- PTAB · Nov 22, 2024 · PGR2024-00034 · APJ Patrick R Scanlon · PGR · Institution
Instituted PGR on claims 1–19 and all asserted grounds after finding at least one claim more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review. See 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (2022). To institute a post-grant review, we must determine that “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons set forth below, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of at least one challenged claim. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We note that the identification of a Ph.D. as an example of “more formal education” creates a vast range of education relative to a bachelor’s degree. Thus, we treat the identification of a Ph.D. just as it is—an example—and not a requirement. In this case, “more formal education” can be satisfied by a level of education less than a Ph.D (but greater than a bachelor’s degree). Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, definition, limited as discussed above, for the purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“would have understood Unger’s disclosure to “suggest the use of a torsion spring to facilitate attachment and detachment, because torsion springs are designed to impart this functionality.” Id. (citing Ex. 1002 ¶ 118). Petitioner also asserts that one of ordinary skill in the art would have “understood that there were a limited number of ways to impart the referenced resilient or flexible ‘manipulation,’” and “would have been motivated to look to various known solutions to impart the suggested functionality, including the torsional spring mechanism of Smith that is used in a similar hearing protection device application for a similar purpose as Unger’s mounting arms (to apply a clamping force).” Id. at 32 (citing Ex. 1002 ¶¶ 120–121).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,736,855 - PTAB · Nov 14, 2024 · PGR2024-00026 · APJ Hyun J Jung · PGR · Institution
Instituted PGR on claims 1–7 and all grounds because Petitioner showed it was more likely than not that at least one challenged claim lacks written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage, Petitioner’s arguments, cited portions of the Specification, and supporting testimonial evidence demonstrate that it is more likely than not that claims 1–7 are unpatentable.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“patent describes that “angular position transducer 78 is placed on top of swing leg pivot shaft 24” and that “pivot shaft 24 is rotationally fixed to the connector plate and duplicates the angular movements of swing leg 20 about the pivot shaft.” Ex. 1001, 12:15–16, 12:20–22, Figs. 5, 7. The ’723 patent also describes that “[a]ngular position transducer 78 is mounted inside . . . protective can 90 . . . which is bolted to hinge bracket 28 via an upright holding arm 92” and that “trigger pin 94 projects upwardly from the top surface of pivot shaft 24 and cooperates with angular position transducer 78 to generate an angular position signal.” Id. at 12:28–33, Fig. 5. These descriptions expressly convey that angular position transducer 78 is on pivot shaft 24 and mounted inside protective can 90 that is bolted to hinge bracket 28. Id. at 12:15–16, 12:20–22, 12:28–30, Figs. 5, 7; see also Prelim. Resp. 17 (describing the same embodiment shown in Figs. 5 and 7). According to Petitioner, the ’723 patent describes the pivot shaft as part of the hinge bracket, not the modular frame or swing leg. Pet. 109–110 (citing Ex. 1001, 7:42–46, 12:17–22). On the preliminary record, we agree because the cited portions of the Specification describe that a “hinge bracket is interposed between each swing leg and an associated surface of the bolsters and includes a fixed, upright pivot shaft that pivotally engages the swing leg for pivotal movements” and “pivot shaft 24 is rotationally fixed to the connector plate.” Ex. 1001, 7:42–45, 12:20–21. We also agree that “even if one were to find that the hinge bracket is part of either the modular frame or swing leg (contrary to the claims and specification treating these all as separate components), the specification would only provide written description for one of the claimed alternatives.” Pet. 110 (citing Ex. 1002 ¶ 199).” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this preliminary stage, we determine that express claim interpretation is not necessary to determine whether it is more likely than not that at least one of the claims challenged in the petition is unpatentable. 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 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We will also not use our discretion under § 325(d) to deny the Petition based on arguments previously presented in IPR2021-00135, because Petitioner relies on a Board determination regarding claim 8 from IPR2021- 00136, not arguments previously made for claim 1 in IPR2021-00135. Pet. 111–115, 119; Prelim. Resp. 8–9; Prelim. Sur-reply 5. Furthermore, we determined the effective filing date of claim 8 of the ’571 patent without deciding, that other challenged claims, such as claim 1, were entitled to their earliest possible effective filing date. See Godberson-Smith, Paper 61 at 11, 12.” slip op. at 12
Claim construction§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,772,723 - 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 - PTAB · Apr 11, 2023 · IPR2022-01564 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that Keith anticipates at least claims 1 and 10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1‒14 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Under the circumstances presented, where the priority date of the challenged claims is disputed, we conclude it is not unreasonable for Petitioner to present separate challenges, one of which relies on references that are prior art only if the challenged claims are not entitled to Patent Owner’s claimed priority date, which has yet to be finally determined. See TPG 59 (stating that “a dispute about priority date requiring arguments under multiple prior art references” can be a potential reason for the Board to institute trial on multiple petitions challenging the same patent). Thus, on the present record, we decline to exercise our discretion to deny institution of this Petition on the basis of Petitioner filing multiple petitions.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field or equivalent coursework or experience, and one to two years of experience with mobile device applications and retail POS systems,” also noting that “[m]ore education can supplement practical experience and vice versa.” Pet. 20–21 (citing Ex. 1002 ¶ 34). Patent Owner, at this stage of the proceeding, does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 18. For the purposes of this Decision, we apply Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’435 patent and the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that an express construction of this or any other claim term is not necessary for purposes of 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 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,803,435 - Apple Inc. v. Rfcyber Corp.InstitutedPTAB · Jan 23, 2023 · IPR2022-01256 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–11 based on the § 103 ground over Buhot, GPC, and Zhu, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes 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. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’724 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–11) of the ’724 patent, based on the ground asserted in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to 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
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that an ordinarily skilled artisan for the ’724 patent “would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least one year of experience in the field of mobile payment technology. Additional pertinent education might substitute for the requisite experience and vice versa.” Pet. 6–7 (citing Ex. 1007 (Smith Decl.) ¶¶ 34–35). Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art,” but only for its Preliminary Response. Prelim. Resp. 9. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’724 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“earlier applications, in particular Application No. 11/534,653 (“the ’653 application”), which issued as U.S. Patent No. 8,118,218 B2 (“the ’218 patent”). “It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, 522 F.3d at 1306; New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002); Lucent Techs., Inc. v. Gateway, Inc., 543 F.3d 710, 718 (Fed. Cir. 2008) (“Patent claims are awarded priority on a claim-by-claim basis based on the disclosure in the priority applications.”). The test for determining compliance with the written description requirement under § 112(a) is whether the original disclosure of the earlier-filed application reasonably would have conveyed to one with ordinary skill in the art that the inventor had possession the claimed subject matter at the time of the earlierfiled application. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). It is well settled that “[e]ntitlement to a filing date does not extend to subject matter which is not disclosed but would be obvious over what is expressly disclosed.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571−72 (Fed. Cir. 1997). “It is not sufficient for purposes of the written description requirement of § 112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Id. Nor could the claimed subject matter have been “envisioned” from the earlier disclosure to establish written description support. Goeddel v. Sugano, 617 F.3d 1350, 1356 (Fed. Cir. 2010). We agree with Petitioner that, on this record, there does not appear to be support for limitation [1(j)] in the ’653 application. Patent Owner identifies the following disclosure from the ’218 patent (the patent that issued from the ’653 application) as supporting limitation [1(j)]: According to one embodiment, a smart card has a preloaded smart card operation system that provides security framework to control the access to the Smart card (e.g., an installation of external applications into the smart card). In order to manage the life cycle of an external application, a card manager module is configured by using the smart card security framework. For instance, a Java based smart card, SmartMX, is preloaded with an operating system JCOP 4.1. The Global Platform 2.1 installed on the SmartMX performs the card manager functionality. Ex. 2001 (’218 patent), 4:47–56. Patent Owner argues that “this description is substantively identical to that on which Apple relies for disclosure of the “emulator device” and “replace out of the emulator device . . . replacing out of the emulator device . . .” limitations. Prelim. Resp. 26. Patent Owner contends that “Apple relies on Buhot’s discussion of an ‘operating system 314 (running on processor 400) for the ‘emulator device’ limitation (Pet. at 31), and relies on Zhu’s alleged teachings regarding a ‘smart card manager . . . which governs the process of loading and unloading applications out of an emulator’ for the ‘replace out of the emulator device . . . replacing out of the emulator device’ limitations.” Id. (citing Pet. 43). Patent Owner asserts that Petitioner “cannot argue with a straight face that its proposed combination discloses” slip op. at 21
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,018,724 - Apple Inc. v. Memoryweb, LLCInstitutedPTAB · Jun 10, 2022 · PGR2022-00006 · APJ Jason M Repko · PGR · Institution
The Board instituted PGR of claims 1–59 on all grounds, finding claim 1 more likely than not obvious over A3UM.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of post-grant review requires that the petition, if not rebutted, demonstrate that it is more likely than not that at least one challenged claim is unpatentable. 35 U.S.C. § 324(a). Applying that standard, we institute a post-grant review.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). At this stage and on the current record, we also disagree with Patent Owner’s argument that the manual was not publicly accessible. See Prelim. Resp. 20– 25; Sur-reply 4–5. Rather, we preliminarily determine for institution that the declaration of Matthew Birdsell (Ex. 1020) sufficiently supports Petitioner’s assertions on this issue. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“For example, we preliminarily agree that “A3UM’s Viewer and Browser interfaces also both use a gallery design, where a row of items is displayed above a larger viewer interface displaying one item in greater detail.” Id. at 33 (citing Ex. 1003 ¶ 129). Also, like the Browser’s Grid view, the Faces browser displays a grid of thumbnail images. See id. at 34 (citing Ex. 1005, 80, 216). Considering these teachings, we preliminarily agree that “A3UM’s disclosure of both Grid and Filmstrip (+Viewer) options for the own benefits, and implementing an interface using one or the other would have involved only routine skill.” Id. at 34–35 (citing Ex. 1003 ¶ 131). At this stage and on this record, Petitioner also sufficiently shows that one of ordinary skill in the art “would have been motivated to modify the Faces browser to adopt a Viewer/Browser arrangement that displays selected images ‘at full size.’” Id. at 35. For example, Petitioner asserts that the proposed modification would benefit users of the Viewer, allowing them to “(1) ‘examine an image at its full size’; (2) ‘apply adjustments, keywords, and metadata to an image in the Viewer’; (3) customize how images are displayed, such as ‘at full resolution’ and with ‘metadata,’ and (4) use the Loupe tool, i.e., a magnifying glass.” Id. (citing Ex. 1005, 51, 260, 266; Ex. 1003 ¶ 132). According to the Petition, “Doing so could improve the usability of A3UM’s face confirmation process for detected yet unconfirmed faces by allowing the user to review unconfirmed images ‘at full size’ before confirming them.” Id. (citing Ex. 1003 ¶ 133; Ex. 1005, 419–420, 424–425). Thus, at this stage and for institution, we preliminarily determine that Petitioner has sufficiently shown that the subject matter recited in the person-view limitations would have been obvious.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Instituted
“The test for written-description sufficiency “is whether the specification ‘reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of [the relevant time].’” In re Glob. IP Holdings LLC, 927 F.3d 1373, 1377 (Fed. Cir. 2019) (quoting Ariad, 598 F.3d at 1351). Here, the Petition relies on Dr. Terveen’s analysis of how a skilled artisan would have viewed Figure 6. Pet. 92 (citing Ex. 1003 ¶ 316). Dr. Terveen explains that Figure 6 contains multiple copies of the same person-name combination. Ex. 1003 ¶ 316. In Dr. Terveen’s view, these repeated thumbnails would not be simultaneously the claimed first thumbnail and first digital file, “which a skilled artisan would understand to mean they are not the same.” Id. Dr. Terveen asserts that there is no association between the duplicated thumbnails. Id. In at least this way, we preliminarily determine that the Petition’s written-description challenge conveyed to those skilled in the art.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 11,017,020 - PTAB · May 12, 2022 · IPR2022-00074 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 1–13 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, the arguments presented in the Preliminary Response, as well as all other papers and supporting evidence, we determine that Petitioner shows a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we institute inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“warrant exercise of discretion to deny the Petition. Patent Owner cites to our precedential case General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017). Prelim. Resp. 16; Sur-reply 1. Patent Owner’s arguments for exercising discretion to deny institution, however, do not correspond to typically considered factors articulated in General Plastic because, as both parties indicate, this is not a case of follow-on petitions or multiple petitions challenging the ’732 patent. Reply 1; Sur-reply 1. There has only been a single petition for inter partes review filed against the ’732 patent. Patent Owner cites to no other Board decisions with sufficiently similar circumstances where we exercised discretion to deny a Petition under 35 U.S.C. § 314.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). “[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The non-exclusive Becton, Dickinson factors are:” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“arguments are persuasive. First, we are persuaded that the ’732 patent is not entitled to priority to the filing date of the ’085 application and the ’689 application because the ’085 application and the ’689 application do not share any common inventors with the ’732 patent. See 35 U.S.C. § 120 (2018) (“which names an inventor or joint inventor in the previously filed application”); 37 C.F.R. § 1.78(d)(1) (“Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor.”). The ’732 patent names Jared Oehring, Brandon N. Hinderliter, and Arthur Baron as inventors. Ex. 1001, code (72). The ’085 application and the ’689 application name Joel N. Broussard, Jeff McPherson, and Robert Kurtz as inventors. Ex. 1013, code (72); Ex. 1027, code (72). We have reviewed the ’085 application and the ’689 application and determine, on this record, that the applications fail to include sufficient written description as required by 35 U.S.C. § 120 for the following limitations recited by independent claims 1 and 8: “a weight monitoring system,” (Ex. 1001, 9:63, claim 1); “a proppant dispensing system . . . selectively activated by the information handling system,” (id. at 10:1–3, claim 1); “sensing an amount of proppant” (id. at 10:44, claim 8); “comparing the amount of proppant,” (id. at 10:46 claim 8); and “regulating a flow of proppant from the proppant storage container” (id. at 10:49, claim 8).” slip op. at 5
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,254,732 - PTAB · Feb 17, 2022 · IPR2021-01315 · APJ Lynne H Browne · IPR · Institution
The Board instituted IPR on claims 1–19 and all petition grounds, finding a reasonable likelihood that the challenged claims are unpatentable.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“We are not persuaded by Patent Owner that the circumstances here warrant exercise of discretion to deny the Petition. Patent Owner cites to our precedential case General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017). Prelim. Sur-reply 1–2. Patent Owner’s arguments for exercising discretion to deny institution, however, do not correspond to typically considered factors articulated in General Plastic because, as both parties indicate, this is not a case of followon petitions or multiple petitions challenging the ’500 patent. Prelim. Reply 3; Prelim. Sur-reply 1. There has only been a single petition for inter partes review filed against the ’500 patent. Prelim. Reply 3. Patent Owner cites to no other Board decisions with sufficiently similar circumstances where we exercised discretion to deny a Petition under 35 U.S.C. § 314. Patent Owner contends that we should exercise the Director’s discretion to deny institution for a number of reasons, for example, because Petitioner’s challenges to Patent Owner’s patents are allegedly “an attempt to weaponize the IPR process, and impose increased costs and leverage on USWS’s valuable technology in an attempt to overtake this sector of the market.” Prelim. Resp. 15. We have considered all of Patent Owner’s allegations and are not persuaded that exercising discretion is warranted. Patent Owner’s allegations are not supported by sufficient evidence and, to the contrary, it is undisputed that Patent Owner has asserted seven of its patents against Petitioner in district court litigation. Petitioner expresses reasonable concern that Patent Owner may initiate additional district court litigation regarding its as yet unasserted patents. See Prelim. Reply 2.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Although Broussard was presented to the Office, we find that the first part of the Advanced Bionics framework is not satisfied, because the Petition does not assert Broussard alone. Rather, Broussard is asserted in combination with Kaarstad in every ground set forth in the Petition. Pet. 14. Kaarstand was not presented to the Office during prosecution. Pet. 14. Patent Owner asserts that Kaarstad is cumulative of Seiver and Kristensen; on the record before us, we agree with Petitioner that it is not. Prelim. Resp. 27–30, Prelim. Reply 5. Specifically, we agree with Petitioner that “Kaarstad includes a power distribution network with two switchgear units and a tiebreaker coupled therebetween.” Prelim. Reply 5 (citing Pet. 24–29). We further agree with Petitioner that these elements disclosed in Kaarstad (i.e. two switchgear units and a tiebreaker coupled therebetween) are the same elements that Patent Owner used to overcome the Examiner’s rejection based on Seiver. Prelim. Reply 5; Ex. 1004, 39. In addition, we agree with Petitioner that Kristensen was never relied on by the Examiner during the underlying prosecution, and that Kristensen merely discloses a single switchgear as opposed to the two switchgears and tiebraker required by the claims. Prelim. Reply 5; Ex. 2002, Abst., 7:52. For these reasons, we determine that Kaarstad is not cumulative of Siever or Kristensen. Thus, the first part of the Advanced Bionics framework is not satisfied because the combination of references asserted in the Petition was not presented previously to the Office. Under the circumstances presented here, we determine that exercising discretion to deny the Petition under § 325(d) is unwarranted.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine that Petitioner has demonstrated a reasonable likelihood of prevailing in demonstrating that claims 1–11 and 13–19 of the ’500 patent are obvious over Broussard and Kaarstad.” slip op. at 31
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“arguments are persuasive. Specifically, we are persuaded that the ’500 patent is not entitled to priority to the November 16, 2012, filing date of the ’085 application because the ’500 patent and the ’085 application do not share any common inventors. See U.S.C. § 120 (“which names an inventor or joint inventor in the previously filed application”); 37 C.F.R. § 1.78(d)(1) (“Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor”). The ’500 patent names Jared Oehring and Brandon N. Hinderliter as inventors. Ex. 1001, code (72). The ’085 application names Joel N. Broussard, Jeff McPherson, and Robert Kurtz as inventors. Ex. 1004, code (72). We have reviewed the ’085 application and determine that the ’085 applications fails to include sufficient written description as required by 35 U.S.C. § 120 for the following limitations of independent claims 1 and 14: “at least two switch gear units” (Ex. 1001, 15:44, claim 1; id. at 16:63, claim 14); and “tie breaker electrically coupled between each of the at least two switchgear units” (id. at 15:48–49, claim 1; id. at 16:66– 67). See generally Ex. 1005. Accordingly, on this record, we are persuaded that the effective filing date of the ’500 patent is April 15, 2016.” slip op. at 7
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,893,500 - PTAB · Feb 16, 2022 · IPR2021-01238 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that at least one claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute only 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) (2018). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (“CTPG”) 64 (Nov. 2019) (“The Board will not institute on fewer than all claims or all challenges in a petition.”);1 see also AC Techs. S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1364 (Fed. Cir. 2019) (“[I]f the Board institutes an IPR, it must . . . address all grounds of unpatentability raised by the petitioner.”).” slip op. at 2
- Other 314aDenied
“This case is unlike other situations in which the Board has exercised its discretion to deny institution. Instead, Patent Owner asks us to deny institution because Petitioner has filed petitions challenging several of Patent Owner’s patents that are not asserted in district court litigation, arguing that the filing of this many petitions by one petitioner against one patent owner is contrary to the purposes of the AIA. Prelim. Resp. 12–23. Patent Owner’s arguments fail to persuade us to exercise our discretion to deny institution in this case. For each of Patent Owner’s patents, Petitioner has filed only one petition. We do not see this action as being contrary to the purposes of the AIA. See, e.g., Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16 (PTAB Sept. 6, 2017) (designated precedential) (citing H.R. Rep. No. 112-98, pt. 1, at 48 (2011)) (noting that the AIA is “not to be used as [a] tool[] for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). Moreover, it is undisputed that Patent Owner has asserted seven of its patents against Petitioner in district court litigation, and Petitioner expresses reasonable concern that Patent Owner may initiate additional litigation regarding its asyet unasserted patents. See Prelim. Reply 2. Accordingly, for the foregoing reasons, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny institution.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Thus, under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims. Id. at 8.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In order to claim priority to an early-filed U.S. patent application, the earlier-filed application must disclose the invention claimed in the later-filed application “in the manner provided by section 112(a) (other than the requirement to disclose the best mode)” and the later-filed application must “name[] an inventor or joint inventor in the previously filed application.” 35 U.S.C. § 120. For the reasons discussed below, we agree with Petitioner that, on this preliminary record, the ’882 patent is not entitled to claim priority to the filing date of the ’689 application. Each of the independent claims of the ’882 patent recites a first switch gear positioned between a source of electricity and a transmission line and a second switch gear positioned between the transmission line and an electric motor. Ex. 1001, 8:55–57, 9:19–22. “Switchgear” is “[a] general term covering switching and interrupting devices and their combination with associated control, instrumentation, metering, protective and regulating devices.” Ex. 1029, 7. The ’689 application does not disclose a switch gear. See generally Ex. 1004.2 Nor does the ’689 application disclose any switching or interrupting devices or any transformers. See generally id. Therefore, we agree that, on this preliminary record, the ’689 application does not disclose the invention claimed in the ’882 patent in the manner provided by 35 U.S.C. § 112(a). Additionally, the ’689 application lists Joel N. Broussard, Jeff McPherson, and Robert Kurtz as inventors. Ex. 1004, code (72). The ’882 patent lists Jared Oehring and Brandon Neil Hinderliter as inventors. Ex. 1001, code (72); Ex. 1003, 808. Therefore, we agree that, on this 2 Exhibit 1004 is the publication of the ’689 application. Ex. 1004, code (21). preliminary record, the ’882 patent does not name an inventor or joint inventor of the ’689 application. Accordingly, for the foregoing reasons and on this preliminary record, we agree with Petitioner that the ’882 patent is not entitled to claim priority to the filing date of the ’689 application.” slip op. at 7
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,526,882
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.