- PTAB · Feb 8, 2023 · IPR2022-01335 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 19, 20, and 37–52 based on the §103 combination of Hardin and Salmre, finding a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition 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 supporting evidence, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’447 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all Challenged Claims of the ’447 patent on the ground stated in the Petition.” slip op. at 3
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“(1) Petitioner asserts that substantially the same two claim limitations lack written description support in the ’094 application and U.S. Patent Application No. 13/856,392 (“the ’392 application”) (compare Pet. 23–29, with IPR2022-01333, Paper 4 (petition) at 23–28); (2) Petitioner asserts that because these limitations lack written description support in the ’094 and ’392 applications, the Challenged Claims are not entitled to the priority date of either of these applications and, therefore, Hardin ’665 (the pre-issuance publication of the ’094 application) is available as prior art to the Challenged Claims (compare Pet. 1, 2, 28–29, with IPR2022-01333, Paper 4 at 1, 2, 28–29);” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“(3) Petitioner asserts that the same combination of references— Hardin ’665 and Salmre—would have rendered the subject matter of the claims challenged in each petition obvious to one of ordinary skill in the art at the time of the invention (compare Pet. 29–64, with IPR2022-01333, Paper 4 at 29–66); (4) Petitioner asserts the same reasons with rational underpinning as to why one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre as proposed with a reasonable expectation of success (compare Pet. 65–71, with IPR2022-01333, Paper 4 at 66–71);” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“that we should exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (compare Prelim. Resp. 61–66, with IPR2022-01333, Paper 9 at 61–66);” slip op. at 16
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,984,447 - PTAB · Feb 8, 2023 · IPR2022-01334 · APJ Arthur M Peslak · IPR · Institution
The Board instituted review of claims 18 and 21–36 on the Hardin and Salmre obviousness ground, finding a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition 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 supporting evidence, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’447 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all Challenged Claims of the ’447 patent on the ground stated in the Petition.” slip op. at 3
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“lack written description support in the ’094 application and U.S. Patent Application No. 13/856,392 (“the ’392 application”) (compare Pet. 23–28, with IPR2022-01333, Paper 4 (petition) at 23–28); (2) Petitioner asserts that because these limitations lack written description support in the ’094 and ’392 applications, the Challenged Claims are not entitled to the priority date of either of these applications and, therefore, Hardin ’665 (the pre-issuance publication of the ’094 application) is available as prior art to the Challenged Claims (compare Pet. 1, 2, 28–29, with IPR2022-01333, Paper 4 at 1, 2, 28–29);” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Hardin ’665 and Salmre—would have rendered the subject matter of the claims challenged in each petition obvious to one of ordinary skill in the art at the time of the invention (compare Pet. 29–62, with IPR2022-01333, Paper 4 at 29–66); (4) Petitioner asserts the same reasons with rational underpinning as to why one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre as proposed with a reasonable expectation of success (compare Pet. 59–65, with IPR2022-01333, Paper 4 at 66–71);” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“that we should exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (compare Prelim. Resp. 61–66, with IPR2022-01333, Paper 9 at 61–66);” slip op. at 15
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,984,447 - PTAB · Feb 8, 2023 · IPR2022-01329 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 19–28, 33, and 34, finding a reasonable likelihood that Hardin ’665 and Salmre render them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable 1 Petitioner’s Preliminary Reply is limited to the issue of discretionary denial pursuant to Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), and, particularly, the effect of Samsung’s stipulation in related litigation, in accordance with Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“(1) Petitioner asserts that substantially the same two claim limitations lack written description support in the ’094 application and U.S. Patent Application No. 13/856,392 (“the ’392 application”) (compare Pet. 23–27, with IPR2022-01327, Paper 4 (petition) at 23–27); (2) Petitioner asserts that because these limitations lack written description support in the ’094 and ’392 applications, the Challenged Claims are not entitled to the priority date of either of these applications and, therefore, Hardin ’665 (the pre-issuance publication of the ’094 application) is available as prior art to the Challenged Claims (compare Pet. 1, 2, 27–28, with IPR2022-01327, Paper 4 at 1, 2, 27–28);” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“(3) Petitioner asserts that the same combination of references— Hardin ’665 and Salmre—would have rendered the subject matter of the claims challenged in each petition obvious to one of ordinary skill in the art at the time of the invention (compare Pet. 28–62, with IPR2022-01327, Paper 4 at 28–63); (4) Petitioner asserts the same reasons with rational underpinning as to why one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre as proposed with a reasonable expectation of success (compare Pet. 62–68, with IPR2022-01327, Paper 4 at 63–69);” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“(6) Patent Owner relies on the same argument and evidence to assert that we should exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (compare Prelim. Resp. 61–66, with IPR2022-01327, Paper 9 at 61–66);” slip op. at 16
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,049,387 - PTAB · Feb 8, 2023 · IPR2022-01328 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted review of claims 10–18, 31, and 32 under § 103 over Hardin ’665 and Salmre, finding a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable 1 Petitioner’s Preliminary Reply is limited to the issue of discretionary denial pursuant to Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), and, particularly, the effect of Samsung’s stipulation in related litigation, in accordance with Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“Accordingly, for the reasons set forth in IPR2022-01327, Paper 13, we: (1) determine, based on the present record, that the Challenged Claims of the ’387 patent are not entitled to the priority date of the ’094 application, and, therefore, Hardin ’665 is available as prior art to the ’387 patent; (2) determine that, on balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Hardin ’665 and Salmre would have rendered the subject matter of claims 10–18, 31, and 32 of the ’387 patent obvious to one of ordinary skill in the art at the time of the invention; (3) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Fintiv; and (4) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 17
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedOther
“Accordingly, for the reasons set forth in IPR2022-01327, Paper 13, we: (1) determine, based on the present record, that the Challenged Claims of the ’387 patent are not entitled to the priority date of the ’094 application, and, therefore, Hardin ’665 is available as prior art to the ’387 patent; (2) determine that, on balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Hardin ’665 and Salmre would have rendered the subject matter of claims 10–18, 31, and 32 of the ’387 patent obvious to one of ordinary skill in the art at the time of the invention; (3) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Fintiv; and (4) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Accordingly, for the reasons set forth in IPR2022-01327, Paper 13, we: (1) determine, based on the present record, that the Challenged Claims of the ’387 patent are not entitled to the priority date of the ’094 application, and, therefore, Hardin ’665 is available as prior art to the ’387 patent; (2) determine that, on balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Hardin ’665 and Salmre would have rendered the subject matter of claims 10–18, 31, and 32 of the ’387 patent obvious to one of ordinary skill in the art at the time of the invention; (3) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Fintiv; and (4) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 17
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,049,387 - PTAB · Feb 8, 2023 · IPR2022-01330 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on claims 1–10 based on the obviousness ground using Hardin ’665 and Salmre.
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 . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to all the challenged claims of the ’418 patent, namely, claims 1–10, based on the sole ground presented in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“lack written description support in U.S. Application No. 12/434,094 (“the ’094 application”) and U.S. Patent Application No. 13/856,392 (“the ’392 application”) (compare Pet. 22–26, with IPR2022-01331, Paper 4 at 22–26 (petition)); (2) Petitioner asserts that because these limitations lack written description support in the ’094 and ’392 applications, the challenged claims are not entitled to the priority date of either of these applications, and, therefore, Hardin ’665 (the pre-issuance publication of the ’094 application) is available as prior art to the challenged claims (compare Pet. 1, 2, 26–27, with IPR2022-01331, Paper 4 at 1, 2, 26–27);” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“(3) Petitioner asserts that the same combination of references— Hardin ’665 and Salmre—would have rendered the subject matter of the claims challenged in each petition obvious to one of ordinary skill in the art at the time of the invention (compare Pet. 27–70, with IPR2022-01331, Paper 4 at 27–69); (4) Petitioner asserts the same reasons with rational underpinning as to why one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre as proposed with a reasonable expectation of success (compare Pet. 64–70, with IPR2022-01331, Paper 4 at 64–69);” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“that we should exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (compare Prelim. Resp. 61–66, with IPR2022-01331, Paper 10 at 61–66);” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,779,418 - PTAB · Feb 7, 2023 · IPR2022-01333 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 1–17, finding a reasonable likelihood that at least one claim was obvious over Hardin ’665 and Salmre.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We reviewed Petitioner’s uncontested evidence and arguments and determine that Petitioner has sufficiently shown a reasonable likelihood that at least one of the challenged claims would have been unpatentable over Hardin and Salmre.” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had at least a bachelor’s degree in computer science or a comparable field of study and at least five years of professional experience in mobile or location-based computing or other relevant academic experience. Pet. 22 (citing Ex. 1003 ¶¶ 38–41). 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. 46. Mr. Denning, however, applies Mr. Williams’ level of ordinary skill in the art in Mr. Denning’s Declaration in support in Patent Owner’s Preliminary Response. Ex. 2001 ¶ 26.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no express claim constructions are necessary, and the claims should be given their plain and ordinary meaning in this proceeding.” Pet. 22–23. Patent Owner submits that it “do[es] not believe the Board needs to construe any terms.” Prelim. Resp. 33. We determine that an express construction of any claim term is not necessary for purposes of this Decision because none are in dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, 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 13
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“regarding the state of the art, the more predictable field of mechanical/electrical technologies, and the relatively high level of skill in the art, on the present record, there is a disconnect between what the ’094 application discloses and the specific limitation of the Challenged Claims at issue, which requires that the application program makes a request to reserve a geographic area of interest. In addition to the ’094 application’s failure to disclose this limitation expressly, the ’094 application fails to reasonably convey to one of ordinary skill in the art any hint, suggestion, or indication that Patent Owner possessed an invention in which an application program makes such a request. To the contrary, based on our review and the present record, we agree with Petitioner that the ’094 application consistently and repeatedly discloses that a sponsor makes such a request and does not attribute that action expressly, inherently, or otherwise to any other aspect of the invention. See, e.g., Pet. 13 (identifying several instances where the ’094 application attributes that action to a sponsor).” slip op. at 24
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,984,447 - PTAB · Feb 7, 2023 · IPR2022-01331 · APJ Michelle N Wormmeester · IPR · Institution
Instituted IPR on claims 11–18 based on obviousness over Hardin ’665 and Salmre; the Board found a reasonable likelihood of success, including because the claims likely lack the asserted priority date.
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 . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to all the challenged claims of the ’418 patent, namely, claims 11–18, based on the sole ground presented in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the time of the invention “would have had at least a bachelor’s degree in computer science or a comparable field of study and at least five years of professional experience in mobile or location-based computing or other relevant academic experience.” Pet. 20 (citing Ex. 1003 ¶¶ 38–41).” slip op. at 15
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“regarding the state of the art, the more predictable field of mechanical/electrical technologies, and the relatively high level of skill in the art, on the present record, there is a disconnect between what the ’094 application discloses and the specific limitation of the challenged claims at issue, which recites that the application program makes a request to reserve a geographic area of interest. In addition to the ’094 application’s failure to disclose this limitation expressly, the ’094 application fails to reasonably convey to one of ordinary skill in the art any hint, suggestion, or indication that Patent Owner possessed an invention in which an application program makes such a request. To the contrary, based on our review of the present record, we agree with Petitioner that the ’094 application consistently and repeatedly discloses that a sponsor makes such a request and does not attribute that action expressly, inherently, or otherwise to any other aspect of the invention. See, e.g., Pet. 13 (identifying several instances where the ’094 application attributes that action to a sponsor).” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“c. Differences Between the Prior Art and the Claims Petitioner sets forth a detailed analysis showing how the combined teachings of the references meet the elements of claims 11–18. Pet. 27–69. In particular, Petitioner relies on Hardin ’665 as teaching most of the limitations of the claims, but relies on Salmre to meet the claim limitations reciting application programs on mobile devices that can reserve geographic areas and a content delivery platform that can be implemented on the same mobile device as the application program. Id. at 28. Additionally, Petitioner contends that one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre with a reasonable expectation of success. Id. at 64–69. In its Preliminary Response, Patent Owner does not raise an argument responding to Petitioner’s challenge based on Hardin ’665 and Salmre aside from whether the ’418 patent claims are entitled to the priority date of the ’094 application, an issue we addressed above (see supra Part III.C.). We have reviewed Petitioner’s uncontested argument and evidence regarding the teachings of Hardin ’665 and Salmre, and we find, for the reasons provided by Petitioner and on the preliminary record before us, that Petitioner has shown sufficiently that the combined teachings of Hardin ’665 and Salmre satisfy the limitations of the claims, and that one of ordinary skill in the art would have had a reason with rational underpinning to combine the teachings as proposed by Petitioner with a reasonable expectation of success.” slip op. at 36
§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,779,418 - PTAB · Feb 7, 2023 · IPR2022-01327 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted review of claims 1–9, 29, and 30 on the § 103 ground over Hardin ’665 and Salmre.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have reviewed Petitioner’s uncontested argument and evidence regarding the teachings of Hardin ’665 and Salmre, and we find, for the reasons provided by Petitioner and on the preliminary record before us, that Petitioner has shown sufficiently that the combined teachings of Hardin ’665 and Salmre satisfy the elements of the claims, and that one of ordinary skill in the art would have had a reason with rational underpinning to combine the teachings as proposed by Petitioner with a reasonable expectation of success.” slip op. at 33
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Analogous artInstituted
“Differences Between the Prior Art and the Claims; Motivation to Modify Petitioner sets forth a detailed analysis showing how the combined teachings of the references meet the elements of claims 1–9, 29, and 30. Pet. 28–63. In particular, Petitioner relies on Hardin ’665 as teaching most of the elements of the claims, but relies, on Salmre to meet the claim elements reciting application programs on mobile devices that can reserve geographic areas and a content delivery platform that can be implemented on the same mobile device as the application program. Id. at 29. Additionally, Petitioner contends that one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre with a reasonable expectation of success. Id. at 63–69.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Differences Between the Prior Art and the Claims; Motivation to Modify Petitioner sets forth a detailed analysis showing how the combined teachings of the references meet the elements of claims 1–9, 29, and 30. Pet. 28–63. In particular, Petitioner relies on Hardin ’665 as teaching most of the elements of the claims, but relies, on Salmre to meet the claim elements reciting application programs on mobile devices that can reserve geographic areas and a content delivery platform that can be implemented on the same mobile device as the application program. Id. at 29. Additionally, Petitioner contends that one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre with a reasonable expectation of success. Id. at 63–69.” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“Objective Considerations of Nonobviousness Neither party presents evidence of objective considerations of nonobviousness at this stage of the proceeding.” slip op. at 34
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSRPatents in suitUS 10,049,387 - Samsung Electronics Co., Ltd. v. Acorn Semi, LLCAll claims unpatentablePTAB · Jan 12, 2022 · IPR2020-01205 · APJ John R Kenny · IPR · Final written decision
Claims 1–3, 6, 8–12, and 14–16 are unpatentable as anticipated by Grupp ’483; the priority applications do not support or enable the claims’ full scope.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateEntitled to earlier dateMixed
“To support a claim to a genus, a specification must disclose “either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc). Here, the recited genus is an interface layer comprising a metal oxide, where the interface layer is configured to provide a specific contact resistivity between a contact metal and a semiconductor of than 1 Ω- μm2. Ex. 1001, 18:37–43. It is undisputed that the only species the pre- 2011 priority applications disclose is TiO2, as set forth in the following passage: Two other properties of the dielectric deserve mention. First is the property of the height of the barrier compared to the semiconductor conduction band (for electrons). In making the barrier thinner than a silicide barrier, the tradeoff may be a higher tunnel barrier (e.g., 2 eV for nitride, compared with about half the gap of 0.6 eV for silicide). Spacer layers may be used with lower barriers (e.g., TiO2 has a barrier of less than 1 eV). Nevertheless, even with the higher barrier to electrons, the present inventors have determined that the resistance can still be one hundred times lower than a contact to silicon with a silicide barrier. Id. at 17:59–18:2 (emphasis added).” slip op. at 18
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledNot entitled to earlier dateDecided for petitioner
“evidence shows, that the disclosure does not enable specific contact resistance down to zero. Ex. 1016, Schubert Decl. ¶¶ 87–90. Instead, Patent Owner argues that one of skill in the art would have understood there to be an “inherent lower limit” and that the claims are enabled because one of skill in the art could achieve that lower limit through experimentation based on the disclosure of patent. We are not persuaded by Patent Owner’s argument, for two main reasons. First, we do not agree that the cases cited by Patent Owner establish that the enablement requirement is satisfied if one of skill in the art could experiment in accordance with the disclosure to find a practical end of an open ended range recited in a claim. Patent Owner principally relies on Andersen Corp. v. Fiber Composites, but the Federal Circuit in that case affirmed the jury verdict of enablement because “the upper limit of the Young’s modulus of the structural member would lie somewhere between the Young’s modulus of the wood fiber and that of the polymer used in the composition.” 474 F.3d at 1377. In other words, there were two known quantities that provided a fixed range. That is not the case here, where Patent Owner does not point to any such predefined limits. Patent Owner also cites a district court case, PerkinElmer Health Scis., Inc. v. Agilent Techs., Inc., 962 F. Supp. 2d 304, 310 (D. Mass. 2013). That case is not directly on point, because it was considering claim construction and not enablement, but that court also found an existing practical upper limit to the” slip op. at 36
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Neither party asks for a construction of the subject claim language, and we determine that the plain meaning of “a specific contact resistivity . . . of less than 1Ω μm2” would encompass all specific contact resistances below 1 Ω-μm2 and down to zero.” slip op. at 35
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableReference is prior artUnpatentable
“reference for purposes of anticipation under section 102 [] differs from the enablement standard under section 112.” Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1325 (Fed. Cir. 2005). Enablement under section 112, which is required for priority under section 120, requires enablement of the full breadth of a claim. Wyeth and Cordis Corp. v. Abbott Laboratories, 720 F.3d 1380, 1384 (Fed. Cir. 2013); MagSil, 687 F.3d at 1384; 35 U.S.C. § 120. Enablement for anticipation does not; rather it requires only enablement of an embodiment or embodiments that fall within the scope of the claim. Chester v. Miller, 906 F.2d 1574, 1577 (Fed. Cir. 1990) (“a CIP's claim for a genus might not be enabled by a parent's disclosure, but that parent may enable a species that anticipates the CIP's claim for a genus . . . . the Court of Custom and Patent Appeals [] made clear the differences between the requirements for claim-anticipating disclosures and for claim-supporting disclosures”) (citing In re Lukach, 442, F.2d 967, 969–970 (CCPA 1971)). Here, the enablement challenge for priority is for a lack of enablement of the full breadth of the recited range, and in particular, a lack of enablement of the lower part of the recited range (that which is at or near zero). No party has argued that the upper part of the recited range (just below 1 Ω-μm2) is not enabled by either the priority applications or Grupp ’483. See, e.g., Pet. 20; PO Resp. 1–2; Pet. Reply 27–28; PO Sur-reply 17– 18. And enablement by a prior art patent is presumed. In re Antor Media Pharm., Inc., 545 F.3d 1312, 1316 (Fed. Cir. 2008); Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003). Thus, the record does not reflect an inconsistency in holding the priority applications as not enabling the breadth of the recited range while treating Grupp ’483 as enabling the upper part of the range for anticipation. As set forth below, we find that Petitioner has proven that Grupp ’483 anticipates every challenged claim.” slip op. at 42
Patent outcomesUS 9,461,167 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 9,461,167
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