- Zhejiang Lingdi Digital Technology Co., Ltd. v. Clo Virtual Fashion, IncInstitution deniedPTAB · Oct 25, 2024 · IPR2024-00970 · APJ William V Saindon · IPR · Institution
Institution was denied for claims 1–11 because the petition did not sufficiently explain why a skilled artisan would combine TUKATECH’s features with EZBRUSH.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS A. Legal Standards Used in the Merits Analysis “In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A claim is unpatentable under 35 U.S.C. § 103 if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious . . . to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective evidence of non-obviousness, i.e., secondary considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner’s expert provides no citation for his “smooth seam” or “pleated or ruffled effect at the seam” rationales. Indeed, Petitioner’s expert does not indicate that he has expertise regarding clothing, let alone seam formation on clothing. Ex. 1003 ¶¶ 3–13. As our Rules make clear, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); see also Sundance, Inc. v. DeMonte Fab. Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008) (“Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702.”). Petitioner’s expert does not cite evidence in support of his statements, nor does he provide evidence that he has a background that indicates that he would intrinsically know such things to be true. On this record, we afford Petitioner’s expert’s testimony on the “length selection” rationales for providing a “smooth seam” and/or “pleated or ruffled effect at the seam” no weight. Ex. 1003 ¶ 61. For this reason, Petitioner’s obviousness position is untenable. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner’s expert provides no citation for his “smooth seam” or “pleated or ruffled effect at the seam” rationales. Indeed, Petitioner’s expert does not indicate that he has expertise regarding clothing, let alone seam formation on clothing. Ex. 1003 ¶¶ 3–13. As our Rules make clear, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); see also Sundance, Inc. v. DeMonte Fab. Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008) (“Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702.”). Petitioner’s expert does not cite evidence in support of his statements, nor does he provide evidence that he has a background that indicates that he would intrinsically know such things to be true. On this record, we afford Petitioner’s expert’s testimony on the “length selection” rationales for providing a “smooth seam” and/or “pleated or ruffled effect at the seam” no weight. Ex. 1003 ¶ 61. For this reason, Petitioner’s obviousness position is untenable. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). Similarly, Petitioner asserts that adding “TUKATECH’s suggested techniques” to EZBRUSH “would be merely the application of known techniques to a known system ready for improvement to yield predictable results.” Pet. 43 (citing Ex. 1003 ¶ 62). Petitioner asserts that a person of ordinary skill in the art “would have recognized that applying the suggested user interface improvement from TUKATECH to EZBRUSH’s CAD system would have led to predictable and helpful results with a reasonable expectation of success.” Id. (citing Ex. 1003 ¶ 62). Similar to the discussion above, we have reviewed the cited paragraph of Petitioner’s expert’s declaration and find insufficient credible evidence supporting Petitioner’s naked assertions regarding what was an “application of known techniques to a known system ready for improvement to yield predictable results.” Pet. 43; Ex. 1003 ¶ 62. To the extent Petitioner is arguing that obviousness can be established merely by showing that EZBRUSH and TUKATECH are in the same field of endeavor (e.g., Pet. 43 (“both [are] directed toward CAD systems”)), we disagree. We are not aware of any authority supporting such an argument. Petitioner has not sufficiently explained why or how it would have been obvious to apply the length comparison information from the table of TUKATECH’s size reshaping feature to EZBRUSH in a manner that meets each step of the claim. Thus, Petitioner’s additional reasons for modifying EZBRUSH to implement TUKATECH’s sizing table are also untenable.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Under 37 C.F.R. § 42.100(b), we apply the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13. We do not need to construe any claim terms to reach a decision in this proceeding. Realtime, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms. . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,733,773 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Slyde Analytics, LLCInstitution deniedPTAB · Oct 10, 2024 · IPR2024-00040 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were unpatentable, principally because Orr’s trigger circuit was not shown to be a processor.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“patent. The term processor appears only once in the entire Specification.11 That passage in the Specification states: The inertial sensor 23 could be an accelerometer with embedded power processing capabilities and which is always powered on in the first low power mode. The embedded power processing capabilities comprise a processor or other processing means for executing programmable software code for analysing the accelerations values delivered by the accelerometer, and for generating signals or values when certain conditions are met. Ex. 1001, 6:15–22 (emphasis added). We read the phrase “for executing programmable software code” as referring back to both the “processor” and the “other processing means.” The disjunctive “or” between “processor” and “other processing means” binds the two together as the subject being addressed. Accordingly, we know from the Specification’s only disclosure of the term, that a “processor” in an inertial sensor has a structure that is configured to execute programmable software code.12” slip op. at 16
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyOther
“Neither party suggests that “processor” invokes 35 U.S.C. § 112, paragraph 6. Nor do we so find. Thus, the Halliburton Rule against functional claiming still applies to “processor” and we do not construe that term to cover any structure which performs the recited function of “discriminating between gesture and no gesture based on a direction of said acceleration signal as measured by said accelerometer being a three dimensional accelerometer and on a slope or frequency of said acceleration signal.”” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“First, Petitioner has not asserted, much less demonstrated, that only a processor, and nothing else, can be used to detect a specific gesture, detect each component of the gesture, and analyze each component to determine whether a gesture has been properly formed. Although a processor may perform those functions, the record is inadequate to show, even for institution purposes, that only a processor, nothing but a processor, can perform those functions and that one of ordinary skill in the art would have so recognized. Thus, the fact that trigger circuit 38 detects a specific gesture, detects each component of the gesture, and analyzes each component to determine whether the gesture has been properly formed, does not make trigger circuit 38 a processor. Further, nothing indicates trigger circuit 38 is configured to execute programmable code. Second, that there are processors elsewhere in the system but in sleep mode at the time the inertial sensor operates does not persuade us that trigger circuit 38 itself must be a processor. This argument assumes, without supporting evidence and explanation, the stated functions of the trigger circuit can only be performed by a processor. Again, nothing indicates that trigger circuit 38 is configured to execute programmable code. Third, Petitioner has not explained the presence of switch 41 and comparator 46 within trigger circuit 38, neither one of which, on this record, is shown as having anything to do with execution of programmable code. Fourth, Orr describes that Main Accelerometer Sub-sys 42 in trigger circuit 38 includes a second motion sensor which is activated by a signal from switch 41 and which provides output signal 44 to threshold comparator 46. Ex. 1005, 7:3–17. Petitioner has not adequately explained the presence of this second motion sensor within Main Accelerometer Sub-sys 42. On this record, a motion sensor, such as the second motion sensor in Main Accelerometer Sub-sys 42, has not been shown to have anything to do with execution of programmable code. For all of the foregoing reasons, Petitioner has not adequately accounted for limitations 14[E][1] and 14[E][3]. In short, trigger circuit 38 is not configured to execute programmable code and so has not been shown to teach or suggest the processor limitation. Petitioner has not shown a reasonable likelihood that it would prevail in establishing obviousness of claim 14 over Orr and Orr682.” slip op. at 24
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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). Upon consideration of the contentions and the evidence of record before us, and consistent with the Director’s remand instructions, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’678 patent. Accordingly, we decline to institute an inter partes review of the challenged claims of the ’678 patent. B.” slip op. at 3
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,804,678 - Amazon.Com, Inc. / Amazon.Com Services LLC v. Nokia Technologies OYInstitution deniedPTAB · Oct 4, 2024 · IPR2024-00725 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 were unpatentable; Yagasaki did not disclose the claimed intentional discontinuity in image-frame numbering.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (footnote omitted). Upon consideration of the contentions of the parties and the evidence before us, we conclude that Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’134 patent. We decline to institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Havlicek and not 8 The record does not include any evidence of secondary considerations of nonobviousness. disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Also, our conclusion would be the same even if we applied Patent Owner’s stated level of ordinary skill in the art. C.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. 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))). Petitioner has not proposed a construction for any claim term and asserts that “no constructions are necessary to resolve any disputes identified in this Petition.” Pet. 7 (footnote omitted). Patent Owner does not disagree and also has not itself proposed any construction. Prelim. Resp. 9. We find that no express construction for any claim term is necessary. D.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“According to limitation 1[a], the decoded “indication” must “inform[] an intentional discontinuity of numbering of the image frames.” Petitioner has not sufficiently shown any discontinuity of the numbering of image frames. Patent Owner asserts that “Petitioner relies on continuously incremented ‘temporal_reference codes’ as the claimed numbering, but these continuously incremented ‘temporal_reference codes’ never have a discontinuity.” Prelim. Resp. 11. We determine that Petitioner has not sufficiently shown, for institution purposes, a discontinuity in these temporal_reference codes. Petitioner’s argument assumes, without adequate supporting basis, that when a duplicate picture is eliminated by the encoder such that no image picture content is provided in the encoder output, the temporal_reference code for that duplicate picture is also eliminated and not provided in the encoder output to be furnished to the decoder. To prevail, this alleged fact must be sufficiently shown and not assumed. The Petition made no adequate showing. Yagasaki expressly states: “The temporal reference generator [within the encoder] feeds the temporal reference code to the variable-length coder 1006 for inclusion in the coding apparatus output signal VC1.” Ex. 1005, 19:27–29. We find no statement or indication of an exception for a duplicate picture of which the image data is “eliminated,” and Petitioner has not pointed us to any such description.” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,204,134 - Apple Inc. v. Carbyne Biometrics, LLCInstitutedPTAB · Aug 1, 2024 · IPR2024-00330 · APJ Arthur M Peslak · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all four asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Analysis The Director of the USPTO has proscribed an interim procedure for discretionary denials in AIA post-grant proceedings with parallel district court litigation. See Ex. 1025, Memorandum to Members of the PTAB from Director Vidal, dated June 21, 2022 (“Memorandum”). In the Memorandum, the Director states that “[w]hen 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, it mitigates concerns of potentially conflicting decisions and duplicative efforts between district court and the PTAB.” Id. at 7. Further, when such a stipulation is provided, “the grounds the PTAB resolves will differ from those present in the parallel district court litigation” and “the PTAB will not discretionarily deny institution of an IPR.” Id. In this case, Petitioner provides a stipulation that falls within the contours of the Memorandum. Ex. 1048, 1. Petitioner’s stipulation meets the requirements of a stipulation pursuant to Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to § II.A), and, therefore, the Director’s Memorandum governs our determination here. For the foregoing reasons, in accordance with the Director’s Memorandum, we do not exercise our discretion to deny institution under 35 U.S.C. § 314(a) due to the parallel district court litigation.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, the Preliminary Response, the Preliminary Reply, and the Preliminary Sur-reply as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’656 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’656 patent on all grounds stated in the Petition.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential), the Board accorded “little weight” to declaration testimony that contains a verbatim restatement of a petition’s arguments without additional supporting evidence or reasoning. In Xerox, the Board held that the critical inquiry is whether a declaration is conclusory and unsupported and whether it discloses underlying facts or data on which the opinion is based. Xerox, Paper 9 at 15 (quoting 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.”)); see also RightQuestion, LLC, Paper 17 at 23 (“Petitioner’s declarant makes these same statements verbatim, without more, and with no additional citations to evidence.”). Patent Owner ignores Dr. Jones’s testimony summarizing the relevant disclosures from Stone, Hoyos, and Varghese on which he relies to form his opinions. Ex. 1003 ¶¶ 37–46. Patent Owner also ignores Dr. Jones’s testimony of the specific basis for his opinion that a person of ordinary skill in the art would have been motivated to combine Stone, Hoyos, and Varghese with a reasonable expectation of success. Ex. 1003 ¶¶ 54–68. This testimony contains specific detailed citations to the references in support of Dr. Jones’s opinions. We, thus, find that Dr. Jones’s testimony in support of the Petition, taken as a whole, is supported sufficiently with evidence and technical reasoning at this stage of the proceeding. Consequently, we do not give his testimony little to no weight because portions of it are repeated in the Petition. ii.” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Although Stone does not explicitly mention the word “fraud,” it discloses that user device 408 may include user identifiers 418 that “may include attributes related to the user such as . . . a user name, password, photograph image, biometric id.” Ex. 1008 ¶ 45. Dr. Jones testifies that “Stone’s biometric information/‘biometric id’ is typically received and stored on user device 404 during an enrollment/registration process” and “is used for subsequent comparison with the later captured data to provide an authentication decision for a transaction request.” Ex. 1003 ¶ 92 (citing Ex. 1014 ¶ 9; Ex. 1021, Abst.; Ex. 1023, 8:3–9:39). Patent Owner’s attorney argument that Stone does not mention fraud or biometric authentication ignores the cited disclosure in Stone and Dr. Jones’s testimony which is sufficiently supported by the references he cites. Further, Patent Owner’s argument that Stone does not discuss techniques for preventing fraud is undercut by its acknowledgement that Stone discloses “authentication of the user[] by the payment server where the user’s account information is stored.” Prelim. Resp. 44 (citing Ex. 1008 ¶ 46). Patent Owner’s argument that Hoyos is not concerned with improving an electronic display or a user’s experience (Prelim. Resp. 36) is unavailing because it fails to address Petitioner’s proposed combination. Petitioner does not rely on Hoyos to improve an electronic display or the user experience but proposes modifying Stone by “implement[ing] Hoyos’ spoofing resistant biometric authentication for fraud detection” with the resulting benefit of “improved deterrent against attempted fraudulent transactions and decreased rejection of valid customers.” Pet. 16 (citing Ex. 1003 ¶ 62). With respect to adding Varghese to the combination of Stone and Hoyos, Patent Owner’s argument is that Petitioner “fails to explain why a [person of ordinary skill in the art] would have combined location authentication mentioned in Varghese with Hoyos’s biometric authentication techniques.” Prelim. Resp. 37. Patent Owner, however, does not address Petitioner’s assertions that a person of ordinary skill in the art would have implemented Varghese’s multifactor real-time authentication including location authentication “for improved security” and the other alleged benefits for doing so stated in the Petition. Pet. 22.” slip op. at 43
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,713,656 - Apple Inc. v. Carbyne Biometrics, LLCInstitutedPTAB · Aug 1, 2024 · IPR2024-00331 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1–12, 14–18, and 20–23 based on a reasonable likelihood of success on at least one claim, applying all challenges in the Petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- Other 314aOther
“V. CONCLUSION Based on the arguments and evidence presented by the parties, we determine that there is a reasonable likelihood Petitioner would prevail with respect to at least one claim challenged in the Petition. Hence, we institute an inter partes review of all challenged claims on all challenges included in the Petition. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) (noting that the language of 35 U.S.C. § 314(b) “indicates a binary choice— either institute review or don’t”); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute as requiring “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”); 37 C.F.R. § 42.108(a). Additionally, we decline to exercise our discretion under § 314(a) to deny institution.” slip op. at 95
- Obviousness (§103) › Analogous artAnalogous artInstituted
“4. WHETHER PETITIONER ESTABLISHES A REASONABLE LIKELIHOOD THAT STONE IS ANALOGOUS ART” slip op. at 38
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,526,886 - Apple Inc. v. Carbyne Biometrics, LLCInstitutedPTAB · Jul 16, 2024 · IPR2024-00334 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR of claims 1–3, 5, 7, 8, 10–15, 17, 19, and 22–25 on all petitioned grounds, finding a reasonable likelihood of success on the asserted obviousness challenges.
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) (2023). 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). Upon consideration of the contentions and the evidence before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’138 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’138 patent on all grounds set forth in the Petition.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner’s contentions are misplaced. It is an oversimplification to say that if the expert testimony is the same as statements in the Petition, then the testimony should be accorded no weight. The issue is not whether the two are the same or nearly identical. Rather, the issue is whether the testimony refers to supporting evidence or contains technical reasoning. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential) (according “little weight” to declaration testimony that contains a verbatim restatement of a petition’s conclusory assertions without additional supporting evidence or reasoning). This is consistent with 37 C.F.R. § 42.65(a), which states: “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” We do not accord expert testimony little or no weight simply because it is verbatim to what Petitioner states in the Petition. Patent Owner has not even attempted to show that Dr. McDaniel’s testimony is without citation to underlying evidence and lacks technical reasoning. Further, Dr. McDaniel’s testimony regarding motivation to combine the teachings of Kesanupalli and Brown includes numerous other paragraphs, e.g., paragraphs 75–79, and Dr. McDaniel also has testified to the technical content of Kesanupalli, e.g., paragraphs 65–70. All of that testimony should be read together in determining whether Dr. McDaniel’s testimony regarding combining the teachings of Kesanupalli and Brown is wholly conclusory, i.e., without any evidentiary support or technical reasoning. Patent Owner has not shown that it is. Thus, Patent Owner’s argument that Dr. McDaniel’s testimony should be accorded no weight as to the reasonable expectation of success analysis lacks merit. We decline to accord Dr. McDaniel’s testimony no weight. E.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in [] electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 6 (citing Ex. 1003 ¶¶ 18–21). At this preliminary stage and on this record, we adopt Petitioner’s statement of the level of ordinary skill in the art, except for the qualifier “at least” which would make the stated scope without an upper bound and thus potentially cover the level of skill of an expert. It is supported by the testimony of Dr. McDaniel (Ex. 1003 ¶¶ 18–21) and not disputed by Patent Owner (Prelim. Resp. 10–11). Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Each independent claim recites generally “a processor;” and the ’138 patent states “[a]s used herein, the term ‘processor’ refers to one or more devices, circuits, and/or processing cores configured to process data, such as computer program instructions.” APPL-1001, 2:21–23. POSITA would understand that the plain and ordinary meaning of the term “processor” may include “one or more devices, circuits, and/or processing cores,” which includes a plurality of separate devices, circuits, and/or processing cores functioning together to provide a processor. APPL-1003, ¶56. Pet. 7. Patent Owner has not proposed a construction for “processor” and states that “it does not address these positions [of Petitioner]” because its Response “does not depend on these definitions.” Prelim. Resp. 11. Based on the description in the specification of the ’138 patent, as cited by Petitioner, we determine, preliminarily, that a “processor,” in the context of the ’138 patent, may include a plurality of separate devices, circuits, and/or processing cores functioning together to provide a processor.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,514,138 - PTAB · Jul 15, 2024 · IPR2024-00538 · APJ Lisa A Murray · IPR · Institution
Instituted inter partes review of all challenged claims on all asserted grounds because Microsoft showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDecided for petitioner
“We have considered the circumstances and facts before us in view of Fintiv factors 1–6. As discussed above, factor 1 is neutral and factors 2–4 and 6 weigh against discretionary denial, while factor 5 weighs marginally in favor of discretionary denial. Because our analysis is fact-driven, no single factor determines whether we exercise our discretion to deny institution under 35 U.S.C. § 314(a). In the circumstances of this case, considering each Fintiv factor as part of a holistic analysis, we are persuaded that the efficiency and integrity of the system would be best served by granting the Petition to institute an inter partes review. Accordingly, we decline to exercise discretion to deny institution under § 314(a).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Thus, on this record, we find that Petitioner is reasonably likely to establish that claim 1 is unpatentable in light of Forutanpour. While this alone is sufficient for institution purposes, we also find that Petitioner is reasonably likely to show that Forutanpour anticipates independent claim 23, which is commensurate in scope with claim 1.” slip op. at 24
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“actually or inherently disclose the claim element.” PowerOasis, Inc. v. T- Mobile USA, Inc., 522 F.3d 1299, 1306–07 (Fed. Cir. 2008). The passages that Patent Owner cites from the great-grandparent application describe a WTRU that may be capable of both Bluetooth and Wi-Fi communications. Ex. 1282 ¶ 24 (’948 application). They describe detecting another WTRU using Bluetooth. Id. ¶ 34. They also describe transferring data to that target WTRU. Id. ¶¶ 32, 39, 42. None of the passages cited, however, describe using Bluetooth for detection and then switching to Wi-Fi for data transfer within the same transaction. This element of claim 1 is neither expressly nor inherently disclosed in the great-grandparent application.9 It therefore does not have written description support in the ancestor application and cannot benefit from its effective filing date.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableInstituted
“Finally, claim 1 requires the WTRU to transfer, using a Wi-Fi communication, the selected media. Ex. 1201, 10:64–65. Forutanpour discloses that the user’s device may transfer the selected file to the intended recipient “using a wireless technology different from the wireless technology used to establish the wireless link.” Ex. 1204 ¶¶ 4–5. That wireless technology may be WiFi. Id. ¶¶ 81–84 (“messages may similarly be transmitted via another type of wireless communication network, such as a WiFi . . . network”); see also id. at claim 2 (“establishing the wireless link is accomplished using a wireless technology selected from Bluetooth®, ZigBee®, Near Field Communication (NFC), wide-area-wireless IEEE 802.11 (WiFi), infrared (IrDA), and ultrasound”), claim 3 (“The method of claim 2, wherein: . . . transmitting the file sharing message to the targeted computing device is accomplished using a wireless technology different from the wireless technology used to establish the wireless link.”). Thus, on this record, we find that Petitioner is reasonably likely to establish that claim 1 is unpatentable in light of Forutanpour. While this alone is sufficient for institution purposes, we also find that Petitioner is reasonably likely to show that Forutanpour anticipates independent claim 23, which is commensurate in scope with claim 1.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,173,054 - Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentablePTAB · Jun 5, 2024 · IPR2022-01449 · APJ Karl D Easthom · IPR · Final written decision
Claims 1, 3, 7, 11–15, 17–20, and 23 are unpatentable as obvious over the asserted combinations of prior art.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“from cameras by outdoor terminal 100. Id. at 4. Jae also discloses wireless transmission by the cameras to a “wireless receiving means” at “the outdoor terminal or indoor terminal.” Ex. 1011, 8. Accordingly, even if Jae teaches a wired connection between the indoor and outdoor terminal, Jae does not teach away from a wireless connection due to bandwidth limitations, because Jae discloses transmitting wireless video from the cameras to “the outdoor terminal or indoor terminal,” thereby contemplating either one. See id. Merely teaching a way to transmit data (e.g., wired) does not teach away from transmitting data another way (e.g. wireless).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“hindsight based on the ’644 patent, it was well known that wireless camera systems existed at the time of the invention. Reply 11 (citing Ex. 1051 ¶¶ 18–34). See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as [a conclusion of obviousness] takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper.”). At the cited declaration passages, Dr. Hochwald points to numerous examples supported by record evidence of wireless camera video spanning over the last 50 years or more, including the famous example of the wireless video of the moon landing in 1969. See, e.g., Ex. 1051 ¶ 22 (citing Ex. 1036, 2–5).” slip op. at 28
- Skill levelOther
- Expert testimonyOther
Patent outcomesUS 7,193,644 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,193,644 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · May 22, 2024 · IPR2024-00105 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–13 and 16 on all petitioned grounds after finding a reasonable likelihood that claim 1 is obvious over Fells.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“According to our precedent, “if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under [Becton, Dickinson] factors (e) and (f).” Advanced Bionics, Paper 6 at 10; see also Keysight Techs., Inc. v. Centripetal Networks, Inc., IPR2022-01421, Paper 14 (PTAB Aug. 24, 2023) (vacating a Board decision denying institution where the examiner considered references but never provided any discussion, analysis, or other findings, and the petition provided a sufficient argument on the merits, which the examiner misapprehended or overlooked). Here, in evaluating Becton, Dickinson factor (c), we determine that the Examiner’s reasoning with respect to Fells and Cook is not well developed and neither reference was the basis for a rejection. We also determine, for reasons we discuss more fully below, that InductEV has shown that the Examiner materially erred by overlooking at least the teachings of Fell as applied to claim 1 (Becton, Dickinson factor (e)), and that the Petition presents additional evidence and facts, including testimony by Dr. Allen, that warrant reconsideration of Fells (Becton, Dickinson factor (f)). See infra Section IV.C. Thus, we decline to deny institution discretionarily under § 325(d).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“9. Conclusion as to claim 1. For the above reasons, we determine that InductEV has shown, sufficiently at this stage, that Fells discloses or teaches all the limitations of claim 1, and that a person of ordinary skill in the art would have had reason to combine the features described in Fells in the manner recited in claim 1. We therefore determine that InductEV is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103(a) as obvious over Fells.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“9. Conclusion as to claim 1. For the above reasons, we determine that InductEV has shown, sufficiently at this stage, that Fells discloses or teaches all the limitations of claim 1, and that a person of ordinary skill in the art would have had reason to combine the features described in Fells in the manner recited in claim 1. We therefore determine that InductEV is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103(a) as obvious over Fells.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party argues that we should construe any particular claim terms. Pet. 6 (citing Ex. 1003 ¶¶ 62–63); Prelim. Resp. 5–6. We agree that, for this decision, we do not need to construe any of the terms explicitly. 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))). We discuss the claim terms below in the context of the prior art.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,027,184 - PTAB · May 10, 2024 · IPR2024-00306 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that Microsoft would show at least one claim obvious over Ahya and McKillop.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Board’s projected statutory deadline for a final written decision. Here, no trial date has been set in the related district court proceeding.1 Pet. 2–3; Prelim. Resp. 13. However, “when considering the proximity of the district court’s trial date to the date when the PTAB final written decision will be due, the PTAB will consider the median time from filing to disposition of the civil trial for the district in which the parallel litigation resides.” Ex. 2002, 3 (Vidal Memo). The most recent statistics show a median time-to-trial for completed civil trials in the Eastern District of North Carolina of 31.2 months. See Reply 1; Ex. 1082, 21 (U.S. district courts judicial caseload profile). Thus, a projected trial date for the related district court proceeding, which was filed on September 1, 2023, would be in mid-April of 2026. See Pet. xii (providing filing date for district court litigation). This would be about ten months after the projected statutory deadline for a final written decision in this proceeding. Accordingly, this factor weighs heavily against discretionary denial.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner and Patent Owner. We are persuaded that Petitioner demonstrates, for purposes of this institution decision, that it is reasonably likely that it will be able to show that the combination of Ahya and McKillop, as viewed by a person of ordinary skill in the art at the time of the invention, teaches each element of claim 1. We also find, at this stage of the proceeding, that Petitioner has sufficiently articulated some reasoning as to why a person of ordinary skill in the art at the time of the invention would have been motivated to combine Ahya and McKillop. Accordingly, we conclude that based on the current record, Petitioner’s contentions, detailed above and supported by the Rysavy Declaration, are sufficient to show a reasonable likelihood of success for Petitioner’s challenge to claim 1. Petitioner’s analysis of the remaining challenged independent claim, claim 23, refers back to its analysis of claim 1 and cites evidence demonstrating that the combination of Ahya and McKillop teaches a WTRU that performs each of the recited steps of claim 1. Pet. 47. Accordingly, at this stage of the proceeding, Petitioner has demonstrated a reasonable likelihood of showing that claim 23 is also unpatentable over Ahya and McKillop. f. Conclusions Regarding Obviousness of the Challenged Dependent Claims We have reviewed Petitioner’s contentions regarding the unpatentability of dependent claims 3–10, 12, 14–15, 21, 25–32, 34, 36–37, 43, 46–47, and 49–50. Pet. 36–47. Patent Owner does not challenge these contentions at this stage in the proceeding. See Prelim. Resp. 7–57. We are persuaded, based on the evidence and argument presented, that Petitioner has demonstrated a reasonable likelihood of showing that claims 3–10, 12, 14–15, 21, 25–32, 34, 36–37, 43, 46–47, and 49–50 are unpatentable over the combination of Ahya and McKillop.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“InterDigital states that for the purposes of its Preliminary Response, it does not challenge Petitioner’s definition of a person of ordinary skill in the art, but “reserves the right to argue for a different definition should the Board institute trial in this proceeding.” Prelim. Resp. 7. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art, which we view as consistent with the ’054 patent and the asserted prior art, and we apply that definition in our analysis below.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Microsoft represents that it applies the plain and ordinary meaning of all claim terms and that no terms in the challenged claims require a means- plus-function analysis. Pet. 14. For the purposes of its Preliminary Response, InterDigital adopts Microsoft’s position that no constructions are required. Prelim. Resp. 7. We determine that no express constructions are needed for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,173,054
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.