- PTAB · Jan 17, 2025 · IPR2024-01089 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1, 2, 9–11, 13–16, and 56–64 and 84, finding a reasonable likelihood of unpatentability under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information 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.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The portion of the definition proposed by the Petitioner requiring “a bachelor’s degree in computer science, computer engineering, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers” (Pet. 6) appears to be consistent with the problems and solutions in the ’212 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is considered by Petitioner to be “an advanced-level degree” we do not adopt the portion of the definition relating to the substitution of years of experience for a degree at this time. Additionally, we do not herein adopt Petitioner’s proposed additional requirement that one of ordinary skill “would have possessed extensive background knowledge and understanding of the pertinent technologies employed by the ’212 patent.” Pet. 7.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“First, we determine, on the present record, that Petitioner has not improperly combined embodiments of Hotelling. Petitioner sufficiently shows that Hotelling describes a device which is “designed to recognize touch gestures applied to a touch screen” and which “recognizes the occurrence of gestures” and informs associated software agents of “the ¶ 135 (cited at Pet. 9, 24, 35). While Hotelling’s disclosed example of a touch vocabulary relates to the music player embodiment (Ex. 1004 ¶ 151, Figs. 27A–E), Hotelling generally teaches “[a] hand-held electronic device . . . designed to recognize touch gestures applied to a touch screen” and which upon receipt of gestures “executes instructions to carry out operations associated with the gestures.” Ex. 1004 ¶ 135 (cited at Pet. 8, 9, 24, 35). After considering Hotelling and the parties’ arguments and testimony, we determine that, on the present record, Petitioner has sufficiently shown that Hotelling’s general teachings regarding gestures received on a touch screen includes the recognition of touch gestures (pressing a button, sliding a finger or stylus, moving the entire device spatially) while Hotelling’s main page is being displayed. Ex. 1004 ¶¶ 84, 85, 87; Ex. 1003 ¶¶ 64–66. While we agree that the “touch vocabulary” provided in the “example” of Figures 27A-E (see Ex. 1004 ¶ 151) relates to a music player, we do not, on the present record, determine that Hotelling limits its disclosed recognition of touch gestures and execution of instructions to carry out operations associated with the gestures (including via a touch vocabulary) as relating only to the music player or to the other specific functionalities of the device, rather than to all user input GUIs.” slip op. at 18
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,671,212 - PTAB · Jan 16, 2025 · IPR2024-01088 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that Apple would prevail on its § 103 challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information 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.” For the reasons that follow, we institute inter partes review as to the challenged claims of the ’758 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 7 (internal citations omitted) (citing Ex. 1003 ¶¶ 41–53). For the purposes of institution, Patent Owner did not dispute this level of skill. Prelim. Resp. 6 (“Patent Owner does not necessarily agree with all aspects of Petitioner’s proposed level of ordinary skill, but does not believe that resolving that level is necessary to resolve the issues raised in this preliminary response.”) The portion of the definition proposed by the Petitioner requiring “a bachelor’s degree in computer science, computer engineering, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers” appears to be consistent with the problems and solutions in the ’758 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is considered by Petitioner to be “an advanced-level degree” we do not adopt the portion of the definition relating to the substitution of years of experience for a degree at this time. Additionally, we do not herein adopt Petitioner’s proposed additional requirement that one of ordinary skill “would have possessed extensive background knowledge and understanding of the pertinent technologies employed by the ’758 patent.” Pet. 7.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner also notes that in the pending District Court Litigation, Petitioner contends that eight claim terms found in the challenged claims are indefinite: “performing an operation [in connection with / on] the first application icon,” “application-launch criteria,” “action-option-display criteria,” “operation criteria,” “movement criteria,” “action options,” “action option objects,” and “evaluating the first single-finger touch input against at least one of a plurality of criteria, including evaluating a duration of the first single-finger touch input against at least one of: one or more application-launch criteria, one or more action-option-display criteria, or one or more operation criteria, and further including evaluating a movement of the first single-finger touch input against one or more movement criteria.” Prelim. Resp. 6–7 (citing Ex. 2003, 9–75). Patent Owner further notes that, contrary to its position in the pending District Court Litigation, Petitioner does not assert that any of these terms are indefinite in this proceeding. Id. For institution and on our present record, we determine that none of these claim terms require construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). 3. Other Terms For institution and on our present record, no other claim terms require construction. See Nidec, 868 F.3d at 1017.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We determine that, on this record and for the purposes of institution, Petitioner has made a sufficient showing regarding motivation for its proposed combination of Chaudhri, Martyn, and Griffin. For the combination of Chaudhri and Martyn, we determine, on the present record and for the purposes of institution, that Petitioner has sufficiently shown support for the use of Martyn’s snap-shot menu with Chaudhri’s user interface. We acknowledge Patent Owner’s declarant’s examples of instances in which devices that incorporated “popular user interface features . . . did not achieve the same level of success because of poorly articulated design implementation.” Ex. 2001 ¶ 127 (cited at PO Resp. 23). However, on the present record, this evidence does not specifically address whether one of ordinary skill would have found such examples significant enough or relevant enough to the proposed combination to dissuade one of ordinary skill from considering such a combination to be reasonably likely to succeed, especially in light of the testimonial evidence before us that similar menus were often incorporated into GUIs similar to Chaudhri’s, which is adequately supported by reference to numerous examples. See Ex. 1003 ¶¶ 43–48, 64–65 (cited at Pet. 16). Additionally, we find compelling that Chaudhri describes a pop-up dialogue sub-menu for a different purpose (modifying the user interface object). See Ex. 1004 ¶¶ 274, 317, Figure 5LLL; Pet. 18–19; Ex. 1003 ¶ 69. On the present record, one of ordinary skill in the art would have found the use of the similar snap-shot menu from Martyn (offering different functionality) to be further prompted by this sub-menu, and not to have been redundant or “already solved” in Chaudhri, as Patent Owner argues (PO Resp. 26–27). See Pet. 18–19; Ex. 1003 ¶ 69. introduced to the combination of Chaudhri and Martyn to address a conflict that arises because Petitioner proposes a combination of Chaudhri and Martyn that “create[s] a conflict of assigning two functions to the same gesture.” PO Resp. 20. However, Petitioner provides a number of rationales to combine, and Petitioner’s argument that one of ordinary skill would have sought details from Griffin to implement Chaudhri’s teachings describing different user functionality being launched by user touches of different user durations (Pet. 19–21) adequately supports the use of the material from Griffin in the proposed combination. See Ex. 1004 ¶¶ 217, 218; Ex. 1002 ¶¶ 70–73, 75; see also PO Resp. 24 (describing “multiple types of gestures” used Chaudhri). While the proposed combination of Chaudhri and Martyn would, as Petitioner asserts, result in “three distinct operations invoked by duration-based touch gestures at an application icon” (Pet. 21), two of these distinct operations are found in Chaudhri’s teachings, and thus, on the present record, the motivation to look to Griffin does not arise only from the proposed combination of Chaudhri with Martyn. On the present record and for the purposes of institution, we determine that Petitioner has adequately shown that one of ordinary skill would have looked to Griffin to supply additional information regarding implementation of Chaudhri’s (and the Chaudhri and Martyn combination’s) use of parameters of a user’s touch, including duration, to enable different functionalities. Ex. 1006 ¶¶ 40, 53, Fig. 7; Ex. 1002 ¶¶ 70–73, 75. With respect to the use of the “press-and-hold” feature from Martyn, rather than other possibilities from Martyn for triggering its snap-shot menu and rather than adding a second touch point as Patent Owner suggests (PO Resp. 27–28, 32, 33 (citing Ex. 2001 ¶¶ 142–143, 156, 166, 172–173)), on to have been a suitable option. Pet. 15–16; Ex. 1003 ¶¶ 49–53, 63–64; Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021) (determining that a showing of the obviousness in “predictable use of prior art elements according to their established functions” (as per KSR, 550 U.S. at 417) requires only a showing that the combination be a suitable option, rather than a showing that it is the best option).” slip op. at 20
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,656,758 - PTAB · Jan 14, 2025 · IPR2024-01087 · APJ Barbara A Benoit · IPR · Institution
The Board instituted IPR on claims 1–13, 15–35, and 37–43 on all asserted grounds, finding a reasonable likelihood that Apple would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We determine Petitioner’s showing discussed above regarding Limitations [1.i–1.l] to be sufficient for institution. Petitioner’s showing in large measure relies on Hackborn’s straightforward description of changing the appearance of grass displayed in “live” wallpaper in response to a finger swipe in combination with Westerman’s disclosures of interpreting user input on touch screens as swipes. See, e.g., Pet. 22–23; Ex. 1004 ¶¶ 28, 33; Ex. 1005 ¶¶ 18–19. With regard to the contested Limitations [1.i and 1.k], we note particularly that Petitioner’s combination relies on Westerman’s disclosure of interpreting user inputs that exceed various thresholds as “a swipe event.” This showing is sufficient for institution to show the threshold determination required by Limitation [1.j]. See, e.g., Ex. 1005 ¶¶ 19; Pet. 22 (citing Ex. 1005 ¶ 19). Petitioner’s combination relies on Hackborn’s animation of the grass on the wallpaper “that makes the grass blades look as if the finger is actually contacting them as it drags across the screen of the device.” Ex. 1004 ¶ 33; see Pet. 23 (quoting Ex. 1004 ¶ 33). On this preliminary record, Petitioner’s position that “the farther the swipe, the more extreme the grass movement expected from Hackborn” naturally follows from Hackborn’s description. Pet. 23. As such, we determine Petitioner’s showing that the proposed combination of Hackborn and Westerman changes the grass appearance based at least in part of the magnitude of the swipe to be sufficient for institution for Limitation [1.k].” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a related field, and would have had at least two years of relevant work experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof.” Pet. 9 n.2 (citing Ex. 1003 ¶ 26); Ex. 1003 ¶ 26. Dr. Cockburn also indicates that “[l]ess work experience may be compensated by a higher level of education and vice versa.” Ex. 1003 ¶ 26.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we agree with the parties that no terms need to be construed expressly. We discuss claim interpretation to the extent necessary in the context of analyzing the asserted grounds.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Hackborn’s mobile device with a touch screen able to display “live” wallpaper and Westerman’s techniques for interpreting swipe gesture inputs, including distinguishing between tap and swipe gestures using predetermined thresholds. Pet. 9–11, 12–13; see Pet. 9–14 (describing Petitioner’s “Hackborn-Westerman Combination”). Petitioner contends that “[a] POSITA reviewing Hackborn would have naturally looked to Westerman to better understand how to implement Hackborn’s teachings, for example, how to discern between different user inputs (e.g., tap or swipe).” Pet. 12–13 (citing Ex. 1003 ¶ 52). Petitioner contends that one of ordinary skill would have had a reasonable expectation of success in combining the references in the manner Petitioner proposes. Pet. 13–14. Specifically, Petitioner asserts that, because “recognizing predetermined touch inputs was known, and Hackborn and Westerman both describe the use of touchscreen devices and would have reasonably understood the combination of Hackborn and Westerman to be successful with no unexpected results.” Pet. 14 (citing Ex. 1003 ¶ 53; Ex. 1004 ¶ 28, Ex. 1005 ¶¶ 18, 19, 25, 41, 59, 61–64).” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,656,755 - PTAB · Jan 14, 2025 · IPR2024-01091 · APJ Barbara A Benoit · IPR · Institution
The Board instituted IPR of claims 1, 27, 30, 32, 34, 59, 62, and 64 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d. Conclusion Regarding Asserted Obviousness over Kim In sum, for the reasons discussed above, Petitioner’s showing regarding claim 1 is sufficient for institution. Accordingly, having reviewed the Petition, Preliminary Response, and evidence cited therein, we determine that Petitioner has established a reasonable likelihood that Kim renders obvious claim 1. As such, Petitioner’s showing is sufficient to institute an inter partes review on all challenged claims on all asserted grounds. 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); see SAS Inst. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Notwithstanding, we address other claims and other grounds below, particularly in response to Patent Owner’s preliminary arguments.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a related field, and would have had at least two years of relevant work experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof.” Pet. 10 n.4 (citing Ex. 1003 ¶ 26); Ex. 1003 ¶ 26. Dr. Cockburn also indicates that “[l]ess work experience may be compensated by a higher level of education and vice versa.” Id. Patent Owner indicates it “does not necessarily agree with all aspects of Petitioner’s proposed level of ordinary skill, but does not believe that resolving that level is necessary to resolve the issues raised in this preliminary response.” Prelim. Resp. 4. Dr. Surati indicates that his opinions provided in his declaration in support of Patent Owner’s Preliminary Response are “provided from the perspective of the POSITA” proposed by Dr.Cockburn. Ex. 2001 ¶ 38 (citing Ex. 1003 ¶ 26). consistent with the prior art of record. Accordingly, we adopt Petitioner’s definition of the level of ordinary skill for purposes of this Decision.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“standards for finding lexicography in a specification are exacting. Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). “To act as its own lexicographer, a patentee must clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning and must clearly express an intent to redefine the term.” Id. (internal quotations omitted). As Patent Owner correctly notes, the specification states: In various embodiments, the contact pressure level may be represented by a touch state. In the context of the present description, a touch state refers to a predefined subset of the range of measurable contact pressures. For example, in one embodiment, contact pressure levels may be represented as one of four predefined touch states: no touch, light touch, medium touch, and heavy touch. Ex. 1001, 19:35–41; Prelim. Resp. 27 (quoting Ex. 1001, 19:35–41). Patent Owner, however, has not identified any words of manifest exclusion or restriction in that passage that indicate an intent to redefine the claim term. Rather than indicating the claims are to be restricted, the specification indicates how that the term “touch state” is to be understood in the descriptions presented in the specification. Ex. 1001, 19:36–37.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“would have been obvious over Kim and Bowens to be sufficient for institution. Petitioner generally relies on Kim’s description as discussed above. Pet. 62–68. Specifically, in its combination, Petitioner relies on Kim’s hold event and scaling operation for Limitations [1.g and 1.h]. Pet. 64–67. Petitioner additionally relies on Bowen as providing details on recognizing and acting on specific gestures on a user interface. See, e.g., Pet. 55. Petitioner provides reasons one of ordinary skill would have combined the references in the manner proposed by Petitioner. See, e.g., Pet. 53–62. Petitioner also provides reasons one of ordinary skill would have reasonable expectation of success in combining the references in the manner proposed by Petitioner. Pet. 60–61.” slip op. at 30
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,936,114 - PTAB · Dec 13, 2024 · IPR2024-00899 · APJ John R Kenny · IPR · Institution
The Board instituted IPR on claims 1–5 and 10–15, finding a reasonable likelihood that at least one challenged claim would be unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine that the Petition has met this standard. Further, we decline to discretionarily deny inter partes review. Therefore, we institute an inter partes review of the challenged claims of the ’892 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“advancements that it contends were made before the filing of the ’982 patent that made it easier for an ordinarily skilled artisan to take advantage of known energy savings by incorporating the direct transitions of Röger into G.987.3. Pet. 12–14. These arguments are supported by expert testimony, which in turn has non-testimonial evidentiary support. Id.; Ex. 1003 ¶¶ 70– 74; Ex. 1011, 3–4; Ex. 1006, 5–7. Patent Owner’s contrary argument is supported by expert testimony, but that expert testimony does not cite non-testimonial evidentiary support and is conclusory regarding why the advancements would not motivate an ordinarily skilled artisan to modify G.987.3. Prelim. Resp. 26–27; Ex. 2001 ¶ 51. Thus, on the current record, Petitioner’s argument regarding the motivation resulting from technology advances is more persuasive. At trial, however, additional exposition could be beneficial on the issues of technology advances, their effects on an ordinarily skilled artisan’s motivation, and energy reduction.” slip op. at 50
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Pet. 4–5 (emphasis omitted). Petitioner argues that these means limitations should be construed to be means plus function limitations under 35 U.S.C. § 112(f). Id. Further, Petitioner argues that the corresponding structure for these means limitations is a processor that can execute computer program instructions. Id. at 5. Patent Owner does not propose constructions for these limitations. Prelim. Resp. 14. Because construction of these means limitations is not needed to determine whether to institute trial in this case, we do not construe these limitations for this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We do not adopt Patent Owner’s proposed construction. Importantly, when the patentee wanted to limit its claims to direct transitions or direction transitioning, it did so expressly. Claims 1, 6, and 10 each expressly recite transitioning directly (Ex. 1001, 15:2–21, 15:40–58; 16:7–31). In addition, it is presumed that “transitioning” in claims 1, 6, and 10 has a consistent meaning with “transition” in claims 12 and 14. “[T]he same terms appearing in different claims in the same patent . . . should have the same meaning ‘unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.”’ Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1328 (Fed. Cir. 2006) (quoting Fin Control Sys. Pty, Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001)); Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[C]laim terms are normally used consistently throughout the patent”); Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) (“[A] claim term should be construed consistently with its appearance in other places in the same claim or in other claims of the same patent.”); Fin Control, 265 F.3d at 1318 (Fed. Cir. 2001); Phonometrics, Inc. v. Northern Telecom Inc., 133 F.3d 1459, 1465 (Fed. Cir. 1998) (“A word or phrase used consistently throughout a claim should be interpreted consistently.”); CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1159 (Fed. Cir. 1997) (“[W]e are obliged to construe the term ‘elasticity’ consistently throughout the claims.”). Patent Owner has pointed to nothing in the Specification or the prosecution history that teaches that the terms “transition” in claims 12 and 14 and “transitioning” in claims 1, 6, and 10 should be given inconsistent meanings. Prelim. Resp. 12–14.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,806,892 - Google LLC v. Buffalo Patents, LLCAdverse judgmentPTAB · Dec 3, 2024 · IPR2023-01387 · APJ Mahshid D Saadat · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed all challenged claims 1–16 and 19.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“II. Discussion Per 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Also, actions which are construed to be a request for adverse judgement include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. at § 42.73(b)(2). With the filing by Patent Owner of a statutory disclaimer of all challenged claims 1–16 and 19 in this proceeding, there are no remaining claims in this trial.” slip op. at 2
NonePatents in suitUS 8,204,737 - Google LLC v. Buffalo Patents, LLCAdverse judgmentPTAB · Dec 3, 2024 · IPR2023-01386 · APJ Jameson Lee · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed all challenged claims 1–12 and did not respond to the show-cause order.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“at any time during a proceeding. Also, actions which are construed to be a request for adverse judgement include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. at § 42.73(b)(2). With the filing by Patent Owner of a statutory disclaimer of all challenged claims 1–12 in this proceeding, there are no remaining claims in this trial. Because Patent Owner did not respond to the Show Cause Order, we construe Patent Owner’s statutory disclaimer of all challenged claims 1–12 as a request for entry of adverse judgment against Patent Owner. The request is granted.” slip op. at 2
NonePatents in suitUS 6,904,405 - PTAB · Nov 26, 2024 · IPR2024-00932 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on all challenged claims, 1 and 4–20, and all asserted grounds, finding a reasonable likelihood of prevailing on obviousness over Prusik and over Prusik with Vaillant.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314; 37 C.F.R. § 42.4(a). 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 . . . 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.” Based on the current record and for the reasons explained below, Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’818 patent. We institute this inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“degree in computer science, electrical engineering, systems engineering, biomedical engineering (or a related or equivalent field), and two . . . years of experience researching, developing, designing and/or evaluating embedded systems, graphically encoded icons, or diagnostic systems that provide dynamic information,” and that “less or different education but more relevant practical experience, or vice versa, may also meet this standard.” Pet. 7. Petitioner also asserts that “[a] POSITA may be part of an interdisciplinary team with others having the relevant experience set forth above,” and that the prior art evidences the level of skill in the art. Id. (citing Ex. 1003 ¶¶ 16–21). Patent Owner did not file a Preliminary Response and thus does not currently dispute Petitioner’s level of ordinary skill in the art. For purposes of this Decision, we find Petitioner’s formulation sufficient at this stage, except that we need not decide at this stage whether a POSITA would have been “part of an interdisciplinary team with others having the relevant experience,” or who would have been part of such a team. With or without that provision, Petitioner’s proposal appears at this stage to be generally consistent with the technical background described in the ’818 patent, and with the prior art of record. See Ex. 1001, 1:31–2:43; see also 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 need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). To the extent that we may need to further characterize the level of ordinary skill, the parties may develop this issue at trial.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Based on the teachings cited by Petitioner, discussed above, we preliminarily determine that Petitioner has sufficiently demonstrated that Prusik teaches or suggests each of the limitations 8pre–8e to an ordinarily skilled artisan. Thus, at this stage, we determine that Petitioner is reasonably likely to prevail in showing that claim 8 is unpatentable.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“provide temperature exposure information to a user for product preservation purposes,6 and that a POSITA would have been motivated to combine Prusik with Vaillant’s marketing management system to systematically and automatically control a product whose preservation in a distribution circuit depends on the temperature. Pet 34–35 (citing Ex. 1006, 6:58–51; Ex. 1003 ¶ 174). For example, according to Petitioner, a POSITA would have been motivated to modify Prusik’s system with Vaillant “to prevent the sale of a 6 Petitioner indicates that Vaillant is cited on the face of the patent issued from Prusik (Ex. 1022). Pet. 34. product where the dynamic data in the two-dimensional barcode indicates that the product has been exposed to a temperature exceeding a predetermined threshold.” Pet. 36 (citing Ex. 1003 ¶ 177). Petitioner also contends that “applying a sale acceptance/rejection functionality to Prusik’s barcode reader is a mere application of a known method of product handling and processing to Prusik’s system to achieve the predictable result of preventing sale of products that have been exposed to hazardous or improper environmental conditions.” Pet. 35–36 (citing Ex. 1003 ¶ 176). Based on the forgoing, we determine that Petitioner has provided sufficient evidence and reasoning to demonstrate that the combination of Prusik and Vaillant would have rendered claim 1 obvious to an ordinarily skilled artisan. Thus, at this stage, we determine that Petitioner is reasonably likely to prevail in showing that claim 1 is unpatentable.” slip op. at 18
§ 103 obviousnesscites GrahamPatents in suitUS 11,392,818 - PTAB · Oct 28, 2024 · IPR2024-00714 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Valve would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We consider prior art references “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction (HCI), including implementation of computer-based systems and software for providing haptic feedback effects to a user.” Prelim. Resp. 13 (citing Ex. 2001 ¶ 33). Patent Owner also argues that formal education could substitute for practical experience, and vice versa. Id. The parties’ proposed levels of ordinary skill appear to be substantially similar, supported by testimonial evidence, and consistent with the asserted prior art and the types of problems and solutions in the ’907 patent. See, e.g., Ex. 1001, 1:14–62. Although we discern no difference in the outcome of this decision from choosing one over the other, we adopt Petitioner’s proposed level of skill for this decision because it is sufficiently persuasive to meet Petitioner’s “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we disagree with Patent Owner that the term defining in claim 1 requires that the recited position and range information must be user-modifiable. Although claims 8 and 15 (not claim 1) recite a “program comprising instructions for . . . defining position and range information,” nothing in these claims explicitly requires that this program has any interaction with a user. Ex. 1001, 14:24–25, 14:64–65. Also, although the ’907 patent disclosure refers to computer architecture components for rendering a haptic effect within a boundary range, Patent Owner has not pointed to any disclosure in the ’907 patent suggesting that range settings must be user-modifiable. The ’907 patent does refer to “trigger data” that is “based on user input data,” but this trigger data appears to be collected by firmware, suggesting that the user’s involvement in creating trigger data consists of simply pulling or pushing the triggers of the controller. See Ex. 1001, 7:1–6, 8:10–16 (trigger data is “received from [the] controller . . . by peripheral firmware”), 8:58–65 (trigger data is obtained from potentiometers in the controller and sent to peripheral firmware), Fig. 3 (showing “[t]rigger data” 323 as part of peripheral firmware 320). Further, the ’907 patent discloses that the primary and secondary ranges at least “may be fixed or variable.” Ex. 1001, 5:29–30. This suggests that an embodiment in which all the range information is fixed (i.e., unalterable by a user) would be within the scope of the claimed invention. As to Patent Owner’s argument that defining would exclude something that is pre-defined, Patent Owner provides no evidence of this in the ’907 patent, its prosecution history, or extrinsic evidence. We find the proposition that something “pre-defined” is not “defined” illogical, and we” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We consider prior art references “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,627,907 - PTAB · Sep 25, 2024 · IPR2024-00582 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–6, 14–16, and 19 on all asserted grounds, finding a reasonable likelihood Valve would show at least one claim unpatentable based on Pratt.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We consider prior art references “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)). A claim is unpatentable under § 103 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)).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that formal education could substitute for practical experience, and vice versa. Pet. 6, Prelim. Resp. 21. The parties’ proposed levels of ordinary skill appear to be substantially similar, supported by testimonial evidence, and consistent with the asserted prior art and the types of problems and solutions in the ’738 patent. See, e.g., Ex. 1001, 1:6–61. Although we discern no difference in the outcome of this decision from choosing one over the other, we adopt Valve’s proposed level of skill for this Decision because it is sufficiently persuasive to meet Valve’s “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION In an IPR, we construe a patent claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). This generally includes “construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. The ordinary and customary meaning of a claim term “is its meaning to the ordinary artisan after reading the entire patent,” and “as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1313, 1321. Neither party argues that we should construe any particular claim terms explicitly. Pet. 8; Prelim. Resp. 21. We agree that, for the purpose of institution, we do not need to adopt explicit constructions for any claim terms. To the extent that the meaning of claim language is disputed, we discuss it below in the context of the prior art. 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 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We consider prior art references “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,175,738
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.