• Cisco Systems, Inc. / Fortinet, Inc. v. Infoexpress Inc.Institution denied
  PTAB · Sep 24, 2024 · IPR2024-00540 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4–10, 13, 16, 18, and 19 were obvious over Krantz alone or Krantz and Herrmann.

  RulingsInstitution decision

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

    “determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner will prevail with respect to any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that one of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of relevant experience in networking and network security, and related fields.” Pet. 4. Petitioner also asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cybersecurity.” Prelim. Resp. 1–2. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. at 2. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears consistent with the ’350 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “Petitioner argues that “a [person of ordinary skill in the art] would find the challenged claims unpatentable under any interpretation consistent with their plain and ordinary meaning in the context of the [’350 patent],” so we “need not expressly construe the claim terms.” Pet. 7. Patent Owner argues to the contrary that we should construe the phrase “reconfiguring the communication port” as “to change the access point itself [rather than something else] in a way that the checked device is able to access the less-restricted portion of the protected network.” Prelim. Resp. 7–9. Patent Owner also argues that we should construe the phrases “audit data pertaining to a device” and “auditing the device in accordance with a security policy” as “requir[ing] that the ‘audit data’ and ‘auditing’ . . . be expressly about the device” rather that “the user.” Id. at 9–12. As discussed below, we are able to determine whether to institute review without resolving the construction of any claim terms. Accordingly, we need not and do not construe any terms expressly. 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 9

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

    “We agree with Patent Owner. The ’350 patent distinguishes between user authentication using a username and password and application of a security policy. Ex. 1101, 1:35–39 (“A first level of access control is achieved by requiring authentication of a user. This may be accomplished by requiring the user to enter a username and a password.”), 1:45–48 (“Reliance on mere user authentication includes several disadvantages. For example, there are no provisions to assure that an access device used by the authenticated user meets network security policies.”). Although the ’350 patent describes both user authentication and application of a security policy as being carried out by a gatekeeper, this is accomplished in separate process steps. Id. at 10:38–41 (“GateKeeper 225 authenticates a user, obtains audit data, and applies a security policy in an Authenticate User Step 440, an Obtain Audit Data Step 450 and an Apply Security Policy Step 460, respectively.”). Thus, we are not persuaded that, as Petitioner argues, user authentication in the ’350 patent constitutes the application of a security policy.” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,347,350
• Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoAll claims unpatentable
  PTAB · Jul 15, 2024 · IPR2023-01321 · APJ Aaron W Moore · IPR · Final written decision

  Claims 1–19 and 37–58 are unpatentable as obvious over Karlsson and Harbers, with Gotou or Braun added for certain dependent claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At institution, we adopted Petitioner’s proposal, except that we omitted the qualifier “at least” and set the level of experience at two years. See Ins. Dec. 8. In its Response, Patent Owner states that it “does not dispute the Board’s proposed level of ordinary skill.” PO Resp. 20. We accordingly maintain the level of ordinary skill in the art we adopted in the Institution Decision. B.” slip op. at 7

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

    “At institution, we interpreted the term “light source” as the Specification defines it: “any system that is capable of receiving an electrical signal and producing light in response to the signal.” Inst. Dec. 8 (citing Ex. 1001, 17:7–10 (“As used herein, the term ‘light source’, LED or ‘solid state light source’ means any system that is capable of receiving an electrical signal and producing light in response to the signal.”)). Patent Owner agrees with that construction. See PO Resp. 20. However, the reason we interpreted “light source” in the institution decision was that there may have been a question about whether the individual “microbeams” described in the Beam reference were “light sources.” Because, as explained below, we do not reach the Beam grounds, we need not construe “light source” in this final decision. We further conclude that that no other express claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 8

  • BurdenFwd all claims unpatentableDecided for petitioner

    “III. CONCLUSION Petitioner has met its burden of showing that claims 1–19 and 37–58 of U.S. Patent 10,894,503 B2 are unpatentable.9” slip op. at 26

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “We have reviewed Petitioner’s mapping of the claims to Karlsson (see Pet. 100–122) and conclude that Petitioner has shown that it discloses the subject matter of claim 1. As described above, Karlsson discloses a vehicle headlight system with a plurality of light clusters. The headlamps are capable of projecting light to illuminate sub-sections of a field-of-view with different illumination characteristics, the subsections being determined in response to sensor data indicating oncoming traffic. Control circuitry operates the light clusters and sensors obtain and provide data pertinent to the illumination requirements. A controller uses the sensor data to determine an illumination scheme that reduces illumination in a first subsection (i.e., one with the oncoming traffic) in order to reduce glare.” slip op. at 12

  Patent outcomesUS 10,894,503 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 10,894,503
• Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoAll claims unpatentable
  PTAB · Jul 15, 2024 · IPR2023-00335 · APJ Aaron W Moore · IPR · Final written decision

  Claims 1–19 and 37–58 are unpatentable as obvious over Karlsson and Harbers, with Gotou or Braun added for certain dependent claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At institution, we adopted Petitioner’s proposal, except that we omitted the qualifier “at least” and set the level of experience at two years. See Ins. Dec. 8. In its Response, Patent Owner states that it “does not dispute the Board’s proposed level of ordinary skill.” PO Resp. 20. We accordingly maintain the level of ordinary skill in the art we adopted in the Institution Decision. B.” slip op. at 7

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

    “However, the reason we interpreted “light source” in the institution decision was that there may have been a question about whether the individual “microbeams” described in the Beam reference were “light sources.” Because, as explained below, we do not reach the Beam grounds, we need not construe “light source” in this final decision. We further conclude that that no other express claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 8

  • BurdenDecided for petitioner

    “We addressed this issue at institution, explaining that “we understand the asserted combinations” and that “[a]ssertions that both references disclose a particular claim element do not undermine or overly cloud Petitioner’s asserted combinations.” Inst. Dec. 14. That remains the case. Patent Owner’s attempt to spin some loose language in the Petition into “47 grounds” (PO Resp. 13) is not persuasive, particularly after the institution decision, in which we explained how we viewed the combinations presented by Petitioner. See Inst. Dec. 10–13. The combinations are simply not as multiplicated and complicated as Patent Owner contends, and Patent Owner acknowledged at the hearing that the alleged multiplicity did not prevent it from addressing any issue. See Tr. 36:1–2 (“[Q]: Which of these did you address in your papers? [A]: We address every single one for every single claim.”). Patent Owner also argues that “[the] lack of particularity is compounded by Petitioner’s other two petitions challenging the ’503 Patent that suffer the same lack of particularity issues––meaning Petitioner has asserted at least 149 grounds.” PO Resp. 32 (emphasis omitted). We again disagree with Patent Owner’s assessment of the number of “sub-grounds” at issue, and conclude, as we did at institution, that three petitions were justified given the number of asserted claims and differences in claim scope. See Inst. Dec. 14.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “This is not persuasive because Karlsson teaches that “light beam 7 . . . [is] controlled in such a manner that no light at all or light having a low intensity is emitted in those directions from which light is detected [such that] glaring or blinding of oncoming traffic is effectively prevented.” Ex. 1010, 9:18–26 (emphasis added); see Ex. 2006 ¶ 251. Light at a low intensity is “illumination,” even under the definition Patent Owner offers in the Response. See PO Resp. 64 (“The plain meaning of illuminate is ‘to supply or brighten with light’ or ‘to make luminous or shining.’”) That Petitioner may have described the shaded portions of Karlsson’s Figure 14 as having “no intensity,” is immaterial in view Karlsson’s “low intensity” disclosure, which Petitioner also cited. See Pet. 94–95.” slip op. at 13

  Patent outcomesUS 10,894,503 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 10,894,503
• Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentable
  PTAB · Jul 15, 2024 · IPR2023-01320 · APJ Aaron W Moore · IPR · Final written decision

  Claims 26–28, 30–36, 65–68, and 70 are unpatentable as obvious; claims 29 and 69 were not shown unpatentable because the asserted grounds did not establish sensed fog or snow.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “At institution, we adopted Petitioner’s proposal, except that we omitted the qualifier “at least” and set the level of experience at two years. See Inst. Dec. 8. In its Response, Patent Owner stated that it “does not dispute the Board’s proposed level of ordinary skill.” PO Resp. 3. We accordingly maintain the level of ordinary skill in the art we adopted in the Institution Decision. B.” slip op. at 8

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

    “However, the reason we interpreted “light source” in the institution decision was that there was a question about whether the individual “microbeams” described in the Beam reference were “light sources.” See Inst. Dec. 11. Because, as explained below, we do not reach the Beam grounds, we need not construe “light source” in this final decision. We further find that that no other express claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 9

  • BurdenMixed

    “measurement by sensor 9 is not affected by “scattered reflected light” due to “dirty cover glass 19”). Moreover, even if fog or snow might make the cover glass “dirty” nothing in Karlsson senses that. Instead, the reference simply explains that the switching of the light is helpful if the glass happens to be dirty. Sensor 9 is used to detect light, such as from oncoming vehicles, not fog or snow (see Ex. 1010, 9:9–26), and none of the other passages of Karlsson cited in the Petition describe sensing fog or snow. Petitioner does not identify anything in Harbers that senses fog or snow, and we do not find a description of that ourselves. Harbers describes adjusting the light based on vehicle velocity, the position of the steering wheel, “weather conditions,” or road type (e.g., motorway or country road). See Ex. 1011, 3:27–4:32. It seems reasonable to assume that the velocity and position of the steering wheel are sensed, and the reference indicates that light distribution for road type can be adjusted “by the driver.” Id. at 4:22–25. The reference is silent, however, on how the adjustment based on “weather conditions” is made. Dr. Jiao cites a passage from Braun about how its “headlights . . . are programmed . . . to detect fog and . . . provide light appropriate for driving in fog” (see Ex. 1003 ¶ 590), but Braun is not included in this ground in the Petition (see Pet. 3), and neither Petitioner not Dr. Jiao attempts to provide a reason to combine Braun for these claims. We conclude that, in order to show that these claims would have been obvious, Petitioner would have needed to show that sensing would have been disclosed or inherent in the Harbers/Karlsson combination, obvious in view of Karlsson and Harbers, or that it would have been obvious to add Braun’s fog detection to the Karlsson/Harbers combination. As Petitioner did not argue an express or inherent disclosure of fog/snow sensing in Harbers/Karlsson, did not argue that it would have been obvious to use fog/snow sensing in the Karlsson/Harbers combination, and did not include Braun in the combination, we conclude that Petitioner has not shown that claims 29 and 69 are unpatentable” slip op. at 26

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “This argument is not persuasive because, we conclude, it overstates the problem. These claims require bluish light towards the center and yellowish light to the side. Were an oncoming vehicle in the yellow area, corresponding yellow lights would be dimmed. Were the oncoming vehicle then moved to straddle the yellow and blue areas, the corresponding yellow and blue lights would be dimmed. And if the vehicle were to move to the blue area, the corresponding blue lights would be dimmed. We agree with Dr. Jiao that one of ordinary skill in this art, which is fairly predictable, would be able to avoid or sufficiently minimize any color shifting problems. See Ex. 1051 ¶¶ 162–165. We also credit Dr. Jiao’s explanation that, in the combination, there would only be “subtle variations of illuminated color within the range, such as bluish white and yellowish white” and that “all light would be recognized as white light (as defined in standards and regulations)” that not would be problematic in practice. See id. ¶ 167.9” slip op. at 22

  Patent outcomesUS 10,894,503 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 10,894,503
• Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoAll claims unpatentable
  PTAB · Jun 20, 2024 · IPR2023-01231 · APJ Aaron W Moore · IPR · Final written decision

  Claims 20–25 and 59–64 are unpatentable as obvious over Karlsson and Harbers, alone or with Gotou; the Beam and Thominet grounds were not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At institution, we adopted Petitioner’s proposal, except that we omitted the qualifier “at least” and set the level of experience at two years. See Ins. Dec. 7. In its Response, Patent Owner stated that it “does not dispute the Board’s reframing of Petitioner’s proposed level of ordinary skill” and asserts that “the modification should have no effect on the analysis.” See PO Resp. 14. We accordingly maintain the level of ordinary skill in the art we adopted in the institution decision. B.” slip op. at 9

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

    “At institution, we interpreted the term “light source” as the Specification defines it: “any system that is capable of receiving an electrical signal and producing light in response to the signal.” Ex. 1001, 17:7–10 (“As used herein, the term ‘light source’, LED or ‘solid state light source’ means any system that is capable of receiving an electrical signal and producing light in response to the signal.”). Patent Owner agrees with that construction. See PO Resp. 14. However, the reason we interpreted “light source” in the institution decision was that there was a question about whether the individual “microbeams” described in the Beam reference were “light sources.” See Inst. Dec. 11. Because, as explained below, we do not reach the Beam grounds, we need not construe “light source” in this final decision. We further find that that no other express claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 9

  • BurdenDecided for petitioner

    “We addressed this issue at institution, explaining that “we understand the asserted combinations” and that “[a]ssertions that both references disclose a particular claim element do not undermine or overly cloud Petitioner’s asserted combinations.” Inst. Dec. 22. That remains the case. Patent Owner’s attempt to spin some loose language in the Petition into “41 Sub-Grounds within the nominal framework of six Grounds” (PO Resp. 15) is not persuasive, particularly after the institution decision, in which we explained how we viewed the combinations presented by Petitioner, for example finding that the primary references did not disclose differently angled light sources, and explaining that the combination contemplated the lighting schemes of the secondary references augmented by the selective dimming of the primary references. See Inst. Dec. 9–20. The combinations are simply not as multiplicated and complicated as Patent Owner contends, and Patent Owner acknowledged at the hearing that the alleged multiplicity did not prevent it from addressing any issue. See Trans. 37:17–18 (“[Q]: Which of these [alleged sub-grounds] did you address in your papers? [A]: We address every single one for every single claim.”). Patent Owner also argues that “[the] lack of particularity is compounded by Petitioner’s other two petitions challenging the ’503 Patent that suffer the same lack of particularity issues––meaning Petitioner has asserted at least 149 grounds.” PO Resp. 25 (emphasis omitted). We again disagree with Patent Owner’s assessment of the number of “sub-grounds” at issue, and conclude, as we did at institution, that three petitions were justified given the number of asserted claims and the differences in claim scope. See Inst. Dec. 22. D.” slip op. at 10

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

    “opto-electronic elements” and that they “[do] not have to be provided on a flat substrate” and “may alternatively be provided on a curved substrate.” Ex. 1011, 7:20–29. In either case, however, we find that the light sources must be directed at different angles to produce the pattern shown in Figure 1B. In other words, we do not read Harbers’ explanation that the substrate may be flat or curved to mean that the light sources in the non-curved substrate embodiment would all be pointed in the same direction because that is simply not consistent with Figure 1B. Instead, we understand Harbers to be describing how the differently directed light beams may be achieved either by light sources mounted on a flat substrate at different angles relative to the substrate, or by light sources mounted on a substrate that is curved. The Petition asserted that “[h]aving multiple directional beam segments with different angles/aimings as in Harbers, implemented with Karlsson’s control means 14/spotlight beams 34 (including light modulator means 3), would have provided Karlsson’s system with different spatial distributions for different driving situations beyond reducing glare for drivers, thereby improving safety.” Pet. 84 (emphasis added, citing Ex. 1003 ¶ 350). Petitioner thus relied on Harbers’ “beam segments” with “different angles/aimings” that produce the pattern shown in Figure 1B. We agree that the advantages Harbers attributes to its spatial distribution scheme would have provided a sufficient motivation to use it in the combination, and that it would include the differently angled light sources present in both the flat and curved substrate embodiments of Harbers. Because all embodiments of Harbers’ illumination method require that the light sources be arranged at different angles, we need not conclude that it would have been obvious to use Harbers’ curved substrate in place of Karlsson’s flat substrate. However, were inclusion of Harbers’ curved substrate necessary for a finding of obviousness, we conclude that Harbers’ explanation of how the non-curved and curved embodiments are simply alternative means of producing differently angled beams would be sufficient to show that use of the curved substrate in place of a flat substrate would have been a simple substitution of a known element (a curved substrate) for another (a flat substrate), yielding the predictable results described in Harbers (differently angled light sources capable of producing the designed light pattern), and that this would be, therefore, an obvious modification. See Pet. 86 (asserting that use of the curved substrate would have been a simple and predictable substitution). We find that the skilled artisan would have known to use either a flat or curved substrate to achieve Harbers’ multi-directional lighting scheme as appropriate for a given application. slip op. at 17

  Patent outcomesUS 10,894,503 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,894,503
• Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoAll claims unpatentable
  PTAB · Jun 20, 2024 · IPR2023-00197 · APJ Aaron W Moore · IPR · Final written decision

  Claims 20–25 and 59–64 are unpatentable as obvious over Karlsson and Harbers, with claims 21–23 and 60–62 also relying on Gotou.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At institution, we adopted Petitioner’s proposal, except that we omitted the qualifier “at least” and set the level of experience at two years. See Ins. Dec. 7. In its Response, Patent Owner stated that it “does not dispute the Board’s reframing of Petitioner’s proposed level of ordinary skill” and asserts that “the modification should have no effect on the analysis.” See PO Resp. 14. We accordingly maintain the level of ordinary skill in the art we adopted in the institution decision. B.” slip op. at 9

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

    “At institution, we interpreted the term “light source” as the Specification defines it: “any system that is capable of receiving an electrical signal and producing light in response to the signal.” Ex. 1001, 17:7–10 (“As used herein, the term ‘light source’, LED or ‘solid state light source’ means any system that is capable of receiving an electrical signal and producing light in response to the signal.”). Patent Owner agrees with that construction. See PO Resp. 14. However, the reason we interpreted “light source” in the institution decision was that there was a question about whether the individual “microbeams” described in the Beam reference were “light sources.” See Inst. Dec. 11. Because, as explained below, we do not reach the Beam grounds, we need not construe “light source” in this final decision. We further find that that no other express claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 9

  • BurdenDecided for patent owner

    “‘selectively adjust[s] . . . spotlight beam[s] 34, in response to a control signal from sensor means 23 . . . [to] provide a desired lighting pattern’ in ‘given directions,’” “recognizes ‘[w]hen taking a bend . . . [that] the road ahead . . . is insufficiently lit,’” and “discloses using additional sensors, for example, ‘direction sensor 54 . . . for determining when the car 56 is taking a bend, so that the light beam 7 can be adapted,’ and acknowledges the safety benefits of those systems.” Pet. 114–115 (citing Ex. 1010, 1:35–2:1, 6:26–33, 9:23–25, 11:25–28, 14:26–30, 20:22–32, Figs. 3, 6, 14; 16; Ex. 1003 ¶ 452) (emphasis omitted). We have reviewed the portions of Karlsson cited by Petitioner and find them insufficient to teach or suggest the subject matter of claims 21–23 and 60–62. Although they disclose direction sensors and controlling the light in response to sensors, the direction sensors are used “for determining when the car . . . is taking a bend, so that the light beam . . . can be adapted to prevent the traffic on the other side of the road from being blinded as much as possible.” Ex. 1010, 20:29–32. This suggests that the direction sensors are used to decrease illumination in the direction of the curve or turn, not to increase the illumination, as claimed.” slip op. at 29

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “The Petition asserted that “[h]aving multiple directional beam segments with different angles/aimings as in Harbers, implemented with Karlsson’s control means 14/spotlight beams 34 (including light modulator means 3), would have provided Karlsson’s system with different spatial distributions for different driving situations beyond reducing glare for drivers, thereby improving safety.” Pet. 84 (emphasis added, citing Ex. 1003 ¶ 350). Petitioner thus relied on Harbers’ “beam segments” with “different angles/aimings” that produce the pattern shown in Figure 1B. We agree that the advantages Harbers attributes to its spatial distribution scheme would have provided a sufficient motivation to use it in the combination, and that it would include the differently angled light sources present in both the flat and curved substrate embodiments of Harbers. Because all embodiments of Harbers’ illumination method require that the light sources be arranged at different angles, we need not conclude that it would have been obvious to use Harbers’ curved substrate in place of Karlsson’s flat substrate. However, were inclusion of Harbers’ curved substrate necessary for a finding of obviousness, we conclude that Harbers’ explanation of how the non-curved and curved embodiments are simply alternative means of producing differently angled beams would be sufficient to show that use of the curved substrate in place of a flat substrate would have been a simple substitution of a known element (a curved substrate) for another (a flat substrate), yielding the predictable results described in Harbers (differently angled light sources capable of producing the designed light pattern), and that this would be, therefore, an obvious modification. See Pet. 86 (asserting that use of the curved substrate would have been a simple and predictable substitution). We find that the skilled artisan would have known to use either a flat or curved substrate to achieve Harbers’ multi-directional lighting scheme as appropriate for a given application. Patent Owner suggests that Virtek Vision Intl. ULC v. Assembly Guidance Sys., Inc., 97 F.4th 882 (Fed. Cir. 2024), supports its position that it would not have been obvious to use the curved substrate in the combination. See Trans. 101, 127. In that case, the issue was whether it would have been obvious to modify the primary references, which used an angular direction system, to instead use a 3D coordinate system that was also known in the art. See id. at 886. The Federal Circuit found a lack of motivation to combine because “[t]he mere fact that . . . possible arrangements existed in the prior art” was insufficient. Id. at 887. Here, however, there is a motivation––the advantages of Harbers’ spatial lighting scheme––and Harbers teaches that those advantages may be achieved with differently directed light sources on either a flat substrate or a curved substrate. We find this to provide a sufficient motivation under the controlling law. See KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (explaining that to be non-obvious a change must be “more than the predictable use of prior art elements according to their established functions”).” slip op. at 17

  Patent outcomesUS 10,894,503 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,894,503
• Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentable
  PTAB · Jun 18, 2024 · IPR2023-01225 · APJ Jason W Melvin · IPR · Final written decision

  Claims 24, 26, 28–32, 34, 36–40, 42, and 44–47 are unpatentable as obvious; claims 25, 27, 33, 35, 41, 43, and 48–55 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “F. LEVEL OF ORDINARY SKILL IN THE ART Petitioner submits that an ordinarily skilled artisan “would have had a bachelor’s degree (B.S.) in mechanical engineering, electrical engineering, optical engineering, applied physics, or an equivalent field, as well as at least 2 years of industry experience in the area of automotive lighting and lighting-control systems.” Pet. 7 (citing Ex. 1003 ¶¶ 44–46, 67). Petitioner adds that such artisans “may work as part of a team, for example, with computer engineers to 3 Beam, U.S. Patent No. 6,144,158, issued Nov. 7, 2000. Ex. 1005, code (45). 4 English translation of Satonaka et al., Japan Patent Publication No. H7-101291, published Apr. 18, 1995. Ex. 1014, 0001, code (43). 5 Kobayashi, U.S. Patent No. 6,049,749, issued Apr. 11, 2000. Ex. 1008, code (45). 6 Karlsson, WIPO Patent Publication No. 98/54030, published December 3, 1998. Ex. 1010, code (43). 7 English translation of Nakamura et al., Japan Patent Publication No. H7-65603, published Mar. 10, 1995. Ex. 1013, 0001, code (43). 8 Gotou, U.S. Patent No. 5,588,733, issued Dec. 31, 1996. Ex. 1012, code (45). integrate/program controllers and various control inputs to affect control of a given light source.” Id. Patent Owner does not dispute that proposed level of skill (PO Resp. 9), and we adopt it here.” slip op. at 6

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

    “Petitioner notes that, during reexamination of the ’551 patent, the Office interpreted “electronic circuitry apparatus for the controlled powering of the LEDs” as a means-plus-function limitation and identified the corresponding structure as “logic control electronics unit 7.” Id. at 8 (citing Ex. 1002, 929–39; Ex. 1001, 25:34–52). Patent Owner asserts that “[n]o claim construction is necessary because Patent Owner’s arguments do not hinge on the outcome of an actual controversy about claim interpretation.” PO Resp. 9. As to the “electronic circuitry apparatus,” Patent Owner does not dispute that the claim language reads on the asserted prior art under any construction. Thus, we need not address the construction of that term. 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 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “As to the advantages of Karlsson’s lamp-located sensor, nothing about that arrangement would have changed in the proposed combination. As described, Petitioner proposes using aspects of Nakamura’s processing in combination with Karlsson’s physical system. See Pet. 54–58. Thus, the combination preserves any advantages Karlsson obtains by locating a sensor with each illumination system. As to a change of perspective, the record does not support that Nakamura’s processing relies on a single, unchangeable perspective. Rather, Nakamura discloses identifying relevant image regions through reference markers such as “white lines of the lane” and adjustments such as “correction amount α” to accommodate the reference markers. Ex. 1013 ¶¶ 36–46; see Pet. Reply 58 (“Nakamura explains how to implement the coordinate mapping of the pixels received by a camera.”). Thus, Nakamura’s approach is already suitable to a changed perspective and Petitioner did not have to explain further details of the required adaption. See also Ex. 1052 ¶¶ 125 (“Wherever the camera is located on the vehicle, a simple calibration for camera location versus driver’s viewpoint would be conducted to carry on the image processing.”), 168 (noting that the same reasoning applies to the Karlsson–Nakamura combination as the Beam–Satonaka combination). Additionally, Patent Owner has not persuasively supported its assertion that the changed perspective—locating sensors at the headlamps rather than centered at the top of the windshield—would impair the system’s ability to detect other vehicles. See PO Resp. 57–59. Patent Owner’s expert could not testify as to the camera locations used to generate the images that form the basis for Patent Owner’s argument, as he was not present at the test that generated those images. Ex. 1053, 104:22–105:14, 106:16–107:6, 109:17–110:4. It is inapposite that “Nakamura does not contemplate LEDs and therefore does not control light in a similar fashion” as Patent Owner argues (PO Resp. 60), because Nakamura’s teachings relate to identifying regions in the illuminated field that should be dimmed. Ex. 1013 ¶ 45. Such a determination aligns with Karlsson’s own similar determination, and would be implemented by Karlsson’s system. See, e.g., Ex. 1010, 9:18–26. Having considered the full record, we find that skilled artisans would have” slip op. at 14

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner

    “As to independent claims 24 and 32, Patent Owner does not assert any “unique characteristics that are novel and nonobvious over the asserted art.” See PO Resp. 70–71. Patent Owner asserts that claim 40 includes “adapting light emission to provide at least two dark zones with ‘light in-between’” and that the Stam declaration correlates that characteristic with the objective evidence. Id. The Stam declaration addresses claim language reciting illumination “that preserves a first level of illumination illuminating past the other vehicle while preventing glare to a driver of the other vehicle” and asserts that an article discussing that a commercial product’s “[i]ndividually controlled LEDs also provide two or more dark zones with ‘light in-between,’ allowing continuous use of a vehicle’s high-beams to maximize visibility and provide a safer driving experience.” Ex. 2023, 734 (Stam declaration ¶ 117) (quoting Ex. 2023, 182) (emphasis omitted). Patent Owner does not explain and we do not understand the connection between the claim language recited in the declaration and that of claim 40. But even accepting that the reexamination exhibit shows industry praise for a system with claim 40’s feature, Patent Owner has not shown that the feature was novel. As discussed above, we conclude that Karlsson discloses that aspect of claim 40 without modification. See supra at 16 (§ II.B.5). Accordingly, even viewing Patent Owner’s evidence as credible and appropriate, we conclude that it would not establish the required nexus for claim 40. To be clear, Patent Owner’s asserted evidence would not establish nexus for any aspect of the independent claims, because each element is found in the prior art and the only elements for which Petitioner asserts a combination of prior-art teachings—those relating to image coordinates—are not those that Patent Owner relies on for a unique characteristic of the claimed invention. Patent Owner asserts further that industry praise was directed at the “Predictive Curve Illumination feature” recited by dependent claims that require the ability to “accommodate the upcoming road curvature” by adapting the light. PO Resp. 8, 70–71. Patent Owner relies on a report of a new lighting system used by BMW that states, “[t]he benefit of a glare-free function is not only to shadow out other cars but also to provide visibility for upcoming curves and dangerous situations; there is a clear safety gain by illuminating this curve in front of the driver.” Ex. 2023, 727 (quoting Ex. 2023, 177) (emphasis omitted). That statement does not itself establish a nexus to the “Predictive Curve Illumination” claims. Patent Owner asserts that the reexamination declaration correlated objective evidence with the “Predictive Curve Illumination” claims (PO Resp. 70–71), but cited portion of the declaration does not address that claim feature (see Ex. 2023, 728–34). Accordingly, Patent Owner has not established a nexus with the dependent claims. That the praised characteristics were found in the prior art is consistent with Patent Owner’s asserted evidence, which largely pertains to efforts to change U.S. regulations to permit the use of adaptive headlight technology. See Pet. Reply 28; Ex. 1053 ¶¶ 198–199. Thus, Patent Owner’s evidence does not support nonobviousness.” slip op. at 22

  Patent outcomesUS 9,955,551 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 9,955,551
• Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentable
  PTAB · Jun 18, 2024 · IPR2023-00315 · APJ Jason W Melvin · IPR · Final written decision

  Claims 24, 26, 28–32, 34, 36–40, 42, and 44–47 are unpatentable as obvious; claims 25, 27, 33, 35, 41, 43, and 48–55 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “bachelor’s degree (B.S.) in mechanical engineering, electrical engineering, optical engineering, applied physics, or an equivalent field, as well as at least 2 years of industry experience in the area of automotive lighting and lighting-control systems.” Pet. 7 (citing Ex. 1003 ¶¶ 44–46, 67). Petitioner adds that such artisans “may work as part of a team, for example, with computer engineers to 3 Beam, U.S. Patent No. 6,144,158, issued Nov. 7, 2000. Ex. 1005, code (45). 4 English translation of Satonaka et al., Japan Patent Publication No. H7-101291, published Apr. 18, 1995. Ex. 1014, 0001, code (43). 5 Kobayashi, U.S. Patent No. 6,049,749, issued Apr. 11, 2000. Ex. 1008, code (45). 6 Karlsson, WIPO Patent Publication No. 98/54030, published December 3, 1998. Ex. 1010, code (43). 7 English translation of Nakamura et al., Japan Patent Publication No. H7-65603, published Mar. 10, 1995. Ex. 1013, 0001, code (43). 8 Gotou, U.S. Patent No. 5,588,733, issued Dec. 31, 1996. Ex. 1012, code (45). integrate/program controllers and various control inputs to affect control of a given light source.” Id. Patent Owner does not dispute that proposed level of skill (PO Resp. 9), and we adopt it here.” slip op. at 6

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

    “Petitioner notes that, during reexamination of the ’551 patent, the Office interpreted “electronic circuitry apparatus for the controlled powering of the LEDs” as a means-plus-function limitation and identified the corresponding structure as “logic control electronics unit 7.” Id. at 8 (citing Ex. 1002, 929–39; Ex. 1001, 25:34–52). Patent Owner asserts that “[n]o claim construction is necessary because Patent Owner’s arguments do not hinge on the outcome of an actual controversy about claim interpretation.” PO Resp. 9. As to the “electronic circuitry apparatus,” Patent Owner does not dispute that the claim language reads on the asserted prior art under any construction. Thus, we need not address the construction of that term. 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 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “As to the advantages of Karlsson’s lamp-located sensor, nothing about that arrangement would have changed in the proposed combination. As described, Petitioner proposes using aspects of Nakamura’s processing in combination with Karlsson’s physical system. See Pet. 54–58. Thus, the combination preserves any advantages Karlsson obtains by locating a sensor with each illumination system. As to a change of perspective, the record does not support that Nakamura’s processing relies on a single, unchangeable perspective. Rather, Nakamura discloses identifying relevant image regions through reference markers such as “white lines of the lane” and adjustments such as “correction amount α” to accommodate the reference markers. Ex. 1013 ¶¶ 36–46; see Pet. Reply 58 (“Nakamura explains how to implement the coordinate mapping of the pixels received by a camera.”). Thus, Nakamura’s approach is already suitable to a changed perspective and Petitioner did not have to explain further details of the required adaption. See also Ex. 1052 ¶¶ 125 (“Wherever the camera is located on the vehicle, a simple calibration for camera location versus driver’s viewpoint would be conducted to carry on the image processing.”), 168 (noting that the same reasoning applies to the Karlsson–Nakamura combination as the Beam–Satonaka combination). Additionally, Patent Owner has not persuasively supported its assertion that the changed perspective—locating sensors at the headlamps rather than centered at the top of the windshield—would impair the system’s ability to detect other vehicles. See PO Resp. 57–59. Patent Owner’s expert could not testify as to the camera locations used to generate the images that form the basis for Patent Owner’s argument, as he was not present at the test that generated those images. Ex. 1053, 104:22–105:14, 106:16–107:6, 109:17–110:4. It is inapposite that “Nakamura does not contemplate LEDs and therefore does not control light in a similar fashion” as Patent Owner argues (PO Resp. 60), because Nakamura’s teachings relate to identifying regions in the illuminated field that should be dimmed. Ex. 1013 ¶ 45. Such a determination aligns with Karlsson’s own similar determination, and would be implemented by Karlsson’s system. See, e.g., Ex. 1010, 9:18–26. Having considered the full record, we find that skilled artisans would have” slip op. at 14

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner

    “however, has not presented Mr. Stam’s declaration as a declaration in this case, instead relying on its expert, Dr. Turk, who “reviewed the objective evidence statements in the Stam declaration.” PO Resp. 68 (citing Ex. 2006 ¶¶ 215–216). Dr. Turk, however, was not able to recall the meaning of multiple terms he used in his declaration (Ex. 1053, 124:5–135:18) and asserted that he determined that ADB technology falls within the claims by looking at the Stam declaration, without independently verifying statements in the Stam declaration or reviewing the documents upon which those statements were based (id. at 135:19–137:16). Dr. Turk’s declaration addressing secondary considerations is not credible as to the substance of the asserted secondary considerations, and Patent Owner’s asserted secondary considerations are not persuasive for that reason alone. Additionally, Petitioner asserts that Patent Owner has not shown any evidence that is “the direct result of the unique characteristics of the claimed invention.” Pet. Reply 25 (quoting Fox Factory, Inc. v. Sram, LLC, 944 F.3d 1366, 1373–74 (Fed. Cir. 2019) (internal quotations omitted)). In particular, Petitioner asserts that all the elements of the claimed invention were known in the prior art, and thus that Patent Owner cannot show a nexus between any long-felt need or industry praise and the challenged claims. Id. at 25–26. As to independent claims 24 and 32, Patent Owner does not assert any “unique characteristics that are novel and nonobvious over the asserted art.” See PO Resp. 70–71. Patent Owner asserts that claim 40 includes “adapting light emission to provide at least two dark zones with ‘light in-between’” and that the Stam declaration correlates that characteristic with the objective evidence. Id. The Stam declaration addresses claim language reciting illumination “that preserves a first level of illumination illuminating past the other vehicle while preventing glare to a driver of the other vehicle” and asserts that an article discussing that a commercial product’s “[i]ndividually controlled LEDs also provide two or more dark zones with ‘light in-between,’ allowing continuous use of a vehicle’s high-beams to maximize visibility and provide a safer driving experience.” Ex. 2023, 734 (Stam declaration ¶ 117) (quoting Ex. 2023, 182) (emphasis omitted). Patent Owner does not explain and we do not understand the connection between the claim language recited in the declaration and that of claim 40. But even accepting that the reexamination exhibit shows industry praise for a system with claim 40’s feature, Patent Owner has not shown that the feature was novel. As discussed above, we conclude that Karlsson discloses that aspect of claim 40 without modification. See supra at 16 (§ II.B.5). Accordingly, even viewing Patent Owner’s evidence as credible and appropriate, we conclude that it would not establish the required nexus for claim 40. To be clear, Patent Owner’s asserted evidence would not establish nexus for any aspect of the independent claims, because each element is found in the prior art and the only elements for which Petitioner asserts a combination of prior-art teachings—those relating to image coordinates—are not those that Patent Owner relies on for a unique characteristic of the claimed invention. Patent Owner asserts further that industry praise was directed at the “Predictive Curve Illumination feature” recited by dependent claims that require the ability to “accommodate the upcoming road curvature” by adapting the light. PO Resp. 8, 70–71. Patent Owner relies on a report of a new lighting system used by BMW that states, “[t]he benefit of a glare-free function is not only to shadow out other cars but also to provide visibility for upcoming curves and dangerous situations; there is a clear safety gain by illuminating this curve in front of the driver.” Ex. 2023, 727 (quoting Ex. 2023, 177) (emphasis omitted). That statement does not itself establish a nexus to the “Predictive Curve Illumination” claims.” slip op. at 22

  Patent outcomesUS 9,955,551 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 9,955,551
• Porsche Cars North America, Inc. v. Yechezkal Evan SperoInstituted
  PTAB · Feb 16, 2024 · IPR2023-01321 · APJ Aaron W Moore · IPR · Institution

  The Board instituted IPR on claims 1–19 and 37–58 based on the asserted grounds and granted Porsche’s motion to join IPR2023-00335, subject to participation restrictions.

  RulingsInstitution decision

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

    “A. INSTITUTION OF INTER PARTES REVIEW Petitioner represents that the “Petition is essentially a copy of the petition filed in” the VW IPR and that the evidence and arguments “are substantively identical to the evidence and arguments supporting the VW Petition.” Mot. 1, 4. Our independent review of the Petition and the VW IPR petition confirms Petitioner’s representations, and that the petitions in the two proceedings are substantially the same. Further, although Petitioner relies on a different expert declarant, Petitioner submits that the two declarations are “substantively identical.” Id. at 3. Having already considered the merits of those challenges and the evidence in the VW IPR, and having determined that the threshold for institution of inter partes review has been met, we determine that this Petition also establishes a reasonable likelihood that Petitioner will prevail with respect to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 59–69) are not persuasive.10 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition.” slip op. at 7

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantially identical to the petition in the VW IPR, contains the same grounds based on the same evidence, and relies on a substantively identical declaration. Petitioner also represents that joinder will not impact the VW IPR schedule. See Mot. 4. Additionally, Petitioner represents that it is willing to accept a limited, “understudy role” to Volkswagen (the original petitioner in the VW IPR), taking over only in the event VW no longer participates. See id. at 5; id. at 5 n.3. Specifically, Petitioner represents that in its understudy role, it agrees that the following conditions will apply: (a) Petitioner will not make any substantive filings and shall be bound by the filings of VW, unless a filing concerns termination and settlement, or issues solely involving Petitioner; (b) Petitioner will not present any argument or make any presentation at the oral hearing unless an issue solely involves Petitioner, or when addressing motions that do not affect VW; (c) Petitioner will not seek to cross-examine or defend the cross-examination of any witness, unless the topic of cross-examination concerns issues solely involving Petitioner, within the time permitted by VW alone and with VW’s agreement; (d) Petitioner will not seek discovery from Patent Owner, unless issues arise that are unique to, and only applicable to, Petitioner; and (e) Petitioner will not rely on expert testimony beyond that submitted by VW unless and until VW is terminated as party to the proceeding prior to any necessary depositions. See id. at 5–6. Patent Owner has not filed an opposition to Petitioner’s Motion. Thus, Petitioner’s Motion stands unopposed. Under these circumstances, we agree with Petitioner that joinder is appropriate and will not unduly impact the ongoing trial in the VW IPR. We limit Petitioner’s participation in the VW IPR proceeding as follows: (1) VW alone is” slip op. at 8

  • PTAB / AIA Trials › Discretionary denialNot reached

    “Having already considered the merits of those challenges and the evidence in the VW IPR, and having determined that the threshold for institution of inter partes review has been met, we determine that this Petition also establishes a reasonable likelihood that Petitioner will prevail with respect to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 59–69) are not persuasive.10 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition.” slip op. at 7

  Discretionary denial
  Patents in suitUS 10,894,503
• Ao Kaspersky Lab v. Open Text Inc.Instituted
  PTAB · Dec 21, 2023 · IPR2023-01199 · APJ Michelle N Wormmeester · IPR · Institution

  Instituted review of claims 1–4, 7–10, 12, and 15–18 on all petitioned grounds, and granted AO Kaspersky Lab’s motion to join IPR2023-00124.

  RulingsInstitution decision

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

    “Patent Owner’s argument is unavailing. Our rules specifically prohibit incorporation by reference. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document. Combined motions, oppositions, replies, or other combined documents are not permitted.”). We therefore decline to consider, at this 2 Morris et al., U.S. Publ’n No. 2007/0016953 A1, published Jan. 18, 2007 (Ex. 1005). 3 van Oorschot et al., U.S. Patent No. 8,087,087 B1, issued Dec. 27, 2011 (Ex. 1006). 4 Capalik et al., U.S. Publ’n No. 2011/0321166 A1, published Dec. 29, 2011 (Ex. 1008). stage, the arguments presented in the Patent Owner Response in the 124 IPR. Because Patent Owner does not offer other arguments on the merits, for the reasons given in our institution decision in the 124 IPR, we determine that the information presented in the Petition shows a reasonable likelihood that Petitioner will prevail in showing that the challenged claims would have been obvious. See 124 IPR, Paper 11.” slip op. at 3

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “appropriate; (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, 4 (PTAB Apr. 24, 2013). As noted above, the Petition asserts the same unpatentability grounds on which we instituted review in the 124 IPR, relying on substantially the same evidence.6 Joinder Mot. 1. If joinder is granted, Petitioner agrees to assume an “understudy” role and states that “[u]nless and until the current petitioners in IPR2023-00124 cease to participate in the instituted [124] IPR proceeding, [Petitioner] will not assume an active role.” Id. at 7–9. Petitioner represents that “[n]o additional grounds or arguments are being introduced, no new evidence or issues are being added, and no additional discovery or briefing or oral argument should be necessary as a result of [Petitioner’s] joinder.” Id. at 9. Petitioner further “agrees to adhere to all applicable deadlines set forth in the [124] IPR Scheduling Order.” Id. at 6– 7. We agree with Petitioner that joinder with the 124 IPR is appropriate under these circumstances. Patent Owner did not file an opposition to Petitioner’s joinder motion. Accordingly, we grant the joinder motion.” slip op. at 7

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for patent owner

    “Patent Owner’s argument in this regard also is unavailing. The 124 IPR was instituted on June 15, 2023, and Petitioner filed its joinder motion on July 14, 2023, before the joint motion to terminate in the 124 IPR was filed on November 20, 2023. The joinder motion is timely because joinder was requested no later than one month after institution of the 124 IPR. See 37 C.F.R. § 42.122(b). Additionally, the 124 IPR is still pending. The Petition therefore is not time-barred. Under these circumstances, we may grant Petitioner’s joinder motion.” slip op. at 4

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “This argument also is unavailing. We need not decide whether a party has identified all real parties in interest at the institution stage absent an implication of a time bar or an estoppel under 35 U.S.C. § 315. SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18–20 (PTAB Oct. 6, 2020) (precedential). We recognize Patent Owner’s allegation that, “without joinder, the [P]etition is time-barred.” Prelim. Resp. 2 (emphasis added). As explained above, however, the Petition is not time-barred, given that Petitioner has timely filed its joinder motion and the 124 IPR is still pending. Patent Owner does not allege a time bar or other estoppel would prevent institution if an unnamed party were identified as a real party in interest.” slip op. at 5

  Discretionary denial
  Patents in suitUS 9,578,045

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.