- PTAB · Feb 26, 2024 · IPR2023-01274 · APJ Arthur M Peslak · IPR · Institution
Instituted review of claims 3 and 4 on all grounds; the Board found a reasonable likelihood that claims 3 and 4 would be unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial 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 Preliminary Response, Preliminary Reply, Preliminary Sur-reply as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in showing at least one claim of the ’668 patent is unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’668 patent on all grounds stated in the Petition. See 37 C.F.R. § 42 (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1359–60 (Fed. Cir. 2018) (interpreting the relevant statutory provisions, in light of SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018), to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s argument that Industrial Design does not have a set definition is supported by Dr. Ben-Tzvi’s testimony. Ex. 2001 ¶ 22. Nonetheless, we give little weight to his testimony on this point because it 9 Patent Owner is reminded that arguments may not be incorporated by reference from one document into another document. 37 C.F.R. § 42.6(a)(3). does not disclose the underlying facts or data on which the opinion is based. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Based on the present record, we do not exclude Industrial Design from the definition of the level of ordinary skill in the art, although the parties are free to address this issue further during trial. For the purposes of this Decision, we apply Petitioner’s level of skill in the art because it appears consistent with the problems addressed in the ’668 patent and the prior art. Our Decision would not be affected if we were to apply Patent Owner’s definition.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Regardless of the precise contours of industrial design, Mr. Kemnitzer testifies that he has “substantial direct experience in designing products that utilize the manufacturing processes, components, and materials of the designs at issue in this matter” and “in designing fully adjustable products for the commercial furniture, computer, and healthcare industries.” Ex. 1004 ¶ 5. Thus, on the present record and at this stage of the proceeding, we decline to minimize the weight given to his testimony for this reason. The parties, however, are free to address this issue further during trial.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that it is not necessary to construe “work surface” expressly at this stage of the proceeding because the construction of the term does not resolve the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,594,668 - Apple Inc. v. RJ Technology, LLCInstitutedPTAB · Feb 23, 2024 · IPR2023-01350 · APJ Jon B Tornquist · IPR · Institution
The Board instituted inter partes review of claims 5–14 on all four asserted obviousness grounds, finding a reasonable likelihood that Apple would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art, as of the earliest possible priority date for the ’641 patent, “would have held a Bachelor’s degree in chemistry or chemical engineering, with at least 4 years of experience in cell design, electrochemical techniques, and battery materials development.” Pet. 4. Petitioner further contends that a “Master’s Degree can substitute[] for some of the relevant experience,” and “[e]quivalent training with battery specific experience can accommodate other degreed fields.” Id. Patent Owner does not dispute Petitioner’s definition, “except noting that other majors may provide equivalent education and experience designing, testing, and building lithium-ion batteries.” Prelim. Resp. 14. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art for purposes of this Decision. The parties may further address at trial whether “other majors” should be added to this definition, and whether such a modification would have any impact on the unpatentability analysis in this case.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party contends any terms of the ’641 patent require express construction. Pet. 4–5; Prelim. Resp. 13–14. And, for purposes of this decision, we agree that no claim terms require express construction. See 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“This argument is not persuasive. Contrary to Patent Owner’s arguments, the Federal Circuit has held that “generic” reasons to combine are not inherently suspect, and may reasonably include a desire to make a device “stronger, cheaper, cleaner, faster, lighter, smaller, more durable or more efficient.” See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797 (Fed. Cir. 2021) (quoting DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006)). Regardless, Petitioner’s asserted reasons to combine are specific (improved safety and less deterioration after repeated charging and discharging cycles), as is the proposed combination (implementing Sakamoto’s range of ratios for the positive and negative electrode materials in Yamaki’s lithium ion battery). Pet. 9–12. Identification of specific benefits that are tied to specific elements of specific prior art references is sufficient to support an obviousness ground. See Intel, 21 F.4th at 797.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,749,641 - Mara Renewables Corporation v. DSM IP Assets, B.V.Institution deniedPTAB · Feb 23, 2024 · IPR2023-01342 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was anticipated or obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in the petition . . . 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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’959 patent. Accordingly, we deny institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that, as of the earliest claimed priority date of the ’959 patent, an ordinarily skilled artisan “would have had a Master of Science degree in an academic discipline emphasizing chemistry, chemical engineering, or biochemistry, in combination with training or at least two to three years of related work experience with lipid chemistry technologies, including but not limited to lipid extraction technologies.” Pet. 6 (citing Ex. 1003 ¶¶ 63–64). Alternatively, Petitioner proposes that an ordinarily skilled artisan “could have also had a Doctorate degree in a relevant academic discipline with one to two years of related work experience in the same discipline.” Id. Petitioner argues that an ordinarily skilled artisan “would have been familiar with microbial oils” and “would have understood the benefits of polyunsaturated fats (PUFAs), microbial sources for obtaining them, and methods for culturing and extracting oils from those microbial sources.” Id. (citing Ex. 1003 ¶¶ 36–48, 64). Patent Owner does not provide a definition of the level of ordinary skill in the art, but “reserves its right to proffer what it contends to be the appropriate level of ordinary skill in the art should the Board institute review.” Prelim. Resp. 15. Patent Owner asserts, however, that a person of ordinary skill in the art would have a detailed understanding of the information provided in its Technology Background section, including “the expected impact of cellular biomass growth characteristics on the proportion of triglycerides and phospholipids produced during a microbial fermentation.” Id. For purposes of this Decision, we adopt Petitioner’s definition of the skill level of an ordinarily skilled artisan as it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). As to the background knowledge possessed by the ordinarily skilled artisan, we agree that such an artisan would have been aware of methods for culturing and extracting oils from microbial sources, including the impact of growth characteristics on the proportions of triglycerides and phospholipids produced during microbial fermentation. Pet. 6; Prelim. Resp. 15.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that all claim terms of the ’959 patent “should be given their plain and ordinary meaning.” Pet. 3. Patent Owner does not contend that any claim terms require construction. Prelim. Resp. 14–15. For purposes of this Decision, we determine that no claim terms require express construction. See 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“3. Analysis In order to anticipate a claim, a prior art reference “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Radianingtyas discloses microbial oils with various levels of DHA and arachidonic acid. There is no disclosure of an individual microbial oil, however, that contains at least 45% DHA and 1.5% or less arachidonic acid by weight as required by claim 1. With respect to the level of DHA, although Radianingtyas might be interpreted to disclose that some microorganisms can produce up to 60% DHA,8 Radianingtyas discloses that the DHA content of ONC-T18 is “typical[ly]” 35% of the total intracellular fatty acids, and in each experiment disclosed in Radianingtyas DHA was produced by ONC-T18 at 8 Radianingtyas discloses that “the oil producing microbe can produce a lipid composition comprising from about 25% to about 40% of an omega-3 fatty acid, such as n-3 DHA.” Ex. 1007, 26:31–33. It then gives examples that include 15%, 20%, 45%, 50%, 55%, and 60%, which are outside of the disclosed range. Id. at 26:33–34. Dr. Curtis contends the disclosure as a whole should be read as “from about 15% to about 60% of an omega-3 fatty acid, such as n-3 DHA.” Ex. 1003, 39 n.1. Dr. Curtis identifies no microbe in Radianingtyas, however, that is shown to produce more than 40% DHA, and Radianingtyas expressly notes that the typical DHA content produced by ONC-T18 is 35%. Thus, we question Dr. Curtis’ conclusions regarding the DHA content disclosure of Radianingtyas. levels less than “at least 45%.”9 Ex. 1007, 32:21–25 (noting that the “typical composition of fatty acids” produced by ONC-T18 includes 25% DHA), 34:4–37:14 (noting that the control microorganism produced 13.54%, 19.98%, 18.77%, 18.77%, 21.48%, 28.48%, and 14.13% DHA) (Figure 12), 91 (Table 5) (noting that total DHA produced by ONC-T18 was from 24- 34.2%), 99:22–24 (“Of particular interest is ONC-T18 which produces up to 90% of its C20 to C22 content as DHA which is approximately 35% of the total intracellular fatty acids.”). Thus, we are not persuaded that Radianingtyas discloses microbial oils produced by ONC-T18 that have a DHA content of “at least 45%.” As noted by Petitioner, Radianingtyas provides a definition of “purify” and “purifying,” and notes that when these terms are used, it means that a composition could be, for example, 90% pure. Pet. 11; Ex. 1007, 7:26–8:2. As an example of how the term “purified” may be used, Radianingtyas states “[f]or example, if a disclosed eukaryotic microorganism, for example, produces 35% DHA, this could be further ‘purified’ such that the final lipid composition was greater than 90% DHA.” Id. at 8:2–4. We are directed to no actual microbial oil in Radianingtyas, however, that was purified to have increased levels of DHA. Rather, Petitioner only proffers what Radianingtyas might say if such an oil existed or had been purified to increase levels of DHA.10” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,757,959 - Netflix, Inc. v. Divx, LLCNo claims unpatentablePTAB · Feb 22, 2024 · IPR2020-00558 · APJ Iftikhar Ahmed · IPR · Remand
The majority determined claims 1–24 were not shown unpatentable over Chen, Lindahl, and Hurst; the dissent would have found them obvious.
RulingsRemand decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We determine Patent Owner’s reading of the claim limitation is the better one. The limitation begins with the verb “locating,” and it therefore makes sense that the clause would recite what is located (i.e., encryption information) and where it is located (i.e., within the requested portions of the selected stream of protected video). In other words, it is reasonable that the second and third clauses of the limitation both modify the first clause (for example, as could perhaps be expressed through the use of commas as “locating encryption information, that identifies encrypted portions of frames of video, within the requested portions of the selected stream of protected video”).10 On the other hand, Petitioner’s reading of the limitation, 10 In general, we recognize that the use of commas to set off phrases in claim drafting is not consistent. We included commas above to illustrate Patent Owner’s understanding of the claim limitation. allowing only the second clause to modify the first, while not unreasonable, makes less sense. That is, the encrypted information identifies the encrypted portions of frames, which in turn are within the requested portions of the selected stream of protected video. Reading the claim in its entirety, the encrypted portions of frames would be understood to be located within the requested portions of the stream; it does not seem necessary for the claim to expressly recite that aspect. For example, the very next limitation— limitation [m] of claim 1—refers to “each encrypted portion of the frames of video” but does not expressly recite “within the requested portions of the selected stream.” Ex. 1001, 27:58–60. Thus, when limitation [l] recites “within the requested portions of the selected stream,” it seems more likely that the clause refers to where that encrypted information is located rather than simply to indicate the obvious location of the encrypted portion of the frames of video. We therefore view Patent Owner’s reading of the claim language as the better one.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundMixed
“I am persuaded that the Petition demonstrates that one of ordinary skill in the art would have had a motivation to combine Chen, Lindahl, and Hurst, as asserted by Petitioner. As the Federal Circuit found, the Petition pointed to and relied upon the portions in Chen describing pre-Chen art, without scalability or FEC features that were part of what Chen describes as aspects of its own inventive system. Netflix, slip op. at 9–10 (citing Pet. 17– 19, 69–70). I agree with Petitioner that “Chen-924 teaches several embodiments that adaptively stream alternative representations of a video using partially encrypted container files.” Pet. 20 (citing Ex. 1010, 14:41– 15:60). I determine that Chen-924 provides support for the rationale provided in the Petition, and that one of ordinary skill in the art would have been motivated to combine Chen and Lindahl in view of the disclosure of Chen-924. As discussed above, the Petition does not rely solely on privacy concerns and improvements to efficiency as its motivation to combine the references. See Pet. 18–19 (specifying piracy concerns, improvements to the efficiency of adaptive streaming, optimization of the balance between bitrate and bandwidth, and improvements to the end-user experience with fast startup and seek). With respect to whether one of ordinary skill in the art would have” slip op. at 52
- Strike new argumentNew argument disregardedDecided for petitioner
“I agree with Petitioner that Patent Owner’s Remand Brief, specifically pages 1–7, attempt to address aspects of claim 1 for the first time on remand. I also agree that Patent Owner’s arguments attempt to recharacterize limitations [j] and [k] to raise issues that Patent Owner did not raise previously, in contravention of our Order that issues raised needed support from “where those issues were raised in previous briefings by the parties.” Paper 56, 2. I have addressed whether scalability and FEC are integral to how Chen operates above, as well as whether the Petition relies on those aspects, supra. The questions about how Chen operates and what portions of Chen are asserted in the ground of unpatentability were previously raised, but now are being considered or reconsidered, based on the Federal Circuit’s decision. In Patent Owner’s Remand Brief, pages 1–7, the citations to argument previously raised do not support the arguments now presented by Patent Owner on remand. As such, I determine Patent Owner’s new arguments fall outside the scope of remand, and I dismiss these arguments seeking to distinguish limitations [j] and [k] from the cited prior art combination.24” slip op. at 62
- ExcludeMotion to exclude, grantedMixed
“7 Patent Owner’s Brief on Remand recognizes that there are two arguments Patent Owner raised in its Patent Owner Response that were not addressed in the Final Written Decision. See PO Remand Br. 1 (citing PO Resp. 24–37 (the construction of “locating encrypted information . . . within requested portions”), 38–58 (referring to Patent Owner’s “common keys” argument)). 8 The Final Decision also addressed Petitioner’s Motion to Exclude (Paper 42). See Final Dec. 28–37 (granting-in-part, denying-in-part, and dismissing-in-part Petitioner’s Motion). Our determinations on that Motion were part of Petitioner’s appeal to the Federal Circuit. See Paper 52. Because the Federal Circuit did not address this aspect of the Final Written Decision and the Federal Circuit’s decision does not impact our previous rulings on the Motion, we maintain those rulings here. Additionally, on remand, Petitioner requested authorization to file a motion for sanctions, which we held in abeyance until the parties’ briefing on remand was complete. See Ex. 3003, 1. Petitioner requests sanctions because of the impropriety of Patent Owner’s remand brief, including new claim construction arguments for limitations [1j] and [1k], and prejudice to Petitioner. Id. at 3, 5. Although we reserved further consideration of Petitioner’s request, we expanded both the time and pages allowed for Petitioner’s responsive brief, and also allowed Petitioner to address any related issues in its responsive brief. Id. at 1. Having considered the parties’ briefing on remand, and given that we do not reach the claim construction arguments that Petitioner objected to in its request for authorization to file a motion for sanctions, we deny Petitioner’s request.” slip op. at 5
Patent outcomesUS 10,225,588 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,225,588 - PTAB · Feb 9, 2024 · IPR2023-01235 · APJ Bart A Gerstenblith · IPR · Institution
Instituted review of claims 1–6 on all petition grounds; the Board found a reasonable likelihood of success on obviousness over Szrek and did not reach the Llach–Szrek ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“We disagree. First, we agree with Patent Owner that the fact pattern presented here is not the typical situation in which the factors from General Plastic are considered. In particular, this proceeding challenges claims of a different patent than at issue in IPR2020-00084. Second, although the parties may have gained insight as to how the Board would handle challenges based on the same references asserted in the earlier proceeding, that insight (to the extent it gives an advantage) applies to both parties. Third, the first proceeding was a post-grant review that had a specific timing requirement (see 35 U.S.C. § 321(c)), in contrast to the present proceeding in which the filing of the Petition did not have the same or similar time constraint.6 In these circumstances, we find it appropriate to give less weight to factors based on the mere passage of time such as whether Petitioner knew of the prior art at the time of filing the petition in PGR2020- 00084 (clearly Petitioner did because two of the same references are asserted here) and whether Petitioner had received Patent Owner’s preliminary response from PGR2020-00084 at the time of filing the instant Petition. Accordingly, we decline to exercise our discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Even assuming Linq3 is a real party in interest to Petitioner and assuming we may exercise our discretion to deny institution based on unclean hands (see Kavo Dental Techs, LLC v. Osseo Imaging, Inc., IPR2020-00659, Paper 10 at 19 (PTAB June 10, 2020)), Patent Owner essentially asks us to resolve multiple factual issues related to its contract dispute with Linq3 to justify denial of institution. See, e.g., Prelim. Resp. 1– 26. Many, if not all, of these issues appear to be involved in the contract dispute, which will be resolved by the Arizona state court. We are not in a good position to make determinations about these particular issues at this stage of the proceeding, on the limited record before us. Rather, we find that the state court is better suited to address the conduct of Linq3 of which Patent Owner complains. Accordingly, we do not dive headfirst into these matters that are better addressed by the state court. To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party of interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response and the parties may brief and argue the issue during trial.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 2–3 (citing Ex. 1003 ¶ 13).7 Patent Owner does not propose a level of ordinary skill in the art in its Preliminary Response. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’135 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner contends that we should follow the Board’s decision in PGR2020-00084 and construe “transaction processor” and “data package” in accordance with each term’s plain and ordinary meaning. Pet. 13; see id. at 13–19. Patent Owner does not take a position as to claim construction at this stage of the proceeding. See generally Prelim. Resp. In PGR2020-00084, the Board construed “transaction processor”8 in accordance with its plain meaning as “a processor . . . that processes transactions between two devices” and specifically “decline[d] to limit processors . . . to ‘third party’ processors . . . because the intrinsic record does not justify such a modification and it would create uncertainty.” Ex. 1008, 22. And, as Petitioner indicates, the Board determined that “data package” also is understood in accordance with its plain and ordinary meaning. Id. at 22–24; see id. at 24 n.10. At this stage of the proceeding 8 In that proceeding, the Board also construed “transaction processor system.” Ex. 1008, 13–22. and on the present record, we need not construe any claim terms expressly because none are in dispute. See Realtime Data, 912 F.3d at 1375.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,865,135 - Opticis Co., Ltd. v. Inneos LLCInstitutedPTAB · Feb 2, 2024 · IPR2023-01256 · APJ Terry J Owens · IPR · Institution
The Board instituted review of claims 1, 2, 6, 7, and 9 on all five §103 grounds in the petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 37 C.F.R. § 42.4(a) (2023). 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.” A decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a) (implemented as a result of SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018)). Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. See 35 U.S.C. § 314(a). For the reasons explained below, we institute an inter partes review of all challenged claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Ground 1 is based upon obviousness, not anticipation. Patent Owner’s argument is not well taken because it does not address what fixing Kurita’s single optical fiber (40) in place.” slip op. at 13
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedInstituted
“The purpose of requiring reasonable diligence by the first to conceive the invention but second to reduce to practice is to assure that the invention was not abandoned or unreasonably delayed by the first inventor during the period after the second inventor entered the field.” Brown v. Barbacid, 436 F.3d 1376, 1379 (Fed. Cir. 2006). “A patent owner need not prove the inventor continuously exercised reasonable diligence throughout the critical period; it must show there was reasonably continuous diligence.” Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1009 (Fed. Cir. 2016). “[T]here need not necessarily be evidence of activity on every single day if a satisfactory explanation is evidenced.” Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1369 (Fed. Cir. 2001). Thus, Patent Owner must provide an explanation that is satisfactory to indicate that the relied-upon computer modeling and prior art search update show reasonably continuous diligence from November 10, 2003 to January 15, 2004. Patent Owner has provided some evidence to show diligence from November 10, 2003 to January 15, 2004, but Patent Owner has not explained why, under the facts of this case, the evidence is sufficient to establish reasonably continuous diligence for the period before Bhandarkar’s effective filing date to the date of constructive reduction to practice. We have reviewed Petitioner’s contentions as to how Bhandarkar teaches the subject matter of the claims, and we find them sufficiently persuasive at this stage. Based upon the above-discussed evidence and that the optical combiner claimed in claims 1, 2, 6, 7, and 9 would have been obvious to one of ordinary skill in the art over Bhandarkar. slip op. at 26
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution in view of the district court litigation (Prelim. Resp. 68–69). A Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)2 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition” (Interim Procedure 9). Petitioner has submitted such a stipulation (Paper 11). Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,198,416 - Mara Renewables Corporation v. DSM IP Assets, B.V.Institution deniedPTAB · Jan 25, 2024 · IPR2023-01167 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“When asserting unpatentability under obviousness, the patent challenger must show a reasonable expectation of success, that is, “the likelihood of success in combining references to arrive at the claimed invention.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Thus, “[t]he reasonable-expectationof-success analysis must be tied to the scope of the claimed invention.” Teva Pharms. USA, Inc. v. Corcept Therapeutics, Inc., 18 F.4th 1377, 1381 (Fed. Cir. 2021); Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 966 (Fed. Cir. 2014) (holding the trial court’s failure to consider the appropriate scope of the claimed invention in evaluating the reasonable expectation of success constitutes a legal error). Relevant to our Decision here, claim 3 requires its microbial lipid to have, among others, at least 60% by weight DHA in the triglyceride fraction and an AV of 0.5 to 26.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s definition of the skill level because it is consistent with the prior art’s demonstration of the level of ordinary skill at the relevant time. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We emphasize that our finding is not on lack of reasonable expectation of success per se. Instead, we merely find neither the Petition nor the Curtis Declaration persuasively addresses “the expected differences in the oxidizability and oxidation rate—and their expected impact on anisidine values—of an oil containing 42% ARA (for which Schaap discloses limited experimental data) versus one containing 60% DHA in the triglyceride fraction (for which Schaap does not).” See id. at 27. In sum, we find Petitioner has not shown sufficiently that an ordinarily skilled artisan, based on the teachings of the asserted prior art, would have had a reasonable expectation of success for the appropriate scope of the claimed invention (that is, a microbial lipid having at least 60% DHA in the triglyceride fraction and an AV of 0.5 to 26). As a result, on this record, Petitioner has not established a reasonable likelihood that it would prevail in this challenge.” slip op. at 13
§ 103 obviousnesscites PhillipsPatents in suitUS 10,392,578 - Intel Corporation v. Besang Inc.InstitutedPTAB · Dec 13, 2023 · IPR2023-00991 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1 and 13–17 on all petition grounds, finding a reasonable likelihood of success on at least one challenge to claim 13 based on combinations involving Lee or Johnson.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“stackable add-on layer” requires something more than just any type of layer that is directly or indirectly adhered to the substrate or dielectric layer. First, the plain language of the claim does not require merely a “layer” having a plurality of vertically oriented semiconductor memory cells, but rather “a stackable add-on layer.” Ex. 1001, 12:29–32. Second, the written description of the ’702 patent strongly suggests that a “stackable add-on layer” is formed separately from the substrate and then stacked on and bonded to the substrate or a dielectric layer above the that in the invention “a plurality of vertically oriented semiconductor memory devices, or cells, may be added to a separately fabricated substrate that includes electrical devices and/or interconnect lines.” Id. at 1:47–50 (emphasis added). Likewise, the specification explains that an SOI layer refers to “a relatively thin, single crystal portion of a semiconductor wafer that can be cleaved and bonded to another previously fabricated wafer, or similar type of substrate.” Id. at 4:47–51. “In this context,” the ’702 patent explains, “the SOI layer may be thought of as an attachment layer, or stackable add-on structure which is suitable for bonding to a semiconductor substrate already containing devices and/or interconnections.” Id. at 4:53– 57. Again, this suggests that a “stackable add-on layer” is separately formed and then bonded to a previously fabricated substrate. Given the structure of the claims and the description of the invention in the written description of the ’702 patent, we preliminarily construe “stackable add-on layer” to be a layer that is formed separately from the substrate and then bonded to the substrate or a dielectric layer above the substrate. We do not understand a “stackable add-on layer” to include memory cells that are formed by sequential deposition on or above a substrate or dielectric layer without being added to a separately formed substrate. slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownOther
“Independent claims 1 and 13 do not specify how the stackable add-on layer is bonded to the dielectric layer. Nor does Petitioner assert that the plain and ordinary meaning of “bonding” refers to “wafer bonding.” Thus, to limit the claims to wafer bonding, Petitioner must identify a clear expression of intent in the ’702 patent to define “bonding” as “wafer bonding,” or a clear disavowal of claim scope demonstrating that non-wafer bonding methods are outside the reach of the claims. See Thorner v. Sony Comp. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Petitioner does not contend that the patentee acted as its own lexicographer by defining “bonding” as “wafer bonding,” a term that does not even appear in the ’702 patent. Id. at 1365. Nor are we directed to any clear disavowal indicating that methods of bonding other than “wafer bonding” are outside the scope of the claims. Id. at 1366. Thus, we decline to construe “bonded” in claims 1 8 Wafer bonding is a method in which semiconductor layers are formed on separate wafers and then bonded together to create a stacked semiconductor structure. Ex. 1003 ¶ 41. that the standards for lexicography and disavowal are “exacting”). As noted by Petitioner, the ’702 patent describes an SOI layer that is wafer bonded to a previously fabricated substrate. Ex. 1001, 4:47–53. Independent claims 1 and 13, however, do not require an SOI layer, and the disclosure of a single embodiment in which wafer bonding is used is not sufficient to import such a limitation into the claims. See Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed. Cir. 2012) (“While claim terms are understood in light of the specification, a claim construction must not import limitations from the specification into the claims.”); Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008) (“Nonetheless, this court will not countenance the importation of claim limitations from a few specification statements or figures into the claims.”). In summary, we preliminarily construe “stackable add-on layer . . . the first stackable add-on layer is/being bonded” to require a separate layer that is formed apart from the substrate and then subsequently bonded to the substrate or a dielectric layer above the substrate.9 We do not construe independent claims 1 or 13 to require any particular form or method of bonding.10” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“The evidence of record demonstrates that Petitioner and Micron jointly developed the 3D NAND technology that is generally at issue in the district court litigation, and the parties have acknowledged “their long-term joint development partnership” for this technology. Ex. 1013 (district court complaint); Ex. 2010 (“Micron and Intel Extend their Leadership in 3D NAND Flash memory.”); Ex. 2016 (discussing the end of Intel’s and Micron’s NAND partnership). There is no assertion, however, that all 3D NAND technology infringes the challenged claims of the ’702 patent, and Micron and Intel are not accused of infringing the ’702 patent based on the same products and are not co-defendants in any district court litigation. Further, Patent Owner presents no persuasive evidence that the two parties collaborated on the development of either of the accused products, as opposed to general 3D NAND technology, and Petitioner represents that the two parties filed their petitions independently and without coordination or cooperation. Prelim. Reply 1–2; Ex. 2016, 1 (noting that each company sought to independently develop 3D NAND technology in order to “forge” their own path for future NAND development and “better optimize the technology and products for their individual business needs”). relationship between Petitioner and Micron, and Petitioner is not the same petitioner as the petitioner in IPR2023-00900. Thus, General Plastic factor 1 weighs against discretionary denial.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The stipulation filed in the Texas litigation mitigates, to an extent, concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.12 Director’s Memo at 7. Similarly, Petitioner’s stipulation in the Oregon litigation (i.e., that it will not pursue an invalidity defense that the claims challenged in this IPR proceeding are invalid based on grounds that were raised or reasonably could have been raised during the IPR) also mitigates concerns of potentially conflicting decisions and duplicative efforts. Patent Owner contends Petitioner’s stipulation falls short of a Sotera stipulation by carving out any circumstance that “otherwise terminate[s] the instituted IPR.” Prelim. Sur-reply 2–3. Patent Owner interprets this carve- on the patent application publication of the Lee patent. Ex. 1007. Because the disclosures of the Lee patent and patent application publication are substantively identical, we consider the stipulation not to pursue any obviousness ground based on Lee to apply with equal force to Lee’s patent application publication. 12 The stipulation in the Texas litigation bars the defendant from pursuing “any obviousness ground that includes” Lee or Watanabe. IPR2023-00900, Exhibit 1031. Here, Petitioner’s grounds 1A–1F challenge claims 13–17 based in whole or in part on Lee, and grounds 2A–2C and 3 challenge claims 1 and 13 based on combinations of references that do not include Lee or Watanabe. Pet. 3. As such, the grounds to be resolved by the PTAB will differ somewhat from those presented in the Texas litigation. written decision, thereby rendering the stipulation an “empty promise” as the district court in the Texas litigation will undoubtedly resolve validity before a final written decision in this case. Id. at 3. We disagree. We do not understand Petitioner’s stipulation to require that a final written decision be issued before the stipulation takes effect. Rather, so long as an inter partes review is instituted, and until such time as the IPR is terminated or vacated, Petitioner will not pursue any invalidity defense before the district court that is “based on grounds that were raised or could have been raised during the IPR.” Ex. 1034. In summary, given the stipulations filed by the petitioners in the Oregon and Texas litigations, it appears that there will be minimal, if any, overlap between the issues raised in the petitions and in the parallel district court proceedings. Accordingly, Fintiv factor 4 weighs against discretionary denial.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,378,702 - PTAB · Dec 12, 2023 · IPR2023-00910 · APJ Nathan A Engels · IPR · Institution
Instituted IPR on claims 1–6 over all petitioned grounds after finding a reasonable likelihood of prevailing; denied joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 9
- Other 314aInstitution denied discretionary otherDenied
“Patent Owner argues the Petition should be denied under 35 U.S.C. § 314(a) because (1) “Petitioner’s inability to commit to non-duplicative efforts between the District Court Litigation and this proceeding weighs in favor of discretionary den[ial]” (Prelim. Resp. 59), and (2) Petitioner failed to request a conference call prior to filing its Motion for Joinder (Prelim. Resp. 59–60). Petitioner asserts that no trial date has been set in the parallel district court litigation, which Patent Owner does not dispute. Pet. 55; Prelim. Resp. 59–60. Additionally, the Patent Trial and Appeal Board Consolidated Trial Practice Guide (CTPG) states that “[a] party who files a motion for joinder should arrange a conference call . . . within five business days of filing the motion.” CTPG 76 (Nov. 2019) (emphasis added).8 In light of the termination of the earlier proceeding, Petitioner’s failure to request a conference call is harmless error. Thus, we find Patent Owner’s arguments unpersuasive and decline to exercise our discretion to deny the Petition under § 314(a).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Pet.”) requesting inter partes review of claims 1–6 of U.S. Patent No. 9,445,041 B2 (Ex. 1001, “the ’041 patent”). Petitioner also filed a Motion for Joinder requesting joinder with IPR2022-01548 (Paper 2), but IPR2022- 01548 has since terminated due to settlement (IPR2022-01548, Paper 18). Therefore, we deny the Motion as moot. Patent Owner Advanced Coding Technologies, LLC filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention would have had “at least a [b]achelor’s degree in computer science, electrical engineering, computer engineering, or a related field, with 2–3 years of experience in digital video processing, or a related field, or equivalent research or professional experience.” Pet. 7 (citing Ex. 1003 ¶ 26). Patent Owner states that it applies Petitioner’s proposed level of ordinary skill for the purposes of its Preliminary Response. Prelim. Resp. 29. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill, with the exclusion of “at least” in defining the education 6 US 2011/0097059 A1, published Apr. 28, 2011. Ex. 1008. Petitioner refers to “Sekiguchi” as “Seikiguchi.” See, e.g., Pet. 3. level, which would render the definition open-ended and inclusive of persons of expert-level skill.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,445,041 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 7, 2023 · IPR2022-00993 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1, 6, 7, 10–14, 19, 20, 23–30, and 32 are unpatentable under § 103 based on Sullivan995, Sullivan460, and Matthews.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“not implicitly define the phrase “analyzing the breathing patterns,” as proposed, because Patent Owner has failed to show any sufficient evidence that the ’994 patent clearly expresses an intent to redefine the phrase or define the phrase in terms other than its plain and ordinary meaning. In other words, implied lexicography does not apply here. Accordingly, after reviewing Patent Owner’s contentions in light of all the evidence of record, we do not adopt Patent Owner’s proposed construction; instead, we apply the plain and ordinary meaning of “analyzing the breathing patterns” in our consideration of the issues before us.18” slip op. at 31
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“D. Other Claim Terms The Parties do not dispute the construction of any other claim terms, and we find that no other terms require express construction to resolve the controversy between the Parties. Accordingly, we do not construe any other claim terms expressly. See Realtime Data, 912 F.3d at 1375 (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., 200 F.3d at 803)).” slip op. at 31
- Skill levelOther
“G. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Kirkness’s testimony, proposes that a” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“19, 20, 23–26, 28–30, and 32 and supported on the complete record before us, and, therefore, we adopt them as our own findings. See Pet. 66– 77. Accordingly, for the reasons explained by Petitioner, we find that the combination of Sullivan995, Sullivan460, and Matthews satisfies the elements of claims 6, 7, 10–14, 19, 20, 23–26, 28–30, and 32.” slip op. at 49
Patent outcomesUS 6,988,994 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,988,994
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.