- Tesla, Inc. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Jun 26, 2026 · IPR2025-00220 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–18 are unpatentable under § 103 over Wallen and Berggren because the combined teachings render the claimed subject matter obvious.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree that Patent Owner’s proposed claim construction is wholly unsupported by, and inconsistent with, the language of independent claims 1, 7, and 13, and the aims of the ’670 Patent Specification. See Ex. 1001, 2:3– 25, 9:32–10:5, 12:51–67, 18:54–19:6, 19:26–42, 20:12–26. Moreover, the cited extrinsic evidence––testimony by Patent Owner’s expert Dr. Lomp–– does not support Patent Owner’s proposed construction because it is internally inconsistent and also undermined by Dr. Lomp’s inconsistent deposition testimony. See Ex. 1036, 11:6–17, 12:9–12; Ex. 2010 ¶¶ 40, 48. Similarly, the extrinsic evidence cited by Petitioner (e.g., Exs. 1037, 1038, 2009) undermines Patent Owner’s position emphasizing the intended recipient devices of SIB1. In summary, we decline to adopt Patent Owner’s proposed claim construction because it is unsupported by the claim language, the ’670 Patent Specification, and the cited extrinsic evidence. with the ordinary and customary meaning which does not include limiting SIB1 to an ordinary legacy SIB and excluding MTC specific SIBs or SIBs intended for MTC devices. In addition, we need not construe explicitly any other claim term or phrase. See, e.g., Nidec Motor Corp. 868 F.3d at 1017 (“[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 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor’s degree from an accredited program in electrical engineering, computer engineering, computer science, or equivalent training, and at least two years of professional experience relating to wireless communication technology” and “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 15–16 (citing Ex. 1003 ¶¶ 19–21). Patent Owner does not dispute Petitioner’s definition. See generally PO Resp. We find that “at least” in Petitioner’s formulation of the level of skill in the art is vague and open-ended. Otherwise, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’670 Patent Specification and the prior art of record. slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“filing date. As explained above, the burden of production shifted to Patent Owner to show that Wallen is not prior art because the ’670 Patent is entitled to the earlier January 20, 2012, filing date of foreign priority application GB1201000. See Dynamic Drinkware, 800 F.3d at 1379–1380. For a claim in a later-filed application to be entitled to the filing date of an earlier application, the earlier application must provide written description support for the claimed subject matter. Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1337 (Fed. Cir. 2010). To satisfy the written description requirement, “a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also VasCath v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“[T]he applicant must . . . convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention . . . now claimed.” (emphasis omitted)), Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[I]t is the specification itself that must demonstrate possession.”). Patent Owner’s arguments fail to meet this burden of production because, aside from addressing a system information block 1, Patent Owner’s arguments do not substantively address how GB1201000 provides written description support for any other limitations of the claimed invention. See PO Resp. 43, 57. Accordingly, Patent Owner has not met its burden of production in coming forward with evidence or argument to show possession of the claimed invention in foreign priority application GB1201000, the burden of production did not shift back to Petitioner, and,” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“primary synchronization signal (PSS), a secondary synchronization signal (SSS), and a physical broadcast channel (PBCH) including a master information block (MIB).” See Pet. 41–42 (citing Ex. 1003 ¶¶ 70–75; Ex. 1005 ¶¶ 76, 77, 83–84). Petitioner implicitly acknowledges that Wallen does not expressly disclose a physical broadcast channel (PBCH), but relies on Berggren for confirming that the LTE standard specifies that a PBCH carries the MIB. See Pet. 42–43 (citing Ex. 1003 ¶ 74; Ex. 1007 ¶¶ 73–75). According to Petitioner, “a person of ordinary skill in the art would have been motivated to transmit Wallen’s MIB using a PBCH as taught by Berggren.” Pet. 43 (citing Pet. 33–38). In particular, Petitioner asserts that a person of ordinary skill in the art “would have been motivated for Wallen’s LTE system to utilize the LTE standard implementation details taught by Berggren,” and “it would have been predictable and beneficial for Wallen’s user equipment to receive the MIB in the [PBCH], as was standard in LTE.” Pet. 34 (citing Ex. 1003 ¶ 58), 37 (citing Ex. 1003 ¶ 63). According to Petitioner, “the combination is nothing more than ‘the predictable use of prior art elements according to their established functions.’” Pet. 38 (citing KSR, 550 U.S. at 417). Based on the entire record developed during trial, we are persuaded by a preponderance of the evidence that Petitioner provides sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to a person of ordinary skill in the art to modify Wallen’s broadcast MIB with Berggren’s teachings of using a PBCH for transmitting broadcast MIBs. See Pet. 33–38; KSR, 550 U.S. at 418.” slip op. at 24
Patent outcomesUS 11,206,670 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,206,670 - Meta Platforms, Inc. / Meta Platforms Technologies, LLC et al. v. Eight KHZ, LLCAll claims unpatentablePTAB · Dec 3, 2024 · IPR2023-01020 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Lyren and Reif; the Board did not reach the Clement, Osman, and Sauk ground.
RulingsFinal written decision- 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.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. environment Patent Owner initially argues that “environment” should mean “physical surroundings in which a user operates.” PO Resp. 6. Petitioner responds that the plain meaning of environment “encompasses physical and virtual environments.” Reply 2. During the hearing, Patent Owner conceded that Petitioner’s construction for environment is correct. Tr. 49:24–50:10. We agree with this construction and apply it here. See, e.g., Ex. 1001, 28:16 (referring to “a physical or a virtual environment”). “Environment” encompasses physical and virtual environments.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“insufficient to support the concept of alerting a user that the user is leaving a virtual environment. In so deciding, we need not address the parties’ contentions about boilerplate. Regardless of whether the sentence at 168:15–16 of the ’140 application is boilerplate, we agree with Petitioner that “there is no suggestion of the specific claimed combination.” Reply 22 (citing Ex. 1146 ¶ 82). That is, if one views the “[e]xamples herein” from Figure 6 as taking place “in computer rendered spaces (VR)” or “in partially computer rendered spaces (AR),” there is still no disclosure of alerting a user that a user is leaving a virtual environment. See Ex. 1028, 168:15–16. For instance, if Alice in the Figure 6 example mentioned above is entering a virtual car instead of a real car, Alice is still in a virtual environment. See id. at 120:13–27. Thus, relying on Figure 6 to take place “in computer rendered spaces (VR)” does not support alerting that a user is leaving those virtual spaces. See id. at 168:15–16. Petitioner also correctly identifies a problem with analogizing the Alice example to a virtual environment—namely, it would no longer make sense to give Alice an audible warning. See Reply 22 (citing Ex. 1146 ¶ 82). In the example, Alice’s earphones switch from binaural sound to mono sound when Alice enters a real car because “[t]he state where Alice is located . . . prohibits drivers from localizing sound while driving a motorized vehicle.” Ex. 1028, 120:15–18. But it would not make sense (nor does the ’140 application disclose) for a state to prohibit Alice to localize sound while driving a virtual vehicle. We therefore find compelling Petitioner’s argument, supported by the testimony of Dr. Roginska, which we credit, that there is no “disclosure that 3D audio would not be permitted in a 3D virtual space.” Reply 22 (citing Ex. 1146 ¶ 82). Accordingly, Patent Owner’s second support argument fails.10” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“One benefit Petitioner proposes to support a rationale to combine is that a POSITA “would have implemented this feature to help protect the users from injury by bumping, hitting, tripping over, etc., real-world objects when moving around while viewing the virtual environment in the HMD (i.e., a type of head-mounted WED).” Id. at 43–44 (citing, e.g., Ex. 1003 ¶¶ 90, 251–254). Petitioner provides additional argument and evidence supporting a motivation to combine, with a reasonable expectation of success. See id. at 42–46. We agree that, in the combination, a POSITA would have implemented Lyren’s audible alerts to alert the user that the user is leaving Reif’s safe zone (and thus the virtual environment) to help keep users safe. Id. at 52 (citing Ex. 1003 ¶¶ 250–268). We also agree with Petitioner’s articulated benefit that the combination would “help protect the users from injury by bumping, hitting, tripping over, etc., real-world objects when moving around while viewing the virtual environment in the HMD (i.e., a type of head-mounted WED).” Id. at 43–44. Accordingly, we agree with Petitioner that the combination of Lyren and Reif discloses each limitation of claim 14, as well as similar limitations of claims 1 and 7, and that one of ordinary skill in the art would have combined Lyren and Reif in the manner proposed, with a reasonable expectation of success.” slip op. at 24
Patent outcomesUS 10,448,184 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,448,184 - Meta Platforms, Inc. / Meta Platforms Technologies, LLC et al. v. Eight KHZ, LLCAll claims unpatentablePTAB · Dec 3, 2024 · IPR2023-01019 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Lyren and Reif; the Board did not reach the Clement, Osman, and Sauk ground.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Accordingly, we are not persuaded that the ’140 application supports the claimed concept of warning or alerting a user that the user is leaving the virtual environment. Thus, the ’140 application does not support the full scope of the limitations “warning the user that the user is leaving the 3D virtual environment” in claim 1 and “alerting the user that the user is leaving the environment” in claims 7 and 14. The parties have not made any additional arguments regarding support in the ’140 application for limitations of the dependent claims. We conclude that no claim of the ’179 patent is entitled to priority to the ’140 application.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We agree that, in the combination, a POSITA would have implemented Lyren’s audible alerts to alert the user that the user is leaving Reif’s safe zone (and thus the virtual environment) to help keep users safe. Id. at 51 (citing Ex. 1003 ¶¶ 250–263). We also agree with Petitioner’s articulated benefit that the combination would “help protect the users from injury by bumping, hitting, tripping over, etc., real-world objects when moving around while viewing the virtual environment in the HMD (i.e., a type of head-mounted WED).” Id. at 43. Accordingly, we agree with Petitioner that the combination of Lyren and Reif discloses each limitation of claim 14, as well as similar limitations of claims 1 and 7, and that one of ordinary skill in the art would have combined Lyren and Reif in the manner proposed, with a reasonable expectation of success.” slip op. at 26
- ExcludeMotion to exclude, deniedGranted in part
“paragraphs of Dr. Roginska’s declarations in Exhibits 1003 and 1146. Mot. 1; Reply to Opp. 1. Some of these paragraphs support Petitioner’s challenge based on Clement, Osman, and Sauk. Mot. 2–5, 7–11. Because we do not reach Petitioner’s challenge based on Clement, Osman, and Sauk, we do not rely on the portions of Dr. Roginska’s declarations addressing Clement, Osman, and Sauk. Accordingly, we dismiss this portion of Patent Owner’s Motion to Exclude as moot.” slip op. at 27
Patent outcomesUS 10,368,179 unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,368,179 - PTAB · May 20, 2024 · IPR2024-00114 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–8 on all asserted grounds, finding a reasonable likelihood that at least one claim would have been obvious over DiPerna964 and Strack.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We determine below that Fintiv factors 1–5 do not favor discretionary denial. Thus, we do not reach the issue of whether the merits are compelling. CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022- 01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (precedential) (Board must first address Fintiv factors 1–5, and should engage the compelling merits question only if that analysis favors discretionary denial) (“CommScope”). 7. Balancing the Fintiv Factors Weighing against exercising our discretion to deny institution is factor 3 involving the parties’ limited investment and lack of substantive orders in the District Court litigation. Factor 4 concerning the limited overlap of the issues in the two cases also weighs against discretionary denial. Only factor 5, that Petitioner and the defendant in the District Court litigation are the same party, weighs in favor of discretionary denial. Factor 1 concerning the absence of a stay in the District Court litigation, and factor 2 concerning the close proximity between the start of trial in the District Court litigation and the estimated deadline for the final written decision, are neutral on the facts of this case. We therefore determine that the balance of factors 1–5 weighs against discretionary denial. Accordingly, we do not consider the issue of whether compelling merits have been shown under factor 6. See CommScope, Paper 23 at 4–5.2” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Pet. 9 (citing Ex. 1006, 23) (emphasis added). From this passage, we understand the “safety” switch to be “separate” from the panic button, not a part of it. This understanding is reinforced by claim 7 which depends from claim 1 and recites that the mobile device “further compris[es] a safety switch,” meaning it is a separate element from the panic button. Ex. 1001, 9:3–4. Thus, moving the safety switch into position readies the panic button, which is not the same as the panic button readying itself to perform functions in claims 1–8 of the ’404 patent. Patent Owner does not sufficiently address this issue in its assertions. See Prelim. Resp. 5–7. Patent Owner’s reliance on disclosures elsewhere in the ’404 patent is likewise not persuasive. Prelim. Resp. 5–6. For example, the ’353 application mentions “ready” in relation to using a self-defense mechanism such as pepper spray, which has not been shown to be related to the panic button. Ex. 1006, 5, 9–10. Although Patent Owner relies on the ’353 application’s description of voice activation using a codeword, voice activation does not ready the panic button for activation to perform functions, but actually activates the panic button to perform those functions. Prelim. Resp. 6 (citing Ex. 1006, 17). Petitioner thus met its burden here to demonstrate that claims 1–8 of the ’404 patent lack written description support for a panic button adapted to “ready itself” to perform the recited functions because the limitation is not present in the ’353 application to which the ’404 patent claims priority. Pet. 8–10. The burden of production thus shifted to Patent Owner to demonstrate that the ’353 application has written description support for this limitation, which it has not done on this record. Prelim. Resp. 5–7.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“of the proceeding, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions that at least one of claims 1–8 of the ’404 patent would have been obvious under 35 U.S.C. § 103 based on the ground set forth in the Petition. Accordingly, we institute trial for all challenged claims on all grounds asserted by Petitioner. See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). Our factual findings, conclusions of law, and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims or to the construction of any claim term. V. ORDER For the foregoing reasons, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–8 of the ’404 patent is hereby instituted on all challenges to patentability set forth in the Petition; and” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner has shown sufficiently that a POSITA would have combined DiPerna964 and Strack with a reasonable expectation of success. Pet. 16–18. DiPerna964 and Strack are directed to similar mobile devices for use in security and emergency situations. Id. at 16–17. Petitioner demonstrates sufficiently that a POSITA would have regarded Strack’s arming and timer technique as an improvement that would have been useful with DiPerna964’s mobile device (at least in some circumstances) to provide the user with additional time to evaluate whether triggering the 911 call is warranted. Id. at 17–18. This amounts to the use of a known technique to improve similar devices in the same way, which is a recognized rationale for combining prior art references. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401, 417 (2007). Accordingly, on this record, Petitioner has presented a reasonable likelihood that a POSITA would have combined DiPerna964 and Strack with a reasonable expectation of success. Pet. 16–18.” slip op. at 22
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,265,404 - 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 - Halliburton Energy Services, Inc. v. U.S. Well Services, LLCAll claims unpatentablePTAB · Aug 30, 2023 · IPR2022-00610 · APJ George R Hoskins · IPR · Final written decision
Claims 1–15 are unpatentable under § 103; the contingent motion to amend is denied for substitute claims 16–30.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“that the ’756 Application does not provide written description support for proposed substitute claim 23. See Prelim. Guid. 6–8. Petitioner’s Sur-reply agrees with that preliminary conclusion. See Mot. Sur-reply 1–7. For the following reasons, we now conclude again that the ’756 Application does not provide written description support for the limitation of claim 23 reciting “wherein a first orientation of the first helical coil is different from and perpendicular to a second orientation of the second helical coil.” Mot. App. A (pg. 9).” slip op. at 106
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“relies on as having been allowed due to objective indicia. See Ex. 1006, 7:19–8:60. At a high level, the independent claims each recite a system for hydraulically fracturing an underground well formation comprising at least one pump driven by one or more electric motors, and a variable frequency drive to control the speed of the motor(s) and perform motor diagnostics. See id. at 7:19–33 (claim 1), 7:57–8:10 (claim 10), 8:31–51 (claim 19). None of the parent ’410 patent’s claims recites swivel connections located in the pump’s discharge piping branch as recited in claim 1 of the ’824 patent at issue here. See id. at 7:19–8:60. And, claim 1 of the ’824 patent does not recite an electric motor, or a variable frequency drive, like the parent ’410 patent’s claims do. Thus, even if the prosecution history of the parent ’410 patent establishes a nexus between Clean Fleet product(s) and one or more claims of the ’410 patent, it is not at all clear to us how this nexus might also apply to claim 1 of the ’824 patent. We reached the same conclusion in the Institution Decision. See Inst. Dec. 41.” slip op. at 72
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“leads to base swivel joint 26. See id. ¶ 14. “The jumper line 20 may comprise any combination of generally straight pipes and/or swivel joints . . . to isolate the base unit 24, and thus the articulated arm 22, from vibration and movement of the pumping unit 14.” Id. ¶ 15. Accordingly, first swivel joint 36 and second swivel joint 38 together “provide five degrees of freedom between the first pipe 34 and the base swivel 26” so “the base unit 24 will not be affected by vibration and movement of the pumping unit 14.” Id. ¶¶ 15–16.” slip op. at 32
Patent outcomesUS 10,934,824 unpatentable§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,934,824 - Apple Inc. v. Memoryweb, LLCSome claims unpatentablePTAB · Jun 7, 2023 · PGR2022-00006 · APJ Jason M Repko · PGR · Final written decision
Claims 1–12, 17–44, and 49–59 are unpatentable over A3UM or for lack of written description; claims 13–16 and 45–48 were not shown unpatentable.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“2. Analysis A person is not entitled to a patent if their invention was “described in” slip op. at 9
- Skill levelOther
“B. Level of Ordinary Skill in the Art According to Petitioner, A person of ordinary skill in the art in 2011 would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, and (2) at least applications such as photo management systems. Pet. 12 (citing Ex. 1003 ¶¶ 44–46). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 12. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. PO Resp. 7. We continue to find that the skill level identified by Petitioner (Pet. 12) is consistent with the record. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“e. Conclusion Petitioner provides articulated reasoning, supported by rational” slip op. at 68
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“11. Written Description: Claims 6, 7, 38, and 39 Petitioner asserts that claims 6, 7, 38, and 39 are unpatentable as lacking adequate written-description support. Pet. 91–93. Claim 6 recites, in part, “The method of claim 4, wherein, in the people view, the first name is displayed adjacent to the first digital file associated with the first thumbnail image and the second name is displayed recites similar limitations. See id. at 38:47–50. Claim 7 depends from claim 6, and claim 39 depends from claim 38. Id. at 35:63–65 (claim 7), 38:51–53 (claim 39). Petitioner asserts that claims 6 and 38 require that the “people view” includes at least the following: (i) “a first thumbnail image associated with a first person,” (ii) “a first name associated with the first person,” (iii) “a second thumbnail image associated with a second person,” (iv) “a second name associated with the second person,” and (v) a “first digital file associated with the first person.” Pet. 91. Petitioner argues that the ’020 patent lacks written-description support for a people view with these features. Id. at 92 (citing Ex. 1003 ¶ 315). Under Petitioner’s interpretation, digital files are “plainly distinct”” slip op. at 96
Patent outcomesUS 11,017,020 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 11,017,020 - PTAB · Apr 27, 2023 · IPR2022-00074 · APJ George R Hoskins · IPR · Final written decision
Original claims 1–13 were canceled by amendment; proposed substitute claims 14–26 were denied because “high pressure” is indefinite under § 112.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“original claims 1–13 of the ’732 patent, which are all of the claims challenged in the Petition. See Mot. Caption (“NON-CONTINGENT”), 1 (stating the motion is “Non-Contingent”), 2 (“The claim listing cancels original claims 1–13 . . . .”); Mot. App. A, 1 (stating original claims 1–13 are “Cancelled”); Pet. 17. Petitioner does not oppose this portion of the Motion to Amend. See generally Mot. Opp. Therefore, we grant Patent Owner’s request to cancel original claims 1–13. As a result, we do not reach the unpatentability grounds asserted in the Petition against these original claims.” slip op. at 5
- Skill levelSkill level board ownDecided for petitioner
“b) Person of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’732 patent would have either: “(1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least two years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production”; or “(2) at least four years of industry experience in the oil and gas industry, including well drilling, completion, or production.” Pet. 13. Patent Owner utilizes the same formulation of ordinary skill. See Mot. 13. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. The parties’ agreed-upon formulation of ordinary skill is consistent with the level of skill reflected in the ’732 patent and the prior art of record. We therefore apply it in the present Decision.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“witnesses cannot agree on a numerical definition of “high pressure.” Mr. Marscher says high pressure is between 5,000 psi and 15,000 psi (see Ex. 1030, 111:1–112:3), whereas Mr. Schaaf says high pressure is between 8,000 psi and 12,000 psi and specifically disagrees with Mr. Marscher’s testimony that high pressure can be below 8,000 psi (see Ex. 1031, 43:6–44:13). Although there are overlapping values in the witness testimony, we agree with Petitioner that the testimony does not evidence clear boundaries for how an ordinarily skilled artisan would interpret “high pressure.” See Mot. Sur-reply 6 (citing Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901–02 (2014); Interval Licensing, 766 F.3d at 1371). Thus, the testimony of Patent Owner’s own witnesses is contrary to Patent Owner’s position that an ordinarily skilled artisan would have understood the meaning of “high pressure.” Furthermore, neither Mr. Marscher nor Mr. Schaaf cites any objective evidence to support their respective notions of what “high pressure” might be, in the context of hydraulic fracturing. For example, neither witness cites to any published industry standards to support their respective opinions. This lack of objective evidentiary support weakens the persuasiveness of both witness’s testimony on this issue, especially because their opinions conflict with each other. We are instead persuaded by the testimony of Petitioner’s witness, Dr. Durham, who testifies that “[t]here is [no] general consensus about the precise boundaries of the term ‘high pressure,’ and different engineers can reasonably come to different conclusions as to the meaning of the term absent further guideposts.” Ex. 1036 ¶ 17; see also id. ¶ 19 (“There is no universally accepted definition of ‘high pressure.’”). Dr. Durham further testifies that “what might be sufficiently ‘high’ pressure for one fracturing application and according to one [person of ordinary skill in the art] may be not ‘high’ enough in another fracturing application and to another [such person].” Id. ¶ 18; see also id. ¶ 19 (“Merely stating that a pump fractures a formation says little to nothing about whether that pump should be deemed ‘high pressure’ or ‘not high pressure.’”).” slip op. at 30
- BurdenUnpatentable
“The intrinsic record does not “provide objective boundaries for those of skill in the art” to determine whether a given pressure is “high pressure” as recited in the proposed substitute claims. See Interval Licensing, 766 F.3d at 1370–71. Nor does the intrinsic record provide guidance to clarify the meaning of “high pressure.” As noted above, the ’732 patent refers only to “high pressure” without qualification or explanation as to how “high pressure” is determined. The prosecution history does not address “high pressure” in any meaningful way and, therefore, also fails to explain what pressures are “high” pressures. See generally Ex. 1003. Thus, the intrinsic record does not explain adequately what pressure(s) qualify as “high pressure,” nor differentiate “high pressure” from other pressures at which hydraulic fracturing can be performed.” slip op. at 27
Claim construction§ 112 disclosurecites NautilusPatents in suitUS 10,254,732 - Halliburton Energy Services, Inc. v. U.S. Well Services, LLCAll claims unpatentablePTAB · Feb 17, 2023 · IPR2021-01316 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–17 are unpatentable over the stated anticipation and obviousness grounds; the motion to amend is denied because substitute claims 18–34 are indefinite, and claims 18–26 also lack written-description support.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“We agree with Petitioner that, by their plain language, the claims recite a plurality of variable frequency drives, with each of the variable frequency drive connected to either the first motor or a second motor. See, e.g., Ex. 1001, 16:1–4; see also Ex. 2015 ¶ 48 (Patent Owner’s declarant testifying that “the ‘724 [patent] claims indicate that the plurality of electric control VFDs need to be coupled to either the first motor or the second motors.”). Coli discloses such an arrangement. Coli discloses that, “[b]ecause [its] electric motors are controlled by variable frequency drives, absolute control of all equipment on location can be maintained from one central point.” Ex. 1004, 11:10–12 (emphasis added). Coli discloses that “[t]ypically, each fracturing module 20 will be associated with a drive housing for controlling electric motor 21 and pumps 22, as well as an electrical transformer and drive unit 50.” Id. at 7:45–50. Petitioner’s declarant testifies that “the drive unit is the variable frequency drive.” Ex. 1003 ¶ 74. Coli discloses that “[b]lender module 40 can . . . include a control cabin 53 for housing equipment controls for first blender unit 47a and second blender unit 47b, and can further include appropriate drives and coolers as required.” Ex. 1004, 10:4–7 (emphasis added). Petitioner’s declarant interprets these “drives” to be variable frequency drives. Ex. 1003 ¶ 76. We credit this testimony of Dr. Durham, which neither Patent Owner nor its declarants address squarely. Accordingly, for the foregoing reasons, Coli and Dr. Durham’s” slip op. at 24
- Skill levelSkill level petitioner adoptedOther
“Patent Owner asserts that it “uses Petitioners’ proposed definition of a person of ordinary skill in the art.” PO Resp. 5. Based on the arguments presented and the cited references, we find Petitioner’s uncontested definition of the level of ordinary skill reasonable and for purposes of this Decision adopt it as our own.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that, by their plain language, the claims recite a plurality of variable frequency drives, with each of the variable frequency drive connected to either the first motor or a second motor. See, e.g., Ex. 1001, 16:1–4; see also Ex. 2015 ¶ 48 (Patent Owner’s declarant testifying that “the ‘724 [patent] claims indicate that the plurality of electric control VFDs need to be coupled to either the first motor or the second motors.”). Coli discloses such an arrangement. Coli discloses that, “[b]ecause [its] electric motors are controlled by variable frequency drives, absolute control of all equipment on location can be maintained from one central point.” Ex. 1004, 11:10–12 (emphasis added). Coli discloses that “[t]ypically, each fracturing module 20 will be associated with a drive housing for controlling electric motor 21 and pumps 22, as well as an electrical transformer and drive unit 50.” Id. at 7:45–50. Petitioner’s declarant testifies that “the drive unit is the variable frequency drive.” Ex. 1003 ¶ 74. Coli discloses that “[b]lender module 40 can . . . include a control cabin 53 for housing equipment controls for first blender unit 47a and second blender unit 47b, and can further include appropriate drives and coolers as required.” Ex. 1004, 10:4–7 (emphasis added). Petitioner’s declarant interprets these “drives” to be variable frequency drives. Ex. 1003 ¶ 76. We credit this testimony of Dr. Durham, which neither Patent Owner nor its declarants address squarely. Accordingly, for the foregoing reasons, Coli and Dr. Durham’s testimony support Petitioner’s contentions. g. Conclusion For the foregoing reasons, we conclude that Petitioner has shown, by a preponderance of the evidence, that claims 1, 10, and 17 are anticipated by Coli.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“blending of a fluid from the fluid source with a fluid additive from the fluid additive source to generate the fracturing fluid,” and that its “electric blending operation permits greater accuracy and control of fracturing fluid additives.” Ex. 1004, 3:14–17, 8:64–66. Petitioner’s declarant interprets this discussion to disclose a hydration unit. Ex. 1003 ¶ 140. Payne discloses a fracturing system with a hydration unit including an electric-motor drive and a programmable automation controller (PAC). Ex. 1006 ¶¶ 88–89. Payne discloses that its programmable automation controllers communicate with variable frequency drives. Id. ¶ 39. Petitioner’s declarant interprets Payne’s electric-motor drive to be a variable frequency drive. Ex. 1003 ¶ 141. Petitioner argues that it would have been obvious to include these features of Payne’s hydration unit in Coli’s system “because such an improvement represents the use of a known technique (i.e., the VFD-controlled and trailer-mounted hydration unit) to predictably improve a similar system (i.e., the system of Coli) in the same way.” Pet. 51 (citing Ex. 1003 ¶ 138; KSR, 550 U.S. at 416–186). 6 Petitioner cites to West’s Supreme Court Reporter (“127 S.Ct. 1727, 1740”) rather than the official United States Reports. Pet. 51. Accordingly, for the foregoing reasons and those set forth in § II.E above, we conclude that Petitioner has shown, by a preponderance of the evidence, that the limitations of claim 9 are disclosed by the combination of Coli and Payne, and that Petitioner has set forth reasoning with rational underpinning why it would have been obvious to combine the teachings of these references to arrive at the claimed subject matter. See, e.g., Pet. 51.” slip op. at 38
Patent outcomesUS 10,280,724 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham · NautilusPatents in suitUS 10,280,724
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.