- PTAB · Apr 21, 2025 · IPR2024-01489 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 1–30 on all asserted grounds, finding a reasonable likelihood that Cohen anticipates the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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); Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Identity of terminology is not required for a claim element to be met directly by the prior art. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (citations omitted) (“[T]his is not an ‘ipsissimis verbis’ test.”). For anticipation, we take into account not only the specific teachings of the reference, but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). B. Level of Ordinary Skill in the Art” slip op. at 13
- Parallel petitionsDecided for petitioner
“Wrinkl, Inc. v. Slack Technologies, LLC, No. 1:24-cv-00620 (D. Del. May 23, 2024). Pet. 1; Paper 4, 1. Patent Owner also states that a “second IPR was filed against the same patent in proceeding IPR2024-01490.” Paper 4, 1. Patent Owner does not argue that we should exercise discretion under 35 U.S.C. § 314(a) because Petitioner uses more than one petition to challenge the ’731 patent. challenges the alleged priority date of the ’731 patent (IPR2024-01489) (‘First Petition’) and the second petition assumes that the Patent Owner’s claimed priority date is valid, and addresses prior art references predating that priority date (IPR2024-01490) (‘Second Petition’).” Ex. 1019, 1. In accordance with the Consolidated Trial Practice Guide1 (“CTPG”), issued in November 2019, “there may be circumstances in which more than one petition may be necessary” including “when there is a dispute about priority date requiring arguments under multiple prior art references.” CTPG 59. Such is the case here. Patent Owner does not file any Preliminary Response or other paper disputing Petitioner’s use of two petitions to challenge the claims of the ’731 patent. Based on the record before us, we consider the merits of both petitions because Petitioner’s stated reasons for filing two petitions are consistent with the CTPG. See generally Ex. 1019 (citing CTPG, 59 (“the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references)). C. The ’731 Patent” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“reasonable likelihood that it would prevail on a ground of unpatentability. 35 U.S.C. § 314(a); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). Petitioner first must raise the issue of entitlement to a claimed priority date by “identifying, specifically, the features, claims, and ancestral application or applications allegedly lacking § 112 support for the claims based on the identified features.” Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 8 at 9–10 (PTAB Apr. 22, 2014); Mission Integrated Techs., LLC v. Joshua Clemente, IPR2023-01285, Paper 16 at 18 (PTAB Feb. 23, 2024). Then, Patent Owner must make a sufficient showing of entitlement to earlier filing date(s), in a manner that is commensurate in scope with the specific points and contentions raised by the petitioner. See id.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“two years of experience in the graphical user interface field” or, alternatively “a master’s degree in computer science (or similar discipline) and at least two years of similar experience.” Pet. 16 (citing Ex. 1003 ¶ 40). We find that “at least” in Petitioner’s formulation of the level of skill in the art is vague and open-ended. Otherwise, we preliminarily adopt Petitioner’s formulation of the level of skill in the art, which appears consistent with the specification and prior art presented. C. Claim Construction” slip op. at 14
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 11,973,731 - Sophos Ltd. / Sophos Inc. v. Open Text Inc.Institution deniedPTAB · Nov 29, 2023 · PGR2023-00031 · APJ Barbara A Parvis · PGR · Institution
The Board denied institution because Petitioner did not show that any challenged claim was more likely than not unpatentable over the asserted obviousness or indefiniteness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4. A post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, 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 (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated that it is more likely than not that at least one of the claims challenged in the patent is unpatentable. Accordingly, we do not institute a post-grant review of the challenged claims of the ’869 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 10 (citing Ex. 1004 ¶ 16). Patent Owner does not dispute Petitioner’s proposal. Prelim. Resp. 33. Considering the subject matter of the ’869 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for an ordinary level of skill, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected in the Specification of the ’869 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, and based on the current record, except as noted above, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner that the claims are directed to the classification stage, as they require extracting “a plurality of static data points” from an executable file and “generating a feature vector from [that] plurality of static data points using a classifier” (emphasis added). The claims also recite that the classifier has been “trained to classify” (emphasis added). Further, the claims recite that “features of the feature vector” are selectively turned on or off, indicating that the feature vector has been generated. We also agree with Patent Owner that Petitioner has not shown that Ideses teaches or suggests a classification method in which one or more features of a feature vector generated from a plurality of static data points are selectively turned on or off based on the value of the static data point. As explained in the summary of Ideses above, Ideses describes “methods and systems for generating classifiers” (Ex. 1005 ¶ 2) in which “extracted features [may be] identified for pruning to generate the group of classifying features,” and “the selection [may be] based on identifying a classification effectiveness rank for each of the features of the training software applications” or “based on identifying resource requirements for each of the features of the training software applications.” See id. ¶¶ 98, 99. “[T]he group of classifying features [may be] selected based on the significance of the extracted features,” such that “[s]ignificant features, such as those that have a large effect on the classification outcomes, may be retained” and “[i]nsignificant features, such as those that have a small, negligible or no effect on classification outcome may be pruned.” Id. ¶¶ 101, 106. Petitioner argues that “Ideses explains that in the method depicted in Figure 1, ‘[t]he full feature list is optionally selectively pruned,’ i.e., ‘selectively turned off’ as required by [1.e],” and “[f]urther, ‘each feature of the group is selected from-the-ground-up; added to the group as opposed to removed from or retained within a larger group,’ i.e., ‘selectively turned on’ as required by [1.e].” Pet. 33 (citing Ex. 1005 ¶ 71). Petitioner also argues element 1.e is taught by Ideses’s “approaches to pruning insignificant features,” which Petitioner argues are “to selectively includ[e]/exclud[e] features based on whether a feature coefficient ‘is within a predetermined range’ as required” by element 1.e. Id. at 34 (citing, e.g., Ex. 1005 ¶¶ 107, 109–110). But all of the selection and pruning described in Ideses concerns the” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the claims are directed to the classification stage, as they require extracting “a plurality of static data points” from an executable file and “generating a feature vector from [that] plurality of static data points using a classifier” (emphasis added). The claims also recite that the classifier has been “trained to classify” (emphasis added). Further, the claims recite that “features of the feature vector” are selectively turned on or off, indicating that the feature vector has been generated. We also agree with Patent Owner that Petitioner has not shown that Ideses teaches or suggests a classification method in which one or more features of a feature vector generated from a plurality of static data points are selectively turned on or off based on the value of the static data point. As explained in the summary of Ideses above, Ideses describes “methods and systems for generating classifiers” (Ex. 1005 ¶ 2) in which “extracted features [may be] identified for pruning to generate the group of classifying features,” and “the selection [may be] based on identifying a classification effectiveness rank for each of the features of the training software applications” or “based on identifying resource requirements for each of the features of the training software applications.” See id. ¶¶ 98, 99. “[T]he group of classifying features [may be] selected based on the significance of the extracted features,” such that “[s]ignificant features, such as those that have a large effect on the classification outcomes, may be retained” and “[i]nsignificant features, such as those that have a small, negligible or no effect on classification outcome may be pruned.” Id. ¶¶ 101, 106. Petitioner argues that “Ideses explains that in the method depicted in Figure 1, ‘[t]he full feature list is optionally selectively pruned,’ i.e., ‘selectively turned off’ as required by [1.e],” and “[f]urther, ‘each feature of the group is selected from-the-ground-up; added to the group as opposed to removed from or retained within a larger group,’ i.e., ‘selectively turned on’ as required by [1.e].” Pet. 33 (citing Ex. 1005 ¶ 71). Petitioner also argues element 1.e is taught by Ideses’s “approaches to pruning insignificant features,” which Petitioner argues are “to selectively includ[e]/exclud[e] features based on whether a feature coefficient ‘is within a predetermined range’ as required” by element 1.e. Id. at 34 (citing, e.g., Ex. 1005 ¶¶ 107, 109–110). But all of the selection and pruning described in Ideses concerns the” slip op. at 22
§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,409,869 - PTAB · Jan 26, 2023 · IPR2022-01172 · APJ Jon M Jurgovan · IPR · Institution
Instituted IPR on claims 1–4, 6, and 9 on both grounds: anticipation by Chen359 and obviousness over Tanaka and Bareau.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Turning to the first part of the framework, there is no dispute that, although Chen359 is an ancestor to the ʼ397 patent, it was not previously presented to the Office in the context of determining patentability of the claims of the ʼ397 patent. Instead, Patent Owner argues that the Examiner issued the challenged claims without finding that they lack written description support from the Specification of the ’397 patent, and therefore, implicitly, also from the 2011 application. Prelim. Resp. 16 (citing Ex. 1002, 1213–17). A review of the prosecution history of the ’397 patent, however, shows that there were no arguments raised regarding written description support or whether any of the prior applications in the chain constituted prior art to the ʼ397 patent. Nor were there any arguments otherwise calling into question the priority date of the ʼ397 patent. And there certainly were no arguments made that Chen359 was prior art to the ʼ397 patent. The Examiner, therefore, did not analyze written description support in relation to these prior applications. We therefore conclude that, as to the first ground, the same or substantially the same art or arguments were not previously presented to the Office. Because we determine that the facts do not satisfy the first part of the Advanced Bionics framework, we need not address the second part of the framework.” slip op. at 10
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Notably, Petitioner argues that “Sunny is not time-barred” from filing a Petition challenging the ʼ397 patent (Prelim. Reply 1) and Patent Owner does not dispute this contention. We thus find that for purposes of institution, we need not address whether Sunny is an unnamed real party-ininterest “because, even if it were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18 (PTAB Oct. 6, 2020) (precedential); see also Intel Corp. v. Alacritech, Inc., IPR2017-01391, Paper 8 at 3–6 (PTAB Nov. 28, 2017) (holding that the Board will not address the argument for purposes of institution that a litigation co-defendant should be a named a real party-ininterest in the absence of an allegation that the co-defendant would be time barred under section 315(b)). We find that this “approach better serves the interest of cost and efficiency.” SharkNinja, Paper 11 at 20; 37 C.F.R. § 42.1(b). Accordingly, we find that Patent Owner’s arguments concerning Sunny not being named as a real party-in-interest do not form a basis to deny institution under our circumstances.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION Petitioner has demonstrated a reasonable likelihood of prevailing in showing the unpatentability of at least one challenged claim of the ’397 patent. At this stage of the proceeding, however, we have not made a final determination with respect to the patentability of the challenged claims. VI. ORDER For the foregoing reasons, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–4, 6, and 9 of the ’397 patent is instituted with respect to all grounds of unpatentability set forth in the Petition; and FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4(b), inter partes review of the ’397 patent shall commence on the entry date of this Order, and notice is hereby given of the institution of a trial.” slip op. at 40
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In order to determine whether the 2011 application provides written description support for the claims of the ʼ397 patent, we look to see whether the specification of the 2011 application “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter [of the challenged claims] as of the filing date [of the 2011 application].” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he purpose of the written description requirement is to ‘ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification.’” Id. at 1353–54 (quoting University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 920 (Fed. Cir. 2004)). Thus, whether the specification complies with the written description requirement calls for the comparison of the scope of the claim with the scope of the description to determine whether the inventor has demonstrated possession of the claimed invention. First, we look to the claims to determine their scope. Here we agree with Petitioner that independent claim 1 of the ʼ397 patent does not limit the first lens element to having a particular refractive power. The plain language of claim 1 recites “a first lens element” without specifying the lens as having a specific refractive power or any other configuration or characteristic. Ex. 1001, 31:65. Thus, we determine that the scope of claim 1 encompasses a first lens having either a positive or negative refractive power. Next, we look at the written description of the 2011 application. The Summary of the Invention section of the 2011 application repeatedly describes the invention as having “a first lens element with positive refractive power.” Ex. 1005, 2:10–11; see 2:22–23 (“the first lens element with a positive refractive power”); 3:9–11 (“the first lens element with the positive power provides partial refractive power needed by the optical imaging system and reduces the total optical length.”). The Detailed Description of the Preferred Embodiments likewise describes a “first lens element 110 with a positive refractive power.” Id. at 7:13. Each of the eight embodiments and associated figures show the first lens as having a positive refractive power. Id. at 18:2, 21:2, 24:2, 27:2, 30:2, 33:2, 36:2, Tables 1-2, 2-2, 3-2, 4-2, 5-2, 6-2, 7-2, 8-2, Figs. 1A, 2A, 3A, 4A, 5A, 6A, 7A, 8A.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,564,397 - Wangs Alliance Corporation D/B/A Wac Lighting Co. v. Philips Lighting North America CorporationInstitution deniedPTAB · Feb 15, 2017 · IPR2016-01455 · APJ Trevor M Jefferson · IPR · Institution
The Board denied institution because the challenged claims were entitled to the May 9, 2002 priority date, making Schie unavailable as prior art to every asserted ground.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“that the ’399 patent and ’079 provisional satisfy the written description requirement showing that the inventors possessed the conventional MR16 socket claimed in the ’679 patent. In this case, the ’079 provisional and ’399 patent disclose the general types of connectors and housing using terms a person of ordinary skill in the art would understand include the general types of lighting of which the MR16 is just one variant. See Ex. 2001, 7.24 (discussing “standard MR16 lamps” using “a 2-pin or turn-and-lock base”); Prelim. Resp. 6 n.6 (providing citations for MR16 bulbs as being well known and conventional). The general housing disclosures in the ’399 patent and ’079 provisional provide sufficient detail necessary to convey to a person of ordinary skill in the art that the scope of the claims include non-screw type bases such as halogen and pin-type bases and connectors. See also Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1347 (Fed. Cir. 2013) (“[I]n some cases, broad or generic disclosures can adequately describe particular constituent species.”); Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003) (“A specification may . . . contain a written description of a broadly claimed invention without describing all species that [the] claim encompasses.” (alteration in original)); Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (noting that level of detail required to establish possession of the claimed subject matter as of the filing date “varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology”). The disclosure of the type of bulb housing, e.g. halogen, and type of connectors, e.g. pin-type, is adequate written description support for the particular type of housing claimed in the ’679 patent.” slip op. at 14
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Based on the foregoing, we find that the priority date of the challenged claims of the ’679 patent is the date of the ’079 provisional, May 9, 2002, as both the ’399 patent and the ’079 provisional provide adequate written description support for the “conventional MR16 socket limitation” of the challenged claims. 2. Schie (Ex. 1003) as Prior Art to the ’679 Patent Given our finding above that the priority date of ’679 patent is May 9, 2002, we find that Petitioner has not shown that Schie, with an earliest available priority date of August 22, 2002 (Pet. 24–39; Prelim. Resp. 1–2), is prior art to the ’679 patent under 35 U.S.C. § 102(e). Because each of Petitioner’s grounds for challenging the ’679 patent relies on Schie (Pet. 3– 4, 41–67), we find that Petitioner has not demonstrated a likelihood that it would prevail in showing that claims 1, 3–6, 11, 17–19, 26, 38, and 43–45 of the ’679 patent are unpatentable.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“2. Schie (Ex. 1003) as Prior Art to the ’679 Patent Given our finding above that the priority date of ’679 patent is May 9, 2002, we find that Petitioner has not shown that Schie, with an earliest available priority date of August 22, 2002 (Pet. 24–39; Prelim. Resp. 1–2), is prior art to the ’679 patent under 35 U.S.C. § 102(e). Because each of Petitioner’s grounds for challenging the ’679 patent relies on Schie (Pet. 3– 4, 41–67), we find that Petitioner has not demonstrated a likelihood that it would prevail in showing that claims 1, 3–6, 11, 17–19, 26, 38, and 43–45 of the ’679 patent are unpatentable.” slip op. at 17
§ 102 anticipation§ 112 disclosurePatents in suitUS 7,358,679
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.