- PTAB · Apr 13, 2023 · IPR2022-01547 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–7 and all petitioned grounds, finding a reasonable likelihood of success on at least claims 1, 2, and 4–7 over Loomis and Hodge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“G. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Lett’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have been a person with a working knowledge of cache memory technologies.” Pet. 10 (citing Ex. 1003 ¶ 427). Petitioner contends that a person of ordinary skill in the art “would have had a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with experience with memory management technologies such as caching. Superior education or experience would compensate for deficiencies in either.” Id. at 10–11 (citing Ex. 1003 ¶ 42). Patent Owner states that “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 13. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’244 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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)). Petitioner and Patent Owner agree that no claim terms require an express construction at this stage of the proceeding.8 Pet. 11; Prelim. 8 During a conference call and as documented in a joint email thereafter, (1) Petitioner acknowledged an error in the Petition, where it states that four claim elements should be construed instead of stating that no terms require construction and (2) Patent Owner agreed that Petitioner’s clarification mooted an argument raised on page 13 of the Preliminary Response regarding the error in the Petition. See Ex. 3001 (Email from D. Smith dated Feb. 17, 2023). Resp. 13. Accordingly, we need not construe any claim terms expressly because none are in dispute. See Vivid Techs., 200 F.3d at 803.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Whether an ordinarily skilled artisan would have been motivated to modify the teachings of a reference is a question of fact.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted). “[W]here a party argues a skilled artisan would have been motivated to combine references, it must show the artisan ‘would have had a reasonable expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1154, 1068–69 (Fed. Cir. 2012)). slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,313,244 - PTAB · Apr 13, 2023 · IPR2022-01548 · APJ Nathan A Engels · IPR · Institution
The Board instituted inter partes review of claims 1–6 on all petitioned grounds, finding a reasonable likelihood that TikTok would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’041 patent. Accordingly, we institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention would have had “at least a [b]achelor’s degree in computer science, electrical engineering, computer engineering, or a related field, with 2–3 years of experience in digital video processing, or a related field, or equivalent research or professional experience.” Pet. 7 (citing Ex. 1003 ¶ 26). Patent Owner states that it applies Petitioner’s proposed level of ordinary skill for the purposes of its Preliminary Response. Prelim. Resp. 7.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Resp. 34–35. First, Mr. Lett’s Declaration constitutes evidence cited to and relied on in the Petition. Thus, to the extent there is repetition, it is more reasonable to infer that the Petition repeats Mr. Lett’s testimony (not the other way around). Second, that a petition repeats the analysis of an expert declarant is not a reason, in and of itself, to give that expert’s opinion little to no weight. Rather, the critical inquiries are whether the declaration testimony “is conclusory and unsupported” and whether it “disclose[s] the underlying facts or data on which the opinion is based.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential) (quoting 37 C.F.R. § 42.65(a)). Additionally, a similar important inquiry is whether the declaration testimony supports the arguments made in the Petition. If these conditions are satisfied, we do not give little to no weight to declaration testimony simply because it is repeated in a petition, just as we do not give little to no weight to teachings of the prior art that are repeated in a petition. For the purposes of this Decision, we apply Petitioner’s level of” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“At this stage, we determine it is unnecessary to determine whether the challenged claims are limited as argued by Patent Owner because, as explained below, we determine Petitioner has shown that both Morikawa and Suzuki teach or reasonably suggest each limitation of the challenged independent claims even under Patent Owner’s proposed requirement of a variable output frame rate. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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)). To any extent that the parties disagree regarding this issue or the scope of the challenged claims, including whether prosecution history disclaimer applies and/or whether the claims are otherwise limited to variable output frame rates, the parties are encouraged to address such issues more directly in future briefing. We note for a statement made during prosecution to qualify as a disavowal of claim scope, the statement “must be ‘so clear as to show reasonable clarity and deliberateness,’ and ‘so unmistakable as to be unambiguous evidence of disclaimer.’” Genuine Enabling Tech. LLC v. Nintendo Co., 29 F.4th 1365, 1374 (Fed. Cir. 2022) (quoting Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003)). “The party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a clear and unmistakable disclaimer that would have been evident to one skilled in the art.” Id. (quoting Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016)).” slip op. at 8
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,445,041 - PTAB · Feb 7, 2023 · IPR2022-01327 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted review of claims 1–9, 29, and 30 on the § 103 ground over Hardin ’665 and Salmre.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have reviewed Petitioner’s uncontested argument and evidence regarding the teachings of Hardin ’665 and Salmre, and we find, for the reasons provided by Petitioner and on the preliminary record before us, that Petitioner has shown sufficiently that the combined teachings of Hardin ’665 and Salmre satisfy the elements of the claims, and that one of ordinary skill in the art would have had a reason with rational underpinning to combine the teachings as proposed by Petitioner with a reasonable expectation of success.” slip op. at 33
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Analogous artInstituted
“Differences Between the Prior Art and the Claims; Motivation to Modify Petitioner sets forth a detailed analysis showing how the combined teachings of the references meet the elements of claims 1–9, 29, and 30. Pet. 28–63. In particular, Petitioner relies on Hardin ’665 as teaching most of the elements of the claims, but relies, on Salmre to meet the claim elements reciting application programs on mobile devices that can reserve geographic areas and a content delivery platform that can be implemented on the same mobile device as the application program. Id. at 29. Additionally, Petitioner contends that one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre with a reasonable expectation of success. Id. at 63–69.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Differences Between the Prior Art and the Claims; Motivation to Modify Petitioner sets forth a detailed analysis showing how the combined teachings of the references meet the elements of claims 1–9, 29, and 30. Pet. 28–63. In particular, Petitioner relies on Hardin ’665 as teaching most of the elements of the claims, but relies, on Salmre to meet the claim elements reciting application programs on mobile devices that can reserve geographic areas and a content delivery platform that can be implemented on the same mobile device as the application program. Id. at 29. Additionally, Petitioner contends that one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre with a reasonable expectation of success. Id. at 63–69.” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“Objective Considerations of Nonobviousness Neither party presents evidence of objective considerations of nonobviousness at this stage of the proceeding.” slip op. at 34
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSRPatents in suitUS 10,049,387 - Resmed, Inc. v. New York UniversityInstitutedPTAB · Dec 5, 2022 · IPR2022-00989 · APJ James A Tartal · IPR · Institution
The Board instituted IPR on all challenged claims and all petition grounds, finding a reasonable likelihood of success on obviousness over Sullivan995 and Sullivan460.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“§ 315(b) is unavailing. Rule 42.104(b) requires a petitioner to state in its petition “[h]ow the challenged claim is to be construed” and “specify where each element of the claim is found in the prior art.” 37 C.F.R. §§ 42.104(b)(3), (b)(4). The Petition states “[t]he Board construes the claims ‘using the same claim construction standard that would be used’ in district courts.” Pet. 20. We disagree that Rule 42.104(b) or the CTPG requires Petitioner to make any specific statement if it takes the position that no express construction of claim terms is required. Rather, the CTPG states that “a petitioner may include a statement that the claim terms require no express construction.” CTPG 44.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“We use a two-part framework to analyze a request to exercise discretion to deny institution under § 325(d). First, we determine “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, Paper 6 at 8. Second, if either condition of the first part of the framework is satisfied, then we consider “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims.” Id. In applying this framework, we refer to the non-exclusive factors delineated in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph). These factors are: a) the similarities and material differences between the asserted art and the prior art involved during examination; b) the cumulative nature of asserted art and the prior art evaluated during examination; c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; d) the extent of overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Id. at 17–18.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner contends that a person of ordinary skill in the art “in 2003 would have had at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience” and “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 19 (citing Ex. 1003 ¶ 77). Petitioner further states that the “Petition does not turn on this precise definition, and the challenged claims would be unpatentable from the perspective of any reasonable person of ordinary skill in the art at the relevant time.” Id. (citing Ex. 1003 ¶ 78). Patent Owner, at this stage of the proceeding, does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 9. We find, on the current record, that the ’539 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’539 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner propose no express construction for any claim term, at least with regard to the alleged obviousness grounds of unpatentability. See Pet. 20. In regard to the alleged anticipation grounds, Petitioner contends “the patient is in an awake state when there is an absence of obstructions or other breathing patterns indicative of sleep,” and asserts this is an “implied construction of ‘an awake state’ based on [Patent Owner’s] infringement allegations” in district court. Id. at 68, 70. Patent Owner proposes no express construction of any claim term and states “no claim terms are in controversy.” Prelim. Resp. 10. In light of our determinations below, we find that an express construction of any claim term is not necessary for purposes of rendering this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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 20
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,427,539 - TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentablePTAB · Nov 21, 2022 · IPR2022-00245 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 2–4 are unpatentable as obvious over Lam, Enz, and Tayloe; claims 2 and 3 are also unpatentable as obvious over Tayloe and the TI Datasheet.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Neither party contends that the difference in their proposals affects the outcome of this proceeding and we do not find that it does. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“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.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at 1366). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009)). That is precisely what the patentees did in the above-passage. Specifically, we find that they clearly set forth a definition that is different than the plain and ordinary meaning and, in so doing, clearly expressed an intent to redefine the term. That the patentees intended to redefine the term “storage module” is clearly expressed by the use of “as used herein”16 and “refers to” in the above-passage and is consistent with the patentees’ use of these same phrases when defining other terminology in the ’551 patent, as discussed above. slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Generally . . . the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” TomTom, 790 F.3d at 1323. We agree with Petitioners that “wireless modem apparatus,” as recited in the preambles of claims 2 and 3, is not limiting. In particular, “wireless modem apparatus” does not provide antecedent basis for any term subsequently recited in claims 2–4; it does not provide any essential structure because the body of the claim recites a structurally complete invention; and it is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner’s argument that the preamble is limiting because it makes clear that the input signal is input to a wireless modem apparatus is unavailing because the body of claims 2 and 3 expressly recite, as the first element, “a receiver for frequency down-converting an input signal.” See Ex. 1001, 60:48–49 (claim 2), 61:2–3 (claim 3). And, Patent Owner’s arguments make clear that its attempt to read “wireless modem apparatus” as limiting is solely for the purpose of arguing that claims 2–4 require a transmitter, which is a structural element that is not recited in the claims. See, e.g., PO Resp. 72 (arguing that Tayloe does not disclose a transmitter), 79 (raising the same arguments directed to Lam). When the patentees intended to limit a claim to a transmitter, they expressly recited a transmitter in the body of the claim. See, e.g., Ex. 1001, 61:25–57 (Claim 6 recites “[a] wireless modem apparatus, comprising,” and expressly recites “a receiver” and “a transmitter” in the body of the claim.). Accordingly, for each of these reasons, we find that “wireless modem apparatus” recited in the preambles of claims 2 and 3 is not limiting. slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“On the full record before us, none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of these additional terms. Accordingly, we need not construe them expressly to resolve the present disputes between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 24
Patent outcomesUS 7,110,444 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,444 - TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentablePTAB · Nov 21, 2022 · IPR2021-00990 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 2–4 are unpatentable under §103: claims 2–3 over Tayloe and the TI Datasheet, and claims 2–4 over Lam, Enz, and Tayloe.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s option (a) is substantially the same as Petitioners’ proposal—both require a bachelor’s degree in the same or a related subject and two additional years of related work experience. Patent Owner’s option (b) adds an additional option based on work experience in lieu of a formal degree. Neither party contends that the difference in their proposals affects the outcome of this proceeding and we do not find that it does. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“The terms storage module and storage capacitance, as used herein, are distinguishable from the terms holding module and holding capacitance, respectively. Holding modules and holding capacitances, as used above, identify systems that store negligible amounts of energy from an under-sampled input EM signal with the intent of “holding” a voltage value. Storage modules and storage capacitances, on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal. Ex. 2029, 66:59–67 (emphases added); see Ex. 2016, 39–40 (discussing Patent Owner’s prior arguments to construe “storage module” in IPR2014- 00948). When defining certain terms in a section titled “General Terminology,” the ’551 patent repeatedly uses the phrase “when used herein” in combination with the phrase “refer(s) to.” See, e.g., Ex. 2029, 13:56–15:27 (mentioning a term followed by “when used herein,” followed by “refers to,” followed by a definition). For example, the ’551 patent states, “[t]he term digital signal, when used herein, refers to a signal that changes between discrete states, as contrasted to a signal that is continuous.” Id. at 15:7–9. As shown, the ’551 patent defines “digital signal” by stating “when used herein” followed by “refers to.” And, the same sentence also provides a comparison between “digital signal” and a signal that is continuous. Even though the passage describing “storage module” is not listed under the “General Terminology” section of the ’551 patent, the passage provides the same indications that the patentees clearly and unambiguously intended to define the term “storage module” by stating “as used herein” and “refer to”—hallmarks that the patentees were providing a lexicographic definition of the term. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 679 (Fed. Cir. 2015) (“An applicant’s use of the phrase ‘refers to’ generally indicates an intention to define a term.”) (citing In re Imes, 778 F.3d 1250, 1252–53 (Fed. Cir. 2015); Microsoft Corp. v. Int’l Trade Comm’n, 731 F.3d 1354, 1360 (Fed. Cir. 2013); Linear Tech. Corp. v. Int’l Trade Comm’n, 566 F.3d 1049, 1054 (Fed. Cir. 2009)). Additionally, as with the term “digital signal,” the above-passage provides a comparison between “storage module” and “holding module” and uses the definitions of the terms to compare and contrast them. “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.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at 1366). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009)). That is precisely what the patentees did in the above-passage. Specifically, we find that they clearly set forth a definition that is different than the plain and ordinary meaning and, in so doing, clearly expressed an intent to redefine the term. That the patentees intended to redefine the term “storage module” is clearly expressed by the use of “as used herein”16 and “refers to” in the above-passage and is consistent with the patentees’ use of these same phrases when defining other terminology in the ’551 patent, as discussed above.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Generally . . . the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” TomTom, 790 F.3d at 1323. We agree with Petitioners that “wireless modem apparatus,” as recited in the preambles of claims 2 and 3, is not limiting. In particular, “wireless modem apparatus” does not provide antecedent basis for any term subsequently recited in claims 2–4; it does not provide any essential structure because the body of the claim recites a structurally complete invention; and it is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner’s argument that the preamble is limiting because it makes clear that the input signal is input to a wireless modem apparatus is unavailing because the body of claims 2 and 3 expressly recite, as the first element, “a receiver for frequency down-converting an input signal.” See Ex. 1001, 60:48–49 (claim 2), 61:2–3 (claim 3). And, Patent Owner’s arguments make clear that its attempt to read “wireless modem apparatus” as limiting is solely for the purpose of arguing that claims 2–4 require a transmitter, which is a structural element that is not recited in the claims. See, e.g., PO Resp. 72 (arguing that Tayloe does not disclose a transmitter), 79 (raising the same arguments directed to Lam). When the patentees intended to limit a claim to a transmitter, they expressly recited a transmitter in the body of the claim. See, e.g., Ex. 1001, 61:25–57 (Claim 6 recites “[a] wireless modem apparatus, comprising,” and expressly recites “a receiver” and “a transmitter” in the body of the claim.). Accordingly, for each of these reasons, we find that “wireless modem apparatus” recited in the preambles of claims 2 and 3 is not limiting. slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Additional Terms Petitioners propose that we construe the following three terms: “frequency down-conversion module,” “subtractor module,” and “under-samples.” Pet. 15–18. Patent Owner responds to Petitioners’ constructions for “frequency down-conversion module” and “subtractor module.” PO Resp. 39–41. On the full record before us, none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of these additional terms. Accordingly, we need not construe them expressly to resolve the present disputes between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 24
Patent outcomesUS 7,110,444 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,444 - Snap Inc. v. Sanderling Management Ltd.All claims unpatentablePTAB · Oct 31, 2022 · IPR2021-00780 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1, 2, 4–6, 8–16, 18, 19, 21–23, and 25–33 are unpatentable as obvious over Hogeg.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“We agree with Patent Owner, however, that the patentee acted as his own lexicographer with the passage from column 6 discussed by the parties. Indeed, the sentence at issue begins with the exact same term—“distribution rule”—and continues by explaining what that term “is.” See Ex. 1001, 6:13– 14 (“A distribution rule is a rule used in determining how to target a group of end-users . . . .” (emphasis added)); see also Ex. 1001, code (57) (the Abstract, providing that “[a] distribution rule is used to target a group of end users . . . ”). As argued by Patent Owner, this is sufficiently clear language to express an intent by the patentee to define that term. See PO Sur-reply 6 (citing Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) (stating that “the word ‘is,’ again a term used here in the specification, may ‘signify that a patentee is serving as its own lexicographer’”); see also Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“To act as a lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly express an intent to redefine the term.’” (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Further, we disagree with Petitioner’s assertion that the definition should include the rest of the passage in column 6 (i.e., the language from “for instance” to the end of the sentence). See Pet. Reply 4. By beginning with “for instance,” the express language of that portion of the sentence makes clear that it merely provides examples of “rule[s]” that fall within the definition previously provided in the sentence, as acknowledged by Petitioner and Mr. Parulski. Cf. id. (“The language following that clipped by [Patent Owner] (‘for instance . . . ’) is what provides ‘distribution rules’ examples.”); Parulski Reply Decl. ¶ 15 (“The language following that identified by [Patent Owner] (beginning with ‘for instance, a rule . . . ’) provides examples of what a ‘distribution rule’ may be.”).6 For these reasons, we construe “distribution rule” in elements 1b and 18c in the manner proposed by Patent Owner—“a rule used in determining how to target a group of end-users.”” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner discusses the term “digital media content processing function” in claims 1 and 18 (Pet. 21–23), but states that “the Board needn’t construe [that term] to determine patentability” (Pet. 23). We did not construe that term in the Decision on Institution (Dec. Inst. 26–27), and Patent Owner takes the position in the Response that that term still does not need construction (PO Resp. 11). We continue to agree with both parties that “digital media content processing function” need not be construed because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art at the time of the alleged invention “would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 19. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Pet. 19–20 (citing Parulski Pet. Decl. ¶¶ 173–174). Prior to institution, Patent Owner did not address or dispute Petitioner’s proposed definition of the level of ordinary skill in the art. In the Decision on Institution, we adopted Petitioner’s proposed definition, stating that it “appear[ed] consistent with the record at th[at] stage of the proceeding, including the prior art.” Dec. Inst. 26. In the Response, Patent Owner also does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See PO Resp 10–11. We maintain the definition of the level of ordinary skill in the art adopted as of institution.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“The record supports Petitioner’s argument that the system in Hogeg “targets a group of end-users” in that it assesses which of the users are, for example, at a specific location and then sends only those users a visual editing function relevant to the users’ location. For example, in a passage cited by Petitioner as to a “conditional selection process to select/distribute a subset of functions” (Pet. 33), Hogeg discloses that “if the positional data is indicative that the visual content was captured in New York, a visual content editing function which provides an overlay of the statue of liberty and/ or a sound overlay of the song New York [N]ew York may be provided.” Ex. 1004 ¶ 58, cited at Pet. 33. This system “target[s] a group of end-users” in New York based on sensor data in that other end-users—such as ones indicated as being in California—do not receive the New York overlay. Patent Owner attempts to distinguish Hogeg’s process in that the content editing functions are sent in response to image selection by the user. See PO Resp. 16 (“Thus, what Hogeg discloses is a process for sending content editing functions ad hoc based on the characteristics of specific pieces of content that are manually identified by a user. Nothing in Hogeg, however, teaches a system or process capable of targeting a group of end-users based on a sensor data condition from their mobile devices.”). This distinction, however, is not supported by the claims. Elements 1b and 18c require a certain type of “distribution rule”— specifically one “defining a sensor data condition”—which Hogeg teaches for the reasons discussed above, but the claims do not preclude a user initiating the overall process with selection of an image. Stated differently (by Petitioner in the Reply), “whatever initiates Hogeg’s process makes no difference to Hogeg’s ‘distribution rules’” because “Hogeg’s content editing functions are still distributed according to, for example, client terminal location . . . and therefore Hogeg still uses distribution rules that target end users (e.g., users at a particular location).” Pet. Reply 8 (citing Parulski Reply Decl. ¶ 40)).” slip op. at 21
Patent outcomesUS 10,108,986 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,108,986 - Amphenol Corp. v. PPC Broadband, Inc.InstitutedPTAB · Oct 26, 2022 · IPR2022-00721 · APJ George R Hoskins · IPR · Institution
The Board instituted review of claims 1–6, 8–19, 21–33, 35–43, 45–50, and 52–62 on both grounds, finding a reasonable likelihood of obviousness over Youtsey, Lionetto, and Horak.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“When applying § 325(d), we utilize a two-part framework. See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). First, we determine “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Id. Second, “if either condition of [the] first part of the framework is satisfied,” we consider “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id. In the second part, we consider: (i) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (ii) whether Petitioner has pointed out sufficiently how the Examiner erred in evaluating the asserted prior art; and (iii) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art. Id. at 10–11 (citing factors (c), (e), and (f) of Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential)).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“analysis overlook that the specific solution proposed by Petitioner’s combination is much simpler than that suggested by Patent Owner. Patent Owner acknowledges the negative effects of RF interference and Petitioner’s evidence, including the discussion in the background section of the ’083 patent, establishes on this record that it was known that preventing RF interference was an important consideration in cable connector design, and that interference is particularly disruptive where an electromagnetic buffer is not provided by an adequate electrical and/or physical interface between the port and the connector. See, e.g., Pet. 17 (quoting Ex. 1001, 1:51–67) (citing Ex. 1005 ¶¶ 61–62). Petitioner’s evidence also establishes that Youtsey’s o-rings protect a center conductor from degradation due to moisture. See id. at 17–18 (citing Ex. 1007, 1:19–22, 2:14–16, 5:50–53). And, Horak specifically provides that a conductive, compressible o-ring can address both issues by blocking RF interference and sealing from the weather, e.g., moisture. See id. at 18 (citing Ex. 1009, 5:4–7; Ex. 1005 ¶¶ 64–66). Thus, we do not agree with Patent Owner that one of ordinary skill in the art needed to be motivated to create a coupler-body grounding path in particular, as opposed to being motivated to modify Youtsey such that the connector was not only sealed off from moisture (which Youtsey already taught), but also blocked RF interference, which was a known issue of concern and which Horak taught could be addressed with the same component that also seals off from moisture. Thus, Horak’s teaching, as applied to Youtsey’s o-rings, results in the element that Patent Owner asserts does not exist in the prior art—a coupler-body grounding path—whether or not creating that coupler-body grounding path was a specific, intended goal prompting one of ordinary skill in the art to make the proposed modification to Youtsey. Accordingly, on the present record, Patent Owner’s argument does not detract from Petitioner’s stated motivation and reasons for the proposed combination.” slip op. at 62
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner’s piecemeal arguments in response to Petitioner’s analysis overlook that the specific solution proposed by Petitioner’s combination is much simpler than that suggested by Patent Owner. Patent Owner acknowledges the negative effects of RF interference and Petitioner’s evidence, including the discussion in the background section of the ’083 patent, establishes on this record that it was known that preventing RF interference was an important consideration in cable connector design, and that interference is particularly disruptive where an electromagnetic buffer is not provided by an adequate electrical and/or physical interface between the port and the connector. See, e.g., Pet. 17 (quoting Ex. 1001, 1:51–67) (citing Ex. 1005 ¶¶ 61–62). Petitioner’s evidence also establishes that Youtsey’s o-rings protect a center conductor from degradation due to moisture. See id. at 17–18 (citing Ex. 1007, 1:19–22, 2:14–16, 5:50–53). And, Horak specifically provides that a conductive, compressible o-ring can address both issues by blocking RF interference and sealing from the weather, e.g., moisture. See id. at 18 (citing Ex. 1009, 5:4–7; Ex. 1005 ¶¶ 64–66). Thus, we do not agree with Patent Owner that one of ordinary skill in the art needed to be motivated to create a coupler-body grounding path in particular, as opposed to being motivated to modify Youtsey such that the connector was not only sealed off from moisture (which Youtsey already taught), but also blocked RF interference, which was a known issue of concern and which Horak taught could be addressed with the same component that also seals off from moisture. Thus, Horak’s teaching, as applied to Youtsey’s o-rings, results in the element that Patent Owner asserts does not exist in the prior art—a coupler-body grounding path—whether or not creating that coupler-body grounding path was a specific, intended goal prompting one of ordinary skill in the art to make the proposed modification to Youtsey. Accordingly, on the present record, Patent Owner’s argument does not detract from Petitioner’s stated motivation and reasons for the proposed combination.” slip op. at 62
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, . . . would be led in a direction divergent 9 Lionetto teaches that leaf spring 22 also provides electrical contact through the conductors. Ex. 1008, 2:34–36. from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed”). We do not agree with Patent Owner that one of ordinary skill in the art would have been led in a direction divergent from that taken by Patent Owner. Although we agree with Patent Owner that Lionetto attributes importance to annular leaf spring 22, Lionetto also attributes importance to conductive elastomer gasket ring 34. In particular, Lionetto expressly attributes the electrical contact to both the spring and the gasket ring. See Ex. 1008, 2:34–36 (“the electrical contact is essentially through the leaf spring 22 and a conductive elastomer 34 against which the tapered surface 27 abuts”). And, Lionetto’s claims repeat the importance of both structures in providing continuous electrical contact and RFI suppression. See id. at 2:50–58 (claim 1) (“an annular electrical spring contact member which functions to provide continuous annular outer conductor electrical contact and RFI suppression . . . even during slight conductor misalignment”), 3:14–20 (“A connector of claim 1, and further comprising an electrically conductive elastomer gasket ring, carried on said male member against which said outer end taper of said female member may engage and compensates for misalignment of said male and female connector halves when fully engaged, providing continuous circumferential electrical contact and RFI suppression.”). Thus, Lionetto supports a finding that one of ordinary skill in the art would have been prompted to use an annular spring, a conductive gasket ring, or both to provide continuous electrical contact and RFI suppression across the connector. But, we disagree with Patent Owner that Lionetto would have led one of ordinary skill in the art away from using a conductive gasket ring in Youtsey, as proposed by Petitioner, because, as explained above, Lionetto uses a conductive gasket ring and expressly attributes the benefits noted above to its use (i.e., continuous electrical contact and RFI suppression). slip op. at 56
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,225,083 - Platform Science, Inc. v. Omnitracs, LLCAll claims unpatentablePTAB · Jun 2, 2022 · IPR2021-00187 · APJ Frederick C Laney · IPR · Final written decision
Claims 1–22 are unpatentable as obvious over Moses; the Board did not reach the alternative Levesque ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner, supported by Mr. Andrews’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had at least a Bachelor of Science degree (or equivalent) in . . . electrical engineering, computer engineering, computer science, or a related technical field, and at least 2–3 years of experience in the field of vehicle telematics systems.” Pet. 9–10 (citing Ex. 1003 ¶¶ 25–27). Patent Owner “does not dispute Petitioner’s offered level of ordinary skill in the art” for purposes of this proceeding. PO Resp. 8. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’335 patent and the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction standard that would be used to construe the claims in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2020). The claim construction standard includes construing claims in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing claims in accordance with their ordinary and customary meaning, we take into account the specification and prosecution history. Phillips, 415 F.3d at 1315–17. However, only terms that are in controversy need to be expressly construed and only to the extent necessary to resolve the controversy. 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)). Petitioner contends that the terms in the Challenged Claims are properly understood to have their ordinary and customary meaning. Pet. 2. Patent Owner does not dispute this contention. See generally PO Resp. Therefore, because no controversy regarding claim construction exits, it is not necessary for us to construe expressly any claim term.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“attempts to map to the CVP System (see PO Resp. 56–59)—Petitioner has established that Moses discloses or suggests the subject matter of those claims. The proposed combinations are not based on hindsight reconstruction; rather, they are straightforward and logical. Moses indisputably discloses a response management system with automated rule-based alert notifications and response deployment capabilities. The only arguable differences Patent Owner alleges are whether Moses discloses storing information about something happening/occurrence versus more general information and whether Moses discloses providing responses that recommend a particular action be taken versus responses that are merely informational. We find Petitioner’s evidence from Moses to be particularly strong that a skilled artisan would have known to store information about occurrences and provide responses including recommended actions. Thus, for all the reasons discussed above (supra § III.B.1) and here, we give Petitioner’s evidence of obviousness substantial weight. Additionally, we disagree with most of Patent Owner’s arguments in response and we do not give Patent Owner’s evidence of objective indicia of nonobviousness substantial weight for the reasons discussed above (supra § III.C). But, even if we were to have found that Patent Owner established a nexus, given its tenuous connection to the only difference Patent Owner alleges to exist between the systems disclosed by the prior art and the claimed invention, we find that the evidentiary weight favoring obviousness significantly outweighs the most probative weight that could be given to the objective evidence presented. We also find that the balance weighs strongly in Petitioner’s favor regarding claims 2–7, 9–16, and 18–22 for the same reasons discussed above and additionally because Patent Owner has not established that the CVP System practices any of these claims or that there is a nexus between the objective indicia of nonobviousness and any of these claims. Accordingly, on balance, considering the complete record before us, Petitioner has established, by a preponderance of the evidence, that claims 1–22 of the ’335 patent would have been obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 52
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“As stated in Fox Factory, “presuming nexus is appropriate when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.” Fox Factory, 944 F.3d at 1373 (quotations omitted). Patent Owner does not assert that the CVP System is entitled to a presumption of nexus. See generally PO Resp. 55–61. Furthermore, Patent Owner does not provide any evidence or argument to even suggest that the CVP System and the claimed invention are coextensive. Id. Exhibit 2015 evidences that the CVP System includes a myriad of features that would allegedly provide important benefits to its customers. Therefore, Patent Owner is not entitled to a presumption of nexus because, even presuming the CVP System incorporates the patented invention, it cannot be disputed that the claimed invention is only one of many components included in the CVP System. See generally Ex. 2015. Of course, our nexus inquiry does not end there because Patent Owner is still afforded an opportunity to prove nexus by showing that the alleged commercial success achieved with the CVP System is in some way a direct result of the unique characteristics of the claimed invention. But on this front, Patent Owner again fails to provide any foundational basis to establish a link between the claimed invention and the evidence of commercial success. Instead, Patent Owner simply states, “[b]ecause the [CVP System] embodies all the limitations of the independent claims of the ’335 patent, sufficient nexus exists between [Patent Owner’s] commercial success and the claims.” PO Resp. 55. And after Petitioner pointed out that Patent Owner had failed to establish any specific link between the claimed invention and commercial success evidence (Pet. Reply 25–26), Patent Owner responded as follows: “It is not necessary, however, that the patented invention be solely responsible for the commercial success, in order for this factor to be given weight appropriate to the evidence, along with other pertinent factors.” Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1273 (Fed. Cir. 1991); see also Oren Techs., LLC v. Proppant Express Invs. LLC, No. 2019-1778, 2021 WL 3120819, at *7 (Fed. Cir. July 23, 2021). As [Patent Owner] explained, [Petitioner’s CVP System] is commercially successful at least in part due to the advertised remote vehicle monitoring functionality. See Exs. 2016-2023. This is more than adequate to establish commercial success. Oren Techs, 2021 WL 3120819, at *7. PO Sur-reply 25–26. Patent Owner has not persuasively shown by a preponderance of the” slip op. at 47
Patent outcomesUS 9,147,335 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,147,335 - Airbus Americas, Inc. v. Harper Engineering CompanyInstitution deniedPTAB · May 20, 2022 · IPR2022-00195 · APJ James A Tartal · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2021). An inter partes review may not be instituted “unless . . . the 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). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we conclude that the information does not show a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art in light of the subject matter of the ’244 patent, which is not limited to “aeronautical” or “aerospace” applications, claims a “stowage bin assembly” and a “hinge assembly,” and expressly refers broadly to “transportation vehicles” as typically including “overhead storage compartments,” identifying “airplanes” only as an “example” of a “transportation vehicle.” Ex. 1001, code (57), 1:12–15, 7:31–8:64. Patent Owner’s argument appears to be no more than a transparent attempt to baselessly suggest that Dr. Codd should be excluded from testifying because he lacks “the proper background or sufficient experience in the field” under Patent Owner’s unreasonable proposed level of ordinary skill. See Prelim. Resp. 17–18. Dr. Dershowitz’s testimony in support of Patent Owner on the level of ordinary skill is not credible because it is inconsistent with the ’244 patent and the asserted art. Ex. 2001 ¶¶ 58–63. For example, Dr. Dershowitz acknowledges that “[h]inges are common to many mechanical systems,” but then suggests “being familiar with hinges in general may not directly apply to the specifics of this invention” without identifying anything “specific” to the ’244 patent that requires the level of skill Dr. Dershowitz endorses. Id. ¶ 62. Dr. Dershowitz suggests “hinges used in storage solutions that are stationary have fewer requirements related to mass and volume and are not subject to the same forces and stresses that are experienced on an aircraft,” however, the challenged claims of the ’244 patent do not preclude “stationary” storage solutions, do not require anything pertaining to “mass and volume,” and are not required to withstand any “forces and stresses” experienced on an aircraft. Dr. Dershowitz’s opinion that “[d]ue to the unique environment and specialized nature of the technology at issue” a person of ordinary skill in the art would have needed “to have an educational background and experience that is specific to the aerospace field” is not supported by the ’244 patent or the asserted art. See id. ¶ 63; see also Ex. 1005 ¶ 2 (Rheaume stating it “relates to a hinge assembly and, more particularly to a hinge assembly for retaining a door of a storage bin”); Ex. 1006 ¶ 2 (Savian stating it “relates generally to overhead storage bin assemblies”); Ex. 1008, 3:24–27 (Frazier stating it discloses “improvements to standard luggage and storage bins commonly found in commercial aircraft as well as other aircraft, buses, passenger vans, and other vehicles”). Dr. Dershowitz’s misapprehension of the appropriate level of ordinary skill in the art is a consideration we apply in weighing his opinion of how a” slip op. at 11
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Dr. Dershowitz’s testimony in support of Patent Owner on the level of ordinary skill is not credible because it is inconsistent with the ’244 patent and the asserted art. Ex. 2001 ¶¶ 58–63. For example, Dr. Dershowitz acknowledges that “[h]inges are common to many mechanical systems,” but then suggests “being familiar with hinges in general may not directly apply to the specifics of this invention” without identifying anything “specific” to the ’244 patent that requires the level of skill Dr. Dershowitz endorses. Id. ¶ 62. Dr. Dershowitz suggests “hinges used in storage solutions that are stationary have fewer requirements related to mass and volume and are not subject to the same forces and stresses that are experienced on an aircraft,” however, the challenged claims of the ’244 patent do not preclude “stationary” storage solutions, do not require anything pertaining to “mass and volume,” and are not required to withstand any “forces and stresses” experienced on an aircraft. Dr. Dershowitz’s opinion that “[d]ue to the unique environment and specialized nature of the technology at issue” a person of ordinary skill in the art would have needed “to have an educational background and experience that is specific to the aerospace field” is not supported by the ’244 patent or the asserted art. See id. ¶ 63; see also Ex. 1005 ¶ 2 (Rheaume stating it “relates to a hinge assembly and, more particularly to a hinge assembly for retaining a door of a storage bin”); Ex. 1006 ¶ 2 (Savian stating it “relates generally to overhead storage bin assemblies”); Ex. 1008, 3:24–27 (Frazier stating it discloses “improvements to standard luggage and storage bins commonly found in commercial aircraft as well as other aircraft, buses, passenger vans, and other vehicles”). Dr. Dershowitz’s misapprehension of the appropriate level of ordinary skill in the art is a consideration we apply in weighing his opinion of how a person of ordinary skill in the art would have understood the prior art at issue.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that no claim terms require construction. Pet. 10 (citing Ex. 1003 ¶¶ 64–66). Patent Owner proposes an express construction for “stowage bin door” and “self-opening mechanism.” Prelim. Resp. 13– 17. We find no claim term requires an express construction in reaching our decision for the reasons below to deny institution of inter partes review. See Vivid Techs., 200 F.3d at 803.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,801,244
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.