- PTAB · Dec 18, 2024 · IPR2024-00981 · APJ Georgianna W Braden · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood of prevailing on the Kleve-based obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to determine whether to institute review. Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Therefore, pursuant to § 314, we institute an inter partes review of claims 1–20 in the ’188 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Patent Owner that Examiner’s notation indicates that Zaid was considered. We do not agree, however, with Patent Owner’s position regarding Petitioner’s challenges based on Kleve. The challenges over Kleve alone or in combination with Sekiyama, Mottla, and/or Patenaude counsel us not to discretionarily deny institution. Patent Owner does not dispute that Kleve, Sekiyama, Mottla, and/or Patenaude were not before the Office. See Prelim. Resp. 15–24; Prelim. Sur-reply 5. Although Patent Owner characterizes the Petition’s challenges based on Kleve as an “attempt to end-run Section 325(d) by including additional grounds that lack merit” (Prelim. Resp. 23–24), we disagree. Rather, explained in detail below, we are persuaded by Petitioner’s challenges based on Kleve and it is the reason for institution. Accordingly, at this stage of the proceeding, Petitioner’s challenges based on Zaid are not relevant. As such, we determine any analysis under Advanced Bionics is inapplicable, and we do not exercise our discretion under § 325(d) to deny institution. b. Advanced Bionics Prong Two: whether “the Office erred in a manner material to the patentability of the challenged claims” Because the Board is persuaded to instituted based on challenges not involving Zaid, , we will not consider the second part of the Advanced Bionics framework.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We agree with Patent Owner that the language in Petitioner’s stipulation does not eliminate completely any overlap with district court invalidity arguments. Petitioner’s stipulation allows Petitioner to use any prior art reference that is not relied on in the Petition. This may not fully address “concerns of inefficiency and the possibility of conflicting decisions.” See Fintiv, Paper 11 at 12. Nonetheless, Petitioner’s stipulation does decrease the overlap in issues and mitigates to a great degree the concerns regarding duplicative efforts and potentially conflicting decisions. Additionally, we agree with Petitioner that the fact that the Petition challenges claims that are not asserted in the litigation weighs marginally in its favor. Based on the foregoing discussion, we determine that factor four weighs against discretionary denial.” slip op. at 22
- BurdenInstituted
“teaches, or at least suggests, that the user’s “request includes a condition of use of the vehicle as set by the user via the user account” because we are persuaded that the distribution of Kleve’s virtual e-key includes a rental period restriction. Specifically, we are persuaded by the Petition’s reliance on Kleve’s express disclosure that “terms and conditions for the rental period” are agreed to before the virtual key is generated. See Pet. 15 (quoting Ex. 1004 ¶ 38). We preliminarily agree with Petitioner that Kleve describes an e-key that is only operable during a rental period because Kleve discloses “[t]he virtual key may also be sent to the vehicle configuring the VCS to enable the keyless drive system for the appropriate Temporary User during a given rental period.” Ex. 1004 ¶ 39; see Pet. 16. We note Patent Owner’s citations to Kleve’s Figures 2 and 5 that indicate control restrictions are added after the distribution of a virtual key. At this stage of the proceeding, however, based on the disclosure of Kleve we are persuaded the rental period would be included as a restriction when the virtual key is created at step 206 of Figure 2 prior to the distribution of the virtual key at 210. See Ex. 1004 ¶¶ 38–39. At this stage, we credit the testimony of Dr. Almeroth, who opines that Kleve discloses that certain restrictions are sent with the request to generate a virtual key. Ex. 1003 ¶¶ 118–123. Specifically, Dr. Almeroth testifies that Kleve discloses that the virtual key “enable[s] the keyless drive system for the appropriate Temporary User during a given rental period.” restrictions were sent with the request so that the virtual key could be associated with said restrictions.” Id. (citing Ex. 1004 ¶¶ 39, 68 (“Once the rental period has expired the virtual key may be reset and cleared from the VCS.”)). Dr. Almeroth further testifies that the virtual key in Kleve is always generated after the rental agreement. Id. (citing Ex. 1004 ¶¶ 39, 68 (“[O]nce the Temporary User selects the vehicle, pays the appropriate amount and signs a consent agreement, then the system may generate a virtual key to distribute to the Temporary User and VCS.”)). Thus, after review of the arguments and evidence, we find that Petitioner has provided adequate explanation and supporting evidence that Kleve teaches or suggests the challenged claim limitation.” slip op. at 40
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,365,188 - AT&T Services Inc. / T-Mobile USA, Inc. et al. v. Innovative Sonic Ltd.Institution deniedPTAB · Dec 12, 2024 · IPR2024-00991 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground for claims 1–11.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner responds that “a person with the 3-year experience proposed by Petitioner would not have the intimate knowledge of the existing standardized cellular system” required to understand “how a proposed change would impact the rest of the system.” Prelim. Resp. 7. But Patent Owner also states that engineers participating in the development of the relevant cellular specifications “would not be expected to be familiar with all relevant aspects of the specifications” given their length and complexity. Id. at 7–8. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above, because we are satisfied that it generally comports with the level of skill necessary to understand and implement the teachings of the ’883 patent and the asserted prior art. To the extent Patent Owner disagrees (see Prelim. Resp. 6–8), it fails to sufficiently explain its contrary position by, for example, providing its own proposed level of skill.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “the Board does not need to expressly construe any terms” in this proceeding because “the prior art in this Petition discloses all limitations under any plausible construction.” Pet. 10–11. Patent Owner similarly states that “all terms are entitled to their plain and ordinary meaning.” Prelim. Resp. 21. We agree with the parties that it is not necessary to construe any claim terms or phrases in 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.”) (cleaned up).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“(step 406) discloses the claimed “second request” (Pet. 44–45),9 but Petitioner fails to show that this message discloses a request. See Prelim. Resp. 46–48. Han explains that the dual connection setup response in step 406 is a “dual connection setup request acknowledge (ACK)” message sent in response to “dual connection setup request” received in step 404. Ex. 1007 ¶¶ 40–42; accord Pet. 42–44. An acknowledgement is not a request, and Petitioner fails to sufficiently support its contention to the contrary (see Pet. 44–45). According to Petitioner, the acknowledgement message is “a request to change a data path” because the data path is “change[d] . . . based on this message” (id. at 45 (citing Ex. 1007 ¶¶ 42–47; Ex. 1003 ¶ 202)); however, this is faulty reasoning. At most, Petitioner’s argument shows that the acknowledgement is a message “to change a data 9 We note that this is the same message relied upon by Petitioner to teach the claimed “accept message” recited earlier in claim 1. Compare Pet. 44– 45, with id. at 43–44. We need not (and do not) decide whether Petitioner has sufficiently shown that this message discloses two separate claim elements. path,” not that it is a request to do so. In other words, even if Han’s acknowledgement message (in step 406) is a condition precedent to changing the data path, this does not make the message a “request.” Although Dr. Mahon agrees with Petitioner, his analysis mirrors Petitioner’s arguments and suffers from the same deficiencies. See Ex. 1003 ¶¶ 202– 203; see also Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1473 (Fed. Cir. 1997) (“An expert’s conclusory testimony, unsupported by the documentary evidence, cannot supplant the requirement of anticipatory disclosure in the prior art reference itself.”).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,736,883 - PTAB · Nov 22, 2024 · PGR2024-00034 · APJ Patrick R Scanlon · PGR · Institution
Instituted PGR on claims 1–19 and all asserted grounds after finding at least one claim more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review. See 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (2022). To institute a post-grant review, we must determine that “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons set forth below, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of at least one challenged claim. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We note that the identification of a Ph.D. as an example of “more formal education” creates a vast range of education relative to a bachelor’s degree. Thus, we treat the identification of a Ph.D. just as it is—an example—and not a requirement. In this case, “more formal education” can be satisfied by a level of education less than a Ph.D (but greater than a bachelor’s degree). 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, definition, limited as discussed above, for the purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“would have understood Unger’s disclosure to “suggest the use of a torsion spring to facilitate attachment and detachment, because torsion springs are designed to impart this functionality.” Id. (citing Ex. 1002 ¶ 118). Petitioner also asserts that one of ordinary skill in the art would have “understood that there were a limited number of ways to impart the referenced resilient or flexible ‘manipulation,’” and “would have been motivated to look to various known solutions to impart the suggested functionality, including the torsional spring mechanism of Smith that is used in a similar hearing protection device application for a similar purpose as Unger’s mounting arms (to apply a clamping force).” Id. at 32 (citing Ex. 1002 ¶¶ 120–121).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,736,855 - PTAB · Oct 31, 2024 · IPR2024-00858 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 5–7 and 16–19, finding a reasonable likelihood that claims 5–7 and 16–19 are unpatentable over Samartgis and at least claims 5 and 19 over Leoncavallo.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“U.S.C. § 314(a) due to the advanced state of the parallel district court action, and, in doing so, relies heavily on the district court’s scheduled trial date of September 22, 2025. See Prelim. Resp. 51, 54. While the district court’s scheduled trial date may be earlier than the Board’s projected deadline for a final written decision here, CamelBak’s reliance on that date is misplaced. The Office takes the position that a district court’s scheduled trial dates are “unreliable and often change” and that a more reliable indicator is the district court’s “median time-to-trial for civil actions,” which, in this case, would place the district court’s trial date after the projected deadline of any final written decision here. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director’s Interim Procedure”), at 8–9. Thus, CamelBak’s reliance 5 US D586,184 S, issued Feb. 10, 2009 (Ex. 1006, “Miller”). on the district court’s scheduled trial date has no bearing on whether we should discretionarily deny institution. Of greater relevance is Trove’s express stipulation not to pursue the same grounds in the district court action as advanced in the petition or any ground that relies on the prior art references cited in the petition. See Pet. 100. Although not exactly a Sotera stipulation, the Office nonetheless recognizes that such stipulations further mitigate concerns of potentially conflicting decisions and duplicative efforts between us and the district court. See Director’s Interim Procedure, at 7–8. Thus, given Trove’s stipulation and the fact that the district court’s median time-to-trial is after the projected deadline of our final written decision here, we will not discretionarily deny institution under § 314(a).” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We disagree that Samartgis is the substantially the same as the corresponding design patent cited during prosecution, mainly because the design patent fails to show the closure retention mechanism that is clearly shown and described in Samartgis and goes to the very heart of Trove’s showing of anticipation and obviousness. Compare Ex. 1004, Figs. 3–5 (showing lug members 15, 16 and ramp sections 23, 25, 27), with Ex. 2001, Figs. 1–8 (omitting any depiction of lug members or ramp sections). Thus, Samartgis clearly was not considered. And, although Leoncavallo and Miller may arguably have been considered during prosecution, “[w]hen instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 42 C.F.R. § 42.108(a). As such, we will not discretionarily deny institution under § 325(d). B. Level of Ordinary Skill in the Art” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Trove proposes that one of ordinary skill in the art would have had: an undergraduate degree in mechanical engineering or equivalent coursework, and a year or more of experience in designing, prototyping, and/or manufacturing fluid containers or similar products . . . [and that] [m]ore work experience may substitute for a lower level of education, and vice versa. Pet. 17–18 (citing Ex. 1003 ¶¶ 25–30). CamelBak appears to agree. See Prelim. Resp. 16 (“Patent Owner assumes Petitioner has correctly stated the level of ordinary skill in the art and does not set forth its own definition.”). At this stage, we see no reason to depart from Trove’s proposed definition, as it appears reasonable and consistent with the asserted prior art and the ’252 patent.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“At this stage, we do not see the need to resolve the § 112(f) issue in light of Trove’s express and unrebutted showing that the prior art teaches sufficiently analogous structure to that identified in the ’252 patent for performing the disputed functional limitations of the claimed “closure retention mechanism.” See Pet. 35 (asserting that “[Samartgis’s] lug members 15 and 16 also are at least equivalent to the structure identified in the specification (i.e., the two or more spaced-apart tabs on the handle)” because “[l]ike the opposed tabs of the ’252 patent, the lug members 15 and 16 are projections that extend from the inner surface of the handle to engage the closure.”). Indeed, at this stage, CamelBak chooses not to address Trove’s showing in this regard, instead arguing that “the construction of ‘closure retention mechanism’ is irrelevant because [Trove] fails to show lug members 15 and 16 are configured to meet other limitations of claims 5 and 19.” Prelim. Resp. 20 n.7. That said, to the extent either party believes it is necessary for final resolution of patentability, they should explore the § 112(f) issue further during the trial phase.” slip op. at 10
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 8,905,252 - PTAB · Oct 22, 2024 · IPR2024-00786 · APJ Frances L Ippolito · IPR · Institution
The Board instituted IPR of claims 10–20 on all petitioned grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented, we conclude there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 10–20 of the ’268 patent as unpatentable under the challenges presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review as to these claims of the ’268 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Nonetheless, Petitioner’s stipulation mitigates to a great degree the concerns regarding duplicative efforts and potentially conflicting decisions. Thus, we determine that the fourth Fintiv factor weighs against discretionary denial of institution.” slip op. at 48
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). The Federal Circuit has laid out two separate tests to determine whether a reference is analogous art to the claimed invention, i.e., whether one of ordinary skill in the art would even look to the teachings of that reference. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). They are: “(1) whether the art is from the same field of [the inventor’s] endeavor” 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.” Id.; see also In re Klein, 647 F.3d at 1348.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“recognizing the heterogeneity of vehicles, one would have been motivated to determine applicable settings (e.g., command codes) that are compatible with settings that are settable in the selected vehicle but would avoid determining applicable settings that are incompatible with settings that are settable in the selected vehicle, ensuring that Xiao’s server 118 does not attempt to command vehicles to do things they cannot do, potentially resulting in unexpected and/or undesired vehicle configurations or errors. Pet. 49; Ex. 1009 ¶ 191. Petitioner adds that “[a]voiding such undesirable effects would be a predictable result of implementing Hayashi’s known method of determining compatibility.” Id. For the purposes of institution, Petitioner’s arguments and Dr. Almeroth’s testimony are better supported by the Xiao and Hayashi. Nevertheless, the parties are encouraged to further develop the record on this issue after institution. After review of the arguments and evidence currently of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that Xiao in combination with Hayashi renders independent claim 10 obvious.” slip op. at 40
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,171,268 - Vicor Corporation v. Delta Electronics, Inc.Institution deniedPTAB · Oct 2, 2024 · IPR2024-00706 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution on all challenged claims and grounds because Petitioner did not show a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“The Board has indicated that “one petition should be sufficient to challenge the claims of a patent in most situations.” Consolidated Trial Practice Guide 59 (Nov. 2019) (“CTPG”).6 But “the Board recognizes that there may be circumstances in which more than one petition may be necessary.” Id. Here, although there is overlap in the prior art asserted, there are clear differences in the limitations in the respective claim sets in each case, which requires different analysis. The issues related to a potentially different priority date for claims in the -715 case also support the need for two petitions. Additionally, under these circumstances, it is not apparent there has been a substantial benefit afforded to Petitioner by filing two petitions. Thus, we determine that Petitioner’s filing of two parallel petitions does not weigh in favor of exercising our discretion to deny institution in this particular case.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not challenge Petitioner’s definition of a person of ordinary skill in the art and its definition appears to be similar to that of Petitioner’s definition. Prelim. Resp. 10. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’534 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “[t]he invalidity issues raised in this Petition may be resolved without any formal claim construction.” Pet. 3. Patent Owner offers no claim construction. Prelim. Resp. 9–10. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,877,534 - Vicor Corporation v. Delta Electronics, Inc.Institution deniedPTAB · Oct 2, 2024 · IPR2024-00715 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Vicor had not shown a reasonable likelihood of prevailing on any challenged claim over the asserted grounds.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“The Board has indicated that “one petition should be sufficient to challenge the claims of a patent in most situations.” Consolidated Trial Practice Guide 59 (Nov. 2019) (“CTPG”).7 But “the Board recognizes that there may be circumstances in which more than one petition may be necessary.” Id. Here, although there is overlap in the prior art asserted, there are clear differences in the limitations in the respective claim sets in each case, which requires different analysis. The issues related to a potentially different priority date for claims in this case also support the need for two petitions.8 Additionally, under these circumstances, it is not apparent there has been a substantial benefit afforded to Petitioner by filing two petitions. Thus, we determine that Petitioner’s filing of two parallel petitions does not weigh in favor of exercising our discretion to deny institution in this particular case.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had (1) at least a bachelor’s degree in electrical engineering or a related field, and (2) at least two years of industry experience in power engineering” as of the date of the invention and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Pet. 3–4 (citing Ex. 1003 ¶¶ 47–48). 7 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. 8 We address the merits of the priority issue below. Patent Owner does not challenge Petitioner’s definition of a person of ordinary skill in the art and its definition appears to be similar to that of Petitioner’s definition. Prelim. Resp. 9. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’534 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “[t]he invalidity issues raised in this Petition may be resolved without any formal claim construction.” Pet. 3. Patent Owner offers no claim construction. Prelim. Resp. 9. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore do not institute inter partes review.” slip op. at 2
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,877,534 - PTAB · Oct 1, 2024 · IPR2024-00705 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–6 under all five grounds, finding a reasonable likelihood of unpatentability based on Zeng-014 and Vinciarelli-218.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the first electronic component’ for the first connection part is a structural feature or relationship.” Prelim. Resp. 8 (citing Ex. 2001 ¶¶ 52–54). Here, claim 1 requires a structure in which the first connection part comprises a first terminal at one end coupled to a surface of a carrier such as a circuit board, and a second terminal at the other end attached to a surface of the first component, such that the first connection part has mechanical support of the first electronic component. See Ex. 1001, 15:31–37. We are persuaded by Patent Owner’s contention that “this claim language connotes sufficient structural characteristics that preclude a product-by-process.” Prelim. Resp. 9.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“B. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). There is no requirement that the prior art must use the same words to describe a claim element in order to teach or disclose that claim element. Identity of terminology is not required for a claim element to be anticipated by the prior art without resorting to obviousness. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The Federal Circuit has repeatedly warned that there has to be evidence of “glue” to make this specific combination, and not just the use of the claim as the roadmap for making the combination of prior art. See, e.g., InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1348–49 (Fed. Cir. 2014) (“Dr. Yanco’s testimony was nothing more than impermissible hindsight; she opined that all of the elements of the claims disparately existed in the prior art, but failed to provide the glue to combine these references.”). Here, Petitioner’s alleged motivations to modify the modules Vinciarelli-218 to use the “connection part by curving a piece of metal against an electronic component” of Zeng-014 (Pet. 69) reflect impermissible hindsight bias.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,819,263 - PTAB · Sep 18, 2024 · IPR2024-00702 · APJ Sharon Fenick · IPR · Institution
The Board instituted review of claims 1–6 and 8–16 on all asserted grounds, finding a reasonable likelihood that the Nair and Forsberg combination renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Board has authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be authorized unless the information in the Petition and any preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’817 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner, citing Dr. Bims’s declaration, asserts that, “[a] person of ordinary skill in the art (“POSITA”) in the subject matter of the ’817 patent would have had a master’s degree in electrical engineering, computer engineering, or computer science, or equivalent and at least three years of experience in the field of telecommunications or wireless systems,” and that “[a]dditional education might compensate for less experience, and vice-versa.” Pet. 10–11 (citing Ex. 1002 ¶ 22). Patent Owner asserts that one of ordinary skill would have had “a bachelor’s degree in electrical engineering, computer engineering, or computer science with (1) at least three years of experience in the field of telecommunications or wireless systems; and/or (2) an advanced degree in field of telecommunications or wireless systems.” Prelim. Resp. 16. We do not discern a meaningful difference between the two parties proposals. Petitioner’s proposal appears consistent with the problems and solutions in the ’817 patent and prior art of record and is supported by expert testimony. We note, however, that the open-ended language “at least” expands the range of experience indefinitely with no upper bound. Upon this preliminary record and for the purposes of institution, we adopt Petitioner’s definition of the level of skill with the exception that we delete the words “at least.”” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither party makes a claim construction proposal or indicates that any claim requires construction. Pet. 11; see generally Prelim. Resp. We note that an argument was raised that presents an implicit construction question regarding whether a flag which “only identifies if encryption [is] ‘on’ or ‘off’” (Prelim. Resp. 24) teaches or suggests “an encryption scheme identifier that identifies an encryption scheme used by the UE to encrypt the subscription identifier in the SUCI” (as recited in limitation 1d of claim 1 and identically in claims 9, 10, and 15). We address that argument below, in Sections II.D.3.c.ii and iii of this Decision. With that exception, we do not discern that any claim terms require construction at this point in the proceeding for the purpose of institution. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“i. Nair Provisional’s Support for a Claim in Nair Patent Owner argues that the Petition is deficient because it does not show that the disclosure in the Nair Provisional supports at least one claim in Nair, even though Nair is subject to the AIA and Patent Owner concedes that the Board’s precedential opinion in Penumbra concludes we do not need to make such a determination regarding support for at least one claim to reach a prior art determination under the AIA. Prelim. Resp. 23–24 n.6; Penumbra, 2023) (precedential). Following that precedent, we decline to require a showing of support in the Nair Provisional for at least one claim in Nair and instead only require that the ministerial requirements for claiming priority were met. See Penumbra, Paper 34 at 32–33. Petitioner argues that the “ministerial requirements” described in Penumbra have been met. Pet. 4–5 (noting that Nair contains a priority claim to the Nair Provisional, was filed within 12 months of the Nair Provisional, and includes a common inventor). Patent Owner does not contest that these requirements have been met, and upon our examination, we agree that they appear to have been met. Ex. 1004, codes (22), (60), (72); Ex. 1008, 1, 4, 38. Thus, on the present record and for the purposes of institution, the disclosures of Nair are prior art, to the extent that the relied-upon disclosures are included in the Nair Provisional. ii. Nair Provisional’s Date for Cited Portions of Nair Patent Owner also argues that the Petition relies on material in Nair that was added after the filing of the Nair Provisional, and that this material cannot be properly relied on as prior art. Prelim. Resp. 19–23. We address these specific arguments regarding material Petitioner references from Nair (and the Nair Provisional) below, in our analysis with respect to the respective limitations of claim 1 these citations relate to.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,425,817 - PTAB · Apr 25, 2024 · IPR2024-00024 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–4, finding a reasonable likelihood that claim 1 would be unpatentable over Harada and Gutberlet.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the evidence currently of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’167 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Reasons to Combine Petitioner argues a person of ordinary skill would have been motivated to combine the teachings of Harada and Gutberlet for several reasons, in addition to the reasons discussed above with the claim limitations. Pet. 24–29. Among other things, Petitioner contends Harada and Gutberlet share a similar purpose and architecture, “both teach behavioral synthesis of C code to RTL; both simulate RTL; and both report latency metrics for each behavioral block.” Pet. 24 (citing Ex. 1004 ¶¶ 1–2, 72–73, 98, Figs. 16, 17; Ex. 1005, 1:10–27, 2:11–19, 7:3–6, 34:13–20, Table 38). Further, Petitioner contends combining the references’ teachings would have amounted to combining prior art elements according to known methods to yield predictable results, with Harada teaching “a process including steps for synthesizing behavioral code into RTL; performing RTL logic simulation; and analyzing the results, along with a table showing correspondence between RTL and behavioral code, to calculate latency for each behavioral block,” and Gutberlet teaching “using logic simulation to calculate latency for each behavioral block, measured in clock cycles/ns, and reported in a table.” Pet. 24–25 (citing Ex. 1004 ¶¶ 98, 117, 118, 132–134; Ex. 1005, 2:11–19, Table 38). Patent Owner argues a person of ordinary skill in the art would not have combined Harada and Gutberlet as suggested in the Petition because, according to Patent Owner, among other things, “Harada does not disclose using RTL in the context of its disclosure” and “Gutberlet discloses loop handling techniques on behavioral code, and any performance assessment occurs prior to generating RTL.” Prelim. Resp. 40. Further, Patent Owner argues Gutberlet explicitly teaches away from generating RTL code, analyzing the latency, and re-editing the source code if there is a latency issue and “[t]herefore, a [person of ordinary skill in the art] would not combine Gutberlet with any reference to satisfy the latency analysis elements of the ’167 claims. Prelim. Resp. 41 (citing Ex. 1005, 2:11–19). We again note that Patent Owner’s arguments are not currently supported by declaration testimony and amount to attorney argument at this stage in the proceeding. Petitioner’s arguments, on the other hand, are supported by the testimony of Dr. Lin in addition to the cited portions of the references, and we thus preliminarily find Petitioner has adequately articulated reasons for combining the references for the purposes of institution.” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityOther
“Shin’s Status as Prior Art The parties dispute whether Shin qualifies as a publicly accessible publication. According to Petitioner, prior to the critical date, Shin was published on the Internet by professors at the University of California at Irvine on both the University’s website and on the professors’ webpages. Pet. 17; Prelim. Reply 1–3. According to Petitioner, the authors were prominent and well-known in the industry, Shin was the very first publication listed on the relevant page of the University’s website in 2003, and Shin was one of only 44 papers on that page. Prelim. Reply 1–3. Patent Owner argues that Shin was not indexed or searchable in a meaningful way and that there is insufficient evidence that an interested person of ordinary skill exercising reasonable diligence would have located Shin. Prelim. Resp. 17–18, 21; Prelim. Sur-Reply 1–3. Patent Owner further argues the facts of Shin’s alleged availability are similar to the facts of Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772-74 (Fed. Cir. 2018). Prelim. Resp. 19–21; Prelim. Sur-Reply 1–3. At this preliminary stage, we question whether Petitioner has sufficiently shown that Shin qualifies as a publicly available publication.” slip op. at 17
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or a similar field with at least two years of experience in the field; or a master’s degree with specialization in the field,” and “[a] person with less education but more relevant practical experience may also meet this standard.” Pet. 21 (citing Ex. 1003 ¶¶ 63–64). Petitioner also states that the relevant field is “IC design and manufacturing, including EDA tools and behavioral synthesis.” Pet. 21 (citing Ex. 1001, 1:17–2:37; Ex. 1003 ¶ 62). At this stage, Patent Owner does not address the level of ordinary skill. For the purposes of this Decision, we apply Petitioner’s articulation of the level of ordinary skill, which is supported by the testimony of Dr. Lin and is consistent with the level reflected by the ’167 patent and the asserted prior art.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,971,167
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.