petitioner’s observation that the ’435 patent has very long claims, we conclude it is not unreasonable for Petitioner to file multiple petitions. In our view, even if it were accurate, Patent Owner’s argument that the claims’ “narrowness” reflects quality examination does not detract from Petitioner’s argument that the length of the claims warrants more than one petition. Prelim. Resp. 6.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“3. Discussion In asserting obviousness of claims 1–14 over Yong and Xavier, Petitioner argues that Yong discloses many of the challenged claims’ limitations. Pet. 13–43. For example, Petitioner relies primarily on Yong as allegedly disclosing claim 1’s limitations. Id. at 13–26. Petitioner relies on Xavier as “teach[ing] the use of a session between a mobile phone and se[r]ver in a self-checkout system.” Id. at 15. Petitioner argues that “[h]aving reviewed Xavier, a [person of ordinary skill in the art] would have been motivated to add the session handling of Xavier to Yong.” Id. According to Petitioner, “[a person of ordinary skill in the art] would have understood that a session manager would have been necessary to manage the communications between the mobile communication terminal 100 and the store POS server 200, the commercial transaction server 400 and the payment server 500.” Id. At this stage, aside from the arguments discussed above in Section II.C.1 that we should not consider Yong as prior art, Patent Owner does not dispute the merits of Petitioner’s challenge to claims 1–14. Having reviewed Petitioner’s arguments and evidence, we determine Petitioner has demonstrated a reasonable likelihood of establishing that claims 1–14 would have been obvious over Yong and Xavier. Pet. 1–43.” slip op. at 24
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,803,435 - PTAB · Apr 12, 2023 · IPR2022-01528 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR of claims 15–19 on all petitioned grounds, finding a reasonable likelihood that Yong anticipates claim 15.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 15‒19 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDenied
“We do not agree with Patent Owner’s argument that Petitioner’s parallel filing of four petitions warrants denying all four petitions. Prelim. Resp. 7 (“Petitioner’s abuse of process in filing four petitions justifies discretionary denial of all of the petitions.”). Accordingly, given that Petitioner ranks the instant Petition “1,” we decline to deny institution in this proceeding. Additionally, under the circumstances presented, where Patent Owner does not dispute Petitioner’s observation that the ’435 patent has very long claims, we conclude it is not unreasonable for Petitioner to file multiple petitions. In our view, even if it were accurate, Patent Owner’s argument that the claims’ “narrowness” reflects quality examination does not detract from Petitioner’s argument that the length of the claims warrants more than one petition. Prelim. Resp. 6.” slip op. at 33
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Weighing the arguments and evidence, we determine that Petitioner has met its burden under 35 U.S.C. § 314 of demonstrating a reasonable likelihood that Yong qualifies as prior art. Hulu at 13. As Petitioner asserts, the KIPO logo and the multiple instances of publication number 10-2007-0087811 on Yong’s first page provide some evidence of authenticity. Ex. 1009, 1; Reply to Prelim. Resp. 3.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner contends that [a] person having ordinary skill in the art (“POSITA”) as of the claimed priority date would have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field or equivalent coursework or experience, and one to two years of experience with mobile device applications and retail POS systems. (Shamos ¶ 34.) More education can supplement practical experience and vice versa. (Id.) Pet. 12. Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art. Prelim. Resp. 18. For purposes of deciding whether Petitioner has demonstrated a reasonable likelihood of prevailing, we adopt Petitioner’s definition of a person of ordinary skill in the art, which we find consistent with the ’435 patent and the asserted prior art.” slip op. at 11
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 10,803,435 - PTAB · Apr 11, 2023 · IPR2022-01564 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that Keith anticipates at least claims 1 and 10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1‒14 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Under the circumstances presented, where the priority date of the challenged claims is disputed, we conclude it is not unreasonable for Petitioner to present separate challenges, one of which relies on references that are prior art only if the challenged claims are not entitled to Patent Owner’s claimed priority date, which has yet to be finally determined. See TPG 59 (stating that “a dispute about priority date requiring arguments under multiple prior art references” can be a potential reason for the Board to institute trial on multiple petitions challenging the same patent). Thus, on the present record, we decline to exercise our discretion to deny institution of this Petition on the basis of Petitioner filing multiple petitions.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field or equivalent coursework or experience, and one to two years of experience with mobile device applications and retail POS systems,” also noting that “[m]ore education can supplement practical experience and vice versa.” Pet. 20–21 (citing Ex. 1002 ¶ 34). Patent Owner, at this stage of the proceeding, does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 18. For the purposes of this Decision, we apply Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’435 patent and the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that an express construction of this or any other claim term is not necessary for purposes of this Decision. 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§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,803,435 - Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCSome claims unpatentablePTAB · Feb 6, 2023 · PGR2021-00102 · APJ Patrick R Scanlon · PGR · Final written decision
Claims 5 and 9 are unpatentable as indefinite under §112(b); the Board did not find claims 1–4, 6–8, and 10–28 unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the record before us, particularly the ’459 patent’s description and Dr. Adnan’s testimony, we agree with Petitioner that the ordinary level of skill in the art does not require the high level of specialized knowledge of control systems suggested by Patent Owner. Moreover, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the full record, we are not persuaded that Mr. Marscher is unqualified to serve as an expert in this proceeding. As noted above, a person of ordinary skill in the art is not required to have been a fracturing operator. Patent Owner’s proposed definition does not even require experience as a fracturing operator. See PO Resp. 22. Furthermore, Mr. Marscher testifies that he has extensive experience developing pumps for fracturing applications. Ex. 2027, 6:24–8:7. Mr. Marscher also testifies that he has experience with control systems relating to pumps and pumps units. Id. at 212:19–23. This testimony, as well as his declaration and curriculum vitae, show that Mr. Marscher has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004. Accordingly, we are not persuaded that Mr. Marscher’s qualifications or experience provide reason to discount the weight associated with Mr. Marscher’s testimony.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“is the pump unit’s highest HHP output and one of ordinary skill in the art would have understood this value is the pump unit’s output power in intermittent duty. Pet. Reply 2 (citing Ex. 1003 ¶¶ 71–72, 123–124; Pet. 9– 10; Ex. 1036, 64:17–67:13, 119:17–120:11, 124:7–24, 198:9–200:9, 221:8– 222:15). However, even if Petitioner is correct that the “maximum power output value” is near or equivalent to a pump unit’s output power in intermittent duty, we are still not persuaded that the term “maximum intermittent power” should be tied to the “maximum power output value,” in conflict with the definition provided in the Specification. Petitioner also argues that Patent Owner’s proposed construction is indefinite. Pet. Reply 3. For the reasons discussed below (see supra § II.I.1), we determine that Petitioner has not shown by a preponderance of the evidence that the term “maximum intermittent power,” as defined in the Specification, is indefinite. Thus, based on the complete record before us, we maintain our prior construction of “maximum intermittent power” for this Final Written Decision.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“5. Additional Terms We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec, 868 F.3d at 1017; see also 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 15
Patent outcomesUS 10,907,459 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 10,907,459 - Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCNo claims unpatentablePTAB · Feb 6, 2023 · PGR2021-00103 · APJ Patrick R Scanlon · PGR · Final written decision
Claims 1–28 were not shown unpatentable on any asserted ground; the Board found the prior art failed to establish key limitations and rejected the enablement and indefiniteness challenges.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In reply, Petitioner argues that the ’764 patent’s control system is not complex as there are no detailed algorithms, logic, or software. Pet. Reply 4. Instead, the control system merely raises or lowers power of the pumps in accordance with the demand HHP of the job design. Id. (citing Ex. 1036, 97:15–98:18, 98:21–99:25, 100:1–101:25, 102:2–7, 115:4–9, 115:24–116:4, 116:17–22; Ex. 1001, 5:2–6, 6:36–7:7, 10:4–64). According to Petitioner, this “rudimentary control concept” does not necessitate the higher skill level proposed by Patent Owner. Id. Petitioner further notes that Dr. Adnan testifies that “a mechanical engineer who has worked in the industry developing programming and control systems could fall within this definition,” and the person of ordinary skill in the art “is ‘just a specifier.’” Id. (quoting Ex. 2003 ¶ 22; Ex. 1036, 161:21–164:18). Based on our review of the record before us, particularly the ’764 patent’s description and Dr. Adnan’s testimony, we agree with Petitioner that the ordinary level of skill in the art does not require the high level of specialized knowledge of control systems suggested by Patent Owner. Moreover, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the full record, we are not persuaded that Mr. Marscher is unqualified to serve as an expert in this proceeding. As noted above, a person of ordinary skill in the art is not required to have been a fracturing operator. Patent Owner’s proposed definition does not even require experience as a fracturing operator. See PO Resp. 20–21. Furthermore, Mr. Marscher testifies that he has extensive experience developing pumps for fracturing applications. Ex. 2027, 6:24–8:7. Mr. Marscher also testifies that he has experience with control systems relating to pumps and pumps units. Id. at 212:19–23. This testimony, as well as his declaration and curriculum vitae, show that Mr. Marscher has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004. Accordingly, we are not persuaded that Mr. Marscher’s qualifications or experience provide reason to discount the weight associated with Mr. Marscher’s testimony.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In its Reply, Petitioner argues that the maximum power output value is the pump unit’s highest HHP output and one of ordinary skill in the art would have understood this value is the pump unit’s output power in intermittent duty. Pet. Reply 2–3 (citing Ex. 1003 ¶¶ 71–72, 123–124; Pet. 9–10; Ex. 1036, 64:17–67:13, 119:17–120:11, 124:7–24, 198:9–200:9, 221:8–222:15). However, even if Petitioner is correct that the “maximum power output value” is near or equivalent to a pump unit’s output power in intermittent duty, we are still not persuaded that the term “maximum intermittent power” should be tied to the “maximum power output value,” in conflict with the definition provided in the Specification. Petitioner also argues that Patent Owner’s proposed construction is indefinite. Pet. Reply 3. For the reasons discussed below (see supra § II.I.1), we determine that Petitioner has not shown by a preponderance of the evidence that the term “maximum intermittent power,” as defined in the Specification, is indefinite. Thus, based on the complete record before us, we maintain our prior construction of “maximum intermittent power” for this Final Written Decision.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“3. Additional Terms We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes because doing so would have no effect on the analysis below. 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
Patent outcomesUS 10,815,764 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,815,764
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.