- PTAB · Aug 9, 2024 · IPR2024-00509 · APJ Michael J Strauss · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–19, finding a reasonable likelihood of success on the asserted §103 obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’842 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–4 and 6–19 of the ’842 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner for the purposes of this Decision because it is consistent with the ’842 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“in the prior art that would have led a POSITA to modify the teachings of the Lorex Guide to incorporate the teachings of Kim, Petitioner argues, with Dr. Bim providing supporting testimony, that “both [the] Lorex Guide and Kim are directed to connecting network endpoint devices (e.g., peer devices) including smart phones and cameras” and “a POSITA would have been sufficiently skilled to implement such a combination given the predictable electrical/network components and the relatively advanced state of the art at the time.” Id. (citing Ex. 1001 ¶ 70). Thus, according to Petitioner, “a POSITA would have had a reasonable expectation of success in achieving the Lorex Guide-Kim combination.” Id. at 19 (citing Ex. 1001 ¶¶ 70–71). At this stage of the proceeding, we credit Dr. Bim’s testimony that a skilled artisan would have had reasons to combine the teachings of the Lorex Guide and Kim. Thus, on the preliminary record before us and in the absence of any counterargument from Patent Owner, we are persuaded for purposes of this Decision that Petitioner makes a sufficient showing that a skilled artisan would have had reasons, with rational underpinning, to combine the teachings of the Lorex Guide and Kim, with a reasonable expectation of success.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - PTAB · Mar 4, 2024 · IPR2023-01239 · APJ Michael J Strauss · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7, 11, 12, 14–18, 20–23, and 25–29 on all three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim, and accordingly, we institute an inter partes review as to all challenged claims of the ’101 patent on the grounds of unpatentability presented. See 37 C.F.R. § 42.108(a) (“When instituting . . . 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.”).” slip op. at 2
- Other 314aDecided for petitioner
“We are not persuaded it would be appropriate to deny institution merely on the basis of alleged trivial errors such as those identified by Patent Owner. See Prelim Resp. 1. To the extent Petitioner “cit[ed] the wrong Wang reference” (id.), this error was addressed in and corrected pursuant to our November 29, 2023, Order Granting Motion to Correct Clerical or Typographical Mistakes (Paper 13), entered prior to Patent Owner’s filing of the Preliminary Response, with Petitioner subsequently filing a corrected Petition and Declaration of Clifford Reader, Ph.D. Moreover, Patent Owner does not cite to any authority in support of discretionary denial of institution based on findings that a petitioner has not given a petition “due attention.” Cf. USPTO Notice of Proposed Rule Making “Changes Under Consideration to Discretionary Institution Practices, Petition Word-Count Limits, and Settlement Practices for America Invents Act Trial Proceedings Before the Patent Trial and Appeal Board”, 88 Fed. Reg. 24,503 (April 21, 2023) available at https://www.govinfo.gov/content/pkg/FR-2023-04-21/pdf/2023- 08239.pdf. Accordingly, we decline to deny institution based on these arguments. 2. Identification of Claim Construction, Structure or Acts Corresponding to Means-Plus-Function Limitations Patent Owner asserts that the requested inter partes review should be” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the ’101 patent, the Examiner cited, inter alia, the Hejna prior art reference but did not apply or reject the claims based on that or any other prior art reference. Ex. 1002, 37, 39. There is no disagreement the Chou reference was never cited or considered by the Examiner. Under Becton, Dickinson factor (a), we consider the similarities and material differences between the asserted Chou and Hejna references. Patent Owner contends “[a]lthough Petitioner argues that Chou discloses or renders obvious element [1d], examination of the actual disclosure of Chou reveals that its disclosure is substantially the same as Hejna, prior art of record.” Prelim. Resp. 46. Patent Owner argues that Chou’s disclosures of (1) selecting a target arrival time for each frame sufficiently in advance of its playback time, (2) controlling an upper bound on the time of arrival of bits into the client buffer, and (3) selection of a code rate such that the frame’s arrival time is as close to the target arrival time as possible, relied upon by Petitioner for teaching limitation [1d], are substantially the same as that of Hejna. Id. at 46–47 (citing Pet. 35; Chou, Ex. 1004 ¶¶ 19, 27; Hejna, Ex. 2011, 4:60–63, 8:50–57, 14:3–7). Addressing Becton, Dickinson factors (a) and (b), Patent Owner fails to persuade us that Chou’s disclosure is substantially the same as or cumulative of Hejna’s. Even if, as alleged by Patent Owner, Hejna discloses subject matter corresponding to that disclosed by Chou, which subject matter is asserted by Petitioner as teaching claim 1’s element [1d], it is not clear why the disclosures are otherwise substantially the same. Although recognizing the Examiner’s reasons for allowance are based on the combination of limitations corresponding to claim 1’s elements [1b], [1d], and [1e], Patent Owner’s argument addresses only Petitioner’s reliance on Chou for teaching claim 1’s element [1d]. See Prelim. Resp. 46. Furthermore, evidence extrinsic to the disclosures themselves does not suggest Chou’s disclosure is likely to be the same or substantially the same as Hejna. For example, the two references list no inventor in common, do not relate back to a common priority document, we ascertain no commonly cited prior art references cited during their respective prosecutions, nor do we find any other indicia that the disclosures are the same or substantially the same. Compare Ex. 1004, code (75), with Ex. 2011, codes (56), (75).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundInstituted
“(ii) Motivations to Combine Second, at this preliminary stage, we are not persuaded by Petitioner’s contentions that a POSITA would have been motivated to combine the teachings of Chou and Wang. Pet. 74. As argued by Patent Owner, “Wang and Chou are directed to different technologies—active encoding applications and transport-layer protocols,” (see Prelim. Resp. 30, 34–35), and Petitioner does not persuasively explain, for example, why the two methods would be combined into a single method rather than implemented independently in their respective transport and application layers. (iii) Scope of Wang’s Teaching vis-à-vis Limitation [1d] Petitioner states “[i]f [Patent Owner] argues Chou doesn’t teach [1d], Wang does” (Pet. 62), concluding “Wang teaches calculating a change in code rate based on both the remaining time before reproduction start time and an available reproduction time, as required by [1d]” (id. at 63). Apart from a bare cross-reference to Ground 1 (see Pet. 62 (“See Ground 1, [1d]”)), Petitioner does not make any reference to Chou for teaching any aspect of limitation [1d] in connection the combination of Ground 2 (see generally id. at 62–65). Furthermore, although contending that “Chou and Wang both disclose controlling code rate to control buffer duration/fullness to prevent buffer underflow” (id. at 72), Petitioner does not clearly indicate that a POSITA would have had reason to combine Wang’s teaching of criteria used to maintain buffer fullness with Chou’s teaching of determining a code rate where the code rate “represents the data amount (the data size, e.g., the number of bytes) of content data for reproducing content at constant speed (reproducing content at 1x speed) for a unit time (e.g., one second)” (Ex. 1001, 7:7–11). Therefore, at this preliminary stage, we treat Petitioner’s Ground 2 as relying on Wang alone for teaching [1d].” slip op. at 54
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,752,101 - PTAB · Feb 7, 2024 · IPR2023-01241 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 10–13, 19, 21, and 33 on all petition grounds after finding a reasonable likelihood of success on claim 10 under § 103 over Ueda and the SIP and SDP …
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We find Peloton’s argument persuasive that Aarts and Ueda differ materially, at least in that Aarts does not disclose “play-list information.” See Ex. 1002, 533–34. It does not matter whether that limitation is “central” to the challenged claims, because an obviousness determination “requires a suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (emphasis added) (citing In re Gulack, 703 F.2d 1381, 1385 n.9 (Fed. Cir. 1983); In re Royka, 490 F.2d 981, 985 (CCPA 1974)).” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“General Plastic applies to the situation where a petitioner filed multiple, staggered petitions “challenging the same patent and same claims.” See Gen. Plastic, IPR2016-01357, Paper 19 at 9–10, 16–17; see also Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9 (PTAB Apr. 2, 2019) (precedential). But here, Peloton initiated this proceeding and IPR2023-01240 on the same day. These circumstances do not implicate the roadmapping concerns that General Plastic seeks to alleviate. See Gen. Plastic, IPR2016-01357, Paper 19 at 16–17. Discretionary denial on the basis that a petitioner has filed multiple concurrent petitions challenging the same patent is addressed in the Consolidated Trial Practice Guide (Nov. 2019) (“Trial Practice Guide”), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. The Trial Practice Guide states that, “[b]ased on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations,” because too many petitions “may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. at 59. But “there may be circumstances in which more than petition may be necessary.” Id.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A claim is unpatentable under § 103(a) if the differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We base our obviousness inquiry on factual considerations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) any objective indicia of obviousness or non-obviousness that may be in evidence. See Graham, 383 U.S. at 17–18. Considering these factors,14 we determine that Peloton has shown a reasonable likelihood that claim 10 is unpatentable as obvious over Ueda in view of the SIP and SDP Standards, for the reasons explained below.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Peloton argues that a person of ordinary skill in the art “would have had a bachelor’s degree, or equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience researching, designing, or developing content delivery systems and related hardware, software, and firmware, or equivalent experience.” Pet. 4 (citing Ex. 1008 ¶¶ 36–40). NEC agrees. See Prelim. Resp. 4 (citing Ex. 2001 ¶ 22). Because it is presently uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’427 patent, we adopt the above articulation of the level of ordinary skill for this decision.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,769,427 - PTAB · Feb 7, 2024 · IPR2023-01240 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1–9, 14–18, 20, 22, 32, and 34–36, finding a reasonable likelihood that claim 1 is obvious over Ueda, the SIP Standard, and the SDP Standard.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We find Peloton’s argument persuasive that Aarts and Ueda differ materially, at least in that Aarts does not disclose “play-list information.” See Ex. 1002, 533–34. It does not matter whether that limitation is “central” to the challenged claims, because an obviousness determination “requires a suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (emphasis added) (citing In re Gulack, 703 F.2d 1381, 1385 n.9 (Fed. Cir. 1983); In re Royka, 490 F.2d 981, 985 (CCPA 1974)).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“13. Conclusion as to Claim 1 For the above reasons, we determine that Peloton has shown, sufficiently persuasively at this stage, that Ueda in combination with the SIP and SDP Standards teaches all the limitations of claim 1, and that a person of ordinary skill in the art would have had reason to combine the features of each reference as Peloton argues in the Petition. We therefore determine that Peloton is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103(a) as obvious over Ueda in view of the SIP Standard and the SDP Standard.” slip op. at 45
- Skill levelSkill level board ownOther
“had a bachelor’s degree, or equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience researching, designing, or developing content delivery systems and related hardware, software, and firmware, or equivalent experience.” Pet. 4 (citing Ex. 1008 ¶¶ 36–40). NEC agrees. See Prelim. Resp. 4 (citing Ex. 2001 ¶ 22). Because it is presently uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’427 patent, we adopt the above articulation of the level of ordinary skill for this decision.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “equipment specification information” First, Peloton contends that we should interpret the term equipment specification information to mean “an identifier for identifying the user equipment” because in several figures of the ’427 patent, SIP messages include SIP URIs (Uniform Resource Identifiers) associated with the user requesting the content. See Pet. 9 (emphasis omitted). NEC disagrees with Peloton’s proposed construction and argues that “this term should be given its plain and ordinary meaning.” Prelim. Resp. 12. NEC contends that no particular construction is necessary because the term is not relevant to the contested issues in the Petition. See id. Based on the preliminary evidence, we agree with NEC that the term has its ordinary and customary meaning, but we need not construe the term explicitly at this stage. 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 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,769,427
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.