- Novartis Pharmaceuticals Corporation v. Regents Of The University Of Michigan And University Of South FloridaAdverse judgmentPTAB · Aug 28, 2024 · IPR2023-01347 · APJ Sheridan K Snedden · IPR · Adverse judgment
The Board granted Patent Owner’s unopposed request for adverse judgment and cancelled claim 16 after Patent Owner disclaimed all interest in it.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION Under 37 C.F.R. § 42.73(b), “[a] party may request judgment against itself at any time during a proceeding.” While the motion for adverse judgment was initiated by Petitioner, Patent Owner does not oppose the motion and the record shows that Patent Owner has disclaimed all interest in claim 161 such that Patent Owner has no remaining claim in the trial, actions that are construed to be a request for adverse judgment. Id.” slip op. at 3
NonePatents in suitUS 10,633,344 - Duration Media LLC v. Rich Media Club LLCNo claims unpatentablePTAB · Aug 19, 2024 · IPR2023-00953 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1–10 were not proven unpatentable under either §103 ground because the evidence did not show the claimed viewability determination.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find Patent Owner’s argument persuasive. Indeed, it is unclear how Petitioner’s proposal accounts for the types of problems encountered in the art or prior art solutions to those problems. See Daiichi Sankyo, 501 F.3d at 1256 (identifying these factors, among others, as “a guide to determining the level of ordinary skill in the art”). Nor does Petitioner, in its Reply, address, let alone rebut, Patent Owner’s arguments that a person of ordinary skill in the art would have had some experience and/or knowledge in internet advertising. See generally Pet. Reply. Patent Owner proposes that a “person of ordinary skill in the art would have a bachelor’s degree in computer science or a similar major involving computer programming (or at least four years of practical computer programming experience) and at least two years of experience (in or out of college) in the field of internet advertising.” PO Resp. 12 (citing Ex. 2045 ¶54). We agree that a person of ordinary skill in the art would have some experience in internet advertising, although we fail to see why one year would not be enough to familiarize sufficiently a computer scientist and/or programmer with the types of problems encountered in the art or prior art solutions to those problems. Based on the competing proposals, arguments, and evidence before us, we adopt and apply the following level of skill in assessing Petitioner’s challenges to the patentability of the claims of the ’329 patent: a person that would have had a bachelor’s degree in computer science, computer engineering, or electrical (or similar) engineering with about three years of experience being in the field of internet advertising.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Petitioner’s resurrected argument is based on a fundamental misunderstanding of § 311(b). Section 311(b) provides: “A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed cancel the claims of the ’329 patent on the basis of Badros, Harkins, and Krassner. Pet. 11. Petitioner did not base its request, in whole or in part, on the Krassner publication. Id. Krassner clearly is a patent. It issued on August 13, 2019, far too late to be § 102(b) prior art. Even if we assume Krassner is also a “printed publication” withing the meaning of § 311(b), the same date would apply: August 13, 2019. Petitioner has not presented any evidence that the document that is Krassner was published prior to when it issued on August 13, 2019. That another document (the Krassner publication), which published much earlier, may contain the same or similar disclosure is not relevant to when Krassner was patented or published. In sum, Krassner is not prior art under 35 U.S.C. § 102(b). b) Whether Krassner is Prior Art Under 35 U.S.C. § 102(e) Although Krassner is not prior under 35 U.S.C.§ 102(b), we” slip op. at 13
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Petitioner responds that, contrary to Patent Owner’s argument, “Harkins teaches that its invention can be used in web pages.” Pet. Reply 18 (citing Ex. 1004 ¶30). Although Petitioner’s citation is off by one paragraph, Petitioner’s response about what Harkins teaches is correct. See Ex. 1004 ¶29 (“The present invention may be implemented for provision of virtually any type of advertising (e.g., print, radio, television, Internet, billboard, etc.) via any type of advertising medium (e.g., newspaper, magazine, radio broadcast, Web pages, billboards, etc.) without departing from the scope of the present invention.”). We find that Harkins is from the same field based on its express statement that it is applicable to “virtually any type of advertising” and “any type of advertising medium,” including “Web pages.” Ex. 1004 ¶29. Further, even if this were insufficient to place Harkins in the same field as the ’329 patent, we find that Harkins is reasonably pertinent to the particular problems with which the ’329 patent inventors were involved. In sum, we find that Harkins is analogous art to the ’329 patent.” slip op. at 19
- Strike new argumentNew argument disregardedGranted
“Paper 60 (“PO Mot. To Exclude”), 9–10.6 Patent Owner is correct in this regard and, thus, we grant Patent Owner’s Motion to Exclude with respect to the testimony in the second Smedley Declaration and the Madansky Declaration opining that Badros teaches the determination limitation. Paper 60, 9–12. Petitioner, in its Opposition to the Motion to Exclude, argues that Patent Owner’s arguments about the “viewability test” were “surprising.” Paper 62, 8. We are not persuaded by Petitioner’s argument. The “viewability test” is a claim limitation. Petitioner should have anticipated that Patent Owner would argue that limitation. See In re Gardner, 449 F. App’x 914, 916 (Fed. Cir. 2011) (“This court has held that when evaluating claims for obviousness under 35 U.S.C. § 103, all the limitations of the claims must be considered and given weight.” (citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983)); Univ. of Strathclyde v. 6 Patent Owner’s Motion to Exclude seeks to exclude, in part or in whole, Exhibits 1020–1022, 1025–1030, and 1034–1040, which were submitted with Petitioner’s Reply, of which Exhibits 1026 and 1027 are the declaration by Dr. Madansky and the second declaration by Dr. Smedley, respectively. Mot. To Exclude. The Motion to Exclude also seeks to exclude “Exhibits” 1017 and 1018, which are not filed or of record in this case but which are referenced in the Reply. Id. For example, Exhibit 1017 is the Krassner publication, which Petitioner unsuccessfully moved to add to the record as supplemental information. See Paper 21, 3 n.1 (expunging the Krassner publication and stating that it “need not -- and indeed may not -- be re-filed under a new exhibit number”). Apart from the portions of Dr. Smedley’s second declaration and Dr. Madansky’s declaration opining that Badros teaches the “determination” limitation, we dismiss the Motion to Exclude as moot. obviousness determination generally requires a finding that “all claimed limitations are disclosed in the prior art’.” (citing PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014)). Petitioner argues that “[v]iewability tests were well known for well over a decade prior to the ’329 patent’s priority date.” Reply 9. If that were the case, then Petitioner should have made its argument in the Petition. Section 312(a) of Title 35 is titled “Requirements of Petition,” and it specifies that a petition must identify, among other things, “the evidence that supports the grounds for the challenge to each claim, including . . . (B) affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions.” 35 U.S.C. § 312(a)(3); see also 37 C.F.R. § 42.104(b)(4)–(5) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon; and . . . the supporting evidence relied upon to support the challenge.”). Thus, “Petitioner 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.” Board’s Consolidated Trial Practice Guide, 73 (Nov. 21, 2019).7 Dr. Smedley’s testimony in his second declaration, that “Badros discloses Patent Owner’s ‘viewability test’” (Ex. 1027 ¶11), is clearly evidence to make out a prima facie case of unpatentability. The same is true of Dr. Madansky’s testimony that she agrees with Dr. Smedley in this regard. Ex. 1026 ¶4.” slip op. at 25
Patent outcomesUS 11,443,329 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,443,329 - 3shape A/S / 3shape Inc. v. Dental Imaging Technologies CorporationInstitution deniedPTAB · Aug 19, 2024 · IPR2024-00549 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented, we conclude that there is not a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–20 of the ’798 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby do not institute an inter partes review as to these claims of the ’798 patent.” slip op. at 2
- Skill levelSkill level board ownOther
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’798 patent would have at least (1) a bachelor’s degree in electrical engineering, computer engineering, or computer science (or equivalent course work) and two to three years of work experience in 3D imaging and modeling of physical structures, or (2) a master’s degree in electrical engineering, computer engineering, or computer science (or equivalent course work) with a focus in 3D imaging and modeling of physical structures. 4 U.S. Patent Application Publication No. 2012/0062701 A1, published Mar. 15, 2012 (Ex. 1010) (“Dillon”). 5 A. Johnson, “Spin-images: A Representation for 3-D Surface Matching,” Ph.D. Dissertation, The Robotics Institute, Carnegie Mellon University, August 1997 (Ex. 1011) (“Johnson”). Pet. 7–8 (emphasis added). Patent Owner counters that a POSITA at the time of the invention of the ’798 patent would have had a bachelor’s degree in Computer Engineering, Computer Science, Electrical Engineering, Physics, or an equivalent field, as well as at least two years of work experience, or alternatively, at least five years of comparable industry experience in the field of imaging and/or image scanning including 3D imaging systems and 3D modeling techniques. Additional education reduces the threshold for years of experience in the field, and vice versa. Prelim. Resp. 5 For purposes of this Decision, the level of ordinary skill in the art is” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner notes there are proposed constructions of terms in the related litigation, including constructions for “‘contiguous scan’” and “‘occlusal surface.’” Pet. 8–9. Here, Petitioner further contends that the term “‘occlusal surface’” means “‘the biting surface of a patient’s teeth’” and that “‘contiguous scan’” means “‘a scan of an/the occlusal surface made in a single, uninterrupted motion of the scanning wand.’” Id. at 8. Nonetheless, Petitioner contends also that “resolution of this Petition does not depend on which constructions are used because these features of the claims are disclosed by the prior art regardless of the construction.” Id. at 9. Patent Owner disagrees that no claim terms need construction. Prelim. Resp. 6. According to Patent Owner, “3Shape has not adequately addressed how numerous elements of the challenged claims are disclosed or suggested by the prior art under 3Shape’s proposed construction of the phrase ‘contiguous scan of an occlusal surface.’” Id. Based on our review of the parties’ arguments and evidence, no construction is necessary to resolve the parties’ disputes. 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 12
- BurdenNot shown unpatentable
“As described, we understand Babayoff to teach that data entities IS′1, IS′2, . . . IS′n are stitched together after identifying and removing soft tissue data from the unstitched data sub-entities. Our understanding of Babayoff is consistent with Figure 15, where Babayoff teaches that the entities IS1, IS2, . . . ISn) are provided in step 1210 “to be stitched,” but are not stitched until step 1240. Ex. 1008, Fig. 15. Babayoff further discloses that the images are stitched together after soft tissue identification and/or removal: [i]n the next step 1230 of the method, the modified entities (IS'1, IS'2, ... IS'n) are then manipulated in a similar manner in which the original entities (I1, I2, ... In.) are manipulated in the prior art, mutatis mutandis, to register and then stitch the various modified entities (IS'1, IS'2, ... IS'n) together to provide a composite entity I’ that comprises the data points corresponding at least to the hard tissues. Id. at 24:41–47 (emphases added). As such, in Babayoff, the soft tissue is removed prior to stitching and generating the composite entity I’. Babayoff further teaches that “[b]y eliminating the data associated with the soft tissues, and proceeding with stitching only the hard tissues using the color data, the quality of the stitching procedure is significantly better than when using the full intra-oral data for the stitching procedure.” Id. at 5:12–16 (emphases added). Given at least this disclosure, we agree with Patent Owner that Petitioner has not sufficiently explained how Zhang combined with Babayoff discloses claim limitations [1.3], [1.9], [1.10], and [1.11]. More specifically, Petitioner relies upon Babayoff to disclose the removal of soft tissue data from the generated contiguous scan, but does not explain how Babayoff teaches this removal from the contiguous scan that has been generated by stitching images together prior to soft tissue data removal.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,234,798 - 3shape A/S / 3shape Inc. v. Dental Imaging Technologies CorporationInstitution deniedPTAB · Aug 19, 2024 · IPR2024-00548 · APJ Stacey G White · IPR · Institution
The Board denied institution because Petitioner did not show that the cited art taught multiple successful bite registrations, as required by challenged claims 1–21.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny Petitioner’s request to institute inter partes review of the challenged claims on the asserted grounds.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As the Federal Circuit has noted, it is not within our statutory authority to determine questions of indefiniteness of issued claims within a inter partes review proceeding. Samsung Elecs. Am., Inc. v. Prisua Eng'g Corp., 948 F.3d 1342, 1350 (Fed. Cir. 2020). As such, we make no findings as to any alleged indefiniteness. The Federal Circuit, however, also has stated that “[t]he indefiniteness of a limitation (here, a means-plus-function limitation) precludes a patentability determination only when the indefiniteness renders it logically impossible for the Board to reach such a decision.” Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 813 (Fed. Cir. 2021) (emphasis added). Here, we are presented with a circumstance in which our determinations in this proceeding are not precluded by the allegations of indefiniteness. Thus, we will not deny the Petition based on Petitioner’s failure to identity corresponding structure for the purported means-plus-function terms of claim 13. Further, based on the record before us, we see no need for express construction of any term at this stage of the proceeding. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we 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 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“D. Asserted Obviousness Each of the independent claims, 1, 13, 18, 20, and 21, recite, in relevant part, obtaining at least two successful bite registrations corresponding to different displayed bite surfaces. Ex. 1001, 9:50–52 (claim 1), 11:13–15 (claim 13), 12:5–6 (claim 18), 12:31–32 (claim 20), 12:53–55 (claim 21). Patent Owner argues, and we agree, that “[b]y its plain language, this limitation requires obtaining multiple successful bite registrations.” Prelim. Resp. 20. In each of the asserted grounds, Petitioner relies on Sommer alone or with Malfliet to teach this limitation in each of the independent claims. Pet. 19–20 (claim 1), 55 (claim 13), 58 (claim 18), 63 (claim 20), 37 (claim 21). We are not persuaded that Petitioner has shown sufficiently that the art teaches this limitation.” slip op. at 13
- Skill levelOther
“Petitioner asserts that a person of ordinary skill in the art would have at least (1) a bachelor’s degree in electrical engineering, computer engineering, or computer science (or equivalent course work) and two to three years of work experience in 3D imaging and modeling of physical structures, or (2) a master’s degree in electrical engineering, computer engineering, or computer science (or equivalent course work) with a focus in 3D imaging and modeling of physical structures. Pet. 9 (citing Ex. 1009 ¶¶ 32–33). Patent Owner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in Computer Engineering, Computer Science, Electrical Engineering, Physics, or an equivalent field, as well as at least two years of work experience, or alternatively, at least five years of comparable industry experience in the field of imaging and/or image scanning, including 3D imaging systems and 3D modeling techniques.” Prelim. Resp. 5. Patent Owner adds that “[a]dditional education reduces the threshold for years of experience in the field, and vice versa.” Id. For purposes of this Decision, the level of ordinary skill in the art is not dispositive and our determination would be the same under either party’s proposal. See Prelim. Resp. 5 (“Patent Owner’s arguments herein apply regardless of which definition of a POSITA is adopted.”). Nonetheless, we note that Petitioner’s proposal is reasonable and consistent with the prior art, and is further supported by Dr. Saber’s testimony. Ex. 1003 ¶ 33; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,076,391 - Google LLC v. Parus Holdings, Inc.No claims unpatentablePTAB · Aug 1, 2024 · IPR2022-00279 · APJ David C Mckone · IPR · Final written decision
Claims 1 and 2 were not shown unpatentable over either Kovatch and Burrows or Wise and Burrows because the combinations did not teach the claimed polling and rank-decrease limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Skill in the Art Petitioner, relying on the testimony of Mr. Lipoff, contends that a person of ordinary skill in the art “would have had a Bachelor’s Degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing,” and that “[m]ore education could substitute for less experience, and vice versa.” 5 The complete record does not include allegations or evidence of objective indicia of nonobviousness. same proposal. PO Resp. 1. On the complete record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art and adopt Petitioner’s proposed level of skill.” slip op. at 10
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“From this description in Burrows, it is clear that index 70 has no sense of ranking, and that Burrows’ system overall has no sense of ranking prior to a query; thus, adding or deleting a webpage from the index does not change a ranking that does not yet exist. It is also clear that, if a page is flagged as deleted, it will be ignored by the query module when the query module queries the index and ranks the identified qualified pages. Id. at 15:12–16, 15:21–22. The webpage’s rank is not decreased, as the webpage is never ranked in the first place. As Mr. Occhiogrosso testifies: web page. A “polled web site” page cannot be ranked in the Burrows system because the Burrows ranking is performed only after a user query is performed. Only at that time can the Burrows system provide a ranked list (of qualified webpages) for presentation to the user. As Burrows discloses, the Automated Web Browser is robotic in nature and not associated with the queries of users. Ex. 2009 ¶ 181. Mr. Occhiogrosso’s testimony on this point is consistent with Burrows’ description, credible, and entitled to substantial weight. We have considered Mr. Lipoff’s testimony that a skilled artisan “would have understood that combining Burrows’s polling mechanism receiving no response into Kovatch would decrease the entries’ ranking or placement in Kovatch’s destination tree in order to further limit the pages that may not be of interest to the user.” Ex. 1002 ¶ 172 (citing Ex. 1006, 1:38–46). That testimony, however, is conclusory and lacks persuasive reasoning. Moreover, the passage in Burrows to which it cites (Ex. 1006, 1:38–46) does not teach or suggest decreasing the ranking of webpages. Thus, Mr. Lipoff’s testimony on this point lacks credibility and is entitled to little weight. Upon consideration of the complete record, we are not persuaded that Kovatch and Burrows teach claim limitations 1H and 2H.” slip op. at 22
- Strike new argumentNew argument disregardedDecided for patent owner
“In the Reply, Petitioner argues that “the type of database record that Burrows polls and ranks makes no difference for this teaching; processing costs and cycles, equating to processing time, are a potential issue any time computer processing occurs.” Reply 20 (citing Ex. 1061 ¶ 24). Mr. Lipoff repeats this statement in his testimony without identifying the basis for it, rendering that testimony of little value. Ex. 1061 ¶ 24. In any case, it appears that Petitioner and Mr. Lippoff are arguing that a general notion of processing cost any time computer processing occurs would lead a skilled artisan to decrease a webpage’s rank based on response time. This is a new argument, not presented in the Petition, and is therefore forfeited and will not be considered. In any case, Petitioner has not supported this new argument with persuasive evidence.” slip op. at 31
- BurdenFwd all claims patentableNot shown unpatentable
“In sum, for several reasons, Petitioner has not shown that Kovatch and Burrows teach claim limitations 1H–1J and 2H–2J and, therefore, Petitioner has not shown that Kovatch and Burrows teach each limitation of claims 1 and 2. 4. Conclusion of Nonobviousness As explained above, Petitioner has failed to show that the combination of Kovatch and Burrows teaches each limitation of claims 1 and 2. Upon consideration of all the evidence, we conclude that Petitioner has not proved by a preponderance of the evidence that claims 1 and 2 would have been obvious over Kovatch and Burrows.” slip op. at 32
Patent outcomesUS 6,721,705 not shown unpatentable§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,721,705 - PTAB · Jul 24, 2024 · IPR2024-00701 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–23 under the same § 103 grounds as the Meta IPR and granted Samsung’s motion to join that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an IPR may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In its Motion for Joinder, Samsung contends that joinder is appropriate because this proceeding and the Meta IPR are substantively identical (i.e., they involve the same claims, the same patent, the same prior art references, the same expert declaration, and the same arguments and evidence). See Joinder Mot. 1–2; see also Ex. 1020 (comparing Petition and Meta IPR Petition). Stated differently, Samsung asserts that the Petition and supporting evidence filed in this proceeding do not raise any new substantive or procedural issues. See id. Samsung further argues that, because it is willing to work with counsel for Meta (i.e., as an understudy) to consolidate all filings and discovery, joinder will not impact the schedule of the Meta IPR, thereby allowing us to complete a single consolidated proceeding in a timely manner. Id. at 4–9. Samsung also argues that, if it is joined as a party with the Meta IPR, Patent Owner will not suffer any prejudice because granting joinder under these circumstances will not add new issues for consideration by or costs to Patent Owner above and beyond those already presented in the Meta IPR, nor will granting joinder affect the issues, briefing, or discovery in the Meta IPR, as they will remain the same. Id. Given that Patent Owner did not file an opposition to Samsung’s Motion for Joinder, and Samsung agrees to consolidate all filings and discovery with Meta (Joinder Mot. 4–9), Samsung has demonstrated that joinder will not unduly complicate or delay the Meta IPR. See 37 C.F.R. § 42.1(b) (providing for “the just, speedy, and inexpensive resolution of every proceeding” (emphases added)). We, therefore, grant Samsung’s Motion for Joinder and, as a result, join Samsung as a party with the Meta IPR.” slip op. at 5
NonePatents in suitUS 10,715,878 - PTAB · Jul 24, 2024 · IPR2024-00666 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–23 under the same § 103 grounds as the Meta IPR and granted Roku’s motion to join that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We incorporate our previous analysis in our Decision on Institution in IPR2023-01281 regarding the asserted grounds of unpatentability, and conclude that Roku has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’878 patent challenged in the Petition for the same reasons. See Meta IPR Dec. on Inst. 23–24. Accordingly, we determine that Roku has met its burden of showing that joinder is appropriate, and that the Petition warrants institution of inter partes review on all claims and all challenges asserted in the Petition.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“because this proceeding and the Meta IPR are substantively identical (i.e., they involve the same claims, the same patent, the same prior art references, the same expert declaration, and the same arguments and evidence). See Joinder Mot. 4–6. Stated differently, Roku asserts that the Petition and supporting evidence filed in this proceeding do not raise any new substantive or procedural issues. See id. Roku further argues that, because it is willing to work with counsel for Meta (i.e., as an understudy) to consolidate all filings and discovery, joinder will not impact the schedule of the Meta IPR, thereby allowing us to complete a single consolidated proceeding in a timely manner. Id. at 7–9. Roku also argues that, if it is joined as a party with the Meta IPR, Patent Owner will not suffer any prejudice because granting joinder under these circumstances will not add new issues for consideration by or costs to Patent Owner above and beyond those already presented in the Meta IPR, nor will granting joinder affect the issues, briefing, or discovery in the Meta IPR, as they will remain the same. Id. at 9–10. Given that Patent Owner did not file an opposition to Roku’s Motion for Joinder, and Roku agrees to consolidate all filings and discovery with Meta (Joinder Mot. 7–9), Roku has demonstrated that joinder will not unduly complicate or delay the Meta IPR. See 37 C.F.R. § 42.1(b) (providing for “the just, speedy, and inexpensive resolution of every proceeding” (emphases added)). We, therefore, grant Roku’s Motion for Joinder and, as a result, join Roku as a party with the Meta IPR.” slip op. at 5
NonePatents in suitUS 10,715,878 - PTAB · Jul 22, 2024 · IPR2024-00276 · APJ Michael J Fitzpatrick · IPR · Institution
Instituted review of claims 1–3, 6, 12, 14, 16, 18, and 19 based on a reasonable likelihood of success on the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review requires that “the information presented in the petition filed under section 311 and any response filed under section 313 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). Determining whether to institute has been delegated to the Board. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that there is a reasonable likelihood that Petitioner would prevail with respect to at least one claim. Accordingly, we grant the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“contacting mucosal tissue of the upper airway with the treatment delivery portion, without piercing the mucosal tissue,” as recited in claim 1. Prelim. Resp. 8; see Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987) (“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”). As will become apparent from Patent Owner’s arguments, central to the dispute between the parties is Petitioner’s mapping of Baker to limitation [b] and, in particular, to the recited “treatment delivery portion” of the device. In Petitioner’s view, Baker’s inflatable chamber 28 constitutes part of the recited “treatment delivery portion.” See Pet. 28 (“An energy delivery member including an inflatable chamber 28 is located at the distal tip of insertion wand 24.” (citing Ex. 1013, 16:19–26, 17:22–32, 20:35–39, Fig. 5; Ex. 1002 ¶75)). Petitioner further points out, with supporting evidence, that the inflatable chamber contacts mucosal tissue without piercing it. Id. at 34 (citing Ex. 1013, 17:22–36, Fig. 5; Ex. 1002 ¶84). slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“underlying the mucosal tissue, and wherein delivering the energy comprises ablating the nerve tissue.” Ex. 1001, 29:64–67. In challenging claim 6 as obvious, Petitioner relies on Chen for teaching targeting of nerve tissue with radiofrequency energy and on Edwards-535 for teaching targeting of underlying tissue (including nerves) without harming the mucosal surface. Pet. 80–81 (citing 1017, 239–240; 1010, 4:60–67, 6:10–37; Ex. 1002 ¶171). Petitioner explains why a person of ordinary skill in the art would have combined the teachings of Baker, Edards-535, and Chen and had a reasonable expatiation of success in doing so. Id. at 61–68. Patent Owner does not dispute Petitioner’s reliance on Edwards-535 and Chen to reach the additional subject matter recited in claim 6. Nor does Patent Owner dispute Petitioner’s reasons for combining Edwards-535 and Chen with Baker or that a person of ordinary skill in the art would have had a reasonable expectation of success in such an endeavor. Prelim. Resp. 15– 535, and Chen fails to satisfy limitation [b] of claim 1, from which claim 6 ultimately depends. Prelim. Resp. 15. However, as discussed above, we have already determined there is a reasonable likelihood that Baker alone discloses limitation [b] of claim 1. There is a reasonable likelihood of Petitioner prevailing on Ground 3 as to both claim 1 and claim 6. We decline, at this time, to address the other claims challenged in Ground 3. SAS, 138 S. Ct. at 1356.” slip op. at 17
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,415,194 - PTAB · Jul 22, 2024 · IPR2024-00275 · APJ Michael J Fitzpatrick · IPR · Institution
The Board instituted review of claims 9, 14, 16, 18, 20, 22–24, 44, and 46 based on a reasonable likelihood of prevailing on the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review requires that “the information presented in the petition filed under section 311 and any response filed under section 313 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). Determining whether to institute has been delegated to the Board. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that there is a reasonable likelihood that Petitioner would prevail with respect to at least one claim. Accordingly, we grant the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“argues that we “should exercise . . . discretion to deny institution of Ground 1 under 35 U.S.C. § 325(d).” Prelim. Resp. 8 (emphasis added). However, we do not institute on a ground-by-ground basis. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); see also SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding that the Director’s prior “partial institution practice” was contrary to 35 U.S.C. § 314(a)). Even assuming Patent Owner requests that we exercise discretion to deny the entire Petition, its discretionary denial arguments could not support such a request because those arguments are limited to Ground 1. Patent Owner does not argue or present any basis for exercising our discretion under 35 U.S.C. § 325(d) as to any of the additional grounds. And, as discussed below, there is a reasonable likelihood that the Petitioner will prevail with respect to at least 1 of the claims challenged in at least one of those additional grounds. For this reason alone, discretionary denial under 35 U.S.C. § 325(d) is not warranted.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“step [b], i.e., “contacting a treatment element of the treatment device with mucosal tissue in the patient’s nasal airway,” as recited in claim 9. Prelim. Resp. 17; see Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987) (“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”). As will become apparent from Patent Owner’s arguments, central to the dispute between the parties is Petitioner’s mapping of Gertner to limitation [b] and, in particular, to the recited “treatment element.” In Petitioner’s view, Gertner’s distal end 216 and expandable component 218 together form the recited “treatment element.” As Petitioner explains it, Gertner discloses that “the distal end 216 emits light from ‘within’ the expandable component 218, such that the light emitter and expandable component 218 (which together constitute distal end 216) act as a treatment element.” Pet. 30 (citing Ex. 1013 ¶¶103, 106, 107; Ex. 1002 ¶64). Petitioner further points out, with supporting evidence, that the expandable component contacts mucosal tissue. Id. (citing Ex. 1013 ¶¶37, 103).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Edwards-535. Pet. 61–64. Claim 16 recites: “A method as in claim 9, wherein adjusting the shape comprises forming at least one bend in a shaft of the treatment device.” For this additional subject matter, Petitioner points us to the bend in the structure that is designated with reference numeral 124 in Edwards-535, as illustrated in Figure 3B. Pet. 61–62. Petitioner also argues, with supporting evidence, that, even absent this disclosure, it would have been obvious to form a bend, as it is well known in the art to provide bendable catheters to facilitate insertion of a medical device. Id. at 62–64 (citing Ex. 1002 ¶¶130–132). Patent Owner’s sole argument is Edwards-535 fails to disclose limitation [b] of claim 9, from which claim 16 depends. Prelim. Resp 31– 32. That argument is not persuasive for reasons already discussed. Although we have already held that the single-claim threshold of § 314(a) has been met with respect to independent claim 9, we nonetheless further determine that there is a reasonable likelihood of Petitioner prevailing in showing that dependent claim 16 would have been obvious over Edwards-535.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,072,597 - PTAB · Jul 22, 2024 · IPR2024-00282 · APJ Zhenyu Yang · IPR · Institution
The Board instituted review of claims 1–4 and 7–9 on all asserted grounds after finding a reasonable likelihood that claims 1–3 and 7–9 are obvious over Edwards-’535 and Stern.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Accordingly, we institute inter partes review of all challenged claims based on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS Level of Ordinary Skill in the Art Petitioner argues that an ordinarily skilled artisan at the relevant time would have had (1) a Doctor of Medicine (M.D.) or at least a bachelor of science degree in engineering or a related discipline and (2) at least three years of experience in the clinical use, design, development, and/or testing of medical devices, including medical devices that deliver energy to tissue. Pet. 17 (citing Ex. 1002 ¶¶ 24–28). Patent Owner does not address the skill level in its Preliminary Response. At this stage, we find Petitioner’s definition of the level of ordinary skill in the art sufficiently supported by the record and apply it for purposes of this Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Under that standard, the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Petitioner argues that the preamble of claim 1 “to treat rhinitis” is not limiting. Pet. 18. According to Petitioner, the body of claim 1 recites a structurally complete apparatus, and the preamble only states an intended use for the device without limiting the claimed structure. Id. at 18–19. Patent Owner does not propose any claim construction. On this record, we find Petitioner’s argument persuasive and determine that the preamble of claim 1 “to treat rhinitis” is not limiting. On this record and for purposes of this Decision, we see no need to expressly construe any other claim term.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We still “must further consider the factual questions of whether a person of ordinary skill in the art would be motivated to combine those references, and whether in making that combination, a person of ordinary skill would have had a reasonable expectation of success.” Dome Patent L.P. v. Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015). Based on the current record, and for purposes of this Decision, we find Petitioner has shown sufficiently that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citations omitted). slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,766,286
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.