- Samsung Electronics Co., Ltd. / Samsung Electronics, America, Inc. v. Cerence Operating CompanyInstitutedPTAB · Jan 31, 2025 · IPR2024-01267 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on claims 1–3, 7–9, 12, and 13 on all petitioned grounds, finding a reasonable likelihood that claim 1 is obvious over Arai and Fenwick.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation in Exhibit 1020 satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor before determining that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation. In light of Petitioner’s stipulation, Patent Owner’s request is denied.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“any evidence of objective indicia of nonobviousness. We conclude that on balance, considering the record presently before us, Petitioner has established a reasonable likelihood of showing that the differences between the subject matter of claim 1 and the teachings of Arai and Fenwick are such that the subject matter, as a whole, would have been obvious at the time of the invention to a person having ordinary skill in the art. e. Summary as to Claim 1 For the reasons discussed above, on the present record we find that Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Arai and Fenwick teaches or suggests each element of claim 1 of the ’428 patent. See 35 U.S.C. § 314(a).” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’428 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).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Relying on the Declaration of Jean Renard Ward, Petitioner contends that “[a] POSITA would have been motivated to incorporate[] Fenwick’s teachings regarding automatically sending recognized words to an application into Arai because this would have furthered Arai’s purpose of having a natural, uninterrupted flow in entering characters without having to press extra keys.” Pet. 31–32 (citing Ex. 1002 ¶ 139). Petitioner concludes that the combination would have been obvious in that it would apply Fenwick’s known technique for recognizing words without additional user confirmation to Arai’s known method of performing handwriting recognition, ready for improvement, to yield the predictable result of the Arai/Fenwick combination: “recognition results are sent to an application without further user confirmation—e.g., pressing the Enter Key—and handwritten character recognition results are removed from the temporary memory such as RAM when the recognition results are sent to the application.” Id. at 32 (citing Ex. 1002 ¶ 140).” slip op. at 18
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,026,428 - PTAB · Jan 31, 2025 · IPR2024-00979 · APJ Lisa A Murray · IPR · Institution
The Board instituted inter partes review of claims 1–18 on all four asserted obviousness grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto. gov/sites/default/files/documents/interim_proc_discretionary_denials_aia_ parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1018) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 57. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 57 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co., a subsidiary of Cerence, Inc., as a real party in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending that Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not currently take a position on the relevant level of ordinary skill in the art and believes that “the Board could assume Petitioner’s proposed level of ordinary skill for the purposes of deciding whether to institute.” Prelim. Resp. 3. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’993 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).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Additionally, only terms that are in controversy need to be construed, and these need to 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)). At this time, neither party proposes a specific construction of any given claim term, instead requesting that the claims be given their plain and ordinary meaning. Pet. 10–11; Prelim. Resp. 5.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,081,993 - Alivecor, Inc. v. Apple Inc.Some claims unpatentablePTAB · Jan 7, 2025 · IPR2023-00949 · APJ Scott A Daniels · IPR · Final written decision
Claims 11–14 and 16–20 are unpatentable over Kim; claim 15 was not shown unpatentable over Chang.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s asserted level of ordinary skill in the art is essentially the same as Petitioner’s, for example requiring a bachelor’s degree in science or engineering and “at least two years of relevant work experience with capture and processing of data or information, including but not limited to physiological information.” Id.; Pet. 9. In view of the similarity, our record now before us, and as we did in our Institution Decision, we rely on Petitioner’s proposed level of ordinary skill in the art as it is essentially the same as that proposed by Patent Owner. Petitioner’s asserted level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’619 patent and the asserted prior art references. Okajima, 261 F.3d at 1355.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“C. Claim Construction We interpret a 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) (2020). Under this standard, we construe 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. Furthermore, “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither Patent Owner nor Petitioner indicate that any claim terms require construction. See generally Petition; PO Resp. For purposes of this Decision where no claim terms are in dispute, we need not explicitly construe any claim terms.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“What these cases and examples clearly articulate, is that whether there is sufficient description in an anticipation reference for linking different disclosures, elements, and embodiments, is particularly case and fact dependent. Moreover, a finding of anticipation resting upon a reference’s disclosures of elements in different embodiments turns on whether an ordinarily skilled artisan would understand that the reference suggests arranging the elements of the embodiments to one another in the same way as the challenged claims. For the reasons that follow, we determine that there is sufficient description and teaching in Kim such that the “combined button” disclosed by Kim, for example in Figure 10(b), can be the same “combined button” as discussed in the embodiment of Figure 18.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As to Patent Owner’s first and second arguments, as we discussed in detail above with respect to anticipation, we find that there is sufficient evidence in Kim itself of contextual and even express links between the various combined button embodiments and Figure 18. Section II.D.2.b)(1)– (4). We have already determined “that one of ordinary skill in the art would understand Kim to disclose the ‘combined button’ structure and function that could be implemented on the face or sidewall of a device.” Id. We likewise determine, based on the same evidence, that a person of ordinary skill in the art would have understood Kim to suggest that the combined button structure and function, for example in the embodiment of Figure 10(b), could be implemented in an opening on the face or sidewall of a device. Obviousness does not require an instruction manual on how to physically incorporate or combine the disclosures of two embodiments in a reference. As KSR informs us, “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420. Moreover, in this case we have only one prior art patent, Kim, so at least the pieces of the puzzle are all in the same box. The persuasive testimony of Dr. Berger that “a person of ordinary skill in the art would have been familiar with electronic devices with sealed and/or insulated button assemblies, and would understand that those assemblies were not limited to the front face of a device,” is unrebutted in this case. Ex. 1003 ¶ 110. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Given the background knowledge of a person of ordinary skill in the art in conjunction with the motivation and teachings in Kim itself for placing sufficient motivation to support the combination of Kim’s Figure 10(b) embodiment with the sidewall placement of the combined button taught in Figure 18 for obviousness purposes. It is well-settled that a single prior art obviousness reference itself can provide motivation for the combination. See General Elec. Co. v. Raytheon Techs. Corp., 983 F.3d 1334, 1352 (Fed. Cir. 2020) (Reversing the Board’s finding of nonobviousness over a single prior art reference, the Court explained that “the Board’s approach would require a motivation to combine each element of the claim—even those present together in a reference. This analysis unduly dissects prior art references into collections of individual elements, requiring a party showing obviousness to re-do the work already done in the prior art reference.”). Patent Owner’s third argument is unavailing because although Dr. Anthony testifies that “implementing the fingerprint sensor assembly of Kim’s Figure 10 embodiment in the ‘lateral surface’ of Kim’s Figure 18 embodiment would have complicated the manufacturing process for the resulting mobile device,” Dr. Anthony does not provide testimony or evidence that implementing the combined button on the sidewall would have been difficult or beyond the level of ordinary skill in the art. Ex. 2009 ¶ 73. We credit Dr. Berger who explains persuasively that “[p]rior to the ’619 patent’s earliest alleged priority date of June 19, 2017, a person of ordinary skill in the art would have known that a mobile electronic device could include one or more button assemblies in a sidewall.” Ex. 1003 ¶ 47 (citing Ex. 1013, 4:40, 19:42–20:4, Figs. 13B, 17, 19A, 19B). It is well-settled that a person of ordinary skill can use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See KSR, 550 U.S. at 418 (“the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”).” slip op. at 43
Patent outcomesUS 10,866,619 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,866,619 - Alivecor, Inc. v. Apple Inc.Some claims unpatentablePTAB · Dec 23, 2024 · IPR2023-00950 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1–14 were not shown unpatentable; claims 15–22 were shown unpatentable over Markel. The revised contingent motion to amend was dismissed as moot.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“In carefully and faithfully wrangling the parties’ views and explanation as to the meaning of limitation [1.c.iii], we conclude that Petitioner’s “correct interpretation” of that limitation is that a first pad is recognized as a distinct structure or component from a first portion of an enclosure, and that the pad is positioned underneath that first portion in a manner such that the pad is concealed from a user. We adopt that interpretation. We determine that it is unnecessary to discuss an express construction for any other term to resolve this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Nevertheless, our analysis and the end result are the same under either proposed definition.” slip op. at 13
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Patent Owner makes a more persuasive case as to what a person of ordinary skill in the art reasonably would have understood from Markel’s disclosure. In particular, we agree with Patent Owner that the record before us readily conveys that a skilled artisan would have followed Markel’s practice of forming or molding electrodes from conductive plastic rather than locating a separate electrode component underneath a conductive plaster layer. See, e.g., PO Resp. 30–31 (“[a] POSITA would find nothing in cited portions of Markel to inform or encourage placement of an electrode underneath an exterior layer.”). Indeed, as Patent Owner articulates, Petitioner “fails to provide any reasoning as to why a POSITA would have found Markel’s method of concealment to be deficient, or why a POSITA would have been motivated in light of Markel’s manner of concealment to nevertheless place an electrode underneath the exterior portion of the device.” Id. To that end, we credit Dr. Kenny’s supporting testimony as consistent with Markel’s express teachings. See, e.g., Ex. 2001 ¶¶ 77–83; Ex. 2004 ¶¶ 81–88. We credit that testimony over the countervailing testimony of Petitioner’s declarant, Dr. Berger (see, e.g., Ex. 1003 ¶¶ 122, 135–139), as we agree with Patent Owner that Dr. Berger’s testimony “is not supported by Markel’s actual disclosures.” PO Resp. 31.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner does not appear to disagree that Markel, itself, does not convey that an electrode, or any structure identifiable as a “pad,” is positioned underneath any surface of any enclosure. Rather, Petitioner’s theory of unpatentability is premised on modification of Markel to so position such a pad. Although seemingly acknowledging that Markel contemplates a concealment technique involving molding an electrode into an exterior surface, Petitioner extrapolates from that disclosure that a skilled artisan would be motivated to try an alternative means of concealing an electrode pad by placing the pad underneath an outer layer or portion, i.e., “audio output portion 610.” See Pet. 20 (citing Ex. 1003 ¶ 135). Neither Petitioner, nor Dr. Kenny, however, meaningfully explains why a skilled artisan would have deviated from Markel’s express teachings of concealing an electrode via molding techniques to then arrive at an entirely different concealment approach of placing an electrode pad underneath the audio output portion. Petitioner’s modification proposal in that regard appears borne of hindsight bias based on the disclosure of the ’257 patent rather than any dutiful consideration of what Markel’s actual teachings would have conveyed to a skilled artisan. See Ex. 2004 ¶ 84 (Dr. Kenny explaining why Petitioner’s proposed modification to Markel to hide the electrode underneath a plastic conductive layer was based on improper hindsight). Such hindsight bias is impermissible. See, e.g., Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”). Patent Owner makes a more persuasive case as to what a person of ordinary skill in the art reasonably would have understood from Markel’s disclosure. In particular, we agree with Patent Owner that the record before us readily conveys that a skilled artisan would have followed Markel’s practice of forming or molding electrodes from conductive plastic rather than locating a separate electrode component underneath a conductive plaster layer. See, e.g., PO Resp. 30–31 (“[a] POSITA would find nothing in cited portions of Markel to inform or encourage placement of an electrode underneath an exterior layer.”). Indeed, as Patent Owner articulates, Petitioner “fails to provide any reasoning as to why a POSITA would have found Markel’s method of concealment to be deficient, or why a POSITA would have been motivated in light of Markel’s manner of concealment to nevertheless place an electrode underneath the exterior portion of the device.” Id. To that end, we credit Dr. Kenny’s supporting testimony as consistent with Markel’s express teachings. See, e.g., Ex. 2001 ¶¶ 77–83; Ex. 2004 ¶¶ 81–88. We credit that testimony over the countervailing testimony of Petitioner’s declarant, Dr. Berger (see, e.g., Ex. 1003 ¶¶ 122, 135–139), as we agree with Patent Owner that Dr. Berger’s testimony “is not supported by Markel’s actual disclosures.” PO Resp. 31.” slip op. at 32
Patent outcomesUS 10,076,257 mixedClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,076,257 - Cambridge Mobile Telematics, Inc. v. Sfara, Inc.Institution deniedPTAB · Dec 13, 2024 · IPR2024-00966 · APJ John F Horvath · IPR · Institution
The Board denied institution because the Petition did not explain whether the component limitations invoke § 112(f) or identify corresponding structure, as required by Rule 42.104(b)(3).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“The Consolidated Trial Practice Guide[1,2](“CTPG”) . . . instructs that “[w]here claim language may be construed according to 35 U.S.C. § 112(f), a petitioner must provide a construction.” CTPG 45 (emphases added) (citing 37 C.F.R. § 42.104(b)(3)). The CTPG advises that a party “may choose to elaborate why § 112(f) should or should not apply to the limitation at issue.” Id. Notably, the CTPG warns that “[a] petitioner who chooses not to address construction under § 112(f) risks failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).” Id.” slip op. at 6
- BurdenDenied
“Given these facts, we determine that rule 104(b)(3) mandates that the Petition either identify “the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function” recited in the “component” term limitations or explain why the “component” term limitations are not subject to a means-plus-function construction. This, it fails to do. To be clear, we note that our rules do not prohibit a petitioner from taking inconsistent claim construction positions before the Board and a district court. See 10x Genomics, Inc. v. Bio-Rad Labs, Inc., IPR2020- 00086, Paper 8 at 18 (PTAB Apr. 27, 2020). However, where, as here, a petitioner has proposed a claim term be construed solely as a means-plus-function limitation in a district court proceeding and emphasized that the issue is not only “most significant” but potentially “case . . . dispositive,” we determine the petition is obliged to either apply that construction in this proceeding or explain why that construction is not applicable. Accordingly, we find the Petition to be deficient under rule 104(b)(3).4” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other
“connote a definite structure. See Williamson, 792 F.3d at 1350 (identifying words such as “mechanism,” “element,” “device,” and others as verbal constructs that do not connote sufficiently definite structures). Indeed, the Specification discloses all of the “components” recited in claims 1, 8, and 15, including the “comparing component,” can be “implemented as a computer having tangible computer-readable media for carrying or having computer-executable instructions or data structures stored thereon.” Ex. 1001, 5:35–43. Thus, like the word “module,” a recognized nonce word, each of the recited “components” is nothing more than “a generic description for software or hardware that performs a specified function” and their recitation “operate[s] as a substitute for ‘means’ in the context of § 112, para. 6.” Williamson, 792 F.3d at 1350. Accordingly, we construe the “comparing component” limitation recited in claims 1, 8, and 15 as a meansplus-function limitation whose function is “generating a comparison signal.”2” slip op. at 14
- Skill levelNot reached
Claim constructionDiscretionary denialcites MarkmanPatents in suitUS 9,333,946 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · Nov 26, 2024 · IPR2024-00796 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that claims 1 and 11 would be obvious over Nevo and Avitabile.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Stipulate[s] and agree[s] that, if the PTAB institutes an inter partes review proceeding (“IPR”) for U.S. Patent No. 7,483,686 on the grounds presented in [the Petition], [Petitioner] will not pursue an invalidity defense in [the Western District of Texas Litigation] that the patent claims subject to the instituted IPR are invalid based on the same grounds as in the [P]etition or any grounds that could have reasonably been raised in the [P]etition. Ex. 1015 (letter from M. Bernstein to J. Charkow, dated May 21, 2024); see also Prelim. Reply 1 (“Patent Owner’s Preliminary Response (Paper 6) fails to acknowledge, much less address, Petitioner’s Sotera stipulation not to pursue in the related litigation the same grounds or any grounds of invalidity that could reasonably have been raised in this IPR.”); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020) (Decision Granting Institution) (precedential as to § II.A).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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 [radio frequency (‘RF’)] circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems,” and “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree.” Pet. 14–15 (citing Ex. 1002 ¶ 38). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. See generally Prelim. Resp. We determine, on the current record, that Petitioner’s proposed level of ordinary skill is consistent with the ’686 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d at 1579. We adopt that level of ordinary skill in the level of ordinary skill in the art based on the full trial record. slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that all claim terms should be given their plain and ordinary meaning. Pet. 15 (citing Ex. 1002 ¶ 74). Petitioner, however, notes that several claim terms in the ’686 patent, or closely related claim terms for patents related to the ’686 patent, have been construed during prior litigation involving Patent Owner. Id. Petitioner discusses five claim terms and various constructions proposed or adopted in prior litigation. Id. at 15–20.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,483,686 - PTAB · Nov 26, 2024 · IPR2024-00934 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR of claims 19–21 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On June 21, 2022, the Director issued interim guidance in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors. See Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation at 3, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Notably, the Director stated that “the [Patent Trial and Appeal Board (‘PTAB’)] will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the PTAB.” Id. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding under Fintiv because TI filed a Sotera stipulation. Pet. 80; Ex. 1041.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construed as “indirectly or directly connecting such that an electrical signal can flow between”; and (2) “impedance device” was construed as “a device that exhibits an impedance.” Id. at 6. Even though TI identifies four claim terms in total in the Petition, TI argues that the asserted prior art renders the challenged claims unpatentable under any reasonable construction of those claim terms. See, e.g., id. at 4 (arguing that the “prior art analyzed here renders the claims unpatentable under either [party’s] constructions” proposed in the district court case), 6 (arguing that the “prior art renders the Challenged Claims unpatentable under . . . the [Board’s] constructions”). In its Preliminary Response, ParkerVision does not address TI’s proposed constructions, nor does ParkerVision identify additional claim terms that would require construction at this stage in the proceeding. See Prelim. Resp. Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any preliminary 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.” 35 U.S.C. § 314(a). Taking into account ParkerVision’s Preliminary Response, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that TI would prevail in demonstrating at least one of claims 19– 21 of the ’342 patent is unpatentable. Pursuant to § 314, we hereby institute an IPR as to claims 19–21 of the ’342 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of institution, there is sufficient evidence in the record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Galton, TI argues the following: [a] person of ordinary skill in the art . . . as of the ’342 Patent’s priority date (April 14, 2000) would have had a least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of EM circuit design. Less work experience may be compensated by a higher level of education, such as a master’s degree. Pet. 6 (citing Ex. 1003 ¶¶ 28–30). In its Preliminary Response, ParkerVision does not address TI’s assessment of the level of skill in the art. See Prelim. Resp. At this stage of the proceeding, we adopt TI’s uncontested assessment of the level of skill in the art because it is consistent with the ’342 patent and the asserted prior art.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,496,342 - Peloton Interactive, Inc. v. Johnson Health Tech Co., Ltd.All claims unpatentablePTAB · Nov 20, 2024 · IPR2023-01163 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Morris and Ray, with claims 10, 11, 13, and 20 also unpatentable over Morris, Ray, and Cox.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner proposes the same level of ordinary skill in the art, except that Patent Owner states that the industry experience would have been “in analyzing and/or designing exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field.” PO Resp. 15–16. Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’227 patent. Accord Inst. Dec. 8. Patent Owner’s proposal adds “analyzing” and removes “cardiovascular,” but these differences are immaterial to this proceeding. See Pet. Reply 28 n.10. Moreover, all of our analysis in this Decision would remain the same under Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner contends it means “data that would represent an amount of exercise of the user.” PO Resp. 4–6. According to Patent Owner, the Specification defines this claim term. Id. at 4–5 (citing Ex. 1001, 51:37– 40:59–6:4). In its briefing, Petitioner disagreed with Patent Owner’s proposed construction, arguing that it is “overly narrow . . . and arbitrarily excludes other forms of ‘exercise use data.’” Pet. Reply 2–4. However, during the oral hearing, Petitioner adopted Patent Owner’s proposal. Tr. 14:12–15:17. For purposes of this proceeding, we apply Patent Owner’s narrower construction and assume that “exercise use data” is “data that would represent an amount of exercise of the user.” We do not need to further construe this term because Petitioner shows that the challenged claims are unpatentable even under Patent Owner’s narrower construction of it.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner asserts that an ordinarily skilled artisan would have been motivated to combine Morris and Ray because they provide complementary teachings and address similar objectives. Pet. 16 (citing Ex. 1004, Abstr., 5:41–48, 8:22–26, 11:56–61, 13:20–30; Ex. 1006 ¶¶ 6, 25, 33, 35, Abstr.; Ex. 1002 ¶¶ 135–138). Petitioner also asserts that Morris contemplates use of an optical sensor, provides exercise data and “a human analog display that mimic[s] the user’s bouncing motion,” and includes a signal processing and display system with the necessary capabilities to implement the combination. Id. at 16–17 (citing Ex. 1002 ¶¶ 139–143; Ex. 1006 ¶¶ 32–36, 50, 56–58, claims 29–37, Figs. 6, 11–12C); see also id. at 26–27 (asserting that “including multiple sensors in treadmills was a routine and well-known task”) (citing Ex. 1002 ¶¶ 159–162). Petitioner further asserts that Ray expressly teaches that “its user validation and motivation technology could be ‘easily and affordably merged’ into a treadmill.” Id. at 18 (quoting Ex. 1004, 9:55–57) (citing Ex. 1002 ¶¶ 143–144). Finally, Petitioner contends that an ordinarily skilled artisan would have been motivated to make the proposed combination because it would have improved Morris’ treadmill to add both “Ray’s motivational image that showed a thinner image of the user as the intensity and duration of exercise increased” and Ray’s ability to share exercise data with a remote location. Id. (citing Ex. 1004, 7:11–22, 11:55–59, 13:50–57; Ex. 1006 ¶ 50; Ex. 1002 ¶¶ 138, 145); see also id. at 16 (arguing that detection of a user’s presence could provide benefits, including motivation (citing Ex. 1004, 8:22–26, 11:56–61; Ex. 1006 ¶ 25)), 41 (arguing that data transmission was “a well-known and routine task” (citing Ex. 1002 ¶¶ 188–189)). Patent Owner does not dispute these contentions. See PO Resp. We find that Petitioner has established that an ordinarily skilled artisan would have been motivated to improve Morris’ treadmill by adding Ray’s camera, software instructions for validating user exercise data, its functionality of displaying a motivational image, and its ability to transmit exercise data to a remote location, and that the ordinarily skilled artisan would have had a reasonable expectation of success. See Pet. 16–18, 26–27; Ex. 1002 ¶¶ 135–138, 140–145, 161, 189; see also, e.g., Ex. 1004, 5:27–29, 7:11–22, 9:55–57.” slip op. at 22
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We have considered the testimony of Mr. van der Weide, who agrees with Patent Owner (see Ex. 2004 ¶¶ 35, 60–71), but we give his testimony on these points little weight. Mr. van der Weide discusses Mr. Rawls’ testimony, but he does not meaningfully discuss Ray’s disclosure. See id. As a result, he does not reconcile his opinions with the apparently conflicting portions of Ray. In addition, Mr. van der Weide’s testimony is conclusory because he does not identify evidence or reasoning sufficient to support his opinion that Ray fails to teach or suggest these aspects of the claim. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 32
Patent outcomesUS 10,032,227 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,032,227 - Nintendo Co., Ltd. / Nintendo Of America Inc. v. Gamevice, Inc.All claims unpatentablePTAB · Oct 29, 2024 · IPR2023-00643 · APJ Matthew S Meyers · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Willner and Park; the Board did not reach the other instituted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The main distinction between Petitioner’s ordinarily skilled artisan and Patent Owner’s is that Patent Owner’s definition requires “a mechanical engineering degree” whereas Petitioner’s definition allows for a degree in “mechanical, electrical, or computer engineering.” See Pet. Reply 16 (citing Pet. 13). However, Mr. Kitchen states that he qualifies as one of ordinary skill in the art based on Patent Owner’s proffered definition “even without an undergraduate degree in mechanical engineering” because he has “over 40 years of experience in the design and development of interactive products, including specifically with respect to handheld gaming devices.” Ex. 1033 ¶ 7 (citing Ex. 1002 ¶¶ 24–30). Mr. Kitchen asserts that his experience is in “the same category of products claimed in the ’393 patent and described in the prior art references at issue in this proceeding.” Id. In view of this and based on the complete record before us, we view the parties’ proposals as substantially the same because Petitioner’s proposed definition includes the requisite education Patent Owner’s definition requires. Thus, we find (as we did in the Institution Decision) that Petitioner’s level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’393 patent and the prior art of record. See Inst. Dec. 20–21 (citing Okajima, 261 F.3d at 1355). More particularly, we do not agree with Patent Owner that the education component for the level of ordinary skill in the art for computing gaming devices would be limited to just mechanical engineering. We note that, based on the record and evidence before us, our decision and analysis would be the same applying either party’s definition of a person of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“After reviewing the full record, we determine that it is unnecessary to construe the term “confinement structures,” as it appears in the limitation “a pair of confinement structures” to reach a determination in this proceeding. 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)). However, we will address the parties’ dispute regarding whether the prior art discloses or teaches physical component(s) that hold(s) a computing device within our merits analysis below. The parties do not dispute the construction of any other claim terms and we find that no other terms require express construction to resolve the controversy between the parties. Accordingly, we do not construe any other claim terms expressly. See Realtime Data, 912 F.3d at 1375 (“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., 200 F.3d at 803).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“First, the test for obviousness “is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference, . . . but rather whether ‘a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention.’” Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016); see also Pet. Reply 11–12 (arguing the same). Second, we disagree with Patent Owner’s assertion that the proposed combination would fail “to retain[] computing device 10 in position during normal user operation” because Park’s adjustable bridge “configuration does not allow mobile phone (1) to be seated for stability in the device.” PO Resp. 20 (citing Ex. 1004 ¶ 42; Ex. 2004 ¶ 68). At the outset, we note that Patent Owner’s argument mischaracterizes the disclosure of Park. Instead, we find Park discloses that a “basic configuration of [Park’s] game pad device for a mobile phone according to the present invention” “sufficiently allows mobile phone (1) to be mounted on the device according to the present invention and used.” Ex. 1004 ¶¶ 25, 41. Although Park discloses that “mobile phone (1) may come loose during gaming or become detached in severe cases” (id. ¶ 41), we do not view this disclosure to otherwise negate Park’s teaching that its adjustable bridge (30,40) “sufficiently allows mobile phone (1) to be mounted on the device according to the present invention and used.” Id. We credit Mr. Kitchen’s declaration testimony to that effect. See Ex. 1033 ¶ 47 (declaring that one of ordinary skill in the art would have “understood this disclosure to mean that a computing device (mobile phone) would have been secured by the device for normal use . . . as part of a handheld gaming device.”).” slip op. at 24
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We agree with Petitioner and find more credible Mr. Kitchen’s opinion regarding “normal user operation.” In doing so, we credit Mr. Kitchen’s opinion that Willner’s sidewalls would “function to secure the sides of the computing device and hold it in place” and, “[i]n the combination, Park’s bridge would be adjusted to reduce the length of the bridge and thereby ‘mount’ a computing device by having Willner’s side walls (confinement structures) ‘apply pressure’ to opposing sides of the computing device.” Ex. 1002 ¶¶ 154–156 (citing Ex. 1004 ¶¶ 38–41). We note that the ’393 patent operates in a similar manner using a sufficient compressive load to hold a computing device. More particularly, the ’393 patent discloses that [t]he expansion and contraction of the distance between the pair of confinement structures 316, facilitates placement of the computing device 302 between the pair of confinement structures 316, the application of sufficient compressive load being placed on the computing device 302 to securely hold the computing device between the pair of confinement structures 316. Ex. 1001, 10:11–20. Thus, we find Mr. Kitchen’s opinion credible and supported by the complete record. Accordingly, we find that Petitioner has proven, by a preponderance of the evidence, that the combination of Willner and Park teaches or suggests “a pair of confinement structures,” as recited by limitation 1[b][1].” slip op. at 22
Patent outcomesUS 10,391,393 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,391,393 - Masimo Corporation v. Apple Inc.No claims unpatentablePTAB · Oct 15, 2024 · IPR2023-00745 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–4 and 8–22 were not shown unpatentable because Mills did not disclose the required embedded structure and Markel combined with Mills did not teach it; the revised motion to amend was dismissed as moot.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“Patent Owner’s Revised Contingent Motion to Amend asserts that in “the event the Board finds at least one challenged [Revised Motion to Amend] claim unpatentable, [Patent Owner] respectfully requests that the Board grant this Motion with respect to the corresponding proposed substitute claim(s).” Paper 27, 1. Because we determine that Petitioner has not established that any of the challenged claims 1–4 and 8–22 are unpatentable, Patent Owner’s Revised Contingent Motion to Amend is moot.” slip op. at 61
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Our analysis and the end result are the same under either proposed definition.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“structure where a lead is embedded in a portion of the enclosure from other embodiments where a lead is merely positioned against or in parallel contact with a portion of the enclosure. See Ex. 2003 ¶¶ 36–37. The Specification describes distinct embodiments such as “lead 472 of the heart sensor can be positioned against the back surface of bezel 460,” or “[a]lternatively, lead 472 can be placed within the thickness of bezel 460 (e.g., in a pocket within the bezel wall), but underneath the outer surface of the bezel.” Ex. 9:44–48. We agree with Patent Owner, and Dr. Kenny, that “[t]his passage distinguishes a lead that is embedded in a portion of the enclosure from a lead that is merely ‘positioned against’ or in parallel contact with a portion of the enclosure.” PO Resp. 6–7 (citing Ex. 2003 ¶¶ 33–35). See also Ex. 2008, 31:10–33:18, 109:18–110:19 (Petitioner’s expert, Mr. Oslan, suggesting that a first component or object in parallel contact with and positioned under a second component or object would not necessarily indicate that the first component or object is embedded in the second component or object). Similarly, we also agree that “the claims of the ’257 use the term ‘embedded in’ while also using the word ‘embedded’ in other contexts, which” indicates distinct claim scope for “the term ‘embedded in,’” versus “the broader term ‘embedded.’” Ex. 2003 ¶ 38. For instance, claim 9 distinctly requires “embedded with,” which is a broader term that, according to Dr. Kenny, encompasses embodiments where a lead may be adjacent/parallel to the first portion of the enclosure. Id.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“under the exterior of the first portion” (see Pet. 21–22, 24–25; Pet. Reply 4); and (3) leaf spring 62 is embedded in housing 12 and electrode 14 (see Pet. 22–24). None of Petitioner’s mappings disclose every element of claim 1 and Petitioner improperly jumps between these various mappings without fully examining a single mapping for each and every limitation of claim 1. See Pet. 18–25. In essence, Petitioner invites the Board to piece together a single theory that meets all claim elements from these disparate theories that each require distinct structure within Mills. See Amazon.com, Inc., et al. v. Avago Technologies General IP (Singapore) PTE. LTD., IPR2017-01112, Paper 11, at 13 (PTAB Aug. 23, 2017) (“Petitioner is inviting us to assume the role of archeologist of the record, which invitation we decline.”).” slip op. at 36
Patent outcomesUS 10,076,257 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,076,257
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.