- Apple Inc. v. Paul PoniatowskiInstitutedPTAB · Oct 7, 2024 · IPR2024-00731 · APJ Jennifer S Bisk · IPR · Institution
The Board instituted review of claims 1–6, 8–13, 15–20, and 22–27 based on a reasonable likelihood that Wang, Dua, and Yong render them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and 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 claims 1–6, 8–13, 15–20, and 22–27 of the ’578 patent on the sole ground of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). For purposes of this proceeding, Petitioner argues a person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in computer science, computer engineering, or equivalent with one to two years of experience in the field of mobile transactions.” Pet. 8 (citing Bederson Decl. ¶¶ 35–37). Petitioner adds that “[a]dditional education or experience might substitute for the above requirements.” Id. To the extent necessary, and for purposes of this Decision, we accept this assessment offered by Petitioner, as it is supported by Dr. Bederson’s testimony and appears consistent with the ’578 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“scanner, reader, or camera” that is aimed at a barcode or special code of a product, the price of which is then added to the retail bill. Pet. 10–11 (quoting Ex. 1001, 7:45–49, 9:5–11). According to Petitioner, the Specification does not elaborate further on the meaning of the term “information concerning prices of goods.” Id. at 11. Petitioner, thus, interprets the term to encompass scenarios in which price information is received directly or indirectly. Id. Petitioner notes that during prosecution of the ’578 patent, the Examiner rejected this limitation over prior art, stating that prior art “sends the scanned bar code information to the server,” which “then preferably returns a description of the item and information,” and “[t]his item description and price information is displayed on the telephone’s display.” Id. at 12 (quoting Ex. 1002, 231). According to Petitioner, this is an example of indirectly receiving information concerning the prices of goods as it comes from a queried server, not from the item itself. Id. Petitioner notes that Patent Owner never disputed, and in fact, made statements supporting that these actions were encompassed by the claim limitation. Id. (citing Ex. 1002, 214). We agree with Petitioner that nothing in the claim language or the Specification requires that the claimed optical input receive information concerning the prices of goods directly from the goods themselves. Thus, on this record, we preliminarily construe the term “receiving information concerning the prices of goods” to encompass receiving pricing information from a server.” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In an inter partes review, the burden is on the petitioner to show a reasonable likelihood that it would prevail on a ground of unpatentability. 35 U.S.C. § 314(a). With respect to entitlement to any earlier effective filing date, however, a patent owner is not presumed to be entitled to the earlier filing dates of ancestral applications that do not share the same disclosure, such as in a continuation-in-part situation. See PowerOasis, Inc. v. T–Mobile USA, Inc., 522 F.3d 1299, 1305–06 (Fed.Cir.2008) (stating that once a defendant establishes that a reference is § 102(b) prior art, burden is on patent owner to come forward with evidence proving priority to an earlier filing date).” slip op. at 12
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 8,270,578 - 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 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · May 20, 2024 · IPR2024-00140 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1, 4–10, 12–16, 18, and 19 on all petitioned grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“under 37 C.F.R. § 42.4(a), we may institute an inter partes review 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 also 37 C.F.R. § 42.108(c). Applying that standard, we institute an inter partes review of all the challenged claims of the ’654 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“First, although InductEV disagrees that the word antenna would exclude coils found within a transformer-like structure, InductEV does not appear to dispute WiTricity’s proposed IEEE definition of antenna as “a device that radiates and/or receives radio waves.” See Prelim. Reply 2–3. We preliminary adopt that construction. But we agree with InductEV that nothing in this construction would exclude a coil found within a transformerlike structure, so long as it either transmits or receives radio waves. We also note that, although WiTricity relies on the generation of near-field flux lines into free space as a way to distinguish an antenna from a transformer, WiTricity does not point to any testimonial or other evidence that a transformer coil does not generate near-field flux lines into free space. See, e.g., Prelim. Resp. 8–16; Ex. 2001, 20–37. Second, we agree with InductEV that the preliminary evidence does not suggest (and WiTricity does not explicitly argue) that the terms transmitting antenna or receiving antenna depart from the ordinary and customary meanings of those terms. Pet. 2. The ’654 patent does refer to a “coupling-mode region” consisting of the area around antennas 114 and 118 of Figure 1 in which “near-field coupling may occur.” Ex. 1001, 2:38–40; see supra Section II.A. But this is the region in which “efficient energy transfer occurs by coupling a large portion of the energy in the near-field of the transmitting antenna to a receiving antenna rather than propagating most of the energy in an electromagnetic wave to the far field”—not a defining characteristic of either the transmitting or receiving antenna. See Ex. 1001, 2:31–38. Thus, for this decision, we preliminarily adopt InductEV’s proposed construction of transmitting antenna as “an antenna that transmits energy” and the proposed construction of receiving antenna as “an antenna that receives energy.” Prelim. Reply 1. This appears to be consistent with the ordinary and customary meaning of the terms and their usage in the ’654 patent. See, e.g., Ex. 1001, 2:26–40. As this is a preliminary construction solely for this decision, the parties may continue to offer evidence and arguments as to these or other claim terms at trial. We do not need to construe any of the other terms explicitly for this decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show anticipation under § 102, a petitioner must locate each and every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In making this determination, we consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Alternatively, if WiTricity is correct that alignment based on the degree of coupling is not explicitly applicable to the “parked” embodiment, the preliminary evidence suggests that a person of ordinary skill in the art would have had reason to substitute such alignment for alignment based on the output of the sensors that Ross discloses, such as optical sensors, and that this would have predictably led to aligning the two coils regardless of whether the vehicle is parked temporarily on a roadway or parked in a loading/unloading zone. See Ex. 1003 ¶¶ 246–248 (opining that a person of ordinary skill would have understood that one may obtain the “optimum lateral position” of the vehicle coil by sensing the degree of coupling “[i]nstead of” using sensors (quoting Ex. 1007, 13:21))); KSR, 550 U.S. at 416 (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”); Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (“[I]f there’s a known technique to address a known problem using ‘prior art elements according to their established functions,’ then there is a motivation to combine.” (citing Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021))). We also find persuasive, on the present record, InductEV’s argument that claim 13 does not require control based on the degree of inductive coupling while the receiving antenna is being guided into the recited “first alignment position.” See Prelim. Reply 5. Whereas limitation 13[b] requires such control after the receiving antenna is already in the “first alignment position” (e.g., during fine alignment while Ross’s vehicle is parked in the loading/unloading zone), there is no such requirement in limitation 13[a] while the receiving antenna is being moved to the “first alignment position” (e.g., while Ross’s vehicle leaves the electrified roadway and parks in the loading/unloading zone).” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,466,654 - Meta Platforms, Inc. v. Eight KHZ, LLCInstitutedPTAB · Jan 9, 2024 · IPR2023-01005 · APJ Justin T Arbes · IPR · Institution
The Board instituted IPR of claims 9–14 and 16–20 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“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.” Director’s Memo 3. With our authorization, Petitioner filed a stipulation which stipulates that [i]f the PTAB institutes the pending IPR in IPR2023-01005 challenging the patentability of claims 9–14 and 16–20 of the ’628 patent, then [Petitioner, Meta Platforms Technologies, LLC, and Twisted Pixel Games, LLC] will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR in the above-captioned district court litigation (No. 6:22-cv-00575-ADA).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13, 21 (PTAB Dec. 20, 2019) (precedential) (“Hulu”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Id. at 13. slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We disagree based on the current record. Schröder “must be considered for everything that it teaches, not simply the . . . preferred embodiment” that involves only adjusting the HRTFs to maintain the sound’s direction when there are small, relatively frequent movements and performing cross-talk filtering in a particular way. In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012); In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) (“A reference may be read for all that it teaches, including uses beyond its primary purpose.”). Petitioner’s position is that (1) Billinghurst teaches spatializing sound for the avatar of a remote collaborator shown on the display, as well as changing the spatialized sound in response to the wearer’s head movements, but does not explicitly describe how it does so, and, therefore, (2) a person of ordinary skill in the art would have looked to a reference like Schröder for details. See Pet. 21–22, 24, 34–36, 45–48. Petitioner relies on Schröder solely for its teachings regarding HRTF processing, not, for example, its description of a particular Schröder processes voice using HRTFs and adjusts HRTFs in response to head movements to maintain direction some of the time (i.e., when there are small, relatively frequent movements); Schröder simply takes a different action in certain other circumstances (i.e., it resets the direction when there is a larger, relatively less frequent movement). See Ex. 1012, pg. 4, l. 12–pg. 6, l. 3; Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002 (Fed. Cir. 2016) (“combinations of prior art that sometimes meet the claim elements are sufficient to show obviousness”).” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’628 patent (June 2014), a person of ordinary skill in the art would have had “at least a bachelor’s degree in computer science or engineering with a focus on audio signal processing and sound localization, with at least two years of relevant experience,” where “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 19 (citing Ex. 1003 ¶¶ 32–34). Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 5. Based on the record presented, including our review of the ’628 patent and the types of problems and solutions described in the ’628 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision, except that we remove the term experience.” slip op. at 14
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,674,628 - PTAB · Dec 6, 2023 · IPR2023-01020 · APJ Scott Raevsky · IPR · Institution
Instituted review of claims 1–20 on all grounds; the Lyren and Reif combination showed a reasonable likelihood of obviousness for at least one 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 it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’184 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner has filed a stipulation which stipulates that If the PTAB institutes the pending IPR in IPR2023-01020 challenging the patentability of claims 1-20 of the ’184 patent, then [Defendants Meta Platforms, Inc., Meta Platforms Technologies, LLC, and Twisted Pixel Games, LLC] will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR in the above-captioned district court litigation (No. 6:22-cv-00575-ADA).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSA [person of ordinary skill in the art or “POSITA”] in the relevant timeframe (2015 to 2019) would have had a Bachelor’s degree in computer science/engineering, music technology, or a related field, and at least two years of industry experience, or academic research experience, in virtual/augmented reality, audio engineering, or an equivalent. Additional education can compensate for less experience, and vice-versa. Pet. 6 (citing Ex. 1003 ¶¶ 34–36). Patent Owner uses Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 7. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’184 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“The parties do not propose any claim constructions. See Pet. 7; Prelim. Resp. 7. As no terms are in dispute, we determine that no terms require construction at this stage. 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
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 10,448,184 - PTAB · Dec 6, 2023 · IPR2023-01019 · APJ Scott Raevsky · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood of success on at least one claim, including over Lyren and Reif assuming Lyren is prior art.
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 it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’179 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022). Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far. This is not a final decision as to patentability of the challenged claims.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Director’s Memo provides that “[c]onsistent with Sotera Wireless, Inc.,[8] 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.” Director’s Memo 3. With our authorization, Petitioner has filed a stipulation which stipulates that 7 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_ litigation_memo_20220621_.pdf. 8 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential). If the PTAB institutes the pending IPR in IPR2023-01019 challenging the patentability of claims 1-20 of the ’179 patent, then [Defendants Meta Platforms, Inc., Meta Platforms Technologies, LLC, and Twisted Pixel Games, LLC] will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR in the above-captioned district court litigation (No. 6:22-cv-00575-ADA). Prelim. Reply 1. Patent Owner concedes that Petitioner has filed a “Sotera-like stipulation” but argues that it is insufficient because it “leaves the door open to a duplication of efforts and the possibility of conflicting decisions.” Prelim. Sur-reply 1 (citing Ex. 1141, 4 (“This stipulation is not intended . . . to limit Meta’s ability to assert . . . invalidity under 35 U.S.C. §§ 102 and 103 not available in IPR and under 35 U.S.C. §§ 101 and 112[], regardless of whether IPRs are instituted.” (emphasis omitted))). Namely, Patent Owner argues that Petitioner’s stipulation carves out “the right to assert overlapping system art in the parallel district court proceeding,” such that institution here would not address the risk of “inconsistent outcomes between the PTAB and the district court.” Id. at 4. We disagree with Patent Owner, as Petitioner’s stipulation sufficiently” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that A POSA [person of ordinary skill in the art or “POSITA”] in the relevant timeframe (2015 to 2019) would have had a Bachelor’s degree in computer science/engineering, music technology, or a related field, and at least two years of industry experience, or academic research experience, in virtual/augmented reality, audio engineering, or an equivalent. Additional education can compensate for less experience, and vice-versa. Pet. 6 (citing Ex. 1003 ¶¶ 34–36). Patent Owner applies Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 4. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’179 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In inter partes review, we construe a claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). The parties do not propose any claim constructions. See Pet. 6–7; Prelim. Resp. 4. We agree that no terms require construction at this stage. 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 11
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 10,368,179 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Oct 20, 2023 · IPR2023-00599 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–12 under all asserted grounds: anticipation by Lee and obviousness over Lee and Chen.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The Director’s Memo provides that “[c]onsistent with Sotera Wireless, Inc.,[5] 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.” Director’s Memo 3. With our authorization, Petitioner has filed a stipulation, which stipulates “that, if the PTAB institutes inter partes review, Petitioner ‘will not pursue in [Apex Beam Technologies LLC v. Samsung Electronics Co., Ltd. et al., Case No. 2:22-cv-00188-JRG (E.D. Tex.) (consolidated with Apex Beam Technologies LLC v. ZTE Corporation, Case No. 2:22-cv-00031-JRG-RSP (E.D. Tex.))] the specific grounds [asserted in IPR2023-00599], or . . . any other ground . . . that was raised or could have been reasonably raised in an IPR (i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patent or printed publications).’” Ex. 1022, 1 (quoting Sotera Wireless, Inc., Paper 12 at 13–14) (alterations in original). We determine that the language of this stipulation sufficiently comports with the language of the stipulation discussed in the Director’s Memo. See Director’s Memo 3. We accordingly decline to discretionarily deny institution in view of the related district court litigation.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not read Xerox to require us to give little weight to an expert declaration solely because some or all of it is also repeated within the Petition. Rather, Xerox found a declaration was entitled to little weight where the declaration merely repeated “the conclusory assertion for which it is offered to support.” Xerox, Paper 9 at 15 (emphasis added). If declaration testimony is supported sufficiently and, in turn, supports contentions in the Petition, we do not give it little to no weight simply because it is repeated in the Petition. Patent Owner does not point to any specific statements in Dr. Kakaes’s declaration and explain specifically why Patent Owner believes they are conclusory, and thus, Patent Owner has not sufficiently explained the applicability of Xerox here. See, e.g., Prelim. Resp. 13 n.1, 18 n.2, 21 n.3, 23 n.4, 25 n.5, 28 n.6, 29 n.7, 47–48. Moreover, we can assess the weight to be given to Dr. Kakaes’s declaration testimony, including based on its corresponding factual support, if any, and afford such testimony an appropriate weight. Accordingly, at this stage, we decline Patent Owner’s invitation to assign no weight to all of Dr. Kakaes’s declaration testimony.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art, except we decline to adopt the recitals of “at least” as that language is vague and open-ended. Pet. 13. We also decline to adopt Petitioner’s assertion concerning “[a]dditional relevant work experience,” as it also is vague and open-ended. As adopted, we view the definition for the level of ordinary skill is consistent with the ’081 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “no terms need construction to resolve the controversy in this forum.” Pet. 11. Patent Owner argues that at this stage of the proceeding, “claim construction is not required to resolve any issues.” Prelim. Resp. 10. We determine that no express constructions are needed for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). Rather, at this stage of the proceeding, we apply the plain and ordinary meaning of the claim terms.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,912,081 - Ericsson Inc. v. Koninklijke KPN N.V.InstitutedPTAB · Oct 2, 2023 · IPR2023-00525 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted review of claims 1–11 on all asserted grounds, finding a reasonable likelihood that claims 1–3, 5–7, and 9–11 are anticipated by Eisl and claims 1–11 are obvious over Eisl.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that Petitioner’s stipulation and reasonable diligence in filing the Petition as well as the parties’ minimal investment in the District Court Litigation outweigh the projected trial date. See Director’s Memo at 8 (“[W]hen analyzing the proximity of the court’s trial date under factor two of Fintiv, when other relevant factors weigh against exercising discretion to deny institution or are neutral, the proximity to trial should not alone outweigh all of those other factors.”). As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n 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.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Petitioner demonstrates that the Examiner overlooked specific teachings of Eisl with respect to the claim limitations that the applicant added to obtain allowance of the challenged claims. In particular, as discussed in detail below, Petitioner presents evidence that Eisl teaches counting “in the core network a number of occurrences of a certain predetermined signal associated with the mobile telecommunications device, the certain predetermined signal representing an interaction between network devices in the core network.” See Section II.E.1. As a result, on this record, we determine that Petitioner demonstrates that the Office erred in a manner material to the patentability of challenged claims. 3. Summary For the reasons discussed above, we decline to exercise our discretion under § 325(d) to deny the Petition.” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“C. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “a degree in electrical engineering or a similar discipline, with at least two years of relevant industry or research experience, including designing or implementing network systems,” as well as “familiarity with the wireless standards and protocols relating to subscriber management.” Pet. 17. Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. James Olivier. Ex. 1003 ¶¶ 34–43. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 3. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,924,500 - PTAB · Aug 4, 2023 · PGR2023-00016 · APJ Stephen E Belisle · PGR · Institution
The Board instituted PGR on claims 1–3, 5, 7–10, 12, 14–17, and 19 based on a reasonable likelihood that the claims are unpatentable across the petition’s grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(c); 37 C.F.R. § 42.4(a) (2022). We may not institute a post-grant review “unless . . . 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). When instituting post-grant 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. 37 C.F.R. § 42.208(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has established that it is more likely than not that at least one claim of the ’705 patent is unpatentable. Accordingly, we institute a post-grant review as to all challenged claims of the ’705 patent on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“pertinence of Bruning, in particular, or of any reference Patent Owner asserts is substantially similar to Evanicky, Lee, Doheny and Van Winkle or of the asserted combinations thereof, and did not issue a rejection based on their disclosures or combined teachings, and that this constitutes Examiner error. See Pet. 5–6, 10–11. Indeed, in the Final Written Decision in PGR2022-00009, the Board determined that Bruning anticipates independent claims 1, 8 and 15 and many other dependent claims of the parent ’341 patent, which claims are substantially similar to the challenged claims in this case involving the child ’705 patent. Ex. 1032, 52–68. Also, as discussed below in Section V, we determine that Petitioner has established that it is more likely than not that claims 1–3, 5, 7–10, 12, 14–17, and 19 of the ’705 patent are unpatentable. We also find the Examiner’s error here is further compounded by not having identified that the claims of the ’705 patent are not entitled to claim priority to any of the filing dates of any of its ancestor applications, and thus, not having searched for and considered a substantial pool of prior art. See supra Sections III.B, III.C. Accordingly, Becton, Dickinson factor (e) weighs against exercising discretion to deny institution under § 325(d).” slip op. at 37
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateInstituted
“Pet. 11–15), we determine that the ’215 provisional (and other Pre-AIA Applications) does not provide sufficient written description support to reasonably convey to the skilled artisan that, as of the filing date of the ’215 provisional, the inventors had possession of the limitation “wherein the switch is electrically connected between the DC voltage output and at least one of the first operating LED circuit or the at least one additional LED circuit,” as recited in claim 1. See Ariad Pharm., 598 F.3d at 1351. Accordingly, on this record, we are persuaded that the ’215 provisional lacks sufficient written description support for the inventions recited in claims 1–20 of the ’705 patent. Thus, on this record, claims 1–20 of the ’705 patent are not entitled to priority and, for purposes of institution, do not receive an effective filing date as early as that of the ’597 PCT (i.e., 2010) or any other Pre-AIA Application.” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“h) Conclusion At this stage of the proceeding and based on the record before us, we are persuaded that Petitioner’s cited evidence sufficiently supports Petitioner’s contention that independent claim 15 is unpatentable as anticipated by Bruning. Accordingly, at this stage of the proceeding, we are persuaded that Petitioner has shown that it is more likely than not that independent claim 15 is anticipated by Bruning.” slip op. at 74
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · NautilusPatents in suitUS 11,297,705 - PTAB · Jul 19, 2023 · IPR2023-00422 · APJ Scott Raevsky · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that claim 1 is anticipated by Foss.
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 it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering Petitioner’s arguments and evidence, and for the reasons set forth below, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’301 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that a POSITA [person of ordinary skill in the art] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with payment processing systems, credit card and debit card payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 12 (citing Ex. 1003 ¶¶ 159–161). We are persuaded, on the present record, that Petitioner’s proposal is generally consistent with the problems and solutions in the ’301 patent and prior art of record. We note, however, that the open-ended language “at least” expands the range of experience indefinitely with no upper bound. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill with the exception of the language “at least.”” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“In inter partes review, we construe a claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner does not propose any claim constructions. See Pet. 12. As no terms are in dispute, we determine that no terms require construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show anticipation under 35 U.S.C. § 102, each and every claim element, arranged as in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008). The prior art need not, however, use the same words as the claims.” slip op. at 5
Claim construction§ 102 anticipationcites KSR · GrahamPatents in suitUS 8,905,301
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.