- Boe Technology Group Co., Ltd. v. Optronic Sciences, LLCAll claims unpatentablePTAB · Jan 26, 2026 · IPR2024-01133 · APJ Thu A Dang · IPR · Final written decision
Claims 1–13 are unpatentable: claims 1–5, 9, and 12–13 as anticipated by Weaver, and claims 6–8 and 10–11 as obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself [may] reflect[] an appropriate level” of ordinary skill in the art). In general, we agree with the areas of agreement in the parties’ proposals. In particular, Patent Owner proposes “at least a Bachelors’ degree in a field of engineering or physics,” which includes “electrical engineering or a comparable field of study” as Petitioner proposes. Pet. 4 (emphasis added); PO Resp. 10. We agree with Petitioner that by defining the engineering field as “electrical” or “comparable,” we can exclude engineering fields “having nothing to do with displays, such as biomedical, civil, chemical or environmental engineering.” Pet. Reply 1. Petitioner also proposes approximately “one or more years of professional experience” which includes Patent Owner’s “at least two years of professional experience.” Pet. 4; PO Resp. 10. Furthermore, both parties agree that “[a]dditional graduate education could [reduce . . . the time requirement] for professional experience.” Id. Thus, we adopt both parties’ proposed POSITA of having a Bachelors’ degree in electrical engineering or a comparable field of study, plus at least two years of professional experience, wherein additional graduate education could reduce the time requirement for professional experience. Id. Such proposal comports with the level of ordinary skill in the art reflected in the prior art of record.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“The plain language in claim 1 of “auxiliary electrode” does not preclude that the “electrode” may be a power line, bus line, or resistor. Ex. 1001, 8:47–52. Nothing in the Specification clearly precludes “auxiliary electrode” from being a “bus line” or “power line,” as Patent Owner proposes. PO Resp. 25–27. We are unpersuaded by Patent Owner’s contention that the Specification discloses that “the power line ‘PL’ is shown in Figure 1, but the power line PL is not an electrode that is shown in Figure 2.” Id. at 26–27. Here, Patent Owner points to no portions in the Specification that provide the requisite “reasonable clarity, deliberateness, and precision” to warrant interpreting the claim language at issue as supporting Patent Owner’s contention that an auxiliary electrode cannot be a power line, bus line, or resistor. Id.; In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1984). That is, although Patent Owner points to Figures 1 and 2 of the Specification for support of its contention, Figures 1 and 2 of the Specification merely show various examples of power line and an auxiliary electrode. PO Resp. 26–27. Thus, although the referenced portions of the Specification discuss various examples wherein an auxiliary electrode may be implemented, nothing in these referenced portions of the Specification clearly precludes the “auxiliary electrode” from being a power line or any electrode that is “the road to get to an end point,” as Patent Owner contends. Id. Patent Owner points to no special definition, implicit or explicit, for “auxiliary electrode” that is set forth in the Specification which supports Patent Owner’s construction with reasonable clarity, deliberateness, and precision. Paulsen, 30 F.3d at 1480.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We find Patent Owner’s arguments unavailing. In particular, we find unavailing Patent Owner’s contention that “‘bus line 430’ is not an ‘auxiliary electrode’” (PO Resp. 28–33), because Patent Owner is relying on a claim construction of “auxiliary electrode” as precluding “essential” elements and requiring “more than the end structure of a conductor” (id.), that is not adopted by our construction discussed above. Here, we are persuaded by Petitioner’s reliance on Weaver’s bus line 430 for providing the claimed “electrode,” that is “supplemental to other electrodes in the structure.” Pet. 18; see also Ex. 1004 ¶ 26, Fig. 4; Ex. 1003 ¶ 92. We find availing Petitioner’s contention, supported by Dr. Baker’s testimony, that a POSITA would have understood that “anode 406 and bus line 430 are connected in parallel,” which means that “bus line 430 is a supplemental electrode that reduces the total resistance of the pixel structure.” Pet. 19; Ex. 1003 ¶ 94. Thus, we find availing Petitioner’s contention, supported by Dr. Baker’s testimony, that Weaver’s bus line 430 is an electrode supplemental to other electrodes in the structure that is electrically insulated from transistor 410 by passivation layer 409, wherein OLED 400, which includes cathode 422, organic layer 424, and anode 406, is disposed above bus line 430, and wherein anode 406 of OLED 400 is electrically connected to bus line 430 by via 428. Pet. 16–19; Ex. 1003 ¶¶ 89–94. That is, we find availing Petitioner’s contention that, like the ’509 patent’s auxiliary electrode 120, bus line 430 is electrically insulated from transistor 410, wherein OLED 400 is disposed above bus line 430 and anode 406 electrically connected with bus line 430. Compare Pet. 2–3 (annotated” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We also find unavailing Patent Owner’s contention that the proposed modifications to Weaver would involve changing the process. PO Resp. 33– 34. We agree with Petitioner, whose contentions are supported by Dr. Baker’s testimony, that “to provide additional components from the same layer is a layout change that a POSITA would have been able to perform without changing the process.” Pet. Reply 17–18 (citing Ex 1003 ¶ 157; Ex. 1020 ¶ 45). Further, contrary to Patent Owner’s contention that POSITA would not have combined Weaver with Lee ’053, Song, Lee ’149, or Bae without the use of hindsight (PO Resp. 33–45), as Petitioner points out, Lee ’149, for example, “explicitly teaches that ‘the electrode pattern 45 serves to lower the resistance of the first electrode 41.” Pet. Reply 58 (citing Ex. 1011 ¶ 38). Similarly, Bae “explicitly teaches that the “auxiliary electrodes 139 contact the first electrode 132 to commonly apply a voltage to the sub-pixels” and “reduces the resistance of the first electrode.” Id. at 66 (citing Ex. 1012 ¶¶ 37, 59). As such, Petitioner’s proposed combinations are supported by at least by Lee ’149’s and Bae’s teachings of applying a second electrode to lower the resistance and voltage drop between anode 406 and the VDD line of Weaver. See, e.g., Ex. 1011 ¶ 38; Ex. 1012 ¶¶ 37, 59. We are persuaded by Dr. Baker’s testimony that a POSITA would have understood that higher resistance between the power or ground line to the light emitting device would consume more power and require higher operating voltages, and thus, would have been motivated to implement the solutions of Lee ’053, Song, Lee ’149, or Bae to lower the resistance between anode 406 and voltage source VDD in Weaver. Ex. 1003 ¶¶ 145, 158, 184, 203. We agree with Petitioner, supported by Dr. Baker’s testimony, that a POSITA would have had a reasonable expectation of success the combining the references as suggested, wherein such modification “involves modifications of only routine skill in the art,” which “involve known method,” and “would have yielded predictable results. Pet. 42, 48–49, 59, 67–68; Ex. 1003 ¶¶ 145, 158, 184, 203. That is, we determine that Petitioner has set forth reasoning with rational underpinning explaining why it would have been obvious to combine the teachings with a reasonable expectation of success. Based on the complete record presented, we determine Petitioner has shown by a preponderance of the evidence that claims 6–8 would have been obvious over the combination of Weaver and Lee ’053 or alternatively over the combination of Weaver and Song, and that claims 10 and 11 would have been obvious over the combination of Weaver and Lee ’149 or alternatively over the combination of Weaver and Bae.” slip op. at 33
Patent outcomesUS 9,263,509 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,263,509 - TCL Electronics Holdings Ltd. / TCL Industries Holdings Co., Ltd. v. University Of Rochester (Intellectual Ventures I, LLC)Institution deniedPTAB · Feb 13, 2025 · IPR2024-01245 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claims 1, 3, 4, 5, 8, 10, and 12 under § 314(a), finding the Fintiv factors favored denial and the petition did not show compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv factors”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) 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.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Thus, although Petitioner contends that Njølstad implements a dynamically changeable frequency for each domain wherein a local “rate requirement can dynamically be configured” such that “the locally generated clock rate is just high enough to perform the actual processing task” at that rate (Pet. 31 (citing Ex. 1009 § IV.D)), such teaching merely supports Petitioner’s contention that the frequency is dynamically changeable at the local level (id.). However, as Patent Owner points out, such showing is not a compelling disclosure of the frequency generation being independent of the frequencies of the other domains, as required by the challenged claims. Prelim. Resp. 28–34. For the foregoing reasons, we conclude that Petitioner has not presented compelling merits that Njølstad teaches “the frequency being dynamically changeable independently of the frequencies of the clock signals generated for others of the plurality of domains” as recited in claim 1 and similarly recited in claim 8.” slip op. at 25
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“However, Patent Owner argues that Iyer published after the invention to the ’443 patent was actually reduced to practice. Prelim. Resp. 27–28. In particular, Patent Owner provides evidentiary testimonies of Dr. Kaeli (Ex. 2001) and Mr. Albonesi (Ex. 2003) to support its contends the ’443 patent incorporates by reference a paper authored by the inventors and published in February 2002 (Ex. 2005), which demonstrates conception by providing a full written description of the claimed invention. Prelim. Resp. 6–16. According to Patent Owner, a simulation described in the paper embodied the invention in a tangible form, wherein the simulation described in the paper showed that the invention worked for its intended purpose. Id. at 16–19 (citing Exs. 2001, 2003, 2005). Similarly, Patent Owner contends that the application from which Soerensen issued was filed on August 29, 2002, which is after the invention date of the ’443 patent. Prelim. Resp. 35. According to Patent Owner, while Soerensen claims priority to the Soerensen Provisional Application (Ex. 1022), the passages from Soerensen relied on in the Petition are not entitled to the benefit of the filing date of the Soerensen Provisional Application because the subject matter was not disclosed in the manner provided by 35 U.S.C. § 112. Id. We recognize potential merits to Patent Owner’s position. That is, we do not find compelling Petitioner’s contention that the challenged claims would have been obvious Iyer or Soerensen.” slip op. at 31
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,089,443 - PTAB · Jan 27, 2025 · IPR2024-01130 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted IPR of claims 5–9 on all asserted grounds, finding a reasonable likelihood that BOE would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314, 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.” 35 U.S.C. § 314(a). On the preliminary record before us, we determine that Petitioner has satisfied this threshold requirement, and therefore we institute inter partes review of claims 5–9 of the ’842 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“impact the Board’s exercise of discretion, including the merits.” Fintiv, Paper 11, 6. “[W]here the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily denied institution under Fintiv.” Memorandum, 4–5. On the other hand, “in circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.” CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential). Here, factors 1–5 are either neutral or weigh at least slightly against discretionary denial of institution. Thus, on balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution, and we need not decide whether Petitioner presents a compelling unpatentability challenge. 1. Conclusion Based on our review of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny institution.” slip op. at 14
- Skill levelSkill level petitioner adoptedOther
“the art “would have had a Bachelors’ degree in electrical engineering or a comparable field of study, plus approximately one or more years of professional experience with electronic and optoelectronic system design,” and that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 3 (citing Ex. 1002 ¶¶ 45–46). Patent Owner does not offer an alternative definition. See generally, Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s unchallenged description of an ordinarily skilled artisan appears consistent with the subject matter discussed in the references and that of the challenged claims, for purposes of this Decision we apply Petitioner’s description of a person of ordinary skill in the art (without adopting, however, Petitioner’s open-ended “or more” language).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Both parties have submitted proposed claim constructions. Pet. 4–7; Prelim. Resp. 6. At this stage of the proceeding, however, we do not see the need to expressly construe any claim term, as the threshold question of institution can be decided without doing so. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where construction is not material to the dispute).” slip op. at 17
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,168,842 - PTAB · Apr 25, 2024 · IPR2024-00146 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1, 3–5, 7–11, 13–20, and 22–27 on all grounds, finding a reasonable likelihood of success on the obviousness grounds.
RulingsInstitution decision- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Our inquiry begins and ends with the first test pertaining to the field of the endeavor. Patent Owner is correct that the ’555 patent is in the field of video streaming over the internet with shifting of streaming content based on network conditions. See Ex. 1001, 1:31–34. Similarly, Ogdon discloses shifting presentation content that is transmitted over the internet based on network conditions. See, e.g., Ex. 1004, 1:9–15. The only potential discrepancy appears to be whether Ogdon’s disclosed presentation content can include streaming video. And Ogdon discloses an example where a presentation version may include “real time or animated video.” Id. at 2:61– 66; see also infra § II.D.3.a (discussing Ogdon’s disclosure of video presentations). We find that Ogdon’s disclosure of transmitting real-time video as part of a presentation is the same as video streaming. Thus, we conclude that Ogdon is analogous art because it is in the same field of endeavor as the ’555 patent. slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“reasonable likelihood of prevailing in showing that an ordinarily skilled artisan would have been motivated to combine Ogdon and Allen to yield this limitation. Ogdon teaches different quality versions of a presentation that may include video (see, e.g., Ex. 1004, 2:8–10, 2:30–66, 13:47–49, 22:44– 47, 24:55), and Allen expressly teaches encoding the same content at bitrates of 56 kbps, 300 kbps, and 600 kbps (see, e.g., Ex. 1005, 12:1–5). Based on these teachings, Petitioner shows sufficiently, on this record, that it would have been obvious to encode streaming video into low, medium, and high quality streams. See, e.g., Ex. 1003 ¶¶ 68–70. We also are sufficiently persuaded on this record that an ordinarily skilled artisan would have combined Allen with Ogdon to enable streaming video presentations for a variety of different available bandwidths. See, e.g., Ex. 1003 ¶ 70; Ex. 1004, code (57). In particular, Ogdon’s teaching of retrieving alternatively sized presentations based on transmission data rates supports Petitioner’s proposed combination with Allen’s teaching of encoding video at different bitrates. See Ex. 1004, code (57) (stating that a greater-sized presentation for a “higher transmission rate” has “corresponding enhanced quality of presentation” compared to a reduced-sized version for a “low transmission data rate”), 22:44–47 (stating that “as the expected amount of time for retrieving one or more presentation elements lengthens, . . . better presentation quality presentation elements may be retrieved (e.g., the presentation quality may be enhanced from limited or no animation to full animation)”). And Petitioner establishes sufficiently that an ordinarily skilled artisan reasonably would have expected success in making the combination, particularly given that Ogdon already contemplates alternative presentations for different transmission rates. See, e.g., Ex. 1003 ¶¶ 68, 70; Ex. 1004, code (57). Patent Owner’s arguments are directed to Ogdon alone and do not account for Petitioner’s proposed modification based on Allen.3 Such arguments do not show nonobviousness where Petitioner’s obviousness ground is based on a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Furthermore, to the extent Patent Owner argues that an ordinarily skilled artisan would not have been motivated to modify Ogdon as proposed, it fails to sufficiently explain this contention. For example, we do not read Ogdon to indicate that its presentation versions must be wholly different types of presentation materials, i.e., presentations in different languages or presentations tailored for different audiences. We also do not agree with Patent Owner (Prelim. Resp. 20–22) that Ogdon fails to teach or suggest video streaming for the same reasons discussed above.” slip op. at 21
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Based on the present record, we find that the secondary considerations findings from the ITC Investigation do not undermine the sufficiency of Petitioner’s obviousness showing at this stage.5 We note that Patent Owner “bears the burden of production with respect to evidence of secondary considerations of nonobviousness.” ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1373 (Fed. Cir. 2018). At this stage, Patent Owner merely references the findings of the ITC rather than adducing evidence of objective indica of nonobviousness in the first instance and attempting to establish a nexus to the invention of the ’555 patent. Further, Petitioner has adduced at least some evidence that the allegedly unique features of the Move Media Player were known in Ogdon, which tends to undermine the ITC’s nexus analysis. See, e.g., Ex. 1004, 14:46–49, 22:48–63. We also disagree with Patent 5 Patent Owner also argues that Dr. Houh’s testimony is unreliable because he failed to consider evidence of secondary considerations from the ITC Investigation. Prelim. Resp. 42–43. We decline to discount Dr. Houh’s testimony on this basis. Regardless of whether Dr. Houh addressed secondary considerations, we find his testimony relevant at this stage to our consideration of (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; and (3) the level of skill in the art. See Graham, 383 U.S. at 17–18. Owner (Prelim. Resp. 41–42) that Ogdon does not disclose streaming video for the same reasons mentioned above. See supra §§ II.D.1, II.D.3.a. For these reasons, we find that the evidence of secondary considerations in the present record does not undermine Petitioner’s showing for purposes of institution. We also decline to exercise our discretion to deny institution based on Petitioner’s alleged failure to address secondary considerations. Patent Owner will have the opportunity at trial to produce evidence related to secondary considerations of nonobviousness.” slip op. at 30
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Claim 18 recites, inter alia, “at least one storage device configured to store live event video, the live event video encoded at a plurality of different bit rates creating a plurality of streams including at least a low quality stream and a high quality stream.” Ex. 1001, 20:45–49. Claim 18 additionally recites that “the low quality stream and the high quality stream each encod[e] the same portion of the live event video.” Id. at 20:50–53. Petitioner cites Ogdon’s discussion of storing different versions of a presentation. See Pet. 17–19. Patent Owner argues that Ogdon fails to teach multiple copies of the same video encoded at different bitrates, as required by the claim. Prelim. Resp. 16 (citing Ex. 2001 ¶ 60). Having reviewed the parties’ arguments and the evidence of record, we determine that Petitioner has not sufficiently shown that Ogdon alone discloses storing the same portion of live event video as a low quality stream and a high quality stream. Although we preliminarily agree that Ogdon teaches the use of video as a version of a presentation, we do not agree that Ogdon alone discloses storing multiple copies of the same video. Specifically, Ogdon describes storing different versions of a presentation, rather than multiple copies of the same video.9 See Ex. 1004, code (57), 2:30–66, 13:47–49, 22:44–47, 24:55, claim 9. For these reasons, Petitioner does not show that there is a reasonable likelihood that it would prevail in establishing that Ogdon discloses claim 18. Petitioner’s analysis for claim 19, which depends from claim 18, is likewise deficient.” slip op. at 39
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,469,555 - PTAB · Apr 16, 2024 · IPR2024-00044 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1, 3–12, 14–20, 22–25, and 27–29 on all petitioned grounds, finding a reasonable likelihood of success on obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“i. Conclusion Regarding Claim 1 Petitioner has shown sufficiently at this juncture that the combination of Ogdon and Allen teaches all limitations of claim 1. Petitioner also has put forth a sufficient rationale for combining Allen with Ogdon with a reasonable expectation of success. Based on the present record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over the combination of Ogdon and Allen.” slip op. at 31
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“must consider “whether the same or substantially the same art previously was presented to the Office.” Advanced Bionics, Paper 6 at 8. Although we agree with Petitioner (Pet. 63–64) that Ogdon was not cited during prosecution, we still must consider whether Ogdon is substantially the same as Carmel. We determine that Ogdon is not substantially the same as Carmel because there are differences between them material to the way the Office previously considered the art. See Nokia of Am. Corp. v. Soto, IPR2023-00680, Paper 18 at 6 (Vidal Mar. 28, 2024) (“[P]rior art references are not ‘substantially the same’ when there are differences between them that are material to the Office’s prior consideration of the art.” (citing Wolfspeed, Inc. v. Trustees of Purdue University, IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023)). Both parties agree that the Examiner distinguished Carmel during prosecution because it did not teach streamlets of the same duration. Pet. 10–11 (citing Ex. 1002, 1270–71); Prelim. Resp. 37 (citing Ex. 1002, 1270–73). In contrast, Petitioner cites Ogdon in the Petition for teaching, inter alia, segments that have “approximately the same presentation duration.” See, e.g., Pet. 27 (quoting Ex. 1004, 2:49–55). For the same reasons discussed above (see supra § II.D.3.f), and based on the present record, we disagree with Patent Owner (Prelim. Resp. 38) that this disclosure does not teach streamlets of the same length. As such, we find that Petitioner applies Ogdon in a manner that is distinguishable from the way Carmel was understood by the Examiner during prosecution of the ’138 patent. Thus, we find that the same or substantially the same art or arguments were not previously presented, so we need not proceed past the first stage of the Advanced Bionics framework with respect to Ogdon. Advanced Bionics, Paper 6 at 8.” slip op. at 41
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Our inquiry begins and ends with the first test pertaining to the field of the endeavor. Patent Owner is correct that the ’138 patent is in the field of video streaming over the internet with shifting of streaming content based on network conditions. See Ex. 1001, 1:31–34. Similarly, Ogdon discloses shifting presentation content that is transmitted over the internet based on network conditions. See, e.g., Ex. 1004, 1:9–15. The only potential discrepancy appears to be whether Ogdon’s disclosed presentation content can include streaming video. And Ogdon discloses an example where a presentation version may include “real time or animated video.” Id. at 2:61– 66; see also infra § II.D.3.a (discussing Ogdon’s disclosure of video presentations). We find that Ogdon’s disclosure of transmitting real-time video as part of a presentation is the same as video streaming. Thus, we conclude that Ogdon is analogous art because it is in the same field of endeavor as the ’138 patent. For purposes of this Decision, we determine that Ogdon qualifies as prior art under 35 U.S.C. § 102(b) because Ogdon’s issue date of December 12, 2000, is more than one year before the earliest effective filing date of the challenged claims, which is April 30, 2004. Ex. 1001, code (60); Ex. 1004, code (45). slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“reasonable likelihood of prevailing in showing that an ordinarily skilled artisan would have been motivated to combine Ogdon and Allen to yield this limitation. Ogdon teaches different quality versions of a presentation that may include video (see, e.g., Ex. 1004, 2:8–10, 2:30–66, 13:47–49, 22:44– 47, 24:55), and Allen expressly teaches encoding the same content at bitrates of 56 kbps, 300 kbps, and 600 kbps (see, e.g., Ex. 1005, 12:1–5). Based on these teachings, Petitioner shows sufficiently, on this record, that it would have been obvious to encode streaming video into low, medium, and high quality streams. See, e.g., Ex. 1003 ¶¶ 65–67. We also are sufficiently persuaded on this record that an ordinarily skilled artisan would have combined Allen with Ogdon to enable streaming video presentations for a variety of different available bandwidths. See, e.g., Ex. 1003 ¶ 67; Ex. 1004, code (57). In particular, Ogdon’s teaching of retrieving alternatively sized presentations based on transmission data rates supports Petitioner’s proposed combination with Allen’s teaching of encoding video at different bitrates. See Ex. 1004, code (57) (stating that a greater-sized presentation for a “higher transmission rate” has “corresponding enhanced quality of presentation” compared to a reduced-sized version for a “low transmission data rate”), 22:44–47 (stating that “as the expected amount of time for retrieving one or more presentation elements lengthens, . . . better presentation quality presentation elements may be retrieved (e.g., the presentation quality may be enhanced from limited or no animation to full animation)”). And Petitioner establishes sufficiently that an ordinarily skilled artisan reasonably would have expected success in making the combination, particularly given that Ogdon already contemplates alternative presentations for different transmission rates. See, e.g., Ex. 1003 ¶¶ 65, 67; Ex. 1004, code (57). Patent Owner’s arguments are directed to Ogdon alone and do not account for Petitioner’s proposed modification based on Allen.3 Such arguments do not show nonobviousness where Petitioner’s obviousness ground is based on a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Furthermore, to the extent Patent Owner argues that an ordinarily skilled artisan would not have been motivated to modify Ogdon as proposed, it fails to sufficiently explain this contention. For example, we do not read Ogdon to indicate that its presentation versions must be wholly different types of presentation materials, i.e., presentations in different languages or presentations tailored for different audiences. We also do not agree with Patent Owner (Prelim. Resp. 22–25) that Ogdon fails to teach or suggest video streaming for the same reasons discussed above. See supra §§ II.D.1, II.D.3.a. Thus, based on the present record, Patent Owner’s arguments regarding this limitation are unavailing.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,470,138 - PTAB · Nov 29, 2022 · IPR2022-01067 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR on claims 1–4, 8, 10–19, and 23–25 on all asserted grounds, finding a reasonable likelihood of unpatentability for at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“. . . the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure, 3 (footnote omitted; citing Sotera). In other words, under the Interim Procedure, a petitioner may avoid discretionary denial of the petition based on a parallel district court litigation by providing a Sotera-style stipulation. The Interim Procedure does not, however, make a Sotera-style stipulation a prerequisite for institution. Under our informative precedent, an inter partes review may be instituted despite the absence of a Sotera-style stipulation. Sand Revolution at 12 n.5 (instituting inter partes review notwithstanding the absence of a stipulation not pursue any ground that could have been reasonably raised in an inter partes review). We find that Petitioner’s stipulation (Ex. 1018) is the same as the one in Sand Revolution, where the petitioner stipulated that, if the IPR is instituted, the petitioner will not pursue the same grounds in the district court litigation. Sand Revolution at 11–12. In that case, the panel held that petitioner’s stipulation “mitigates to some degree the concerns of duplicative efforts between the district court and the Board as well as concerns of potentially conflicting decisions” and that Fintiv factor 4 “weighs marginally in favor of not exercising discretion to deny institution.” Id. at 12.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). 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 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the information presented in the Petition and the Preliminary Response, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing that at least one of the challenged claims is unpatentable, and we do not exercise our discretion to deny institution. Therefore, we grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) “would have had a Master’s degree in electrical engineering or an equivalent field and two years of academic or industry experience working with error correction in memory devices.” Pet. 14 (citing Ex. 1002 ¶ 19). For purposes of the preliminary response, Patent Owner does not dispute Petitioner’s definition of a POSITA. Prelim. Resp. 18. For purposes of this Decision, we apply Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“what it means to “partially decode.” Prelim. Resp. 14–15. We disagree. Although the sentence describes the function of a decoder module, it does not describe what it means to decode (or partially decode) encoded data. We decline to adopt Patent Owner’s proposed construction because it replaces the claim language “decode the received encoded data to generate a plurality of partially decoded data streams” with a sentence from the Specification that does not describe “decod[ing]” or “partially decoded.” Patent Owner’s proposed construction fails to capture the meanings of these words. Instead, it merely replaces the claim term “decode” with the broader term “process.” We agree with Patent Owner, however, that “decode” requires more than just buffering. The Specification twice mentions buffering. Ex. 1001, 6:11–14 (quoted above); id. at 6:46–50 (“[E]ncoded data may be read from a set of one or more of sectors . . . by a decoder sub-module . . . and processed (e.g., buffered, de-interleaved, decoded to some extent, etc.) to generate a data stream.”) In each instance, buffering is disclosed along with de-interleaving and decoding as actions performed by a decoder module or submodule. Nowhere does the Specification define “decode” to mean “buffer” or “de-interleave.” Patent Owner does not dispute the portion of Petitioner’s construction that defines “decode” to mean “distinguish error correction bits from information bits.” Pet. 14–15. Both parties rely on Patent Owner’s district court infringement contentions, where Patent Owner asserted that the disputed claim limitation is met by the accused products in part because “[a]t a minimum, the ECC bits will be identified, distinguished from, and Resp. 15.7 Neither party directs us to intrinsic evidence to support this definition of “decode.” Nevertheless, because this portion of Petitioner’s proposed construction is undisputed at this stage of the proceeding, we adopt it for purposes of our Decision. Accordingly, we construe the phrase “decode the received encoded data” to mean “distinguish error correction bits from information bits in the received encoded data.” Although the term may not be limited to this meaning, no other acceptable definition has been presented on this record. At this stage of the proceeding, we do not construe the phrase “to generate a plurality of partially decoded data streams” because neither party has proposed a construction for that portion of the claim language.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,615,700 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Jan 18, 2022 · IPR2021-01113 · APJ Thu A Dang · IPR · Institution
The Board denied institution of IPR challenging claims 14–16 and 20–25 under § 325(d), finding the same or substantially the same arguments were previously presented and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Under § 325(d), in “determining whether to institute [an inter partes review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) 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; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Here, Petitioner has the burden to show that the Examiner erred in determining that Chu ’330 incorporated by reference the ’886 provisional. Advanced Bionics, Paper 6 at 8.” slip op. at 17
§ 102 anticipationDiscretionary denial - PTAB · Dec 8, 2021 · IPR2021-00608 · APJ Thu A Dang · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving institution denied under § 325(d) because the same or substantially the same arguments were previously presented and examiner error was not shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in its petition. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Advanced Bionics, we exercised our discretion under 35 U.S.C. § 325(d) and determined not to institute inter partes review. Dec. 7−26 (citing Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte Gmbh, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)). As to Part 1 of the Advanced Bionics framework, we determined that the same or substantially the same arguments were presented previously to the Office. Id. at 10−13. Under Part 2 of the Advanced Bionics framework, we determined that Petitioner failed to show that the Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the claims in the ’654 patent. Id. at 14−26.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s arguments are new arguments raised for the first time in its Rehearing Request. Petitioner acknowledges that “NRG and Hollmer were not cited in the Petition.” Req. Reh’g 10. Nevertheless, Petitioner alleges that it “could not have anticipated the Patent Owner’s mischaracterization of the Droplets decision, nor the Board’s reliance on this mischaracterization,” and that Petitioner was not authorized to file a reply to the Patent Owner Preliminary Response. Id.; see also id. at 2−3, fn.1. Petitioner’s new arguments in connection with Hollmer and NRG are improper. As we discussed above, Patent Owner did not mischaracterize and we did not misapprehend Droplets. It was not necessary to authorize Petitioner to file a reply, as we were capable of determining whether Patent Owner mischaracterizes Droplets. As discussed above, Petitioner fails to recognize that the language relied upon by Patent Owner in Droplets is consistent with 37 C.F.R. § 1.57 and MPEP § 608.01(p). Although Petitioner relies on MPEP § 608.01(p) in its Petition, Petitioner now in its Rehearing Request for the first time suggests that we should ignore MPEP § 608.01(p) and the case law cited in MPEP § 608.01(p). Pet. 11–12; Req. Reh’g 6−7. A request for rehearing is not an opportunity to submit new arguments, after the decision has noted the deficiencies in the petitioner’s original analysis. 37 C.F.R. § 42.71(d). It is Petitioner’s burden to identify specifically all matters we misapprehended or overlooked in our Decision to Institute. We could not have misapprehended or overlooked the new arguments that were not presented in the record until after the Decision.” slip op. at 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Contrary to Petitioner’s contentions, section 1.57 of Title 37 of the Code of Federal Regulations is not a “statute,” but a regulation that became effective on September 21, 2004. See 69 Fed. Reg. 56,482. The ’882 application, which incorporated Chu ’886 by reference, was filed on September 8, 1998, and issued as Chu ’330 on February 5, 2002. Ex. 1005, codes (21), (22), (45), (60), 6:1–7. The ’654 patent, which incorporated the ’882 application by reference, is a reissue of Application No. 09/312,199 (“the ’199 application”) filed on May 14, 1999, now U.S. Patent No. 6,634,777 (“the ’777 patent”), issued on November 4, 2003. Ex. 1001, codes (63), (64); 5:63–67. Both the ’882 application (issued as Chu ’330) and the ’199 application (reissued as the ’654 patent) were filed and issued as patents prior to the effective date, September 21, 2004, of 37 C.F.R. § 1.57. Petitioner does not explain why the applicant should have complied with 37 C.F.R. § 1.57, which did not exist at the time of filing of those applications or issuance of those patents that incorporated by reference Chu ’886 and the ’882 application. Pet. 7–8, 10−17; Req. Reh’g 1−12. We decline to apply 37 C.F.R. § 1.57 retroactively to the incorporation by reference statements submitted in the ’882 application and the ’199 application.” slip op. at 6
§ 102 anticipationDiscretionary denial - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Dec 6, 2021 · IPR2021-01108 · APJ Thu A Dang · IPR · Institution
The Board denied institution for claims 1–3, 7–9, 13–17, 19, 20, 25, and 33–35 under § 325(d), finding the same arguments were previously presented and no material examiner error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) 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; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) 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; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“II. ANALYSIS 35 U.S.C. § 325(d) Petitioner relies upon Chu ’330 in both of the asserted grounds.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Decided for patent owner
“As such, we find that Petitioner has failed to show (1) the ’768 patent is not entitled to a priority date before April 15, 2011, (2) the ’436 patent’s parent applications in the’768 patent family did not properly incorporate by reference the ’886 provisional, and (3) the amendments adding the subject matter from the ’886 provisional improperly introduced new matter. Pet. 18−30.” slip op. at 23
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 9,529,768 - PTAB · Dec 6, 2021 · IPR2021-00605 · APJ Thu A Dang · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving institution denied under § 325(d) because the same or substantially the same arguments were previously presented and material Examiner error was not shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in its petition. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under Part 2 of the Advanced Bionics framework, Petitioner has the burden to show that “[t]he Examiner erred by not realizing that Chu ’330, Chu ’185, and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the ’768 Patent claims,” as Petitioner alleges in its § 325(d) analysis. Pet. 7, 9−18. Upon consideration of Petitioner’s Request for Rehearing, we are not persuaded by Petitioner’s arguments of Examiner error.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s arguments are new arguments raised for the first time in its Rehearing Request. Petitioner acknowledges that “Hollmer and NRG were not cited in the Petition.” Req. Reh’g 10. Nevertheless, Petitioner alleges that it “could not have anticipated the Patent Owner’s mischaracterization of the Droplets decision, nor the Board’s reliance on this mischaracterization,” and that Petitioner was not authorized to file a reply to the Patent Owner Preliminary Response. Id.; see also id. at 2−3, fn.1. Petitioner’s new arguments in connection with Hollmer and NRG are improper. As we discussed above, Patent Owner did not mischaracterize and we did not misapprehend Droplets. It was not necessary to authorize Petitioner to file a reply, as we were capable of determining whether Patent Owner mischaracterizes Droplets. As discussed above, Petitioner fails to recognize that the language relied upon by Patent Owner in Droplets is consistent with 37 C.F.R. § 1.57 and MPEP § 608.01(p). Although Petitioner relies on MPEP § 608.01(p) in its Petition, Petitioner now in its Rehearing Request for the first time suggests that we should ignore MPEP § 608.01(p) and the case law cited in MPEP § 608.01(p). Pet. 11; Req. Reh’g 6−7. A request for rehearing is not an opportunity to submit new arguments, after the decision has noted the deficiencies in the petitioner’s original analysis. 37 C.F.R. § 42.71(d). It is Petitioner’s burden to identify specifically all matters we misapprehended or overlooked in our Decision to Institute. We could not have misapprehended or overlooked the new arguments that were not presented in the record until after the Decision.” slip op. at 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“codes (21), (22), (45), (60), 6:1–7. The initial parent application in the ’768 patent’s priority chain, U.S. Application No. 09/569,758 (“the ’758 application”), which incorporated the ’882 application by reference, was filed on May 12, 2000, and issued as U.S. Patent No. 6,718,415 B1 (“the ’415 patent”) on April 6, 2004. See Ex. 1001, code (63); Ex. 1008, code (45), 4:50–53. Both the ’882 application (issued as Chu ’330) and the ’758 application (issued as the ’415 patent) were filed and issued as patents prior to the effective date, September 21, 2004, of 37 C.F.R. § 1.57. Petitioner does not explain why the applicant should have complied with 37 C.F.R. § 1.57, which did not exist at the time of filing of those applications or issuance of those patents that incorporated by reference Chu ’886 and the ’882. Pet. 7, 9−18; Req. Reh’g 1−13. We decline to apply 37 C.F.R. § 1.57 retroactively to the incorporation by reference statements submitted in the ’882 application and the ’758 application.” slip op. at 7
§ 102 anticipationDiscretionary denialPatents in suitUS 9,529,768
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.