- PTAB · Jun 11, 2024 · IPR2024-00250 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that the Neibauer, Ausems, and Cheng combination renders claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An obviousness determination “does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). Oftentimes, the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994–995 (Fed. Cir. 1983). Indeed, the Federal Circuit has repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the “improvement” is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references. Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006).” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We disagree with Patent Owner that all of the references Petitioner is relying on are the same or substantially the same as references that were before the Office. There is no dispute that Ausems and McElfresh were not considered by the Office. See Prelim. Resp. 8–12; Ex. 1001, code (56). Moreover, we do not agree with Patent Owner that Ausems is substantially the same as Rensin and that McElfresh is substantially the same as Dowling. For example, Petitioner relies on Ausems for a mobile communications device that incorporates a digital camera for recording, storing, and transmitting digital images. Pet. 24. The disclosures of Rensin 3 Petitioner’s citation to “POPR 13 (quoting Dowling, ¶0064)” on page 3 of Petitioner’s Preliminary Reply appears to be an error. Patent Owner addresses Dowling on page 11 of its Preliminary Response. cited by Patent Owner identify a camera as a PDA expansion slot device, but do not disclose expressly that captured images can be stored and transmitted as Ausems does. Compare e.g., Ex. 1006, 2:5–11, 5:17–22 with Ex. 2003, 2:2–21. We agree with Petitioner that Ausems was thus more relevant to the challenged claims, and more applicable to a prior art reference such as Neibauer, that disclose the ability of the user to upload photos to a remote server. Petitioner also relies on McElfresh for its teaching of selecting and delivering advertisements and integrating those advertisements with other content on the same webpage. See Pet. 52–60. For example, Petitioner describes how McElfresh’s “ad server or Rad Server 112 ‘performs the overall function of gathering the necessary information regarding a particular ad (or set of ads) and the particular user and generating a set of ads which have been optimized for placement on a webpage,’ based on (among other things) calculated click-through-percentage rates.” Pet. 55 (quoting Ex. 1014, 6:42–48). In contrast, Dowling’s disclosure cited by Patent Owner4 describes how a user may log into “a geographically controlled web site and configures the packet filter to display information related to a user’s needs,” such that that when the user drives along a mall, “a web page comes up and provides directions to the shopping mall and optionally provides an inside map of the mall to include directions to the desired store.” Ex. 3001 ¶ 64; 4 Patent Owner cites to Exhibit 2004 as Dowling (US 2005/0177645). Prelim. Resp. 11. However, Exhibit 2004 is U.S. Patent App. 2005/0171645, directed to a “Household Energy Management System,” listing inventors as Oswald and Tamsett. See Ex. 2004, codes (10), (54), 76. Dowling appears to have been filed as Exhibit 1030, not Exhibit 2004. Prelim. Resp. 11 (citing Ex. 2004 ¶ 64). Dowling’s disclosure is substantially different from McElfresh’s teaching of using a server to select and integrate particular advertisements onto a webpage. We have reviewed the portions of Rensin and Dowling cited by Patent Owner and do not see substantially the same structures or functionality relied upon by Petitioner in Ausems or McElfresh.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art: would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile devices, such as systems for storing and retrieving information over the Internet or communicating using the Web using wireless mobile devices. Pet. 5–6 (citing Madisetti Decl. ¶¶ 14–18). Patent Owner states “[f]or purposes of this Response, [Patent Owner] applies Petitioner’s characterization of a POSITA [(“person having ordinary skill in the art)].” Prelim. Resp. 16. We regard Petitioner’s definition as consistent with the ’348 patent and the prior art before us and supported by testimonial evidence. Therefore, for the purpose of this Decision, we adopt Petitioner’s formulation. C. Claim Construction” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“An obviousness determination “does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). Oftentimes, the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994–995 (Fed. Cir. 1983). Indeed, the Federal Circuit has repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the “improvement” is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references. Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006). Dr. Madisetti articulates this very rationale by testifying that [t]he techniques of Cheng would have provided a distinct technological advantage by allowing the club system described in Neibauer to be delivered to mobile devices by converting web pages provided via Neibauer, thus obviating the need for the Yahoo! server to generate multiple different versions of those web pages (including potentially multiple mobile versions based on different mobile device and browser types), thus making it considerably simpler to provide club functionality to the web browsers of mobile devices. Ex. 1002 ¶ 106.” slip op. at 25
§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,922,348 - PTAB · Jun 11, 2024 · IPR2024-00249 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–19, 21, and 22 on all asserted grounds after finding a reasonable likelihood that claim 1 was obvious over Neibauer, Ausems, Cheng, and Squibbs.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“relying on are the same or substantially the same as references that were before the Office. In particular, there is no dispute that neither Harvey nor Ausems was considered by the Office, nor that Harvey is not substantially the same as any reference that was before the Office. Prelim. Resp. 9–10; Prelim. Reply 3. Further, we do not agree with Patent Owner that Ausems is substantially the same as Rensin. Specifically, Petitioner relies on Ausems to teach the incorporation of a camera into a mobile device, permitting the recording, storage, and transmission of digital images. Pet. 23; Prelim. Reply 3. We have reviewed the section of Rensin to which Patent Owner directs us (Ex. 2003, 2:2–21), and we do not see substantially the same functionality. Although Rensin teaches that “PDA expansion slots may be used to enhance the PDA capabilities with a digital camera,” Patent Owner does not explain, and it is not clear from our review of Rensin, that Rensin discloses the use of the mobile device to transmit the images recorded by the camera. Ex. 2003, 2:2–21. Accordingly, we are not persuaded that Rensin is substantially the same as Ausems. 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the current record, a person of ordinary skill in the art would have combined the teachings of Ausems with those of Neibauer in the manner described above. See Ex. 1002 ¶¶ 114–117. Specifically, a person having ordinary skill in the art would have combined Ausems’s ability to share photos captured by a mobile device with Neibauer’s Yahoo! club in order to “dramatically expand[] the universe of image data that the club based on the current record, a person of ordinary skill in the art would have had a reasonable expectation of success. Id. ¶ 117. Accordingly, on the present record, the combination of Neibauer and Ausems teaches limitation 1a.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to “a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile devices, such as systems for storing and retrieving information over the Internet or communicating using the Web using wireless mobile devices.” Pet. 5–6 (citing Ex. 1002 ¶¶ 14–18). At this stage, Patent Owner “applies Petitioner’s characterization of a person of ordinary skill in the art.” See Prelim. Resp. 15. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposed and implement the teachings of the ’578 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Madisetti. See Ex. 1002 ¶¶ 14–18.8” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner does not believe express claim construction is necessary at this time.” Pet. 8. Petitioner also discusses various claim construction arguments made in the district court proceeding. See id. at 25–27, 65–66. At this stage, Patent Owner agrees with Petitioner that “no express constructions are required.” Prelim. Resp. 16. 8 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. claim terms.9 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,619,578 - PTAB · Jun 11, 2024 · IPR2024-00247 · APJ Scott B Howard · IPR · Institution
Instituted IPR of claims 1–25 on all asserted grounds; the Board found a reasonable likelihood that claim 1 would be unpatentable as obvious over Neibauer, Miller, Cheng, and Squibbs.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“We disagree with Patent Owner that all of the references Petitioner is relying on are the same or substantially the same as references that were before the Office. In particular, there is no dispute that Miller was not considered by the Office. See Prelim. Resp. 6–13; Ex. 1001, code (56). Further, we do not agree with Patent Owner that Miller is substantially the same as Agboatwalla. Specifically, Petitioner relies on Miller for being able to select different types of communication tools for a group: Miller discloses a number of web-based forms that allow the user to (among other things) specify a name and description for the environment (Fig. 13B) identify the members of the environment (Fig. 13C, 14A-C), and select the various communication features (e.g. bulletin board, etc.) that will be available for members (Fig. 16). (Miller, 0045:12-0046:27.) With respect to the selection of communications features, Miller discloses a user interface for allowing the user to select (from a list) the environment. (Miller, Fig. 16, 0047:31-0048:9, 0042:29-32 (“The group creator selects from among these functions, preferably by way of an easy-to-use web browser interface, and these choices are stored in a database and associated with the group members.”).) These selections are then used in creating the environment or group. (Miller, 0043:3-6 (“In step 1104, the environment is created… to permit the group members to activate the functions selected for the group.”); EX1002, ¶96.) Pet. 18–19 (emphasis added).11 We have reviewed the section of Agboatwalla to which Patent Owner directs us (Ex. 2003, 2:32–50) and do not see substantially the same functionality. Although Agboatwalla describes a user being able to select what content may be viewed (see id.), Patent Owner does not direct us to, and we do not see, Miller’s teaching of selecting different types of communication pathways that may be selected for a group. Accordingly, Miller is not substantially the same as Agboatwalla. 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“f) Conclusion Regarding Claim 1 Based on the current record, there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Neibauer, Miller, Cheng, and Squibbs. 6. Analysis of Claims 2–25 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’801 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“Based on the current record, the combination of Neibauer and Miller teaches “control[ling] activation of a mobile information channel,” as recited in claim 1. As discussed above, the first user can create a Yahoo! Club by supplying the necessary information and selecting “Yes! I accept.” Neibauer is silent on whether the user can select which specific mobile information channels are associated with the Yahoo! Club. However, Miller teaches a similar collaborative web-based system in which the group’s creator can use an interface to choose specific communication pathways to allow: FIG. 16 shows one possible user interface for selecting communication tools to be made available to group members. This screen can be presented to the user creating the environment after the group has been identified and its members selected. It is contemplated that a variety of communication tools can be provided, including a bulletin board service; advertisements; white pages (e.g., a listing of members, their e-mail addresses, telephone numbers, and the like); yellow pages (e.g., a listing of promotional and contact information); document security (e.g., shared access secure document storage services); anonymous e-mail (described above with respect to the first embodiment); threaded dialogs; a group newsletter creation tool; videoconferencing; and even other user-provided applications that can be specified by name an location (e.g., URL). Ex. 1004, 47:31–48:10 (emphasis added); see also id. at 42:29–32 (“The group creator selects from among these functions, preferably by way of an easy-to-use web browser interface, and these choices are stored in a database and associated with the group members.”); Ex. 1002 ¶ 96. The combination of Miller’s teaching of selecting different methods of communication with Neibauer’s teaching of Yahoo! Clubs would allow the founder to select specific mobile information channels for the group to use. See Ex. 1002 ¶¶ 95–100. Based on the current record, a person having ordinary skill in the art would have combined those teachings in the manner described above. See Ex. 1002 ¶¶ 97–100. Specifically, a person having ordinary skill in the art would have combined Miller’s ability to select communication channels with Neibauer’s Yahoo! Club in order “to enhance the flexibility and customizability of clubs in Neibauer.” Id. ¶ 99. This would allow the founder to eliminate certain features that “may not have been particularly useful or desirable for some clubs.” Id. Additionally, a person having ordinary skill in the art would have had a reasonable expectation of success. See id. ¶ 100. Accordingly, the combination of Neibauer and Miller teaches” slip op. at 25
- Skill levelSkill level petitioner adoptedOther
“Dr. Madisetti argues that a person having ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile Internet or communicating using the Web using wireless mobile devices.” Pet. 5–6 (citing Ex. 1002 ¶¶ 14–18). At this stage of the proceeding, Patent Owner “applies Petitioner’s characterization of a [person having ordinary skill in the art].” Prelim. Resp. 19 (citing Ex. 2001 ¶¶ 42–44). For purposes of this Decision, we adopt Petitioner’s formulation of a person having ordinary skill in the art, which is consistent with the invention claimed in the ’801 patent.8” slip op. at 9
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,825,801 - PTAB · Jun 11, 2024 · IPR2024-00246 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1, 6–11, 13–18, and 20–27, finding a reasonable likelihood that claim 1 is obvious over Neibauer, Miller, and Cheng.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Dr. Madisetti argues that a person having ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile devices, such as systems for storing and retrieving information over the Internet or communicating using the Web using wireless mobile devices.” Pet. 6 (citing Ex. 1002 ¶¶ 14–18). At this stage of the proceeding, Patent Owner “applies Petitioner’s characterization of a [person having ordinary skill in the art].” Prelim. Resp. 19 (citing Ex. 2001 ¶¶ 42–44). For purposes of this Decision, we adopt Petitioner’s formulation of a person having ordinary skill in the art, which is consistent with the invention claimed in the ’336 patent.10” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not believe express claim construction is necessary at this time.” Pet. 8. Petitioner also discusses various claim construction arguments made in the district court proceeding. See id. at 28–29, 65. At this stage, Patent Owner agrees with Petitioner that “no express constructions are required,” and further agrees “that the ordinary and customary meanings of the claim terms apply.” Prelim. Resp. 19. For the purposes of this Decision, we need not expressly construe any claim terms.11 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“considered by the Office. See Prelim. Resp. 6–13; Ex. 1001, code (56). Further, we do not agree with Patent Owner that Miller is substantially the same as Agboatwalla. Specifically, Petitioner relies on Miller for being able to select different types of communication tools for a group: Miller discloses a number of web-based forms that allow the user to (among other things) specify a name and description for the environment (Fig. 13B) identify the members of the environment (Fig. 13C, 14A-C), and select the various communication features (e.g. bulletin board, etc.) that will be available for members (Fig. 16). (Miller, 0045:12-0046:27.) With respect to the selection of communications features, Miller discloses a user interface for allowing the user to select (from a list) the particular features that will be included in the collaborative environment. (Miller, Fig. 16, 0047:31-0048:9, 0042:29-32 (“The group creator selects from among these functions, preferably by way of an easy-to-use web browser interface, and these choices are stored in a database and associated with the group members.”).) These selections are then used in creating the environment or group. (Miller, 0043:3-6 (“In step 1104, the environment is created… to permit the group members to activate the functions selected for the group.”); EX1002, ¶104.) Pet. 19 (emphasis added).13 We have reviewed the section of Agboatwalla to which Patent Owner directs us (Ex. 2003, 2:32–50) and do not see substantially the same functionality. Although Agboatwalla describes a user being able to select what content may be viewed (see id.), Patent Owner does not direct us to, and we do not see, Miller’s teaching of selecting different types of communication pathways that may be selected for a group. Accordingly, Miller is not substantially the same as Agboatwalla. 13 References to Miller are to Petitioner’s pagination in the exhibit, for consistency with the Petition. Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the current record, a person having ordinary skill in the art would have combined those teachings in the manner described above. See Ex. 1002 ¶¶ 105–108. Specifically, a person having ordinary skill in the art would have combined Miller’s ability to select communication channels with Neibauer’s Yahoo! Club in order “to enhance the flexibility and customizability of clubs in Neibauer.” Id. ¶ 107. This would allow the founder to eliminate certain features that “may not have been particularly useful or desirable for some clubs.” Id. Additionally, a person having ordinary skill in the art would have had a reasonable expectation of success. See id. ¶ 108.” slip op. at 26
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,793,336 - Luminex International Co., Ltd. v. Signify Holdings B.V.Institution deniedPTAB · May 9, 2024 · IPR2024-00101 · APJ Steven M Amundson · IPR · Institution
The Board denied institution because Menard was a real party in interest served with an infringement complaint more than one year before the Petition was filed.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Thus, the evidence shows that: (1) Petitioner and Menard are parties to an agreement; (2) under the agreement, Petitioner supplies accused products to Menard; (3) the agreement includes an indemnity provision; (4) under the agreement, Menard made multiple demands for Petitioner to “indemnify or defend as a matter of first defense”; and (5) Petitioner responded to Menard’s multiple demands by, among other things, filing the Petition challenging the claims in the ’336 patent. See Ex. 2001 ¶¶ 21, 24–26, 28–29, 32–33, 35; Ex. 2002, 5–9 (¶¶ 21, 24–26, 28–29, 32–33, 35); Ex. 2013, 5–9 (¶¶ 21, 24–26, 28–29, 32–33, 35); Ex. 3003 ¶¶ 21, 24–26, 28–29, 32–33, 35. That Petitioner responded to Menard’s multiple demands for Petitioner to “indemnify or defend as a matter of first defense” by filing the Petition shows that the Petition was filed at Menard’s “behest.” Specifically, Menard demanded defense from infringement liability, and Petitioner responded by initiating this proceeding seeking to free Menard from infringement liability for all 20 claims in the ’336 patent. See Pet. 15–89.” slip op. at 36
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“For the real-party-in-interest analysis, we initially consider “whether a petition has been filed at a nonparty’s ‘behest,’” i.e., “the heart of the inquiry.” Uniloc 2017, 989 F.3d at 1027–28; AIT, 897 F.3d at 1351; CTPG at 14. In its third-party complaints, Menard alleged that it and Petitioner “are parties to a Menards Customer Returns, Defective Goods Policy and Conditions of Order Agreement” that requires Petitioner to “indemnify, defend and hold harmless Menard from and against any claims, litigation, or suits,” including “patent infringement arising from Menard’s use, sale or offering for sale of any goods provided by” Petitioner. Ex. 2001 ¶¶ 21, 24, 26, 28; Ex. 3003 ¶¶ 21, 24, 26, 28. Menard also alleged that the Conditions of Order Agreement requires Petitioner to “indemnify or defend as a matter of first defense and payment, not as a matter of reimbursement.” Ex. 2001 ¶ 29; Ex. 3003 ¶ 29.” slip op. at 35
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
Discretionary denialPatents in suitUS 10,299,336 - Fitesa Simpsonville, Inc. v. The Procter & Gamble CompanyInstitution deniedPTAB · Mar 20, 2024 · IPR2023-01450 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the cited art previously considered or cumulative and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and evidence of record, we exercise our discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.” slip op. at 2
- 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.” 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, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 9
Discretionary denialcites PhillipsPatents in suitUS 10,513,801 - Fitesa Simpsonville, Inc. v. The Procter & Gamble CompanyInstitution deniedPTAB · Mar 20, 2024 · IPR2023-01451 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the prior art previously considered and no material error by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“b) Advanced Bionics Framework Part (2) Having determined that the “same or substantially the same prior art” previously was presented to the Office, we now consider whether Petitioner sufficiently demonstrates that the Office materially erred. In assessing the second part of the Advanced Bionics Framework, we consider Becton, Dickinson factors (c), (e), and (f) to determine whether material error has been shown. Advanced Bionics, Paper 6 at 10. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. However, “[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Id. at 9. Petitioner bears the burden of showing that the Examiner materially erred. Id. at 8.” slip op. at 19
Discretionary denialcites PhillipsPatents in suitUS 11,326,276 - Amperex Technology Ltd. v. Semiconductor Energy Laboratory Co., Ltd.Institution deniedPTAB · Mar 12, 2024 · IPR2023-01349 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . 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 determine the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review of any claim on any ground asserted in the Petition.” slip op. at 2
- BurdenDenied
“Given this, to show that Blangero’s disclosure of MgO or LiF in its coating teaches or suggests a rock-salt crystal structure, Petitioner needs to explain why a person of ordinary skill in the art either would have understood the compounds to have a rock-salt crystal structure when manufactured according to the disclosure of Blangero or would have chosen to use MgO or LiF in a rock-salt crystal structure rather than in another available form. On the first point, Petitioner argues that “‘the stable phase at room temperature and pressure conditions’ of MgO is ‘a rocksalt cubic structure of NaCl (space group Fm-3m).’” Pet. 28 (quoting Ex. 1030, 16; citing Ex. 1003 ¶ 142). But, as Petitioner’s declarant, Dr. Hayes, points out, Blangero does not teach forming MgO in a room-temperature process. Ex. 1003 ¶ 142 (Blangero’s “second firing step” occurs at “925 °C for 12 hours”); see Ex. 1005 ¶ 110 (teaching the firing step to which Dr. Hayes refers). Thus, the significance of rock-salt-type MgO being “the stable phase at room temperature and pressure conditions” is unclear. To the extent that Dr. Hayes explains why MgO, which “is well known to crystallize even at substantially lower temperatures,” such as “room temperature and pressure conditions,” would “do so more readily at [a higher temperature of] 925 °C,” this argument is not discussed, nor even cited, in the Petition. Ex. 1003 ¶¶ 90–94; see Pet. 28. Accordingly, any reliance on this argument by Petitioner constitutes improper incorporation by reference. 37 C.F.R. § 42.6(a)(3). Thus, Petitioner does not show sufficiently that a person of ordinary skill in the art either would have understood MgO to have a rock-salt crystal structure when manufactured according to the disclosure of Blangero or would have chosen to use MgO in a rock-salt crystal structure rather than in another available form. Similarly, with respect to LiF, neither Petitioner nor Dr. Hayes sufficiently explains the choice of rock-salt-type material over other options. Pet. 29 (arguing only that Ex. 1013 shows that “LiF has rock salt structure”); Ex. 1003 ¶ 143 (same). Thus, Petitioner does not show sufficiently that Blangero teaches or suggests a rock-salt crystal structure by virtue of its teaching that either MgO or LiF is present.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“The 2012 study on which Petitioner relies did not find “superior structural stability” over other lithium-titanium-oxygen compounds, as Petitioner argues. Instead, the study noted that the structure of “LiTiO2 prepared by high-temperature sintering TiO2 with lithium salt . . . impl[ies] LiTiO2 has superior structural stability in organic electrolyte as compared to other Li-Ti-O oxides.” Ex. 1029, 1. Thus, the structural stability was implied from the chemical structure of the material rather than found through study of the material. Moreover, the implied structural stability was only for LiTiO2 that was prepared in a particular way, by high-temperature sintering of TiO2 with lithium salt, and Petitioner does not allege that a person of ordinary skill in the art would have prepared the LiTiO2 they substituted for Blangero’s Li2TiO3 using this method. As for Petitioner’s argument that the study found that LiTiO2 outperformed Li2TiO3, we are not persuaded. The study compared particles with an LiTiO2 coating to uncoated particles, not to particles coated with Li2TiO3. Ex. 1029, 4, Figs. 4(c), 4(d). Although the study notes that particles coated with “[m]onoclinic Li2TiO3 and spinel Li4Ti5O12” exhibit “a noticeable capacity decay . . . when charged at high operating voltage and cycled above room temperature,” it concludes only that particles coated with LiTiO2 “exhibited inspiring high-voltage cycling capability as well as thermal stability than the pristine counterpart.” Id. at 1, 4. In addition, the pristine particles used in the study were made from “Li[NixCoyMnz]O2 (0≤x,y,z<1) (called as LNCM),” and the particles in Blangero do not contain either nickel or manganese in their cores. Ex. 1005 ¶¶ 9–40 (particles contain lithium, oxygen, cobalt, and metals chosen from the group consisting of aluminum, gallium, boron, magnesium, titanium, iron, copper, calcium, barium, yttrium, tin, antimony, sodium, zinc, zirconium, silicon); Ex. 1029, 1. Petitioner does not explain why a person of ordinary skill in the art would expect the study’s results to extend to Blangero’s particles made from a different material. Pet. 29–30. Because Petitioner has not shown sufficiently that Blangero teaches or suggests a second region comprising a rock-salt crystal structure or that a person of ordinary skill in the art would have had a reason to substitute rocksalt-type LiTiO2 for the materials disclosed in Blangero, Petitioner has not shown a reasonable likelihood that it would prevail on claim 1 on its Blangero-based grounds.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, “[i]ndividuals with different education and additional experience could still [have been] of ordinary skill in the art if that additional experience compensate[d] for a deficit in their education and experience.” Id. On the present record, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 19. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’660 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’660 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,043,660 - Duplo U.S.A. Corporation v. Mgi Digital Technology S.A.Institution deniedPTAB · Dec 5, 2023 · IPR2023-00936 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution for claims 1, 2, 4, 9, 10, and 12 under § 314(a), finding the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“G. Balancing the Fintiv Factors A holistic balancing of the Fintiv factors weighs in favor of discretionary denial. As discussed above, only factor 4 weighs somewhat against discretionary denial. The remaining factors either do not support institution (factors 1 and 6) or weigh in favor of denial of institution (factors 2, 3, and 5). Moreover, Petitioner has not submitted a Sotera-type stipulation or shown compelling evidence of unpatentability that would make discretionary denial inappropriate under the Guidance Memo. Given the late stage of the parallel District Court Proceeding, the substantial investment by the parties in that proceeding, and the lack of strong countervailing considerations, the evidence of record favors exercising our discretion to deny institution of an inter partes review.” slip op. at 32
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“As such, even if we were to determine that Petitioner’s Nagashima- based challenges met the lower threshold for instituting an inter partes review (a question we need not reach in our Fintiv analysis), these challenges, if unrebutted in trial, do not plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Ordinary Skill in the Art The level of ordinary skill is a factor to be considered when determining obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Petitioner states that a person of ordinary skill in the art would have had a bachelor’s degree in mechanical or electrical engineering or a related field and at least two years of practical experience with printer technology. Pet. 5. Petitioner further asserts that more relevant experience may compensate for less formal education and that more relevant formal education may compensate for less practical experience. Id. (citing Ex. 1003 ¶¶ 27–28). Patent Owner does not propose its own definition but does assert that Petitioner has understated the level of ordinary skill in the art. Prelim. Resp. 9. For the purpose of this Decision, we apply Petitioner’s definition, because Patent Owner presents no countervailing definition and because we find Petitioner’s statement of the level of ordinary skill in the art adequate and supported on this record. We also note that our analysis would not change if we were to apply a higher level of skill in the art.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner that Petitioner has not sufficiently shown that Nagashima discloses or suggests the claimed covering ink ordroplets of covering ink and, thus, Petitioner’s Nagashima-based grounds fail to present a compelling, meritorious, challenge. First, we disagree with Petitioner’s assertion that the ’806 patent defines covering ink as synonymous with “viscous product” so that “covering ink” broadly covers any “viscous product” including printing ink. See Pet. 8–9 (citing Ex. 1001, 3:21–22; Ex. 1003 ¶ 57–61). Rather, the ’806 patent states that “[i]n the present document, the terms of ‘covering ink’, ‘viscous product’ and ‘varnish’ are synonyms.” Ex. 1001, 3:21–22. We understand this sentence to mean that when ’806 patent uses the term “viscous product,” that the term is synonymous with “covering ink” within the ’806 patent, but is not intended to broadly mean that “covering ink” encompasses the entire universe of viscous products. We also determine that there are substantial issues with Petitioner’s argument that Nagashima discloses or suggests using covering ink in its device. Petitioner’s argument that Nagashima does not limit its device to any particular ink and identifies ink having different characteristics, including viscosity, does not plainly lead to a conclusion that Nagashima discloses use of covering ink. See Pet. 8. Nor does Petitioner’s argument that because some inkjet printers have been used to deposit covering ink, and those inkjet printers and Nagashima’s device both involve similar piezo-type ink ejection heads for ejecting different ink types and viscosities, plainly lead to a conclusion that a POSITA would have found it obvious to use Nagashima to apply a covering ink. See Pet. 9–10; Ex. 1003 ¶¶ 62–66; see” slip op. at 24
§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,783,806 - Costar Realty Information, Inc. / Duolingo, Inc. v. Clantech, Inc.All claims unpatentablePTAB · Nov 21, 2023 · IPR2022-00799 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 1–17 are unpatentable as obvious: claims 1–9 over Collins and Gautier, with or without Schaefer; claims 1–5 and 11–17 over Collins, Gautier, Schaefer, and Parthasarathy; and claim 10 over Collins, Gautier, Schaefer, and Miller.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“of unpatentability, Patent Owner has the initial burden of production to show that Schaefer is “not prior art because the asserted claims in the [’421 patent] are entitled to the benefit of a filing date (constructive or otherwise) prior to” Schaefer’s filing date. Dynamic Drinkware, 800 F.3d at 1380; see also Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365, 1371 (Fed. Cir. 2023) (“[W]hen a patent owner attempts to antedate an asserted prior art reference, the patent owner assumes a temporary burden of production.”). To meet that burden, Patent Owner is required to provide “a detailed explanation of the contention that the ’421 patent is entitled to the benefit of a priority date that pre-dates Schaefer.2 37 C.F.R. § 42.22(a)(2).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“To disavow claim scope, the specification must contain ‘expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.’” Retractable Techs., Inc. v. Becton, Dickinson and Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009)). “In general, statements about the difficulties and failures in the prior art, without more, do not act to disclaim claim scope.” Id. (citing Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1315 (Fed. Cir. 2010) (concluding that statement that a prior art two-piece implant was “particularly difficult” to achieve did not disclaim two-piece implants)). Although a disavowal must be clear, it need not be explicit. Techtronic Indus. v. Int’l Trade Comm’n, 944 F.3d 901, 907 (Fed. Cir. 2019); see also Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012) (Disavowal “may be inferred from clear limiting descriptions of the invention in the specification or prosecution history.”). slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Under a proper legal standard, a reference will teach away when it suggests that the developments flowing from its disclosure are unlikely to produce the objective of the [patented] invention.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). A reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“otherwise dispute Petitioner’s evidence that the combined teachings of Collins and Gautier, with or without Schaefer, disclose the limitations of claim 1. See PO Resp. Having considered the complete trial record, and for the reasons set forth in Sections II.D.4–6.a supra, we determine that Petitioner has established by a preponderance of the evidence that the combined teachings of Collins and Gautier, with or without Schaefer, account for all of the limitations recited in claim 1. Pet. 16–38; Ex. 1003 ¶¶ 115–206. We also determine, for the reasons set forth in the Petition, that Petitioner establishes by a preponderance of the evidence that a POSITA would have been motivated to combine the teachings of Collins, Gautier, and Schaefer as proposed with a reasonable likelihood of success. Pet. 13– 16; Ex. 1003 ¶¶ 103–107.” slip op. at 48
Patent outcomesUS 9,886,421 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,886,421
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.