• Intel Corporation v. Besang Inc.No claims unpatentable
  PTAB · Dec 11, 2024 · IPR2023-00991 · APJ Jon B Tornquist · IPR · Final written decision

  The Board held claims 1 and 13–17 not unpatentable, finding the asserted obviousness grounds deficient in claim limitations or motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties proposed definitions differ in that Petitioner would permit a degree in “materials science” and require three years, as opposed to two years, of relevant experience. Compare Pet. 9 with PO Resp. 14. On this record, we adopt Patent Owner’s proposed definition, as it is more consistent with the prior art of record and the disclosures of the ’702 patent. We note, however, that neither party contends that the outcome of this case depends on the slight differences in the proposed definitions of a person of ordinary skill in the art.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “1996) (“It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history.”). Upon review of the parties’ arguments and the intrinsic record, we agree with Petitioner that the ’702 patent does not support a construction of “stackable add-on layer” that encompasses memory cells formed by sequential deposition on a substrate without being formed and then added to a separately formed substrate. Pet. 11–12. 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” having a plurality of vertically oriented semiconductor memory cells; that plurality is bonded to the dielectric layer. Ex. 1001, 12:29–32. A construction that gives meaning to all words of the claim is preferred. Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”).” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “As discussed above, we do not understand a “stackable add-on layer” to include memory cells that are formed by sequential deposition on or above a substrate without being added to a separately formed substrate. It is undisputed, and indeed it is Petitioner’s assertion, that Lee’s memory devices are formed by sequential deposition. Pet. 16, 29 n.11, 51 (“In Lee, each level 3104 is deposited on the underlying level of array 3101.”). Therefore, Petitioner has not shown that Lee discloses every limitation of independent claim 13 under our claim construction. Thus, Petitioner does not demonstrate by a preponderance of the evidence that claim 13 would have been obvious in view of Lee. 3. Analysis: Claims 14–17 Claims 14–17 each depend, directly or indirectly, from claim 13. Petitioner’s arguments with respect to these claims do not remedy the deficiencies noted above with respect to claim 13. Pet. 31–41. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claims 14–17 would have been obvious over Lee.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner has not demonstrated that Aspar would improve Lee, would solve a problem in Lee, and that Petitioner is proposing to use Aspar in a way that is not disclosed in the reference. PO Resp. 49–50 (citing Ex. 2029 ¶¶ 153–162); Tr. 57:24–58:12; Pet. 61; KSR, 550 U.S. at 417 (asking whether a technique “would improve similar devices in the same way”), 420 (asking whether there was a known problem in the art), 421 (asking whether one of ordinary skill in the art had reason to “pursue the known options”); Intel, 61 F.4th at 1381 (explaining that obviousness may be demonstrated by showing that there was a known problem in the art (“cache coherency in multiprocessor systems”) and that a person of ordinary skill in the art would recognize that that the prior art solution to this problem (“global segmented secondary cache”) would improve the system of another prior art reference). Petitioner does not persuasively show that there was any known problem in the art with respect to Lee or its monolithic method of constructing memory arrays. Nor does Petitioner provide persuasive argument or evidence that Aspar’s wafer bonding would improve Lee’s memory device.10 For example, Petitioner states in a conclusory fashion that Aspar would address the known problem of “fabricating 3D structures,” but does not explain what those problems were or why Lee fails to solve them. Pet. 61. Dr. Sechen’s testimony merely parrots the Petition, providing no further analysis or explanation of what problem might exist in Lee when fabricating its 3D structures. Ex. 1003 ¶ 212. The Petition notes that Aspar transfers “thin layers of very good thickness homogeneity and with a high crystalline quality,” but the Petition never asserts that Lee’s direct deposition method fails to provide these same or similar qualities. Pet. 60–61.” slip op. at 27

  Patent outcomesUS 7,378,702 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,378,702
• Sony Interactive Entertainment LLC v. Quantum Imaging LLCNo claims unpatentable
  PTAB · Dec 9, 2024 · IPR2023-00996 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–3, 5–8, 10–12, and 18 were not shown unpatentable as obvious over Pisanich or the PSO Manual because neither adequately taught the claimed QIE module.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 33

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 8–9 (citing Ex. 1004 ¶ 43). Patent Owner’s asserted level of ordinary skill in the art mirrors Petitioner’s except that Patent Owner contends that “a general knowledge of advertising and virtual reality . . . do not specifically apply to the ‘165 Patent.” PO Resp. 5. The ’165 patent claims and describes a “virtual thematic environment” in detail. Indeed, the ’165 patent describes in one embodiment “a method of integrating holographic images into a virtual thematic environment using a computerized system” and “that the computer system of the present invention provides product placement in a virtual thematic environment.” Id. at 3:32–33, 40–45. Although virtual reality and advertising are not claim elements in this case and do not play a specific role in our analysis below, because the ’165 patent specifically contemplates the integration of advertising and virtual environments we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’165 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that we would reach the same conclusions applying either Petitioner’s or Patent Owner’s definition of the level of skill in the art.” slip op. at 11

  • Prior constructionPrior construction adoptedNo construction neededDecided for patent owner

    “Having considered the complete record now before us, and where both parties have deferred to the District Court’s constructions, there is no actual dispute as to the meaning of any specific claim terms in this proceeding and we determine that no express additional claim construction is necessary for any particular claim term. Like the parties, for purposes of this Decision we adopt, and where appropriate refer to, the District Court’s claim constructions and also to Patent Owner’s additional interpretations of “client” and “server.” We note that neither “software layer” nor “types,” as set forth in the District Court’s construction of the QIE module is recited in the claims of the ’165 patent. To the extent necessary, we address the terms “types,” “software layer,” “client,” and “server” in our analysis below in the context of the claims and written description of the ’165 patent. See, e.g., Ex. 1001, 12:34–37 (The ’165 patent describing that “[i]n a client-server environment, at least one client and at least one server are each connected to a network such as a Local Area Network (LAN), Wide Area Network (WAN), and/or the Internet, over a communication link.”). We make another observation regarding the claimed “quantum imaging environment (QIE) module” referenced as 202/211 in Figure 2 of the ’165 patent. A QIE is discussed throughout the specification as relating to both a “QIE engine” and a “(QIE) module.” Id. at 6:6, 16:47. Apart from the broad description that QIE 202/211 is a software layer, and includes “an interpreter” which “allows developers to develop objects and applications from the interpreter,” and that the “interpreter [] will take all of the rich content, interpret the information into objects to be manipulated and accessed via any device and place these objects or information in the the software architecture of the QIE itself and how it actually handles, manipulates, or converts information or content into specific formats. Id. at 15:55–59.7 Apart from adopting the District Court’s claim constructions, we need not further expressly construe any claim terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “In summary, we find that Pisanich discloses to a person of ordinary skill in the art a computer game system that incorporates real world data into multiple games, and even games with different themes, but not a QIE for accomplishing these tasks for different devices. Ex. 1004 ¶ 17. We find insufficient evidence by Petitioner and Mr. Crane that a person of ordinary skill in the art, considering Pisanich, would have understood that multiple games included multiple games on different devices as required by the District Court’s claim construction of a “QIE module”—that is “a software layer which receives and interprets content such that the content is manipulated so as to be accessible on different types of devices for use within the virtual thematic environment.” Ex. 1009, 4–7 (emphasis added). Independent Claim 18 Independent claim 18 recites the same limitation of “providing a quantum imaging environment (QIE) module in one of the client or the server system” as in claim 1[b]. Consequently, our analysis of the corresponding limitations of claim 1[b] applies also to claim 18. For the reasons given for claim 1, we find that Petitioner has failed to show by a preponderance of the evidence that claim 18 would have been obvious over Pisanich.” slip op. at 36

  Patent outcomesUS 10,991,165 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,991,165
• Sony Interactive Entertainment LLC v. Quantum Imaging LLCNo claims unpatentable
  PTAB · Dec 9, 2024 · IPR2023-00995 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3, 5, 7–12, and 23–26 were not shown unpatentable over Pisanich or the PSO Manual because neither was shown to teach or suggest the claimed QIE module.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not agree with Patent Owner that “Petitioner’s definition of a POSITA includes a general knowledge of advertising and virtual reality, but these backgrounds do not specifically apply to the ‘941 Patent at issue, and Patent Owner is unaware why Petitioner would include them in their definition.” Id. at 5. The ’941 patent claims and describes a “virtual thematic environment” in detail. Indeed, the ’941 patent describes an embodiment “having a program for integrating holographic images into a virtual thematic environment using a computerized system, includes means for displaying images from a virtual thematic environment; and means for projecting the images as holographic projections using a holographic projection system.” Ex. 1001, 3:61–67. As for advertising, the ’941 patent discusses that advertising can be included in the virtual thematic environment, id. at 7:42–57, and explains that “digital content library 209 4 “POSITA” is “person of ordinary skill in the art.” may also include scheduling directions for when the web site access and identification of where to place the web content or advertising, e-commerce, video, etc. are to be placed,” id. at 17:35–39. We adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’941 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that we would reach the same conclusions applying either Petitioner’s or Patent Owner’s definition of the level of skill in the art.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Additionally, only terms that are in controversy need to be construed, and these terms 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)).” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “technology to display objects internal to the cockpit, and to display objects external to the aircraft in the virtual thematic environment” and “[s]aid ‘conventional technology’ included rendering technology configured to account for differences between multiple gaming devices as needed” to be without sufficient factual support. See Ex. 1004 ¶¶ 147–148 (citing Ex. 1007, 16:10–11; Ex. 1004 ¶ 83).. Although it may have been known in the art to create different versions or programs of a game for different devices, Mr. Crane points to no disclosure in Pisanich that explains or discloses a QIE consistent with the plain language of the claim. He points to no textbook, technical disclosure, or other independent evidence that would have led a person of ordinary skill considering Pisanich to implement a “software layer” that receives real time data and manipulates this data “so as to be accessible on different types of devices for use within the virtual thematic environment.” See, e.g., Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, at 15–17 (PTAB Aug. 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it “is conclusory and unsupported, [and] adds little to the conclusory assertion for which it is offered to support”). Our Trial Practice Guide cautions against crediting unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Pisanich meet the elements of claims 1, 3, 5, 7–12, and 23–26. Pet. 12–36. Patent Owner opposes. PO Resp. 14–43. Because we conclude that Petitioner has failed to show by a preponderance of the evidence that Pisanich accounts for the claimed QIE module, we focus our analysis on that limitation. a. “a quantum imaging environment (QIE) module, the QIE module being a software layer that receives, interprets, and manipulates the second content so as to be accessible on different types of devices for use within the virtual thematic environment…” The parties’ arguments and evidence here focus on the “quantum” slip op. at 19

  Patent outcomesUS 10,846,941 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,846,941
• Sony Interactive Entertainment LLC v. Quantum Imaging LLCSome claims unpatentable
  PTAB · Dec 6, 2024 · IPR2023-00954 · APJ James J Mayberry · IPR · Final written decision

  Claims 1, 3, 4, and 7–9 are unpatentable over Angles under §103; claims 5 and 6 were not shown unpatentable over Angles.

  RulingsFinal written decision

  • Expert testimonyOther

    “prosecution history and the amendment changing “held at” to “accessible at,” testimony upon which Patent Owner relies to support its position. Specifically, Dr. Medvidović testifies that a person having ordinary skill in the art would have understood the two phrases to be synonymous because, 1) the amendment was not made to overcome a prior art reference, 2) the applicant did not make a statement disclaiming that “being accessible at” does not encompass “being held at,” and 3) the examiner did not object to the amendment as exceeding the scope of the Specification. See Ex. 2005 ¶ 34. We find that Dr. Medvidović’s conclusion is not supported by his reasoning. First, an amendment made not to overcome a prior art reference does not mean an amendment that does not change the scope of a claim. An applicant is free to amend a claim at any time during prosecution, even an amendment that may expand the scope of a claim (one made not to overcome a prior art rejection). Second, whether “being accessible at” encompasses “being held at” is not the issue—because the scope of one term encompasses the scope of another term does not make the two terms” slip op. at 26

  • ExcludeDenied

    “III. MOTION TO EXCLUDE EVIDENCE Patent Owner moves to exclude Exhibits 1017–1020, 1026, and 1027,” slip op. at 83

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Accordingly, we conclude that the plain and ordinary meaning of the” slip op. at 27

  Patent outcomesUS 8,458,028 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,458,028
• Texas Instruments Inc. v. Parkervision, Inc.Instituted
  PTAB · Nov 26, 2024 · IPR2024-00936 · APJ Bart A Gerstenblith · IPR · Institution

  The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1, 5, 8, 9, 11–19, 23, 26, 27, and 29–36 are obvious over Tayloe, TI Datasheet, and Macnally.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation 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. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Western District of Texas Litigation.” slip op. at 11

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Accordingly, on the present record at this stage of the proceeding and for the reasons discussed above, we find that Petitioner has shown a reasonable likelihood of establishing that one of ordinary skill in the art would have been motivated to combine the teachings of Tayloe, TI Datasheet, and Macnally with a reasonable expectation of success. Patent Owner is invited to elaborate further on its positions in future briefing with potential expert support.” slip op. at 35

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of EM circuit design.” Pet. 6 (citing Ex. 1003 ¶¶ 68–71). Petitioner further proposes that “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree.” Id. Patent Owner does not take a position, in the Preliminary Response, on the level of ordinary skill in the art. See generally Prelim. Resp. On the present record at this stage of the proceeding, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’528 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).” slip op. at 12

  • Prior constructionPrior construction adoptedTerm construed petitioner constructionDecided for petitioner

    “their plain and ordinary meaning, with one exception. Pet. 3. Specifically, Petitioner asserts “storage element” or “energy storage element” are recited “interchangeably” in the claims and should each be construed to mean “an element of a system that stores non-negligible amounts of energy from an input EM signal,” which Petitioner notes was “determined by the Board and affirmed by the [U.S. Court of Appeals for the] Federal Circuit.” Id. (citing ParkerVision, Inc. v. Vidal, 88 F.4th 969, 976 (Fed. Cir. 2023) (holding “ParkerVision acted as its own lexicographer to define the term ‘storage element’” and “the Board’s construction of ‘storage element’ [(quoted above)] correctly tracks the lexicography provided by [ParkerVision]”) (citing U.S. Patent No. 6,061,551 (“the ’551 patent”), 66:55–67)). Petitioner contends that, like U.S. Patent No. 7,110,444 that was at issue in ParkerVision v. Vidal, the ’528 patent also incorporates the ’551 patent by reference. Pet. 4 (citing Ex. 1001, 1:30–34). And Petitioner notes that the ’528 patent “includes an identical disclosure to that deemed dispositive from the incorporated by reference ’551 patent.” Id. (citing Ex. 1001, 73:9–22 (which Petitioner contends defines “storage module”)). Further, Petitioner asserts “[n]o intrinsic evidence demands a different construction” because, even though claim 1 recites “system,” “energy,” and “transfer,” it does so “in isolation” and “does not recite ‘energy transfer system,’ let alone restrict the claimed ‘storage element’ to any energy transfer system.” Id. at 5 (also contending the file history of the ’528 patent does not support a different construction). Petitioner also contends “the proposed combinations teach the claimed ‘storage element’ or ‘energy storage element,’ even including the alleged condition of ‘low impedance load’ that purportedly ‘goes to the heart of what makes an element, a “storage” element.’” Id. Patent Owner does not take a position on claim construction in the Preliminary Response. See generally Prelim. Resp. On the present record at this stage of the proceeding, we agree with Petitioner, for the reasons discussed above, that “storage element” and “energy storage element” are used interchangeably in the claims and should be construed consistently with our prior construction of “storage element,” which, as noted above, was affirmed by the Federal Circuit, to mean “an element of a system that stores non-negligible amounts of energy from an input EM signal.” We need not construe any other claim terms expressly because there is no present controversy as to the meaning of any other claim terms in this proceeding. Realtime Data, 912 F.3d at 1375.” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,118,528
• Texas Instruments Inc. v. Parkervision, Inc.Instituted
  PTAB · Nov 26, 2024 · IPR2024-00935 · APJ Bart A Gerstenblith · IPR · Institution

  The Board instituted IPR on claim 14 over all three obviousness grounds, finding a reasonable likelihood of success on the Tayloe and TI Datasheet ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation 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. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Western District of Texas Litigation.” slip op. at 7

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “h. Summary as to Claim 14 For the reasons discussed above, on the present record we find that Petitioner has established that the combination of Tayloe and TI Datasheet teaches each of the elements of claim 14 and that one of ordinary skill in the art would have been motivated to combine the teachings of these two references as proposed by Petitioner with a reasonable expectation of success in so doing. 3. Objective Indicia of Nonobviousness In the record presently before us, neither Petitioner nor Patent Owner has presented any evidence of objective indicia of nonobviousness. 4. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Tayloe and TI Datasheet would have rendered the subject matter of claim 14 of the ’177 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 35

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “At this stage of the proceeding and on the present record, we need not construe the term expressly because, for the reasons discussed below, we find that Petitioner has established a reasonable likelihood of showing that claim 14 would have been obvious to one of ordinary skill in the art under each construction, and because there is no present controversy as to the meaning of the term in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “A datasheet is a well-known resource for learning detailed information of the multiplexer/demultiplexer, and a [person of ordinary skill in the art] would have been motivated to consult the TI Datasheet for a more complete understanding of Tayloe’s express teachings of the SN74CBT3253 demultiplexer, the only matching multiplexer available at the time. [Ex. 1023; Ex. 1003] ¶¶ 100–109; see also Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1374–75 (Fed. Cir. 2013) (obvious to combine two prior art references where one reference “refers expressly” to the other). When viewing the detailed diagram of the SN74CBT3253 demultiplexer, a [person of ordinary skill in the art] would have been motivated to apply four of the switches because the architecture of one switch on the demultiplexer is analogous to one of the four switching paths of Tayloe’s commutating switch 38. [Ex. 1003 ¶¶] 100–109. Thus, a [person of ordinary skill in the art] would have thought to implement the multiplexer switches from TI Datasheet in an analogous manner “by simple substitution of one known element for another.” Pet. 23–24 (citing Ex. 1003 ¶¶ 100–109; KSR, 550 U.S. at 401).” slip op. at 20

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,865,177
• Mediatek Inc. v. Parkervision, Inc.Instituted
  PTAB · Nov 26, 2024 · IPR2024-00796 · APJ Iftikhar Ahmed · IPR · Institution

  The Board instituted IPR on claims 1–20, finding a reasonable likelihood that claims 1 and 11 would be obvious over Nevo and Avitabile.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Stipulate[s] and agree[s] that, if the PTAB institutes an inter partes review proceeding (“IPR”) for U.S. Patent No. 7,483,686 on the grounds presented in [the Petition], [Petitioner] will not pursue an invalidity defense in [the Western District of Texas Litigation] that the patent claims subject to the instituted IPR are invalid based on the same grounds as in the [P]etition or any grounds that could have reasonably been raised in the [P]etition. Ex. 1015 (letter from M. Bernstein to J. Charkow, dated May 21, 2024); see also Prelim. Reply 1 (“Patent Owner’s Preliminary Response (Paper 6) fails to acknowledge, much less address, Petitioner’s Sotera stipulation not to pursue in the related litigation the same grounds or any grounds of invalidity that could reasonably have been raised in this IPR.”); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020) (Decision Granting Institution) (precedential as to § II.A).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of [radio frequency (‘RF’)] circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems,” and “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree.” Pet. 14–15 (citing Ex. 1002 ¶ 38). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. See generally Prelim. Resp. We determine, on the current record, that Petitioner’s proposed level of ordinary skill is consistent with the ’686 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d at 1579. We adopt that level of ordinary skill in the level of ordinary skill in the art based on the full trial record. slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner contends that all claim terms should be given their plain and ordinary meaning. Pet. 15 (citing Ex. 1002 ¶ 74). Petitioner, however, notes that several claim terms in the ’686 patent, or closely related claim terms for patents related to the ’686 patent, have been construed during prior litigation involving Patent Owner. Id. Petitioner discusses five claim terms and various constructions proposed or adopted in prior litigation. Id. at 15–20.” slip op. at 11

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,483,686
• Texas Instruments Incorprated v. Parkervision, Inc.Instituted
  PTAB · Nov 26, 2024 · IPR2024-00934 · APJ Michael R Zecher · IPR · Institution

  The Board instituted IPR of claims 19–21 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “On June 21, 2022, the Director issued interim guidance in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors. See Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation at 3, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Notably, the Director stated that “the [Patent Trial and Appeal Board (‘PTAB’)] will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the PTAB.” Id. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding under Fintiv because TI filed a Sotera stipulation. Pet. 80; Ex. 1041.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “construed as “indirectly or directly connecting such that an electrical signal can flow between”; and (2) “impedance device” was construed as “a device that exhibits an impedance.” Id. at 6. Even though TI identifies four claim terms in total in the Petition, TI argues that the asserted prior art renders the challenged claims unpatentable under any reasonable construction of those claim terms. See, e.g., id. at 4 (arguing that the “prior art analyzed here renders the claims unpatentable under either [party’s] constructions” proposed in the district court case), 6 (arguing that the “prior art renders the Challenged Claims unpatentable under . . . the [Board’s] constructions”). In its Preliminary Response, ParkerVision does not address TI’s proposed constructions, nor does ParkerVision identify additional claim terms that would require construction at this stage in the proceeding. See Prelim. Resp. Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any preliminary 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.” 35 U.S.C. § 314(a). Taking into account ParkerVision’s Preliminary Response, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that TI would prevail in demonstrating at least one of claims 19– 21 of the ’342 patent is unpatentable. Pursuant to § 314, we hereby institute an IPR as to claims 19–21 of the ’342 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of institution, there is sufficient evidence in the record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Galton, TI argues the following: [a] person of ordinary skill in the art . . . as of the ’342 Patent’s priority date (April 14, 2000) would have had a least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of EM circuit design. Less work experience may be compensated by a higher level of education, such as a master’s degree. Pet. 6 (citing Ex. 1003 ¶¶ 28–30). In its Preliminary Response, ParkerVision does not address TI’s assessment of the level of skill in the art. See Prelim. Resp. At this stage of the proceeding, we adopt TI’s uncontested assessment of the level of skill in the art because it is consistent with the ’342 patent and the asserted prior art.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,496,342
• Ascend Elements, Inc. v. Duesenfeld GmbHInstituted
  PTAB · Nov 22, 2024 · IPR2024-00948 · APJ Kevin W Cherry · IPR · Institution

  Instituted IPR on claims 1–3, 7–10, 12, 13, and 19 on all asserted grounds; Petitioner showed a reasonable likelihood of prevailing on the Hanisch-Dunagan combinations with added references.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “d) Conclusion Regarding Claim 1 Based on the current record, we determine that Petitioner has shown a reasonable likelihood that it will prevail in demonstrating that claim 1 is unpatentable as obvious over Hanisch in view of Dunagan and Hayashi, Meador, or Shin. 5. Claims 2, 3, and 7–10 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’097 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 26

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner contends that one of ordinary skill in the art “would have had at least a master’s degree in chemical engineering, mechanical engineering, materials science/engineering, or a related field, and three to five years of experience in design and implementation of battery recycling processes.” Pet. 15–16. Patent Owner argues to the contrary that a person of ordinary skill in the art “would have [had] at least a Bachelor’s degree in electrical engineering, materials science, chemical engineering, or an equivalent field, as well as at least 2 to 3 years of academic or industry experience in the recycling or processing of lithium-ion batteries.” Prelim. Resp. 13. On the present record, neither party argues that the result would be any different should we adopt a different definition of a person of ordinary skill in the art. For purposes of this Decision, we adopt Patent Owner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’097 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Petitioner argues that “[t]he ’097 Patent expressly defines ‘drying’ to mean ‘the removal of at least one solvent in the conducting salt.’” Pet. 16 (quoting Ex. 1001, 2:23–25). Petitioner also argues that “[a]ll other terms should be given their plain and ordinary meaning under Philips and do not need further construction for the purposes of this Petition.” Id. Patent Owner argues that “[n]o claim terms require express construction to determine that the Petition does not establish a reasonable likelihood of unpatentability of any claim and, thus, deny institution.” Prelim. Resp. 13. Based on the present record, we need not expressly construe any claim terms at this time.6 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 8

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied

    “On the present record, we do not find the relationship between URT and Petitioner to be significant to the degree that raises concerns under Valve and General Plastic. In Valve, two factors affected the determination that there was a significant relationship between the two petitioners at issue: “Valve and HTC were co-defendants in the District Court litigation,” and “the petitions . . . challenge[d] the same claims of the [challenged] patent.” IPR2019-00062, Paper 11, 10. Here, one of these factors is absent, and the other is not entirely present. URT and Petitioner are not co-defendants in the related infringement lawsuit, which accuses only Petitioner. Ex. 2014, 1. As for the claims challenged in the two petitions, Patent Owner is correct that all claims challenged in the present proceeding are also challenged in IPR2024-00887, but the reverse is not true. The petition in IPR2024-00887 challenges claims 15–17 of the ’097 patent, none of which is challenged here. Compare Pet. 3, with IPR2024-00887, Paper 2, 4–5. Thus, there is a significant difference between the present situation and that in Valve.” slip op. at 31

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,050,097
• Urt Umwelt Und Recyclingtechnik GmbH v. Duesenfeld GmbHInstituted
  PTAB · Nov 20, 2024 · IPR2024-00887 · APJ Christopher M Kaiser · IPR · Institution

  The Board instituted IPR on claims 1–3, 7–10, 12, 13, and 15–19 on all asserted grounds, finding a reasonable likelihood that claim 12 is anticipated by LithoRec.

  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 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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) (2018). “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.” 37 C.F.R. § 42.108(a) (2023). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with 1 In the Introduction and section headings of the Petition, Petitioner identifies claims 1–3, 7–9, 12, 13, and 15–19 as the challenged claims. Pet. i–ii. In the substantive content of the Petition, however, Petitioner includes claim 10 as a challenged claim as well. Id. at 34–35. respect to at least one of the challenged claims, and we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that one of ordinary skill in the art “would have had a B.S. degree in electrical engineering, materials science, chemical engineering, or an equivalent field, as well as at least 2 to 3 years of academic or industry [experience] in the recycling or processing of lithiumion batteries.” Pet. 14. On the present record, Patent Owner does not contest Petitioner’s proposed definition of a person of ordinary skill in the art. Prelim. Resp. 19. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’097 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner argues that “[n]o claim construction is needed,” because “[t]he claims are unpatentable under any reasonable interpretation.” Pet. 15. That said, Petitioner directs us to alleged definitions of several terms in the specification or prosecution history of the ’097 patent. Id. at 15–17. Patent Owner argues that “[c]laim construction is not required to deny the Petition.” Prelim. Resp. 26. Based on the present record, we agree with both parties that we need not expressly construe any claim terms at this time.6 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 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “In order to anticipate a claimed invention, a prior art reference must enable one of ordinary skill in the art to make the invention without undue experimentation.” Impax Labs., Inc. v. Aventis Pharms., Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008). In addition, “[a]n anticipatory reference need only enable subject matter that falls within the scope of the claims at issue, nothing more.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1381 (Fed. Cir. 2003). slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,050,097

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.