- PTAB · Feb 20, 2025 · IPR2024-00996 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 13–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that: [A] person of ordinary skill in the art at the time of the alleged invention (“POSITA”) would have had a bachelor’s degree or higher in electrical engineering, at least 3 years of experience designing or researching electronic circuits, and familiarity with power electronics and inductive power transfer circuits. Pet. 8 (citing Ex. 1003 ¶ 20). Patent Owner states that, “[f]or purposes of this preliminary response, Patent Owner adopts the Petitioner’s proposal.” Prelim. Resp. 17. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[a]ll claim terms should be construed according to the Phillips standard,” and “[h]ere, given the remarkable overlap between the preferred embodiment of the ’461 patent and the prior art/predictable combinations articulated in Grounds 1A–3, Petitioners submit that no claim elements need a formal construction for purposes of resolving the controversy in this proceeding.” Pet. 8. Patent Owner states that, “[t]o simplify the issues before the Board, Patent Owner has not asserted any claim constructions in this preliminary response and adopts the Petitioner’s position that ‘[a]ll claim terms should be construed according to the Phillips standard.’” Prelim. Resp. 17 (quoting Pet. 8). On this record and for purposes of this decision, we determine that no” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At this preliminary stage of the proceeding, we do not agree with Patent Owner’s arguments. Patent Owner does not cite to evidence, such as expert testimony, to support its implied argument that Olson’s measured current is “fundamentally different” from the current received by the primary coil. See Prelim. Resp. 31–32. Petitioner’s declarant, Dr. Woods, on the other hand, testifies, inter alia, that “[t]he ‘[c]urrent measured by current measure block 226 is used in the calculation of power, which as depicted in FIG. 14, measures the ‘power in’ provided to transmit block 214/primary coil 54.” Ex. 1003 ¶ 37 (citing Ex. 1004 ¶¶ 74–75, Fig. 14) (first alteration added); see also, e.g., id. ¶ 42 (Dr. Woods testifying that the measured current to the power supply “is the current driving the external antenna 52, via the transmit block 214 and to the primary coil 54.” (citing Ex. 1004 ¶¶ 74–75, 112, Fig. 14)). Paragraph 75 of Olson, cited in support of that testimony, provides: “The power in is gauged by the power generated by charging unit 50 and is determined by multiplying the voltage of the internal voltage of charging unit 50, e.g., the voltage of a battery or batteries internal to charging unit 50, by the current driving external antenna 52.” Ex. 1004 ¶ 75 (emphasis added). We note that external antenna 52 includes primary coil 54. See, e.g., Fig. 14. Dr. Woods’ testimony is, at this stage, unrebutted. Patent Owner also argues that “Petitioner fails to provide any evidence regarding the function of Olson’s microprocessor 212 in relation to measuring input power,” and that, “[w]hile Olson describes a power calculation in paragraph [0075], Olson does not describe this power calculation as performed by microprocessor 212.” Prelim. Resp. 32 (citing Pet. 16; Ex. 1004 ¶ 72) (first alteration added). At this preliminary stage of the proceeding, we do not agree with Patent Owner’s arguments regarding the microprocessor. Although Patent Owner does not bear the burden to show patentability, we observe that Patent Owner does not suggest that there is another component in Olson’s external charging device that might perform the admittedly-disclosed power calculation. See Prelim. Resp. 32–33. Dr. Woods testifies that microprocessor 212 receives the measured current and the input voltage of the charging device, and, from those values, calculates power in. See Ex. 1003 ¶¶ 43–44 (citing, inter alia, Ex. 1004 ¶¶ 71–78, Fig. 14); see also Ex. 1004 ¶ 74, Fig. 14 (Olson stating that “[c]urrent measured by current measure block 226 is used in the calculation of power in along with the voltage of batteries 160,” and Figure 14 depicting the signal from measure block 226 as an input to microprocessor 212). Dr. Woods’ testimony is, at this stage, unrebutted.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,626,461 - PTAB · Feb 20, 2025 · IPR2024-00995 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–6, 8, and 10–13 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’204 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’204 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“different from the resonant frequency of the inductive couple.” Ex. 1001, 21:16–20. The Specification then states the following: “Preferably the transmission frequency is selected to lie within one of the near-linear regions 6, 8 [of Figure 6b] where the slope of the frequency-amplitude graph is less steep.” Id. at 21:20–23; see also id. at 21:56–59 (“Referring back to FIG. 6b, the frequency of transmission is selected to be in the approximately linear region 8 of the curve between a lower frequency value of fL and an upper frequency value of fU.”9); Pet. 8 (citing the same).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,083,204 - PTAB · Feb 13, 2025 · IPR2024-01283 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1–16, finding a reasonable likelihood that the Jeffries, LaBine, and Ishaya grounds, with Cucinotta or Levy for dependent claims, would prevail.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A Person of Ordinary Skill in the Art (“POSITA”) in September 2017 would have been someone knowledgeable and familiar with network security and application isolation techniques as those are applied in the context of network security available in the 2010s. That person would have a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent training, and approximately two years of experience working in the field of network security. Pet. 14. Petitioner further contends that “[a]dditional work experience can substitute for educational background, and vice versa.” Id. (citing Ex. 1003 ¶¶ 20–22). At least at this stage of this proceeding, Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. Determining the level of ordinary skill in the art involves various 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.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the assessment offered by Petitioner, as it is not disputed by the Patent Owner and is consistent with the ’601 patent and the asserted prior art.10” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “for the purposes of this proceeding and the grounds presented herein, no claim term requires express construction.” Pet. 15. At least at this stage of this proceeding, Patent Owner does not address claim construction. See generally Prelim. Resp. Accordingly, at this stage, no need exists to expressly construe any claim terms to resolve the parties’ disputes.11 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))). D. Asserted Obviousness of Claims 1–4, 7, 9–12, and 15 Based on Jeffries,” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“skilled artisan would have been motivated to combine the relevant teachings of Jeffries and LaBine with a reasonable expectation of success. See Pet. 28–32 (citing Ex. 1003 ¶¶ 62–73; Ex. 1005, code (57), 2:42–49, 3:48– 51, 5:51–54, 9:26–33, 10:54–63, 12:17–22, 15:26–30, 16:37–42; Ex. 1006, code (57), ¶¶ 4, 45, 46, 50, 78–84; Ex. 1036 ¶ 4). With regard to motivation to combine the teachings of Jeffries and LaBine, the Petition provides:” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,223,601 - PTAB · Feb 13, 2025 · IPR2024-01282 · APJ John R Kenny · IPR · Institution
The Board instituted IPR on claims 1 and 2 under both §103 grounds, finding a reasonable likelihood of unpatentability and declining Fintiv discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine that the Petition has met this standard. Further, we decline to discretionarily deny inter partes review. Therefore, we institute an inter partes review of the challenged claims of the ’368 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Fintiv, IPR2020-00019, Paper 11 at 6. Further, Fintiv instructs that the Board should take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id.; see PTAB Consolidated Trial Practice Guide at 55–56, 58 (Nov. 2019) (“CTPG”).10” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“combined the teachings of Hepworth regarding interfaces with Minhazuddin’s teachings because Hepworth provides implementation details regarding router interfaces, such as those used by Minhazuddin. Pet. 35. Petitioner argues that this combination is the simple combination of known elements to yield predictable results. Id. at 36.” slip op. at 23
§ 103 obviousnessDiscretionary denialPatents in suitUS 7,738,368 - PTAB · Dec 23, 2024 · IPR2024-01060 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted review of all challenged claims on all asserted grounds and granted DIRECTV’s motion to join the DISH IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to institute review under 35 U.S.C. § 314(a), which provides that 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 set forth below, we institute an inter partes review of claims 1 and 3 of the ’518 patent and grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“(2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact, if any, joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB April 24, 2013).” slip op. at 4
NonePatents in suitUS 7,594,249 - PTAB · Dec 23, 2024 · IPR2024-01059 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1 and 3 on all petition grounds and joined DIRECTV to the DISH IPR, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons set forth in the 393 Decision, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’518 patent. Thus, we institute an inter partes review on all grounds and all challenged claims of the ’518 patent set forth in the Petition.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Upon review of Petitioner’s arguments, which were not opposed by Patent Owner, we agree that joinder of this proceeding with the DISH IPR is appropriate. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 5
NonePatents in suitUS 7,295,518 - PTAB · Dec 11, 2024 · IPR2024-00963 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–21 on all asserted obviousness grounds, finding a reasonable likelihood of success on each challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Patent Owner contends we should exercise discretion to deny institution because the court has not considered a motion to stay (Factor 1), jury selection in the District Court Litigation is scheduled to begin on February 17, 2026 (Factor 2), the parties have invested substantially in discovery by exchanging a high volume of documents and conducting extensive source code reviews (Factor 3), there is a high overlap between the challenged claims and those involved in the District Court Litigation (Factor 4), the parties are the same (Factor 5), and Petitioner’s arguments are meritless (Factor 6). Prelim. Resp. 35–36. Patent Owner acknowledges that jury selection in the District Court Litigation will not begin until two months after a Final Written Decision is scheduled to issue in this proceeding. Prelim. Resp. 35. On October 17, 2024, Petitioner offered the following Sotera Stipulation: “VusionGroup will not pursue an invalidity defense in Hanshow Tech. Co., Ltd. et al. v. SES-imagotag SA et al., Case No. 2:23-cv-00617 (E.D. Tex.) that the patent claims subject to the instituted IPR are invalid based on the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Ex. 1031. In view of all the circumstances, including the scheduled trial date and Petitioner’s Sotera stipulation, we decline to exercise discretion to deny institution.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“XI. CONCLUSION For the reasons discussed above, we determine that Petitioner has demonstrated a reasonable likelihood that it will succeed on each of its challenges to patentability and we institute inter partes review. XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’321 Patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial. FURTHER ORDERED that the trial is authorized on all grounds set forth in the Petition; and.” slip op. at 39
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“1999)); see also Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). Petitioner asserts that “[n]o formal claim constructions are necessary in this proceeding.” Pet. 6. Nevertheless, Petitioner also proposes constructions of certain “system” limitations, should the Board determine that the claims recite “means plus function” limitations, and argues that interpreted this way, such claims would be indefinite because they lack disclosure of sufficient algorithms for the claimed functions. Pet. 6–7. Petitioner acknowledges that, because the claims do not use the term “means,” there is a presumption against their being interpreted as means plus function limitations and that purported indefiniteness does not preclude the Board from addressing the patent patentability of the claims on sections 102 and 103 grounds. Id. (citing Sony Elecs. Inc. v. Jawbone Innovations, LLC, IPR2023-01352, Paper 7, 47 (PTAB Mar. 6, 2024); Ex. 1003 Houh Decl. ¶¶ 51–52); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Patent Owner argues the claims do not recite means plus function limitations and agrees with Petitioner that no claim construction is required. Prelim. Resp. 7–8. The standard is whether the words of the claim are understood by person of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. Williamson F.3d at 1349, Dyfan LLC v Target Corp., 28 F.4th 1360, 1365–1366 (Fed. Cir. 2022); see also Zeroclick LLC v. Apple Inc., 819 F.3d 1003, 1008–1009 (Fed. Cir 2018). Having reviewed the claims and the Specification, for purposes of institution, we determine that an ordinarily skilled artisan would have understood the subject matter that is claimed to have a sufficiently definite meaning as the name for structure so additional claim construction is required.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner describes a person of ordinary skill (“POSITA” or “ordinarily skilled artisan”) as having “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and two or more years of work experience or research related to computer vision, image analytics or automated object recognition methods and systems. Pet. 6 (citing Ex. 1003, Houh Decl. ¶¶ 18–19). Petitioner also states that “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. For purposes of this proceeding, Patent Owner does not dispute Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 7. 5 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. Because the ’321 patent issued from an application filed after March 16, 2013, we apply the AIA statutory basis for unpatentability. 6 U.S. Patent Application Publication No. 2012/0195363 (Ex. 1005) 7 U.S. Patent No. 8,139,817 (Ex. 1006) 8 U.S. Patent Application Publication No. 2011/0113461 (Ex. 1007) 9 U.S. Patent Application Publication No. 2014/0044348 (Ex. 1009) 10 U.S. Patent No. 8,634,601 (Ex. 1008) references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s undisputed description of the level of ordinary skill appears commensurate with the scope of the subject matters claimed and the references, we apply Petitioner’s description in this proceeding.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,701,321 - PTAB · Dec 10, 2024 · IPR2024-00994 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–7 and 9–14 on all asserted grounds, finding a reasonable likelihood of success on the Onishi-based obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially 4 For purposes of this Decision, we assume the challenged claims have an effective filing date prior to March 16, 2013, the effective date of the relevant aspects of the Leahy-Smith America Invents Act, Pub. L. No. 112- 29, 125 Stat. 284 (2011) (“AIA”), and we apply the pre-AIA version of 35 U.S.C. § 103. the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’696 patent. Further, we decline to discretionarily deny inter partes review. Accordingly, we institute an inter partes review as to all the challenged claims of the ’696 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. However, Patent Owner’s declarant, Dr. Mercier, opines that [A]t the time of the ’696 Patent, a POSITA would have a working knowledge of wireless charging and inductive charging. The person would have gained this knowledge through an undergraduate Bachelor of Science degree in electrical engineering, computer engineering, computer science, or a related field, with at least two years of experience working in the field of wireless or inductive charging device design, or testing of such wireless or inductive charging device testing, or 5 The parties have not directed our attention to any objective evidence of obviousness or non-obviousness. an equivalent combination of academic study and work experience. More education (e.g., a Master’s degree) or work experience any relevant field may compensate for a deficit in one of the relevant qualifications stated above. Ex. 2001 ¶ 26. We observe that, in Dr. Mercier’s definition, the undergraduate degree categories are a bit broader and the experience possibly a bit more specific than in Petitioner’s definition. However, at this stage and absent argument to the contrary by the parties, we discern no material difference between the parties’ definitions. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Dr. Mercier’s assessment, the outcome of this Decision would be the same.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“near-linear region—consistent with the quoted applicant’s use of the term “near-linear”—rather than a linear or non-linear region, which seemingly would encompass the entire curve. As to the second part, we understand Patent Owner to be referring to the purported benefit of linear control, and we determine that Patent Owner has not explained adequately why such a benefit should be read into the claim term “substantially different,” particularly where the quoted Specification support does not explicitly mention linear regulation.7 See Ex. 1001, 21:61–63 (“The induced voltage 7 To the extent that Patent Owner relies on its declarant’s testimony as an explanation of Patent Owner’s claim construction position, we remind Patent Owner about the prohibition on incorporation by reference. See 37 C.F.R. § 42.6(a)(3); Consolidated Trial Practice Guide, November 2019, 35–36 can be increased by reducing the transmission frequency and can be reduced by increasing the transmission frequency.”). On this record and for purposes of this decision, we determine that— consistent with the Specification’s description of the frequency that is “[p]referably . . . selected” and applicant’s argument regarding the same during prosecution—“a transmission frequency substantially different from said characteristic resonant frequency of said inductive couple” encompasses frequencies that lie within one of the near-linear regions of a frequency-amplitude graph associated with the inductive couple. See Ex. 1001, 21:20– 24; Ex. 1002, 70. At this time and for purposes of this Decision, we need not and do not reach the issue of the outer bounds of the scope of “substantially different.” We also note that independent claim 1 is an apparatus claim and the subject limitation 1.7 further defines the “driving circuit” recited in limitations 1.5 and 1.6. Specifically, limitation 1.7 requires a driving circuit that is “configured and operable to produce said oscillating driving voltage at a transmission frequency” that is “substantially different” from the inductive couple’s resonant frequency. Ex. 1001, 28:43–46. In future briefing, the parties’ arguments regarding the prior art references should focus on that recited structure, i.e., a circuit that is configured and operable to produce the recited frequency.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,048,696 - PTAB · Nov 22, 2024 · PGR2024-00034 · APJ Patrick R Scanlon · PGR · Institution
Instituted PGR on claims 1–19 and all asserted grounds after finding at least one claim more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review. See 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (2022). To institute a post-grant review, we must determine that “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons set forth below, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of at least one challenged claim. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We note that the identification of a Ph.D. as an example of “more formal education” creates a vast range of education relative to a bachelor’s degree. Thus, we treat the identification of a Ph.D. just as it is—an example—and not a requirement. In this case, “more formal education” can be satisfied by a level of education less than a Ph.D (but greater than a bachelor’s degree). Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, definition, limited as discussed above, for the purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“would have understood Unger’s disclosure to “suggest the use of a torsion spring to facilitate attachment and detachment, because torsion springs are designed to impart this functionality.” Id. (citing Ex. 1002 ¶ 118). Petitioner also asserts that one of ordinary skill in the art would have “understood that there were a limited number of ways to impart the referenced resilient or flexible ‘manipulation,’” and “would have been motivated to look to various known solutions to impart the suggested functionality, including the torsional spring mechanism of Smith that is used in a similar hearing protection device application for a similar purpose as Unger’s mounting arms (to apply a clamping force).” Id. at 32 (citing Ex. 1002 ¶¶ 120–121).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,736,855 - PTAB · Nov 21, 2024 · IPR2024-00857 · APJ Brian J Mcnamara · IPR · Institution
Instituted IPR on claims 1–19, with trial authorized on all petition grounds, based on a reasonable likelihood of success on the asserted obviousness challenges.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan”) as having “a Bachelor’s Degree in electrical or computer engineering, computer science, or a similar field with two or more years of work experience with low-power connected devices.” Pet. 6 (citing Ex. 1003, Wolfe Decl. ¶ 29). Petitioner further states that “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. For purposes if its Preliminary Response, Patent Owner does not dispute Petitioner’s description of an ordinarily skilled artisan. Prelim Resp. 7–8. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s undisputed description of a person of ordinary skill appears consistent with the subject matter of the ’216 patent and the references, we apply Petitioner’s standard for purposes of this Decision. slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (citations omitted) (en banc). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317 (citations omitted). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). “The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party has proposed a special definition or explicit construction of any claim term. Pet. 7; Prelim. Resp. 8. As we do not perceive a need to construe any term, we apply the plain and ordinary meaning to the claim language.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“X. CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will succeed on the following challenges to patentability: Claims 1, 2, 5–8, 11–15, 18, 19 as obvious over Nagata and the knowledge of a person of ordinarily skill in the art; Claims 1, 2, 5–8, 11–15, 18, and 19 as obvious over Nagata in view of Hashiguchi; and or Nagata in view of Hashiguchi and Thubert. XI. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“short intervals of time and communicates at a rapid interval (e.g.,150 msec every 4 sec). Id. at 55 (citing Ex. 1006 ¶¶ 70, 127–128, 138–139; Ex. 1003, Wolfe Decl. ¶ 158). Petitioner further notes that, although both Nagata and Hashiguchi transmit beacon signals synchronized to the awake modes of the labels to indicate the presence of information from an access point at scheduled, repetitive times, Nagata and Hashiguchi operate a little differently. Id. at 56. In particular, Nagata transmits a beacon signal synchronized to the electronic label wake-up time once every 60 seconds and varies the duration of the label’s awake mode (e.g., 30 seconds when the beacon indicates information to be transmitted is present); but Hashiguchi transmits a beacon signal synchronized with the electronic label’s awake time ratio, communicating beacons that correspond to the wake-up frequency, where the label listens for information for 150 msec in either a fast command mode (every 4 seconds or 15 times per minute) or a normal command mode (every 20 seconds or 3 times per minute). Id. at 56–57, 59– 60. Petitioner emphasizes that this feature allows Hashiguchi to improve its responsiveness, while reducing battery power drain, providing a reason for an ordinarily skilled artisan to combine th teachings of the references. Id. at 56–58. Noting that, like Nagata’s beacon signals, Hashiguchi’s beacon signals are sent at synchronized and prescribed time intervals in a manner that is indistinguishable from Nagata, Patent Owner argues that Petitioner fails to cure the defects of Nagata concerning the claimed fast wake-up instruction. Prelim. Resp. 23–24. As discussed above, the claim limitations do not exclude synchronous systems that transmit beacons signals or enter the fast and normal wake-up our analysis of Nagata (see Section IX.B herein), we determine that Petitioner has demonstrated that a person of ordinary skill would have had reason to combine the teachings of Nagata and Hashiguchi and that their combined teachings would have disclosed or suggested all the limitations of the independent claims 1, 7, and 14 and their corresponding dependent claims to such an ordinarily skilled artisan.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,540,216
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.