- Tesla, Inc. v. Intellectual Ventures II LLCSome claims unpatentablePTAB · Aug 18, 2026 · IPR2025-00339 · APJ Kristen L Droesch · IPR · Final written decision
Claims 22, 23, 28, and 30 are unpatentable over Choi, Labaziewicz, and Yu; claims 1–3, 10–12, 24, 25, 32, and 33 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“We decline Patent Owner’s invitation to construe “during a frame” of “independently controlling simultaneous data acquisition with each of the first and second channels during a frame” by importing the extraneous limitations “at some point between the beginning and the end of the exposure interval during which the image sensors capture a single image.” As pointed out by Petitioner, Patent Owner’s proposed construction is unsupported by the language of claim 22 and the ’180 Specification because Specification does not disclose an exposure interval nor suggest “during a frame” is limited to an exposure interval. Patent Owner and its expert Dr. Saber cite only extrinsic evidence (Exs. 2006, 2009) to support its argument that claim 22 should be limited to an “exposure interval during which the image sensors capture a single image.” See PO Resp. 16–17; Ex. 2020 ¶ 64. Similarly, Patent Owner relies only on extrinsic evidence (e.g., Ex. 2011, 1; Ex. 2022, 1; Ex. 2020 ¶ 66) to limit “during” to “at some point between the beginning and the end.” See id. at 18. When considered in the context of claim 22 and the ’180 Patent Specification which do not limit “during a frame” to an exposure interval, we find that we cannot rely on Patent Owner’s citations to extrinsic evidence to yield a reliable construction for “during a frame.” As demonstrated in the analysis below, we need not provide an explicit construction for “during a frame” to resolve the parties’ disputes regarding the merits of the patentability challenges. See Realtime, 912 F.3d at 1375. We apply the ordinary and customary meaning for “during a frame.” To the extent that an explicit identification of the ordinary and customary meaning may aid the understanding of our analysis, consistent with the language of claim 22 and the ’180 Patent Specification, we find that the ordinary and customary meaning for “during a frame” is “during the period of time that data for an image frame is acquired.” See Ex. 1001, code (57), 20:6–24, 25:23–35.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and 2-3 years of experience in digital imaging systems,” and that “[l]ess experience may be necessary with additional education, and likewise, less education may be necessary with additional work experience.” Pet. 6 (citing Ex. 1003 ¶¶ 16–19). Patent Owner does not dispute Petitioner’s definition. See generally PO Resp. 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 ’180 Patent Specification and the prior art of record.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Owner to show that Labaziewicz is not prior art because the ’180 Patent is entitled to the earliest August 25, 2004, filing date of the ’854 Provisional Application. 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 deficiencies of written description support the ’854 Provisional Application provides written description support for all of the limitations of the claimed invention. See PO Resp. 60–64; PO Sur-reply 25–28. Specifically, Patent Owner does not address written description support in the ’854 Provisional Application for “independently controlling simultaneous data acquisition with each of the first and second channels during a frame”––limitation [22.3]––the heart of the parties’ claim construction disputes addressed above in Section II.A. See PO Resp. 60–64; PO Sur-reply 25–27. 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 the ’854 Provisional Application. As a result, the burden of production does not shift back to Petitioner, and, therefore, the ’180 Patent is not entitled to the benefit of the August 25, 2004, filing date of the ’854 Provisional Application.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner does not present arguments that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify the teachings of Matsushima to acquire data for images 62A and 62B at the argues that Matsushima renders obvious this limitation. See id. at 21, 23, 30; PO Resp. 33–34 (“[T]he Petition provides no further explanation why Matsushima renders this limitation obvious.”). In the Reply for the first time, Petitioner asserts that “a POSITA would understand that Matsushima’s disclosure, including its multi-channel architecture, synchronous control of channels, and capturing two images that are scaled versions of the same scene, renders obvious simultaneous acquisition during a frame. Pet. Reply 13 (citing Ex. 1069 ¶ 49). We do not consider Petitioner’s belated argument because it exceeds the proper scope of a reply. A reply may only respond to arguments raised in the corresponding patent owner response. See 37 C.F.R. § 42.23. As explained in the Trial Practice Guide, “respond” “does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Trial Practice Guide at II.I. (December 2025)(citing 37 C.F.R. § 42.23).10 A reply that raises a new issue or belatedly presents evidence may not be considered. See id. For example, a “[p]etitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Id.” slip op. at 32
Patent outcomesUS 7,916,180 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,916,180 - Tesla, Inc. v. Intellectual Ventures II LLCSome claims unpatentablePTAB · Jul 21, 2026 · IPR2025-00339 · APJ Kristen L Droesch · IPR · Final written decision
Claims 22, 23, 28, 30, and 33 are unpatentable over Choi, Labaziewicz, and Yu under § 103; claims 1–3, 10–12, 24, 25, and 32 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and 2-3 years of experience in digital imaging systems,” and that “[l]ess experience may be necessary with additional education, and likewise, less education may be necessary with additional work experience.” Pet. 6 (citing Ex. 1003 ¶¶ 16–19). Patent Owner does not dispute Petitioner’s definition. See generally PO Resp. 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 ’180 Patent Specification and the prior art of record.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Owner to show that Labaziewicz is not prior art because the ’180 Patent is entitled to the earliest August 25, 2004, filing date of the ’854 Provisional Application. 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.”).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We do not agree with Petitioner’s arguments based on retrieval of data from CCD 18A and CCD 18B. Although Matsushima’s CCD drive circuits 20A and 20B are driven synchronously by timing generator 28 (see Ex. 1007 ¶ 27), Matsushima discloses that “accumulated signal charges are retrieved by CCD drive pulses applied by CCD drive circuits 20A and 20B, and are sequentially output from CCD 18A and CCD 18B as voltage signals (analog image signals) corresponding to each signal charge” (see Ex. 1007 ¶ 23) (emphasis added). In other words, regardless of whether CCD drive circuits 20A and 20B are driven synchronously by timing generator 28, Matsushima discloses that voltage signals corresponding to the accumulated 8 Petitioner’s citation erroneously includes ¶¶ 34–36 of Exhibit 1069. CCD 18A and CCD 18B sequentially––not output at the same time or simultaneously.” slip op. at 30
- Strike new argumentNew argument disregardedDecided for patent owner
“argues that Matsushima renders obvious this limitation. See id. at 21, 23, 30; PO Resp. 33–34 (“[T]he Petition provides no further explanation why Matsushima renders this limitation obvious.”). In the Reply for the first time, Petitioner asserts that “a POSITA would understand that Matsushima’s disclosure, including its multi-channel architecture, synchronous control of channels, and capturing two images that are scaled versions of the same scene, renders obvious simultaneous acquisition during a frame. Pet. Reply 13 (citing Ex. 1069 ¶ 49). We do not consider Petitioner’s belated argument because it exceeds the proper scope of a reply. A reply may only respond to arguments raised in the corresponding patent owner response. See 37 C.F.R. § 42.23. As explained in the Trial Practice Guide, “respond” “does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Trial Practice Guide at II.I. (December 2025)(citing 37 C.F.R. § 42.23).9 A reply that raises a new issue or belatedly presents evidence may not be considered. See id. For example, a “[p]etitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Id. Petitioner clarifies that the Petition does not argue inherency. See Pet.” slip op. at 33
Patent outcomesUS 7,916,180 mixed§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,916,180 - 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 - Apple Inc. v. Paul PoniatowskiAll claims unpatentablePTAB · Oct 2, 2025 · IPR2024-00731 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–6, 8–13, 15–20, and 22–27 are unpatentable as obvious over Wang, Dua, and Yong.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). For purposes of this proceeding, Petitioner argues a person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in computer science, computer engineering, or equivalent with one to two years of experience in the field of mobile transactions.” Pet. 8 (citing Ex. 1003 ¶¶ 35–37). Petitioner adds that “[a]dditional education or experience might substitute for the above requirements.” Id. Patent Owner does not address the level of ordinary skill in the art. See PO Resp. 2 US Patent App. Pub. No. US 2002/0023215 A1 (Ex. 1004). 3 US Patent App. Pub. No. US 2006/0165060 A1 (Ex. 1005). 4 Korean Unexamined Patent App. Pub. No. 10-2007-0063899 (Ex. 1006). Petitioner submits Yong’s Korean-language patent application and a certified translation of the same. See id. We refer to the English-language translation of Yong. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner, as it is supported by Dr. Bederson’s testimony and appears consistent with the ’578 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)); Ex. 1003 ¶ 36.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“We agree with Petitioner that nothing in the claim language or the Specification requires that the claimed optical input receive information concerning the prices of goods directly from the goods themselves. Patent Owner does not explicitly address the claim construction of this term. See PO Resp. Patent Owner, however, does assert that “it would be logical for those skilled in [the] art to apply any available technology to further modify and improve the shopping experience by taking a scan/pic of the products bar codes, instead of entering them manually.” Id. at 2–3. This assertion is not inconsistent with a finding that the scanned bar code information may be received indirectly. Accordingly, on this record, we construe the term “receiving information concerning the prices of goods” to encompass receiving pricing information from a server.” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“We agree with Petitioner that the Priority Applications do not disclose the optical input and network hub limitations or their equivalent. As Petitioner argues, “disclosure in a parent application that merely renders the later-claimed invention obvious is not sufficient to meet the written description requirement; the disclosure must describe the claimed invention with all its limitations.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)) (“It is not sufficient…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”). Reply 4. Accordingly, for the purposes of determining eligible prior art for this Decision, we rely on the ’578 patent’s application filing date of October 19, 2009.” slip op. at 15
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We determine that the preponderance of the evidence supports Petitioner arguments that the cited references are analogous art. Our reviewing court has stated that “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations and internal quotes omitted). While these two criteria are helpful in many instances, we must not lose sight of the key question at hand: what is “prior art” as that term is used in 35 U.S.C. § 103(a)? References that are “too remote to be treated as ‘prior art’” are excluded from the obviousness analysis. In re Sovish, 769 F.2d 738, 741, 226 (Fed. Cir. 1985). The non-analogous art test provides helpful insight on the underlying question of what is “prior art” within the meaning of the statute; we should not, however, be blind to the reality of the circumstances of the case before us. In re Wood, 599 F.2d 1032, 1036 (CCPA (1979). Nor should we adhere to rigid and mandatory formulas that overly limit the inquiry. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Focusing on the first of the two tests above, the test for analogous art “requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” In re Bigio, 381 F.3d at 1325. We thus consider all explanations of the inventors’ subject matter while keeping in mind that prior art is analogous when it “is from the same field of endeavor, regardless of the problem addressed. . . .” In re Bigio, 381 F.3d at 1320 (emphasis added). Thus, “field of endeavor” should not be defined narrowly based only upon the specific problem addressed.” slip op. at 21
Patent outcomesUS 8,270,578 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,270,578 - Samsung Electronics Co., Ltd. v. Anonymous Media Research Holdings, LLCInstitution deniedPTAB · Mar 24, 2025 · IPR2024-01349 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because claims 1–13 are entitled to the May 26, 2005 priority date, making the asserted references not prior art and the obviousness grounds unlikely to prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); see also 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Thus, if Petitioner has not satisfied the threshold reasonable likelihood standard for institution, then institution will be denied. See id. at 1378–1379.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States . . . shall have the same effect, as to such invention, as though filed on the date of the prior application.” (emphasis added). “In essence, this means that in a chain of continuing applications, a claim in a later application receives the benefit of the filing date of an earlier application so long as the disclosure in the earlier application meets the requirements of 35 U.S.C. § 112, ¶ 1, including the written description requirement, with respect to that claim.” Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326 (Fed. Cir. 2008). And to determine whether a parent application meets the written description requirement, “the disclosure must be considered as a whole, as the person of ordinary skill in the art would read it, to determine if it reasonably conveys possession” of the claimed invention. Allergan USA, Inc. v. MSN Labs. Private Ltd., 111 F.4th 1358, 1375 (Fed. Cir. 2024) (citation and emphasis omitted); see also Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345–46 (Fed. Cir. 2000) (the purpose of the written description requirement “is to ensure that the scope of the right to exclude . . . does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification”).” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) if presented, objective evidence of non-obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). As previously noted, the first factor regarding the scope of available prior art is the dispositive issue of this Petition, which is largely defined by the effective filing date of the challenged claims.” slip op. at 8
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Because we determine that no inter partes review will be instituted on IPR2024-01350, we find it unnecessary to exercise exclusive jurisdiction over the ’849 patent. See Paper 9, 9. Therefore, Petitioner’s motion for the Board to exercise exclusive jurisdiction over the ’849 patent is denied. Petitioner further requests that all briefing in this proceeding be provided to the Certificates of Correction and Petitions branches for their consideration, citing Patent Owner’s “duties of candor and good faith.” Id. at 2, 10. However, in view of our determination not to institute review in this proceeding, we defer to the Certificates of Correction and Petitions branches to carry out their duly authorized duties. Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345, 1349 (Fed. Cir. 2019).” slip op. at 23
§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,719,849 - Samsung Electronics Co., Ltd v. Anonymous Media Research Holdings, LLCInstitution deniedPTAB · Mar 21, 2025 · IPR2024-01350 · APJ Michael T Cygan · IPR · Institution
Institution was denied for claims 1–15 because Petitioner did not show the asserted references were prior art; the claims were supported by the ’330 application’s 2005 filing date.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To prevail on its obviousness challenges, Petitioner must show that the ’848 patent is not entitled to the benefit of the ’330 application. This issue is dispositive because none of the references relied on by Petitioner qualify as prior art if the ’848 patent is entitled to the benefit of the May 26, 2005, filing date of the ’330 application. Pet. 6, 13. We start by explaining why Petitioner bears the burden of persuasion.” slip op. at 9
- BurdenDecided for patent owner
“1. The Burden of Persuasion “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). That burden, termed the burden of persuasion, “is the ultimate burden assigned to a party who must prove something to a specified degree of certainty.” Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (quoting Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)). That burden never shifts to the patentee. Id. at 1379. In order for an inter partes review to be instituted, “the information presented in the petition filed under section 311 and any response filed under section 313 [must] show[] that there is a reasonable likelihood that the petitioner would prevail.” 35 U.S.C. § 314(a).” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“d) Analysis Petitioner has not shown a reasonable likelihood that it would prevail in showing that its asserted references, including Steuer 750 which is a publication of the ’330 application, are prior art to the ’848 patent. Petitioner has not shown that the ’330 application fails to provide written description support for claim 1 of the ’848 patent, which recites “video data” samples and representations.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“a chain of priority from the ’330 application to the ’848 patent contain at least the same disclosure as the ’330 application, Petitioner has not shown that the ’848 patent should not be given the benefit of the effective filing date of the ’330 application. The May 26, 2005 filing date of the ’330 application predates the December 1, 2005 publication date of Steuer 750, the August 13, 2013 issue date of Steuer 768, and the December 2, 2010 and May 27, 2010 publication and filing dates of Neumeier.10 Pet. 7; Ex. 1005, code (43); Ex. 1006, code (45); Ex. 1007, codes (43), (60).11 Therefore, Petitioner has not shown by a preponderance of the evidence that any of the asserted claims in the ’848 patent would have been obvious over the asserted combinations of Steuer 750, Steuer 768, and Neumeier.” slip op. at 22
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,719,848 - ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution deniedPTAB · Feb 10, 2025 · IPR2024-01054 · APJ Michael T Cygan · IPR · Institution
Institution denied for claims 1–15 because Petitioner did not show Seet was prior art, defeating the reasonable-likelihood showing for every asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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.” For the reasons given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any one of claims 1–15 of the ’768 patent. Accordingly, we do not institute an inter partes review of the ’768 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Petitioner fails to show that the full scope of claim 9 of Seet is described in the Seet provisional. Seet expressly defines the claim term “media,” stating that, as it is “used herein,” “media” includes audio, video, software, and pictures. Ex. 1006 ¶ 50 (“Media content may include one . . . of audio . . ., video . . ., software . . ., and pictures”). Such a statement provides a clear definition of the term “media” that includes video, software, and pictures, in addition to audio. In addition to the express definition, Seet elsewhere indicates that its media includes video and other non-audio signals and databases. See, e.g., Ex. 1006 ¶¶ 26 (“if the media stream 102 is a video broadcast, each media item may comprise a television show or segment, an advertisement, or any other type of video”), 42–46 (creating databases of “videos,” “faces,” and “files”), 49 (“any signal that contains repeating content over any broadcast medium can benefit from the procedure described herein.”). Accordingly, the use of media in claim 9 for its claimed “media content database” and “media stream[s]” also includes both audio and non-audio media.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“We agree with Patent Owner that Petitioner has not met its burden to show that Seet is prior art. Seet is not entitled to the benefit of its provisional filing date unless a claim in Seet has written description support in the Seet provisional. See Dynamic Drinkware, 800 F.3d at 1381–82. As the “‘hallmark’ of written description, . . . the disclosure must be considered as a whole, as the person of ordinary skill in the art would read it to determine if it reasonably conveys possession” of the claimed invention. Allergan USA, Inc. v. MSN Laboratories Private Ltd., 111 F.4th 1358, 1375 (Fed. Cir. 2024) (citation and emphasis omitted).” slip op. at 12
- Skill levelSkill level board ownDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art [“POSITA”] at the critical time would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree with at least two years of relevant industry experience, including in digital media content delivery.” Pet. 2 (citing Ex. 1003 ¶ 32). Patent Owner argues that the level of ordinary skill should include persons lacking a formal degree but possessing considerable industry experience designing and implementing automated content recognition systems, and that such systems are the relevant industry experience. Prelim. Resp. 6–7. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, modified by the more inclusive standards of Patent Owner, as it appears to be consistent with the specification of the ’768 patent and the prior art of record.” slip op. at 7
Claim construction§ 102 anticipation§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,510,768 - Motorola Mobility LLC v. Largan Precision Co., Ltd.All claims unpatentablePTAB · Jan 3, 2024 · IPR2022-01156 · APJ John D Hamann · IPR · Final written decision
Claims 1–4, 6–16, 18–24, 28, and 29 are unpatentable as anticipated by Chen-069, which is prior art because the 2012 application lacks written-description support for their full scope.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art at the time of the invention of the ’948 patent would have had “(i) a Bachelor’s degree in Physics, Optical Sciences, or equivalent education or training, as well as (ii) approximately three years of experience in designing multi-lens optical systems.” Id. at 12 (quoting Pet. 13–14 (citing Ex. 1003 ¶ 28)). We also found that “[l]ack of work experience could have been offset by additional education, and vice versa,” and that one of ordinary skill in the art “would have understood the fundamentals of optical aberration theory, and understood and used standard techniques for making lenses cheaper and more effective, especially for lens systems used in mobile devices.” Id. (quoting Pet. 14; Ex. 1003 ¶¶ 28, 30). We also agreed with Petitioner and found that one of ordinary skill in the art “would have known how to use lens design software such as Code V, Oslo, and ZEMAX, and would have taken a lens design course or had equivalent training.” Id. (quoting Pet. 14; Ex. 1003 ¶ 29). We also agreed with Petitioner and found that one of ordinary skill in the art “would have regularly used such software to create new lens designs, often using pre-existing lens designs as a starting point and then performing routine optimizations to reach a desired design.” Id. at 12–13 (quoting Pet. 14; Ex. 1003 ¶ 29). Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’948 patent or identify any shortcoming in Petitioner’s formulation. See PO Resp. 16–17. Because Petitioner’s definition of the level of skill in the art is consistent with the ’948 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Patent Owner argues that construing the challenged “claims to include first and second lens elements having the same refractive power . . . is improper.” PO Resp. 21. According to Patent Owner, one of ordinary skill in the art “would construe the [’]948 [p]atent claims to include first and second lens elements in the form of a ‘doublet,’ which requires the respective lens elements to have opposite refractive power, and thus includes only configurations” of “positive-negative” and “negative-positive” for the first and second lens elements, respectively. Id. at 20–21. In other words, “[t]he proper construction of the ’948 [p]atent claims is that the first and second lens elements may have positive-negative or negative-po[sitive] refractive powers, but would not include first and second lens elements having the same refractive polarity,” according to Patent Owner. Id. at 26. Thus, the parties agree that the challenged claims should be construed to encompass at least a lens system having a first lens element with a negative refractive power and a second lens element with a positive refractive power. See, e.g., Pet. 33; PO Resp. 21. We conclude that such a lens system is consistent with the plain language of the challenged claims. See, e.g., Ex. 1001, 12:8–26, 13:14–38, 14:16–46 (reciting first and second lens elements without reciting a specific refractive power polarity for the independent claims). And we determine that no claim terms require further construction in light of our findings below. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“In sum, we determine that the 2012 application does not provide written description support for an imaging lens system with a negative refractive power first lens and a positive refractive power second lens. And the agreed scope of the challenged claims includes such a configuration, and thus, the written description of the 2012 application does not support the full breadth of the challenged claims. We therefore determine that the challenged claims of the ʼ948 patent do not benefit from the priority date of the 2012 application. Therefore, we determine that Chen-069 is prior art to the challenged claims of the ʼ948 patent.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“After reviewing Petitioner’s arguments and evidence, which are not addressed by Patent Owner (see generally PO Resp.), we determine that Petitioner demonstrates by a preponderance of the evidence that Chen-069 anticipates claim 1. D. Remaining Challenged Claims Petitioner argues that Chen-069 discloses the limitations recited in claims 2–4, 6–16, 18–24, 28, and 29. Pet. 48–65. Patent Owner does not address Petitioner’s arguments directed to these claims. See generally PO Resp. 32–34. Based on the evidence and arguments of record, we find that Petitioner demonstrates by a preponderance of the evidence that Chen-069 anticipates claims 2–4, 6–16, 18–24, 28, and 29.” slip op. at 24
Patent outcomesUS 9,784,948 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites Phillips · GrahamPatents in suitUS 9,784,948 - PTAB · Apr 10, 2023 · IPR2022-01406 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–20 under all petitioned grounds, finding a reasonable likelihood that Google would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 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.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“declarant Dr. Madisetti, that McCarthy does not provide written description support for the ’005 claims. McCarthy makes no mention of virtual machines and there is nothing in McCarthy that would suggest to one of ordinary skill in the art that the applicants had in mind the use of virtual machines as an embodiment of their invention. Our determination is informed by our interpretation, discussed in Section III.C above, that “virtual machine” encompasses software that mimics or emulates at least the basic functionality of a computer processor, but that merely virtualizing a resource such as memory or I/O devices does not create a virtual machine. Patent Owner’s attorney arguments are unpersuasive as citing irrelevant examples of virtual machines that interact with physical resources such as a host computer, memory or I/O devices, but which nevertheless mimic or emulate at least the basic functionality of a computer processor, unlike the partitions of McCarthy, which physically contain computer processors. McCarthy narrowly describes physical partitions, which do not mimic or emulate a computer processor and are not virtual machines. We understand that the statement in McCarthy that the “present invention” may be “implemented in software” (at paragraph 57 of McCarthy) merely refers to the fact that such components as the PLM, WLM, and performance monitor are software modules running on physical processors. We also agree with Petitioner that the reference to virtual partitions in McCarthy refers to the possibility that a partition hardware can be located in more than one computer, and has nothing to do with the use of virtual machines. Reply 2. Nor are we persuaded that the possibility of more than one partition residing in a single computer means that the partitions must be virtual, given that multiple processors can be in a single computer and a single processor can be partitioned by physically allocating its resources to multiple processes. Ex. 1013, Figs. 1A, 1B, ¶¶ 4, 8. As Petitioner argues, the ’005 patent explicitly distinguishes virtual machines from partitions as two separate species of the computer domain genus: Although some representative embodiments have been described in terms of allocating physical resources between partitions, representative embodiments may allocate resources between any suitable computing domain. Another suitable computing domain is a virtual machine. Reply 2 (citing Ex. 1001, 13:37–41). Unlike the ’005 patent, McCarthy confines its disclosure to partitions, and makes no mention of a computer domains genus or a virtual machines species. Accordingly, we determine, on the current record and for purposes of this decision, that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner will prevail in establishing that McCarthy is prior art to the ’005 patent claims.6” slip op. at 21
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“declarant Dr. Madisetti, that McCarthy does not provide written description support for the ’005 claims. McCarthy makes no mention of virtual machines and there is nothing in McCarthy that would suggest to one of ordinary skill in the art that the applicants had in mind the use of virtual machines as an embodiment of their invention. Our determination is informed by our interpretation, discussed in Section III.C above, that “virtual machine” encompasses software that mimics or emulates at least the basic functionality of a computer processor, but that merely virtualizing a resource such as memory or I/O devices does not create a virtual machine. Patent Owner’s attorney arguments are unpersuasive as citing irrelevant examples of virtual machines that interact with physical resources such as a host computer, memory or I/O devices, but which nevertheless mimic or emulate at least the basic functionality of a computer processor, unlike the partitions of McCarthy, which physically contain computer processors. McCarthy narrowly describes physical partitions, which do not mimic or emulate a computer processor and are not virtual machines. We understand that the statement in McCarthy that the “present invention” may be “implemented in software” (at paragraph 57 of McCarthy) merely refers to the fact that such components as the PLM, WLM, and performance monitor are software modules running on physical processors. We also agree with Petitioner that the reference to virtual partitions in McCarthy refers to the possibility that a partition hardware can be located in more than one computer, and has nothing to do with the use of virtual machines. Reply 2. Nor are we persuaded that the possibility of more than one partition residing in a single computer means that the partitions must be virtual, given that multiple processors can be in a single computer and a single processor can be partitioned by physically allocating its resources to multiple processes. Ex. 1013, Figs. 1A, 1B, ¶¶ 4, 8.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“onto Modern System Architectures,” is a paper presented at the “UniForum 1992 Conference Proceedings” in January, 1992. Ex. 1014, Ex. A. Petitioner presents evidence and argument directed to the public availability of Gien as pre-AIA 35 U.S.C. § 102(b) prior art to the ’005 patent. Pet. 24– 25 (citing Ex. 1014, Statutory Declaration of Anthony William Corsini & Ex. A). Patent Owner argues that the Corsini declaration, and Gien, are inadmissible “for lack of a perjury and warning statement.” Prelim. Rep. 13 (citing 18 U.S.C. § 1001; 28 U.S.C. § 1746; 37 C.F.R. §§ 1.68, 42.2). However, the declaration is made in London pursuant to the United Kingdom Statutory Declarations Act 1835. In addition, the Declaration of James L. Mullins supports a finding of public accessibly of Gien. Ex. 1029. At this stage, we accord Gien prior art status.9 9 Although we do not address at this stage whether additional evidence on this issue would be called for, we note that under similar circumstances supplemental declarations have been allowed. Hulu v. Sound View Innovations, IPR2018-01039, Paper 29 (Dec. 20, 2019): “[I]f the patent owner challenges a reference’s status as a printed publication, a petitioner may submit a supporting declaration with its reply to further support its argument that a reference qualifies as a printed publication. See 37 C.F.R. §§ 42.2 (affidavit), 42.23.”” slip op. at 26
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,748,005 - PTAB · Jan 26, 2023 · IPR2022-01172 · APJ Jon M Jurgovan · IPR · Institution
Instituted IPR on claims 1–4, 6, and 9 on both grounds: anticipation by Chen359 and obviousness over Tanaka and Bareau.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Turning to the first part of the framework, there is no dispute that, although Chen359 is an ancestor to the ʼ397 patent, it was not previously presented to the Office in the context of determining patentability of the claims of the ʼ397 patent. Instead, Patent Owner argues that the Examiner issued the challenged claims without finding that they lack written description support from the Specification of the ’397 patent, and therefore, implicitly, also from the 2011 application. Prelim. Resp. 16 (citing Ex. 1002, 1213–17). A review of the prosecution history of the ’397 patent, however, shows that there were no arguments raised regarding written description support or whether any of the prior applications in the chain constituted prior art to the ʼ397 patent. Nor were there any arguments otherwise calling into question the priority date of the ʼ397 patent. And there certainly were no arguments made that Chen359 was prior art to the ʼ397 patent. The Examiner, therefore, did not analyze written description support in relation to these prior applications. We therefore conclude that, as to the first ground, the same or substantially the same art or arguments were not previously presented to the Office. Because we determine that the facts do not satisfy the first part of the Advanced Bionics framework, we need not address the second part of the framework.” slip op. at 10
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Notably, Petitioner argues that “Sunny is not time-barred” from filing a Petition challenging the ʼ397 patent (Prelim. Reply 1) and Patent Owner does not dispute this contention. We thus find that for purposes of institution, we need not address whether Sunny is an unnamed real party-ininterest “because, even if it were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18 (PTAB Oct. 6, 2020) (precedential); see also Intel Corp. v. Alacritech, Inc., IPR2017-01391, Paper 8 at 3–6 (PTAB Nov. 28, 2017) (holding that the Board will not address the argument for purposes of institution that a litigation co-defendant should be a named a real party-ininterest in the absence of an allegation that the co-defendant would be time barred under section 315(b)). We find that this “approach better serves the interest of cost and efficiency.” SharkNinja, Paper 11 at 20; 37 C.F.R. § 42.1(b). Accordingly, we find that Patent Owner’s arguments concerning Sunny not being named as a real party-in-interest do not form a basis to deny institution under our circumstances.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION Petitioner has demonstrated a reasonable likelihood of prevailing in showing the unpatentability of at least one challenged claim of the ’397 patent. At this stage of the proceeding, however, we have not made a final determination with respect to the patentability of the challenged claims. VI. ORDER For the foregoing reasons, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–4, 6, and 9 of the ’397 patent is instituted with respect to all grounds of unpatentability set forth in the Petition; and FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4(b), inter partes review of the ’397 patent shall commence on the entry date of this Order, and notice is hereby given of the institution of a trial.” slip op. at 40
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In order to determine whether the 2011 application provides written description support for the claims of the ʼ397 patent, we look to see whether the specification of the 2011 application “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter [of the challenged claims] as of the filing date [of the 2011 application].” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he purpose of the written description requirement is to ‘ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification.’” Id. at 1353–54 (quoting University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 920 (Fed. Cir. 2004)). Thus, whether the specification complies with the written description requirement calls for the comparison of the scope of the claim with the scope of the description to determine whether the inventor has demonstrated possession of the claimed invention. First, we look to the claims to determine their scope. Here we agree with Petitioner that independent claim 1 of the ʼ397 patent does not limit the first lens element to having a particular refractive power. The plain language of claim 1 recites “a first lens element” without specifying the lens as having a specific refractive power or any other configuration or characteristic. Ex. 1001, 31:65. Thus, we determine that the scope of claim 1 encompasses a first lens having either a positive or negative refractive power. Next, we look at the written description of the 2011 application. The Summary of the Invention section of the 2011 application repeatedly describes the invention as having “a first lens element with positive refractive power.” Ex. 1005, 2:10–11; see 2:22–23 (“the first lens element with a positive refractive power”); 3:9–11 (“the first lens element with the positive power provides partial refractive power needed by the optical imaging system and reduces the total optical length.”). The Detailed Description of the Preferred Embodiments likewise describes a “first lens element 110 with a positive refractive power.” Id. at 7:13. Each of the eight embodiments and associated figures show the first lens as having a positive refractive power. Id. at 18:2, 21:2, 24:2, 27:2, 30:2, 33:2, 36:2, Tables 1-2, 2-2, 3-2, 4-2, 5-2, 6-2, 7-2, 8-2, Figs. 1A, 2A, 3A, 4A, 5A, 6A, 7A, 8A.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,564,397
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.