- PTAB · Mar 16, 2023 · IPR2022-01391 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR on claims 30–33, 35, 37–40, 43, 45–48, 51, 53, 54, 61, 62, 64, 65, 67, 69, 70, 72, and 75 on all petitioned grounds, and joined Samsung to IPR2022-01232.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons expressed below, we (1) institute inter partes review on the same grounds instituted in the Meta IPR, and (2) grant the Motion, subject to the conditions set forth below. B. Related Proceedings” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We decline to exercise our discretion under Fintiv to deny institution of inter partes review. On June 21, 2022, the Director of the USPTO issued an Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf (the “Interim Procedure”). The Interim Procedure provides that “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 7. Here, Petitioner stipulates that it “will not pursue the grounds raised, or that reasonably could have been raised, in this IPR in the parallel litigation if IPR is instituted.” Pet. 9; Reply 1. We therefore adhere to the Interim Procedure in this Decision and decline to exercise our discretion to deny institution of inter partes review upon this basis.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Based on our review of the before us, we find that Petitioner demonstrates that allowing it to join the Meta IPR as a party will not materially lengthen the schedule, increase cost, or add to the complexity of briefing or discovery in the Meta IPR. Accordingly, we grant Petitioner’s Motion and add it as a party to the Meta IPR.” slip op. at 8
Discretionary denialPatents in suitUS 8,630,234 - PTAB · Mar 16, 2023 · IPR2022-01393 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, and granted Samsung’s motion to join the Meta IPR as a petitioner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons expressed below, we (1) institute inter partes review on the same grounds instituted in the Meta IPR, and (2) grant the Motion, subject to the conditions set forth below. B.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, Petitioner’s Motion requests no more than the statute allows. Petitioner represents that the current “Petition and the . . . Petition [in the Meta IPR] challenge the same claims, on the same grounds, and rely on the same prior art and evidence, including an identical declaration from the same expert.” Mot. 1. Furthermore, Petitioner agrees that, if joined as a party to the Meta IPR, “Petitioner will act as ‘understudy’ and will not assume an active role unless Meta ceases to participate” in the Meta IPR, “Meta will maintain the lead role in the proceeding so long as it is a party to the proceeding,” and “Petitioner will not seek additional depositions or deposition time.” Mot. 2.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We decline to exercise our discretion under Fintiv to deny institution of inter partes review. On June 21, 2022, the Director of the USPTO issued an Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf (the “Interim Procedure”). The Interim Procedure provides that “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 7. Here, Petitioner stipulates that it will not pursue the grounds raised, or that reasonably could have been raised, in this IPR in the parallel litigation if IPR is instituted. Pet. 9; Reply 1. We therefore adhere to the Interim Procedure in this Decision and decline to exercise our discretion to deny institution of inter partes review upon this basis.” slip op. at 7
- Other 314aDecided for petitioner
“Patent Owner argues by implication that the Petition must set forth “compelling evidence of unpatentability” to avoid analysis of the Fintiv factors for deciding whether to exercise discretion to deny a petition. Opp. 13. Patent Owner’s argument is flawed for two reasons. First, as we discuss immediately above, even applying the Fintiv framework for deciding whether to discretionarily deny the Petition, we decline to exercise such discretion. Second, the Interim Procedure does not impose a requirement that a petition must always present compelling evidence of unpatentability to warrant institution. Rather, the Interim Procedure merely indicates that whenever a petitioner adduces compelling evidence of unpatentability, panels will not discretionarily deny the petition under Fintiv. Interim Procedure 2. D. Whether a Potential Denial of the Petition in the Meta IPR Justifies” slip op. at 8
Discretionary denialPatents in suitUS 10,880,721 - PTAB · Mar 16, 2023 · IPR2022-01392 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1, 2, 6, 9, 14, 15, 16, 20, 25, 34, 38, 39, 43, 45, 46, 49, 50, 135, 136, and 140 on all petitioned grounds, and granted joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons expressed below, we (1) institute inter partes review on the same grounds instituted in the Meta IPR, and (2) grant the Motion, subject to the conditions set forth below. B.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Section 315(c) “authorizes joinder of a person as a party, not ‘joinder’ of two proceedings” and “does not authorize the joined party to bring new issues from its new proceeding into the existing proceeding.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020). Here, Petitioner’s Motion requests no more than the statute allows. Petitioner represents that the current “Petition and the . . . Petition [in the Meta IPR] challenge the same claims, on the same grounds, and rely on the same prior art and evidence, including an identical declaration from the same expert.” Mot. 1. Furthermore, Petitioner agrees that, if joined as a party to the Meta IPR, “Petitioner will act as ‘understudy’ and will not assume an active role unless Meta ceases to participate” in the Meta IPR, “Meta will maintain the lead role in the proceeding so long as it is a party to the proceeding,” and “Petitioner will not seek additional depositions or deposition time.” Mot. 2.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We decline to exercise our discretion under Fintiv to deny institution of inter partes review. On June 21, 2022, the Director of the USPTO issued an Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf (the “Interim Procedure”). The Interim Procedure provides that “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 7. Here, Petitioner stipulates that it will not pursue the grounds raised, or that reasonably could have been raised, in this IPR in the parallel litigation if IPR is instituted. Pet. 9; Reply 1. We therefore adhere to the Interim Procedure in this Decision and decline to exercise our discretion to deny institution of inter partes review upon this basis.” slip op. at 7
- Other 314aDecided for petitioner
“Patent Owner argues by implication that the Petition must set forth “compelling evidence of unpatentability” to avoid analysis of the Fintiv factors for deciding whether to exercise discretion to deny a petition. Opp. 13. Patent Owner’s argument is flawed for two reasons. First, as we discuss immediately above, even applying the Fintiv framework for deciding whether to discretionarily deny the Petition, we decline to exercise such discretion. Second, the Interim Procedure does not impose a requirement that a petition must always present compelling evidence of unpatentability to warrant institution. Rather, the Interim Procedure merely indicates that whenever a petitioner adduces compelling evidence of unpatentability, panels will not discretionarily deny the petition under Fintiv. Interim Procedure 2. D. Whether a Potential Denial of the Petition in the Meta IPR Justifies” slip op. at 8
Discretionary denialPatents in suitUS 10,880,721 - PTAB · Mar 16, 2023 · IPR2022-01390 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted inter partes review of claims 1–3, 6, 10, 11, 19–22, 24, 25, 28, and 29 on all petitioned grounds and granted Samsung’s motion to join the Meta IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any 1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102 and 103 that became effective March 16, 2013. Because the application for the ’234 patent was filed on July 28, 2009, we apply the pre-AIA versions of §§ 102, 103. 2 U.S. Patent No. 7,668,159 B2 (Ex. 1005, “Buckley”). 3 U.S. Patent No. 8,731,163 B1 (Ex. 1009, “Bates”). response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons expressed below, we (1) institute inter partes review on the same grounds instituted in the Meta IPR, and (2) grant the Motion, subject to the conditions set forth below. B. Related Proceedings” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Patent Owner argues that we should deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 2–3 (PTAB Mar. 20, 2020) (precedential). Opp. 7–12. Patent Owner points to the Litigation. See supra Part I.B. We decline to exercise our discretion under Fintiv to deny institution of inter partes review. On June 21, 2022, the Director of the USPTO issued an Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf (the “Interim Procedure”). The Interim Procedure provides that “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 7. Here, Petitioner stipulates that it “will not pursue the grounds raised, or that reasonably could have been raised, in this IPR in the parallel litigation if IPR is instituted.” Pet. 9; Reply 1. We therefore adhere to the Interim Procedure in this Decision and decline to exercise our discretion to deny institution of inter partes review upon this basis.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Section 315(c) “authorizes joinder of a person as a party, not ‘joinder’ of two proceedings” and “does not authorize the joined party to bring new issues from its new proceeding into the existing proceeding.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020). Here, Petitioner’s Motion requests no more than the statute allows. Petitioner represents that the current “Petition and the . . . Petition [in the Meta IPR] challenge the same claims, on the same grounds, and rely on the same prior art and evidence, including an identical declaration from the same expert.” Mot. 1. Furthermore, Petitioner agrees that, if joined as a party to the Meta IPR, “Petitioner will act as ‘understudy’ and will not assume an active role unless Meta ceases to participate” in the Meta IPR, “Meta will maintain the lead role in the proceeding so long as it is a party to the proceeding,” and “Petitioner will not seek additional depositions or deposition time.” Mot. 2.” slip op. at 5
- Other 314aDecided for petitioner
“Patent Owner argues by implication that the Petition must set forth “compelling evidence of unpatentability” to avoid analysis of the Fintiv factors for deciding whether to exercise discretion to deny a petition. Opp. 13. Patent Owner’s argument is flawed for two reasons. First, as we discuss immediately above, even applying the Fintiv framework for deciding whether to discretionarily deny the Petition, we decline to exercise such discretion. Second, the Interim Procedure does not impose a requirement that a petition must always present compelling evidence of unpatentability to warrant institution. Rather, the Interim Procedure merely indicates that whenever a petitioner adduces compelling evidence of unpatentability, panels will not discretionarily deny the petition under Fintiv. Interim Procedure 2. D. Whether a Potential Denial of the Petition in the Meta IPR Justifies Denying the Petition in this Proceeding” slip op. at 8
Discretionary denialPatents in suitUS 8,630,234 - Early Warning Services, LLC v. Fintech Innovation Associates LLCAdverse judgmentPTAB · Feb 17, 2023 · PGR2022-00046 · APJ Robert L Kinder · PGR · Adverse judgment
The Board entered adverse judgment against Patent Owner after it disclaimed the sole challenged claim, which the Board cancelled.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id.” slip op. at 3
None - PTAB · Feb 8, 2023 · IPR2022-01335 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 19, 20, and 37–52 based on the §103 combination of Hardin and Salmre, finding a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, the arguments presented in the Preliminary Response, as well as all supporting evidence, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’447 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all Challenged Claims of the ’447 patent on the ground stated in the Petition.” slip op. at 3
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“(1) Petitioner asserts that substantially the same two claim limitations lack written description support in the ’094 application and U.S. Patent Application No. 13/856,392 (“the ’392 application”) (compare Pet. 23–29, with IPR2022-01333, Paper 4 (petition) at 23–28); (2) Petitioner asserts that because these limitations lack written description support in the ’094 and ’392 applications, the Challenged Claims are not entitled to the priority date of either of these applications and, therefore, Hardin ’665 (the pre-issuance publication of the ’094 application) is available as prior art to the Challenged Claims (compare Pet. 1, 2, 28–29, with IPR2022-01333, Paper 4 at 1, 2, 28–29);” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“(3) Petitioner asserts that the same combination of references— Hardin ’665 and Salmre—would have rendered the subject matter of the claims challenged in each petition obvious to one of ordinary skill in the art at the time of the invention (compare Pet. 29–64, with IPR2022-01333, Paper 4 at 29–66); (4) Petitioner asserts the same reasons with rational underpinning as to why one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre as proposed with a reasonable expectation of success (compare Pet. 65–71, with IPR2022-01333, Paper 4 at 66–71);” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“that we should exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (compare Prelim. Resp. 61–66, with IPR2022-01333, Paper 9 at 61–66);” slip op. at 16
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,984,447 - PTAB · Feb 8, 2023 · IPR2022-01329 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 19–28, 33, and 34, finding a reasonable likelihood that Hardin ’665 and Salmre render them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [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.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable 1 Petitioner’s Preliminary Reply is limited to the issue of discretionary denial pursuant to Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), and, particularly, the effect of Samsung’s stipulation in related litigation, in accordance with Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“(1) Petitioner asserts that substantially the same two claim limitations lack written description support in the ’094 application and U.S. Patent Application No. 13/856,392 (“the ’392 application”) (compare Pet. 23–27, with IPR2022-01327, Paper 4 (petition) at 23–27); (2) Petitioner asserts that because these limitations lack written description support in the ’094 and ’392 applications, the Challenged Claims are not entitled to the priority date of either of these applications and, therefore, Hardin ’665 (the pre-issuance publication of the ’094 application) is available as prior art to the Challenged Claims (compare Pet. 1, 2, 27–28, with IPR2022-01327, Paper 4 at 1, 2, 27–28);” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“(3) Petitioner asserts that the same combination of references— Hardin ’665 and Salmre—would have rendered the subject matter of the claims challenged in each petition obvious to one of ordinary skill in the art at the time of the invention (compare Pet. 28–62, with IPR2022-01327, Paper 4 at 28–63); (4) Petitioner asserts the same reasons with rational underpinning as to why one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre as proposed with a reasonable expectation of success (compare Pet. 62–68, with IPR2022-01327, Paper 4 at 63–69);” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“(6) Patent Owner relies on the same argument and evidence to assert that we should exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (compare Prelim. Resp. 61–66, with IPR2022-01327, Paper 9 at 61–66);” slip op. at 16
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,049,387 - PTAB · Feb 8, 2023 · IPR2022-01330 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on claims 1–10 based on the obviousness ground using Hardin ’665 and Salmre.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to all the challenged claims of the ’418 patent, namely, claims 1–10, based on the sole ground presented in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“lack written description support in U.S. Application No. 12/434,094 (“the ’094 application”) and U.S. Patent Application No. 13/856,392 (“the ’392 application”) (compare Pet. 22–26, with IPR2022-01331, Paper 4 at 22–26 (petition)); (2) Petitioner asserts that because these limitations lack written description support in the ’094 and ’392 applications, the challenged claims are not entitled to the priority date of either of these applications, and, therefore, Hardin ’665 (the pre-issuance publication of the ’094 application) is available as prior art to the challenged claims (compare Pet. 1, 2, 26–27, with IPR2022-01331, Paper 4 at 1, 2, 26–27);” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“(3) Petitioner asserts that the same combination of references— Hardin ’665 and Salmre—would have rendered the subject matter of the claims challenged in each petition obvious to one of ordinary skill in the art at the time of the invention (compare Pet. 27–70, with IPR2022-01331, Paper 4 at 27–69); (4) Petitioner asserts the same reasons with rational underpinning as to why one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre as proposed with a reasonable expectation of success (compare Pet. 64–70, with IPR2022-01331, Paper 4 at 64–69);” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“that we should exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (compare Prelim. Resp. 61–66, with IPR2022-01331, Paper 10 at 61–66);” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,779,418 - TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentablePTAB · Nov 21, 2022 · IPR2022-00245 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 2–4 are unpatentable as obvious over Lam, Enz, and Tayloe; claims 2 and 3 are also unpatentable as obvious over Tayloe and the TI Datasheet.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Neither party contends that the difference in their proposals affects the outcome of this proceeding and we do not find that it does. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of 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 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at 1366). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009)). That is precisely what the patentees did in the above-passage. Specifically, we find that they clearly set forth a definition that is different than the plain and ordinary meaning and, in so doing, clearly expressed an intent to redefine the term. That the patentees intended to redefine the term “storage module” is clearly expressed by the use of “as used herein”16 and “refers to” in the above-passage and is consistent with the patentees’ use of these same phrases when defining other terminology in the ’551 patent, as discussed above. slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Generally . . . the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” TomTom, 790 F.3d at 1323. We agree with Petitioners that “wireless modem apparatus,” as recited in the preambles of claims 2 and 3, is not limiting. In particular, “wireless modem apparatus” does not provide antecedent basis for any term subsequently recited in claims 2–4; it does not provide any essential structure because the body of the claim recites a structurally complete invention; and it is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner’s argument that the preamble is limiting because it makes clear that the input signal is input to a wireless modem apparatus is unavailing because the body of claims 2 and 3 expressly recite, as the first element, “a receiver for frequency down-converting an input signal.” See Ex. 1001, 60:48–49 (claim 2), 61:2–3 (claim 3). And, Patent Owner’s arguments make clear that its attempt to read “wireless modem apparatus” as limiting is solely for the purpose of arguing that claims 2–4 require a transmitter, which is a structural element that is not recited in the claims. See, e.g., PO Resp. 72 (arguing that Tayloe does not disclose a transmitter), 79 (raising the same arguments directed to Lam). When the patentees intended to limit a claim to a transmitter, they expressly recited a transmitter in the body of the claim. See, e.g., Ex. 1001, 61:25–57 (Claim 6 recites “[a] wireless modem apparatus, comprising,” and expressly recites “a receiver” and “a transmitter” in the body of the claim.). Accordingly, for each of these reasons, we find that “wireless modem apparatus” recited in the preambles of claims 2 and 3 is not limiting. slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“On the full record before us, none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of these additional terms. Accordingly, we need not construe them expressly to resolve the present disputes between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 24
Patent outcomesUS 7,110,444 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,444 - TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentablePTAB · Nov 21, 2022 · IPR2021-00990 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 2–4 are unpatentable under §103: claims 2–3 over Tayloe and the TI Datasheet, and claims 2–4 over Lam, Enz, and Tayloe.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s option (a) is substantially the same as Petitioners’ proposal—both require a bachelor’s degree in the same or a related subject and two additional years of related work experience. Patent Owner’s option (b) adds an additional option based on work experience in lieu of a formal degree. Neither party contends that the difference in their proposals affects the outcome of this proceeding and we do not find that it does. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of 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 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“The terms storage module and storage capacitance, as used herein, are distinguishable from the terms holding module and holding capacitance, respectively. Holding modules and holding capacitances, as used above, identify systems that store negligible amounts of energy from an under-sampled input EM signal with the intent of “holding” a voltage value. Storage modules and storage capacitances, on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal. Ex. 2029, 66:59–67 (emphases added); see Ex. 2016, 39–40 (discussing Patent Owner’s prior arguments to construe “storage module” in IPR2014- 00948). When defining certain terms in a section titled “General Terminology,” the ’551 patent repeatedly uses the phrase “when used herein” in combination with the phrase “refer(s) to.” See, e.g., Ex. 2029, 13:56–15:27 (mentioning a term followed by “when used herein,” followed by “refers to,” followed by a definition). For example, the ’551 patent states, “[t]he term digital signal, when used herein, refers to a signal that changes between discrete states, as contrasted to a signal that is continuous.” Id. at 15:7–9. As shown, the ’551 patent defines “digital signal” by stating “when used herein” followed by “refers to.” And, the same sentence also provides a comparison between “digital signal” and a signal that is continuous. Even though the passage describing “storage module” is not listed under the “General Terminology” section of the ’551 patent, the passage provides the same indications that the patentees clearly and unambiguously intended to define the term “storage module” by stating “as used herein” and “refer to”—hallmarks that the patentees were providing a lexicographic definition of the term. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 679 (Fed. Cir. 2015) (“An applicant’s use of the phrase ‘refers to’ generally indicates an intention to define a term.”) (citing In re Imes, 778 F.3d 1250, 1252–53 (Fed. Cir. 2015); Microsoft Corp. v. Int’l Trade Comm’n, 731 F.3d 1354, 1360 (Fed. Cir. 2013); Linear Tech. Corp. v. Int’l Trade Comm’n, 566 F.3d 1049, 1054 (Fed. Cir. 2009)). Additionally, as with the term “digital signal,” the above-passage provides a comparison between “storage module” and “holding module” and uses the definitions of the terms to compare and contrast them. “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at 1366). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009)). That is precisely what the patentees did in the above-passage. Specifically, we find that they clearly set forth a definition that is different than the plain and ordinary meaning and, in so doing, clearly expressed an intent to redefine the term. That the patentees intended to redefine the term “storage module” is clearly expressed by the use of “as used herein”16 and “refers to” in the above-passage and is consistent with the patentees’ use of these same phrases when defining other terminology in the ’551 patent, as discussed above.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Generally . . . the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” TomTom, 790 F.3d at 1323. We agree with Petitioners that “wireless modem apparatus,” as recited in the preambles of claims 2 and 3, is not limiting. In particular, “wireless modem apparatus” does not provide antecedent basis for any term subsequently recited in claims 2–4; it does not provide any essential structure because the body of the claim recites a structurally complete invention; and it is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner’s argument that the preamble is limiting because it makes clear that the input signal is input to a wireless modem apparatus is unavailing because the body of claims 2 and 3 expressly recite, as the first element, “a receiver for frequency down-converting an input signal.” See Ex. 1001, 60:48–49 (claim 2), 61:2–3 (claim 3). And, Patent Owner’s arguments make clear that its attempt to read “wireless modem apparatus” as limiting is solely for the purpose of arguing that claims 2–4 require a transmitter, which is a structural element that is not recited in the claims. See, e.g., PO Resp. 72 (arguing that Tayloe does not disclose a transmitter), 79 (raising the same arguments directed to Lam). When the patentees intended to limit a claim to a transmitter, they expressly recited a transmitter in the body of the claim. See, e.g., Ex. 1001, 61:25–57 (Claim 6 recites “[a] wireless modem apparatus, comprising,” and expressly recites “a receiver” and “a transmitter” in the body of the claim.). Accordingly, for each of these reasons, we find that “wireless modem apparatus” recited in the preambles of claims 2 and 3 is not limiting. slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Additional Terms Petitioners propose that we construe the following three terms: “frequency down-conversion module,” “subtractor module,” and “under-samples.” Pet. 15–18. Patent Owner responds to Petitioners’ constructions for “frequency down-conversion module” and “subtractor module.” PO Resp. 39–41. On the full record before us, none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of these additional terms. Accordingly, we need not construe them expressly to resolve the present disputes between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 24
Patent outcomesUS 7,110,444 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,444
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.