• Nokia Of America Corporation / Ericsson Inc. et al. v. General Access Solutions, Ltd.Instituted
  PTAB · Apr 16, 2024 · IPR2023-01416 · APJ Ken B Barrett · IPR · Institution

  The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood of success for method claims 16–20 under Genossar and Barratt ’470.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memorandum”), available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. Accordingly, because Petitioner has offered a stipulation like that in Sotera, we do not discretionarily deny institution under Fintiv.” slip op. at 12

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

    “information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’477 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’477 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2

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

    “Petitioner does not propose an explicit claim construction for any term, asserting that, “[u]nless otherwise specified, for purposes of this Petition, the terms should receive their respective plain and ordinary meaning as understood by a [person of ordinary skill in the art].” Pet. 6. Patent Owner asserts that “[n]o claim construction is necessary to deny institution because [Patent Owner] General Access’s arguments for denial do not hinge on any disputed issues of claim interpretation.” Prelim. Resp. 10. For the reasons set forth below, we determine that, as to the independent apparatus claim, Petitioner has not met its burden on its challenges as articulated by Petitioner, but we determine that Petitioner has met its burden for the independent method claim. We need not reach any claim construction issues to make those determinations. Accordingly, on this record and for purposes of this decision, we determine that no claim terms require express construction. However, the parties’ respective positions regarding the anticipation grounds suggest that there may be claim construction disputes regarding terms in independent apparatus claim 1.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 5. Patent Owner states that, “[f]or purposes of this preliminary Response only, Patent Owner does not dispute the Petitioners’ definition of a person of ordinary skill in the art.” Prelim. Resp. 4 (citing Pet. 5). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 6,947,477
• CSC Serviceworks, Inc. v. Payrange Inc.Instituted
  PTAB · Apr 12, 2024 · IPR2023-01449 · APJ Meredith C Petravick · IPR · Institution

  The Board instituted IPR on claim 11 based on a reasonable likelihood that Zhou, Athwal, Low, Arora, Casey, and Freeny render it obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied

    “Where the first-filed petition under [General Plastic] factor 1 was discretionarily denied or otherwise was not evaluated on the merits, factors 1–3 only weigh in favor of discretionary denial when there are ‘road-mapping’ concerns.” Code200, UAB v. Bright Data, Ltd., IPR2022-00861, Paper 18 at 5 (PTAB Aug. 23, 2022) (precedential). Here, there are no roadmapping concerns because Petitioner filed the Petition here prior to Patent Owner filing any preliminary response in PGR2023-00042. Prelim. Reply 7. Petitioner argues that General Plastics factors 4–7 are obviated because there are no longer multiple petitions pending against the ’772 patent. Id. Under the circumstances here, we agree. “[T]he Patent Owner’s concerns of fairness are outweighed by the benefits to the patent system of improving patent quality by reviewing the merits of the challenges raised in the petitions, which have not been addressed to date.” Code200, Paper 18 at 6. Patent Owner’s request that we discretionarily deny the Petition under 35 U.S.C. § 314 because the ’772 patent was also challenged in proceeding PGR2023-00042 is denied. slip op. at 11

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

    “The Board’s precedential decision SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020) (“SharkNinja”) held that it best serves the Office’s interests in cost and efficiency to not resolve an RPI issue when “it would not create a time bar or estoppel under 35 U.S.C. § 315” in that proceeding. SharkNinja, Paper 11; see also Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 76 at (USPTO Director May 22, 2023) (non-precedential). We do not address whether KioSoft is an unnamed real-party-in-interest because, even if it was, it would not create a time bar or estoppel under 35 U.S.C. § 315. 1 Patent Owner additionally requests that we impose the sanction of dismissal of the Petition under 37 C.F.R. § 42.12. Prelim. Resp. 10–11; Prelim. Sur-reply 6–7. Under 37 C.F.R. § 42.11(d)(2), a motion for sanctions must be made separately and a party must seek authorization from the Board prior to filing a motion for sanctions, a required by 37 C.F.R. § 42.20. We, thus, do not reach Patent Owner’s request for sanctions.” slip op. at 4

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

    “2. Analysis Petitioner contends that claim 11 is unpatentable over Zhou, Athwal, Low, Arora, Casey, and Freeny. Pet. 82–91. Because claim 11 depends from claim 1, we also consider Petitioner’s contention that claim 1 is unpatentable over Zhou, Athwal, and Low. Id. at 28–55. After considering the Petition, the Preliminary Response, and all of the cited evidence of record, we determine that Petitioner sufficiently shows for the purposes of institution that all of limitations of claims 1 and 11 are taught by the combination of Zhou, Athwal, Low, Arora, Casey, and Freeny.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther

    “to buy, the consumer is presented with a bill to verify the purchase and to select an account to use to make the purchase. Ex. 1005 ¶ 17. After verification, payment information and an authorization key are transmitted to a vending machine. Id. Based on Athwal’s disclosures, Dr. Neuman testifies: A POSITA would have understood a user selecting to transmit payment account information and an authorization to constitute receiving user input ‘trigger[ing] payment by the mobile payment application for a transaction initiated by the user of the mobile device with the available payment accepting unit.’ Ex. 1003 ¶ 90. Petitioner contends, relying on the testimony of Dr. Neuman that, “[i]mplementing the features of Athwal would have improved the security and efficiency, and reduced the cost, of Zhou’s method for conducting transactions with automated vending machines.” Pet. 28–31 (citing Ex.1003 ¶¶ 50–51). On this record, we are persuaded that Petitioner sufficiently shows that it would have been obvious to one of ordinary skill in the art to combine sufficiently supported by the cited prior art itself. During trial, Patent Owner will have the opportunity to cross-examine Dr. Neuman. payment account to trigger a payment with Zhou’s teaching of presenting prompts on a screen display to facilitate a transaction. See Pet. 28–31 (citing Ex. 1003 ¶¶ 50–54).” slip op. at 21

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,481,772
• Nokia Of America Corporation / Ericsson Inc. et al. v. General Access Solutions, Ltd.Institution denied
  PTAB · Mar 22, 2024 · IPR2023-01415 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any of claims 1–17 unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Whether a reference anticipates is assessed from the perspective of one of ordinary skill in the art. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368–69 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” (second and third alterations in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))). slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a)—FINTIV Patent Owner argues that, in view of the parallel litigation in Texas, the Board should discretionarily deny institution of an inter partes review under 35 U.S.C. § 314(a) pursuant to Fintiv. Prelim. Resp. 38–40; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (setting out six nonexclusive factors that the Board may” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that person of ordinary skill in the art: would have had at least a bachelor’s degree in computer science, electrical or computer engineering, or a related field, and at least two years of work or research experience in digital communications systems, such as wireless communications systems and networks, or equivalent, or a master’s degree in electrical engineering, computer engineering, computer science, or a similar field. Pet. 5 (citing Ex. 1003 ¶ 34). Patent Owner states that, “[f]or purposes of this Preliminary Response only, Patent Owner does not dispute the Petitioners’ definition of a person of ordinary skill in the art.” Prelim. Resp. 2. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Petitioner does not propose an explicit claim construction for any term, asserting that, “[u]nless otherwise specified, the terms should receive their respective plain and ordinary meaning as understood by a person of ordinary skill in the art.” Pet. 6. Patent Owner argues that “nowhere else do Petitioners even mention claim construction, much less provide a proposed construction for any term of the ’383 patent.” Prelim. Resp. 12. Rather, according to Patent Owner, “the Petition repeatedly cites to Patent Owner’s infringement contentions from a related district court proceeding to set forth what Petitioner then intuits Patent Owner’s constructions for claim terms would be.” Id.; see id. at 16 (Patent Owner asserting that “[t]he Petition relies on citations to Patent Owner’s infringement contentions no less than 68 times for its challenge to all Challenged Claims, and for all Grounds.”). Patent Owner further argues that Petitioner does not indicate whether it agrees with, proposes, or adopts the constructions attributed to Patent Owner, and therefore has failed to set forth how the challenged claims are to be construed, as required under 37 C.F.R. § 42.104(b)(3). See id. at 12–17. For the reasons set forth below, we determine that Petitioner has not met its burden on its challenges as articulated by Petitioner. We need not reach any claim construction issues to make that determination. Accordingly, on this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,099,383
• Meta Platforms, Inc. v. Almondnet, Inc.All claims unpatentable
  PTAB · Mar 13, 2024 · IPR2022-01436 · APJ Lynne H Browne · IPR · Final written decision

  Claims 11, 13–16, 19, and 20 are unpatentable: the Board found them obvious over the stated Rosenberg combinations, reaching neither Merriman ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the invention of the ’582 Patent “would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 12. (citing Ex. 1002 ¶¶ 10–14). Petitioner asserts further that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. Patent Owner does not challenge this definition of the level of skill. PO Resp. 5. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 7

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

    “Petitioner states that it “does not believe an express claim construction is necessary at this time for this IPR” and Patent Owner “agrees that claim construction is not necessary to resolve any issue . . . and that the plain and ordinary meaning of the claim language should be applied.” See Pet. 13 (citing Ex. 1002 ¶ 37); PO Resp. 6. We agree with the parties that no claim terms require express construction. See Vivid Techs., 200 F.3d at 803 (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”). To the extent that the meaning of any claim term is addressed, we use its ordinary and customary meaning as discussed in our analysis below.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “(5) Discussion of Limitation (b) We agree with Petitioner and find that Rosenberg meets limitation (b) under either theory advanced in the Petition and credit the testimony of Dr. Schmandt that Rosenberg discloses automatic URL redirection as required by this limitation. Ex. 1002 ¶ 117. During oral argument, Petitioner noted that “[t]he specific embodiment in Rosenberg [that] is being relied on which uses frame tags” discloses URL redirection and argued that “[t]he fact that you could bypass [URL redirection] with an edge case air scenario where maybe you can type a URL directly . . . doesn’t prevent [Rosenberg] from meeting the claim limitation.” Tr., 16:25–17:4. Even if we assume for both theories that Patent Owner is correct that Rosenberg discloses instances where the partial profile is received without URL redirection, that does not negate the fact that Rosenberg discloses instances wherein the partial profile is received as a result of automatic URL redirection. Ex. 1003, 5:36–38, 8:56–68. We agree with Petitioner that Rosenberg’s disclosure of such instances is sufficient to meet the requirements of limitation (b) because “prior art that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.” Hewlett-Packard Co., 340 F.3d at 1326.” slip op. at 23

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

    “Patent Owner’s argument that Petitioner’s reasoning in support of its challenge only applies to two servers is undermined by Dr. Sherwood’s testimony that “a POSITA would seek to create a system that could have been scaled to an arbitrary number of servers, because Rosenberg, Zeff, and Sterne all teach the desirability of such scaling.” Ex. 2001 ¶ 59. Patent Owner’s argument also ignores the fact that Rosenberg repeatedly discloses that its method can be applied to multiple servers. See, e.g., Ex. 1003, 4:16– 19. Moreover, Patent Owner’s argument assumes that one of ordinary skill in the art would not have known how to implement Rosenberg’s method with more than one server. Such arguments are unconvincing, because “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. (b) Alleged Additional Reasons Why Petitioner’s Reasoning Lacks Rational Underpinning Regarding Patent Owner’s contention that “the Petition’s ‘visible frame’ approach significantly increases visual clutter,” we agree with Petitioner that this argument does “nothing more than confirm the unremarkable fact that the frame tag embodiment, as with almost all user interface decisions, would have offered both benefits and trade-offs.” PO Resp. 26; Pet. Reply 10. We credit Dr. Schmandt’s testimony that “[a]n ordinarily skilled artisan would thus have been motivated, depending on the needs of the particular system, to employ the frame tag embodiment in Rosenberg to obtain benefits not offered by the other disclosed alternatives.” Ex. 1019 ¶ 23. We further credit Dr. Schmandt’s testimony that any “so-called increase in ‘visual clutter’ also results in an increase in the amount of usable information that can be displayed to the user within the browser window.” Id. ¶ 24.” slip op. at 37

  Patent outcomesUS 8,244,582 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,244,582
• Intel Corporation v. Bitmicro, LLCInstituted
  PTAB · Dec 15, 2023 · IPR2023-00783 · APJ Kevin C Trock · IPR · Institution

  The Board instituted IPR of claims 1–3, 6, 10–12, and 15 on all asserted grounds, finding a reasonable likelihood of success on obviousness over Nishida, Harari, and Nakao.

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Petitioner identifies itself, Intel Corporation, as real party-in-interest. Pet. 90. Patent Owner identifies itself, BitMicro, LLC, as the real party-ininterest. Paper 3, 2. Based on the current record, we determine that Petitioner has established compliance with the statutory requirement under 35 U.S.C. § 312(a)(2) to identify all real parties in interest. C. The ’939 Patent” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the pertinent art “would have had at least a bachelor’s degree in electrical or computer engineering and two years of experience working on computer system architecture and power management circuits, or an equivalent combination of education and experience.” Pet. 7 (citing Ex. 1003 ¶ 90). Patent Owner does not address the level of skill of the ordinary artisan. See generally Prelim. Resp. We regard Petitioner’s definition as consistent with the ’939 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for the purpose of this decision, we adopt Petitioner’s formulation. C. Claim Construction” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “On the record before us, we have not been directed to any dispute between the parties that § 112 ¶ 6 does not apply to the “means for” clauses recited in the challenged claims. Where claim language may be construed according to 35 U.S.C. § 112(f) (or its predecessor, § 112 ¶ 6), a petitioner must provide a construction that includes both the claimed function and the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function. 37 C.F.R. § 42.104(b)(3). In accordance with these requirements, Petitioner provides constructions for all the means-plus-function clauses in the challenged claims. See Pet. 7–15. Where applicable, Petitioner asserts its proposed constructions are consistent with constructions made by the district court in related litigation. Id.; see also Ex. 1018. Patent Owner contends “the Board need not engage in any pre- institution claim construction,” does not substantively address or contest Petitioner’s proposed claim constructions, and does not propose any constructions itself. See Prelim. Resp. 8–10. Based on the record before us, we adopt, for purposes of this” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for petitioner

    “3. “means for deactivating” (claim 10) Petitioner proposes that this term, recited in claim 10, should be construed consistent with the district court construction as means-plus-function, with the recited function being “deactivating the plurality of super capacitors to cut off power to the computing engine based upon the plurality of super capacitors discharging to a predetermined level” and the corresponding structure as “a down-converter (and equivalents), and switches, transistors, gates, etc. that are generally known in the art.” Pet. 10–12. Patent Owner does not provide a construction or any specific arguments directed to this limitation. See Prelim. Resp. 8–10.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,496,939
• Masimo Corporation v. Apple Inc.Institution denied
  PTAB · Nov 21, 2023 · IPR2023-00831 · APJ Scott A Daniels · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that the sole design claim would have been obvious over any asserted primary reference.

  RulingsInstitution decision

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

    “unless . . . 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 by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claim. See 35 U.S.C. § 314(a). Accordingly, we do not institute an inter partes review of the challenged claim. slip op. at 2

  • Skill levelSkill level board ownOther

    “different, but not incompatible. On one hand, Petitioner proffers a person with a degree in industrial/product design who consults with a person of ordinary skill in the art having an electrical engineering, or similar degree. On the other hand, Patent Owner proffers a person having “a degree in Industrial Design or Mechanical Engineering, and at least two years of professional experience creating Industrial Designs of consumer products.” Prelim. Resp. 3. Considering that this is a design for an electronic “charger,” we find that both parties’ assertions as to the designer of ordinary skill appropriately include engineering and industrial design experience well-suited to a robust understanding of the function and aesthetics of charger devices. And, we do not find it out of the ordinary, as Petitioner contends, that a designer of ordinary skill would have collaborated with other technical professionals in designing such products. We also note that, under the present record, our analysis of this case would be the same under either party’s definition of the designer of ordinary skill in the art.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “In this case, a verbal description of the claimed design is helpful to our analysis. Petitioner’s claim construction, particularly as it erroneously calls for certain elements to be “factored out,” is too general, and does not adequately address the overall ornamental visual impression of the claimed charger. See Pet. 14–30. With some exceptions, we find Patent Owner’s claim construction the more persuasive and consistent with the appropriate scope and overall ornamentality of the claimed charger. Prelim. Resp. 3–10. Our claim construction, below, is based on, and paraphrased to some extent, from Patent Owner’s proposed construction: Considering the overall visual impression of the claimed charger as shown in Figures 1–11 of the ’131 patent, the charger has an overall appearance of a compact ice hockey puck shape having a top face with a circular recess that evokes a contemporary appearance. The claimed design includes an overall cylindrical shape, with a circular shape that is visible in plan and bottom views. The top face is dominated by a prominent circular recess that is inset relative to a flat ring having a distinct proportional width relative to the circular recess. The overall cylindrical shape has a distinctive ratio of width (e.g., diameter) to height that, as shown in the figures of the claimed design, evoking the overall appearance of a compact ice hockey puck shape. The overall cylindrical shape includes non-orthogonal transitional edges (e.g., beveled or curved edges) between the sidewall and the top and bottom faces which contributes to the charger’s overall compact ice hockey puck appearance. The featureless flat bottom surface and sidewall are shown as continuous, unbroken, and uninterrupted by features that distract from the continuity of the design, and also contribute to the charger’s overall compact ice hockey puck appearance.” slip op. at 18

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

    “’131 patent compared with Lee, we are persuaded that Lee is not an appropriate primary reference. While we agree that a designer of ordinary skill in the art would have considered the front face of the claimed charger and Lee as similar in appearance, a designer of ordinary skill in the art would consider not just the front face of the designs, but the overall appearance of the designs as a whole. See Borden, 90 F.3d at 1574 (The obviousness “inquiry focuses on the visual impression of the claimed design as a whole and not on selected individual features.”). the front face of the claimed design, but the smooth uninterrupted cylinder walls that seamlessly transition to a flat, planer, bottom surface that is a cleaner and more contemporary appearance from Lee’s stepped sidewall and raised yellow ring on the bottom face of Lee’s charger. The cylindrical characteristics of the claimed design evoke a stocky ice hockey puck shaped appearance different from the Lee’s narrower stacked disc shaped design. We find that the cumulative visually apparent differences of the sidewall, bottom face and overall cylindrical ice hockey puck shaped appearance and proportions of the claimed charger outweigh any similarity of the front faces, and thus we are not persuaded that Lee’s charger is a primary reference “the design characteristics of which are basically the same as the claimed design.” Rosen, 673 F.2d at 391.” slip op. at 37

  Claim construction§ 103 obviousness
• Kioxia America, Inc. / Kioxia Corporation v. Bitmicro LLCInstitution denied
  PTAB · Oct 16, 2023 · IPR2023-00741 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that Cornwell or Ware teaches or suggests selecting a transfer size for the challenged claims.

  RulingsInstitution decision

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

    “therefore teaches [the controller] selecting a transfer size for the memory transaction.” Id. There is no explanation as to how or why programming a page with a specific size into memory as described in Cornwell is selecting a transfer size for the memory transaction.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “therefore teaches [the controller] selecting a transfer size for the memory transaction.” Id. There is no explanation as to how or why programming a page with a specific size into memory as described in Cornwell is selecting a transfer size for the memory transaction.” slip op. at 16

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,135,190
• Masimo Corporation v. Apple Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00728 · APJ Josiah C Cocks · IPR · Institution

  The Board denied institution because Masimo did not show a reasonable likelihood that the claimed design was obvious over Paulke, Yuen with Mendelson and Bushnell, or Fong with Bushnell.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “respective constructions of the ’936 patent, i.e., that the claimed design incorporates two arc-shaped portions residing on a rear face of an electronic device, we observe that one point of disagreement centers on the proposed presence of an “outer continuous circle” as is advanced by Patent Owner. See Prelim. Resp. 4. Although we agree with Petitioner that the “sidewall” of the arcs does not appear to be a claimed feature, careful review of the figures of the ’936 patent, particularly Figure 4, does appear to bear out the conclusion that the arc-shaped portions do incorporate a continuous circle.2 Accordingly, we adopt the claim construction that is advanced by Patent Owner. See, e.g., supra § I.C.2. We note, however, that even were we to adopt Petitioner’s claim construction, the ultimate outcome of this proceeding would be the same. That is so because, for reasons discussed below, we conclude that Patent Owner has identified sufficient deficiencies in Petitioner’s proposed grounds that preclude institution of inter partes review irrespective of any claim construction.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In assessing the parties’ views as to level of skill of a designer of ordinary skill in the art, we conclude that they are effectively the same. Indeed, the parties do not identify any material difference between the parties’ proposed assessments. Nevertheless, for clarity and completeness, we adopt Petitioner’s proposed assessment. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 17

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

    “III. CONCLUSION For the reasons set forth above, we conclude that Petitioner has not shown a reasonable likelihood that it would prevail with respect to the claimed design of the ’936 patent. IV. ORDER It is ORDERED that Petitioner’s request for an inter partes review of the claim of the ’936 patent is denied and no trial is instituted.” slip op. at 38

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

    “(see, e.g., Prelim. Resp. 21–24), the arc-shaped portions of the ’936 design are thinner than those of Paulke’s Figure 1G, and the spacing of the arc-shaped portions in the ’936 patent is noticeably smaller than in Paulke. That enlarged spacing in Paulke eliminates any appearance of an outer continuous circle formed by the outer ring of the arc-shaped portions, which is present in the ’936 design. In that respect, we find credible Patent Owner’s argument that “the Paulke arc-shaped components have the appearance of two separate features rather than the unified circular appearance of arcs of the ’936 patent. Prelim. Resp. 23 (citing Ex. 2001 ¶¶ 51–52). Additionally, the orientation of the arc-shaped portions in Paulke is rotated 90 degrees from that of the ’936 patent.5 In our view, there is a plausible argument to be made that the above-noted differences establish sufficient visual dissimilarities to remove Paulke from being considered a proper Rosen reference. Nevertheless, even were we to assume that Paulke is a proper Rosen reference, for the reasons discussed below, we do not find persuasive that a designer of ordinary skill in the art would have made Petitioner’s proposed modifications to Paulke’s biosensor module, so as to arrive at the design of the ’936 patent.” slip op. at 20

  Claim construction§ 103 obviousness
• Chanel, Inc. v. Molo Design, Ltd.No claims unpatentable
  PTAB · Aug 9, 2023 · IPR2022-00543 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–3, 5–11, 13, 16, 18, 20–25, and 27 were not shown unpatentable under any of three §103 grounds because Petitioner failed to establish the claimed foldable supports and fastener arrangement.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues, with support from its declarant, Mr. Rake, that one skilled in the art during the relevant time frame “would have a bachelor’s degree and at least two years of relevant experience working as an industrial designer, interior designer, furniture designer, architect, or other similar professional” and “would be knowledgeable regarding furniture design and/or the design of exhibit and display systems, and would have a general understanding of related manufacturing processes.” Pet. 24 (citing Ex. 1003 ¶¶ 41–44). Patent Owner does not contest Petitioner’s proposal, and Patent Owner’s declarant agrees with it. Ex. 2010 ¶ 34 (“I believe this is an accurate definition of a POSITA and have used this for my analysis.”); see also Pet. Reply 1 (“The parties agree on the POSITA and level of ordinary skill in the art.”). We adopt Petitioner’s asserted level of ordinary skill because it is consistent with the problems identified and solutions provided in the ’366 patent and the prior art.” slip op. at 9

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

    “Because the issue of whether Petitioner has proven unpatentability by a preponderance of the evidence can be resolved without expressly construing the claim terms “supports,” “self-supporting,” “operable,” and “flaccid,” we reject the notion that Petitioner somehow violated our rules by not developing a more explicit construction of those terms. In addition, because Patent Owner does not dispute Petitioner’s position that we need not formally construe any of the terms to address the issues in this proceeding or offer a competing construction, we need not construe any of these terms. See, e.g., Nidec, 868 F.3d at 1017 (approving Board decision not to construe claim language where the construction is not material to the dispute).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Even if we consider an argument that claim 1 would have been obvious without considering whether a POSITA would have been motivated to fold the SoftHousing end panels into a tubular configuration, we would not find that argument convincing. None of the prior art at issue here discloses partition end panels that are semi-circular as in the design the ’366 patent discloses, much less flexible panels folded into that configuration. Instead, both SoftHousing and Arens disclose end panels having unfolded, planar surfaces, and the Velcro reference does not teach partitions at all. See Ex. 1005, 2; Ex. 1006, 11; Ex. 1007, 2; Ex. 1012, 2; Ex. 1013, Fig. 3; PO Resp. 34–35; Ex. 2010 ¶ 124. Further, merely adding the Velcro teachings from SoftHousing III, Arens, or the Velcro reference to the planar end panels of SoftHousing would not necessarily satisfy the claim limitation requiring a fastener capable of securing supports in a tubular configuration, and Petitioner does not explain how that modification meets that aspect of the fasteners limitation without the premise that a POSITA would have been motivated to form a tubular configuration. See Pet. 34–35 (citing Ex. 1003 ¶¶ 86–88, 118). The cited declarant testimony repeats the same language from the Petition when addressing why modifying SoftHousing to include fasteners would have been obvious (i.e., the fasteners would have been obvious only when a POSITA already “wanted” to form the tubular configuration). See Ex. 1003 ¶ 118. Neither the Petition nor supporting declarant set forth a coherent argument that adding fasteners capable of securing a folded support in a tubular configuration would have been obvious merely by adding Velcro to the end panels of the honeycomb core in SoftHousing’s partitions.” slip op. at 25

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “4. Conclusion We find that Petitioner’s proposed modifications to and combination of SoftHousing I, SoftHousing II, SoftHousing III, Arens, and Velcro do not disclose all of the limitations of independent claim 1. We find that we need not reach Patent Owner’s alleged objective indicia of nonobviousness arguments because even if Patent Owner submitted no such evidence or failed to establish a nexus or any persuasive objective indicia evidence, our conclusion as to the obviousness of claim 1 would not change. Based on the foregoing, we are not persuaded that Petitioner proved by a preponderance of the evidence that claim 1 of the ’366 patent is unpatentable as obvious based on the combination of SoftHousing I, SoftHousing II, SoftHousing III, Arens, and Velcro.” slip op. at 29

  Patent outcomesUS 7,866,366 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,866,366
• Chanel, Inc. v. Molo Design, Ltd.Some claims unpatentable
  PTAB · Aug 9, 2023 · IPR2022-00545 · APJ Carl M Defranco · IPR · Final written decision

  Claims 19–25 and 27 are unpatentable as obvious over MacAllen with the cited references; claims 1–10, 12, 14, and 18 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Chanel argues, with support from its declarant, Mr. Rake, that one skilled in the art during the relevant time frame “would have a bachelor’s degree and at least two years of relevant experience working as an industrial designer, interior designer, furniture designer, architect, or other similar professional” and “would be knowledgeable regarding furniture design and/or the design of exhibit and display systems, and would have a general understanding of related manufacturing processes.” Pet. 21–22 (citing Ex. 1003 ¶¶ 42–46). Molo does not contest Chanel’s definition, and Mr. Rake agrees that it accurately reflects the level of skill in the art. See Pet. Reply 1 (“The parties agree on the POSITA and level of ordinary skill in the art.”); Ex. 2010 ¶ 34 (“I believe this is an accurate definition of a POSITA and 13 Although occasionally we may focus on Molo’s arguments, we do not shift the ultimate burden from Chanel. We focus on Molo’s arguments simply to identify issues in dispute, some of which we find unpersuasive in view of the record as a whole. have used this for my analysis.”). Because Chanel’s definition of the level of skill in the art appears reasonable and consistent with the ’161 patent and the prior art, we adopt it for purposes of our analysis.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for petitioner

    “The meaning of “freestanding” set forth in our Institution Decision is consistent with the Specification and prosecution history of the ’161 patent. For instance, during prosecution, the applicants rebutted the Examiner’s finding that “supports are required for the structure to be freestanding” by representing that “the extended wall, which is the structure itself, is freestanding when the base of the wall is placed on the floor of a room” and is “without supports.” Ex. 1002 at 185, 190 (first emphasis added). Based on that representation—that the expanded structure is capable of standing on its own without additional supports that are not part of the structure itself— the Examiner allowed the claims. See id. at 192. The Specification also supports that the expanded structure is freestanding in the absence of additional supports due to foldable supports 14 and 16 being adhered to end panels 18d at opposite ends of the core so as to be part of the structure itself— An end panel 18d of the core is connected to respective ones of the supports 14 and 16 over its entire width. The supports 14 and 16 are made from a self-supporting material, typically a non woven felt material, which has a degree of flexibility but also has sufficient rigidity to resist collapse of the core 12. The supports 14 and 16 extend laterally beyond the core as indicated at 32 and are adhered to respective ones of the end panels 18d. * * * Once partially extended, the supports 14 and 16 may be folded along a vertical axis to provide enhanced rigidity at each end of the partition 12. * * * [T]he supports 14, 16, at the free ends of the partition [are] folded upon themselves to provide stable support. Ex. 1001, 4:50–61, 5:12–14, 5:57–59. With that intrinsic evidence in mind, we maintain the construction in our Institution Decision that the term “freestanding” means “standing alone free of support or attachment.”” slip op. at 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We disagree on both counts. Chanel’s justification for folding the end panels of SoftHousing I into tubular supports finds absolutely no support in the record, and instead, amounts to impermissible hindsight. More specifically, Chanel’s first justification—“functional reasons”—most certainly is derived from the ’161 patent itself, which states unequivocally that “supports 14 and 16 may be folded along a vertical axis to provide enhanced rigidity at each end of the partition 12.” Ex. 1001, 5:12–14. Nowhere does Chanel or its declarant, Mr. Rake, point us to any teaching in SoftHousing I or other prior art indicating that folding the end panels of a honeycomb-like structure into tubular supports was known to enhance its structural integrity. Instead, Chanel’s sole evidence for modifying SoftHousing I, be it for functional or aesthetic reasons, is the unsupported and conclusory opinion testimony of Mr. Rake. See Pet. 40–41 (citing Ex. 1003 ¶¶ 134–137). But nowhere does Mr. Rake provide any evidentiary support for his conclusions. Instead, he simply opines generally on the limits of folding paper effectively—“[T]here’s kind of a limit to how you can manipulate paper effectively, and one of the things you do is fold it. That’s, like, first off. Take a piece of paper, it has no structure, no strength, and you put a fold in it, and you can probably stand it on a – on a desk.” Ex. 2011, 200:3–14. But that testimony says nothing about folding paper into a tubular shape, let alone folding end panels of a honeycomb structure into a tubular shape. As such, we reject the notion that Mr. Rake’s testimony provides credible support for modifying the paper-like end panels of SoftHousing I into tubular supports.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Unlike SoftHousing I, Okuno discloses rigid supports—namely, “substrates 1, 1”—for a honeycomb structure. See Ex. 1011 at 2, Fig. 1. However, Chanel fails to explain why one skilled in the art would have looked to Okuno’s lampshade to modify a partition wall as disclosed in SoftHousing I. Although Chanel states that both are constructed of honeycomb structures, so too are many other objects, including beehives, window shades, collapsible containers, and expandable benches, chairs, and tables. See Ex. 1003 ¶ 55. So, it was incumbent on Chanel to state a more compelling reason for combining the teachings of SoftHousing I and Okuno than simply they share a common material, i.e., a honeycomb-like core. Indeed, conspicuously absent from Chanel’s evidence is any testimony from Chanel’s declarant, Mr. Rake, regarding a reason to combine Okuno with SoftHousing I. See Ex. 1003 ¶ 141 (relying solely on SoftHousing I for teaching the subject matter of claims 12 and 14); see also Pet. 43–44 (lacking citation to Mr. Rake’s declaration). Without more, we are not persuaded that Chanel articulates sufficient reasoning with rational underpinning for combining Okuno’s teachings with SoftHousing I. Thus, we determine that Chanel fails to demonstrate that dependent claims 12 and 14 would have been obvious over SoftHousing I and Okuno.” slip op. at 25

  Patent outcomesUS 9,689,161 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,689,161

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.