• Dji Europe B.V. v. Daedalus Blue LLCNo claims unpatentable
  PTAB · Feb 3, 2022 · IPR2020-01474 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–6 and 13–18 were not shown unpatentable because the petitioner failed to prove the asserted obviousness grounds by a preponderance of the evidence.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a skilled artisan “would have had a bachelor’s degree in aeronautical engineering, electrical engineering, computer science or equivalent training and experience, and at least two years of experience in the field of unmanned vehicles.” Pet. 7–8 (citing Ex. 1003 ¶ 20). Petitioner further contends that “[a]dditional work or research experience can substitute for less or different education, and vice-versa.” Id. at 8. Patent Owner appears to apply Petitioner’s level of ordinary skill in the art. See PO Resp. 18. Based on the complete record, we adopt Petitioner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ’232 patent and the prior art of record.” slip op. at 7

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

    “Although Petitioner provides no explicit claim construction analysis in either the Petition or the Reply, in analyzing the challenge based on Sanders, the Petition states “Sanders implemented DSAAV10 system includes two collision avoidance algorithms: the bang-bang maneuver and the continuous maneuver.”11 Pet. 21. Petitioner then contends “Sanders’ algorithm selects 10 “DSAAV” refers to the Draper Small Autonomous Air Vehicle. Ex. 1005, 21. 11 Sanders describes the bang-bang maneuver and the continuous maneuver. See Ex. 1005, 68 et. seq. a maneuver (bang-bang or continuous).” Id. at 23. Dr. Hansman likewise testifies “Sanders’ implemented DSAAV system includes two types of collision avoidance algorithms: bang-bang and continuous maneuvers” and “[t]he CAS selects one of these algorithms when an obstacle is detected.” Ex. 1003 ¶ 101. Similarly, Petitioner applies Patent Owner’s construction of selecting in analyzing Ground 5. Pet. 70–71. Thus, both Dr. Hansman and Petitioner analyze the claims using Patent Owner’s construction that both “selecting an obstacle avoidance algorithm” in claim 1 and “means for . . . selecting an obstacle avoidance algorithm” in claim 13 require selection from one or more collision avoidance algorithms. Because the Petition implicitly applies the same construction proposed by Patent Owner in both of grounds 1 and 2, there is no dispute between the parties. Consequently, we evaluate the Petition using Patent Owner’s construction of “selecting.” 37 C.F.R. § 42.104 (b)(3) (the Petition must contain a statement “[h]ow the challenged claim is to be construed”); see also 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’”) (citing 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

    “For the following reasons, we find Petitioner has not established that Sanders discloses “selecting an obstacle avoidance algorithm” as required by claim 1. The Petition specifically states that Sanders system includes “two collision avoidance algorithms: the bang-bang maneuver and the continuous maneuver” and “selects a maneuver (bang-bang or continuous).” Pet. 21, 23. Dr. Hansman, likewise, testifies Sanders “selects one of these algorithms when an obstacle is identified.” Ex. 1003 ¶ 101. Petitioner, however, does not dispute Patent Owner’s contention that Sanders only intended the continuous algorithm to be flown. See generally Pet. Reply. We now turn to the disclosure in Sanders concerning whether Sanders at least suggests that both collision avoidance algorithms would be available for selection during flight. Sanders discloses it anticipated running actual flight tests on vehicles with its CAS “in the coming year.” Ex. 1005, 136. The fact that Sanders had not yet engaged in any actual flight testing is not dispositive of whether Sanders teaches or suggests that both the bang-bang algorithm and the continuous algorithm would be available for selection during flight. After discussing the bang-bang algorithm, Sanders states that limitations of the bang-bang maneuver “sparked the design for the continuous DSAAV collision avoidance controller, described next.” Id. at 78. Sanders begins the description of the continuous controller by stating that “we wanted to eliminate the shortcomings of the open-loop controller, especially the all-ornothing behavior which gets it into trouble.” Id. Sanders also states “the continuous controller . . . will probably be used in the flight tests.” Id. at 73. Petitioner does not point to any disclosure in Sanders that it contemplated using both algorithms in upcoming flight tests nor has our independent review resulted in any disclosure from which it could be inferred that Sanders intended to include both algorithms during flight tests. In light of the foregoing, we find Petitioner has not shown that” slip op. at 16

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

    “For the following reasons, we determine that Petitioner has not established that a skilled artisan “would have been motivated to modify Duggan’s air collision avoidance component to integrate Pilley’s air collision detection processes.” Pet. 58. First, Petitioner and Dr. Hansman rely heavily on Duggan’s disclosure that its VACS architecture is “plug-n-play.” Pet. 58; Ex. 1003 ¶ 238; see also Tr. 9:12–20 (arguing “how simple the combination would be”, “Duggan has designed such that additional components can be modularly plugged into the control architecture”, “Duggan talking about how things are just plug and play”). This argument appears to assume that a skilled artisan is an automaton and any modular collision avoidance system that could be plugged in would suffice for obviousness. However, the test for obviousness is not whether a skilled artisan could plug Pilley’s air collision detection process into Duggan but rather whether a skilled artisan would have done so. In that regard, Dr. Kaputa testifies to the “difference between creating a modular function that ‘plugs-n-plays’ with an intelligent synthesizer (as discussed by Duggan) and a component such as a GPS-based collision avoidance system that relies on zone databases constructed from time varying position and state information provided by other aircraft in the region.” Ex. 2011 ¶ 80. Among the reasons cited by Dr. Kaputa to support his opinion of a difference between Duggan and Pilley is a skilled artisan would “have to ensure that all aircraft flying within the vicinity of the UAV also adhere, subscribe, and transmit data to the new GPS-based collision avoidance system in order for it to be effective.” Id. (citing Ex. 1010, 93:41–94:60); see also Ex. 1005, 76 (“It is especially important for each vehicle’s CAS to know whether the other vehicle are cooperating with them in collision avoidance.”).” slip op. at 36

  Patent outcomesUS 7,228,232 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,228,232
• Intel Corporation v. Parkervision, Inc.No claims unpatentable
  PTAB · Jan 21, 2022 · IPR2020-01302 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1, 3, 4, 7, and 9–11 were not determined unpatentable because the asserted Larson and Larson–Butler grounds did not teach sampling.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Neither party contends that the differences in proposals affect the outcome of this proceeding and we do not find that they do. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art from the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’474 patent, and the opinions of Drs. Subramanian and Steer (which, as discussed above, recognize that additional work experience can compensate for the lack of a formal degree). Accordingly, we modify our preliminary finding to include the specifics from option (b) of Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 11

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

    “Because the parties agree that the claims remaining in the trial require “sampling” and also agree that the prior art asserted in this case does not teach “sampling” (as discussed further below), we need not construe these terms expressly to resolve the controversy before us. See Vivid Techs., 200 F.3d at 803. sampling Although claim 1 does not recite “sampling” expressly, the post- institution briefs make clear that the parties agree that claim 1 and its dependent claims require sampling. In particular, Patent Owner contends, (1) “the ’474 patent pertains to a technique called sampling, which involves the use of a ‘switch’” (PO Resp. 2); (2) “all of the challenged claims are directed to a sampling system and, in particular, an energy sampling system (also known as an energy transfer system)” (id.); and (3) “[t]he challenged claims only cover energy sampling and the use of switches” (id. at 20). In its Reply, although Petitioner disagrees with Patent Owner’s interpretation of the claims as limited to energy sampling (i.e., energy transfer systems) (Pet. Reply 3–7), Petitioner contends that based on its “subsequent analysis of [Patent Owner’s] foundational ’551 patent—one of the multiple patents which the ’474 patent incorporates by reference—[Petitioner] now agrees with [Patent Owner] that the claims cover only systems that down-convert by sampling.” Pet. Reply 2. Thus, at a minimum, the parties agree that the claims at issue in this proceeding require sampling.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Discussion As discussed above, the parties now agree that (1) the claims at issue in this proceeding require “sampling” and (2) Larson alone or in combination with Butler do not disclose “sampling” and do not otherwise render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees that “the claims cover only systems that down-convert by sampling”), 13 (stating that Larson and Butler do not disclose “down-conversion by sampling” and therefore agreeing that “Larson and Butler do not invalidate those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the Board is aware, both parties agree that sampling is in the claims, and the claims are not invalid in view of all the cited prior art” (capitalization altered)). As such, based on Petitioner’s explicit admissions, Petitioner has not established by a preponderance of the evidence that (1) Larson anticipates claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “Discussion As discussed above, the parties now agree that (1) the claims at issue in this proceeding require “sampling” and (2) Larson alone or in combination with Butler do not disclose “sampling” and do not otherwise render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees that “the claims cover only systems that down-convert by sampling”), 13 (stating that Larson and Butler do not disclose “down-conversion by sampling” and therefore agreeing that “Larson and Butler do not invalidate those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the Board is aware, both parties agree that sampling is in the claims, and the claims are not invalid in view of all the cited prior art” (capitalization altered)). As such, based on Petitioner’s explicit admissions, Petitioner has not established by a preponderance of the evidence that (1) Larson anticipates claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19

  Patent outcomesUS 7,539,474 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,539,474
• Hulu, LLC / Netflix, Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Sep 27, 2021 · IPR2020-00647 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–5 and 12 were not shown unpatentable over Pyle and Marusi or Lewis and Marusi because each ground failed to establish a required claim limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we found that Petitioner’s proposal was consistent with the level of ordinary skill in the art reflected by the prior art of record and we preliminarily adopted Petitioner’s unopposed position. Inst. Dec. 8–9 (citing 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)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in adaptive streaming and content management” or “a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in adaptive streaming or content management” and that “[a] person with less education but more relevant practical experience may also meet this standard.” See Inst. Dec. 7–9 (setting forth and adopting Petitioner’s unopposed position as to the level of ordinary skill in the art) (alteration in original).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “the case law makes clear that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising’” unless an “extremely limited” exception applies. See Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016) (quoting KCJ Corp., 223 F.3d at 1356; Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). Here, claim 1 recites the transitional phrase “comprising,” meaning it is open-ended, and, therefore, the usual meaning of “a” as “one or more” would have been expected absent an extremely limited exception. In considering whether an exception applies, our review of the ’720 patent fails to indicate that the patentee intended the phrase to mean anything other than the usual meaning of “one or more.” Patent Owner asserts that “‘[t]he plain language of the claim clearly indicates only a single [list] is used’ to list multiple assets” and quotes two portions of the Specification, which state “a list of assets that satisfies criteria” and “a list of assets to which a . . . device is granted access.” PO Sur-reply 15 (quoting Ex. 1001, 12:60–67) (citing Ex. 1001, 2:23–34, 3:1–5, 4:21–23, 17:59–66). Although claim 1 of the ’720 patent recites “assets” in the plural, we fail to see how that conveys that the term “a” would have been understood as limited to “one.” Notably, neither party has identified any inconsistency, in the claims or other portions of the Specification (including the portions quoted and/or cited by Patent Owner), resulting from construing “a” as “one or more.” And, we find that there is no reason why the claims could not be met under the construction of “a” as “one or more.” Thus, we find that the ’720 patent does not “evince [ ] a clear intent to limit a or an to one.” See Convolve, 812 F.3d at 1321 (internal quotations omitted). Accordingly, we construe the term “a” in “a list of assets” as “one or more” such that the phrase “a list of assets” means “one or more list of assets.” Considering next the phrase “the list of assets” recited in limitation 1[d], the parties do not dispute that the use of the term “the” means that “the list of assets” refers back to the one or more list of assets retrieved in limitation 1[c] and discussed above. See PO Resp. 3–4; see generally Pet. Reply; PO Sur-reply 5. Similarly, the parties do not dispute that the phrase “the filtered list of assets,” recited in limitation 1[e], refers back to the list of assets resulting from the filtering step of limitation 1[d]. See PO Resp. 3–4; see generally Pet. Reply; PO Sur-reply 5. We agree with the parties that each of these phrases refers back to the previous instance of the recited terms.” slip op. at 14

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

    “Fundamentally, Petitioner fails to provide any reason in the Petition as to why one of ordinary skill in the art would have found it obvious to retrieve a list of assets based on Lewis. Instead of providing a reason as to why retrieving a list of assets would have been obvious, Petitioner points to a result achieved by Lewis—generating a dynamic manifest file that contains a list of URLs to container files containing content. In the context before us, pointing to a result to allege that a step in a process leading to the result would have been obvious is insufficient without also providing a reason with rational underpinning. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). Here, Petitioner relies upon the result of Lewis’s process—generating a dynamic manifest file containing a list of URLs—as the only basis as to why a previous step in the claim would have been obvious without providing any reason why the achieved result means the previous step would have been obvious. Further, although Petitioner cites to Dr. Reader’s declaration (Ex. 1003 ¶ 233), Dr. Reader’s testimony does not provide any further explanation or reason as to why this aspect of limitation 1[c] would have been obvious.11 Rather, the Petition’s 11 To the extent Petitioner relies upon its discussion of the combined teachings of Lewis and Marusi as set forth at the beginning of Petitioner’s discussion of this ground (see Pet. 54–57), that portion of the Petition does not provide an additional reason why retrieving a list of assets as recited in discussion appears to be exactly the same as Dr. Reader’s testimony on this point. Thus, Petitioner’s argument that it would have been obvious to retrieve a list of assets in light of Lewis is not supported sufficiently on the record before us.” slip op. at 46

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)New argument disregardedDecided for patent owner

    “In its Reply, Petitioner contends that “[c]ontrary to [Patent Owner’s] claim that Lewis does not teach a list and that there was no reason to modify Lewis’ system ([PO Resp.] 30–32), the Petition and Dr. Reader clearly explain why lists and database operations would have been obvious to a [person of ordinary skill in the art].” Pet. Reply 19 (citing Pet. 62–63; Ex. 1003 ¶¶ 237–239). Petitioner reiterates the position asserted in the Petition—that it would have been obvious to retrieve a list of assets because Lewis teaches that a dynamic manifest file contains a list of URLs to container files containing content. Id. Petitioner also contends that “Lewis itself explains that it was well-known that manifest files contain a list of media assets to be played.” Id. (citing Ex. 1006 ¶ 20 (noting that “Manifest Resp. 37–38 (citing Ex. 2010 ¶ 79). In its Reply, Petitioner responds to Patent Owner’s assertion by pointing to stored video segments 375 as assets, not just processed video segments 315a–c. Pet. Reply 19 (citing Ex. 1003 ¶¶ 230–231). In the Petition, Petitioner did not assert or rely upon stored video segments 375 as teaching the recited “assets” or “list of assets”; rather, Petitioner relied upon processed video segments 315a–c. See Pet. 62. Petitioner’s attempt to assert, for the first time, in its Reply that processed video segments 375 also teach the recited “assets” is an improper reply argument. See, e.g., Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 74, available at https://www.uspto.gov/sites/ default/files/documents/tpgnov.pdf (“Generally, a reply . . . may only respond to arguments raised in the preceding brief. . . . ‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability . . . of an original . . . claim . . . .”); see PO Sur-reply 16–18 (discussing Petitioner’s new argument). Petitioner’s attempt to (1) rely upon stored video segments 375 to teach the recited assets and (2) assert that Lewis teaches, as opposed to rendering obvious, retrieving a list of assets are both new arguments that are inappropriately raised for the first time in Petitioner’s Reply and, therefore, we disregard them. file 257 includes entries 258a through 258f”), Fig. 2 (noting that Figure 2 shows entries pointing to video segments)).” slip op. at 45

  Patent outcomesUS 9,270,720 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,270,720
• Axonics, Inc. v. Medtronic, Inc.No claims unpatentable
  PTAB · Sep 22, 2021 · IPR2020-00712 · APJ James A Tartal · IPR · Final written decision

  Claims 3–6, 9–12, and 15–18 were not shown unpatentable over Schulman, the Fischell Article, or the Fischell Article combined with Fischell ’260.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “We agree with Patent Owner that we should not address the patentability of claims 1, 2, 7, 8, 13, and 14 in this Decision. See PO Resp. 15 n.4. Rather, we treat claims 1, 2, 7, 8, 13, and 14 as if they never existed. See Gunn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”). We address the patentability only of the Challenged Claims not disclaimed. See Intel Corp. v. VLSI Tech. LLC, IPR2018-01040, Paper 36, 16 (PTAB Feb. 12, 2020) (“Consistent with other Board decisions in which some, but not all, challenged claims have been disclaimed after institution, we address the patentability only of the remaining claims.” (collecting decisions)).” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the invention “would have had at least a bachelor’s degree in electrical engineering or an equivalent as well as at least five years of experience in the industry working with implantable medical devices such as cardiac pacemakers or defibrillators.” Pet. 8. Patent Owner argues that a person of ordinary skill “would have had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or biomedical engineering) with at least two years of experience with the design of components (e.g., circuitry) for implantable medical devices and associated external devices (e.g., a charging unit),” and that “[m]ore education can substitute for practical experience and vice versa.” PO Resp. 4–5 (citing Ex. 2002 ¶¶ 21–22). Patent Owner further disagrees with Petitioner’s proposed level of skill because it does not specify “experience and background with electronics and circuitry.” Id. at 5. Patent Owner, however, further concedes that the result of this proceeding “would not be different even if Petitioner’s level of skill were to apply.” Id. (citing Ex. 2002 ¶¶ 23–24). The parties did not further address this issue at trial. See generally Pet. Reply; PO Sur-reply. Patent Owner fails to provide any rational explanation or support to show that Petitioner’s proposed level of ordinary skill—a person having a least five years of experience in the industry working with implantable medical devices such as cardiac pacemakers or defibrillators” —corresponds to a person who lacks “experience and background with electronics and circuitry.” Further, we discern no substantial difference between the parties’ proposed definitions of a person of ordinary skill in the art that impacts our determination in this Decision. We, therefore, agree with Patent Owner that our analysis in this case does not turn on which of the parties’ competing definitions of ordinary skill is applied and apply the level of ordinary skill in the art proposed by Petitioner, consistent with the Decision on Institution. See Inst. Dec. 11 (stating that “the ’148 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner” (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001))).” slip op. at 15

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

    “the [S]pecification teaches that the power source can automatically vary its power output based on multiple inputs, where each input is associated with or proportional to “said current passing through said internal battery.” (Ex. 2002 at ¶ 35.) In one example, two separate inputs are utilized in deciding how to vary the power output of the external power source 50: (1) the voltage across rechargeable power source 24; and (2) the charging current through rechargeable power source 24: If no over temperature condition exists, charging unit 50 checks (328) to determine if the voltage across rechargeable power source 24 is over a voltage at which the charging rate should begin to decrease, e.g., 4.05 volts. If the voltage across rechargeable power 24 is greater than 4.05 volts, then charging unit 50 begins to taper charging power (330). If the voltage across rechargeable power source 24 is not over 4.05 volts, charging unit 50 checks (332) to determine whether the charging current through rechargeable power source 24 is over a current rate that is not desirable, e.g., 50 milliamperes. If the charging current is over 50 milliamperes, then the charging power level is decreased (334) by an appropriate, e.g., by 35 milliwatts. (Ex. 1001 at 21:58-22:3, emphasis added.) As described in the passage above, both a voltage across the rechargeable power 8 Patent Owner’s additional citations to cases for the proposition that different claim terms are presumed to have different meanings does not support its arguments. PO Resp. 9–10 (citations omitted). As Petitioner notes, there is no dispute that “value,” “measured voltage,” and “signal proportional to said current” have different meanings. Pet. Reply 5. The issue is whether a single input can satisfy both limitations at issue. utilized to control the operation of the external charging device. A POSITA would understand that each of these two inputs is associated with or proportional to a current passing through the internal power source. (See also Ex. 1001 at 20:65-21:6; Ex. 2002 at ¶ 35.) PO Resp. 11–12. Patent Owner’s argument is persuasively supported by Dr. Mihran, who explains that a person of ordinary skill in the art would have understood the claim language requires two inputs, in part, because the Specification of the ’148 patent “provides support for the use of multiple inputs as a basis to vary power output of the power source as claimed.” Ex. 2002 ¶¶ 33, 35.” slip op. at 23

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Schulman still anticipates” claims 3, 9, and 15.9 Pet. Reply 12–14. Petitioner then proceeds to argue for the first time that features of Schulman correspond to a second input that automatically varies the power output of the external power source. Id. In so doing, Petitioner fails to meet its burden to show in the Petition “[h]ow the challenged claim is to be construed,” but instead relies on Patent Owner to show in its Response to the Petition the proper construction. 37 C.F.R. § 42.104(b)(3). Indeed, Petitioner does not argue, much less show that its “mapping” of the claims to Schulman in the Petition corresponds to two inputs that automatically vary the power output. Petitioner’s Reply is not an opportunity to advance new arguments based on new testimony in an effort to show that challenged claims are unpatentable where the proper claim construction requires additional features, such as two inputs instead of one input, contrary to the position taken by Petitioner in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (stating in regard to inter partes review that “petitioner’s petition . . . is supposed to guide the life of the litigation”); see also Sirona Dental Sys. GmbH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (stating that “[b]ecause an IPR must proceed ‘[i]n accordance with’ or ‘in conformance to’ the petition,” it would “not be proper for the Board to deviate from the grounds in the petition”) (quoting SAS Inst., 138 S. Ct. at 1357)). Patent Owner argues, and we agree, that consideration of arguments raised improperly by Petitioner for the first time in its Reply is unwarranted.” slip op. at 35

  Patent outcomesUS 8,738,148 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,738,148
• Axonics, Inc. v. Medtronic, Inc.No claims unpatentable
  PTAB · Sep 22, 2021 · IPR2020-00680 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 2, 4–6, 8–10, and 12 were not shown unpatentable because the references failed to disclose the separately required inputs or other limitations.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “Disclaimer disclaiming claims 3, 7, and 11 of the ’758 patent. PO Resp. 1; Ex. 2007; see also 35 U.S.C. § 253(a) (providing that a patentee may “make disclaimer of any complete claim” in writing with the Patent and Trademark Office, and such disclaimer “shall thereafter be considered as part of the original patent”). Patent Owner asserts that in light of the Disclaimer, claims 3, 7, and 11 are to be “treated as though they never existed.” PO Resp. 14 n.4 (citations omitted). Patent Owner further argues that we should “not address the disclaimed claims in the Final Written Decision.” Id. Petitioner does not dispute the effect of the Disclaimer. See Pet. Reply 13– 26 (arguing that the Challenged Claims not disclaimed are unpatentable). We agree with Patent Owner that we should not address the patentability of claims 3, 7, and 11 in this Decision. See PO Resp. 14 n.4. Rather, we treat claims 3, 7, and 11 as if they never existed. See Gunn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”). We address the patentability only of the Challenged Claims not disclaimed. See Intel Corp. v. VLSI Tech. LLC, IPR2018-01040, Paper 36, 16 (PTAB Feb. 12, 2020) (“Consistent with other Board decisions in which some, but not all, challenged claims have been disclaimed after institution, we address the patentability only of the remaining claims.” (collecting decisions)).” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the invention “would have had at least a bachelor’s degree in electrical engineering or an equivalent as well as at least five years of experience in the industry working with implantable medical devices such as cardiac pacemakers or defibrillators.” Pet. 7. Patent Owner argues that a person of ordinary skill “would have had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or biomedical engineering) with at least two years of experience with the design of components (e.g., circuitry) for implantable medical devices and associated external devices (e.g., a charging unit),” and that “[m]ore education can substitute for practical experience and vice versa.” PO Resp. 5 (citing Ex. 2002 ¶¶ 21, 22). Patent Owner further disagrees with Petitioner’s proposed level of skill because it does not specify “experience and background with electronics and circuitry.” Id. at 6. Patent Owner, however, further concedes that the result of this proceeding “would not be different even if Petitioner’s level of skill were to” slip op. at 15

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

    “We disagree with Petitioner’s framing of the issue, which fails to reflect Petitioner’s argument that the limitations at issue are not “separate claim limitations,” because a disclosure of one is necessarily a disclosure of the other. Specifically, according to Petitioner, the Value Limitation merely recites “value” as a genus, and the Measured Current Limitation recites “current” as a species. Pet. Reply 2, 4. Thus, Petitioner concedes its proposed construction renders the Value Limitation superfluous, because, as Petitioner recognizes, under its proposal “when the external power source automatically varies its power output based on ‘a measured current,’ it is also varying its power output based on ‘a value.’” Id. at 4–6. Petitioner is not relying on a single disclosure to satisfy two “separate claim limitations;”” slip op. at 24

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Patent Owner argues, and we agree, that consideration of arguments raised improperly by Petitioner for the first time in its Reply is unwarranted. PO Sur-reply 9–11 (citing Consolidated Trial Practice Guide (November 2019) (“CTPG”) 73 (“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.”), 74 (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing. While replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered.”) (citing Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369– 70 (Fed. Cir. 2016))). Moreover, Patent Owner identified the new arguments advanced by Petitioner, and Petitioner had the opportunity to show where the arguments were raised prior to its Reply. Paper 23, 2; Paper 26, 1–2. Instead of identifying a specific location where the argument was raised in the Petition, Petitioner broadly cites to fifty-five pages of the Petition, none of which suggest in any way that Petitioner contended that claims 1, 5, and 9 required a separate input for “a value” and “a measured current,” much less that any of the asserted references disclosed the same.” slip op. at 35

  Patent outcomesUS 8,457,758 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,457,758
• Axonics, Inc. v. Medtronic, Inc.No claims unpatentable
  PTAB · Sep 13, 2021 · IPR2020-00715 · APJ Alyssa A Finamore · IPR · Final written decision

  The Board held claims 1, 2, 5, 7, 13–15, and 18 not shown unpatentable under either §103 ground because Petitioner did not establish a motivation to combine the references.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The POSITA is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, 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.” Id.” slip op. at 13

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

    “B. Claim Construction We interpret a claim “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) (2019). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, we expressly construe the claims to the extent necessary to determine whether Petitioner has proven that the challenged claims are unpatentable. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner argues “a plurality of M tine elements” recited in independent claim 1 and “a plurality of tine elements” recited in independent claim 14 should be construed as “at least two or more structures that mount to the lead body, each structure comprising multiple tines attached to it.” Pet. 20. Patent Owner disagrees with Petitioner’s proposed construction, and also asserts the Board can resolve the dispute in this proceeding without construing these terms. PO Resp. 16–18. We agree with Patent Owner that an express construction of each of the claim terms “a plurality of M tine elements” and “a plurality of tine elements” is unnecessary to resolve the dispute. For the reasons set forth in our analysis of the asserted grounds of unpatentability, we determine that no claim term requires an express construction for us to ascertain whether Petitioner has shown the challenged claims to be unpatentable.” slip op. at 17

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

  Patent outcomesUS 8,036,756 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,036,756
• Axonics, Inc. v. Medtronic, Inc.No claims unpatentable
  PTAB · Sep 13, 2021 · IPR2020-00679 · APJ Alyssa A Finamore · IPR · Final written decision

  Claims 1, 2, 4, 7, 10–12, 14, and 18–24 were not shown unpatentable because Petitioner did not establish a reason to combine the asserted references as proposed.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Turning to the level of ordinary skill, each party’s proposed level of ordinary skill requires a combination of formal education and experience. Pet. 12 (citing Ex. 1003 ¶ 52); PO Resp. 14 (citing Ex. 2029 ¶¶ 21–22; Ex. 2030 ¶ 64). Patent Owner’s proposed level is higher than Petitioner’s proposed level in that Patent Owner’s proposed level requires a POSITA to either be a physician with at least two years of experience in sacral neuromodulation or a sacral neuromodulation lead designer working in close collaboration with such a physician. PO Resp. 14 (citing Ex. 2029 ¶¶ 21–22; Ex. 2030 ¶ 64). Drs. Slavin and Siegel testify that this requirement for a physician with at least two years of experience in sacral neuromodulation is necessary for the knowledge of human anatomy and surgical procedures involved in sacral neuromodulation lead placement. Ex. 2029 ¶ 24; Ex. 2030 ¶ 66. Mr. Pless, however, testifies that a lead designer developing leads for sacral neuromodulation would have similar knowledge: [O]ne of the things that engineers who develop products for implantation in the body pay attention to is the anatomy, and we had lots of books on anatomy, both, you know, photographic depictions as well as, you know, more schematic. You know, Netter was a great resource for that. And occasionally we would do cadaver studies as well. Ex. 2026, 24:7–15. Although a physician with at least two years of experience in sacral neuromodulation would have knowledge of human anatomy and surgical procedures involved in sacral neuromodulation lead placement, we disagree with Patent Owner that a POSITA must be a physician with at least two years of experience in sacral neuromodulation or a sacral neuromodulation lead designer working in close collaboration with such a physician to have this knowledge. In view of the foregoing, the relevant art is medical leads for sacral neuromodulation. This art is sophisticated and requires knowledge of human anatomy of the sacral area and the surgical procedures involved in sacral neuromodulation. Both lead designers and physicians work in this field. With these considerations, we find a POSITA would have had at least the following two qualifications: (1) a bachelor’s degree, or coursework equivalent, in biomedical engineering, electrical engineering, or mechanical engineering, or a medical degree, and (2) at least two years of experience researching and developing medical leads for sacral neuromodulation. We further find that more education can substitute for practical experience and vice versa.” slip op. at 14

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Regarding Patent Owner’s criticism of Mr. Pless’s testimony as not being grounded in the perspective of a POSITA, our Trial Practice Guide8 explains that there is no requirement between a declarant’s experience and the relevant field. TPG 34 (citing SEB S.A. v. Montgomery Ward & Co., 594 8 USPTO, Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019, https://www.uspto.gov/TrialPracticeGuideConsolidated (“TPG”); see also Office Patent Trial Practice Guide, November 2019 Edition, 84 Fed. Reg. 64,280 (Nov. 21, 2019) (notifying the public of the availability of the Consolidated Trial Practice Guide). F.3d 1360, 1373 (Fed. Cir. 2010)). We generally permit testimony where the declarant’s scientific, technical, or other specialized knowledge will help the Board understand the evidence or to determine a fact in issue. Id. (citing Fed. R. Evid. 702(a)). Given his education as an electrical engineer and his experience as a medical lead designer (Ex. 1003 ¶¶ 4–10), we find Mr. Pless’s testimony helpful in deciding factual issues in this proceeding. Moreover, when assigning weight to a declarant’s testimony, we consider the underlying facts or data upon which the testimony is based. TPG 40–41. In our analysis of the asserted grounds of unpatentability, we weigh Mr. Pless’s testimony accordingly.” slip op. at 15

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

    “Petitioner argues the claim term “a plurality of tine elements” should be construed as “at least two or more structures that mount to the lead body, each structure comprising of multiple tines attached to the structure.” Pet. 15. Patent Owner disagrees with Petitioner’s proposed construction, and also asserts the Board can resolve the dispute in this proceeding without construing the term. PO Resp. 16–18. We agree with Patent Owner that an express construction of the claim term “a plurality of tine elements” is unnecessary to resolve the dispute. For the reasons set forth in our analysis of the asserted grounds of unpatentability, we determine that no claim term requires an express construction for us to ascertain whether Petitioner has shown the challenged claims to be unpatentable.” slip op. at 16

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

    “Beginning with Petitioner’s reasoning premised on the references solving the same problem as the ’314 patent, Patent Owner argues none of these references solve the same problem as the ’314 patent. PO Resp. 35 (citing Ex. 2029 ¶¶ 76–83). We agree with Patent Owner. Petitioner characterizes the problem addressed in the ’314 patent as “leads adequately stimulating the nerves while limiting electrode migration” (Pet. 22), but the ’314 patent describes a more specific problem. According to the ’314 patent: [T]here remains a need in the art for a permanently implantable electrical sacral nerve stimulation lead that is capable of being passed percutaneously over a guide wire, and/or through the lumen of an introducer from the patient’s skin to locate stimulation electrodes in casual contact with a sacral nerve, that provides acute fixation with muscle and tissue layers posterior to the sacrum, and that can be bent to extend subcutaneously to the neurostimulator IPG without disturbing the fixation so that the stimulation electrodes are less likely to be dislodged during the acute recovery phase and the chronic implantation period. Ex. 1001, 5:34–44 (emphasis added). The ’314 patent addresses the need for a percutaneously implantable lead that is properly and securely positioned to provide sacral nerve stimulation, whereas the references do not. Young addresses placement of an implanted, percutaneously placed electrode system for electrical stimulation of the trigeminal sensory root for treatment of chronic facial pain. Ex. 1010, 73. Gerber contemplates the positioning and securement of an electrode that is implanted in the sacral area via a non-percutaneous surgical procedure. Ex. 1012, 2:9–13. Lindegren addresses the need for a cardiac lead that can be easily detached from the anchoring means and allow the lead to be replaced despite the anchoring means being stuck in the heart. Ex. 1013, 4:16–22. Moreover, the nature of the problem to be solved is typically pertinent to the motivation for combining the teachings of simpler mechanical technologies. Tokai, 632 F.3d at 1371 (“We have consistently stated that courts may find a motivation to combine prior art references in the nature of the problem to be solved, and that [t]his form of motivation to combine evidence is particularly relevant with simpler mechanical technologies.” (alternation in original) (citations and internal quotations omitted)). The technologies in this proceeding involve medical devices implanted in the body for neurostimulation, not simple mechanical technologies. See, e.g., Ex. 1001, 1:36–41 (describing the field of the invention for ’314 patent as “an implantable medical electrical lead having at least one stimulation electrode adapted to be implanted near the sacral nerves for stimulation of a bundle of sacral nerve fibers and a fixation mechanism for providing chronic stability of the stimulation electrode and lead”). Accordingly, Petitioner’s reasoning premised on Young, Gerber, and Lindegren solving the same problem as the ’314 patent does not persuade us that a POSITA would have had a reason to combine the teachings of the references.” slip op. at 31

  Patent outcomesUS 8,626,314 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,626,314
• Netflix Inc. / Hulu, LLC v. Divx, LLCNo claims unpatentable
  PTAB · Sep 9, 2021 · IPR2020-00646 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1, 5, 8, 9, 13–15, 18, and 21–23 were not shown unpatentable because Kaku was not established as analogous art.

  RulingsFinal written decision

  • Obviousness (§103) › Analogous artNot shown unpatentableNon analogous artNot shown unpatentable

    “A reference is considered analogous prior art: (1) if the reference is from the same field of endeavor as the claimed subject matter, or (2) if “the reference still is reasonably pertinent to the particular problem with which the inventor is involved,” even though the reference is not within the field of the inventor’s endeavor. In re Bigio, 381 F.3d at 1325. The field of endeavor test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art because of the similarity to the structure and function of the claimed invention. Bigio, 381 F.3d at 1325–27. A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. In re Clay, 966 F.2d at 659.” slip op. at 19

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

    “Petitioner proposes constructions for three claim terms, including the term “trick play functionality.” Pet. 22–23. Patent Owner argues for construction of the related claim term “the first and second indexes enabling trick play functionality.” See PO Resp. 41–49. We determine that it is not necessary to provide an express interpretation of any of those claim terms because construction of the proposed terms does not impact our determination that Petitioner has not shown that one of the prior art references is analogous to the claimed invention. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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 9

  • ExcludeMotion to exclude, deniedNot reached

    “Under the particular circumstances in this case, we need not assess the merits of Patent Owner’s Motion to Exclude. As discussed above, we have determined that Petitioner has not demonstrated by a preponderance that Kaku is analogous prior art to the ’792 patent and do not reach Petitioner’s arguments on the motivation to combine Kaku with Zetts or Seo. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 34

  • Strike new argumentNew argument disregardedGranted

    “As discussed above (supra § III.E.4.a), Petitioner’s papers fail to link Dr. Reader’s declaration testimony on the level of ordinary skill in the art to the analogous art inquiry and fail to identify a field of endeavor for the ’792 patent. We therefore agree with Patent Owner that Petitioner’s demonstrative slide 53 presents improper new arguments that have not been previously made. See Paper 38, 2 (“The parties may only rely upon evidence that has been previously submitted in the proceeding and may only present arguments that have been previously made in the submitted papers. No new evidence or arguments may be presented at the hearing.”), 5 (“Demonstratives are not a mechanism for making new arguments.”). We therefore sustain Patent Owner’s objections. We note, however, that demonstratives are not evidence. See id. at 5 (“Demonstrative exhibits used at the hearing are not evidence, nor will they be relied upon as evidence. Rather, demonstratives are visual aids to a party’s oral presentation regarding arguments and evidence previously presented and discussed in the papers”); CTPG 84 (“Demonstrative exhibits used at the final hearing are aids to oral argument and not evidence.”). In this Final Written Decision, we rely solely on the arguments properly presented in the parties’ briefs and the evidence of record, not on the demonstratives.” slip op. at 35

  Patent outcomesUS 8,472,792 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,472,792
• Netflix, Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Aug 13, 2021 · IPR2020-00511 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–3, 5, 6, 10–12, 14, and 15 were not shown unpatentable under the three § 103 grounds because the combinations did not establish the encrypted-frame limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in video encryption and cryptography or . . . a master’s degree in electrical engineering, computer science, or a similar field with a specialization in video encryption and cryptography.” Pet. 14 (citing Ex. 1003 ¶¶ 65–67). Patent Owner does not address, expressly, the level of ordinary skill in the art in its Response. See generally PO Resp. Dr. Nielson, however, applies Petitioner’s proposed level of ordinary skill in his Declaration (Ex. 2009 ¶ 34) and does not indicate that he does otherwise in his Second Declaration (see generally Ex. 2024). In our Institution Decision, we found that Petitioner’s proposal was consistent with the level of ordinary skill in the art reflected by the prior art of record and we preliminarily adopted Petitioner’s unopposed position. Inst. Dec. 10 (citing 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)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in video encryption and cryptography or . . . a master’s degree in electrical engineering, computer science, or a similar field with a specialization in video encryption and cryptography.” See Inst. Dec. 9–10 (finding the same).” slip op. at 11

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

    “Petitioner contends that “the challenged claims are invalid under their plain and ordinary (‘P&O’) meaning.” Pet. 15 (citing Ex. 1003 ¶ 99). In the Preliminary Response, Patent Owner raised the meaning of two claim terms—“user encryption key” and “content encryption key.” Prelim. Resp. 40–44, 46–48. In the Institution Decision, we addressed each term to the extent necessary to resolve the controversy presented, and we found, in each instance, that Petitioner’s mapping of the prior art to these limitations of the claims was sufficient on the record presented at the time. See Inst. Dec. 12– 15 (discussing the construction of the terms), 22–28 (discussing limitation 1[a], which includes “user encryption key”), 28–31 (discussing limitation 1[b], which includes “content encryption key”). In particular, on the preliminary record, we found that “Chen’s master key Kw teaches the recited ‘user encryption key’” (id. at 28) and “Chen’s work key Kw teaches the recited ‘content encryption key’” (id. at 30). In the Response, Patent Owner does not propose a construction for any claim term or contest our preliminary findings regarding limitations 1[a] and 1[b]. See generally PO Resp. Accordingly, we maintain and reaffirm our preliminary determinations regarding the meaning of the recited “user encryption key” and “content encryption key.” Dec. 12–15. Additionally, we need not construe other claim terms to resolve the present controversy before us.6” slip op. at 13

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

    “techniques, and standards in the industry regarding the same in an attempt to explain how one of ordinary skill in the art would have understood Chen at the time of the ’920 patent. As discussed herein, the weight of the evidence is very closely balanced. Fundamentally, however, it is Petitioner’s burden to establish how one of ordinary skill in the art would have understood Chen and the combined teachings of Chen and Grab-333. And, as we find herein based on the full record developed during trial, Petitioner does not establish that the combined teachings of Chen and Grab-333 would have met limitation 1[c]. Below, we walk through the parties’ arguments and evidence, starting with the Petition, and then we discuss our findings regarding Chen in light of the full trial record.” slip op. at 24

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “To begin, 37 C.F.R. § 42.23(b) specifies, in relevant part, that “[a] sur-reply may only respond to arguments raised in the corresponding reply and may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness.” 37 C.F.R. § 42.23(b). The Consolidated TPG repeats the above-quoted language of the rule and also explains that [s]ur-replies should only respond to arguments made in reply briefs, comment on reply declaration testimony, or point to cross-examination testimony. As noted above, a sur-reply may address the institution decision if necessary to respond to the petitioner’s reply. This sur-reply practice essentially replaces the previous practice of filing observations on cross-examination testimony. Consolidated TPG at 73–74. Accordingly, Rule 42.23(b) provides a blanket prohibition on a patentee filing exhibits with a sur-reply, as Patent Owner has done here.” slip op. at 54

  Patent outcomesUS 9,184,920 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,184,920
• Unified Patents Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Feb 8, 2021 · IPR2019-01379 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1 and 17 were not shown unpatentable over Kim and Huang because Petitioner did not establish an adequate motivation to combine their teachings.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject, and two to three years of work experience in image and/or video processing.” Pet. 15–16 (citing Ex. 1005 ¶ 42). Patent Owner neither comments on that proposal, nor proposes an alternative level of ordinary skill in the art. See generally PO Resp. 5 The burden of showing something by a preponderance of the evidence requires the trier of fact to believe that the existence of a fact is more probable than its nonexistence. Concrete Pipe & Prods. of Cal., Inc. v. Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993). Because Petitioner’s proposed definition is consistent with the cited prior art, we apply it for purposes of this Decision. In our view, moreover, the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that prior art itself can reflect an appropriate level of skill in the art at the time of the invention).” slip op. at 9

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

    “00052, which also involves the ’651 patent, the Board construed the term “level of detail” as “level of change of visual elements across adjacent pixels,” and that the same construction should apply here. PO Resp. 58–60 (citing IPR2020-00052, Paper 42). Petitioner does not propose a construction for that term, but argues that “the combined Kim and Huang teachings would determine the level of detail for adjacent pixels under Patent Owner’s ‘adjacent pixels’ construction.” Pet. Reply 5–11. Because our ultimate decision does not rest on the construction of that claim term, we do not construe the term in this proceeding. See 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.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). As part of our obviousness analysis, we address additional claim construction arguments regarding the “determining” limitation. See infra § III.E.1.a.” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “We agree with Patent Owner that these exhibits represent expressions of opinion of unnamed users that Patent Owner relies on to show cotemporaneous praise existed. These exhibits are cited in the Hanson Declaration only as evidence of industry praise, i.e., to support testimony based on his personal knowledge. See Ex. 2045 ¶ 51. And although Mr. Hanson quotes statements from these exhibits in his declaration, their relevance lies in that they allegedly reflect praise for DivX’s deblocking method. For example, the statement by user “temperance”—that Petitioner objects to as being relied on for the truth of the matter asserted (Paper 46, 1– 2)—is offered to show that “[t]here was plenty of healthy debate on the boards about the quality of the new version of the codec,” and “many commenters specifically praised the deblocking.” See Ex. 2045 ¶ 46. Moreover, it is clear that these are merely opinions of online users, not factual assertions. See id. (quoting temperance: “IMHO, DivX 6 deblocking is better (for metrics and eyes) than xvid’s”) (emphasis added); see Sonos, slip op. at 7 (separating admissible expressions of opinions that constitute praise from bare factual assertions). Other statements that Petitioner objects to (Paper 46, 2) are similarly opinions of online users, not factual assertions that Patent Owner relies upon for the truth of the matter stated therein. We are therefore not persuaded that Exhibits 2018–2030 and 2032–2033 contain inadmissible hearsay.11 See Cisco Sys., Paper 41 at 50–51 (allowing exhibits cited only as evidence of industry praise); Quanergy Sys., Inc. v. Velodyne Lidar, Inc., IPR2018-00255, 2020 WL 2595492, at *2 (PTAB May 21, 2020) (citing Asetek Danmark A/S v. CMI USA, Inc., 13-CV-00457-JST, 2014 WL 12644295, at *2 (N.D. Cal. Nov. 19, 2014)).” slip op. at 55

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner that the Petition does not detail Petitioner’s newly proposed interpretation of this claim limitation. See Pet. 29–36 (arguing only that a person of ordinary skill in the art would have recognized that Kim determines the level of detail for a region comprising an 8 x 8 block of pixels of a reconstructed video frame). On the contrary, the Petition argued: [T]he prior art cited in this Petition teaches and suggests exactly what is claimed and what allegedly distinguished the claims from Kim II: determining the level of detail of a region that includes pixels from multiple rows and multiple columns that encompass pixels immediately adjacent to at least two sides of the block boundary, and selecting a filter to apply.” Pet. 18 (emphasis added).6 Under these circumstances, we consider Petitioner’s new argument waived. See 37 C.F.R. § 42.23(b); see also Intelligent Bio-Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ 6 Petitioner refers to a different prior art reference, U.S. Patent No. 6,983,079, cited by the examiner during the prosecution of the ’651 patent, as Kim II. the ‘evidence that supports the grounds for the challenge to each claim.’”) (citing 35 U.S.C. § 312(a)(3)).” slip op. at 23

  Patent outcomesUS 8,139,651 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,139,651

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.