- Apple Inc. v. Smith Interface Technologies, LLCInstitution deniedPTAB · Feb 13, 2025 · IPR2024-01114 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of IPR challenging claims 2, 27–30, 32–36, 38, 40, 42–44, 46, 47, 52, 54, 57, and 59, exercising discretion because this was the fourth-ranked parallel petition.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“petition is warranted given the number of claims at issue. See Trial Practice Guide 59 (identifying situations where “two petitions . . . may be needed”). Patent Owner has asserted 166 claims in the co-pending district court litigation, and Petitioner challenges 91 unique claims in these petitions. See Ranking Notice 2; Ranking Response 2. Also, the vast majority of the challenged claims are asserted in litigation. See Ranking Response 2; Ex. 2004, 3. As a result, we agree that this is the type of “rare” situation where multiple parallel petitions are necessary. Petitioner’s primary argument is that seven petitions were required because the common sections needed to be repeated in each petition, which left few words for arguments directed to new claims (given word count limits). See Ranking Notice 2–3. But this argument is premised on an assumption that these common sections “require[d] approximately 8,350 words” (id. at 3), and Petitioner has not persuasively shown that so many words were actually required for these sections. Petitioner includes no explanation or justification of the length of the sections, but instead, it simply assumes that the words used were required. Having reviewed the analysis in those sections, we do not agree. In other words, although we agree that the common sections needed to be repeated in each petition (and that this reduced the number of words available for other analysis), we are not persuaded that the common sections required approximately 8,350 words. A petitioner is certainly entitled to allocate its words as it sees fit, and we typically have no reason to evaluate those strategic decisions; however, we agree with Patent Owner (see Ranking Response 3) that Petitioner cannot justify a large number of petitions by claiming that it needed additional words for its analysis (given the Board’s word count limits) unless Petitioner’s analysis was concise. 10 A petitioner is not entitled to an unlimited number of petitions (see Trial Practice Guide 59–61); instead, we determine whether the circumstances justify additional petitions (see id. at 59–60). This approach conforms with the rationale behind imposing a word count limit on petitions. See id. at 39 (discussing the reasons for establishing word count limits and urging parties to present “concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.”). i.e., the analysis of claim 2, the summary of the ’754 patent and prior art, the articulation of the level of skill in the art and claim construction, and the other preliminary comments—and we are not persuaded that they are sufficiently concise to support Petitioner’s argument. Claim 2 is only fifteen lines long, and its technology is relatively simple, yet Petitioner’s analysis of this claim stretches for seventeen pages. See Pet. 24–41. Petitioner provides no general information about the technology and submits that no claims need to be construed (id. at 7), yet Petitioner provides a five-page summary of the ’754 patent and its prosecution history (see id. at 2–6). Also, Petitioner provides a twelve-page summary of Ahn and Chaudhri (see id. at 7–19), despite the fact that neither reference is particularly long. Indeed, as Patent Owner notes, Petitioner was able to remove nearly 1,000 words from these common sections in at least one of the petitions. See Ranking Response 3–4. Because Petitioner’s analysis in the common sections does not appear to be concise, we are not persuaded that Petitioner’s use of approximately 8,350 words in those sections justifies the large number of petitions.” slip op. at 11
Discretionary denialPatents in suitUS 10,656,754 - Apple Inc. v. Smith Interface Technologies, LLCInstitution deniedPTAB · Feb 13, 2025 · IPR2024-01086 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of review of claims 2, 8, 10, 16, 24, 26, and 224 because this petition ranked last among seven parallel petitions.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Petitioner’s primary argument is that seven petitions were required because the common sections needed to be repeated in each petition, which left few words for arguments directed to new claims (given word count limits). See Ranking Notice 2–3. But this argument is premised on an assumption that these common sections “require[d] approximately 8,350 words” (id. at 3), and Petitioner has not persuasively shown that so many words were actually required for these sections. Petitioner includes no explanation or justification of the length of the sections, but instead, it simply assumes that the words used were required. Having reviewed the analysis in those sections, we do not agree. In other words, although we agree that the common sections needed to be repeated in each petition (and that this reduced the number of words available for other analysis), we are not persuaded that the common sections required approximately 8,350 words. A petitioner is certainly entitled to allocate its words as it sees fit, and we typically have no reason to evaluate those strategic decisions; however, we agree with Patent Owner (see Ranking Response 3) that Petitioner cannot justify a large number of petitions by claiming that it needed additional words for its analysis (given the Board’s word count limits) unless Petitioner’s analysis was concise.” slip op. at 12
Discretionary denialPatents in suitUS 10,656,754 - Apple Inc. v. Smith Interface Technologies, LLCInstitution deniedPTAB · Feb 13, 2025 · IPR2024-01118 · APJ Nathan A Engels · IPR · Institution
The Board denied institution of IPR2024-01118, finding seven parallel petitions unjustified and exercising discretion to deny this sixth-ranked petition.
RulingsInstitution decision- Parallel petitionsInstitution denied
“Petitioner’s primary argument is that seven petitions were required because the common sections needed to be repeated in each petition, which left few words for arguments directed to new claims (given word count limits). See Ranking Notice 2–3. But this argument is premised on an assumption that these common sections “require[d] approximately 8,350 words” (id. at 3), and Petitioner has not persuasively shown that so many words were actually required for these sections. Petitioner includes no explanation or justification of the length of the sections, but instead, it simply assumes that the words used were required. Having reviewed the analysis in those sections, we do not agree. In other words, although we agree that the common sections needed to be repeated in each petition (and that this reduced the number of words available for other analysis), we are not persuaded that the common sections required approximately 8,350 words. A petitioner is certainly entitled to allocate its words as it sees fit, and we typically have no reason to evaluate those strategic decisions; however, we agree with Patent Owner (see Ranking Response 3) that Petitioner cannot 12 A petitioner is not entitled to an unlimited number of petitions (see Trial Practice Guide 59–61); instead, we determine whether the circumstances justify additional petitions (see id. at 59–60). This approach conforms with the rationale behind imposing a word count limit on petitions. See id. at 39 (discussing the reasons for establishing word count limits and urging parties to present “concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.”). words for its analysis (given the Board’s word count limits) unless Petitioner’s analysis was concise. As a consequence, we reviewed the content of the common sections— i.e., the analysis of claim 2, the summary of the ’754 patent and prior art, the articulation of the level of skill in the art and claim construction, and the other preliminary comments—and we are not persuaded that they are sufficiently concise to support Petitioner’s argument. Claim 2 is only fifteen lines long, and its technology is relatively simple, yet Petitioner’s analysis of this claim stretches for seventeen pages. See Pet. 26–43. Petitioner provides no general information about the technology and submits that no claims need to be construed (id. at 8–9), yet Petitioner provides a six-page summary of the ’754 patent and its prosecution history (see id. at 3–8). Also, Petitioner provides a twelve-page summary of Ahn and Chaudhri (see id. at 9–21), despite the fact that neither reference is particularly long. Indeed, as Patent Owner notes, Petitioner was able to remove nearly 1,000 words from these common sections in at least one of the petitions. See Ranking Response 3–4. Because Petitioner’s analysis in the common sections does not appear to be concise, we are not persuaded that Petitioner’s use of approximately 8,350 words in those sections justifies the large number of petitions.” slip op. at 12
Discretionary denialPatents in suitUS 10,656,754 - PTAB · Feb 13, 2025 · IPR2024-01115 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds after finding a reasonable likelihood that Apple would prevail on at least one claim.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“petition is warranted given the number of claims at issue. See Trial Practice Guide 59 (identifying situations where “two petitions . . . may be needed”). Patent Owner has asserted 166 claims in the co-pending district court litigation, and Petitioner challenges 91 unique claims in these petitions. See Ranking Notice 2; Ranking Response 2. Also, the vast majority of the challenged claims are asserted in litigation. See Ranking Response 2; Ex. 2004, 3. As a result, we agree that this is the type of “rare” situation where multiple parallel petitions are necessary. We do not agree, however, that seven petitions are justified.8” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’754 patent on all grounds of unpatentability presented in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The portion of the definition proposed by the Petitioner requiring a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers (Pet. 6) appears to be commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is considered by Petitioner to be “an advanced-level degree” we do not adopt the portion of Petitioner’s proposed definition relating to the substitution of years of experience for “an advanced-level degree” at this time.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“We note that Petitioner presents arguments and evidence regarding “blur[ring] . . . at least a portion of” an object, as recited in independent object because of the display of a semitransparent foreground object would have been “a type of blurring”. Pet. 32–33 (citing Ex. 1001, 99:51–53; Ex. 1004 ¶ 70; Ex. 1009, 3, 6; Ex. 1003 ¶ 93). Petitioner asserts that one of ordinary skill would have understood “blur” to mean “make or become unclear or less distinct” and that the ’754 patent, in a dependent claim, recites that a blur “includes changing a translucency” of an overlaying object. Id. (citing Ex. 1001, 99:51–53). Patent Owner does not address this contention. On the present record, Petitioner’s proposed construction appears correct and, for purposes of institution, we construe the blurring of an object as displaying that object with less detail. Otherwise, for institution and on the present record, we determine that none of the claim terms from the related litigation require construction, and neither do any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need 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 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,656,754 - PTAB · Feb 13, 2025 · IPR2024-01116 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood of success for the Ahn and Chaudhri obviousness challenge.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“II. DISCRETIONARY DENIAL Petitioner, in its Ranking Notice, ranks this Petition second on its list of petitions filed challenging claims of the ’754 patent. Ranking Notice 1–2. Patent Owner agrees that “this may be one of the ‘rare’ situations that requires ‘two petitions.’” Ranking Response 1–2 (quoting PTAB Consolidated Trial Practice Guide (Nov. 2019) (“Trial Practice Guide”),5 59). Our complete analysis of this issue is provided in our decisions on institutions in other proceedings, such as IPR2024-01086. However, because Patent Owner does not argue against the institution of two petitions in this situation, and because this Petition is ranked second, we do not reproduce that analysis here.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine that Petitioner has sufficiently shown how Ahn teaches or suggests limitation 2.d of claim 2, and that the proposed combination of Ahn and Chaudhri teaches or suggests this limitation.” slip op. at 21
- Skill levelOther
“The portion of the definition proposed by the Petitioner requiring a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers (Pet. 6) appears to be commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is considered by Petitioner to be “an advanced-level degree” we do not adopt years of experience for “an advanced-level degree” at this time.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“blur[ring] . . . at least a portion of” an object, as recited in independent claims 2 and 225, and argues that displaying less detail in a portion of a background object because of the display of a semitransparent foreground object would have been “a type of blurring”. Pet. 32–33 (citing Ex. 1001, 99:51–53; Ex. 1004 ¶ 70; Ex. 1009, 3, 6; Ex. 1003 ¶ 93). Petitioner asserts that one of ordinary skill would have understood “blur” to mean “make or become unclear or less distinct” and that the ’754 patent, in a dependent claim, recites that a blur “includes changing a translucency” of an overlaying object. Id. (citing Ex. 1001, 99:51–53). Patent Owner does not address this contention. On the present record, Petitioner’s proposed construction appears correct and, for purposes of institution, we construe the blurring of an object as displaying that object with less detail. Otherwise, for institution and on the present record, we determine that none of the claim terms from the related litigation require construction, and neither do any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need be construed, and only to the extent slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,656,754 - Apple Inc. v. Smith Interface Technologies, LLCInstitution deniedPTAB · Feb 13, 2025 · IPR2024-01117 · APJ Sharon Fenick · IPR · Institution
The Board discretionarily denied institution because this petition ranked fifth among seven parallel petitions challenging the patent.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“petition is warranted given the number of claims at issue. See Trial Practice Guide 59 (identifying situations where “two petitions . . . may be needed”). Patent Owner has asserted 166 claims in the co-pending district court litigation, and Petitioner challenges 91 unique claims in these petitions. See Ranking Notice 2; Ranking Response 2. Also, the vast majority of the challenged claims are asserted in litigation. See Ranking Response 2; Ex. 2004, 3. As a result, we agree that this is the type of “rare” situation where multiple parallel petitions are necessary. Petitioner’s primary argument is that seven petitions were required because the common sections needed to be repeated in each petition, which left few words for arguments directed to new claims (given word count limits). See Ranking Notice 2–3. But this argument is premised on an assumption that these common sections “require[d] approximately 8,350 words” (id. at 3), and Petitioner has not persuasively shown that so many words were actually required for these sections. Petitioner includes no explanation or justification of the length of the sections, but instead, it simply assumes that the words used were required. Having reviewed the analysis in those sections, we do not agree. In other words, although we agree that the common sections needed to be repeated in each petition (and that this reduced the number of words available for other analysis), we are not persuaded that the common sections required approximately 8,350 words. A petitioner is certainly entitled to allocate its words as it sees fit, and we typically have no reason to evaluate those strategic decisions; however, we agree with Patent Owner (see Ranking Response 3) that Petitioner cannot justify a large number of petitions by claiming that it needed additional words for its analysis (given the Board’s word count limits) unless Petitioner’s analysis was concise.” slip op. at 11
Discretionary denialPatents in suitUS 10,656,754 - PTAB · Feb 13, 2025 · IPR2024-01119 · APJ Nathan A Engels · IPR · Institution
The Board instituted review of claims 1, 2, and 208–216 on all grounds, finding a reasonable likelihood that claims 1 and 2 are unpatentable over Ahn, Chaudhri, and Shiplacoff.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’754 patent on all grounds of unpatentability presented in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“II. DISCRETIONARY DENIAL Petitioner, in its Ranking Notice, ranks this Petition first on its list of petitions filed challenging claims of the ’754 patent. Ranking Notice 1–2. Patent Owner agrees that “this may be one of the ‘rare’ situations that requires ‘two petitions.’” Ranking Response 1–2 (quoting PTAB Consolidated Trial Practice Guide (Nov. 2019) (“Trial Practice Guide”),6 59). Our complete analysis of this issue is provided in our decisions on institutions in other proceedings, such as IPR2024-01086. However, because Patent Owner does not argue against the institution of at least one petition in this situation, and because this Petition is ranked first, we do not reproduce that analysis here.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The portion of the definition proposed by the Petitioner requiring a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers (Pet. 4) appears to be commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is the portion of Petitioner’s proposed definition relating to the substitution of years of experience for “an advanced-level degree” at this time.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We note that Petitioner presents arguments and evidence regarding “blur[ring] . . . at least a portion of” an object, as recited in independent claims 1 and 2, and argues that displaying less detail in a portion of a background object because of the display of a semitransparent foreground object would have been “a type of blurring”. Pet. 26–27 (citing Ex. 1001, 99:51–53; Ex. 1004 ¶ 70; Ex. 1009, 3, 6; Ex. 1003 ¶ 93). Petitioner asserts that one of ordinary skill would have understood “blur” to mean “make or become unclear or less distinct” and that the ’754 patent, in a dependent claim, recites that a blur “includes changing a translucency” of an overlaying object. Id. (citing Ex. 1001, 99:51–53). Patent Owner does not address this contention. On the present record, Petitioner’s proposed construction appears correct and, for purposes of institution, we construe the blurring of an object as displaying that object with less detail. Otherwise, for institution and on the present record, we determine that none of the claim terms from the related litigation require construction, and neither do any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,656,754 - Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · Feb 10, 2025 · IPR2023-01213 · APJ Brian D Range · IPR · Final written decision
Claims 1, 2, 10, 12, 13, 21, and 22 are unpatentable as obvious over Crane and Spain; claim 11 is dismissed as moot.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“at the time the application was filed, we consider the level of ordinary skill in the pertinent art at the critical time. Graham, 383 U.S. at 17. The resolution of this question is important because it allows us to “maintain[] objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“after November 13, 2018, a patent claim shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (as amended Oct. 11, 2018). This rule adopts the same claim construction standard used by Article III federal courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. See Phillips, 415 F.3d at 1312–13.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“Pet. 15–18. Petitioner’s proposed constructions are consistent with the claim construction decision from related litigation or the parties’ prior stipulations regarding claim construction. Id.; Ex. 1023 (parties’ stipulation); Ex. 1027 (parties’ stipulation); Ex. 1028, pp. 24–32 (District Court order). Patent Owner does not dispute Petitioner’s proposed claim construction. PO Resp. passim. We note that, the District Court held, in a non-final order, that claims 1 and 12 were indefinite because of the term “in proximity.” Ex. 1028, 24– 28. The District Court, however, did not issue a final ruling with respect to claims 1 and 12 because the parties narrowed the dispute concerning the ’784 Patent to only claim 11. Ex. 2018, ¶ 3. We also note that we do not need to assess whether or not the term “in proximity” renders claims 1 and 12 indefinite to assess the Petition. Rather, we agree with Petitioner that the “in proximity” language is at least broad enough to “encompass” the matter set forth in Petitioner’s claim construction. See Pet. 17, 37–41. This is sufficient definition to make it logically possible to reach the merits of Petitioner’s challenge. See Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 813 (Fed. Cir. 2021) (holding that indefiniteness only precludes a patentability determination 102 or 103 if the indefiniteness makes it “logically impossible” to reach such a decision).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner argues that it would have been obvious to implement Spain’s location determination system as part of Crane’s system and that such an implementation would have a reasonable expectation of success. Pet. 26 (citing Ex. 1008 ¶¶ 111–112). Patent Owner does not dispute Petitioner’s contentions regarding this recitation. Based on the entire trial record, we agree with Petitioner’s analysis and credit Mr. William’s testimony supporting Petitioner’s position. Thus, in view of the evidence of record, we find that Crane and Spain disclose the preamble of recitation 1.1.” slip op. at 20
Patent outcomesUS 9,097,784 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,097,784 - PTAB · Jan 28, 2025 · IPR2024-01137 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR of claims 1–7 and 9–23 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Our consideration of discretionary denials is guided by the Director’s Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued on June 21, 2022 (“Memorandum”).7 The Memorandum states that, consistent with Sotera Wireless, Inc. v. Massimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential), “the 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 grounds that could have reasonably been raised before the PTAB.” Memorandum, 3 (footnote and emphasis omitted).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c. Discussion At this stage, we preliminarily determine Petitioner has shown that Nakajima teaches or reasonably suggests each element of claim 1, but we encourage the parties to develop the record regarding the meaning of “pivotal about an axis” as recited in Limitation 1[b][3][i] during the trial phase. As cited by Petitioner, from the closed position, for example, the Nakajima’s mouthpiece would appear to move based on clockwise rotation about hinge shaft 19. Pet. 35. Patent Owner appears correct that at some point in the opening (or closing) process, Nakajima’s mouthpiece additionally moves based on rotation about protrusions 25. Prelim. Resp. 44–45. At this stage, we preliminarily determine that such additional rotation is not foreclosed by the plain language of the claims.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have had “an undergraduate degree in mechanical engineering or equivalent coursework, and a year or more of experience in designing, prototyping, and/or manufacturing fluid containers or similar products.” Pet. 18 (citing Ex. 1003 ¶ 26). Patent Owner states that it applies the level of skill set forth in the Petition. Prelim. Resp. 35. At this stage, we apply Petitioner’s proposed definition, as it appears reasonable and consistent with the level of skill reflected in the asserted prior art and the ’255 patent. D. Claim Construction” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner contends that “adapted to” in independent claims 1 and 20 means “‘designed or configured to’ and is not satisfied by mere hypothetical capability.” Prelim. Resp. 36; see Prelim. Resp. 36–41. We address Patent Owner’s arguments below with our discussion of Petitioner’s Ribartis-based arguments. Based on the current record, however, we determine that it is not necessary to provide an express interpretation of any claim terms at this stage of the proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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)). E. Alleged Obviousness” slip op. at 8
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,676,255 - PTAB · Jan 27, 2025 · IPR2024-01085 · APJ Barbara A Benoit · IPR · Institution
The Board instituted IPR on claims 1–4, 6–10, 17, 19, 22–26, 28–30, 32, 33, 36, 41, 48, 58–62, 64, 65, 67, 69, 70, 73, 77, 82, and 83 on all asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314, which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner indicates it “does not necessarily agree with all aspects of Petitioner’s proposed level of ordinary skill, but does not believe that resolving that level is necessary to resolve the issues raised in this preliminary response.” Prelim. Resp. 4. Dr. Davis indicates that his opinions provided in his declaration in support of Patent Owner’s Preliminary Response are “provided from the perspective of the POSITA” proposed by Dr. Cockburn. Ex. 2001 ¶ 24 (citing Ex. 1003 ¶ 26). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the level reflected by the ’580 patent and the prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s definition of the level of ordinary skill for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner contends “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. Similarly, Patent Owner indicates that no formal constructions are necessary at this point in the proceeding. Prelim. Resp. 3. We agree with the parties that no terms need to be construed expressly for this Decision. We discuss claim interpretation to the extent necessary in the context of analyzing the asserted grounds to determine whether to institute trial.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner contends that “Petitioner’s alleged motivation for modifying Ramos’ Zlider to be transparent is superficial and conclusory.” Prelim. Resp. 24; see generally Prelim. Resp. 24–26. As noted above, Petitioner relies on evidence from Ording itself and Dr. Cockburn’s testimony that relies on evidence to support its conclusion. Thus, we do not agree with Patent Owner that Petitioner’s motivation is insufficient for institution. Patent Owner also argues, relying on Dr. Davis’ declaration testimony, that the Vernier on a semitransparent Zlider widget would be “completely illegible” in some circumstances “rendering the very core of Ramos’ work unusable.” Prelim. Resp. 24–25 (citing Ex. 2001 ¶ 88); see Ex. 2001 ¶ 88 (not adding reasoning or evidence beyond that in the Patent Owner Preliminary Response). On this preliminary record, it would appear that when the Zlider widget and the portion of the image underlying the Zlider widget are the same color, the semitransparent Zlider widget may not work as well as when the Zlider widget and the underlying image are different colors. That does not outweigh, for purposes of determining whether to institute trial, the prior art evidence that Petitioner offers of the from Ording and other prior art references on which Dr. Cockburn’s declaration testimony relies. Ex. 1003 ¶ 66 (citing Ex. 1025 ¶¶ 77, 94, 101; Ex. 1026 ¶¶ 153, 162); see Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799– 800 (Fed. Cir. 2021) (determining that a showing of the obviousness in predictable use of prior art elements according to their established functions requires only a showing that the combination be a suitable option, rather than a showing that it is the best option). Petitioner also contends, relying on declaration testimony from Dr. Cockburn, that one of ordinary skill would have had a reasonable expectation of success in combining the references in the manner proposed by Petitioner. Pet. 33–34. Petitioner contends that implementing the Zlider widget “described in the Ramos Paper and Ramos Video in a device, as taught by Ording, would have required only routine knowledge well within the skill of a POSITA” and would involve “combining prior art elements according to known methods to yield the predictable results” described by Petitioner’s proposed combination of the references. Id. (citing Ex. 1003 ¶ 67). Petitioner’s support for reasons one of ordinary skill would have made” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,649,580
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.